Standardized contributor agreements - the next level

Sylvia F. Jakob

On 4th September 2013, a team of independent legal experts launched the website that aims to crowdsource views from the different open source communities with an interest in the standardization of contributor agreements.

What makes special, is the depth with which the legal team conducted its research, the insights of which have been implemented in the Draft Entity Contributor Exclusive License Agreement template currently open for comments by the wider community.

Given that most successful FOSS projects operate across international borders inviting developers from all over the world to make contributions, it is all the more laudable that the team undertook to illuminate the contractual and intellectual property peculiarities of contributor agreements that still deeply divide the Continental and the Anglo-Saxon legal systems.

Who can safely say he understands the difference between Copyright Assignment Agreements (CAA) and Copyright License Agreement (CLA)? What is the legal effect of using one instead of the other in the USA, what would be legal effect in Europe?

As part of the preparations for the launch of the website, Tim Engelhardt, a lawyer at JBB Rechtsanwälte, Berlin, produced a research paper called DRAFTING OPTIONS FOR CONTRIBUTOR AGREEMENTS FOR FREE AND OPEN SOURCE SOFTWARE: ASSIGNMENT; (NON-) EXCLUSIVE LICENSE AND LEGAL CONSEQUENCES: A COMPARATIVE ANALYSIS OF GERMAN AND US LAW .

It examines the copyright receiver´s right to grant (FOSS-) license(s), his ability to transfer rights to other entities and his standing to enforce copyrights infringements against third parties when using either a CAA or a CLA. It further explores the copyright donor´s remedies against the copyright receiver in case of a  CLA/CAA breach.

According to the author´s findings it might be advisable to use an “exclusive license”, which may be regarded as a viable middle way operating effectively across multiple jurisdictions.

In a similar vein the “choice of law clauses” in CAAs/ CLAs were examined by Prof. Dr. Axel Metzger, LL.M. (Harvard), in his research paper: INTERNATIONALISATION OF FOSS CONTRIBUTARY COPYRIGHT ASSIGNMENT AND LICENSES: JURISDICTION – SPECIFIC OR “UNPORTED”?

Prof. Metzger explores the question which national contract- and copyright law might be applicable to CAs and CLAs where parties included a choice of law clause into their agreement and where no such choice was made.  

This is all the more interesting, since contrary to the common held belief, a choice of law clause is not necessarily the end of the story. Differing copyright regimes and the respective conflict of law rules, may prescribe that the law applicable is not the chosen law, but due to the territoriality principle the law of the country in which protection is sought (lex loci protectionis).

Following on, Prof. Metzger examines the possibility of using “unported” licenses that are not jurisdiction specific, but use generic language resembling the language of international treaties in the field as closely as possible.

According to his findings, it might be advisable for FOSS projects to use CAs/CLAs that are drafted in compliance with the jurisdiction of the central administration of the project, but for all copyright issues that are not subject to party autonomy to use generic language that does not point to a single jurisdiction.

Finally, and to a considerable extent intertwined with the work of  Prof. Metzger and Tim Engelhardt, follows  the  research by Andres Guadamuz, Senior Lecturer in Intellectual Property, University of Sussex and Andrew Rens, Senior Lecturing fellow, Duke Law School, who engaged in A COMPARATIVE ANALYSIS OF COPYRIGHT ASSIGNMENT AND LICENS FORMALITIES FOR OPEN SOURCE CONTRIBUTOR AGREEMENTS

Guadamuz and Rens conducted a survey asking high profile experts of 16 jurisdictions about the  formalities for CAAs and CLAs. Whilst  most  jurisdictions  require or favor recording contributor agreements in text form, some jurisdictions insist on formalities of signature and writing. Hence any form of standardization of contributor agreements would have to address the question of how to assure legal validity and enforceability in local courts while relieving developers and projects from the burden of additional paper work.

From the research emerged that there is a strong indication that while formalities are required for the complete transfer of copyright (CAA), there may be fewer or laxer formalities for (non-) exclusive licenses (CLA). In any event all jurisdictions surveyed allowed contracts to be concluded by electronic means by allowing electronic signatures, and by having broad definitions for written requirements.

According to their findings, it may thus be recommendable to use exclusive licenses and to make contributions easier by allowing the transfer or licensing through electronic forms.

Should you wish to obtain a crisp overview of the topic, you should  consider Dr. Maracke´s EDITORIAL: COPYRIGHT MANAGEMENT FOR OPEN COLLABORATIVE PROJECTS: INBOUND LICENSING MODELS FOR OPEN INNOVATION,

All articles were published in the August 2013 edition of scripted,the peer-reviewed online journal supported by the University of Edinburgh, Scotland.