Assigning Ownership

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This book is about licensing, but there is an alternative to licensing that is occasionally employed by open source projects to ensure that the projects themselves have the right to license contributions. Authors are encouraged to assign their entire ownership interest in open source software (and occasionally the ownership interest in any patents embodied in that software) directly to the project. This assignment is an effective way to ensure that the project itself has the authority to license the software.

You will recall that the owner of intellectual property may dispose of it as if it were real or personal property, including by sale or gift. Once transferred to a new owner, it is the new owner who has the exclusive rights described in this chapter.

This technique of copyright assignment is generally neither useful nor necessary, because an open source license can convey all rights as effectively as an assignment. There are only a few limited occasions when an assignment is preferable.

First, as I shall explain more fully in Chapter 12 on open source litigation, only the owner of a copyright, or an exclusive right under copyright, or the owner or exclusive licensee of a patent right (e.g., in an explicit territory or field of use) has the right to sue to enforce those rights or licenses. (17 U.S.C. § 501[b]; 35 U.S.C. § 281.) Second, since intellectual property is inheritable upon death of the owner, the owner may prefer to assign a valuable copyright or patent rather than burden his heirs with something they may not understand, appreciate, or know how to manage.

Copyright law in the United States requires that copyright assignments be in writing. (17 U.S.C. § 204[a].) Similar provisions apply to patent assignments. (35 U.S.C. § 261.) As an exercise in legal drafting, an assignment usually includes the formalities needed to satisfy the writing and filing requirements of copyright and patent law.

One risk to the original author of assigning a copyright is that the author loses the right to license it yet again under different terms to different licensees . (I discuss dual licensing strategies in Chapter 11.) Once copyright ownership is assigned, the new owner has the exclusive right to decide on licensing strategies, and the original owner has no rights left (unless he or she receives a license-back, about which I will say nothing more in this book).

Another risk of assignment is that many open source projects have informal structures, often without a legal corporate entity behind them. Assigning a copyright to an informal entity leaves in doubt just who has the authority to commit to licensing decisions. Indeed, if a project makes licensing decisions that the original copyright owner dislikes, that original owner will have no legal basis to object and will be obligated to honor the express provisions of the written assignment that he or she signed.

Other than the infrequent situations described above, there is little advantage to open source projects to receive assignment of copyrights and patents. Everything that an open source project needs, including the rights to make copies, create derivative works, and distribute the software, is provided by any of the open source licenses described in this book as readily as by an assignment. Contributors and the open source projects that receive those contributions can usually accomplish their objectives with an open source license instead of an assignment.

Since a license accomplishes much the same thing in open source as an assignment, I will not bother describing the special language that would be needed for an assignment to make it legally effective. Nor will I describe how to draft an assignment that includes a license-back to the original owner. These are questions best directed to your own attorney.

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Open Source Licensing. Software Freedom and Intellectual Property Law
Open Source Licensing: Software Freedom and Intellectual Property Law
ISBN: 0131487876
EAN: 2147483647
Year: 2004
Pages: 166

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