Observations from the Global Legal Hackathon 2018: The Communal Dimension of Intellectual Property

The Sydney Round of the Global Legal Hackathon, on which I have the privilege of reporting, brought together participants from a range of backgrounds including law, programming, project management and engineering, and created collaborative environments that fostered mutual learning. Some teams were formed around existing networks – there were tech-savvy law students, in-house lawyers and company teams who had also invited representatives of their business partners to participate. Other teams were formed at the beginning of the hackathon. The mentors, judges and organisers included current and former lawyers, writers, business students and entrepreneurs.

The spirit of collaboration emerged from the conscious choice of all those who took part. But given the divergent, and at times contradictory, professional interests involved, it could have gone otherwise. While for some this was predominantly a learning experience, for others it was a chance to hack the obstacles normally encountered in their professional lives thereby forging a more robust legal profession. As with the professional backgrounds and interests of the participants, there was significant divergence in participants’ awareness, or regard for, their intellectual property (IP) rights with respect to the weekend’s activities and their outputs. Indeed, several teams expressed intentions to further develop their projects, whether inside or outside existing workplaces.

Who owns the IP?

The Terms and Conditions (T&Cs) for the Global Legal Hackathon (GLH), displayed on the official website, recognise that participants are the owners of IP related to their entries, but require the granting of a licence to material generated by participants for the promotional purposes of the event. This seems commensurate with the hosts’ provision of facilities, amenities and context. It was participants who brought the vision, ideas and expertise that led to the outcomes of the hackathon. However, not all hackathon hosts have taken such a backseat role regarding the issue of IP rights. T&Cs with regard to Hackathon-style events are wildly inconsistent in their treatment of IP in the context of hackathons. In 2015, the T&Cs of Telstra’s IoT Challenge granted Telstra a first right of refusal for any “New IP” developed during the hackathon, which right would last for 18 months following the event.

More controversially, in 2013, the Sydney Opera House (SOH) organised a “Hack the House” event and met with severe criticism from the start-up community when it included a clause that assigned to it all rights in participants’ work. The SOH backed down and amended this requirement to the granting of a perpetual licence to develop the winner’s work. If allowed to go ahead as originally planned, “Hack the House” would have resulted in the SOH effectively gaining the same rights that an employer would have over an employee’s works under the Copyright Act 1968 (Cth) (Copyright Act) and other applicable IP legislation, and which exist over employee inventions at common law, without compensating participants for this arrangement.

Such stringent controls over IP rights would’ve gone against the values inherent in “hacking” culture, and would’ve undermined the predominant reason so many students and young professionals are attracted to these styles of event. Traditionally, legal services have been provided, at high fees, by large firms that employ long-serving and highly skilled lawyers. “Hacking” culture seeks to leverage collaborative social networks and new technologies to circumvent this division of labour and develop new ways of delivering law to create new businesses and increase access to justice by making existing services cheaper. Of course, some firms like Gilbert + Tobin have embraced this culture in order to reach a broader market, but this has also required a radical rethinking of priorities and aspects of their organisational structure.

The inconsistency in hackathons’ approaches regarding IP calls for more transparency among hackathons so that protections afforded to resulting works, concepts and outcomes produced are made clear. Moreover, it calls for a clarification of “hackathon” discourse so that such events continue to benefit the common resources and collaborative spirit of professional communities and the broader public, rather than being dominated by corporate interests. While balancing the interests of participants and hosts is key to this process, the unique power of the hackathon lies in the bonds and interactions between participants. Many participants voiced that, without the active collaboration of individuals from different professional backgrounds, putting together such a concept over the course of a weekend would have been inconceivable.

Working through joint authorship issues

Hackathons must ensure that participants understand certain norms, whether explicit or implicit, that keep these interactions productive and protect everyone’s interests. Under the Copyright Act those who produce work collaboratively hold the same copyrights as individual authors as tenants in common. This means that one author cannot exploit the copyright by licensing it without the consent of the others, but they could pass on the ownership of their share to another person. The situation is similar for other types of IP such as joint inventors and co-authors of designs, where all must be registered as owners of the IP for it to be valid and exploitation of rights requires consent of all rights holders.

The definition of “joint authorship” in section 10 of the Copyright Act is relatively clear:

‘A work of joint authorship means a work that has been produced by the collaboration of two or more authors and in which the contribution of each author is not separate from the contribution of the other author or the contributions of the other authors.’

It’s likely that the work of individuals under the umbrella of a hackathon team would be considered non-separable from the joint production of a creative hackathon entry. On another level, even in teams where certain individuals focused predominantly on developing the front-end or back-end of a program, the different aspects of the work were viewed as being co-dependent.

But what if individuals decide not only to develop, but commercialise, their projects down the track? What kind of arrangement would they need to reach with their teammates? Given that the winning team of the Sydney Round, alongside several other teams, produced ideas that were similar to existing projects, could any work up until that point be considered a contribution to the outcome or was the result merely an improvement or enhancement of the original invention? Would their rights to seek patent protection for their works not be voided by their public disclosure in the context of a presentation in a university auditorium?

If these are the questions on the minds of participants upon entering a hackathon, then a good option would be to execute a collaboration agreement prior to the event. Such an agreement may clarify matters such as ownership of IP rights, but defer details to be confirmed later, establish rights of first refusal between the parties, or give all individuals independent rights to exploit IP in the future. In the absence of such an agreement, perhaps participants would do well to approach hackathons as if the most valuable aspects of the event aren’t those that can be commercialised, but those that facilitate creativity and productivity among all participants and inspire them to disrupt and improve their respective workplaces and industries. In this regard, hosts and participants could learn from the Creative Commons project, itself closely associated with “hacking” culture and various hackathons.

Lessons from Creative Commons

Creative Commons on the one hand protects works by identifying ownership over them, in effect to the same extent as the jurisdiction’s copyright laws will recognise, and on the other hand facilitates sharing through open licences. There are six kinds of open licences, and these favour both attribution to the author and the further use of the work for the purposes the author intended, including sharing and non-commercial social benefits. Creative Commons licences are widely used across many Australian government websites and the open-source code platform GitHub.

Most relevantly, several hackathons have placed all IP produced therein under a Creative Commons licence, and some hackathons have taken place with the purpose of furthering the Creative Commons project. This project has guided “hacking” culture by:

  • introducing notions of IP that transcend particular events and jurisdictions;
  • facilitating socially beneficial online sharing culture; and
  • emphasising the importance of rights to use ideas and resources over the question of who owns them.

Final thoughts

In light of these issues, hackathon hosts and participants shouldn’t only remain conscious of how to use existing IP laws and norms to enhance the event, but also of the values that they engage with upon entering the community, and how their aims differ from those of traditional law and technology firms.

The Sydney Round of the Global Legal Hackathon, which was co-sponsored by Thomson Reuters and Herbert Smith Freehills, took place between the 23rd and 25th of February at the University of New South Wales. The event involved approximately 60 hackathon participants and was organised by a raft of volunteers from The Legal Forecast and 23Legal and a range of mentors, including technology, sales, legal and strategy mentors from Practical Law Australia and other teams within Thomson Reuters.

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