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Posted to legal-discuss@apache.org by John Owens <jo...@yahoo.com> on 2009/06/30 03:42:09 UTC
apache license 2.0: having trouble getting our university licensing office to like it, your thoughts?
Howdy, I'm a professor at an unnamed campus of the University of
California and lead an open-source project. The project is currently
licensed under a modified BSD license (that has a couple of extra
clauses from plain BSD). We would like to move the project to Google
Code and use Apache 2.0 to license it there (our industrial
collaborator prefers Apache 2.0). Our licensing office at my campus
does not like Apache (but would allow us to use BSD or another license
that does not have the patent clause) and I was hoping to get your
guidance / advice / thoughts on the difficulty I'm having.
The specific problem that our office has is the patent clause. The
difficulty appears to be that our office does not like "giving away"
the patent rights of its inventors. We were discussing both the GPL3
and Apache which have similar patent clauses and an attorney from our
office said: "I believe the GPL potentially violates the UC Patent
Policy (both the programmers and those who distribute), and the UCOP
legal folks that I've been able to get to think about it think they
agree, though no one has asked them for a formal legal opinion because
no one has been determined to use it."
The difficulty appears to be that licensing something under Apache
requires giving a patent license (I believe this is accurate; we'd be
licensing any patents we have in the work to anyone who uses our
work), and our attorney is concerned about this; that it is unfair to
the inventors to "give away" their patent rights.
I would love to hear the thoughts of the list on this, and in
particular if other universities have faced this question and have
thoughts on their use of Apache. Any help you could offer would be
really appreciated.
JDO
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RE: apache license 2.0: having trouble getting our university licensing office to like it, your thoughts?
Posted by Lawrence Rosen <lr...@rosenlaw.com>.
> Our licensing office at my campus
> does not like Apache (but would allow us to use BSD or another license
> that does not have the patent clause) and I was hoping to get your
> guidance / advice / thoughts on the difficulty I'm having.
I'm sorry to tell you that there are several universities that make the same
complaint. You are caught up in a controversy of far larger scope than just
the University of California and Apache.
Universities in the US typically hold patents in their own names, offering
some compensation to the professors and researchers who did the invention
and commercialization, but retaining ownership. Outside this country there
is a far more fair (in my opinion) system, where the professors and
researchers own the patents--and their universities get a part of the
profits. Outside the US, professors have more freedom to license their own
inventions.
In the US, therefore, universities won't allow one professor to give away
licenses to patents invented by others but held under common university
ownership. And what's worse, university licensing offices can't keep good
track of who wants to license which patents and for what purposes, and so
they often won't even do a case-by-case analysis. Open source donations
under broad patent grants throw their entire proprietary licensing
objectives and record-keeping into disarray.
So who should back off? Should non-profit organizations like Apache, which
thrive on generous contributions from university professors and others,
change its contribution policies to protect the business models and confused
record-keeping of your university and others? Or should those institutions
rethink the ways that they account for and control software intellectual
property, in light of Apache's new paradigm and philosophy?
Please give my best regards to the licensing officers at your UC institution
and invite them to contact me directly. I can revisit with them the various
arguments propounded by one large East Coast university a couple of years
ago as it vainly sought OSI approval for a license that explicitly
*excluded* a patent license. Sorry, but the FOSS community has some serious
concerns about this issue.
/Larry
P.S. If your licensing officers believe that the BSD license solves their
problem, I invite their attempt to sue for patent infringement of any of
their patents embodied in UC-licensed BSD software. Most of us rely on the
notion that the BSD license includes a limited implied patent license even
though there isn't an explicit one. Nobody has had the courage (or audacity)
to test this in court yet. :-) But that patent licensing uncertainly is why
there have been no important licenses approved by OSI recently that don't
contain an express patent grant of limited scope. I can't imagine that the
UC system really wants to go back to past licensing practices and the
analysis of implied patent licenses and the exhaustion doctrine as applied
to open source software.
Lawrence Rosen
Rosenlaw & Einschlag, a technology law firm (www.rosenlaw.com)
3001 King Ranch Road, Ukiah, CA 95482
707-485-1242 * cell: 707-478-8932 * fax: 707-485-1243
Skype: LawrenceRosen
Author of "Open Source Licensing: Software Freedom and
Intellectual Property Law" (Prentice Hall 2004)
> -----Original Message-----
> From: John Owens [mailto:john_owens@yahoo.com]
> Sent: Monday, June 29, 2009 6:42 PM
> To: legal-discuss@apache.org
> Subject: apache license 2.0: having trouble getting our university
> licensing office to like it, your thoughts?
>
>
> Howdy, I'm a professor at an unnamed campus of the University of
> California and lead an open-source project. The project is currently
> licensed under a modified BSD license (that has a couple of extra
> clauses from plain BSD). We would like to move the project to Google
> Code and use Apache 2.0 to license it there (our industrial
> collaborator prefers Apache 2.0). Our licensing office at my campus
> does not like Apache (but would allow us to use BSD or another license
> that does not have the patent clause) and I was hoping to get your
> guidance / advice / thoughts on the difficulty I'm having.
>
> The specific problem that our office has is the patent clause. The
> difficulty appears to be that our office does not like "giving away"
> the patent rights of its inventors. We were discussing both the GPL3
> and Apache which have similar patent clauses and an attorney from our
> office said: "I believe the GPL potentially violates the UC Patent
> Policy (both the programmers and those who distribute), and the UCOP
> legal folks that I've been able to get to think about it think they
> agree, though no one has asked them for a formal legal opinion because
> no one has been determined to use it."
>
> The difficulty appears to be that licensing something under Apache
> requires giving a patent license (I believe this is accurate; we'd be
> licensing any patents we have in the work to anyone who uses our
> work), and our attorney is concerned about this; that it is unfair to
> the inventors to "give away" their patent rights.
>
> I would love to hear the thoughts of the list on this, and in
> particular if other universities have faced this question and have
> thoughts on their use of Apache. Any help you could offer would be
> really appreciated.
>
> JDO
>
>
>
>
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Re: apache license 2.0: having trouble getting our university
licensing office to like it, your thoughts?
Posted by Ross Gardler <rg...@apache.org>.
2009/6/30 Justin Erenkrantz <ju...@erenkrantz.com>:
> On Tue, Jun 30, 2009 at 3:10 AM, Ross Gardler<rg...@apache.org> wrote:
>> 2) US publicly funded work has specific constraints on the way outputs
>> are made available for public use, the UK does not have the same
>> restrictions.
>
> Two general comments:
>
> - Depending upon the grant, certain funding agencies place different
> restrictions on what can be released and how it can be released.
>
> - Academic work product is treated differently from staff work
> product. So, for example, folks that Ross would talk primarily to as
> part of OSS Watch in UK would be covered under different rules than
> say a faculty member on the academic side of things.
Just in case it is important to anyone, we deal with research staff as
well as IT staff. In the UK universities are funded in such a way that
all software production is, effectively, publicly funded (it gets
complicated with commercial sponsored research, but that's an edge
case).
However, as I mentioned earlier the patent clause does not cause a
problem for us here in the UK. So it's probably not relevant.
Ross
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Re: apache license 2.0: having trouble getting our university
licensing office to like it, your thoughts?
Posted by Justin Erenkrantz <ju...@erenkrantz.com>.
On Tue, Jun 30, 2009 at 3:10 AM, Ross Gardler<rg...@apache.org> wrote:
> 2) US publicly funded work has specific constraints on the way outputs
> are made available for public use, the UK does not have the same
> restrictions.
Two general comments:
- Depending upon the grant, certain funding agencies place different
restrictions on what can be released and how it can be released.
- Academic work product is treated differently from staff work
product. So, for example, folks that Ross would talk primarily to as
part of OSS Watch in UK would be covered under different rules than
say a faculty member on the academic side of things.
I've started an off-list discussion with John to see what I can do to
help as I know a fair bit about UCOP policies as well. If there's
something we can do, I'll bring it back here for discussions...but
it's usually getting the right person within the UC system involved...
-- justin
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Re: apache license 2.0: having trouble getting our university
licensing office to like it, your thoughts?
Posted by Ross Gardler <rg...@apache.org>.
2009/6/30 Geir Magnusson Jr. <ge...@pobox.com>:
> Why is there not a problem in the UK? Just curious.
As I understand it (which may be seriously flawed and not too
detailed) there are two issues at play:
1) technically the UK does not have patents in software (although in
reality they do exist)
2) US publicly funded work has specific constraints on the way outputs
are made available for public use, the UK does not have the same
restrictions.
Ross
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Re: apache license 2.0: having trouble getting our university licensing office to like it, your thoughts?
Posted by "Geir Magnusson Jr." <ge...@pobox.com>.
Why is there not a problem in the UK? Just curious.
geir
On Jun 30, 2009, at 5:06 AM, Ross Gardler wrote:
> 2009/6/30 John Owens <jo...@yahoo.com>:
>>
>> Howdy, I'm a professor at an unnamed campus of the University of
>> California and lead an open-source project. The project is currently
>> licensed under a modified BSD license (that has a couple of extra
>> clauses from plain BSD). We would like to move the project to Google
>> Code and use Apache 2.0 to license it there (our industrial
>> collaborator prefers Apache 2.0). Our licensing office at my campus
>> does not like Apache (but would allow us to use BSD or another
>> license
>> that does not have the patent clause) and I was hoping to get your
>> guidance / advice / thoughts on the difficulty I'm having.
>
>
> This is a known problem with US institutions.
>
> I'm in a little bit of a hurry right now so can't lookup links but to
> help someone (Larry?) dig into the specifics of this problem I thought
> a quick mail would help:
>
> A bunch of US institutions in major projects funded by the Mellon
> Foundation created the Educational Community Licence because of this
> problem.
>
> In (approx.) 2004 my predecessor in my current job, Cliff Schmidt and
> a bunch of academic lawyer types met to discuss the problem. The
> sector wants to use the Apache licence but often cannot because of the
> patent issues.
>
> According to a report of that meeting which I found in March 2007 it
> says that this meeting agreed that there would be an Apache Licence
> 2.1 with an appropriate change that would allow the ECL code to be
> migrated to this new Apache Licence.
>
> As you can imagine, I was a little concerned when I read this so I
> called my predecessor who told me he did not recall Cliff
> (representing the ASF) to have made such a promise. I also asked on
> this list (with a link to the report), Cliff replied that yes, he was
> going to give a 2.1 text the next day (don't worry though, his reply
> came on April 1st). On April 2nd he denied any knowledge of the
> agreement, but confirmed he was at the meeting.
>
> The document I linked to provides full details of the problem the
> academic institutions have and the changes they would like to see. But
> this was never followed up here in legal-discuss.
>
> Perhaps someone can find my mail and hence a link to the report in the
> archives (reply from Ciff was on April 1st so should be easy to find)
>
> This is not a problem for us here in the UK, but there is significant
> work in the US affected by this.
>
> Ross
>
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Re: apache license 2.0: having trouble getting our university licensing office to like it, your thoughts?
Posted by David Crossley <cr...@apache.org>.
Jukka Zitting wrote:
> Ross Gardler wrote:
> > Perhaps someone can find my mail and hence a link to the report in the
> > archives (reply from Ciff was on April 1st so should be easy to find)
>
> The thread is at http://markmail.org/message/by7yeyzo6zhqfq2d
A note for future mail archives.
That thread is:
Subject: Apache license 2.1 and 2.2?
-David
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Re: apache license 2.0: having trouble getting our university
licensing office to like it, your thoughts?
Posted by Ross Gardler <rg...@apache.org>.
2009/6/30 Jukka Zitting <ju...@gmail.com>:
> Hi,
>
> On Tue, Jun 30, 2009 at 11:06 AM, Ross Gardler<rg...@apache.org> wrote:
>> Perhaps someone can find my mail and hence a link to the report in the
>> archives (reply from Ciff was on April 1st so should be easy to find)
>
> The thread is at http://markmail.org/message/by7yeyzo6zhqfq2d
Thank you Jukka - I'm on a proper connection again now.
I'd like to quote what Larry said in that thread:
"P.S. Personal opinion again: Don't change the Apache license to solve
this administrative and policy problem at big universities. "
I tend to agree with this.
So, for me the qeustion is do we do some work helping institutions
address these problems?
Ross
--
Ross Gardler
OSS Watch - supporting open source in education and research
http://www.oss-watch.ac.uk
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Re: apache license 2.0: having trouble getting our university
licensing office to like it, your thoughts?
Posted by Jukka Zitting <ju...@gmail.com>.
Hi,
On Tue, Jun 30, 2009 at 11:06 AM, Ross Gardler<rg...@apache.org> wrote:
> Perhaps someone can find my mail and hence a link to the report in the
> archives (reply from Ciff was on April 1st so should be easy to find)
The thread is at http://markmail.org/message/by7yeyzo6zhqfq2d
BR,
Jukka Zitting
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Re: apache license 2.0: having trouble getting our university
licensing office to like it, your thoughts?
Posted by Ross Gardler <rg...@apache.org>.
2009/6/30 John Owens <jo...@yahoo.com>:
>
> Howdy, I'm a professor at an unnamed campus of the University of
> California and lead an open-source project. The project is currently
> licensed under a modified BSD license (that has a couple of extra
> clauses from plain BSD). We would like to move the project to Google
> Code and use Apache 2.0 to license it there (our industrial
> collaborator prefers Apache 2.0). Our licensing office at my campus
> does not like Apache (but would allow us to use BSD or another license
> that does not have the patent clause) and I was hoping to get your
> guidance / advice / thoughts on the difficulty I'm having.
This is a known problem with US institutions.
I'm in a little bit of a hurry right now so can't lookup links but to
help someone (Larry?) dig into the specifics of this problem I thought
a quick mail would help:
A bunch of US institutions in major projects funded by the Mellon
Foundation created the Educational Community Licence because of this
problem.
In (approx.) 2004 my predecessor in my current job, Cliff Schmidt and
a bunch of academic lawyer types met to discuss the problem. The
sector wants to use the Apache licence but often cannot because of the
patent issues.
According to a report of that meeting which I found in March 2007 it
says that this meeting agreed that there would be an Apache Licence
2.1 with an appropriate change that would allow the ECL code to be
migrated to this new Apache Licence.
As you can imagine, I was a little concerned when I read this so I
called my predecessor who told me he did not recall Cliff
(representing the ASF) to have made such a promise. I also asked on
this list (with a link to the report), Cliff replied that yes, he was
going to give a 2.1 text the next day (don't worry though, his reply
came on April 1st). On April 2nd he denied any knowledge of the
agreement, but confirmed he was at the meeting.
The document I linked to provides full details of the problem the
academic institutions have and the changes they would like to see. But
this was never followed up here in legal-discuss.
Perhaps someone can find my mail and hence a link to the report in the
archives (reply from Ciff was on April 1st so should be easy to find)
This is not a problem for us here in the UK, but there is significant
work in the US affected by this.
Ross
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Re: apache license 2.0: having trouble getting our university
licensing office to like it, your thoughts?
Posted by Niclas Hedhman <ni...@hedhman.org>.
On Tue, Jun 30, 2009 at 9:42 AM, John Owens<jo...@yahoo.com> wrote:
> The difficulty appears to be that licensing something under Apache
> requires giving a patent license (I believe this is accurate; we'd be
> licensing any patents we have in the work to anyone who uses our
> work), and our attorney is concerned about this; that it is unfair to
> the inventors to "give away" their patent rights.
As Garrett was hinting; The patent clause is a protection of the user
from so called "patent submarining" where you give away code bases for
adoption and later go suing for patent infringements.
The patent clause is not as wide as I think your people think. It
gives a patent license for all patents held that are required to be
infringed to implement the licensed codebase. If R has a patent A that
is not part of Apache licensed code base X, and another party S
adds/modifies X so that X now infringes A, R has not given a patent
license for that.
Google's preference towards Apache License lies exactly in this
definition, that the downstream users don't need to worry about
getting sued by the original author for patent infringements.
So, hearing the concerns should also make every BSD-licensee very
concerned, since what you are saying is that BSD is the preferred
choice so the "inventors" can seek compensation from users who "just"
uses an unmodified copy from the original author.
My guess is that your legal dept is worried about the patent license
is too wide, and I hope the above explanation will settle those
worries. If it is not that, and they indeed understand the scope to
its intent, then I suggest that you close down the open source part of
the effort and not undermine the intentions of "BSD-styled licenses".
Ask the participants; Do you want a lot of people using it, or do you
want people paying for it? It is probably an mututally exclusive
question....
Cheers
--
Niclas Hedhman, Software Developer
http://www.qi4j.org - New Energy for Java
I live here; http://tinyurl.com/2qq9er
I work here; http://tinyurl.com/2ymelc
I relax here; http://tinyurl.com/2cgsug
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Re: apache license 2.0: having trouble getting our university
licensing office to like it, your thoughts?
Posted by Garrett Rooney <ro...@electricjellyfish.net>.
On Mon, Jun 29, 2009 at 9:42 PM, John Owens<jo...@yahoo.com> wrote:
>
> Howdy, I'm a professor at an unnamed campus of the University of
> California and lead an open-source project. The project is currently
> licensed under a modified BSD license (that has a couple of extra
> clauses from plain BSD). We would like to move the project to Google
> Code and use Apache 2.0 to license it there (our industrial
> collaborator prefers Apache 2.0). Our licensing office at my campus
> does not like Apache (but would allow us to use BSD or another license
> that does not have the patent clause) and I was hoping to get your
> guidance / advice / thoughts on the difficulty I'm having.
>
> The specific problem that our office has is the patent clause. The
> difficulty appears to be that our office does not like "giving away"
> the patent rights of its inventors. We were discussing both the GPL3
> and Apache which have similar patent clauses and an attorney from our
> office said: "I believe the GPL potentially violates the UC Patent
> Policy (both the programmers and those who distribute), and the UCOP
> legal folks that I've been able to get to think about it think they
> agree, though no one has asked them for a formal legal opinion because
> no one has been determined to use it."
>
> The difficulty appears to be that licensing something under Apache
> requires giving a patent license (I believe this is accurate; we'd be
> licensing any patents we have in the work to anyone who uses our
> work), and our attorney is concerned about this; that it is unfair to
> the inventors to "give away" their patent rights.
>
> I would love to hear the thoughts of the list on this, and in
> particular if other universities have faced this question and have
> thoughts on their use of Apache. Any help you could offer would be
> really appreciated.
Just my personal opinion, but if you're not willing to give people
rights to the patents embodied by your source code, then why the hell
would you bother giving them the code in the first place? They can't
use it without licensing your patents anyway, so it might as well not
be open source at all.
-garrett
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