Enterprise and Open Source – Copyright, Trademark and License

I am an engineer, not a lawyer, and this is personal opinion, not professional advice. Licenses and other legal documents can be complicated, and words like “meaningful”, “non-trivial” and the like may be interpreted differently based on jurisdiction, context and domain. Consult with a lawyer if it’s important, but it seems to boil down to the basics – copyright, trademark, and a license.

I won’t get into the reasons why an enterprise might care about being legally compliant and to what degree, but if it does, it will be considering liabilities imposed by its use of Open Source software. Liabilities carry strategic risk, which ultimately is financial risk.

The great advantage of Open Source software is that development and support costs can be shared among a community of interested parties, with individual modifications to meet unique individual needs. An Open Source project is essentially a partnership, with a large and diverse set of partners. This gives rise to issues of ownership and restrictions or liabilities.

If the liabilities associated with some software cannot be accepted, the software cannot be used. Unfortunately, it is also likely that the software cannot be used if there is a lack of clarity regarding liabilities. A project team that provides clarity regarding legal issues makes it easy for an enterprise to use their software, join their community and give back to their project.

Since an Open Source project is a partnership, with a large and diverse set of partners, it will require some degree of structure in order to function effectively. It will also want to protect itself against any ill will, internal or external.

In this article, I propose an approach for Open Source projects to protect themselves, and to provide the legal clarity that enterprises may require.

Ownership and Identity

An Open Source project is made up of more than just its code. An Open Source project is also a community of individuals, driven to achieve common goals and held together by a project name and on-line meeting places (typically the code repository, project website, mail list, issue tracker, forum, and wiki).

To ensure survival, the project team must protect itself against those who would do it harm – most commonly by using the project code or name for commercial gain against the intent and desires of the project team.

Copyright, Trademark and License

There are three tenants to protecting an Open Source project: Copyright, Trademark and a License. Copyright law will protect source code ownership, especially when the code is maintained in a secure public revision management system (e.g. GitHub). Trademark law will protect the project name and image against misuse, and a license will protect contributors and the community in general from liability, and protect access to changes if desired.

Copyright

Copyright is a legal concept that generally gives the author of an original work exclusive rights to their work. The copyright for a line of code is generally held by its author (developer), unless it is assigned to someone else. Assignment may be implicit, such as when an employee creates code for an employer (“works for hire”), or explicitly through a formal agreement, such as a Contributor License Agreement (CLA) or Copyright Assignment Agreement (CAA). Issue in licensing will arise if copyright ownership is ambiguous or unclear, because only the owner of a work can license it.

Open source projects generally follow one of two options:

  • Developers retain individual copyright to their code. Developers may declare through a Contributor License Agreement (CLA) that have the legal right to submit their code, and the CLA may include additional terms under which the code is provided.
  • Developers assign the copyright to their submitted code, using either a Contributor License Agreement (CLA) or a Copyright Assignment Agreement (CAA), to a legal entity used by the project team for that purpose.

Comparing the two, retaining copyright ownership without a CLA is the simplest although weakest legally, and any desired re-licensing will be difficult to impossible as it will require the explicit consent of all owners. Assigning ownership to single entity using a CLA or CAA will be the strongest legally, although it will be an obstacle to receiving ad hoc submissions from the community at large.

Trademark

Trademark law will provide practical protection of the project’s name, so long as the project uses the name in a way that can be trademarked, generally some type of logo. An individual (e.g. the project founder) or a legal organization owns the trademark (which preferably should be registered), and allows for its fair use by creating a Trademark and Logo Policy (e.g. the Maestro Trademark and Logo Policy, based on the Drupal Trademark and Logo Policy).

A Trademark and Logo Policy clarifies rights over the use of the project’s identity. Your name and logo are important to your community, and may want to create T-shirts, booth displays at trade shows and conferences, support material for clients, etc., that incorporate the project name and logo. The Trademark and Logo Policy controls their use to the benefit of the project as a whole, and provides a background from which abusers can be legally instructed to stop.

License

Generally, the simpler a license is the better. Some projects use different licenses for different things, such as the GPL for code and a Creative Commons license for documentation, I can only recommend using as few licenses as possible to achieve your purpose.

When it comes to the choice of license, use a permissive license (e.g. BSD, Apache or MIT license) if you want the software used by as many people as possible (in particular by enterprises wary of copy-left licensing). Use a copy-left license (e.g. GPL or AGPL) if you want to enforce that your code continues to remain Open Source.

The GPL generally requires that changes and extensions must also be licensed by the GPL, which is why technical and popular writing describe it as “viral”. Commercial enterprises can understandably react conservatively to issues that obligate, constrain or impose liability, reinforcing the value of a permissive license in the presence of uncertainty.

Should it be desired at some time to change the license, it is easier when a single entity holds copyright to the entire source repository, and harder if a large number of developers individually hold copyright to their own contributions – no matter how small. This can be both a benefit and a curse. Projects often start with a single developer who provides all the code, but ownership quickly becomes complex and intertwined as others first submit bug fixes, and then later provide entirely new features that cross the application. Consider the future you want for the project and plan for it, before it becomes too late practically to do anything other than start over.

Don’t think the source license will protect the project or software name. From the perspective of the license, the name is just a character string that can be changed like any other. Adding additional conditions to the license (essentially creating a new “license plus some stuff” license) only complicates licensing, making enforcement more difficult and impeding acceptance by reducing clarity.

Recommendations

Here are my recommendations for Open Source projects. Use your source code revision management system to your benefit by including legal notices and documents in your repository. That way they become integral to the project, inherently related in time to other contributions, and difficult to refute.

1. Include a License and Copyright section in the README file in the project source code, as well as prominently on the project website. State the license fort the code, and who owns the copyright. Describe any legal requirements for submissions, such as whether a CLA or CAA must be submitted first, or the terms assumed to apply to submissions (such as the same license terms as the project). Explicitly say whether the license covers Plug-ins or other extensions.

The GPL generally applies to Plug-ins, although some prefer to believe otherwise. Being explicit will avoid misunderstandings, clarify the intent of the project and even encourage development (as well as save you from repeatedly having to answer the question).

2. Include a Trademark and Logo Policy section in the README file in your project source code as well as prominently on your project website. State who owns the trademark/logo, whether it is if registered, and describe what will be considered fair use (and what will not).

3. Publish a list of the Open Source projects included in your own project, including the license each uses. This makes it easy for potential users to readily and properly evaluate all their implications. Ensure each included project identifies its own license in your repository. Compliance is a chain, the legal clarity of subordinate projects is just as important as your own. If necessary, work with subordinate projects to improve their legal clarity, it will benefit you both.

Related Information

TWIT.tv‘s FLOSS Weekly podcast (hosted by Randal L. Schwartz of Perl-book fame) has interviewed several project teams that had to deal with licensing issues.

Bob Jacobsen had to regain control over the Open Source model railroad controller software he had written in order to clear his name professionally. See FLOSS Weekly Episode 117 and Java Model Railroad Interface (JMRI) in Wikipedia.

Roberto Rosario had to develop Mayan EDMS in a way that would permit GPL licensing although he was working as an employee of the Porto Rico government, and also deal with an early fork that threatened the project’s future. See FLOSS Weekly Episode 253.