Can developers reclaim donated IP?

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.