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From "Lawrence Rosen" <lro...@rosenlaw.com>
Subject RE: ICLA US Government
Date Tue, 11 Mar 2014 21:32:04 GMT


It always shames the legal profession when lawyers – particularly government or big company
lawyers – parse the words of typical FOSS agreements so as to create the maximum degree
of confusion and delay. 


Here's what our ICLA says: ""You hereby grant ... [a] copyright license to ... Your Contributions."
As far as the Foundation is concerned, we're happy for you to sign that even if you don't
actually own any copyrights, so long as you're not giving us someone else's copyrighted works
without their permission. That's all we mean! Perhaps the ICLA could be phrased better, but
only a government lawyer would doubt our meaning given what "open source" and Apache is about.
And only a government (or a giant company) lawyer would demand that ASF negotiate a change
to an ICLA that has been in constant use for years.
The Foundation protects itself from the ambiguity you noted by requiring, in that same ICLA,
that "you represent that you have received permission to make Contributions from your employer"
(which you apparently already have!) and that "you are legally entitled to grant the above
license" (which – considering that the work itself is public domain – you are!).
And given that your government attorneys are acknowledging that the work itself is public
domain, what in the world does the government or you risk by giving it to Apache under an
ICLA or in a ribbon-wrapped package? Do you realize that, if we were so inclined, we could
reach into the government with a FOIA request and probably claim that software even without
your cooperation! :-)
Lawyers, please let's not negotiate changes to words that don't really matter.

Lawrence Rosen

Rosenlaw & Einschlag, a technology law firm ( <http://www.rosenlaw.com/> www.rosenlaw.com)

3001 King Ranch Rd., Ukiah, CA 95482

Office: 707-485-1242

Linkedin profile:  <http://linkd.in/XXpHyu> http://linkd.in/XXpHyu 


From: Evan Ward [mailto:evan.ward@nrl.navy.mil] 
Sent: Tuesday, March 11, 2014 12:53 PM
To: private@commons.apache.org; legal-discuss@apache.org
Subject: Re: ICLA US Government


Luc, you have expressed my frustrations better than I could have. :)

There seems to still be a good bit of confusion over the issues here. I will attempt to describe
the situation as I see it, in FAQ form. Please correct me if I'm wrong on any point (IANAL).
Hopefully this will provide a common ground of what we know, and remove any remaining misconceptions.
Then, agreeing on the current situation, we will be equipped to make a decision. 

1. Do you have the necessary authority to contribute?

Yes. My employer has granted me permission to contribute everything that I have in the past,
and everything that I will contribute in the future, as long as I am a US government employee.
The condition that US law puts on the contributions, and the condition that my employer has
chosen to put on the contributions is that all contributions are in the Public Domain.

2. Can Public Domain works be copyrighted?

No. It is illegal to claim copyright for a work when you, in fact, do not have that copyright.

3. Does including Public Domain works affect the license of the Apache project?

No. Compilations and modifications to Public Domain material are copyrighted normally. The
Public Domain parts (patches) could still be extracted, but they would be mostly useless without
the rest of the Apache Project's code base. 

4. So why do you want to sign an ICLA?

Apache requires all committers to sign an ICLA in order to make the relationship with Apache
explicit. An ICLA is necessary for write access to the repository. It is not necessary for
me to continue to make Public Domain contributions. An ICLA is also not necessary for Apache
to continue to accept my Public Domain contributions.

4. Does the Apache ICLA require that copyright exists in the Contribution?

Yes. It reads "You hereby grant ... copyright license to ... Your Contributions" and "You
represent that you are legally entitled to grant the above license." There are no exceptions.
(Section 7 does not apply because my contributions are my original creation.) In order to
grant a copyright license to a work, copyright must exist in the work. 

5. If I sign the Apache ICLA will I be able to continue contributing, as a US government employee?

No. Since the Apache ICLA requires that copyright exists for all Contributions that I author,
and since copyright does not exist in the contributions I make, therefore signing the Apache
ICLA legally forces me to stop contributing. 

6. Is there an ICLA that permits me to continue contributing. What do other organizations
do for US government authors?

Yes. This issue appears frequently when publishing papers. Most publishers (e.g. IEEE, AIAA)
word their copyright agreements carefully and include special US government sections. For
example, the relevant part of the IEEE copyright form [1] reads, "The undersigned hereby assigns
... all rights under copyright that _may_ exist in and to 
the above Work." (I added the emphasis to the key word _may_). This lets US government sign
the agreement because it only grants a license if the copyright exists. No copyright license
is granted in the case of the US government.

When publishers have agreements that requires that copyright exists in the work I have to
send them this letter explaining why I can't sign it [2]:

The U.S. Copyright Act provides that federal government employees cannot copyright material
prepared in the course of their employment. As an employee of the [name department or agency],
I have no copyright interest to assign, and upon the recommendation of the Office of General
Counsel, [acronym for department or agency], must decline to sign the copyright assignment.

Although for the above reasons I am technically unable to assign any copyright to [name publication],
I still request and authorize you to publish the submitted article in accordance with your
standard editorial policies. I hope this letter will be sufficient authorization for your
needs to enable you to consider it favorably.

As Luc eloquently described in his email, we have been through this legal swamp in the context
of an Apache Licensed open source project before. After ~6 months of persistence we finally
arrived at an ICLA that was approved by both my employer's legal department, and the legal
department of the open source project. I attached the agreement to a previous email and have
included the relevant part:

2. Grant of Right to Use. Subject to the terms and conditions of this
Agreement, You hereby grant to CS in name of OREKIT project and to recipients
of software distributed by CS in name of OREKIT Project a perpetual, worldwide,
non-exclusive, no-charge, royalty-free, irrevocable right to use, to reproduce,
prepare derivative works of, publicly display, publicly perform, sublicense,
and distribute Your Contributions and such derivative works. The Contribution
is contributed to the public domain under no license. If the Contribution is
combined with copyrighted contributions, the resulting “joint work” is
partially copyrighted and partially public domain. The public domain portions
may be extracted from the joint work and used by anyone for any purpose.

You may have noticed that this agreement substitutes "right to use" for "copyright license."
The right to use my contributions without fear of lawsuits is all that Apache really wants.
(IIUC) This license grants that safety.

Not having an ICLA will not prevent me from making Public Domain Contributions, or Apache
from accepting them. The ICLA only determines if I commit my patch directly, or if someone
else has to commit it for me. Since the ICLA is just about expediting the current contribution
process, let's sign the Public Domain ICLA and get back to doing what Apache does best: producing
world class software.

Best Regards,

[1] http://www.ieee.org/documents/IEEECForm121302pdf_1.pdf
[2] http://cendi.dtic.mil/publications/04-8copyright.html#326

On 3/9/2014 3:08 PM, Luc Maisonobe wrote:

Le 09/03/2014 18:56, Ralph Goers a écrit :

On Mar 9, 2014, at 10:20 AM, Gilles  <mailto:gilles@harfang.homelinux.org> <gilles@harfang.homelinux.org>

On Sat, 8 Mar 2014 19:17:33 -0800, Ralph Goers wrote:

On Mar 8, 2014, at 6:18 AM, Luc Maisonobe  <mailto:luc@spaceroots.org> <luc@spaceroots.org>

Hi Gilles,
Le 07/03/2014 20:24, Gilles a écrit :

On Fri, 7 Mar 2014 14:02:40 -0500, Evan Ward wrote:

On 03/06/2014 05:16 PM, Ted Dunning wrote:

Doesn't the ICLA put the onus on you to decide what you
have the right to contribute and what you don't have the
right to contribute?  Isn't that a sufficient carve-out?

I know I have the "right to contribute", but I don't have
the right to grant a copyright license. In that way I don't
think it is a sufficient carve-out. What happens when I
have all the necessary permissions to contribute something,
but I don't have the authority to copyright it?

What's the difference between future contributions without
this document being signed and past contributions, also
without this document having been signed?
What's the problem with including public domain work into an
Apache product?

The problem is neither future contributions nor public domain,
the problem is that in order to get write access as a
committer, Evan has to sign the ICLA. The Apache processes
requires this for everyone, even if in this case it may seem
overkill as Evan work can always be copied and published as it
is not subject to copyright (at least in the US).

As I noted in a post to legal-discuss, if Evan objects to the
ICLA over the copyright clause then we really shouldn’t accept
any of his contributions as that implies that he is not
contributing them under the Apache License (specifically, section

Is it really what he states? IIUC, it's rather that he finds it
impossible to talk about something (i.e. "copyright") which he
thinks does not exist for his contributions.

Yes, that seems to be the issue (or rather, non-issue as all the
replies I’ve seen seem to believe).

Even so, can't he provide permission (to use his "public domain"
work) even if it is not necessary (from his point-of-view)?

Permission to do what?  He can certainly say that he is granting the
right to "reproduce, prepare derivative works of, publicly display,
publicly perform, sublicense, and distribute Your Contributions and
such derivative works”, since the code is public domain. What he has
a problem with are the words that precede that - “copyright license”.
Again, IMO there really is no issue here as the text that follows
“copyright license” is what we really care about and public domain
works surely meet that requirement.

Then, isn't section 4 that could also be the problem? I mean: a
non-proprietary project could grab a "public domain" work, include
it in its non-free/non-open/whatever software without retaining any
of the attributions.

Section 4 is not a problem. Evan knows where the source came from and
knows whether or not it is OK for Apache to use it.

It seems that by contract with the US government, Evan contributes
"public domain" work; IIUC, he seems to think that the code he'd
write could be legally "extracted" from the Apache repository and
reused _without_ proper (according to the Apache licence)

I don’t see that as the issue at all.  All I have read indicates that
the issue is that with a public domain work there is no copyright to
grant so he feels he can’t comply with section 2 of the ICLA (and
section 2 of the Apache license).  I happen to believe that if there
is no copyright to grant then this is not a problem, but I’m not the
one who is questioning signing the ICLA.

As far as I know, the Apache foundation does not require copyright
transfer (contrary to Free Software Foundation for example).

FWIW, yes - public domain contributions could be extracted and reused
without attribution.  I don’t think anybody here really cares about
that.  They are far more likely to use the work as a whole, which
will be under the Apache license.

Well, the FAS says some attribution is required:
The problem as I understand it is really a problem of administration. We
need an ICLA to protect us and our contributors in case of claims if
someone consider the code should not be published by us under our
license. Here, we do *not* need this as there is no associated risk, and
we have already acknowledged this as per FAQ above. However, we still
say "you have to sign the ICLA". This is becoming a Kafka-like situation.
Seriously, can't we just accept him as a committer knowing his work is
under public domain and we already include public domain work in several
apache products?
The modified ICLA Evan showed was the result of similar negociation for
the Orekit project I manage in may day job. I really considered this a
good compromise as a signed proof of goodwill either we or Evan could
show up in case of problem, and it covers everything we need to be
allowed to publish derived work from these contributions, by merely
including them in larger products.
Apache should remain community over code, not administration over people.
best regards,


Can't we just say that it is not so?  I.e. just as a non-free
software is allowed to not retain attribution of a public domain
contribution, Apache software is allowed to require that users
abide by its license even for the part that comes from public
domain contributions.

I don’t believe this is even an issue.

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