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Suppose a developer's contract says that all intellectual property (IP) rights to her code belong to her UK employer. While employed, she develops a library and open-sources it under the Apache 2.0 licence. The employer is not initially informed, but later finds the library's public repo on GitHub.

Questions:

  • Can the employer force revocation of the licence?
  • What would then happen to those who forked and started using the library before revocation?

There are related questions on OS SE, such as https://opensource.stackexchange.com/questions/4012/are-licenses-irrevocable-by-default. But they do not seem to address the situation when a library is open-sourced in violation of an employer's IP.

  • Comments are not for extended discussion; this conversation has been moved to chat. – feetwet Jun 13 at 19:13
  • Here's why employers may want sweeping IP clauses in their contracts: brightjourney.com/q/…. (Esp. the first answer, by the SE founder.) Although US-centric, the answer could apply to tech companies regardless of jurisdiction. – Tupolev._ Jun 15 at 15:20
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The Apache 2.0 license purports to be irrevocable, but it also presupposes that the supposed licensor has the right to grant permission to copy. In this case, that is untrue, so there never was a proper license and nothing to revoke (the copyright owner grants permission in the form of "a license" which is a legal abstraction, that normally is specified in the license document). An end-user snared by this illegal license might attempt to sue the author because of the legal screw-up but paragraph 9 says that the supposed licensor cannot be held liable. In this case, though, "licensor" is defined not as the person who hands you the license document, but as the copyright owner. So it's the employer who would be not liable under the terms of the document (but since the employer had nothing to do with the license, it's as though the license never existed).

The end-user is a secondary infringer (the employee is the primary infringer, in illegally distributing the material). Under US law, that doesn't matter, the user is still liable. Under UK law, secondary infringement includes the element that you have to have reason to know that the copy is infringing, which in the scenario that you describe is not the case.

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    I'm a little confused about part of the argument. Near the start, you say that "there never was a proper license and nothing to revoke". But after that, you cite Paragraph 9 of the license, as though Paragraph 9 were still valid. Does this mean that the license continues to hold legal weight despite not being proper? And if so, could you clarify what it means for the license to not be proper? This is, what's the legal significance of the license if it's not proper? – Nat Jun 11 at 20:23
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    @interfect There is no copyright registration in the UK, and yes the company does actually have it from the beginning even if there was copyright registration. – Greendrake Jun 11 at 23:09
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    Even in the US, the end-user would likely have a rather strong innocent infringement defense, given the facts as stated. – Kevin Jun 11 at 23:33
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    As I understand it, employees can bind their employer in contracts by having implied authority to do it because of their position - eg, a car salesman who sells you a car can't ask for it back just because he'd forgotten he had been forbidden from doing it by his employer. Is there no question of this here? Could an employee have implied authority to issue a licence that third-parties could rely on, even if the employee is breaching the employment contract? – Alex Hayward Jun 12 at 7:12
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    But is it not like this: The employee has made two contracts, one with their employer (emplyment contract) and one with you (FOOS license). Since both contracts promise rights to the same piece of software, they cannot be enforced at the same time - so she has broken one of them. - The only difference to decide the validity of both contracts would be timing - since her employment contract was signed first, it prevails automatically ? – Falco Jun 13 at 11:54
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The License is not valid in the first place, as the developer did not have the right to attach the license to his work; the company does.

If someone uses the developer's work, and the company sues them for copyright infringement, the license will not protect that person, since the license isn't enforceable.

To prove this in court, the company will likely have to prove that the employee was under a contract giving them all the rights to his work made whilst in their employment.

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    But even if the employer has all rights to the employee's work, the employer can in principle release the code under the Apache licence. And cannot this be performed by any employee acting on behalf of the employer? So they'd probably also have to prove that the employee was not allowed to do business on behalf of the employer to that extent? – Hagen von Eitzen Jun 11 at 21:37
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    The law cannot stop anyone doing something illegal. But if the employer has breached his/her employment contract, the employer doesn't need to go to court to take action against him/her. – alephzero Jun 11 at 22:38
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    @HagenvonEitzen However, the license statement itself likely already contains this information. If it is noted as "copyright <employee name>" instead of "copyright <company name>", that would seem to make it pretty obvious that the employee was never claiming that the company was granting any license to the software, but rather just asserting that they themselves owned the copyright (which they didn't.) – reirab Jun 11 at 22:45
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    @alephzero The employer can fire the employee without going to court of course, but if they wish to sue the employee for the employer's losses they will have to do so in court. – Martin Bonner supports Monica Jun 12 at 8:46
  • A person can assign his IP rights to another. When the employee created the original work, by contract (assuming there is one to this effect in place) the right is automatically assigned to his employer. I can only advise to the law of england and wales, but this is the stance an english court will take. – Shazamo Morebucks Jun 13 at 16:33
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If it reaches court, it will come down to whether she developed it in connection with the work she was employed to do, or whether it was something completely different.

I remember reading about case-law being established by an engineer working for the National Coal Board, who developed and patented a machine for peeling onions in his spare time. The NCB claimed the patent under a "we own everything you invent" clause. The courts decided it was unenforcible. There was no provable connection between whatever he was paid to do, and an onion-peeling machine.

If the employee imported her library into what she wrote for her employer, or if they can prove she worked on it during work hours (commit times might undo her), or if there's an "obvious" overlap of functionality with the paid work, then she is in legal difficulty.

Footnote. The National Coal Board became defunct a long time ago and I've never heard any more of an onion-peeling machine, so it may have been cause for tears all round.

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