This is a read-only archive. Find the latest Linux articles, documentation, and answers at the new Linux.com!

Linux.com

Feature: Legal

Can developers reclaim donated IP?

By Joe Barr on August 24, 2007 (9:00:00 PM)

Share    Print    Comments   

In 2004 Daniel Robbins, the founder of Gentoo Linux, walked away from the project after creating the nonprofit Gentoo Foundation to handle its intellectual property (IP). In a blog post last month, Robbins wondered if he should take back the software, since it didn't appear the foundation was taking care of things. While Robbins didn't follow through on his thought, he raised an interesting question: Can someone convey intellectual property rights and then reclaim them?

Almost immediately after he blogged about it, Robbins wrote the issue off as nothing more than a late-night rant, and disavowed any desire to take back what he had given the foundation. The foundation also helped dampen lingering interest in the story by quickly taking steps to replace Robbins as its president, a position he had held back in the day, and from which he had never formally been removed. That was basically the end of the tale.

But in spite of its brief life, the question remains: if Robbins had really wanted to do so, could he have taken back the property he had given the foundation, regardless of how well or how poorly they treating it?

IP and free software

I asked Richard E. Fontana, counsel for the Software Freedom Law Center, three basic questions about intellectual property in the free software world, based on a hypothetical situation in which I have written and distributed an application, licensed under the GPL, and now wish to transfer my IP to others.

Joe Barr: How would I convey ownership of my IP to others?

Richard E. Fontana: Intellectual property is property; like any other form of property, ownership can be transferred to someone else. With respect to copyrights (and also patents and trademarks), an outright transfer of all rights to someone else is called an "assignment." Ownership generally means the ability to exercise all rights associated with a form of property, so to convey ownership of copyrights you would assign them. (If you transfer fewer than all rights to someone else, that's a "license.") You can assign copyrights to someone else in return for compensation, or you can assign them as a gift. In the US, at least, an assignment must be in writing and signed by the person conveying the copyrights.

JB: What kinds of IP typically exists in a free software project, other than copyrights?

REF: It depends on what you mean by "exist in," but patent and trademark rights may certainly be relevant to a free software project.

A foundation or conservancy associated with a project might hold trademarks (or similar rights to use particular names) that are associated with the project. See, for example, this statement from the Apache Software Foundation FAQ, and note that the trademarks referred to there include project names and project logos. An individual contributor might hold relevant trademarks (think of Linus Torvalds' ownership of the Linux trademark).

A project -- or, more precisely, a foundation, conservancy, or other related organization closely associated with a project -- is highly unlikely to own or apply for any patents. In that sense, patent rights do not "exist in" a project in the same way that copyright and trademark rights do. Non-corporate contributors to a project are also unlikely to hold patents that are relevant to their contributions. (There are various reasons for this: political disapproval of software patents, the expense of applying for and maintaining patents, and the extreme difficulty of obtaining a patent based on open collaborative development.) However, it is common for patent-holding corporations to make contributions to free software projects; in some cases such a corporation will actually be the principal copyright holder and contributor. The terms under which contributions are made and under which the software is ultimately licensed to others may explicitly require the patent-holding contributor to grant a license to certain patents to those who use the software. To that extent, a project's participants and users can be said to exercise patent rights as licensees, a result of their participation, and patent-holding contributors can be said to have patent-based ownership interests in the project.

(For parenthetical completeness, I note that rights of publicity and rights against misrepresentation, which are recognized in some legal systems, are sometimes thought of as forms of IP, even though the core of IP is patents, copyrights, and trademarks. Licenses governing free software projects often contain clauses designed to protect the project and its contributors with respect to these kinds of rights. Also, there's one form of IP that *cannot* exist in a free software project: trade secret rights. This is because it is not possible to have a trade secret in source code that is shared with others.)

JB: If no transfer of the IP ever occurs, and I am hit by a bus, what becomes of the IP?

REF: Your copyrights are part of your legal estate, like the rest of your property. If you had a valid will, the will should determine who receives ownership of the copyrights through inheritance. If you died without a will, there are laws ("intestacy laws" in the US, existing at the state level) that determine who receives the copyrights.

The upshot

In Robbins' case, according to Gentoo Foundation Trustee Chris Gianelloni, "Daniel transferred the Gentoo name, trademarks, associated domains, logos, graphics, and hosted hardware from Gentoo Technologies, Inc., to the Gentoo Foundation, Inc., while retaining the right to use said logos and trademarks forever. This also included all copyrights to all code that was owned by GTI, including portage and the ebuilds in the tree."

Based on the Fontana's answers, Robbins would not have been able to legally reclaim ownership of that intellectual property, no matter how unhappy he might have become about how the foundation was caring for it. No more so than I would have the right to go to Goodwill and reclaim a computer I donated to them three years ago.

The good news I learned from all of this is that free legal help is available to qualifying free software and open source projects from the Software Freedom Conservancy, which was created by the Software Freedom Law Center but exists as a separate entity. Such help might prevent a similar question from bringing other projects to a screeching halt while they scramble for answers. The Conservancy can hold and administer both fiscal and intellectual property assets for member projects without cost, leaving the developers free to focus on the code without having to worry about taxes, liabilities, or legal questions like this one.

Note: Our original story incorrectly reported that the Conservancy was a part of the Software Freedom Law Center.

Share    Print    Comments   

Comments

on Can developers reclaim donated IP?

Note: Comments are owned by the poster. We are not responsible for their content.

Even if he had not executed a transfer, it would make little difference.

Posted by: Anonymous [ip: 24.98.42.168] on August 24, 2007 09:42 PM
The most he could prevent them from using would be the name. And even with that, it would be hard to prevent them from continuing to use it, since he allowed them to use it for so long already.


As far as the copyrights, it's almost a non-issue. By distributing the software under the GPL, he has given them a license. And it is a very extensive license. That license cannot be revoked except under the terms by which it was granted. And Gentoo has not violated the terms of the GPL at any time that I have heard of.

#

Can developers reclaim donated IP?

Posted by: Anonymous [ip: 213.22.126.136] on August 24, 2007 10:33 PM
There is no "intellectual property", the question is meaningless and shame on Richard Fontana for not taking the opportunity to crash that meaningless term. It's precisely because some idiots think of it as "property" that such idiotic questions arise.

#

Re: Can developers reclaim donated IP?

Posted by: Anonymous [ip: 201.43.6.164] on August 25, 2007 04:35 AM
If you and all the FSF/GNU evangelists really thought so you would put all your works in the public domain rather than licensing them under the GPL.

#

Re(1): Can developers reclaim donated IP?

Posted by: Anonymous [ip: 69.178.20.216] on August 25, 2007 09:12 AM
He didn't say he didn't believe in copyright. What he said was that the term "intellectual property" is a ridiculous. There is a huge difference.

#

Re(2): Can developers reclaim donated IP?

Posted by: Anonymous [ip: 201.43.217.205] on August 25, 2007 05:16 PM
Yes he did. He said "there is no 'intellectual property'", and since copyright is a form of intellectual property, he thus said he doesn't believe in copyright. If you should have no "property" over what you create, then everything should be in the public domain.

#

Re(3): Can developers reclaim donated IP?

Posted by: Anonymous [ip: 68.163.235.205] on August 26, 2007 02:56 AM
No you missing the point; the collective name "Intellectual Property" doesn't make any sense because an idea is not property in any sense. At most copyright as a control is an tributary of power not one of having and belonging. As for grouping copyrights with trademarks and patents as in the term IP, well that's just ridiculous to begin with since trademarks and patents are vastly different things for different reasons and with different responsibilities and provisions for the general public; all three things are not property since they are not owned to have and to hold but are controlled through the use of social devices which provide a balance between the sharing of ideas, the sharing of inventions and the protection of names.

And I have put things under GPL (programmer), Creative Commons and Public Domain.

#

Re: Can developers reclaim donated IP?

Posted by: Anonymous [ip: 24.80.34.124] on August 26, 2007 02:49 PM
I've heard RMS speech on the intellectual property fallacy too. Unfortunately time has moved on since then and not only is intellectual property a valid term these days, laws are actually being made using the term. The term is no longer meaningless and we have moved well into the sphere of fuzzy thinking by lumping copyright, patent law and trademark law together.

#

Can developers reclaim donated IP?

Posted by: Anonymous [ip: 12.20.48.10] on August 24, 2007 10:45 PM
He didn't say he was going to "take it back", he asked that it be given back to him. There is an enormous difference.

"So, I have this suggestion. If no one has the time or ability to run the Foundation and advance Gentoo, maybe the Foundation should give Gentoo's intellectual property - Portage, code, logos, etc - back to the person who actually created Gentoo and made many personal sacrifices to help it become the extremely successful project that it is today, namely me?"

#

"Intellectual Property" != property

Posted by: Anonymous [ip: 32.97.110.142] on August 25, 2007 12:42 AM
And I'd expect a lawyer to know better, though they may just have used a bad analogy by way of explanation. Copyrights, patents, and trademarks have different sets of laws covering them, entirely different from each other and from property law.

http://www.gnu.org/philosophy/not-ipr.xhtml

#

Re: "Intellectual Property" != property

Posted by: Anonymous [ip: 68.188.17.149] on August 25, 2007 01:25 PM
That is a stupid notion. Is personal property not property because it is covered by a different set of laws that real property? Following that logic, you do not own your fridge or whatever.

#

Can developers reclaim donated IP?

Posted by: Anonymous [ip: 69.17.124.172] on August 25, 2007 12:43 AM
In Daniel's post, he doesn't talk about taking back the IP by force. His point was that if the foundation has fowled things up so much, that they feel they need to send the IP to someone else, why wouldn't they give the IP back to him to continue the direction he had started.



This was why he was a little peaved, and I can understand why. The foundation pressured him, until he finally agreed to give up the IP so they could form the foundation. Now they are realizing how much work actually running a project like this is, so they are looking at giving the IP to a third party to do the Day to day stuff.



At least this is my understanding of the story.

#

Re: Can developers reclaim donated IP?

Posted by: Anonymous [ip: 68.230.96.73] on August 25, 2007 04:15 PM
Well, you got it sort of right. It wasn't the foundation that pressured him (AFAIK*), but certain folks within and without the foundation. Much of the pressure was from Zach Welch, who eventually lead the Zynot fork. Google his name and Zynot and you'll see an essay
(poorly spelt, but oh, well) I wrote on the subject as a reply to a question on LWN. My opinon on the subject is clear from that, but briefly, while he got Gentoo a lot of hosting support at a critical time, I'm not altogether sure why he was with Gentoo at all, he was such a poor fit for it or anything Open Source in general. There was at least one close to the action that from what he's written since, he kinda got fooled by Zach.

However, keep in mind that regardless of the pressure, it was Daniel's decision to setup the foundation and Daniel that pushed and pushed to finally get it thru. Ultimately, it's that pushing, giving of himself until there simply wasn't any more to give, running himself into debt, sacrificing the well-being of his family at times, that finally caused Daniel to give up. He couldn't go any further. However, as a last sacrifice even after it was clear he was leaving, he stayed around working on setting up the foundation and the non-profit entity so there'd be something there to take the legal end when he left.

Unfortunately, that sort of thing leaves a bad taste in one's mouth, and Daniel understandably has a /lot/ of mixed feelings. I imagine it's much like a father watching his grown son make what dad thinks is a a wreck of a lot of potential, but knowing the son is grown now and must make his own decisions.

So yes, Daniel definitely has reason to be frustrated and peeved. However, it wasn't really the foundation that made it so, but primarily one trouble-maker, who left really even before the foundation was fully formed, and certainly while Daniel was still giving it his all, as he continued to do for some time after it was obvious he would really rather be somewhere, virtually /anywhere/ else (which turned out to be MS for awhile, so yeah, /anywhere/ else), and that he'd leave as soon as he possibly could without leaving Gentoo without a legal base upon which to continue. The other guy I mentioned was part of the pressure at the time, but chose to stay with Gentoo (and the foundation) in the split, and as I said, has now written in hindsight that he realizes how he was taken and how much pressure he ended up putting on Daniel wrongly. He says yes, there were some changes that needed made, and Daniel wasn't perfect by far, but under the circumstances, he did a great job. (Or at least that was my read of his journal entry a few months ago).

Regardless, yes, Gentoo is looking at handing over the legal end of things to the Software Freedom Conservancy, and yes, that's gotta be hard on Daniel, but all things considered, I expect he may have done the same thing if it existed at the time. It certainly would have been easier than trying to setup an independent not-for-profit, which to this day isn't working too well, basically because developers don't tend to make great administrators, having neither the skill nor the interest necessary to do so. Yes, it would have been nice if DRobbins had been notified of the discussions a bit earlier rather than having to stumble on them, but that's basically an error of etiquette and failure to show due respect, than anything else, and it really does illustrate how poorly the developers in charge have been handling the legal and political end, again, because they are simply developers, not administrators. So setting it up so the SFC, a bunch of lawyers and administrators interested in Free software and contributing as they can, can run that end of things, seems a pretty good idea. Let them do what they do best and let the developers do what they do best, and things should work better all around.

(* I came in just a few months before Daniel left, after the Zynot split, and after Daniel was on his way out, but while he was still struggling to get the Foundation setup before he left all the way. So I didn't see it all happen, but I saw the end results, and did enough of my own research to have a decent idea of what was going on previous. See that LWN post I mentioned for more of my at-the-time thoughts and some more detail on the Zynot end in particular Zynot, BTW, basically went nowhere fast, as I expected based on my research at the time, and officially folded some time later, after being inactive for some time. In fact, it was apparently seriously slowing down even by the time I did my research. O don't believe the site changed much after that, altho there was still some activity in CVS and on the dev lists at the time, tho they had already slowed down as I said.)

Duncan
[Modified by: Anonymous on December 10, 2007 09:06 PM]

[Modified by: Joe Barr on March 10, 2008 10:09 AM]

#

Re(1): Can developers reclaim donated IP?

Posted by: Anonymous [ip: 68.230.96.73] on August 25, 2007 04:28 PM
Well, that had paragraphs when I previewed it. <shrug>

#

Re(2): Can developers reclaim donated IP?

Posted by: Scott Carr on August 25, 2007 06:50 PM
You have to use
to get paragraphs. I used preview several times to get my post correct.



I am the original parent you replied to. Thanks for the overview. I just knew the article was basing it's information wrong.



I have used Gentoo for the past several years, since around 2005 or so. I used the Sorcerer distro before that, before its creator had a breakdown.

#

US centric, not everything stated applies in Germany

Posted by: Anonymous [ip: 141.84.69.20] on August 25, 2007 12:50 AM
"Intellectual property is property; like any other form of property, ownership can be transferred to someone else." might be true in the USA. In Germany the only way to transfer copyright ownership is through heritage (sic).

#

Re: US centric, not everything stated applies in Germany

Posted by: Anonymous [ip: 81.151.122.200] on August 25, 2007 05:00 AM
And you missed the bit about patents :P

#

Can developers reclaim donated IP?

Posted by: Anonymous [ip: 65.74.26.78] on August 25, 2007 08:45 AM
You missed one critical point, Daniel Robbins was still listed as the legal head and director of the foundation. Not knowing the bylaws that were specific to the particular case, typically such a position could reassign the items in question to another entity or individual. In other words Daniel Robbins cant reclaim it, he can however transfer it back to himself with the same net effect.

#

Re: Can developers reclaim donated IP?

Posted by: Anonymous [ip: 68.230.96.73] on August 25, 2007 04:26 PM
Agreed. He could have tried and likely succeeded, legally. But there would have been a big fight, destroying Gentoo in the process, and the remains would have been worth the trouble. Gentoo would have ended up little more than a footnote, much as Zynot did. I think he realized that, and that it was one of the reasons he backed off as quickly as he did. After all, whether he's fully satisfied with what Gentoo became or not, it's still his baby and he's proud of it. Agree with how they turned out or not, few dads would deliberately destroy their sons, and that's what Daniel would have been effectively doing had he tried to reassert control. (He did come back to the devel list and as an intended developer for an ill-fated week or so, a few months ago. Had you watched that, you'd know that for better or for worse, were he to force his way back, it would have split Gentoo and effectively been the end of it. The current devs are just too independent to come back under a "benevolent dictator", whoever it may be. There's no doubt in my mind there'd be no quicker way to kill Gentoo, and that that's exactly what it would do.)

Duncan

#

Can developers reclaim donated IP?

Posted by: Anonymous [ip: 66.81.38.57] on August 25, 2007 08:29 PM
Well, an informative subject, as I'm sure many have wondered about that, but I do feel its a bit of a stretch from the original Robbins post. Nowhere did Robbins ever suggest "reclaiming" his IP back, in fact his suggestion was specifically what your article concludes... an assignment. He tranferred it originally to the foundation, and then suggested that if they weren't going to bother with upkeep maybe they should transfer it back.

#

Re: Can developers reclaim donated IP?

Posted by: Anonymous [ip: 216.220.254.245] on August 27, 2007 02:29 PM
I agree it wouldn't matter, and for similar reasons, but in a different way than you suggest.

If Robbins decided to try to take back the Gentoo project, the "winner" (IF we had a clear one)
would come down to a matter of public opinion - Do Gentoo users trust the Robbins version
or the foundation version more?

Anything beyond that pointlessly argues semantics about "ownership". Yes, either side could make this
a lawyer-feeding expedition, but it really boils down to whether people prefer Frankenstein or his monster.

#

Why bother? Just Fork.

Posted by: Anonymous [ip: 71.244.11.66] on August 27, 2007 09:39 PM
This whole discussion seems rather silly. Why "take back" anything? If Daniel, or anyone else for that matter, thought that Gentoo was being run so poorly that they needed to take some sort of drastic action, just fork the whole darn project. I expect that virtually everything there is GPL. Any bits that aren't should be small enough that they are easy to replicate. If Gentoo is really doing that poorly and the new distro gets the project back on track, then the new project shouldn't have any problem getting sufficient mass of developers and users as they defect from the broken project.


Tad

#

One flaw in your argument.

Posted by: Anonymous [ip: 198.70.34.226] on August 29, 2007 08:40 PM
While he did transfer everything to them, he also retained the right to use forever all that said IP.
So while he couldn't "take back" all that, he could set up shop all over again with all of it.
Also, the code is GPL, so all he's got to do is fork it. So in effect he can take it all back,
in a manner of speaking.

#

This story has been archived. Comments can no longer be posted.



 
Tableless layout Validate XHTML 1.0 Strict Validate CSS Powered by Xaraya