The OpenFOAM Foundation Contributor Agreement

Version 1.3, July 2015

Thank you for your interest in contributing to the development of “OpenFOAM”, a free, open source CFD software package, licensed and distributed by the Foundation (as defined below).

The Foundation is a not-for-profit organisation, founded in 2011 in the United States and incorporated in the United Kingdom in 2014. It manages the development of OpenFOAM and its distribution to the public under the GNU GPL.

This Contributor Agreement (“Agreement”) applies to any Contribution that You (both terms as defined below) make to OpenFOAM, and it sets out the intellectual property rights that You grant the Foundation in that Contribution.

If You agree to be bound by the terms of this Agreement, please contact us for a PDF version of this agreement, sign and date it and send it to the Foundation by email. As soon as it is received, the Foundation will countersign it and it will become legally binding on both You and the Foundation, so please read it carefully before signing it.

1. DEFINITIONS

In this Agreement, unless the context otherwise requires, the following expressions have the following meanings:

Contribution means any source code, object code, data file, patch, tool, sample, graphic, specification, manual, documentation, or any other material, posted or submitted by You to the Foundation for inclusion (at the Foundation’s discretion”) in OpenFOAM;

Effective Date means the date that this Agreement shall become effective, which shall be the date that it is countersigned by the Foundation or the date You first Submit a Contribution to the Foundation, whichever is earlier;

Foundation means “The OpenFOAM Foundation”, a company limited by guarantee, incorporated and registered in England and Wales with company number 09012603, whose registered office is at PO Box 56676, London, W13 3DB;

OpenFOAM means the free, open-source CFD software package made available to third parties by the Foundation under the GNU GPL;

Submit/Submitted means any form of electronic, verbal, or written communication sent to the Foundation, including but not limited to, electronic mailing lists, source code control systems, and issue tracking systems that are managed by, or on behalf of, the Foundation for the purpose of discussing and improving OpenFOAM, but excluding any communication that is conspicuously marked or otherwise designated in writing by You as “Not a Contribution”;

Submission Date means the date on which You Submit a Contribution to the Foundation; and

You/Your means the natural person or legal entity identified below.

2. COPYRIGHT TRANSFER

2.1 Pursuant to and for the consideration set out in this Agreement, You hereby assign to the Foundation absolutely with full title guarantee the following rights throughout the world:

2.1.1 the entire copyright and all other rights in the nature of copyright subsisting in Your Contribution;

2.1.2 any database right subsisting in Your Contribution; and

2.1.3 all other rights in Your Contribution of whatever nature, whether now known or created in the future, to which You are now, or at any time after the date of this Agreement may be, entitled by virtue of the laws in force in the United Kingdom and in any other part of the world;

in each case for the whole term including any renewals, reversions, revivals and extensions and together with all related rights and powers arising or accrued, including the right to bring, make, oppose, defend, appeal and obtain relief (and to retain any damages recovered) in respect of any infringement, or any other cause of action arising from ownership, of any of these assigned rights, whether occurring before, on, or after the date of this Agreement.

2.2 In some countries existing and/or future copyright cannot be assigned (e.g. in Germany and France respectively), so to the extent that the assignment in clause 2.1 above is or becomes ineffective or invalid or unenforceable, You:

2.2.1 hereby grant to the Foundation a perpetual, irrevocable, worldwide, non- exclusive, transferable, no-charge, royalty-free, unrestricted licence to exercise all such non-assigned rights. This includes but is not limited to the right to reproduce, modify, make derivative works of, display, perform and distribute Your Contribution and, at the Foundation’s option, the right to sublicense these rights to third parties, through multiple tiers of sub- licensees if necessary. For the avoidance of doubt, You expressly grant the Foundation the right to take action for infringement of copyright and database right under section 101A of the Copyright, Designs and Patents Act 1988; or

2.2.2 where a licence under clause 2.2.1 is not possible, irrevocably waive and agree never to assert such non-assigned rights against the Foundation, any of the Foundation’s successors in interest, or any of the Foundation’s licensees, either directly or indirectly.

2.3 Upon an assignment of rights to the Foundation under clause 2.1 or the grant of a licence to the Foundation under clause 2.2, to the maximum extent possible, the Foundation immediately grants You a perpetual, irrevocable, worldwide, non-exclusive, transferable, no-charge, royalty-free, unrestricted licence to the rights assigned or licensed (as the case may be). This includes but is not limited to the right to reproduce, modify, make derivative works of, display, perform and distribute Your Contribution and, at Your option, the right to sublicense these rights to third parties, through multiple tiers of sub-licensees if necessary. For the avoidance of doubt, the Foundation expressly grants you the right to take action for infringement of copyright and database right under section 101A of the Copyright, Designs and Patents Act 1988.

2.4 If moral rights apply to Your Contribution, to the maximum extent permitted by law, You waive, and if waiver is not possible agree not to assert, such moral rights against the Foundation or the Foundation’s successors in interest, or any of the Foundation’s licensees, either directly or indirectly.

2.5 To ensure the integrity, quality, applicability and usefulness of OpenFOAM, the Foundation has strict vetting procedures in relation to Contributions to OpenFOAM, so not all Contributions will be included as part of OpenFOAM. Accordingly, You acknowledge that the Foundation is not obliged to use Your Contribution or any part of it in OpenFOAM.

3. PATENT LICENCE

3.1 With respect to any patents that You own or can license without payment to any third party, you hereby grant the Foundation a perpetual, irrevocable, worldwide, non-exclusive, transferable, no-charge, royalty-free patent licence, with the right to sublicense through multiple tiers of sub-licensees, to make, have made, use, sell, offer to sell, keep, import, and otherwise transfer Your Contribution in whole or in part, alone or in combination with OpenFOAM (and portions of such combination).

3.2 The patent licence granted in clause 3.1 above is granted only to the extent that the exercise of the rights licensed under that sub-clause would infringe the patents that You own or can license without payment to any third party.

4. OUTBOUND LICENCE

The Foundation agrees, in consideration of Your grant of rights to the Foundation under clause 2 and, if applicable, clause 3 of this Agreement, to license Your Contribution (as part of OpenFOAM) only under the terms of the GNU GPL licence which the Foundation is using on the Submission Date, including the right to adopt future versions of the GPL if permitted.

5. WARRANTIES

5.1 You warrant that:

5.1.1 You own the copyright in and patent claims covering Contributions Submitted by You and that You can legally grant the rights set out in this Agreement;

5.1.2 to the best of your knowledge and belief, Contributions Submitted by You do not and will not violate third party copyrights, trade marks, patents or other intellectual property rights;

5.2 You agree to notify the Foundation if You become aware of any circumstance which would make any of the warranties made in clause 5.1 inaccurate in any respect.

6. FOUNDATION ACKNOWLEDGEMENT

6.1 The Foundation acknowledges that Contributions Submitted by You are free of charge and are made for the benefit of OpenFOAM and the OpenFOAM community as a whole. Accordingly, the Foundation acknowledges that, save for the warranties set out in clause 5 above (which are necessary to enable the provenance of OpenFOAM to be properly established), it accepts that all Contributions Submitted by You are “as is”, without any express or implied warranties of any kind. Further, the Foundation specifically agrees not to take any action against You in relation to any warranties or conditions implied by law (e.g. satisfactory (merchantable) quality or fitness for purpose).

6.2 For the avoidance of doubt, as stated in clause 2.5 above, the Foundation need not incorporate the whole or any part of Your Contribution in OpenFOAM.

7. MISCELLANEOUS

7.1 You agree that the Foundation may publicly disclose your participation in OpenFOAM, including the fact that you have signed this Agreement.

7.2 Each provision of this Agreement operates separately. If any court or competent authority decides that any of them are unlawful or unenforceable, the remaining provisions will remain in full force and effect.

7.3 Except where mandatory rules dictate otherwise, this Agreement, its subject matter and its formation (and any non-contractual disputes or claims) shall be governed by English law. You and the Foundation expressly exclude the application of the United Nations Convention on Contracts for the International Sale of Goods to this Agreement. You and the Foundation both irrevocably agree to the exclusive jurisdiction of the courts of England and Wales.

7.4 Either party may terminate this Agreement for convenience by providing the other with written (which shall include email) notice of termination. Such termination shall become effective thirty (30) days following receipt of the termination notice by the other. For the avoidance of doubt, termination of this Agreement shall have no effect on Contributions Submitted by You, and licences granted to You, prior to the date termination becomes effective. Any terms of this Agreement that by their nature or otherwise reasonably should survive a cancellation or termination of this Agreement shall also be deemed to survive.

NOTES ON CONTRIBUTOR AGREEMENT

Overview

The OpenFOAM Foundation (“Foundation”) is passionate about managing the development of OpenFOAM and protecting its integrity. In order to carry out both tasks, the Foundation needs to have ownership of the code or a grant of rights sufficient to allow the Foundation to be able carry out these tasks, which is what the Contributor Agreement (“Agreement”) is all about.

It is intended to be used both by individual contributors and by corporate entities.

Definitions

The Agreement starts off with a Definitions clause, and this is to make sure that when certain words are used in the Agreement, we both know what they mean. Two of the most important definitions are, “You/Your” which covers both individuals and corporate entities and “Contribution” which covers what contributors submit to the Foundation for inclusion in OpenFOAM.

Copyright Transfer

This clause is the meat of the Agreement. Under English Law, the person who writes software or a book or an article is the first owner of it, unless that person carried out that writing in the course of their employment. If that is the case, then the first owner of the software or book or article will be that person’s employer. This is also the case under the US Commercial Code. This clause deals with the transfer of rights from the individual or corporate contributor to the Foundation and we explain why this is necessary in the next section of this note.

Assignment: Clause 2.1 of the Agreement is an assignment from the owner of the Contribution (be it an individual or corporate entity) to the Foundation. This ensures that the Foundation owns the Contribution, which makes OpenFOAM considerably easier to administer and defend.

Licence: In some countries it is not possible to assign copyright in Contributions, so to deal with this situation, clause 2.2 provides for the contributor to grant to the Foundation, a licence to the Contribution which is as wide as possible, to try to give the Foundation (as far as is possible in licence form), what it was impossible to give the Foundation by assignment.

Non-assertion: If, for any reason, it is not possible for a contributor even to grant the Foundation a licence, then the Agreement just asks the contributor not attack the Foundation or any of its licensees with the rights he or she (or it) has, so that the Foundation can get on with managing and defending OpenFOAM.

Licence Back: It is important for contributors to realise that by transferring their rights to the Foundation they do not lose the ability to work with the Contribution they created. The Foundation grants back to the contributor, in clause 2.3, a licence to do pretty much whatever that person wishes to do with their Contribution. It is in exactly the same terms as the grant made to the Foundation where an assignment is not possible, so the Foundation grants back exactly what it has received.

Moral Rights: In clause 2.4, we ask contributors to waive or not assert (where they cannot waive) any moral rights they have in their Contribution. Moral rights are rights linked to the personality of the creator. They include the right to be recognised as the author of any work and the right to object to a work being altered in a way that has negative effect on the author’s reputation.
In actual fact, in the UK, the right to be identified as the author of a work and the right to object to derogatory treatment of it, do not apply to computer programs, so we are just dotting the “i’s” and crossing the “t’s” here, to give OpenFOAM room to grow.

Why the Foundation wants contributors to assign their rights if they can.

In English Law, under the Copyright, Designs and Patents Act 1988 (“CDPA”), the right to take action against someone who infringes a copyright work is reserved to (a) the copyright owner (s. 96(1)), (b) an exclusive licensee (s. 101(1)); and (c) a non-exclusive licensee but only if (i) the infringement is directly connected to an act which the licensee had been licensed to carry out under the licence, and (ii) the licence is in writing, signed by the copyright owner, and expressly grants the non-exclusive licensee a right of action under section 101A of the CDPA.

An exclusive licensee has, except against the copyright owner, the same rights and remedies in respect of matters occurring after the grant of the licence as if the licence had been an assignment. An exclusive licence means that no person or company other than the named licensee can exploit the relevant copyright. Importantly, the licensor is also excluded from exploiting the copyright, that is why the licence is “exclusive”, it excludes the licensor.

As an alternative to an assignment, it would have been better for the Foundation to have had exclusive licences from contributors but as the Foundation grants back all of the rights it receives from contributors, by definition the licence it receives from contributors cannot be exclusive, as the contributor must also have the right to exploit the copyright in the Contribution he or she (or it) makes along with the Foundation. This means that the Foundation can only take a non-exclusive licence from its contributors.

Its position is therefore much worse than if it were the owner of Contributions made to OpenFOAM as it must rely on section 101A of the CDPA, otherwise it could not take action against people who infringe OpenFOAM by, for example, copying it or adapting/making derivative works of it or by issuing copies of it/adaptations to the public or licensing anyone else to do any of those things.

The other problem with anything other than an assignment is that the Foundation’s right (as a non-exclusive licensee) to bring an action for infringement of copyright in OpenFOAM is concurrent with those of the copyright owner (sections 101(2) and 101A(3)).

This means that the Foundation cannot take any action in the courts (e.g. for damages) against a person infringing OpenFOAM, apart from applying for an interim injunction, without joining the contributor as a claimant in the action or obtaining the leave of the court. This may be the last thing a contributor wants. What the Foundation wants to do is get on with the job of expanding the usefulness of OpenFOAM to the world at large and protecting the interests of all who have contributed to it – without dragging them into the nitty gritty of court proceedings or by having to obtain the leave of the court which at best would increase the costs of the proceedings and at worst may not be granted, leaving the Foundation high and dry without a remedy.

That is why the Foundation would like all contributors to assign ownership of their Contribution to the Foundation.

OpenFOAM is wedded to the GNU GPL

The other thing contributors are frequently worried about when assigning rights to an organisation running an open-source project, is that the organisation gaining those rights will privatise the software. In fact many organisations say that they will licence the rights they gain only under an open source licence approved by the Open Source Initiative (“OSI”). But of course, OSI approved licences such as the BSD licence and the MIT licence allow the software to be “privatised”.

The Foundation has always favoured the GNU GPL and makes, in clause 4 of the Agreement, an unequivocal statement that any Contribution sent to the Foundation will be licensed (as part of OpenFOAM) by the Foundation only under the terms of the GNU GPL licence which it is using when the Contribution is submitted to the Foundation – including the right to adopt future versions of the GPL if permitted. So there is no chance of any Contributions being privatised by the Foundation.

Indeed that is what the Foundation was founded for, to keep OpenFOAM free.

Patent Licence

Clause 3 grants a patent licence to the Foundation in respect of any patents that a contributor may own. All the Foundation wants to do is licence OpenFOAM under the GPL. So if a contributor’s Contribution to OpenFOAM is covered by a patent that could stop OpenFOAM from being used or distributed, the Foundation merely wants the contributor to grant it a licence to allow it to do all of the things it needs to do under the GPL, thus avoiding infringing the patent.

Warranties

Clause 5 requires the contributor to warrant two basic things, firstly that he or she (or it) owns the copyright and patent claims in the Contribution made and secondly that to the best of the contributor’s knowledge, the Contribution does not infringe anyone’s intellectual property rights. These should not be difficult things to warrant.

For example, if the contributor wrote the Contribution, is not employed and did not copy it from anyone else, he or she owns the copyright and it is extremely unlikely that any other persons rights will be infringed. None that a contributor could easily find out about anyway and that is what the words “to the best of your knowledge and belief” mean.

The Foundation, if it is to take action in the courts, needs to be certain about the provenance of OpenFOAM otherwise it will not succeed and the Contributor Agreement and these warranties is how it will prove that it owns OpenFOAM and thus has the right to take action against infringers.

Foundation Acknowledgement

The Foundation acknowledgment in clause 6 is all about terms which are implied into contracts by law. The Foundation accepts that Contributions submitted to it are not being charged for and it is therefore unfair for it to expect Contributions to be perfect. It therefore accepts that Contributions are “as is” and even if the law says that a Contribution has to be of satisfactory (i.e. merchantable) quality) or fit for the purpose (because these implied conditions cannot be excluded) it will not take action against contributors for sub-standard Contributions.

Law and Jurisdiction

The only other clause which probably needs a mention is clause 7.3 which deals with how the Agreement will be interpreted and where disputes (if any) will be heard. As the Foundation is located in England and most of OpenFOAM has been written by people located in the United Kingdom, it therefore makes sense to give the courts of England jurisdiction over any disputes.

Choosing a law to apply is important as various words and phrases have different interpretations in different jurisdictions. Applying English law gives us as much certainty as we need that the Agreement will be interpreted in the way that we want it to, even though we have used some words which have clear meanings in jurisdictions other than England and Wales. Lastly, because the United Nations Convention on the International Sale of Goods (“UNCISG”) would apply automatically to the Agreement if a contributor is not in the United Kingdom but in a country which is a member of the UNCISG, we expressly disclaim it as otherwise we could not be certain about the interpretation of terms used in the Agreement.

Anyway, we hope these Notes help our Contributors and if there are any other questions about our Contributor Agreement, please contact us.