It has recently come up in discussion in the Apereo Foundation Licensing discussion group whether new contribution agreements are needed when an individual gets a new job like my additional job at Blackboard or in the case where rSmart’s Sakai operation became part of Asahi Net. The discussion centers around these two documents:
Sakai Individual Contributor License Agreement 1.0.1 (i.e. ICLA) (cached copy)
Sakai Software Grant and Corporate Contributor License Agreement v1.1.1 (i.e. CCLA) (cached copy)
These documents were based on the Apache Individual Contributor License Agreement (ICLA) : (2004 version) and (current version) (there were inconsequential text changes on the Apache document between 2004 and the present – but the version on the Apache document was not changed)
Some in the discussion were pointing out that when a person changes jobs and they have an ICLA on file with the project that they do not need to sign a new ICLA. Many of us with long experience point out that this is not the point – even if some lawyer reads the words literally and informs us that there is nothing in the wording of the above documents that forces individuals or corporations to file a new ICLA or require a CCLA for their new company – it is in the best interest of the project to file new CCLA and ICLA documents.
That technical/legal argument misses the whole point. This is not about doing the minimum that is legally required – instead we should take steps to insure that new ICLAs and a new CCLA is filed to best protect the projects’s interests.
This is my more detailed response in that mail thread.
All the documents definitely mention the employer(s) and address the “employer(s) permission” in their section 4:
You represent that you are legally entitled to grant the above license. If your employer(s) has rights to intellectual property that you create that includes your Contributions, you represent that you have received permission to make Contributions on behalf of that employer, that your employer has waived such rights for your Contributions to the Foundation, or that your employer has executed a separate Corporate CLA with the Foundation.
This is a very important clause. It does not require a signature from your “boss” on the ICLA and does not require a Corporate CCLA – but requires diligence on the part of the employee to obtain permission and assure continuous monitoring of anything that might change the permission as requested in section 7:
You agree to notify the Foundation of any facts or circumstances of which you become aware that would make these representations inaccurate in any respect.
It is almost 100% likely when an individual changes jobs that their ICLA needs *review* as they will have signed an IP arrangement with their new job unless the new job is distinctly non-technical – like you switched from a job doing software development to being a taxi driver.
In order for the employee to comply with section 7 of the ICLA the *most-absolutely-squeaky-clean* way to do this is to (a) have the new company file a CCLA explicitly listing the individual(s) involved and (b) have the individuals re-affirm their ICLA by re-submitting a new one. This is what I did when I joined Blackboard.
Some *lawyer* might advise us that we *technically* are not forced to follow the safe path by literally reading the words in the contracts – but I would then tell that lawyer “thanks for your advice” and follow the safe path. A wiser lawyer likely would say “you don’t have to demand a CCLA – but particularly when a technology company is involved your best approach is to get the CCLA and new ICLAs to cover all the bases if it ever came up in court…”.
If for example, if I went to work for Blackboard and I asked them to sign a CCLA and they refused to sign a CCLA, then I as an individual would need to inform the foundation (under section 7) that my ICLA was no longer valid as my conditions had changed. The whole structure pre-supposes that the individual is carefully monitoring and protecting the foundation’s interest across changes in their employment situation.
As another scenario, if a person working for a university was reorganized into a new unit and was explicitly told by their supervisor that they were *prohibited* from working on Sakai – it would also (in my opinion) trigger section 7 and makes the ICLA invalid – and so to protect the foundation the individual should stop making commits. And whether or not a rent-a-lawyer would say there are no words that insist that the ICLA is invalid – if an individual continues to contribute under cloudy IP conditions puts the foundation at grave risk.
So this is about not just the letter of the contract – but also an individual’s personal commitment described in section 7 within those contracts to protect the foundations interests as their job situations change. We as individuals need not to think about the least we are legally required to do – but instead what is best for the long-term health of the foundation. So even if a lawyer says we don’t need a new ICLA and don’t need a CCLA when we get a new job, as individuals we should want to go beyond the technical minimum and give the foundation maximum protection.