Use MIT license to give some of the previous written code to employer so that I protect theself and don’t lose the copyright

copyrightlicensingmit-license

My situation:

  • I have written a framework before I started my new job. I own the copyright.

  • It has a bunch of boilerplate logic inside of it, like any piece of software. (duh!)

  • I don't want to use the whole framework in my new job, but I do need to re-use some parts of it in a similar framework that I am building for my new job.

  • It is impractical to re-implement / re-think all the logic from scratch. It is a lot of logic and logic is logic, you can't make it much different. For example, how many different versions of a HashMap can you code? I bet they will be very similar and the third version can claim that you violated the copyright of the first version. 🙁

  • It is impractical to try to re-invent the API. Can you re-invent the API of a HashMap? Maybe you can change put(k,v) to add(k,v), but not much more than that.

My idea to protect myself and my previous code:

I will tell my employer that I am building the new framework based on a previous one that I have written under the MIT license. So in the future if I use my previous framework someplace else, or even another derived version of it, that has some pieces of code similar with this new framework I am building now for the employer, they won't be able to say I am using their code, the one I wrote for them.

My questions:

  • I am not distributing my code to anyone. I don't have to distribute my MIT licensed code to anyone, if I own the copyright, correct? I mean, can someone request that I release my code that I now claim it is under MIT license? It would not be the end of the world and I would certainly agree to do that under a legal threat.

  • Does this strategy make any sense? My final goal is to be able to use a derived version of my previous coded framework without losing the copyright to it. At the same time, i do not want to distribute this code as an open-source project to anyone. I have other open-source projects, that I freely distribute, but this one I would like to keep it to myself so I can use on my jobs (not contractor jobs).

It is like claiming that you have a framework under the MIT license, without actually distributing and/or showing to anyone. If it is out there, free and easily available, my employers don't need me anymore. They can just take the code and give it to someone else to use it.

Notes:

  • I have listed this framework as a previous invention before I started the job.

  • I have not released this code anywhere. It is on my private SVN repo I host in my private server.

My idea in a nutshel:

  • My plan is to keep the previous code to myself, use parts of it in this new framework I am building for the employer and tell the employer it is work derived from a MIT licensed framework I have coded before and have not distributed to anyone". I am not forced to distribute a software I coded under MIT license, am I? If later, some legal claim happens (hopefully not), i can immediately paste the license on all the sources and show/release the code.

Best Answer

I used to be an IP lawyer, so have experience with license-ese. I feel like the terms themselves are fairly readable and understandable, but then again, I'm marred by three years of law school and some lawyering time before getting my wits again and returning to hacking. Particularly since I'm not currently an active lawyer, this certainly isn't intended as legal advice in the slightest.

Lets start with the MIT license language itself. Then I'll lay out a few key points to understanding open source licenses, then address your questions and provide any high-level observations.

Permission is hereby granted, free of charge, to any person obtaining a copy of this software and associated documentation files (the "Software"), to deal in the Software without restriction, including without limitation the rights to use, copy, modify, merge, publish, distribute, sublicense, and/or sell copies of the Software, and to permit persons to whom the Software is furnished to do so, subject to the following conditions: (that they leave this notice in it. The end. )

A few key things with most open source licenses (including BSD, MIT, GPL) for copyright owners are:

  1. The license doesn't alter your ownership of the copyright itself. Its a non-exclusive license, not an assignment or forfeiture of ownership. Using an OS license is not "putting something into the public domain", although that is certainly one approach to open source.
  2. Nothing "forces" you, the copyright owner, to make the code public in any way just because you attach a license to it.
  3. But if you use an OS license, you can't prevent anyone who "obtains" your OS-licensed code from making it public in any way, which is explicitly within their rights under all of these licenses.
  4. Copyleft (e.g., GPL) licenses do require obtainers (but not the owners) to make their derived works public and open source. Permissive (MIT, BSD) don't. (this may be a bit of a simplification, but is the essential difference)
  5. There isn't a "takeback" clause to most open-source licenses (e.g., MIT) so once someone has "obtained" your code, they have the right to use it perpetually, under the license terms under which they received it.
  6. You can always distribute future versions of your code under a different license, or keep them completely proprietary. That doesn't stop someone from starting with your previous, open-source version (assuming they "obtained it") and adding on their own new parts and distributing it.
  7. You can remove a channel of "obtaining" for previous versions of your code, e.g., take it off github. However, as mentioned, that does not prevent others from using or distributing any previous versions you had open sourced, in any way.

With that basis, I'll move on to your questions.

I am not distributing my code to anyone. I don't have to distribute my MIT licensed code to anyone, if I own the copyright, correct? I mean, can someone request that I release my code that I now claim it is under MIT license? It would not be the end of the world and I would certainly agree to do that under a legal threat. ... At the same time, i do not want to distribute this code as an open-source project to anyone.

As copyright holder, you don't have to distribute any code to anyone; you wouldn't have to honor such requests (even if it was GPL). You retain all rights. However, in the situation you describe, you would be distributing to your new company and licensing it to them perpetually under an OS license. Your employer (more likely ex-employer) could paste your code to the internet, and you wouldn't be able to do a thing about it besides grumble.

I assume you mean "anyone besides my employer". If you don't want to give it to your employer "as open-source" and give them all the rights that are included in that license, including redistribution and perpetual use in whatever way they want, then you shouldn't be using an open source license. You should just licensing it directly to them under the terms you want. Bullet point out what you want, and have a lawyer bill you an hour or two to put them into a paragraph form. Or write it yourself. Licenses are just contracts which are just agreements put into words.

My final goal is to be able to use a derived version of my previous coded framework without losing the copyright to it.

You can't lose the copyright unless you assign it to someone, license it exclusively (including excluding yourself) or forfeit it. Open source license are none of these. You'll always be able to use derived versions you create, and can even license the derivations differently or retain all rights.

But, a primary, legitimate concern of yours seems to be that you continue to be able to retain copyright and use your code in the future without the employer claiming the code as theirs or that you're outside your rights to do so. The keys to this is to create an irrefutable evidence that A) you retain copyright to your previous work and are providing it to them under X license terms (MIT works, if you're ok with the open-source aspect of it described above.) B) they agree to these terms, and C) what, exactly the previous work was.

For (A) and (B) you can get them to sign or agree in writing to something that references or includes the license and that they understand that you're bringing the code to the table under those terms. As to (C) I'm not sure what the standard way of doing this would be, but be logical. If its not terribly massive you could just print the code out and include it in the addendum in copies of the agreement that both you and your employer sign. Keep your copy, with their signature on it. If it is too big to practically print, it seems like an md5 hash would come in useful here. Maybe you could refer to it as something like "the zip file named X in the private github repository /, (or ftp site, etc.), which has a md5 hash of XXXXXX... and was emailed to Y company reprentative on Z date". Then you can email it to your manager or their lawyer or whoever from your personal email account and even if they delete their copy you still keep yours and they can't argue that you predicted the future md5 hash of code that isn't written yet. That would theoretically prevent them from claiming anything else down the road.

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