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Posted to legal-discuss@apache.org by Henri Yandell <ba...@apache.org> on 2011/05/01 06:57:54 UTC
Re: Patents and contributions in Contributor License Agreement
2011/4/28 David Grünbaum <dv...@gmail.com>:
> Hi,
>
> I'm currently conduction a master thesis on Android Open Source Project, and as a law student I am studying the legal aspects of the project.
> My question is how to interpret the Contributor License Agreement? It uses the same wording as the one provided by the Apache foundation and that is why I feel that this forum might be the right place to answer my questions.
>
>
> Can a small bug fix imply a patent license?
Can a small bug fix implement a patent (or cause a patent to be implemented)?
I suspect you're more qualified to answer those than I :)
> How should you interpret “necessarily infringed by your contribution(s)”?
Too open ended a question.
> If you are contributing to a part of a functionality, for example changing a header or a parameter) will that
> contribution be interpreted as necessarily infringing any of my patents if I hold a patent or patents on the full
> functionality of that part of the software.
Seems like the first question.
If you were contributing to part of a functionality AND you judged it
infringed on your patents, then the CLA would grant a license. But
that's just you and the CLA'ing entity. I'm not sure who the 'me' and
'you' is in your question above, you make it sound like there are 3
entities involved [committer, patent holder & CLA'ing entity]. Usually
you'd only consider the 2 entities [committer who is also patent
holder & CLA'ing entity].
> What is the difference between contributions and combinations of contributions?
>From the text:
"where such license applies only to those patent claims
licensable by You that are necessarily infringed by Your
Contribution(s) alone or by combination of Your Contribution(s)
with the Work to which such Contribution(s) was submitted"
So this means that if you grant a patent license for your
contributions and for your contributions plus the existing work. ie)
If you add the last tiny commit such that a piece of work is now
considered by someone to fulfill your patent, you license said patent
to the CLA'd entity even if your commit was only the last in a long
line of contributions.
You'll also want to read this FAQ entry if you've not already found it:
http://www.apache.org/foundation/licence-FAQ.html#PatentScope
> I hope that my questions makes sense and are possible to answer.
Mostly I think it's that some of your questions should only be
answered by a patent expert while others can be covered by the general
opinions on this list regarding the ASF CLA.
Hen
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Re: Patents and contributions in Contributor License Agreement
Posted by Doug Cutting <cu...@apache.org>.
David,
It's difficult for folks to provide you their personal interpretations
in writing on a public forum without it being perceived as the ASF
giving legal advice. We need the license itself to serve as the
official description of what it means, and not to cloud that with other
statements that might not say precisely the same thing.
Perhaps you'd be better to discuss this with folks over beer at a
conference? Then they might be happy to provide unofficial, off the
record, interpretations.
Cheers,
Doug
On 05/04/2011 12:33 PM, David Grünbaum wrote:
> As I am soon to become a lawyer I of course understand that a final interpretation of a license must be set by a court, however for my thesis it is interesting to get different views from different actors. At the moment I already have the corporate perspective on the licenses and I am now interesting to know more about how the community interprets the use of patents and patent grants.
>
> /David
>
>
> 4 maj 2011 kl. 21.20 skrev Benson Margulies:
>
>> It seems to me that you (David) have come to the wrong place.
>>
>> The important interpretations of the license do not happen at Apache.
>> They happen at all of the places where people choose to use, enhance,
>> and/or contribute to Apache projects. The ASF does not supply
>> interpretations of the license -- legal entities use their own legal
>> resources to interpret the license and make choices. ASF people have
>> no way to know what legal reasoning underpins any given person or
>> corporation's decisions.
>>
>> If the ASF (or some other licensor using the AL) was to ever decide to
>> complain about a violation, that licensor would have to state a
>> particular interpretation of the license in making the demand. Until
>> then, and perhaps until a court ruled on a disagreement of
>> interpretations, the license itself is the ultimate authority.
>>
>>
>> On Wed, May 4, 2011 at 3:12 PM, Doug Cutting <cu...@apache.org> wrote:
>>> On 05/04/2011 06:44 AM, David Grünbaum wrote:
>>>> What is the most common interpretation?
>>>
>>> I don't know. To figure out what it really says you have to go to
>>> court. In the meantime, getting a lawyer to interpret it for you might
>>> be useful.
>>>
>>>> Does it matter if your contribution is in one file and the
>>>> functionality that reads on your patents are divided in the file you
>>>> contribute and another file?
>>>
>>> The license speaks of the Work as an undifferentiated whole. It may be
>>> composed of a bunch of files, but how things are split into files seems
>>> largely irrelevant to this.
>>>
>>> Doug
>>>
>>>
>>> ---------------------------------------------------------------------
>>> To unsubscribe, e-mail: legal-discuss-unsubscribe@apache.org
>>> For additional commands, e-mail: legal-discuss-help@apache.org
>>>
>>>
>>
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Re: Patents and contributions in Contributor License Agreement
Posted by David Grünbaum <dv...@gmail.com>.
As I am soon to become a lawyer I of course understand that a final interpretation of a license must be set by a court, however for my thesis it is interesting to get different views from different actors. At the moment I already have the corporate perspective on the licenses and I am now interesting to know more about how the community interprets the use of patents and patent grants.
/David
4 maj 2011 kl. 21.20 skrev Benson Margulies:
> It seems to me that you (David) have come to the wrong place.
>
> The important interpretations of the license do not happen at Apache.
> They happen at all of the places where people choose to use, enhance,
> and/or contribute to Apache projects. The ASF does not supply
> interpretations of the license -- legal entities use their own legal
> resources to interpret the license and make choices. ASF people have
> no way to know what legal reasoning underpins any given person or
> corporation's decisions.
>
> If the ASF (or some other licensor using the AL) was to ever decide to
> complain about a violation, that licensor would have to state a
> particular interpretation of the license in making the demand. Until
> then, and perhaps until a court ruled on a disagreement of
> interpretations, the license itself is the ultimate authority.
>
>
> On Wed, May 4, 2011 at 3:12 PM, Doug Cutting <cu...@apache.org> wrote:
>> On 05/04/2011 06:44 AM, David Grünbaum wrote:
>>> What is the most common interpretation?
>>
>> I don't know. To figure out what it really says you have to go to
>> court. In the meantime, getting a lawyer to interpret it for you might
>> be useful.
>>
>>> Does it matter if your contribution is in one file and the
>>> functionality that reads on your patents are divided in the file you
>>> contribute and another file?
>>
>> The license speaks of the Work as an undifferentiated whole. It may be
>> composed of a bunch of files, but how things are split into files seems
>> largely irrelevant to this.
>>
>> Doug
>>
>>
>> ---------------------------------------------------------------------
>> To unsubscribe, e-mail: legal-discuss-unsubscribe@apache.org
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>>
>>
>
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Re: Patents and contributions in Contributor License Agreement
Posted by Benson Margulies <bi...@gmail.com>.
It seems to me that you (David) have come to the wrong place.
The important interpretations of the license do not happen at Apache.
They happen at all of the places where people choose to use, enhance,
and/or contribute to Apache projects. The ASF does not supply
interpretations of the license -- legal entities use their own legal
resources to interpret the license and make choices. ASF people have
no way to know what legal reasoning underpins any given person or
corporation's decisions.
If the ASF (or some other licensor using the AL) was to ever decide to
complain about a violation, that licensor would have to state a
particular interpretation of the license in making the demand. Until
then, and perhaps until a court ruled on a disagreement of
interpretations, the license itself is the ultimate authority.
On Wed, May 4, 2011 at 3:12 PM, Doug Cutting <cu...@apache.org> wrote:
> On 05/04/2011 06:44 AM, David Grünbaum wrote:
>> What is the most common interpretation?
>
> I don't know. To figure out what it really says you have to go to
> court. In the meantime, getting a lawyer to interpret it for you might
> be useful.
>
>> Does it matter if your contribution is in one file and the
>> functionality that reads on your patents are divided in the file you
>> contribute and another file?
>
> The license speaks of the Work as an undifferentiated whole. It may be
> composed of a bunch of files, but how things are split into files seems
> largely irrelevant to this.
>
> Doug
>
>
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>
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Re: Patents and contributions in Contributor License Agreement
Posted by Doug Cutting <cu...@apache.org>.
On 05/04/2011 06:44 AM, David Grünbaum wrote:
> What is the most common interpretation?
I don't know. To figure out what it really says you have to go to
court. In the meantime, getting a lawyer to interpret it for you might
be useful.
> Does it matter if your contribution is in one file and the
> functionality that reads on your patents are divided in the file you
> contribute and another file?
The license speaks of the Work as an undifferentiated whole. It may be
composed of a bunch of files, but how things are split into files seems
largely irrelevant to this.
Doug
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Re: Patents and contributions in Contributor License Agreement
Posted by David Grünbaum <dv...@gmail.com>.
What is the most common interpretation?
Does it matter if your contribution is in one file and the functionality that reads on your patents are divided in the file you contribute and another file?
/David
_______________________________________
David Grünbaum
M.Sc student Intellectual Property Law
School of Intellectual Capital Management
University of Gothenburg, Chalmers University of Technology
Phone: +46 (0)705 841 341
Mail: dv.grunbaum@gmail.com
Make a difference - www.seaweedcenter.com
2 maj 2011 kl. 18.03 skrev Doug Cutting:
> On 04/30/2011 09:57 PM, Henri Yandell wrote:
>>> What is the difference between contributions and combinations of contributions?
>>
>> From the text:
>>
>> "where such license applies only to those patent claims
>> licensable by You that are necessarily infringed by Your
>> Contribution(s) alone or by combination of Your Contribution(s)
>> with the Work to which such Contribution(s) was submitted"
>>
>> So this means that if you grant a patent license for your
>> contributions and for your contributions plus the existing work. ie)
>> If you add the last tiny commit such that a piece of work is now
>> considered by someone to fulfill your patent, you license said patent
>> to the CLA'd entity even if your commit was only the last in a long
>> line of contributions.
>
> Some also interpret this clause to state that, if a work already
> implements your patent, then when you contribute to that work, even in a
> manner unrelated to your patent, you grant a license to your patent.
>
> Doug
>
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Re: Patents and contributions in Contributor License Agreement
Posted by Henri Yandell <ba...@apache.org>.
The big three books are Larry Rosen's, Heather Meeker's The Open
Source Alternative and Van Lindberg's Intellectual Property and Open
Source.
I would characterize Larry and Heather's as more for lawyers while Van
Lindberg's is more for developers. In the US I like the Legal track at
OSBC. In Europe the FSFE have a legal network that might be open for
you to join. There's also an international journal published online:
http://www.ifosslr.org/ifosslr
Hen
2011/5/3 David Grünbaum <dv...@gmail.com>:
> Since many of these provisions never have been tried in court it is difficult to know how a court would interpret them. Is there any good sources where one could read more about in depth interpretations of different Open Source licenses? I have read Lawrence Rosen's book but he doesn't go into depth on every claus in the agreements.
>
> /David
>
> 3 maj 2011 kl. 19.55 skrev William A. Rowe Jr.:
>
>> On 5/3/2011 12:31 PM, Doug Cutting wrote:
>>> On 05/03/2011 12:35 AM, David Grünbaum wrote:
>>>> How would you interpret the situation where a contribution only
>>>> covers parts of a patent claim? Would that still grant a license?
>>>
>>> As far as I know, there's no such thing as partial infringement. If the
>>> work doesn't fully implement a contributor's patent claim either before
>>> or after the contribution, and the contribution doesn't implement one
>>> independently, then I do not believe a free license must be granted by
>>> the contributor.
>>
>> Keep in mind patents are built upon claims. It's easy to infringe just
>> a subset of the relevant claims, it isn't necessary to infringe each and
>> every claim to intersect with a patent.
>>
>> The concept of 'necessary infringement' plays in here... you can't commit
>> code which implements claim three of your patent, leaving claims one and
>> two for others to code and commit, and expect that the first two claims
>> are unnecessary elements of the patent license your commit had granted.
>>
>>> [Note: I am not a lawyer. This is not legal advice. I do not speak for
>>> the ASF in this message. This is just some guy on the internet telling
>>> you what he thinks. If you need legal advice, hire an attorney.]
>>
>> Ditto!
>>
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Re: Patents and contributions in Contributor License Agreement
Posted by "William A. Rowe Jr." <wr...@apache.org>.
On 5/3/2011 1:42 PM, David Grünbaum wrote:
> Since many of these provisions never have been tried in court it is difficult to know how a court would interpret them. Is there any good sources where one could read more about in depth interpretations of different Open Source licenses? I have read Lawrence Rosen's book but he doesn't go into depth on every claus in the agreements.
I doubt they ever will. Until there is a decision that withstands appeal
(or is reversed on appeal), we are speculating.
Laywers [and IANAL] are famous for making minimal assertions, and leaving
space for interpretation.
There may be public background documents on FSF's patent license philosophy,
and the GPLv3 was very closely aligned to ALv2 language. They are actually
more liberal with coming to legal conclusions on public forums, plus they
are exceptional philosophers. I'd suggest you might start there and compare
to the relevant case law.
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Re: Patents and contributions in Contributor License Agreement
Posted by David Grünbaum <dv...@gmail.com>.
Since many of these provisions never have been tried in court it is difficult to know how a court would interpret them. Is there any good sources where one could read more about in depth interpretations of different Open Source licenses? I have read Lawrence Rosen's book but he doesn't go into depth on every claus in the agreements.
/David
3 maj 2011 kl. 19.55 skrev William A. Rowe Jr.:
> On 5/3/2011 12:31 PM, Doug Cutting wrote:
>> On 05/03/2011 12:35 AM, David Grünbaum wrote:
>>> How would you interpret the situation where a contribution only
>>> covers parts of a patent claim? Would that still grant a license?
>>
>> As far as I know, there's no such thing as partial infringement. If the
>> work doesn't fully implement a contributor's patent claim either before
>> or after the contribution, and the contribution doesn't implement one
>> independently, then I do not believe a free license must be granted by
>> the contributor.
>
> Keep in mind patents are built upon claims. It's easy to infringe just
> a subset of the relevant claims, it isn't necessary to infringe each and
> every claim to intersect with a patent.
>
> The concept of 'necessary infringement' plays in here... you can't commit
> code which implements claim three of your patent, leaving claims one and
> two for others to code and commit, and expect that the first two claims
> are unnecessary elements of the patent license your commit had granted.
>
>> [Note: I am not a lawyer. This is not legal advice. I do not speak for
>> the ASF in this message. This is just some guy on the internet telling
>> you what he thinks. If you need legal advice, hire an attorney.]
>
> Ditto!
>
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Re: Patents and contributions in Contributor License Agreement
Posted by "William A. Rowe Jr." <wr...@apache.org>.
On 5/3/2011 12:31 PM, Doug Cutting wrote:
> On 05/03/2011 12:35 AM, David Grünbaum wrote:
>> How would you interpret the situation where a contribution only
>> covers parts of a patent claim? Would that still grant a license?
>
> As far as I know, there's no such thing as partial infringement. If the
> work doesn't fully implement a contributor's patent claim either before
> or after the contribution, and the contribution doesn't implement one
> independently, then I do not believe a free license must be granted by
> the contributor.
Keep in mind patents are built upon claims. It's easy to infringe just
a subset of the relevant claims, it isn't necessary to infringe each and
every claim to intersect with a patent.
The concept of 'necessary infringement' plays in here... you can't commit
code which implements claim three of your patent, leaving claims one and
two for others to code and commit, and expect that the first two claims
are unnecessary elements of the patent license your commit had granted.
> [Note: I am not a lawyer. This is not legal advice. I do not speak for
> the ASF in this message. This is just some guy on the internet telling
> you what he thinks. If you need legal advice, hire an attorney.]
Ditto!
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Re: Patents and contributions in Contributor License Agreement
Posted by Doug Cutting <cu...@apache.org>.
On 05/03/2011 12:35 AM, David Grünbaum wrote:
> How would you interpret the situation where a contribution only
> covers parts of a patent claim? Would that still grant a license?
As far as I know, there's no such thing as partial infringement. If the
work doesn't fully implement a contributor's patent claim either before
or after the contribution, and the contribution doesn't implement one
independently, then I do not believe a free license must be granted by
the contributor.
Doug
[Note: I am not a lawyer. This is not legal advice. I do not speak for
the ASF in this message. This is just some guy on the internet telling
you what he thinks. If you need legal advice, hire an attorney.]
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Re: Patents and contributions in Contributor License Agreement
Posted by David Grünbaum <dv...@gmail.com>.
Hi,
Thank you for the great input!
How would you interpret the situation where a contribution only covers parts of a patent claim? Would that still grant a license?
/David
2 maj 2011 kl. 18.03 skrev Doug Cutting:
> On 04/30/2011 09:57 PM, Henri Yandell wrote:
>>> What is the difference between contributions and combinations of contributions?
>>
>> From the text:
>>
>> "where such license applies only to those patent claims
>> licensable by You that are necessarily infringed by Your
>> Contribution(s) alone or by combination of Your Contribution(s)
>> with the Work to which such Contribution(s) was submitted"
>>
>> So this means that if you grant a patent license for your
>> contributions and for your contributions plus the existing work. ie)
>> If you add the last tiny commit such that a piece of work is now
>> considered by someone to fulfill your patent, you license said patent
>> to the CLA'd entity even if your commit was only the last in a long
>> line of contributions.
>
> Some also interpret this clause to state that, if a work already
> implements your patent, then when you contribute to that work, even in a
> manner unrelated to your patent, you grant a license to your patent.
>
> Doug
>
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Re: Patents and contributions in Contributor License Agreement
Posted by Doug Cutting <cu...@apache.org>.
On 04/30/2011 09:57 PM, Henri Yandell wrote:
>> What is the difference between contributions and combinations of contributions?
>
> From the text:
>
> "where such license applies only to those patent claims
> licensable by You that are necessarily infringed by Your
> Contribution(s) alone or by combination of Your Contribution(s)
> with the Work to which such Contribution(s) was submitted"
>
> So this means that if you grant a patent license for your
> contributions and for your contributions plus the existing work. ie)
> If you add the last tiny commit such that a piece of work is now
> considered by someone to fulfill your patent, you license said patent
> to the CLA'd entity even if your commit was only the last in a long
> line of contributions.
Some also interpret this clause to state that, if a work already
implements your patent, then when you contribute to that work, even in a
manner unrelated to your patent, you grant a license to your patent.
Doug
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Re: Patents and contributions in Contributor License Agreement
Posted by Mark Struberg <st...@yahoo.de>.
Hi!
small note: the ALv2 in addition also contains a section which covers 'employee patents. See iCLA and CCLA.
LieGrue,
strub
--- On Sun, 5/1/11, Henri Yandell <ba...@apache.org> wrote:
> From: Henri Yandell <ba...@apache.org>
> Subject: Re: Patents and contributions in Contributor License Agreement
> To: legal-discuss@apache.org
> Date: Sunday, May 1, 2011, 4:57 AM
> 2011/4/28 David Grünbaum <dv...@gmail.com>:
> > Hi,
> >
> > I'm currently conduction a master thesis on Android
> Open Source Project, and as a law student I am studying the
> legal aspects of the project.
> > My question is how to interpret the Contributor
> License Agreement? It uses the same wording as the one
> provided by the Apache foundation and that is why I feel
> that this forum might be the right place to answer my
> questions.
> >
> >
> > Can a small bug fix imply a patent license?
>
> Can a small bug fix implement a patent (or cause a patent
> to be implemented)?
>
> I suspect you're more qualified to answer those than I :)
>
> > How should you interpret “necessarily infringed by
> your contribution(s)”?
>
> Too open ended a question.
>
> > If you are contributing to a part of a functionality,
> for example changing a header or a parameter) will that
> > contribution be interpreted as necessarily infringing
> any of my patents if I hold a patent or patents on the full
> > functionality of that part of the software.
>
> Seems like the first question.
>
> If you were contributing to part of a functionality AND you
> judged it
> infringed on your patents, then the CLA would grant a
> license. But
> that's just you and the CLA'ing entity. I'm not sure who
> the 'me' and
> 'you' is in your question above, you make it sound like
> there are 3
> entities involved [committer, patent holder & CLA'ing
> entity]. Usually
> you'd only consider the 2 entities [committer who is also
> patent
> holder & CLA'ing entity].
>
> > What is the difference between contributions and
> combinations of contributions?
>
> From the text:
>
> "where such license applies only to those patent claims
> licensable by You that are necessarily
> infringed by Your
> Contribution(s) alone or by combination
> of Your Contribution(s)
> with the Work to which such
> Contribution(s) was submitted"
>
> So this means that if you grant a patent license for your
> contributions and for your contributions plus the existing
> work. ie)
> If you add the last tiny commit such that a piece of work
> is now
> considered by someone to fulfill your patent, you license
> said patent
> to the CLA'd entity even if your commit was only the last
> in a long
> line of contributions.
>
> You'll also want to read this FAQ entry if you've not
> already found it:
>
> http://www.apache.org/foundation/licence-FAQ.html#PatentScope
>
> > I hope that my questions makes sense and are possible
> to answer.
>
> Mostly I think it's that some of your questions should only
> be
> answered by a patent expert while others can be covered by
> the general
> opinions on this list regarding the ASF CLA.
>
> Hen
>
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