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Posted to legal-discuss@apache.org by Lawrence Rosen <lr...@rosenlaw.com> on 2015/05/21 20:51:05 UTC
Proposal: Disclosure of patents by Apache projects
To: legal-discuss@apache.org <ma...@apache.org>
Elsewhere on internal Apache member email lists we've been discussing a
patent that may or may not apply to Apache software. I already quoted
publicly the strongly-held opinion of one Apache member that "this patent is
just plain BS, IMHO." He may be right.
My concern is that Apache members are not qualified to make this
determination about any patent. Nor is the Apache Software Foundation
resourced to do that analysis professionally for our users.
However, I believe that ASF is obligated to disclose whatever patent
information comes to our developers' and members' attention. This is one of
the key purposes of a NOTICE file in open source software.
Others disagree strongly. Here is what Roy Fielding wrote here on 27 Mar
2012: http://s.apache.org/B3F. I quote part of it now:
It has been discussed. This idea is the moral equivalent of pointing a gun
at our user while saying that it is most likely unloaded. It simply isn't
done.
Adobe has not asked for it to be done. The only company that has ever asked
for it to be done is Sun, and we not only refused to do so -- we exited the
entire Java community process because of it.
So, the answer to your suggestion is well known. Sam knows that answer.
He does not need to discuss it with you or anyone else because there is
already a long history behind it and a board precedence. We do not notify
our users that an unspecified patent might possibly be owned by some
third-party based on a theoretical reading of a patent license on a
specification that we don't even implement. If that third-party identifies
a specific patent AND indicates that the patent might apply to our product,
then we would include information about that in a README file (assuming
we didn't kill the product outright).
As a non-patent but practicing attorney, I don't believe I'd ever personally
recommend that we kill an international Apache project outright simply
because someone pointed a US patent gun at it.
On the other hand, we have a NOTICE file and we owe our customers whatever
the facts are.
I'm looking for agreement by our customers to this NOTICE policy in a very
antagonistic, patent-hating Apache community.
/Larry
Re: Proposal: Disclosure of patents by Apache projects
Posted by Paul Libbrecht <pa...@hoplahup.net>.
Can I be pragmatic?
When you say "we inform our users", I would be rather quiet by seeing a
tiny mention somewhere in the corner of a project home page. But there
is no way we can do more. Or? That corner might well just be the NOTICE
file.
When, however, there's a feeling that this gun might be loaded, then I
guess the press should be informed... In the future, future downloaders
should take the time to read that notice file (hoping it does not
transform into a monster EULA).
paul
On 21/05/15 20:51, Lawrence Rosen wrote:
>
> On the other hand, we have a NOTICE file and we owe our customers
> whatever the facts are.
>
> I'm looking for agreement by our customers to this NOTICE policy in a
> _very_ antagonistic, patent-hating Apache community.
>
Re: Proposal: Disclosure of patents by Apache projects
Posted by Dave Fisher <da...@comcast.net>.
Are you referring to Microsoft's OpenSource Promise? There was a big flame war at that time in POI. Our Founder left and the project went on to implement OOXML.
Sent from my iPhone
> On Jun 4, 2015, at 12:06 PM, Rob Weir <ro...@robweir.com> wrote:
>
>
>
>> On Sun, May 31, 2015 at 5:43 PM, Sam Ruby <ru...@intertwingly.net> wrote:
>> On Sun, May 31, 2015 at 5:22 PM, Rich Bowen <rb...@rcbowen.com> wrote:
>> >
>> > On May 31, 2015 4:54 PM, "Greg Stein" <gs...@gmail.com> wrote:
>> >>
>> >> On Sun, May 31, 2015 at 12:52 PM, Lawrence Rosen <lr...@rosenlaw.com>
>> >> wrote:
>> >>>
>> >>> ...
>> >>
>> >>> This means that an opinion that a patent is "just plain BS, IMHO," is not
>> >>> a relevant opinion at this stage of determining infringement.
>> >>>
>> >>> As for patent validity, there is nobody at Apache who is qualified to
>> >>> analyze that for others. The most ASF can do is to disclose what we are
>> >>> aware of in a NOTICE file and let our customers do their own analysis if
>> >>> they want to.
>> >>
>> >> Aren't we similarly unqualified to determine whether we infringe? I would
>> >> say "yes", and I'm sure you would agree.
>> >>
>> >> Thus, to water out random claims of infringement from random developers,
>> >> we must wait until the patent holder *informs* us that we (likely) infringe.
>> >> Until the patent holder wants to assert that, then I don't think we're
>> >> qualified to make *any* judgement, including whether it is
>> >> important/relevant to provide notice.
>> >
>> > Forgive my ignorance, but, surely, if we are aware that we infringe,
>> > wouldn't we be compelled to rectify that situation before making another
>> > release?
>>
>> Our policy indeed is that "We never knowingly incorporate patented
>> technology in our own products unless such technology has been offered
>> free for everyone."[1]
>
> So what about patent claims necessarily infringed in the implementation of a standard by an Apache project, where the patent holder has agreed to a royalty free license for implementors of that standard? I hope we consider that to be sufficiently "free for everyone" even though it is not necessarily free for anyone outside of implementers of that standard.
>
> -Rob
>
>
>> As to what we do when we are made aware of a potential infringement:
>> we (through our VP of Legal Affairs) will seek advice from counsel as
>> to how to proceed.
>>
>> > This whole conversation seems to assume that we would, at any point, make a
>> > release while being aware of an infringement, which should never happen.
>>
>> - Sam Ruby
>>
>> [1] https://www.apache.org/licenses/GPL-compatibility.html
>>
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>
RE: Proposal: Disclosure of patents by Apache projects
Posted by Lawrence Rosen <lr...@rosenlaw.com>.
Sam,
I have long agitated for FOSS licenses on all software standards at W3C or from Sun or elsewhere. If you can't get that then ASF may not be able to trust the patent license.
I have long agitated against standards licenses that require conformance by software to that standard. FOSS and ASF are not required to be conformant to anything.
I'm grateful that ASF has also held firm to these principles. There is no quarrel on that between us.
/Larry
-----Original Message-----
From: Sam Ruby [mailto:rubys@intertwingly.net]
Sent: Thursday, June 4, 2015 2:08 PM
To: Legal Discuss; Lawrence Rosen
Subject: Re: Proposal: Disclosure of patents by Apache projects
On Thu, Jun 4, 2015 at 3:39 PM, Lawrence Rosen < <ma...@rosenlaw.com> lrosen@rosenlaw.com> wrote:
> Sam Ruby asked:
>> Consider the following: if I encounter a problem in Tomcat, JetSpeed,
>> Axis or other project which has been solved in Geronimo, should I be
>> able to incorporate code from Geronimo into my project? Note that
>> Tomcat, et. Al are not implementations of J2EE.
>
> If we have good reason to believe that the code in Geronimo is directly related to a patent claim for which we have a FOSS license (of some sort), then I'd probably feel comfortable incorporating that portion of Geronimo *along with a NOTICE file* in Tomcat, JetSpeed, or Axis. Wouldn't you?
First, that's not the case we are discussing here. Sun at the time both declined to identify the patents and did not offer a FOSS license.
Second, that's not the question Rob was asking. If there were a patent, and it read on code that did A, B, and C, and Sun were to offer us a license conditional on us doing A, B, C, and D (where D is be a full implementation of the relevant specification), then Tomcat couldn't pick up the code for A, B, and C without also being a full implementation of the J2EE specification.
Ultimately, we held firm on both the requirement to not include a Notice, and Sun dropped that requirement.
- Sam Ruby
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Re: Proposal: Disclosure of patents by Apache projects
Posted by Sam Ruby <ru...@intertwingly.net>.
On Thu, Jun 4, 2015 at 3:39 PM, Lawrence Rosen <lr...@rosenlaw.com> wrote:
> Sam Ruby asked:
>> Consider the following: if I encounter a problem in Tomcat, JetSpeed, Axis
>> or other project which has been solved in Geronimo, should I be able to
>> incorporate code from Geronimo into my project? Note that Tomcat, et. Al
>> are not implementations of J2EE.
>
> If we have good reason to believe that the code in Geronimo is directly related to a patent claim for which we have a FOSS license (of some sort), then I'd probably feel comfortable incorporating that portion of Geronimo *along with a NOTICE file* in Tomcat, JetSpeed, or Axis. Wouldn't you?
First, that's not the case we are discussing here. Sun at the time
both declined to identify the patents and did not offer a FOSS
license.
Second, that's not the question Rob was asking. If there were a
patent, and it read on code that did A, B, and C, and Sun were to
offer us a license conditional on us doing A, B, C, and D (where D is
be a full implementation of the relevant specification), then Tomcat
couldn't pick up the code for A, B, and C without also being a full
implementation of the J2EE specification.
Ultimately, we held firm on both the requirement to not include a
Notice, and Sun dropped that requirement.
- Sam Ruby
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RE: Proposal: Disclosure of patents by Apache projects
Posted by Lawrence Rosen <lr...@rosenlaw.com>.
Sam Ruby asked:
> Consider the following: if I encounter a problem in Tomcat, JetSpeed, Axis
> or other project which has been solved in Geronimo, should I be able to
> incorporate code from Geronimo into my project? Note that Tomcat, et. Al
> are not implementations of J2EE.
If we have good reason to believe that the code in Geronimo is directly related to a patent claim for which we have a FOSS license (of some sort), then I'd probably feel comfortable incorporating that portion of Geronimo *along with a NOTICE file* in Tomcat, JetSpeed, or Axis. Wouldn't you?
Perhaps the NOTICE file in Geronimo would give us more relevant information to analyze that patent and copyright question.
Also, in any event, those NOTICE files (and SPDX) will describe the copying of one ALv2 project code (Geronimo) into other projects (Tomcat, JetSpeed, Axis). That's provenance.
> For that matter, if I'm a third party can I do the same?
I assume the Geronimo project wouldn't have incorporated the presumably patented technology in the first place if they didn't think that ASF has a sufficiently broad FOSS license for our purposes in our future ALv2 aggregations.
If downstream third parties have some reason to believe that the NOTICE we provided to them is important to them, ask their own attorneys. We are not qualified to answer any such question. Maybe those downstream third parties will contribute their own answers to our NOTICE file. :-)
/Larry
Lawrence Rosen
"If this were legal advice it would have been accompanied by a bill."
-----Original Message-----
From: Sam Ruby [mailto:rubys@intertwingly.net]
Sent: Thursday, June 4, 2015 11:50 AM
To: Legal Discuss
Subject: Re: Proposal: Disclosure of patents by Apache projects
On Thu, Jun 4, 2015 at 12:06 PM, Rob Weir <ro...@robweir.com> wrote:
>
>> Our policy indeed is that "We never knowingly incorporate patented
>> technology in our own products unless such technology has been
>> offered free for everyone."[1]
>
> So what about patent claims necessarily infringed in the
> implementation of a standard by an Apache project, where the patent holder has agreed to a
> royalty free license for implementors of that standard? I hope we consider
> that to be sufficiently "free for everyone" even though it is not
> necessarily free for anyone outside of implementers of that standard.
Not necessarily.
Consider the following: if I encounter a problem in Tomcat, JetSpeed, Axis or other project which has been solved in Geronimo, should I be able to incorporate code from Geronimo into my project? Note that Tomcat, et. al are not implementations of J2EE.
For that matter, if I'm a third party can I do the same?
In the case of the JCP, it becomes even more complicated. ASF members who are interested in this topic can look at the ASF Board archives from July of 2004.
- Sam Ruby
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Re: Proposal: Disclosure of patents by Apache projects
Posted by Sam Ruby <ru...@intertwingly.net>.
On Thu, Jun 4, 2015 at 12:06 PM, Rob Weir <ro...@robweir.com> wrote:
>
>> Our policy indeed is that "We never knowingly incorporate patented
>> technology in our own products unless such technology has been offered
>> free for everyone."[1]
>
> So what about patent claims necessarily infringed in the implementation of a
> standard by an Apache project, where the patent holder has agreed to a
> royalty free license for implementors of that standard? I hope we consider
> that to be sufficiently "free for everyone" even though it is not
> necessarily free for anyone outside of implementers of that standard.
Not necessarily.
Consider the following: if I encounter a problem in Tomcat, JetSpeed,
Axis or other project which has been solved in Geronimo, should I be
able to incorporate code from Geronimo into my project? Note that
Tomcat, et. al are not implementations of J2EE.
For that matter, if I'm a third party can I do the same?
In the case of the JCP, it becomes even more complicated. ASF members
who are interested in this topic can look at the ASF Board archives
from July of 2004.
- Sam Ruby
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Re: Proposal: Disclosure of patents by Apache projects
Posted by Rob Weir <ro...@robweir.com>.
On Sun, May 31, 2015 at 5:43 PM, Sam Ruby <ru...@intertwingly.net> wrote:
> On Sun, May 31, 2015 at 5:22 PM, Rich Bowen <rb...@rcbowen.com> wrote:
> >
> > On May 31, 2015 4:54 PM, "Greg Stein" <gs...@gmail.com> wrote:
> >>
> >> On Sun, May 31, 2015 at 12:52 PM, Lawrence Rosen <lr...@rosenlaw.com>
> >> wrote:
> >>>
> >>> ...
> >>
> >>> This means that an opinion that a patent is "just plain BS, IMHO," is
> not
> >>> a relevant opinion at this stage of determining infringement.
> >>>
> >>> As for patent validity, there is nobody at Apache who is qualified to
> >>> analyze that for others. The most ASF can do is to disclose what we are
> >>> aware of in a NOTICE file and let our customers do their own analysis
> if
> >>> they want to.
> >>
> >> Aren't we similarly unqualified to determine whether we infringe? I
> would
> >> say "yes", and I'm sure you would agree.
> >>
> >> Thus, to water out random claims of infringement from random developers,
> >> we must wait until the patent holder *informs* us that we (likely)
> infringe.
> >> Until the patent holder wants to assert that, then I don't think we're
> >> qualified to make *any* judgement, including whether it is
> >> important/relevant to provide notice.
> >
> > Forgive my ignorance, but, surely, if we are aware that we infringe,
> > wouldn't we be compelled to rectify that situation before making another
> > release?
>
> Our policy indeed is that "We never knowingly incorporate patented
> technology in our own products unless such technology has been offered
> free for everyone."[1]
>
>
So what about patent claims necessarily infringed in the implementation of
a standard by an Apache project, where the patent holder has agreed to a
royalty free license for implementors of that standard? I hope we
consider that to be sufficiently "free for everyone" even though it is not
necessarily free for anyone outside of implementers of that standard.
-Rob
> As to what we do when we are made aware of a potential infringement:
> we (through our VP of Legal Affairs) will seek advice from counsel as
> to how to proceed.
>
> > This whole conversation seems to assume that we would, at any point,
> make a
> > release while being aware of an infringement, which should never happen.
>
> - Sam Ruby
>
> [1] https://www.apache.org/licenses/GPL-compatibility.html
>
> ---------------------------------------------------------------------
> To unsubscribe, e-mail: legal-discuss-unsubscribe@apache.org
> For additional commands, e-mail: legal-discuss-help@apache.org
>
>
Re: Proposal: Disclosure of patents by Apache projects
Posted by Sam Ruby <ru...@intertwingly.net>.
On Sun, May 31, 2015 at 5:22 PM, Rich Bowen <rb...@rcbowen.com> wrote:
>
> On May 31, 2015 4:54 PM, "Greg Stein" <gs...@gmail.com> wrote:
>>
>> On Sun, May 31, 2015 at 12:52 PM, Lawrence Rosen <lr...@rosenlaw.com>
>> wrote:
>>>
>>> ...
>>
>>> This means that an opinion that a patent is "just plain BS, IMHO," is not
>>> a relevant opinion at this stage of determining infringement.
>>>
>>> As for patent validity, there is nobody at Apache who is qualified to
>>> analyze that for others. The most ASF can do is to disclose what we are
>>> aware of in a NOTICE file and let our customers do their own analysis if
>>> they want to.
>>
>> Aren't we similarly unqualified to determine whether we infringe? I would
>> say "yes", and I'm sure you would agree.
>>
>> Thus, to water out random claims of infringement from random developers,
>> we must wait until the patent holder *informs* us that we (likely) infringe.
>> Until the patent holder wants to assert that, then I don't think we're
>> qualified to make *any* judgement, including whether it is
>> important/relevant to provide notice.
>
> Forgive my ignorance, but, surely, if we are aware that we infringe,
> wouldn't we be compelled to rectify that situation before making another
> release?
Our policy indeed is that "We never knowingly incorporate patented
technology in our own products unless such technology has been offered
free for everyone."[1]
As to what we do when we are made aware of a potential infringement:
we (through our VP of Legal Affairs) will seek advice from counsel as
to how to proceed.
> This whole conversation seems to assume that we would, at any point, make a
> release while being aware of an infringement, which should never happen.
- Sam Ruby
[1] https://www.apache.org/licenses/GPL-compatibility.html
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Re: Proposal: Disclosure of patents by Apache projects
Posted by Greg Stein <gs...@gmail.com>.
On May 31, 2015 4:22 PM, "Rich Bowen" <rb...@rcbowen.com> wrote:
>
>
> On May 31, 2015 4:54 PM, "Greg Stein" <gs...@gmail.com> wrote:
> >
> >
> >
> > On Sun, May 31, 2015 at 12:52 PM, Lawrence Rosen <lr...@rosenlaw.com>
wrote:
> >>
> >> ...
> >
> >
> >>
> >> This means that an opinion that a patent is "just plain BS, IMHO," is
not a relevant opinion at this stage of determining infringement.
> >>
> >>
> >>
> >> As for patent validity, there is nobody at Apache who is qualified to
analyze that for others. The most ASF can do is to disclose what we are
aware of in a NOTICE file and let our customers do their own analysis if
they want to.
> >
> >
> > Aren't we similarly unqualified to determine whether we infringe? I
would say "yes", and I'm sure you would agree.
> >
> > Thus, to water out random claims of infringement from random
developers, we must wait until the patent holder *informs* us that we
(likely) infringe. Until the patent holder wants to assert that, then I
don't think we're qualified to make *any* judgement, including whether it
is important/relevant to provide notice.
> >
> >
>
> Forgive my ignorance, but, surely, if we are aware that we infringe,
wouldn't we be compelled to rectify that situation before making another
release?
Just because a patent holder asserts we infringe, doesn't make it True.
(and I believe even less true, if a third party makes the assertion; thus
my position we only worry when the holder itself makes the assertion)
We could decide to fight. We could maybe get a blanket license. We could
change the code. We could ask them to donate the patent to us, or to a
non-assert entity. There are likely more options.
(of course, in the basic case of the holder not caring that we infringe,
then they wouldn't even reach out to us to assert their rights)
>
> This whole conversation seems to assume that we would, at any point, make
a release while being aware of an infringement, which should never happen.
Yeah... We'd have to stop releases until we reach a decision with the
holder. Further releases could/would be dangerous.
Cheers,
-g
Re: Proposal: Disclosure of patents by Apache projects
Posted by Rich Bowen <rb...@rcbowen.com>.
On May 31, 2015 4:54 PM, "Greg Stein" <gs...@gmail.com> wrote:
>
>
>
> On Sun, May 31, 2015 at 12:52 PM, Lawrence Rosen <lr...@rosenlaw.com>
wrote:
>>
>> ...
>
>
>>
>> This means that an opinion that a patent is "just plain BS, IMHO," is
not a relevant opinion at this stage of determining infringement.
>>
>>
>>
>> As for patent validity, there is nobody at Apache who is qualified to
analyze that for others. The most ASF can do is to disclose what we are
aware of in a NOTICE file and let our customers do their own analysis if
they want to.
>
>
> Aren't we similarly unqualified to determine whether we infringe? I would
say "yes", and I'm sure you would agree.
>
> Thus, to water out random claims of infringement from random developers,
we must wait until the patent holder *informs* us that we (likely)
infringe. Until the patent holder wants to assert that, then I don't think
we're qualified to make *any* judgement, including whether it is
important/relevant to provide notice.
>
>
Forgive my ignorance, but, surely, if we are aware that we infringe,
wouldn't we be compelled to rectify that situation before making another
release?
This whole conversation seems to assume that we would, at any point, make a
release while being aware of an infringement, which should never happen.
RE: Proposal: Disclosure of patents by Apache projects
Posted by Lawrence Rosen <lr...@rosenlaw.com>.
Sam Ruby wrote:
> We should only do that after discussions with counsel, based on the specifics
> of the claim and the ASF project in question.
Will Apache's counsel responsible for all such detailed PMC's patent questions please identify himself/herself.
/Larry
-----Original Message-----
From: Sam Ruby [mailto:rubys@intertwingly.net]
Sent: Sunday, May 31, 2015 3:33 PM
To: Legal Discuss; Lawrence Rosen
Subject: Re: Proposal: Disclosure of patents by Apache projects
On Sun, May 31, 2015 at 6:20 PM, Lawrence Rosen <lr...@rosenlaw.com> wrote:
>
> Sam Ruby wrote:
>
>> Our policy indeed is that "We never knowingly incorporate patented
>> technology in our own products unless such technology has been
>> offered free for everyone."
>
> I know that we're not stupid here. All I'm suggesting is that we
> document our intelligence in our NOTICE file so that our customers can
> verify it for themselves if they want to.
We should only do that after discussions with counsel, based on the specifics of the claim and the ASF project in question.
- Sam Ruby
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Re: Proposal: Disclosure of patents by Apache projects
Posted by Sam Ruby <ru...@intertwingly.net>.
On Sun, May 31, 2015 at 6:20 PM, Lawrence Rosen <lr...@rosenlaw.com> wrote:
>
> Sam Ruby wrote:
>
>> Our policy indeed is that "We never knowingly incorporate patented
>> technology in our own products unless such technology has been offered free
>> for everyone."
>
> I know that we're not stupid here. All I'm suggesting is that we document
> our intelligence in our NOTICE file so that our customers can verify it for
> themselves if they want to.
We should only do that after discussions with counsel, based on the
specifics of the claim and the ASF project in question.
- Sam Ruby
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Re: Proposal: Disclosure of patents by Apache projects
Posted by Emmanuel Lécharny <el...@gmail.com>.
Le 02/06/15 22:06, Lawrence Rosen a écrit :
> To the rest of us in Apache projects, though, your expert opinions
> about patents are what matters most. So when one of our respected
> members says "this patent is BS, IMHO" then I am likely not to be
> worried tonight. I would much wish that he had said something of more
> technical value, and that he was willing to say it aloud in a NOTICE
> file that bears no ASF warranties.
What for ?? Seriously, I explained why I do think why this patent is
plain BS because of existing prior act, what more do we need ? Why
should I spend hours writing in correct english and legal terminology
(something I'm not capabale of producing) in a NOTICE that some stupid
company decided it was useful to pay some of their employees to fulfill
a piece of document which is a waste of their time and their money ?
Rgeardless of the US laws, which is still in the process of deciding
that patnenting software patents is just as useful as patenting
mathematic formulas, something that many countries in the world have
already stated, it's not ours to warn our users about hypothetical risks
that does not even exist. Simply because *if* someone can patent some
software, then we can shutdown The ASF.
Bottom line: not my problem, not even a problem. Let's move on.
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Re: Proposal: Disclosure of patents by Apache projects
Posted by Stephen Connolly <st...@gmail.com>.
On 2 June 2015 at 21:06, Lawrence Rosen <lr...@rosenlaw.com> wrote:
> Roy Fielding wrote:
>
> > ALv2 covers our software products, not our disclosures.
>
>
>
> ALv2 and its disclaimer of warranties covers our entire copyrighted
> aggregations *including our NOTICE files*. :-)
>
ROFL. Trust a solicitor to focus on a nit!
In that case shouldn't the NOTICE file include the ALv2 header just in case
it gets separated from the license.
IOW should https://github.com/apache/httpd/blob/trunk/NOTICE not start with
something like:
/* Licensed to the Apache Software Foundation (ASF) under one or more
* contributor license agreements. See this NOTICE file distributed with
* this work for additional information regarding copyright ownership.
* The ASF licenses this file to You under the Apache License, Version 2.0
* (the "License"); you may not use this file except in compliance with
* the License. You may obtain a copy of the License at
*
* http://www.apache.org/licenses/LICENSE-2.0
*
* Unless required by applicable law or agreed to in writing, software
* distributed under the License is distributed on an "AS IS" BASIS,
* WITHOUT WARRANTIES OR CONDITIONS OF ANY KIND, either express or implied.
* See the License for the specific language governing permissions and
* limitations under the License.
*/
RE: Proposal: Disclosure of patents by Apache projects
Posted by Lawrence Rosen <lr...@rosenlaw.com>.
YES PLEASE Ralph!
I am a strong supporter of the Peer to Patent <http://www.peertopatent.org/>
activity. One of the companies I've long had an interest in has some patents
that were introduced through that process and validated and issued by the
PTO much more quickly because of that. Apache members should contribute
opinions and prior art at Peer to Patent please.
That has nothing to do with an Apache NOTICE file. Different people will
notice it (pun intended).
/Larry
From: Ralph Goers [mailto:ralph.goers@dslextreme.com]
Sent: Tuesday, June 2, 2015 1:57 PM
To: Legal Discuss; Lawrence Rosen
Subject: Re: Proposal: Disclosure of patents by Apache projects
On Jun 2, 2015, at 1:06 PM, Lawrence Rosen <lrosen@rosenlaw.com
<ma...@rosenlaw.com> > wrote:
To the rest of us in Apache projects, though, your expert opinions about
patents are what matters most. So when one of our respected members says
"this patent is BS, IMHO" then I am likely not to be worried tonight. I
would much wish that he had said something of more technical value, and that
he was willing to say it aloud in a NOTICE file that bears no ASF
warranties. But regardless, his comment by itself will not result in any
willful infringement damages to Apache or anyone else.
If I had something useful to say about a patent a NOTICE file would be the
last place I would want to say it. IMO, it would be much more effective to
say it somewhere it would be more likely to be noticed (pun intended) such
as http://www.peertopatent.org/ orhttp://ip.com/prior-art-database/.
Ralph
Re: Proposal: Disclosure of patents by Apache projects
Posted by Ralph Goers <ra...@dslextreme.com>.
> On Jun 2, 2015, at 1:06 PM, Lawrence Rosen <lr...@rosenlaw.com> wrote:
>
>
> To the rest of us in Apache projects, though, your expert opinions about patents are what matters most. So when one of our respected members says "this patent is BS, IMHO" then I am likely not to be worried tonight. I would much wish that he had said something of more technical value, and that he was willing to say it aloud in a NOTICE file that bears no ASF warranties. But regardless, his comment by itself will not result in any willful infringement damages to Apache or anyone else.
>
If I had something useful to say about a patent a NOTICE file would be the last place I would want to say it. IMO, it would be much more effective to say it somewhere it would be more likely to be noticed (pun intended) such as http://www.peertopatent.org/ <http://www.peertopatent.org/> orhttp://ip.com/prior-art-database/ <orhttp://ip.com/prior-art-database/>.
Ralph
RE: Proposal: Disclosure of patents by Apache projects
Posted by Lawrence Rosen <lr...@rosenlaw.com>.
Roy Fielding wrote:
> ALv2 covers our software products, not our disclosures.
ALv2 and its disclaimer of warranties covers our entire copyrighted
aggregations including our NOTICE files. :-) The rest of what you say is
true: "Any statement we might make is evidentiary for both us and our
downstream recipients." That is why I assume that everything I say on a
public email list is really CC-BY 4.0 and subject to a free subpoena.
> Many of us are qualified when supplied with the complete
> patent history and definition of terms. A few are even
> allowed to do so by their employers (or lack thereof).
Indeed so. VERY qualified, and have earned respect in their companies and
within Apache and in court sometimes also to speak their minds.
But courts don't expect that most of what random technical experts say early
in the day is by itself of much legal value to determine the knowledge
requirement for inducing infringement. As you said, you would need to be
supplied with "the complete patent history and definition of terms." Nobody
contributing at ASF is required to read and determine that stuff no matter
their qualifications to do so.
For example, the recent CAFC case I posted here (Info-Hold v. Muzak
<http://cases.justia.com/federal/appellate-courts/cafc/14-1167/14-1167-2015-
04-24.pdf?ts=1429887716> ) said that even the parties' experts and attorneys
wouldn't have had a meaningful opinion about infringement until the court
determined what the claims meant in saying "when a caller is placed on
hold." (Read that part of the decision; it is fun proof of what many here
believe about the confusing language in patents.) The parties stipulated in
District Court that most of Info-Hold's patent claims couldn't apply at all
based on that definition. I assume that experts like you helped the parties
come to that agreement. Nobody else can!
To the rest of us in Apache projects, though, your expert opinions about
patents are what matters most. So when one of our respected members says
"this patent is BS, IMHO" then I am likely not to be worried tonight. I
would much wish that he had said something of more technical value, and that
he was willing to say it aloud in a NOTICE file that bears no ASF
warranties. But regardless, his comment by itself will not result in any
willful infringement damages to Apache or anyone else.
Note also that the CAFC sent the Info-Hold case back to District Court to
factually determine whether there was "willful blindness":
This record raises issues of material fact as to whether Muzak may have
subjectively believed there was a high probability it infringed the '374
patent and took deliberate actions to avoid learning whether it actually
did. In other words, the record raises the issue of whether Muzak willfully
blinded itself to whether it acted to induce infringement after becoming
aware of the existence and alleged functionality of the '374 patent. See
Global-Tech, 131 S. Ct. at 2070. Therefore, we vacate the district court's
grant of summary judgment of no induced infringement and remand for further
consideration on the issue of Muzak's willful blindness.
In every other respect, Roy, I appreciate hearing your objections to a
revised policy regarding the reasonable disclosure of patents in a NOTICE
file. Many agree with you on that point. I hope not all.
/Larry
From: Roy T. Fielding [mailto:fielding@gbiv.com]
Sent: Tuesday, June 2, 2015 10:43 AM
To: ASF Legal Discuss
Subject: Re: Proposal: Disclosure of patents by Apache projects
On May 31, 2015, at 3:20 PM, Lawrence Rosen <lrosen@rosenlaw.com
<ma...@rosenlaw.com> > wrote:
[Responses to three board members in one email. :-) ]
Greg Stein wrote:
> Thus, to water out random claims of infringement from random developers,
we must wait until the patent holder *informs* us that we (likely) infringe.
Until the patent holder wants to assert that, then I don't think we're
qualified to make *any* judgement, including whether it is
important/relevant to provide notice.
Nobody is concerned about "random claims of infringement from random
developers." Or rather, "if you are concerned about such a claim, then say
so in the NOTICE file. If not, move it to the trash." Nothing more is
required from ASF or its members and contributors. I would ask only for open
disclosure within Apache projects of patents that seem interesting to the
project PMC itself.
There is no risk to ASF from such disclosure. Under ALv2, disclosures of
potentially relevant patents come with no warranties from ASF.
ALv2 covers our software products, not our disclosures. We are just as
liable for our statements as any human being, and any statement we might
make is evidentiary for both us and our downstream recipients.
ASF offers *NO* judgements of importance or relevance about patents. None
of us is qualified for that.
I don't understand why you keep saying that. Many of us are qualified when
supplied with the complete patent history and definition of terms. A few are
even allowed to do so by their employers (or lack thereof).
I know that we're not stupid here. All I'm suggesting is that we document
our intelligence in our NOTICE file so that our customers can verify it for
themselves if they want to.
I suggest that would be stupid and non-productive, since it would only
benefit and encourage trolls. In any case, doing so would never happen in
the NOTICE file, which contains notices that are a binding part of our
copyright license (i.e., NOTICE has nothing to do with patents, known or
not).
....Roy
RE: Proposal: Disclosure of patents by Apache projects
Posted by Lawrence Rosen <lr...@rosenlaw.com>.
Ralph Goers suggested the following NOTICE:
"This distribution contains software. Software consists of mathematical
statements and expression of business processes and as such is not subject
to patents."
LOL. The next time that question comes up at the U.S. Supreme Court, I'll
list you as an expert witness on that point. :-)
Fortunately I'm not Apache's attorney to defend you.
/Larry
From: Ralph Goers [mailto:ralph.goers@dslextreme.com]
Sent: Tuesday, June 2, 2015 2:54 PM
To: Legal Discuss
Subject: Re: Proposal: Disclosure of patents by Apache projects
On Jun 2, 2015, at 2:44 PM, William A Rowe Jr <wrowe@rowe-clan.net
<ma...@rowe-clan.net> > wrote:
On Tue, Jun 2, 2015 at 12:42 PM, Roy T. Fielding <fielding@gbiv.com
<ma...@gbiv.com> > wrote:
On May 31, 2015, at 3:20 PM, Lawrence Rosen <lrosen@rosenlaw.com
<ma...@rosenlaw.com> > wrote:
[Responses to three board members in one email. :-) ]
Greg Stein wrote:
> Thus, to water out random claims of infringement from random developers,
we must wait until the patent holder *informs* us that we (likely) infringe.
Until the patent holder wants to assert that, then I don't think we're
qualified to make *any* judgement, including whether it is
important/relevant to provide notice.
Nobody is concerned about "random claims of infringement from random
developers." Or rather, "if you are concerned about such a claim, then say
so in the NOTICE file. If not, move it to the trash." Nothing more is
required from ASF or its members and contributors. I would ask only for open
disclosure within Apache projects of patents that seem interesting to the
project PMC itself.
There is no risk to ASF from such disclosure. Under ALv2, disclosures of
potentially relevant patents come with no warranties from ASF.
ALv2 covers our software products, not our disclosures. We are just as
liable for our statements as any human being, and any statement we might
make is evidentiary for both us and our downstream recipients.
So let me ask what might be a blindingly obvious question. A handful of
awarded patents apply to a code base submitted to the ASF, licensed under
the AL by the patent holder, patent rights are conveyed.
Do we note the specific patent numbers/titles? If so, where? README?
NOTICE? PATENTS?
My answer would be to have a PATENTS file that contains something similar to
the following text:
This distribution contains software. Software consists of mathematical
statements and expression of business processes and as such is not subject
to patents.
;-)
Ralph
Re: Proposal: Disclosure of patents by Apache projects
Posted by Ralph Goers <ra...@dslextreme.com>.
> On Jun 2, 2015, at 2:44 PM, William A Rowe Jr <wr...@rowe-clan.net> wrote:
>
> On Tue, Jun 2, 2015 at 12:42 PM, Roy T. Fielding <fielding@gbiv.com <ma...@gbiv.com>> wrote:
>> On May 31, 2015, at 3:20 PM, Lawrence Rosen <lrosen@rosenlaw.com <ma...@rosenlaw.com>> wrote:
>>
>> [Responses to three board members in one email. :-) ]
>>
>> Greg Stein wrote:
>> > Thus, to water out random claims of infringement from random developers, we must wait until the patent holder *informs* us that we (likely) infringe. Until the patent holder wants to assert that, then I don't think we're qualified to make *any* judgement, including whether it is important/relevant to provide notice.
>>
>> Nobody is concerned about "random claims of infringement from random developers." Or rather, "if you are concerned about such a claim, then say so in the NOTICE file. If not, move it to the trash." Nothing more is required from ASF or its members and contributors. I would ask only for open disclosure within Apache projects of patents that seem interesting to the project PMC itself.
>>
>> There is no risk to ASF from such disclosure. Under ALv2, disclosures of potentially relevant patents come with no warranties from ASF.
>
> ALv2 covers our software products, not our disclosures. We are just as liable for our statements as any human being, and any statement we might make is evidentiary for both us and our downstream recipients.
>
> So let me ask what might be a blindingly obvious question. A handful of awarded patents apply to a code base submitted to the ASF, licensed under the AL by the patent holder, patent rights are conveyed.
>
> Do we note the specific patent numbers/titles? If so, where? README? NOTICE? PATENTS?
My answer would be to have a PATENTS file that contains something similar to the following text:
This distribution contains software. Software consists of mathematical statements and expression of business processes and as such is not subject to patents.
;-)
Ralph
Re: Proposal: Disclosure of patents by Apache projects
Posted by Jim Jagielski <ji...@jaguNET.com>.
For the sake of discussion, certainly not NOTICE, which has
a very specific function. So README or PATENTS or some other
file makes sense.
> On Jun 2, 2015, at 5:44 PM, William A Rowe Jr <wr...@rowe-clan.net> wrote:
>
> On Tue, Jun 2, 2015 at 12:42 PM, Roy T. Fielding <fi...@gbiv.com> wrote:
>> On May 31, 2015, at 3:20 PM, Lawrence Rosen <lr...@rosenlaw.com> wrote:
>>
>> [Responses to three board members in one email. :-) ]
>>
>> Greg Stein wrote:
>> > Thus, to water out random claims of infringement from random developers, we must wait until the patent holder *informs* us that we (likely) infringe. Until the patent holder wants to assert that, then I don't think we're qualified to make *any* judgement, including whether it is important/relevant to provide notice.
>>
>> Nobody is concerned about "random claims of infringement from random developers." Or rather, "if you are concerned about such a claim, then say so in the NOTICE file. If not, move it to the trash." Nothing more is required from ASF or its members and contributors. I would ask only for open disclosure within Apache projects of patents that seem interesting to the project PMC itself.
>>
>> There is no risk to ASF from such disclosure. Under ALv2, disclosures of potentially relevant patents come with no warranties from ASF.
>
> ALv2 covers our software products, not our disclosures. We are just as liable for our statements as any human being, and any statement we might make is evidentiary for both us and our downstream recipients.
>
> So let me ask what might be a blindingly obvious question. A handful of awarded patents apply to a code base submitted to the ASF, licensed under the AL by the patent holder, patent rights are conveyed.
>
> Do we note the specific patent numbers/titles? If so, where? README? NOTICE? PATENTS?
>
>
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Re: Proposal: Disclosure of patents by Apache projects
Posted by Alex Harui <ah...@adobe.com>.
Do SGAs for code containing patents happen often? I know Flex code had
patents and patents applied for and they are not enumerated in any file
like NOTICE or README. That said, it may be that Adobe abandoned the
patents and applications at the time of contribution. I can ask Adobe
Legal if there isn’t already enough precedence by other SGAs to establish
a pattern.
-Alex
On 6/3/15, 5:59 AM, "Shane Curcuru" <as...@shanecurcuru.org> wrote:
>On 6/3/15 8:44 AM, Geir Magnusson Jr. wrote:
>> But what's the point of any of this? There's no reason to require
>>Sneaky Author to enumerate anything because via contribution via the AL,
>>they have granted a license to anything they have necessarily infringed
>>by the contribution (or combined contribution and existing work)
>>
>> And I as the recipient don't really care - I know that via the patent
>>grant in the AL, Sneaky Author can't come after me for any patents they
>>hold (enumerated or not) that read on the work they contributed to.
>>
>> Is there a real problem we're trying to solve?
>
>I'm not aware of any Apache project asking this question, no. It seems
>Bill might have a case related to this thread, which we can address when
>it comes up.
>
>- Shane
>
>>
>> geir
>>
>>
>>> On Jun 3, 2015, at 8:25 AM, Jim Jagielski <ji...@jagunet.com> wrote:
>>>
>>>
>>>> On Jun 3, 2015, at 6:09 AM, Geir Magnusson Jr. <ge...@pobox.com> wrote:
>>>>
>>>>
>>>> My understanding of the AL is that we don't need to be explicit. If
>>>>the author of the code has patents that matter, they are providing a
>>>>license and they can't sue you.
>>>>
>>>
>>> Certainly the SGA and *CLA also provide additional "confirmation"
>>> of the above; If an author wishes to list the patents, then
>>> fine. We can, if we want, create a file which maintains the history and
>>> heritage of that list, in a file named TO-BE-DETERMINED. However,
>>> that file should have some sort of boilerplate at the top stating
>>> that the ALv2 (and whatever other agreements they have signed)
>>> maintains that the author has explicitly provided a patent license
>>> for any patent held by that author that might be infringed by
>>> said contribution and therefore the list may not be complete.
>>>
>>> For example, say that author has patent X, Y and Z yet is a very
>>> sneaky entity. Said author provides the code and enumerates that
>>> patent X and Y are granted. We do not want said author to then
>>> be able to sue for patent Z. The ALv2 prevents that. And should
>>> the case go to court, discovery will uncover their attempt to
>>> subvert the intent.
>>> ---------------------------------------------------------------------
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>>> For additional commands, e-mail: legal-discuss-help@apache.org
>>>
>>
>>
>> ---------------------------------------------------------------------
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>>
>>
>>
>
>
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Re: Proposal: Disclosure of patents by Apache projects
Posted by William A Rowe Jr <wr...@rowe-clan.net>.
On Wed, Jun 3, 2015 at 4:06 PM, David Jencks <david_jencks@yahoo.com.invalid
> wrote:
> I think Marks concerns should be taken quite seriously.
>
+1 - I'm not arguing for a specific outcome or policy, I'm asking what the
correct policy would be, moving forwards...
> On Jun 3, 2015, at 10:42 AM, Mark Thomas <ma...@apache.org> wrote:
> >
> > <full-disclosure>
> > The corp in question is my employer.
> > These are my opinions not my employers.
> > </full-disclosure>
>
And ditto. My line of questions are framed from my perspective as an
ASF Mentor to the project, rather than as an employee of the same corp.
> > I appreciate that the corp in question is trying to do the right thing.
> >
> > I would argue - based on our experience of adding the "I grant this
> > patch under the ALv2" button to Jira - that doing anything over any
> > beyond that which is required by our existing CLA and CCLA process will
> > cause us more problems in the long run than it solves.
> >
> > By granting this code to the ASF under the ALv2 any and all necessary
> > patent licenses are granted. That is the only thing that needs to be
> > said publicly and - in my view - the only thing that should be said
> > publicly. There is no problem here that needs to be solved.
>
I tend to agree that the AL conveys both the copyright licenses and the
patent licenses necessary for the code to persist as OSS. Because the
nature of copyright licenses vary from patent licenses, it seems prudent
to consider if this is sufficient, as we don't waste our energies here
enumerating each of the many copyrights that would cover the individual
bits of an ASF collective work.
However, in forking copyrighted code, a new copyright exists. In forking
patented code, the license may or may not transfer to the fork, depending
on the nature of the fork, it's relationship to the original submission, the
intents and interpretation of the license by the grantor, and ultimately
the interpretation by a court if things go entirely sideways.
> > If the corp wants to provide the PMC (privately) with a list of patents
> > it thinks it has licensed then fine but I don't see how making that list
> > public helps anyone.
> >
> > The potential issues I see with making the list public include:
> > - projects that don't publish a list of licensed patents start being
> > asked by users to produce one
> > - projects that do publish a list start being asked about XYZ patent
> > that a random user things might apply to the project
> > - committers start being asked to explicitly state if each commit is
> > covered by a patent or not
> >
> > If we could guarantee that - for each project - we could produce a
> > complete list of licensed patents then I'd have far fewer concerns. But
> > I do not believe we can do that. Further, I believe that publishing
> > incomplete lists will create the perception of problems where none
> > exists given the clear and unambiguous language that is already present
> > in the ALv2 with respect to patents.
>
All of the concerns above are quite valid.
Actually, for any work that originates in the commercial world, there is
usually quite good documentation of the applicable patents and they are
generally part of the product literature itself. And presuming the patent
holder is the contributor of the code and happens to be a committer
and/or member of the PMC, collecting this information shouldn't be
too challenging.
Where a contributor has parted ways with the ASF, that starts to become
impossible to realistically track down. As you note, we can't promise
our users that we have discovered every claim against the project's
implementation.
Re: Proposal: Disclosure of patents by Apache projects
Posted by David Jencks <da...@yahoo.com.INVALID>.
I think Marks concerns should be taken quite seriously.
thanks
david jencks
On Jun 3, 2015, at 10:42 AM, Mark Thomas <ma...@apache.org> wrote:
> On 03/06/2015 14:38, William A Rowe Jr wrote:
>> On Wed, Jun 3, 2015 at 7:59 AM, Shane Curcuru <asf@shanecurcuru.org
>> <ma...@shanecurcuru.org>> wrote:
>>
>> On 6/3/15 8:44 AM, Geir Magnusson Jr. wrote:
>>> But what's the point of any of this? There's no reason to require Sneaky Author to enumerate anything because via contribution via the AL, they have granted a license to anything they have necessarily infringed by the contribution (or combined contribution and existing work)
>>>
>>> And I as the recipient don't really care - I know that via the patent grant in the AL, Sneaky Author can't come after me for any patents they hold (enumerated or not) that read on the work they contributed to.
>>>
>>> Is there a real problem we're trying to solve?
>>
>> I'm not aware of any Apache project asking this question, no. It seems
>> Bill might have a case related to this thread, which we can address when
>> it comes up.
>>
>>
>> Indeed, there is no sneaky author. The patents are public filings. No
>> need for tinfoil hats or detection gadgets. Those patent use rights are
>> granted, by the very design of the AL, to every downstream consumer.
>>
>> Apparently, none of you spend too much time with your corp-consumer
>> legal teams. It's brutal.
>>
>> Pretty much everything out there, IP-wise, bollixes the works. Stray
>> non-conforming license? That's out. Stray patent claim? Straight out.
>>
>> So yes, there is a project which is trying to offer code-with-patent-license
>> to the ASF, and has succeeded at their CCLA plus CLAs and would like
>> to wokr out the best way to inform / reassure users that these particular
>> patent claims are known to apply and are granted for use to whatever
>> downstream consumer wants to use the code.
>
> <full-disclosure>
> The corp in question is my employer.
> These are my opinions not my employers.
> </full-disclosure>
>
> I appreciate that the corp in question is trying to do the right thing.
>
> I would argue - based on our experience of adding the "I grant this
> patch under the ALv2" button to Jira - that doing anything over any
> beyond that which is required by our existing CLA and CCLA process will
> cause us more problems in the long run than it solves.
>
> By granting this code to the ASF under the ALv2 any and all necessary
> patent licenses are granted. That is the only thing that needs to be
> said publicly and - in my view - the only thing that should be said
> publicly. There is no problem here that needs to be solved.
>
> If the corp wants to provide the PMC (privately) with a list of patents
> it thinks it has licensed then fine but I don't see how making that list
> public helps anyone.
>
> The potential issues I see with making the list public include:
> - projects that don't publish a list of licensed patents start being
> asked by users to produce one
> - projects that do publish a list start being asked about XYZ patent
> that a random user things might apply to the project
> - committers start being asked to explicitly state if each commit is
> covered by a patent or not
>
> If we could guarantee that - for each project - we could produce a
> complete list of licensed patents then I'd have far fewer concerns. But
> I do not believe we can do that. Further, I believe that publishing
> incomplete lists will create the perception of problems where none
> exists given the clear and unambiguous language that is already present
> in the ALv2 with respect to patents.
>
> Mark
>
>
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Re: Proposal: Disclosure of patents by Apache projects
Posted by Mark Thomas <ma...@apache.org>.
On 03/06/2015 14:38, William A Rowe Jr wrote:
> On Wed, Jun 3, 2015 at 7:59 AM, Shane Curcuru <asf@shanecurcuru.org
> <ma...@shanecurcuru.org>> wrote:
>
> On 6/3/15 8:44 AM, Geir Magnusson Jr. wrote:
> > But what's the point of any of this? There's no reason to require Sneaky Author to enumerate anything because via contribution via the AL, they have granted a license to anything they have necessarily infringed by the contribution (or combined contribution and existing work)
> >
> > And I as the recipient don't really care - I know that via the patent grant in the AL, Sneaky Author can't come after me for any patents they hold (enumerated or not) that read on the work they contributed to.
> >
> > Is there a real problem we're trying to solve?
>
> I'm not aware of any Apache project asking this question, no. It seems
> Bill might have a case related to this thread, which we can address when
> it comes up.
>
>
> Indeed, there is no sneaky author. The patents are public filings. No
> need for tinfoil hats or detection gadgets. Those patent use rights are
> granted, by the very design of the AL, to every downstream consumer.
>
> Apparently, none of you spend too much time with your corp-consumer
> legal teams. It's brutal.
>
> Pretty much everything out there, IP-wise, bollixes the works. Stray
> non-conforming license? That's out. Stray patent claim? Straight out.
>
> So yes, there is a project which is trying to offer code-with-patent-license
> to the ASF, and has succeeded at their CCLA plus CLAs and would like
> to wokr out the best way to inform / reassure users that these particular
> patent claims are known to apply and are granted for use to whatever
> downstream consumer wants to use the code.
<full-disclosure>
The corp in question is my employer.
These are my opinions not my employers.
</full-disclosure>
I appreciate that the corp in question is trying to do the right thing.
I would argue - based on our experience of adding the "I grant this
patch under the ALv2" button to Jira - that doing anything over any
beyond that which is required by our existing CLA and CCLA process will
cause us more problems in the long run than it solves.
By granting this code to the ASF under the ALv2 any and all necessary
patent licenses are granted. That is the only thing that needs to be
said publicly and - in my view - the only thing that should be said
publicly. There is no problem here that needs to be solved.
If the corp wants to provide the PMC (privately) with a list of patents
it thinks it has licensed then fine but I don't see how making that list
public helps anyone.
The potential issues I see with making the list public include:
- projects that don't publish a list of licensed patents start being
asked by users to produce one
- projects that do publish a list start being asked about XYZ patent
that a random user things might apply to the project
- committers start being asked to explicitly state if each commit is
covered by a patent or not
If we could guarantee that - for each project - we could produce a
complete list of licensed patents then I'd have far fewer concerns. But
I do not believe we can do that. Further, I believe that publishing
incomplete lists will create the perception of problems where none
exists given the clear and unambiguous language that is already present
in the ALv2 with respect to patents.
Mark
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Re: Proposal: Disclosure of patents by Apache projects
Posted by William A Rowe Jr <wr...@rowe-clan.net>.
On Wed, Jun 3, 2015 at 9:10 AM, Sam Ruby <ru...@intertwingly.net> wrote:
> On Wed, Jun 3, 2015 at 9:38 AM, William A Rowe Jr <wr...@rowe-clan.net>
> wrote:
> >
> > Indeed, there is no sneaky author. The patents are public filings. No
> > need for tinfoil hats or detection gadgets. Those patent use rights are
> > granted, by the very design of the AL, to every downstream consumer.
> >
> > Apparently, none of you spend too much time with your corp-consumer
> > legal teams. It's brutal.
> >
> > Pretty much everything out there, IP-wise, bollixes the works. Stray
> > non-conforming license? That's out. Stray patent claim? Straight out.
> >
> > So yes, there is a project which is trying to offer
> code-with-patent-license
> > to the ASF, and has succeeded at their CCLA plus CLAs and would like
> > to wokr out the best way to inform / reassure users that these particular
> > patent claims are known to apply and are granted for use to whatever
> > downstream consumer wants to use the code.
>
[Antagonistic rhetorical question redacted]
> I will note that this thread has evolved considerably from an initial
> post which called into question Roy's advice:
>
> > We do not notify
> > our users that an unspecified patent might possibly be owned by some
> > third-party based on a theoretical reading of a patent license on a
> > specification that we don't even implement.
>
Precisely. This is -not- the question I raised. Although I have a lot of
fondness for the OpenSSL project due to their transparency of keeping
alive a small plain-text spreadsheet of applicable patents they expected
they had infringed, and the expiree dates of those patents. That has no
bearing on the question at hand :)
> Here you are describing a case where a patent holder is trying to do
> the right thing. This is quite a different matter than third parties
> wanting us to endorse their assertions, something the ASF has
> consistently declined to do.
>
> We also don't publicly disclose who has signed CCLAs or SG. In this
> case, it appears to be the signer's wish to disclose that information.
> The PPMC and IPMC should take a position on that request.
>
Frankly, I don't know if the attribution is desired or not. I'm asking
entirely from the perspective of ASF interests, downstream consumers,
and any potential impact on adoption.
> That being said, patents are complex beasts. A patent may require n
> conditions, and the code that the contributor has donated may only
> read on n-1. An evaluation of the risk is in order.
>
> This also is a rare enough case that I don't think that we have
> reached a point where a best practice is obvious. Perhaps a blog post
> or a page on the PPMCs site may be a good first step.
>
Exactly so, it will be rare - not that there are applicable patents, but -
in the context of the specific patents and the scope of those specific
claims. I will pursue this further out-of-band, and...
> Opening a JIRA, drafting some text, and asking for a legal review of
> that text would be in order.
>
Sounds sensible, thanks.
Bill
Re: Proposal: Disclosure of patents by Apache projects
Posted by Sam Ruby <ru...@intertwingly.net>.
On Wed, Jun 3, 2015 at 9:38 AM, William A Rowe Jr <wr...@rowe-clan.net> wrote:
> On Wed, Jun 3, 2015 at 7:59 AM, Shane Curcuru <as...@shanecurcuru.org> wrote:
>>
>> On 6/3/15 8:44 AM, Geir Magnusson Jr. wrote:
>> > But what's the point of any of this? There's no reason to require
>> > Sneaky Author to enumerate anything because via contribution via the AL,
>> > they have granted a license to anything they have necessarily infringed by
>> > the contribution (or combined contribution and existing work)
>> >
>> > And I as the recipient don't really care - I know that via the patent
>> > grant in the AL, Sneaky Author can't come after me for any patents they hold
>> > (enumerated or not) that read on the work they contributed to.
>> >
>> > Is there a real problem we're trying to solve?
>>
>> I'm not aware of any Apache project asking this question, no. It seems
>> Bill might have a case related to this thread, which we can address when
>> it comes up.
>
>
> Indeed, there is no sneaky author. The patents are public filings. No
> need for tinfoil hats or detection gadgets. Those patent use rights are
> granted, by the very design of the AL, to every downstream consumer.
>
> Apparently, none of you spend too much time with your corp-consumer
> legal teams. It's brutal.
>
> Pretty much everything out there, IP-wise, bollixes the works. Stray
> non-conforming license? That's out. Stray patent claim? Straight out.
>
> So yes, there is a project which is trying to offer code-with-patent-license
> to the ASF, and has succeeded at their CCLA plus CLAs and would like
> to wokr out the best way to inform / reassure users that these particular
> patent claims are known to apply and are granted for use to whatever
> downstream consumer wants to use the code.
>
> Is this really so difficult?
I encourage you to follow your own advice: there is no reason for this
type of antagonistic responses.
I will note that this thread has evolved considerably from an initial
post which called into question Roy's advice:
> We do not notify
> our users that an unspecified patent might possibly be owned by some
> third-party based on a theoretical reading of a patent license on a
> specification that we don't even implement.
Here you are describing a case where a patent holder is trying to do
the right thing. This is quite a different matter than third parties
wanting us to endorse their assertions, something the ASF has
consistently declined to do.
We also don't publicly disclose who has signed CCLAs or SG. In this
case, it appears to be the signer's wish to disclose that information.
The PPMC and IPMC should take a position on that request.
That being said, patents are complex beasts. A patent may require n
conditions, and the code that the contributor has donated may only
read on n-1. An evaluation of the risk is in order.
This also is a rare enough case that I don't think that we have
reached a point where a best practice is obvious. Perhaps a blog post
or a page on the PPMCs site may be a good first step.
Opening a JIRA, drafting some text, and asking for a legal review of
that text would be in order.
- Sam Ruby
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Re: Proposal: Disclosure of patents by Apache projects
Posted by William A Rowe Jr <wr...@rowe-clan.net>.
On Wed, Jun 3, 2015 at 7:59 AM, Shane Curcuru <as...@shanecurcuru.org> wrote:
> On 6/3/15 8:44 AM, Geir Magnusson Jr. wrote:
> > But what's the point of any of this? There's no reason to require
> Sneaky Author to enumerate anything because via contribution via the AL,
> they have granted a license to anything they have necessarily infringed by
> the contribution (or combined contribution and existing work)
> >
> > And I as the recipient don't really care - I know that via the patent
> grant in the AL, Sneaky Author can't come after me for any patents they
> hold (enumerated or not) that read on the work they contributed to.
> >
> > Is there a real problem we're trying to solve?
>
> I'm not aware of any Apache project asking this question, no. It seems
> Bill might have a case related to this thread, which we can address when
> it comes up.
>
Indeed, there is no sneaky author. The patents are public filings. No
need for tinfoil hats or detection gadgets. Those patent use rights are
granted, by the very design of the AL, to every downstream consumer.
Apparently, none of you spend too much time with your corp-consumer
legal teams. It's brutal.
Pretty much everything out there, IP-wise, bollixes the works. Stray
non-conforming license? That's out. Stray patent claim? Straight out.
So yes, there is a project which is trying to offer code-with-patent-license
to the ASF, and has succeeded at their CCLA plus CLAs and would like
to wokr out the best way to inform / reassure users that these particular
patent claims are known to apply and are granted for use to whatever
downstream consumer wants to use the code.
Is this really so difficult?
Re: Proposal: Disclosure of patents by Apache projects
Posted by Shane Curcuru <as...@shanecurcuru.org>.
On 6/3/15 8:44 AM, Geir Magnusson Jr. wrote:
> But what's the point of any of this? There's no reason to require Sneaky Author to enumerate anything because via contribution via the AL, they have granted a license to anything they have necessarily infringed by the contribution (or combined contribution and existing work)
>
> And I as the recipient don't really care - I know that via the patent grant in the AL, Sneaky Author can't come after me for any patents they hold (enumerated or not) that read on the work they contributed to.
>
> Is there a real problem we're trying to solve?
I'm not aware of any Apache project asking this question, no. It seems
Bill might have a case related to this thread, which we can address when
it comes up.
- Shane
>
> geir
>
>
>> On Jun 3, 2015, at 8:25 AM, Jim Jagielski <ji...@jagunet.com> wrote:
>>
>>
>>> On Jun 3, 2015, at 6:09 AM, Geir Magnusson Jr. <ge...@pobox.com> wrote:
>>>
>>>
>>> My understanding of the AL is that we don't need to be explicit. If the author of the code has patents that matter, they are providing a license and they can't sue you.
>>>
>>
>> Certainly the SGA and *CLA also provide additional "confirmation"
>> of the above; If an author wishes to list the patents, then
>> fine. We can, if we want, create a file which maintains the history and
>> heritage of that list, in a file named TO-BE-DETERMINED. However,
>> that file should have some sort of boilerplate at the top stating
>> that the ALv2 (and whatever other agreements they have signed)
>> maintains that the author has explicitly provided a patent license
>> for any patent held by that author that might be infringed by
>> said contribution and therefore the list may not be complete.
>>
>> For example, say that author has patent X, Y and Z yet is a very
>> sneaky entity. Said author provides the code and enumerates that
>> patent X and Y are granted. We do not want said author to then
>> be able to sue for patent Z. The ALv2 prevents that. And should
>> the case go to court, discovery will uncover their attempt to
>> subvert the intent.
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>>
>
>
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>
>
>
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Re: Proposal: Disclosure of patents by Apache projects
Posted by "Geir Magnusson Jr." <ge...@sourcepoint.com>.
But what's the point of any of this? There's no reason to require Sneaky Author to enumerate anything because via contribution via the AL, they have granted a license to anything they have necessarily infringed by the contribution (or combined contribution and existing work)
And I as the recipient don't really care - I know that via the patent grant in the AL, Sneaky Author can't come after me for any patents they hold (enumerated or not) that read on the work they contributed to.
Is there a real problem we're trying to solve?
geir
> On Jun 3, 2015, at 8:25 AM, Jim Jagielski <ji...@jagunet.com> wrote:
>
>
>> On Jun 3, 2015, at 6:09 AM, Geir Magnusson Jr. <ge...@pobox.com> wrote:
>>
>>
>> My understanding of the AL is that we don't need to be explicit. If the author of the code has patents that matter, they are providing a license and they can't sue you.
>>
>
> Certainly the SGA and *CLA also provide additional "confirmation"
> of the above; If an author wishes to list the patents, then
> fine. We can, if we want, create a file which maintains the history and
> heritage of that list, in a file named TO-BE-DETERMINED. However,
> that file should have some sort of boilerplate at the top stating
> that the ALv2 (and whatever other agreements they have signed)
> maintains that the author has explicitly provided a patent license
> for any patent held by that author that might be infringed by
> said contribution and therefore the list may not be complete.
>
> For example, say that author has patent X, Y and Z yet is a very
> sneaky entity. Said author provides the code and enumerates that
> patent X and Y are granted. We do not want said author to then
> be able to sue for patent Z. The ALv2 prevents that. And should
> the case go to court, discovery will uncover their attempt to
> subvert the intent.
> ---------------------------------------------------------------------
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> For additional commands, e-mail: legal-discuss-help@apache.org
>
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Re: Proposal: Disclosure of patents by Apache projects
Posted by Jim Jagielski <ji...@jaguNET.com>.
> On Jun 3, 2015, at 6:09 AM, Geir Magnusson Jr. <ge...@pobox.com> wrote:
>
>
> My understanding of the AL is that we don't need to be explicit. If the author of the code has patents that matter, they are providing a license and they can't sue you.
>
Certainly the SGA and *CLA also provide additional "confirmation"
of the above; If an author wishes to list the patents, then
fine. We can, if we want, create a file which maintains the history and
heritage of that list, in a file named TO-BE-DETERMINED. However,
that file should have some sort of boilerplate at the top stating
that the ALv2 (and whatever other agreements they have signed)
maintains that the author has explicitly provided a patent license
for any patent held by that author that might be infringed by
said contribution and therefore the list may not be complete.
For example, say that author has patent X, Y and Z yet is a very
sneaky entity. Said author provides the code and enumerates that
patent X and Y are granted. We do not want said author to then
be able to sue for patent Z. The ALv2 prevents that. And should
the case go to court, discovery will uncover their attempt to
subvert the intent.
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Re: Proposal: Disclosure of patents by Apache projects
Posted by "Geir Magnusson Jr." <ge...@pobox.com>.
> On Jun 3, 2015, at 5:31 AM, William A Rowe Jr <wr...@rowe-clan.net> wrote:
>
> On Wed, Jun 3, 2015 at 4:22 AM, Geir Magnusson Jr. <geir@pobox.com <ma...@pobox.com>> wrote:
>
>> On Jun 3, 2015, at 5:14 AM, William A Rowe Jr <wrowe@rowe-clan.net <ma...@rowe-clan.net>> wrote:
>>
>> On Wed, Jun 3, 2015 at 4:09 AM, Geir Magnusson Jr. <geir@pobox.com <ma...@pobox.com>> wrote:
>> As a bystander, I'm confused.
>>
>> My understanding is that the patent language in the AL is designed to moot the need for this kind of discussion.
>>
>> Keeping it short, contributors provide a patent license for *any* of their patents held by those contributors that would be infringed.
>>
>> Why would we even want to try to get an enumerated list correct up front (and maintain it)?
>>
>> geir
>>
>> Thanks Gier,
>>
>> that's exactly why I'm conflicted...
>>
>> we don't enumerate copyright contributions. Why should we need to enumerate patent contributions?
>>
>> I can counter this with the fact that every commit message had better provide appropriate authorship attribution [although, you can't clarify from the commit whether the committer or their employer owns the copyright to the commit, granted.]
>
> Each contributor warrants via the ICLA that they have the right to provide the contribution under the Apache License. They could be lying, but that's a different problem to solve.
>
>>
>> There is no such transparent vehicle for patents. What would you (or others) suggest?
>
> My non-lawyer understanding is that I think there is one, and it's the same vehicle. Each contributor warrants ability to contribute under the Apache License, which provides both copyright and patent license.
>
> Suggest for what? The "Disclosure of patents" problem? I don't understand why it is a problem at all, for us or anyone else (users, other FLOSS communities, etc).
>
> I'm neither a lawyer nor pretending to be one. I'm only asking about provenance... every commit message better explain who authored the code/claimed copyright at the time it was committed. We do not seem to be as good at explaining patents that coincide with said code.
My understanding of the AL is that we don't need to be explicit. If the author of the code has patents that matter, they are providing a license and they can't sue you.
geir
Re: Proposal: Disclosure of patents by Apache projects
Posted by William A Rowe Jr <wr...@rowe-clan.net>.
On Wed, Jun 3, 2015 at 4:22 AM, Geir Magnusson Jr. <ge...@pobox.com> wrote:
>
> On Jun 3, 2015, at 5:14 AM, William A Rowe Jr <wr...@rowe-clan.net> wrote:
>
> On Wed, Jun 3, 2015 at 4:09 AM, Geir Magnusson Jr. <ge...@pobox.com> wrote:
>
>> As a bystander, I'm confused.
>>
>> My understanding is that the patent language in the AL is designed to
>> moot the need for this kind of discussion.
>>
>> Keeping it short, contributors provide a patent license for *any* of
>> their patents held by those contributors that would be infringed.
>>
>> Why would we even want to try to get an enumerated list correct up front
>> (and maintain it)?
>>
>> geir
>>
>
> Thanks Gier,
>
> that's exactly why I'm conflicted...
>
> we don't enumerate copyright contributions. Why should we need to
> enumerate patent contributions?
>
> I can counter this with the fact that every commit message had better
> provide appropriate authorship attribution [although, you can't clarify
> from the commit whether the committer or their employer owns the copyright
> to the commit, granted.]
>
>
> Each contributor warrants via the ICLA that they have the right to provide
> the contribution under the Apache License. They could be lying, but that's
> a different problem to solve.
>
>
> There is no such transparent vehicle for patents. What would you (or
> others) suggest?
>
>
> My non-lawyer understanding is that I think there is one, and it's the
> same vehicle. Each contributor warrants ability to contribute under the
> Apache License, which provides both copyright and patent license.
>
> Suggest for what? The "Disclosure of patents" problem? I don't
> understand why it is a problem at all, for us or anyone else (users, other
> FLOSS communities, etc).
>
I'm neither a lawyer nor pretending to be one. I'm only asking about
provenance... every commit message better explain who authored the
code/claimed copyright at the time it was committed. We do not seem to be
as good at explaining patents that coincide with said code.
Re: Proposal: Disclosure of patents by Apache projects
Posted by "Geir Magnusson Jr." <ge...@pobox.com>.
> On Jun 3, 2015, at 5:14 AM, William A Rowe Jr <wr...@rowe-clan.net> wrote:
>
> On Wed, Jun 3, 2015 at 4:09 AM, Geir Magnusson Jr. <geir@pobox.com <ma...@pobox.com>> wrote:
> As a bystander, I'm confused.
>
> My understanding is that the patent language in the AL is designed to moot the need for this kind of discussion.
>
> Keeping it short, contributors provide a patent license for *any* of their patents held by those contributors that would be infringed.
>
> Why would we even want to try to get an enumerated list correct up front (and maintain it)?
>
> geir
>
> Thanks Gier,
>
> that's exactly why I'm conflicted...
>
> we don't enumerate copyright contributions. Why should we need to enumerate patent contributions?
>
> I can counter this with the fact that every commit message had better provide appropriate authorship attribution [although, you can't clarify from the commit whether the committer or their employer owns the copyright to the commit, granted.]
Each contributor warrants via the ICLA that they have the right to provide the contribution under the Apache License. They could be lying, but that's a different problem to solve.
>
> There is no such transparent vehicle for patents. What would you (or others) suggest?
My non-lawyer understanding is that I think there is one, and it's the same vehicle. Each contributor warrants ability to contribute under the Apache License, which provides both copyright and patent license.
Suggest for what? The "Disclosure of patents" problem? I don't understand why it is a problem at all, for us or anyone else (users, other FLOSS communities, etc).
geir
RE: Proposal: Disclosure of patents by Apache projects
Posted by Lawrence Rosen <lr...@rosenlaw.com>.
Ross,
1) If you prefer to have patent notices sprinkled across Apache documentation rather than in a consolidated NOTICE file that 99.9% of all users can ignore, how strange that will be.
2) Independent implementations are a totally serious and frequent issue at ASF. On several occasions Apache projects have moved elsewhere or been abandoned merely because of a licensing issue between open source alternatives. The latest such issue is AOO/LO, where the dialogue rests in some part on ASF's willingness to allow MPL-licensed works to benefit from The Apache Way community without FOSS-license disputes?
3) I suggest we be very careful making statements such as "We never knowingly infringe on a patent and so this is meaningless." Sometimes we knowingly infringe on a patent that is FOSS-licensed to us or included in some industry standard we've implemented. Sometimes we may knowingly infringe on a patent that we seriously believe is "BS" and not worthy of the paper it is printed on, but our knowledge protects us from willful infringement damages. In no event do we willfully blind ourselves to patents or pretend that they don't exist in software around the world.
/Larry
From: Ross Gardler (MS OPEN TECH) [mailto:Ross.Gardler@microsoft.com]
Sent: Wednesday, June 3, 2015 12:42 PM
To: legal-discuss@apache.org; lrosen@rosenlaw.com
Subject: RE: Proposal: Disclosure of patents by Apache projects
To point 1) If a patent owner who contributes to an Apache project wants to notify people of the existence of those patents then they can do so through a contribution to our documentation. Nothing is stopping that. We do not need to have a policy to enforce it and thus add yet more overhead to our PMCs.
To point 2) independent implementations are not the concern of the ASF.
To point 3) We never knowingly infringe on a patent and so this is meaningless. This fact is stated all over our mailing lists and quite possibly our website too. If it would be helpful we could have a clear and explicit statement in our policy docks to the effect that “either (1) have a FOSS license to it, or (2) in our early but serious view we don't believe we infringe” with the addition of “on any patents”.
From: Lawrence Rosen [mailto:lrosen@rosenlaw.com]
Sent: Wednesday, June 3, 2015 12:21 PM
To: legal-discuss@apache.org <ma...@apache.org>
Cc: Lawrence Rosen
Subject: RE: Proposal: Disclosure of patents by Apache projects
A great question has been asked:
> Why should we need to enumerate patent contributions?
We own no patents and, as has repeatedly been pointed out, our ALv2 license itself already includes a generous patent grant for use and aggregation.
There are at least three other good reasons for us to enumerate patent contributions to ASF:
1. A patent owner can obtain infringement damages only from the date of such a notice. 35 USC 287(a). The patent owner probably wants to have its patents enumerated to protect its own financial interests in that patent.
2. While certain patent claims have been licensed to ASF under a FOSS license and then to the world under ALv2, there may be other claims in those patents or (non-derivative) independent implementations that aren't FOSS-licensed. Take notice.
3. This notice is ASF's defense to willful blindness or willful infringement in an inducing patent infringement case. It asserts that we know of the patent and either (1) have a FOSS license to it, or (2) in our early but serious view we don't believe we infringe.
/Larry
Lawrence Rosen
"If this were legal advice it would have been accompanied by a bill."
From: William A Rowe Jr [mailto:wrowe@rowe-clan.net]
Sent: Wednesday, June 3, 2015 2:14 AM
To: legal-discuss@apache.org <ma...@apache.org>
Subject: Re: Proposal: Disclosure of patents by Apache projects
On Wed, Jun 3, 2015 at 4:09 AM, Geir Magnusson Jr. <geir@pobox.com <ma...@pobox.com> > wrote:
As a bystander, I'm confused.
My understanding is that the patent language in the AL is designed to moot the need for this kind of discussion.
Keeping it short, contributors provide a patent license for *any* of their patents held by those contributors that would be infringed.
Why would we even want to try to get an enumerated list correct up front (and maintain it)?
geir
Thanks Gier,
that's exactly why I'm conflicted...
we don't enumerate copyright contributions. Why should we need to enumerate patent contributions?
I can counter this with the fact that every commit message had better provide appropriate authorship attribution [although, you can't clarify from the commit whether the committer or their employer owns the copyright to the commit, granted.]
There is no such transparent vehicle for patents. What would you (or others) suggest?
Re: Proposal: Disclosure of patents by Apache projects
Posted by William A Rowe Jr <wr...@rowe-clan.net>.
On Wed, Jun 3, 2015 at 2:41 PM, Ross Gardler (MS OPEN TECH) <
Ross.Gardler@microsoft.com> wrote:
>
>
> To point 2) independent implementations are not the concern of the ASF.
>
>
Actually, they are. I independently re-implemented fnmatch here at the ASF,
dual licensing it under the BSD and the AL for the various BSD projects and
Apache APR Project. At the time the recursive implementation had proven
to be a security risk, and the GNU clib hack/re-implementation would have
been of no help to these communities, due to licensing.
I can envision others taking ASF API's and re-implementing them, and for
us to encourage that, even as a fork within a project or as or within
another
PMC. What is to protect the ASF in that case, if we don't harvest any AL
patent grants explicitly?
RE: Proposal: Disclosure of patents by Apache projects
Posted by "Ross Gardler (MS OPEN TECH)" <Ro...@microsoft.com>.
To point 1) If a patent owner who contributes to an Apache project wants to notify people of the existence of those patents then they can do so through a contribution to our documentation. Nothing is stopping that. We do not need to have a policy to enforce it and thus add yet more overhead to our PMCs.
To point 2) independent implementations are not the concern of the ASF.
To point 3) We never knowingly infringe on a patent and so this is meaningless. This fact is stated all over our mailing lists and quite possibly our website too. If it would be helpful we could have a clear and explicit statement in our policy docks to the effect that “either (1) have a FOSS license to it, or (2) in our early but serious view we don't believe we infringe” with the addition of “on any patents”.
From: Lawrence Rosen [mailto:lrosen@rosenlaw.com]
Sent: Wednesday, June 3, 2015 12:21 PM
To: legal-discuss@apache.org
Cc: Lawrence Rosen
Subject: RE: Proposal: Disclosure of patents by Apache projects
A great question has been asked:
> Why should we need to enumerate patent contributions?
We own no patents and, as has repeatedly been pointed out, our ALv2 license itself already includes a generous patent grant for use and aggregation.
There are at least three other good reasons for us to enumerate patent contributions to ASF:
1. A patent owner can obtain infringement damages only from the date of such a notice. 35 USC 287(a). The patent owner probably wants to have its patents enumerated to protect its own financial interests in that patent.
2. While certain patent claims have been licensed to ASF under a FOSS license and then to the world under ALv2, there may be other claims in those patents or (non-derivative) independent implementations that aren't FOSS-licensed. Take notice.
3. This notice is ASF's defense to willful blindness or willful infringement in an inducing patent infringement case. It asserts that we know of the patent and either (1) have a FOSS license to it, or (2) in our early but serious view we don't believe we infringe.
/Larry
Lawrence Rosen
"If this were legal advice it would have been accompanied by a bill."
From: William A Rowe Jr [mailto:wrowe@rowe-clan.net]
Sent: Wednesday, June 3, 2015 2:14 AM
To: legal-discuss@apache.org<ma...@apache.org>
Subject: Re: Proposal: Disclosure of patents by Apache projects
On Wed, Jun 3, 2015 at 4:09 AM, Geir Magnusson Jr. <ge...@pobox.com>> wrote:
As a bystander, I'm confused.
My understanding is that the patent language in the AL is designed to moot the need for this kind of discussion.
Keeping it short, contributors provide a patent license for *any* of their patents held by those contributors that would be infringed.
Why would we even want to try to get an enumerated list correct up front (and maintain it)?
geir
Thanks Gier,
that's exactly why I'm conflicted...
we don't enumerate copyright contributions. Why should we need to enumerate patent contributions?
I can counter this with the fact that every commit message had better provide appropriate authorship attribution [although, you can't clarify from the commit whether the committer or their employer owns the copyright to the commit, granted.]
There is no such transparent vehicle for patents. What would you (or others) suggest?
Re: Proposal: Disclosure of patents by Apache projects
Posted by Alex Harui <ah...@adobe.com>.
I probably shouldn’t ask this, but what are the “financial interests” in a patent that has been licensed essentially to everybody?
-Alex
From: Lawrence Rosen <lr...@rosenlaw.com>>
Reply-To: "legal-discuss@apache.org<ma...@apache.org>" <le...@apache.org>>, "lrosen@rosenlaw.com<ma...@rosenlaw.com>" <lr...@rosenlaw.com>>
Date: Wednesday, June 3, 2015 at 12:21 PM
To: "legal-discuss@apache.org<ma...@apache.org>" <le...@apache.org>>
Cc: Lawrence Rosen <lr...@rosenlaw.com>>
Subject: RE: Proposal: Disclosure of patents by Apache projects
A great question has been asked:
> Why should we need to enumerate patent contributions?
We own no patents and, as has repeatedly been pointed out, our ALv2 license itself already includes a generous patent grant for use and aggregation.
There are at least three other good reasons for us to enumerate patent contributions to ASF:
1. A patent owner can obtain infringement damages only from the date of such a notice. 35 USC 287(a). The patent owner probably wants to have its patents enumerated to protect its own financial interests in that patent.
2. While certain patent claims have been licensed to ASF under a FOSS license and then to the world under ALv2, there may be other claims in those patents or (non-derivative) independent implementations that aren't FOSS-licensed. Take notice.
3. This notice is ASF's defense to willful blindness or willful infringement in an inducing patent infringement case. It asserts that we know of the patent and either (1) have a FOSS license to it, or (2) in our early but serious view we don't believe we infringe.
/Larry
Lawrence Rosen
"If this were legal advice it would have been accompanied by a bill."
From: William A Rowe Jr [mailto:wrowe@rowe-clan.net]
Sent: Wednesday, June 3, 2015 2:14 AM
To: legal-discuss@apache.org<ma...@apache.org>
Subject: Re: Proposal: Disclosure of patents by Apache projects
On Wed, Jun 3, 2015 at 4:09 AM, Geir Magnusson Jr. <ge...@pobox.com>> wrote:
As a bystander, I'm confused.
My understanding is that the patent language in the AL is designed to moot the need for this kind of discussion.
Keeping it short, contributors provide a patent license for *any* of their patents held by those contributors that would be infringed.
Why would we even want to try to get an enumerated list correct up front (and maintain it)?
geir
Thanks Gier,
that's exactly why I'm conflicted...
we don't enumerate copyright contributions. Why should we need to enumerate patent contributions?
I can counter this with the fact that every commit message had better provide appropriate authorship attribution [although, you can't clarify from the commit whether the committer or their employer owns the copyright to the commit, granted.]
There is no such transparent vehicle for patents. What would you (or others) suggest?
Re: Proposal: Disclosure of patents by Apache projects
Posted by Louis Suárez-Potts <lu...@gmail.com>.
> On 03 Jun 2015, at 21:05, Lawrence Rosen <lr...@rosenlaw.com> wrote:
>
> Louis Suárez-Potts asked:
> Perhaps I missed something. Has there been a case or similar occasion that would cause us (ASF, that is) to assert more plainly than is now done patent contributions?
>
> Not an on-point case that I'm aware of other than the reasons I previously cited here (copied below).
>
> But the patent law in the US is evolving. Just within the past week on this list I quoted two very recent cases, one from the U.S. Supreme Court and one from the CAFC, that reflect a different law for inducing patent infringement (what ASF does all the time, presumably under license!!!) than what was in effect when ASF was a babe. That's what ASF and our direct downstream distributors are now facing: A possibility of inducing infringement through willful blindness merely by pretending that patents don't affect us.
Indeed; and this is even without consideration of whatever TISA/TTP and etc., might harbour. Which is to say that though I have found this discussion to be interesting, in the absence of specific decisions, I had to wonder about what was *not* being written.
>
> Nor is ASF any longer a babe. When one of the primary ASF projects, AOO, delivers software to over a hundred million users around the world, I assume that a grown up like you is professional and diligent with respect to IP, including patents.
Of course. But I’m also aware that law being what it is and not being always as one would want it to be around the world (i.e., it’s not uniform in letter or spirit), that there’s always the unexpected. More materially, from my perspective, I’m interested in seeing that the processes of community collaboration are carried out as desired—and promised.
>
> But hey, ASF has no money to sue for and I'm not ASF's attorney. :-) The issue is primarily one for our downstream distributors to pay their own lawyers to advise them. I assume they are doing that right now, which is why they are reluctant to speak up here.
>
> /Larry
>
best
louis
RE: Proposal: Disclosure of patents by Apache projects
Posted by Lawrence Rosen <lr...@rosenlaw.com>.
Louis Suárez-Potts asked:
Perhaps I missed something. Has there been a case or similar occasion that
would cause us (ASF, that is) to assert more plainly than is now done patent
contributions?
Not an on-point case that I'm aware of other than the reasons I previously
cited here (copied below).
But the patent law in the US is evolving. Just within the past week on this
list I quoted two very recent cases, one from the U.S. Supreme Court and one
from the CAFC, that reflect a different law for inducing patent infringement
(what ASF does all the time, presumably under license!!!) than what was in
effect when ASF was a babe. That's what ASF and our direct downstream
distributors are now facing: A possibility of inducing infringement through
willful blindness merely by pretending that patents don't affect us.
Nor is ASF any longer a babe. When one of the primary ASF projects, AOO,
delivers software to over a hundred million users around the world, I assume
that a grown up like you is professional and diligent with respect to IP,
including patents.
But hey, ASF has no money to sue for and I'm not ASF's attorney. :-) The
issue is primarily one for our downstream distributors to pay their own
lawyers to advise them. I assume they are doing that right now, which is why
they are reluctant to speak up here.
/Larry
Lawrence Rosen
"If this were legal advice it would have been accompanied by a bill."
-----Original Message-----
From: Louis Suárez-Potts [mailto:luispo@gmail.com]
Sent: Wednesday, June 3, 2015 4:27 PM
To: legal-discuss@apache.org; lrosen@rosenlaw.com
Subject: Re: Proposal: Disclosure of patents by Apache projects
> On 03 Jun 2015, at 15:21, Lawrence Rosen < <ma...@rosenlaw.com>
lrosen@rosenlaw.com> wrote:
>
> A great question has been asked:
> > Why should we need to enumerate patent contributions?
>
> We own no patents and, as has repeatedly been pointed out, our ALv2
license itself already includes a grant for use and aggregation.
>
> There are at least three other good reasons for us to enumerate patent
contributions to ASF:
>
> 1. A patent owner can obtain infringement damages only from the date of
such a notice. 35 USC 287(a). The patent owner probably wants to have its
patents enumerated to protect its own financial interests in that patent.
>
> 2. While certain patent claims have been licensed to ASF under a FOSS
license and then to the worldother claims in those patents or
(non-derivative) independent implementations that aren't FOSS-licensed. Take
notice.
>
> 3. This notice is ASF's defense to willful blindness or willful
infringement in an inducing patent infringement case. It asserts that we
know of the patent and either (1) have a FOSS license to it, or (2) in our
early but serious view we don't believe we infringe.
>
Larry,
Perhaps I missed something. Has there been a case or similar occasion that
would cause us (ASF, that is) to assert more plainly than is now done patent
contributions?
louis
Re: Proposal: Disclosure of patents by Apache projects
Posted by Louis Suárez-Potts <lu...@gmail.com>.
> On 03 Jun 2015, at 15:21, Lawrence Rosen <lr...@rosenlaw.com> wrote:
>
> A great question has been asked:
> > Why should we need to enumerate patent contributions?
>
> We own no patents and, as has repeatedly been pointed out, our ALv2 license itself already includes a grant for use and aggregation.
>
> There are at least three other good reasons for us to enumerate patent contributions to ASF:
>
> 1. A patent owner can obtain infringement damages only from the date of such a notice. 35 USC 287(a). The patent owner probably wants to have its patents enumerated to protect its own financial interests in that patent.
>
> 2. While certain patent claims have been licensed to ASF under a FOSS license and then to the worldother claims in those patents or (non-derivative) independent implementations that aren't FOSS-licensed. Take notice.
>
> 3. This notice is ASF's defense to willful blindness or willful infringement in an inducing patent infringement case. It asserts that we know of the patent and either (1) have a FOSS license to it, or (2) in our early but serious view we don't believe we infringe.
>
Larry,
Perhaps I missed something. Has there been a case or similar occasion that would cause us (ASF, that is) to assert more plainly than is now done patent contributions?
louis
RE: Proposal: Disclosure of patents by Apache projects
Posted by Lawrence Rosen <lr...@rosenlaw.com>.
A great question has been asked:
> Why should we need to enumerate patent contributions?
We own no patents and, as has repeatedly been pointed out, our ALv2 license itself already includes a generous patent grant for use and aggregation.
There are at least three other good reasons for us to enumerate patent contributions to ASF:
1. A patent owner can obtain infringement damages only from the date of such a notice. 35 USC 287(a). The patent owner probably wants to have its patents enumerated to protect its own financial interests in that patent.
2. While certain patent claims have been licensed to ASF under a FOSS license and then to the world under ALv2, there may be other claims in those patents or (non-derivative) independent implementations that aren't FOSS-licensed. Take notice.
3. This notice is ASF's defense to willful blindness or willful infringement in an inducing patent infringement case. It asserts that we know of the patent and either (1) have a FOSS license to it, or (2) in our early but serious view we don't believe we infringe.
/Larry
Lawrence Rosen
"If this were legal advice it would have been accompanied by a bill."
From: William A Rowe Jr [mailto:wrowe@rowe-clan.net]
Sent: Wednesday, June 3, 2015 2:14 AM
To: legal-discuss@apache.org
Subject: Re: Proposal: Disclosure of patents by Apache projects
On Wed, Jun 3, 2015 at 4:09 AM, Geir Magnusson Jr. <geir@pobox.com <ma...@pobox.com> > wrote:
As a bystander, I'm confused.
My understanding is that the patent language in the AL is designed to moot the need for this kind of discussion.
Keeping it short, contributors provide a patent license for *any* of their patents held by those contributors that would be infringed.
Why would we even want to try to get an enumerated list correct up front (and maintain it)?
geir
Thanks Gier,
that's exactly why I'm conflicted...
we don't enumerate copyright contributions. Why should we need to enumerate patent contributions?
I can counter this with the fact that every commit message had better provide appropriate authorship attribution [although, you can't clarify from the commit whether the committer or their employer owns the copyright to the commit, granted.]
There is no such transparent vehicle for patents. What would you (or others) suggest?
Re: Proposal: Disclosure of patents by Apache projects
Posted by William A Rowe Jr <wr...@rowe-clan.net>.
On Wed, Jun 3, 2015 at 4:09 AM, Geir Magnusson Jr. <ge...@pobox.com> wrote:
> As a bystander, I'm confused.
>
> My understanding is that the patent language in the AL is designed to moot
> the need for this kind of discussion.
>
> Keeping it short, contributors provide a patent license for *any* of their
> patents held by those contributors that would be infringed.
>
> Why would we even want to try to get an enumerated list correct up front
> (and maintain it)?
>
> geir
>
Thanks Gier,
that's exactly why I'm conflicted...
we don't enumerate copyright contributions. Why should we need to
enumerate patent contributions?
I can counter this with the fact that every commit message had better
provide appropriate authorship attribution [although, you can't clarify
from the commit whether the committer or their employer owns the copyright
to the commit, granted.]
There is no such transparent vehicle for patents. What would you (or
others) suggest?
Re: Proposal: Disclosure of patents by Apache projects
Posted by "Geir Magnusson Jr." <ge...@pobox.com>.
As a bystander, I'm confused.
My understanding is that the patent language in the AL is designed to moot the need for this kind of discussion.
Keeping it short, contributors provide a patent license for *any* of their patents held by those contributors that would be infringed.
Why would we even want to try to get an enumerated list correct up front (and maintain it)?
geir
> On Jun 3, 2015, at 3:34 AM, William A Rowe Jr <wr...@rowe-clan.net> wrote:
>
> And you are not helping the process by suggesting each and every inquiry enters the back door. We don't answer to the faceless god. [Sorry, couldn't help injecting some GoT humor]
>
> There is nothing private. The Geode project intersects with a number of public Patent applications, granted, and freely shared with the code under th AL. I have very long refused to see legal-private@a.o, that I have nothing to say in any court on such nonsense. There is no reason for yours, or Greg's antagonistic responses.
>
> We will post the patent ID's tomorrow and seek the VP's considered and perhaps delayed response as the issue is considered behind closed doors.
>
> On Jun 3, 2015 2:23 AM, "Sam Ruby" <rubys@intertwingly.net <ma...@intertwingly.net>> wrote:
> On Wed, Jun 3, 2015 at 2:57 AM, William A Rowe Jr <wrowe@rowe-clan.net <ma...@rowe-clan.net>> wrote:
> > Brilliant, that person is on this channel, thanks sir.
> >
> > An answer, Mr. VP?
> >
> > (Not sure why you posited that reply, Sam... That officer might be equally
> > perplexed as to how the ASF should address this, I myself am of several
> > minds on the best course of action.)
>
> It has been relentlessly and repeatedly pointed out that Jim is not
> qualified to provide legal advice.
>
> That is not in dispute. The board feels that Jim is qualified to
> receive, process, and act on legal advice.
>
> You have shared some generalities on this list. I am encouraging you
> to share specifics directly with Jim. There may be risks involved,
> and Jim has access to the resources needed to evaluate those risks and
> propose a course of action.
>
> - Sam Ruby
>
>
> > On Jun 3, 2015 1:41 AM, "Sam Ruby" <rubys@intertwingly.net <ma...@intertwingly.net>> wrote:
> >>
> >> On Wed, Jun 3, 2015 at 1:03 AM, William A Rowe Jr <wrowe@rowe-clan.net <ma...@rowe-clan.net>>
> >> wrote:
> >> > On Tue, Jun 2, 2015 at 9:03 PM, Greg Stein <gstein@gmail.com <ma...@gmail.com>> wrote:
> >> >>
> >> >> On Tue, Jun 2, 2015 at 5:51 PM, Lawrence Rosen <lrosen@rosenlaw.com <ma...@rosenlaw.com>>
> >> >> wrote:
> >> >> >...
> >> >>>
> >> >>> When an Apache project purposely infringes an actual patent that we
> >> >>> have
> >> >>> a FOSS license to, it would be polite to say something like:
> >> >>
> >> >>
> >> >> Pure hypothetical. We don't, so this "solution" is premature. We don't
> >> >> know the characteristics of any patents in our products, nor we do know
> >> >> what
> >> >> the holders/owners want to do about it.
> >> >>
> >> >> There are way too many variables, making this hypothetical Q&A just so
> >> >> many unwanted bits in the ether. We don't have an actual
> >> >> question/situation,
> >> >> so this speculation of what we would do is ... speculation.
> >> >
> >> > Calm down, deep breaths everyone.
> >> >
> >> > An incoming project I'm mentoring has - and the custodians and authors
> >> > and IP holders are conveying - certain applicable patents.
> >> >
> >> > Untested patents, yes. I believe they should be described throughout
> >> > any ASF vehicles as "patent claims", not purely patents. Could be
> >> > broken. Might never be broken. All that aside...
> >> >
> >> > In any case, patents No. X, Y, Z and Q are being passed on through
> >> > the AL 2.0 language, and my question is how to reassure anyone who
> >> > is reviewing the provenance of the code in question that, yes, these
> >> > specific patents are known of and were conveyed to the licensee?
> >>
> >> This is exactly why we have counsel available to VP of Legal Affairs.
> >>
> >> - Sam Ruby
> >>
> >> ---------------------------------------------------------------------
> >> To unsubscribe, e-mail: legal-discuss-unsubscribe@apache.org <ma...@apache.org>
> >> For additional commands, e-mail: legal-discuss-help@apache.org <ma...@apache.org>
> >>
> >
>
> ---------------------------------------------------------------------
> To unsubscribe, e-mail: legal-discuss-unsubscribe@apache.org <ma...@apache.org>
> For additional commands, e-mail: legal-discuss-help@apache.org <ma...@apache.org>
>
Re: Proposal: Disclosure of patents by Apache projects
Posted by William A Rowe Jr <wr...@rowe-clan.net>.
And you are not helping the process by suggesting each and every inquiry
enters the back door. We don't answer to the faceless god. [Sorry,
couldn't help injecting some GoT humor]
There is nothing private. The Geode project intersects with a number of
public Patent applications, granted, and freely shared with the code under
th AL. I have very long refused to see legal-private@a.o, that I have
nothing to say in any court on such nonsense. There is no reason for
yours, or Greg's antagonistic responses.
We will post the patent ID's tomorrow and seek the VP's considered and
perhaps delayed response as the issue is considered behind closed doors.
On Jun 3, 2015 2:23 AM, "Sam Ruby" <ru...@intertwingly.net> wrote:
> On Wed, Jun 3, 2015 at 2:57 AM, William A Rowe Jr <wr...@rowe-clan.net>
> wrote:
> > Brilliant, that person is on this channel, thanks sir.
> >
> > An answer, Mr. VP?
> >
> > (Not sure why you posited that reply, Sam... That officer might be
> equally
> > perplexed as to how the ASF should address this, I myself am of several
> > minds on the best course of action.)
>
> It has been relentlessly and repeatedly pointed out that Jim is not
> qualified to provide legal advice.
>
> That is not in dispute. The board feels that Jim is qualified to
> receive, process, and act on legal advice.
>
> You have shared some generalities on this list. I am encouraging you
> to share specifics directly with Jim. There may be risks involved,
> and Jim has access to the resources needed to evaluate those risks and
> propose a course of action.
>
> - Sam Ruby
>
>
> > On Jun 3, 2015 1:41 AM, "Sam Ruby" <ru...@intertwingly.net> wrote:
> >>
> >> On Wed, Jun 3, 2015 at 1:03 AM, William A Rowe Jr <wr...@rowe-clan.net>
> >> wrote:
> >> > On Tue, Jun 2, 2015 at 9:03 PM, Greg Stein <gs...@gmail.com> wrote:
> >> >>
> >> >> On Tue, Jun 2, 2015 at 5:51 PM, Lawrence Rosen <lr...@rosenlaw.com>
> >> >> wrote:
> >> >> >...
> >> >>>
> >> >>> When an Apache project purposely infringes an actual patent that we
> >> >>> have
> >> >>> a FOSS license to, it would be polite to say something like:
> >> >>
> >> >>
> >> >> Pure hypothetical. We don't, so this "solution" is premature. We
> don't
> >> >> know the characteristics of any patents in our products, nor we do
> know
> >> >> what
> >> >> the holders/owners want to do about it.
> >> >>
> >> >> There are way too many variables, making this hypothetical Q&A just
> so
> >> >> many unwanted bits in the ether. We don't have an actual
> >> >> question/situation,
> >> >> so this speculation of what we would do is ... speculation.
> >> >
> >> > Calm down, deep breaths everyone.
> >> >
> >> > An incoming project I'm mentoring has - and the custodians and authors
> >> > and IP holders are conveying - certain applicable patents.
> >> >
> >> > Untested patents, yes. I believe they should be described throughout
> >> > any ASF vehicles as "patent claims", not purely patents. Could be
> >> > broken. Might never be broken. All that aside...
> >> >
> >> > In any case, patents No. X, Y, Z and Q are being passed on through
> >> > the AL 2.0 language, and my question is how to reassure anyone who
> >> > is reviewing the provenance of the code in question that, yes, these
> >> > specific patents are known of and were conveyed to the licensee?
> >>
> >> This is exactly why we have counsel available to VP of Legal Affairs.
> >>
> >> - Sam Ruby
> >>
> >> ---------------------------------------------------------------------
> >> To unsubscribe, e-mail: legal-discuss-unsubscribe@apache.org
> >> For additional commands, e-mail: legal-discuss-help@apache.org
> >>
> >
>
> ---------------------------------------------------------------------
> To unsubscribe, e-mail: legal-discuss-unsubscribe@apache.org
> For additional commands, e-mail: legal-discuss-help@apache.org
>
>
Re: Proposal: Disclosure of patents by Apache projects
Posted by Sam Ruby <ru...@intertwingly.net>.
On Wed, Jun 3, 2015 at 2:57 AM, William A Rowe Jr <wr...@rowe-clan.net> wrote:
> Brilliant, that person is on this channel, thanks sir.
>
> An answer, Mr. VP?
>
> (Not sure why you posited that reply, Sam... That officer might be equally
> perplexed as to how the ASF should address this, I myself am of several
> minds on the best course of action.)
It has been relentlessly and repeatedly pointed out that Jim is not
qualified to provide legal advice.
That is not in dispute. The board feels that Jim is qualified to
receive, process, and act on legal advice.
You have shared some generalities on this list. I am encouraging you
to share specifics directly with Jim. There may be risks involved,
and Jim has access to the resources needed to evaluate those risks and
propose a course of action.
- Sam Ruby
> On Jun 3, 2015 1:41 AM, "Sam Ruby" <ru...@intertwingly.net> wrote:
>>
>> On Wed, Jun 3, 2015 at 1:03 AM, William A Rowe Jr <wr...@rowe-clan.net>
>> wrote:
>> > On Tue, Jun 2, 2015 at 9:03 PM, Greg Stein <gs...@gmail.com> wrote:
>> >>
>> >> On Tue, Jun 2, 2015 at 5:51 PM, Lawrence Rosen <lr...@rosenlaw.com>
>> >> wrote:
>> >> >...
>> >>>
>> >>> When an Apache project purposely infringes an actual patent that we
>> >>> have
>> >>> a FOSS license to, it would be polite to say something like:
>> >>
>> >>
>> >> Pure hypothetical. We don't, so this "solution" is premature. We don't
>> >> know the characteristics of any patents in our products, nor we do know
>> >> what
>> >> the holders/owners want to do about it.
>> >>
>> >> There are way too many variables, making this hypothetical Q&A just so
>> >> many unwanted bits in the ether. We don't have an actual
>> >> question/situation,
>> >> so this speculation of what we would do is ... speculation.
>> >
>> > Calm down, deep breaths everyone.
>> >
>> > An incoming project I'm mentoring has - and the custodians and authors
>> > and IP holders are conveying - certain applicable patents.
>> >
>> > Untested patents, yes. I believe they should be described throughout
>> > any ASF vehicles as "patent claims", not purely patents. Could be
>> > broken. Might never be broken. All that aside...
>> >
>> > In any case, patents No. X, Y, Z and Q are being passed on through
>> > the AL 2.0 language, and my question is how to reassure anyone who
>> > is reviewing the provenance of the code in question that, yes, these
>> > specific patents are known of and were conveyed to the licensee?
>>
>> This is exactly why we have counsel available to VP of Legal Affairs.
>>
>> - Sam Ruby
>>
>> ---------------------------------------------------------------------
>> To unsubscribe, e-mail: legal-discuss-unsubscribe@apache.org
>> For additional commands, e-mail: legal-discuss-help@apache.org
>>
>
---------------------------------------------------------------------
To unsubscribe, e-mail: legal-discuss-unsubscribe@apache.org
For additional commands, e-mail: legal-discuss-help@apache.org
Re: Proposal: Disclosure of patents by Apache projects
Posted by William A Rowe Jr <wr...@rowe-clan.net>.
Brilliant, that person is on this channel, thanks sir.
An answer, Mr. VP?
(Not sure why you posited that reply, Sam... That officer might be equally
perplexed as to how the ASF should address this, I myself am of several
minds on the best course of action.)
On Jun 3, 2015 1:41 AM, "Sam Ruby" <ru...@intertwingly.net> wrote:
> On Wed, Jun 3, 2015 at 1:03 AM, William A Rowe Jr <wr...@rowe-clan.net>
> wrote:
> > On Tue, Jun 2, 2015 at 9:03 PM, Greg Stein <gs...@gmail.com> wrote:
> >>
> >> On Tue, Jun 2, 2015 at 5:51 PM, Lawrence Rosen <lr...@rosenlaw.com>
> >> wrote:
> >> >...
> >>>
> >>> When an Apache project purposely infringes an actual patent that we
> have
> >>> a FOSS license to, it would be polite to say something like:
> >>
> >>
> >> Pure hypothetical. We don't, so this "solution" is premature. We don't
> >> know the characteristics of any patents in our products, nor we do know
> what
> >> the holders/owners want to do about it.
> >>
> >> There are way too many variables, making this hypothetical Q&A just so
> >> many unwanted bits in the ether. We don't have an actual
> question/situation,
> >> so this speculation of what we would do is ... speculation.
> >
> > Calm down, deep breaths everyone.
> >
> > An incoming project I'm mentoring has - and the custodians and authors
> > and IP holders are conveying - certain applicable patents.
> >
> > Untested patents, yes. I believe they should be described throughout
> > any ASF vehicles as "patent claims", not purely patents. Could be
> > broken. Might never be broken. All that aside...
> >
> > In any case, patents No. X, Y, Z and Q are being passed on through
> > the AL 2.0 language, and my question is how to reassure anyone who
> > is reviewing the provenance of the code in question that, yes, these
> > specific patents are known of and were conveyed to the licensee?
>
> This is exactly why we have counsel available to VP of Legal Affairs.
>
> - Sam Ruby
>
> ---------------------------------------------------------------------
> To unsubscribe, e-mail: legal-discuss-unsubscribe@apache.org
> For additional commands, e-mail: legal-discuss-help@apache.org
>
>
Re: Proposal: Disclosure of patents by Apache projects
Posted by Sam Ruby <ru...@intertwingly.net>.
On Wed, Jun 3, 2015 at 1:03 AM, William A Rowe Jr <wr...@rowe-clan.net> wrote:
> On Tue, Jun 2, 2015 at 9:03 PM, Greg Stein <gs...@gmail.com> wrote:
>>
>> On Tue, Jun 2, 2015 at 5:51 PM, Lawrence Rosen <lr...@rosenlaw.com>
>> wrote:
>> >...
>>>
>>> When an Apache project purposely infringes an actual patent that we have
>>> a FOSS license to, it would be polite to say something like:
>>
>>
>> Pure hypothetical. We don't, so this "solution" is premature. We don't
>> know the characteristics of any patents in our products, nor we do know what
>> the holders/owners want to do about it.
>>
>> There are way too many variables, making this hypothetical Q&A just so
>> many unwanted bits in the ether. We don't have an actual question/situation,
>> so this speculation of what we would do is ... speculation.
>
> Calm down, deep breaths everyone.
>
> An incoming project I'm mentoring has - and the custodians and authors
> and IP holders are conveying - certain applicable patents.
>
> Untested patents, yes. I believe they should be described throughout
> any ASF vehicles as "patent claims", not purely patents. Could be
> broken. Might never be broken. All that aside...
>
> In any case, patents No. X, Y, Z and Q are being passed on through
> the AL 2.0 language, and my question is how to reassure anyone who
> is reviewing the provenance of the code in question that, yes, these
> specific patents are known of and were conveyed to the licensee?
This is exactly why we have counsel available to VP of Legal Affairs.
- Sam Ruby
---------------------------------------------------------------------
To unsubscribe, e-mail: legal-discuss-unsubscribe@apache.org
For additional commands, e-mail: legal-discuss-help@apache.org
Re: Proposal: Disclosure of patents by Apache projects
Posted by William A Rowe Jr <wr...@rowe-clan.net>.
On Tue, Jun 2, 2015 at 9:03 PM, Greg Stein <gs...@gmail.com> wrote:
> On Tue, Jun 2, 2015 at 5:51 PM, Lawrence Rosen <lr...@rosenlaw.com>
> wrote:
> >...
>
>> When an Apache project purposely infringes an actual patent that we have
>> a FOSS license to, it would be polite to say something like:
>>
>
> Pure hypothetical. We don't, so this "solution" is premature. We don't
> know the characteristics of any patents in our products, nor we do know
> what the holders/owners want to do about it.
>
> There are way too many variables, making this hypothetical Q&A just so
> many unwanted bits in the ether. We don't have an actual
> question/situation, so this speculation of what we would do is ...
> speculation.
>
Calm down, deep breaths everyone.
An incoming project I'm mentoring has - and the custodians and authors
and IP holders are conveying - certain applicable patents.
Untested patents, yes. I believe they should be described throughout
any ASF vehicles as "patent claims", not purely patents. Could be
broken. Might never be broken. All that aside...
In any case, patents No. X, Y, Z and Q are being passed on through
the AL 2.0 language, and my question is how to reassure anyone who
is reviewing the provenance of the code in question that, yes, these
specific patents are known of and were conveyed to the licensee?
Re: Proposal: Disclosure of patents by Apache projects
Posted by Greg Stein <gs...@gmail.com>.
On Tue, Jun 2, 2015 at 5:51 PM, Lawrence Rosen <lr...@rosenlaw.com> wrote:
>...
> When an Apache project purposely infringes an actual patent that we have a
> FOSS license to, it would be polite to say something like:
>
Pure hypothetical. We don't, so this "solution" is premature. We don't know
the characteristics of any patents in our products, nor we do know what the
holders/owners want to do about it.
There are way too many variables, making this hypothetical Q&A just so many
unwanted bits in the ether. We don't have an actual question/situation, so
this speculation of what we would do is ... speculation.
And we continue to avoid "policy" for untested hypotheticals.
-g
RE: Proposal: Disclosure of patents by Apache projects
Posted by Lawrence Rosen <lr...@rosenlaw.com>.
William Rowe asked:
> So let me ask what might be a blindingly obvious question.
> A handful of awarded patents apply to a code base submitted
> to the ASF, licensed under the AL by the patent holder, patent
> rights are conveyed.
>
> Do we note the specific patent numbers/titles? If so, where?
> README? NOTICE? PATENTS?
If I owned those patents or if I had a license to contribute them for an Apache aggregation, I would want to list them in the NOTICE file. Here is how. It isn't onerous.
When an Apache project purposely infringes an actual patent that we have a FOSS license to, it would be polite to say something like:
Patent 1,234,567.
35 U.S.C 287(a):
Patentees, and persons making, offering for sale, or selling within the United States any patented article for or under them, or importing any patented article into the United States, may give notice to the public that the same is patented, either by fixing thereon the word “patent” or the abbreviation “pat.”, together with the number of the patent, or by fixing thereon the word “patent” or the abbreviation “pat.” together with an address of a posting on the Internet, accessible to the public without charge for accessing the address, that associates the patented article with the number of the patent, or when, from the character of the article, this can not be done, by fixing to it, or to the package wherein one or more of them is contained, a label containing a like notice. In the event of failure so to mark, no damages shall be recovered by the patentee in any action for infringement, except on proof that the infringer was notified of the infringement and continued to infringe thereafter, in which event damages may be recovered only for infringement occurring after such notice. Filing of an action for infringement shall constitute such notice.
As you described the facts, certain patent claims are licensed to Apache under a FOSS license. The effect of this §287 notice would be of concern primarily to someone creating a derivative work of an ALv2 aggregate that infringed different patent claims, or who wanted to create entirely his own version of that software from scratch. Then take notice.
More information about this patent in the NOTICE file would probably also be helpful. It is only a non-warranted ALv2 opinion so call if a "BS patent" or "theory of relativity" if you want.
/Larry
Lawrence Rosen
"If this were legal advice it would have been accompanied by a bill."
From: William A Rowe Jr [mailto:wrowe@rowe-clan.net]
Sent: Tuesday, June 2, 2015 2:44 PM
To: legal-discuss@apache.org
Subject: Re: Proposal: Disclosure of patents by Apache projects
On Tue, Jun 2, 2015 at 12:42 PM, Roy T. Fielding <fielding@gbiv.com <ma...@gbiv.com> > wrote:
On May 31, 2015, at 3:20 PM, Lawrence Rosen <lrosen@rosenlaw.com <ma...@rosenlaw.com> > wrote:
[Responses to three board members in one email. :-) ]
Greg Stein wrote:
> Thus, to water out random claims of infringement from random developers, we must wait until the patent holder *informs* us that we (likely) infringe. Until the patent holder wants to assert that, then I don't think we're qualified to make *any* judgement, including whether it is important/relevant to provide notice.
Nobody is concerned about "random claims of infringement from random developers." Or rather, "if you are concerned about such a claim, then say so in the NOTICE file. If not, move it to the trash." Nothing more is required from ASF or its members and contributors. I would ask only for open disclosure within Apache projects of patents that seem interesting to the project PMC itself.
There is no risk to ASF from such disclosure. Under ALv2, disclosures of potentially relevant patents come with no warranties from ASF.
ALv2 covers our software products, not our disclosures. We are just as liable for our statements as any human being, and any statement we might make is evidentiary for both us and our downstream recipients.
So let me ask what might be a blindingly obvious question. A handful of awarded patents apply to a code base submitted to the ASF, licensed under the AL by the patent holder, patent rights are conveyed.
Do we note the specific patent numbers/titles? If so, where? README? NOTICE? PATENTS?
Re: Proposal: Disclosure of patents by Apache projects
Posted by William A Rowe Jr <wr...@rowe-clan.net>.
On Tue, Jun 2, 2015 at 12:42 PM, Roy T. Fielding <fi...@gbiv.com> wrote:
> On May 31, 2015, at 3:20 PM, Lawrence Rosen <lr...@rosenlaw.com> wrote:
>
> [Responses to three board members in one email. :-) ]
>
> Greg Stein wrote:
> > Thus, to water out random claims of infringement from random
> developers, we must wait until the patent holder *informs* us that we
> (likely) infringe. Until the patent holder wants to assert that, then I
> don't think we're qualified to make *any* judgement, including whether it
> is important/relevant to provide notice.
>
> Nobody is concerned about "random claims of infringement from random
> developers." Or rather, "if you are concerned about such a claim, then say
> so in the NOTICE file. If not, move it to the trash." Nothing more is
> required from ASF or its members and contributors. I would ask only for
> open disclosure within Apache projects of patents that seem interesting to
> the project PMC itself.
>
> There is no risk to ASF from such disclosure. Under ALv2, disclosures of
> potentially relevant patents come with no warranties from ASF.
>
>
> ALv2 covers our software products, not our disclosures. We are just as
> liable for our statements as any human being, and any statement we might
> make is evidentiary for both us and our downstream recipients.
>
So let me ask what might be a blindingly obvious question. A handful of
awarded patents apply to a code base submitted to the ASF, licensed under
the AL by the patent holder, patent rights are conveyed.
Do we note the specific patent numbers/titles? If so, where? README?
NOTICE? PATENTS?
Re: Proposal: Disclosure of patents by Apache projects
Posted by "Roy T. Fielding" <fi...@gbiv.com>.
> On May 31, 2015, at 3:20 PM, Lawrence Rosen <lr...@rosenlaw.com> wrote:
>
> [Responses to three board members in one email. :-) ]
>
> Greg Stein wrote:
> > Thus, to water out random claims of infringement from random developers, we must wait until the patent holder *informs* us that we (likely) infringe. Until the patent holder wants to assert that, then I don't think we're qualified to make *any* judgement, including whether it is important/relevant to provide notice.
>
> Nobody is concerned about "random claims of infringement from random developers." Or rather, "if you are concerned about such a claim, then say so in the NOTICE file. If not, move it to the trash." Nothing more is required from ASF or its members and contributors. I would ask only for open disclosure within Apache projects of patents that seem interesting to the project PMC itself.
>
> There is no risk to ASF from such disclosure. Under ALv2, disclosures of potentially relevant patents come with no warranties from ASF.
ALv2 covers our software products, not our disclosures. We are just as liable for our statements as any human being, and any statement we might make is evidentiary for both us and our downstream recipients.
> ASF offers *NO* judgements of importance or relevance about patents. None of us is qualified for that.
I don't understand why you keep saying that. Many of us are qualified when supplied with the complete patent history and definition of terms. A few are even allowed to do so by their employers (or lack thereof).
> I know that we're not stupid here. All I'm suggesting is that we document our intelligence in our NOTICE file so that our customers can verify it for themselves if they want to.
I suggest that would be stupid and non-productive, since it would only benefit and encourage trolls. In any case, doing so would never happen in the NOTICE file, which contains notices that are a binding part of our copyright license (i.e., NOTICE has nothing to do with patents, known or not).
....Roy
RE: Proposal: Disclosure of patents by Apache projects
Posted by Lawrence Rosen <lr...@rosenlaw.com>.
[Responses to three board members in one email. :-) ]
Greg Stein wrote:
> Thus, to water out random claims of infringement from random developers, we must wait until the patent holder *informs* us that we (likely) infringe. Until the patent holder wants to assert that, then I don't think we're qualified to make *any* judgement, including whether it is important/relevant to provide notice.
Nobody is concerned about "random claims of infringement from random developers." Or rather, "if you are concerned about such a claim, then say so in the NOTICE file. If not, move it to the trash." Nothing more is required from ASF or its members and contributors. I would ask only for open disclosure within Apache projects of patents that seem interesting to the project PMC itself.
There is no risk to ASF from such disclosure. Under ALv2, disclosures of potentially relevant patents come with no warranties from ASF.
ASF offers *NO* judgements of importance or relevance about patents. None of us is qualified for that.
Rich Bowen wrote:
> Forgive my ignorance, but, surely, if we are aware that we infringe, wouldn't we be compelled to rectify that situation before making another release?
If an Apache member or contributor becomes "aware that we infringe," that ought to be disclosed. Such a professional judgment by a participant in an Apache project is an important opinion. Disclosing that more widely may help downstream users from incurring strict liability patent infringement damages that don't depend at all on their "awareness."
This is different from "aware that there is a patent," which is merely information that might be of interest. Such vague awareness comes to me every time I browse through "stupid" patents on the Patently-O website. I have no obligation to disclose them here, but sometimes I do when they seem relevant.
As for "rectifying an infringement," that depends entirely on the facts. If an Apache project becomes "aware that we infringe," that PMC ought to obtain some professional advice from its team members and other professionals in our customer's companies. Doing otherwise is a financial risk to our customers.
Sam Ruby wrote:
> Our policy indeed is that "We never knowingly incorporate patented technology in our own products unless such technology has been offered free for everyone."
I know that we're not stupid here. All I'm suggesting is that we document our intelligence in our NOTICE file so that our customers can verify it for themselves if they want to.
/Larry
Lawrence Rosen
"If this were legal advice it would have been accompanied by a bill."
From: Greg Stein [mailto:gstein@gmail.com]
Sent: Sunday, May 31, 2015 1:53 PM
To: legal-discuss@apache.org; Lawrence Rosen
Subject: Re: Proposal: Disclosure of patents by Apache projects
<snip>
Re: Proposal: Disclosure of patents by Apache projects
Posted by Greg Stein <gs...@gmail.com>.
On Sun, May 31, 2015 at 12:52 PM, Lawrence Rosen <lr...@rosenlaw.com>
wrote:
> ...
>
> This means that an opinion that a patent is "just plain BS, IMHO," is not
> a relevant opinion at this stage of determining infringement.
>
>
>
> As for patent validity, there is nobody at Apache who is qualified to
> analyze that for others. The most ASF can do is to disclose what we are
> aware of in a NOTICE file and let our customers do their own analysis if
> they want to.
>
Aren't we similarly unqualified to determine whether we infringe? I would
say "yes", and I'm sure you would agree.
Thus, to water out random claims of infringement from random developers, we
must wait until the patent holder *informs* us that we (likely) infringe.
Until the patent holder wants to assert that, then I don't think we're
qualified to make *any* judgement, including whether it is
important/relevant to provide notice.
Cheers,
-g
RE: Proposal: Disclosure of patents by Apache projects
Posted by Lawrence Rosen <lr...@rosenlaw.com>.
For those of you who still believe that the US remains in the dark ages of patents, there has been more progress in the Supreme Court. (Some will not call this progress, but I do.)
In Commil v. Cisco, 575 U.S. ___ (May 26, 2015) <http://www.supremecourt.gov/opinions/14pdf/13-896_l53m.pdf> , the Court held that a defendant’s belief regarding patent validity is not a defense to an induced infringement claim. When infringement is the issue, the patent’s validity is not the question to be confronted.
This means that an opinion that a patent is "just plain BS, IMHO," is not a relevant opinion at this stage of determining infringement.
As for patent validity, there is nobody at Apache who is qualified to analyze that for others. The most ASF can do is to disclose what we are aware of in a NOTICE file and let our customers do their own analysis if they want to.
/Larry
From: Lawrence Rosen [mailto:lrosen@rosenlaw.com]
Sent: Thursday, May 21, 2015 8:12 PM
To: legal-discuss@apache.org
Cc: Lawrence Rosen
Subject: RE: Proposal: Disclosure of patents by Apache projects
Whoa, Jim.
I didn't speak of a "pre-litigation notice of an infringement allegation." AFAIK, Apache Software Foundation has never received one of those. I assume the Foundation's attorneys would take THAT seriously and not rely just on a NOTICE file or some PMC or board member's amateur opinion. As you would also take it seriously in your company!
What we're talking about here is very different: Merely limited knowledge and engineer speculation about a specific patent. Assume that our PMC members have read the patent and they believe, in full honesty, that it is "just plain BS, IMHO." They declare so expressly in a NOTICE file. This is certainly no justification for willful infringement worries after In Re Seagate Technology!
Let's please stop scaring engineers from reading and identifying patents. There are some really neat inventions among those.
The Apache member who declared this specific patent to be "BS" also admonished me directly to "change your law ... in the US." We did that in Seagate but someone forgot to tell the engineers that fear of willful infringement damages at ASF is now mostly paranoia.
/Larry
From: Jim Wright [mailto:jim.wright@oracle.com]
Sent: Thursday, May 21, 2015 7:28 PM
To: legal-discuss@apache.org <ma...@apache.org> ; Larry Rosen
Subject: Re: Proposal: Disclosure of patents by Apache projects
While your quotes and conclusions are, as always, thought provoking, I find them less than reassuring in this particular case. An accused infringer’s pre-litigation notice of an infringement allegation is certainly relevant to the willfulness inquiry, even post Seagate and its progeny, and lots of folks are still spending a lot of money obtaining opinions of counsel when notified of potential infringement, both because they want to avoid any potential claim to begin with, and because this, too, is often a factor in the court’s willfulness calculus, even if its absence is not outcome determinative. Consequently, I believe including notices of alleged infringement in NOTICE files would cause a lot of needless heartache and expense.
Best,
Jim
On May 21, 2015, at 5:33 PM, Lawrence Rosen <lrosen@rosenlaw.com <ma...@rosenlaw.com> > wrote:
Jim Wright wrote:
> you might be placing end users in the unwanted position of suffering enhanced damages for willful infringement by providing the notices you suggest
Hi Jim,
Let's not frighten developers and distributors with old fears. I'm not worried about you suffering willful damages merely because we identify the existence of a patent.
Willful infringement (treble) damages awards are getting much rarer. It now requires "at least a showing of objective recklessness ... [that] was either known or so obvious that it should have been known to the accused infringer." Take a look at In Re Seagate Technology, <http://www.cafc.uscourts.gov/images/stories/opinions-orders/M830.pdf> http://www.cafc.uscourts.gov/images/stories/opinions-orders/M830.pdf. The CAFC also reemphasized that "there is no affirmative obligation to obtain opinion of counsel."
And from Thomas Gray's poem, Ode on a Distant Prospect of Eton College (1742): "Thought would destroy their paradise. Where ignorance is bliss, 'tis folly to be wise." <http://www.thomasgray.org/cgi-bin/display.cgi?text=odec> http://www.thomasgray.org/cgi-bin/display.cgi?text=odec
/Larry
RE: Proposal: Disclosure of patents by Apache projects
Posted by Lawrence Rosen <lr...@rosenlaw.com>.
Whoa, Jim.
I didn't speak of a "pre-litigation notice of an infringement allegation." AFAIK, Apache Software Foundation has never received one of those. I assume the Foundation's attorneys would take THAT seriously and not rely just on a NOTICE file or some PMC or board member's amateur opinion. As you would also take it seriously in your company!
What we're talking about here is very different: Merely limited knowledge and engineer speculation about a specific patent. Assume that our PMC members have read the patent and they believe, in full honesty, that it is "just plain BS, IMHO." They declare so expressly in a NOTICE file. This is certainly no justification for willful infringement worries after In Re Seagate Technology!
Let's please stop scaring engineers from reading and identifying patents. There are some really neat inventions among those.
The Apache member who declared this specific patent to be "BS" also admonished me directly to "change your law ... in the US." We did that in Seagate but someone forgot to tell the engineers that fear of willful infringement damages at ASF is now mostly paranoia.
/Larry
From: Jim Wright [mailto:jim.wright@oracle.com]
Sent: Thursday, May 21, 2015 7:28 PM
To: legal-discuss@apache.org; Larry Rosen
Subject: Re: Proposal: Disclosure of patents by Apache projects
While your quotes and conclusions are, as always, thought provoking, I find them less than reassuring in this particular case. An accused infringer’s pre-litigation notice of an infringement allegation is certainly relevant to the willfulness inquiry, even post Seagate and its progeny, and lots of folks are still spending a lot of money obtaining opinions of counsel when notified of potential infringement, both because they want to avoid any potential claim to begin with, and because this, too, is often a factor in the court’s willfulness calculus, even if its absence is not outcome determinative. Consequently, I believe including notices of alleged infringement in NOTICE files would cause a lot of needless heartache and expense.
Best,
Jim
On May 21, 2015, at 5:33 PM, Lawrence Rosen <lrosen@rosenlaw.com <ma...@rosenlaw.com> > wrote:
Jim Wright wrote:
> you might be placing end users in the unwanted position of suffering enhanced damages for willful infringement by providing the notices you suggest
Hi Jim,
Let's not frighten developers and distributors with old fears. I'm not worried about you suffering willful damages merely because we identify the existence of a patent.
Willful infringement (treble) damages awards are getting much rarer. It now requires "at least a showing of objective recklessness ... [that] was either known or so obvious that it should have been known to the accused infringer." Take a look at In Re Seagate Technology, <http://www.cafc.uscourts.gov/images/stories/opinions-orders/M830.pdf> http://www.cafc.uscourts.gov/images/stories/opinions-orders/M830.pdf. The CAFC also reemphasized that "there is no affirmative obligation to obtain opinion of counsel."
And from Thomas Gray's poem, Ode on a Distant Prospect of Eton College (1742): "Thought would destroy their paradise. Where ignorance is bliss, 'tis folly to be wise." <http://www.thomasgray.org/cgi-bin/display.cgi?text=odec> http://www.thomasgray.org/cgi-bin/display.cgi?text=odec
/Larry
Re: Proposal: Disclosure of patents by Apache projects
Posted by Jim Wright <ji...@oracle.com>.
While your quotes and conclusions are, as always, thought provoking, I find them less than reassuring in this particular case. An accused infringer’s pre-litigation notice of an infringement allegation is certainly relevant to the willfulness inquiry, even post Seagate and its progeny, and lots of folks are still spending a lot of money obtaining opinions of counsel when notified of potential infringement, both because they want to avoid any potential claim to begin with, and because this, too, is often a factor in the court’s willfulness calculus, even if its absence is not outcome determinative. Consequently, I believe including notices of alleged infringement in NOTICE files would cause a lot of needless heartache and expense.
Best,
Jim
> On May 21, 2015, at 5:33 PM, Lawrence Rosen <lr...@rosenlaw.com> wrote:
>
> Jim Wright wrote:
> > you might be placing end users in the unwanted position of suffering enhanced damages for willful infringement by providing the notices you suggest
>
> Hi Jim,
>
> Let's not frighten developers and distributors with old fears. I'm not worried about you suffering willful damages merely because we identify the existence of a patent.
>
> Willful infringement (treble) damages awards are getting much rarer. It now requires "at least a showing of objective recklessness ... [that] was either known or so obvious that it should have been known to the accused infringer." Take a look at In Re Seagate Technology, http://www.cafc.uscourts.gov/images/stories/opinions-orders/M830.pdf <http://www.cafc.uscourts.gov/images/stories/opinions-orders/M830.pdf>. The CAFC also reemphasized that "there is no affirmative obligation to obtain opinion of counsel."
>
> And from Thomas Gray's poem, Ode on a Distant Prospect of Eton College (1742): "Thought would destroy their paradise. Where ignorance is bliss, 'tis folly to be wise." http://www.thomasgray.org/cgi-bin/display.cgi?text=odec <http://www.thomasgray.org/cgi-bin/display.cgi?text=odec>
>
> /Larry
>
RE: Proposal: Disclosure of patents by Apache projects
Posted by Lawrence Rosen <lr...@rosenlaw.com>.
Jim Wright wrote:
> you might be placing end users in the unwanted position of suffering enhanced damages for willful infringement by providing the notices you suggest
Hi Jim,
Let's not frighten developers and distributors with old fears. I'm not worried about you suffering willful damages merely because we identify the existence of a patent.
Willful infringement (treble) damages awards are getting much rarer. It now requires "at least a showing of objective recklessness ... [that] was either known or so obvious that it should have been known to the accused infringer." Take a look at In Re Seagate Technology, http://www.cafc.uscourts.gov/images/stories/opinions-orders/M830.pdf. The CAFC also reemphasized that "there is no affirmative obligation to obtain opinion of counsel."
And from Thomas Gray's poem, Ode on a Distant Prospect of Eton College (1742): "Thought would destroy their paradise. Where ignorance is bliss, 'tis folly to be wise." http://www.thomasgray.org/cgi-bin/display.cgi?text=odec
/Larry
From: Jim Wright [mailto:jim.wright@oracle.com]
Sent: Thursday, May 21, 2015 3:43 PM
To: legal-discuss@apache.org
Cc: Lawrence Rosen
Subject: Re: Proposal: Disclosure of patents by Apache projects
Larry, were you only to be giving them information they otherwise lacked, without other consequence for their possession of that information, that might or might not be a worthwhile goal, but it seems to me that you might be placing end users in the unwanted position of suffering enhanced damages for willful infringement by providing the notices you suggest, or forcing them to spend money obtaining opinions on infringement and validity before use. Thoughts?
While the goal of additional information is laudable, I might suggest that if you're going to tell people about patent threats at all (something which requires careful thought vis-a-vis privilege and other issues), you do so only if they specifically ask the ASF, rather than in the NOTICE file. This way each org can make its own decisions about how to handle this issue.
Regards,
Jim
On May 21, 2015, at 11:51 AM, Lawrence Rosen <lrosen@rosenlaw.com <ma...@rosenlaw.com> > wrote:
To: legal-discuss@apache.org <ma...@apache.org>
Elsewhere on internal Apache member email lists we've been discussing a patent that may or may not apply to Apache software. I already quoted publicly the strongly-held opinion of one Apache member that "this patent is just plain BS, IMHO." He may be right.
My concern is that Apache members are not qualified to make this determination about any patent. Nor is the Apache Software Foundation resourced to do that analysis professionally for our users.
However, I believe that ASF is obligated to disclose whatever patent information comes to our developers' and members' attention. This is one of the key purposes of a NOTICE file in open source software.
Others disagree strongly. Here is what Roy Fielding wrote here on 27 Mar 2012: http://s.apache.org/B3F. I quote part of it now:
It has been discussed. This idea is the moral equivalent of pointing a gun
at our user while saying that it is most likely unloaded. It simply isn't done.
Adobe has not asked for it to be done. The only company that has ever asked
for it to be done is Sun, and we not only refused to do so -- we exited the
entire Java community process because of it.
So, the answer to your suggestion is well known. Sam knows that answer.
He does not need to discuss it with you or anyone else because there is
already a long history behind it and a board precedence. We do not notify
our users that an unspecified patent might possibly be owned by some
third-party based on a theoretical reading of a patent license on a
specification that we don't even implement. If that third-party identifies
a specific patent AND indicates that the patent might apply to our product,
then we would include information about that in a README file (assuming
we didn't kill the product outright).
As a non-patent but practicing attorney, I don't believe I'd ever personally recommend that we kill an international Apache project outright simply because someone pointed a US patent gun at it.
On the other hand, we have a NOTICE file and we owe our customers whatever the facts are.
I'm looking for agreement by our customers to this NOTICE policy in a very antagonistic, patent-hating Apache community.
/Larry
Re: Proposal: Disclosure of patents by Apache projects
Posted by Jim Wright <ji...@oracle.com>.
Larry, were you only to be giving them information they otherwise lacked, without other consequence for their possession of that information, that might or might not be a worthwhile goal, but it seems to me that you might be placing end users in the unwanted position of suffering enhanced damages for willful infringement by providing the notices you suggest, or forcing them to spend money obtaining opinions on infringement and validity before use. Thoughts?
While the goal of additional information is laudable, I might suggest that if you're going to tell people about patent threats at all (something which requires careful thought vis-a-vis privilege and other issues), you do so only if they specifically ask the ASF, rather than in the NOTICE file. This way each org can make its own decisions about how to handle this issue.
Regards,
Jim
> On May 21, 2015, at 11:51 AM, Lawrence Rosen <lr...@rosenlaw.com> wrote:
>
> To: legal-discuss@apache.org
>
> Elsewhere on internal Apache member email lists we've been discussing a patent that may or may not apply to Apache software. I already quoted publicly the strongly-held opinion of one Apache member that "this patent is just plain BS, IMHO." He may be right.
>
> My concern is that Apache members are not qualified to make this determination about any patent. Nor is the Apache Software Foundation resourced to do that analysis professionally for our users.
>
> However, I believe that ASF is obligated to disclose whatever patent information comes to our developers' and members' attention. This is one of the key purposes of a NOTICE file in open source software.
>
> Others disagree strongly. Here is what Roy Fielding wrote here on 27 Mar 2012: http://s.apache.org/B3F. I quote part of it now:
>
> It has been discussed. This idea is the moral equivalent of pointing a gun
> at our user while saying that it is most likely unloaded. It simply isn't done.
> Adobe has not asked for it to be done. The only company that has ever asked
> for it to be done is Sun, and we not only refused to do so -- we exited the
> entire Java community process because of it.
>
> So, the answer to your suggestion is well known. Sam knows that answer.
> He does not need to discuss it with you or anyone else because there is
> already a long history behind it and a board precedence. We do not notify
> our users that an unspecified patent might possibly be owned by some
> third-party based on a theoretical reading of a patent license on a
> specification that we don't even implement. If that third-party identifies
> a specific patent AND indicates that the patent might apply to our product,
> then we would include information about that in a README file (assuming
> we didn't kill the product outright).
>
> As a non-patent but practicing attorney, I don't believe I'd ever personally recommend that we kill an international Apache project outright simply because someone pointed a US patent gun at it.
>
> On the other hand, we have a NOTICE file and we owe our customers whatever the facts are.
>
> I'm looking for agreement by our customers to this NOTICE policy in a very antagonistic, patent-hating Apache community.
>
> /Larry
RE: Proposal: Disclosure of patents by Apache projects
Posted by Lawrence Rosen <lr...@rosenlaw.com>.
Larry Rosen wrote earlier about Sam and every other Apache member:
> You are supremely qualified to write a NOTICE file.
That is of critical importance. As usual, the way I said it may have made you feel insulted. Please don't be.
The NOTICE file is the base facts. If you simply describe, in the best language you know, the facts as you know them, then some attorney somewhere can turn it into an argument.
Let the attorneys of our Apache customers make any desired patent analyses. If those customers are (reciprocally) open with Apache about things they learn, I'm sure our PMCs will learn new facts that we may later add to our NOTICE file.
Users of current Apache software are probably not threatened. As we saw, much of the noise here is in the silence of the NOTICE file, and we can fix that easily enough.
Be comfortable, though, that the 100M+ users of recent AOO downloads, and the users and supporters of all Apache software products, can continue to use this software worldwide under Apache License 2.0 unless some evil-doer somewhere sues to stop them.
Diligence doesn't mean a threat actually is present.
/Larry
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RE: Proposal: Disclosure of patents by Apache projects
Posted by Eben Moglen <mo...@softwarefreedom.org>.
I don't understand the question being raised. Communications between
lawyers and their clients are privileged, however those communications
are organized and whoever within a client organization conducts them.
Clients waive privilege if they disclose the content of communications
with their lawyers to "third parties." SFLC provides advice to its
clients, including ASF, about maintenance of privilege given the
particular internal governance and communications patterns of the
clients. Clients make their decisions about what to communicate and
to whom as they see fit in light of the advice received. What is the
problem?
Eben
--
Eben Moglen v: 212-461-1901
Professor of Law, Columbia Law School f: 212-580-0898 moglen@
Founding Director, Software Freedom Law Center columbia.edu
1995 Broadway (68th Street), fl #17, NYC 10023 softwarefreedom.org
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RE: Proposal: Disclosure of patents by Apache projects
Posted by Lawrence Rosen <lr...@rosenlaw.com>.
Sam Ruby wrote:
> I never said that I would be the one to make that determination. And the person
> who would be making that determination has access to legal counsel.
I know that. :-)
A further question for you, and for Eben Moglen who declared on the European List that his firm provides active patent defense to ASF.
Are those patent determinations legally privileged or publicly disclosed? As I said before, I'm not a patent attorney nor do I represent Apache, but I recently heard about important cases relating to the disclosure of patent opinions. Furthermore, if such opinions are merely disclosed within an Apache PMC, can any privilege possibly apply?
We're now getting to the point where I need to add my signature line again to be protected! And of course Eben isn't authorized to answer this for you. If there is any privilege, the client owns it. What privilege do you claim to prevent you from disclosing what you know about patents in Apache software?
/Larry
P.S. Search "patent opinion disclosure" in Google.
Lawrence Rosen
"If this were legal advice it would have been accompanied by a bill."
-----Original Message-----
From: Sam Ruby [mailto:rubys@intertwingly.net]
Sent: Thursday, May 21, 2015 2:00 PM
To: Legal Discuss; Lawrence Rosen
Subject: Re: Proposal: Disclosure of patents by Apache projects
On Thu, May 21, 2015 at 4:21 PM, Lawrence Rosen <lr...@rosenlaw.com> wrote:
> Sam Ruby wrote:
>
>> If we became aware of a specific patent that appeared to be valid,
>> enforceable, read on an Apache project, and the owner was unwilling
>> to license that patent to us under terms that enable us to release
>> our code under the terms of the Apache License, Version 2, then we
>> would take appropriate action. In extreme cases, that could include
>> killing the product outright. Nothing 'simple' or automatic about that.
>
> That proves my point. From your resume I can determine that you are unqualified to determine any of that.
Again, you seem to be reading in something that was not said.
I never said that I would be the one to make that determination. And the person who would be making that determination has access to legal counsel.
> /Larry
- Sam Ruby
> -----Original Message-----
> From: Sam Ruby [mailto:rubys@intertwingly.net]
> Sent: Thursday, May 21, 2015 12:57 PM
> To: Lawrence Rosen
> Cc: Legal Discuss
> Subject: Re: Proposal: Disclosure of patents by Apache projects
>
> On Thu, May 21, 2015 at 2:51 PM, Lawrence Rosen <lr...@rosenlaw.com> wrote:
>> To: legal-discuss@apache.org
>>
>> Elsewhere on internal Apache member email lists we've been discussing
>> a patent that may or may not apply to Apache software. I already
>> quoted publicly the strongly-held opinion of one Apache member that
>> "this patent is just plain BS, IMHO." He may be right.
>>
>> My concern is that Apache members are not qualified to make this
>> determination about any patent. Nor is the Apache Software Foundation
>> resourced to do that analysis professionally for our users.
>>
>> However, I believe that ASF is obligated to disclose whatever patent
>> information comes to our developers' and members' attention. This is
>> one of the key purposes of a NOTICE file in open source software.
>>
>> Others disagree strongly. Here is what Roy Fielding wrote here on 27
>> Mar
>> 2012: http://s.apache.org/B3F. I quote part of it now:
>>
>>
>> It has been discussed. This idea is the moral equivalent of pointing
>> a gun at our user while saying that it is most likely unloaded. It
>> simply isn't done.
>>
>> Adobe has not asked for it to be done. The only company that has
>> ever asked for it to be done is Sun, and we not only refused to do so
>> -- we exited the entire Java community process because of it.
>>
>> So, the answer to your suggestion is well known. Sam knows that answer.
>> He does not need to discuss it with you or anyone else because there
>> is already a long history behind it and a board precedence. We do
>> not notify our users that an unspecified patent might possibly be
>> owned by some third-party based on a theoretical reading of a patent
>> license on a specification that we don't even implement. If that
>> third-party identifies a specific patent AND indicates that the
>> patent might apply to our product, then we would include information
>> about that in a README file (assuming we didn't kill the product outright).
>>
>>
>> As a non-patent but practicing attorney, I don't believe I'd ever
>> personally recommend that we kill an international Apache project
>> outright simply because someone pointed a US patent gun at it.
>
> Nor would we. I'll also note that that is not what Roy said.
>
> Our policy is that "The Apache Software Foundation is a nonprofit organization that is dedicated to open source software development. We never knowingly incorporate patented technology in our own products unless such technology has been offered free for everyone."
>
> If we became aware of a specific patent that appeared to be valid, enforceable, read on an Apache project, and the owner was unwilling to license that patent to us under terms that enable us to release our code under the terms of the Apache License, Version 2, then we would take appropriate action. In extreme cases, that could include killing the product outright. Nothing 'simple' or automatic about that.
>
>> On the other hand, we have a NOTICE file and we owe our customers
>> whatever the facts are.
>
> We also have README file.
>
> The question Roy addressed is whether or not we should include in the README information about an "unspecified patent might possibly be owned by some third-party based on a theoretical reading of a patent license on a specification that we don't even implement".
>
>> I'm looking for agreement by our customers to this NOTICE policy in a
>> very antagonistic, patent-hating Apache community.
>
> You are welcome to speak for yourself, but you do not speak for the Apache community on this matter.
>
>> /Larry
>
> - Sam Ruby
>
>
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Re: Proposal: Disclosure of patents by Apache projects
Posted by Sam Ruby <ru...@intertwingly.net>.
On Thu, May 21, 2015 at 4:21 PM, Lawrence Rosen <lr...@rosenlaw.com> wrote:
> Sam Ruby wrote:
>
>> If we became aware of a specific patent that appeared to be valid,
>> enforceable, read on an Apache project, and the owner was unwilling
>> to license that patent to us under terms that enable us to release
>> our code under the terms of the Apache License, Version 2, then we
>> would take appropriate action. In extreme cases, that could include
>> killing the product outright. Nothing 'simple' or automatic about that.
>
> That proves my point. From your resume I can determine that you are unqualified to determine any of that.
Again, you seem to be reading in something that was not said.
I never said that I would be the one to make that determination. And
the person who would be making that determination has access to legal
counsel.
> /Larry
- Sam Ruby
> -----Original Message-----
> From: Sam Ruby [mailto:rubys@intertwingly.net]
> Sent: Thursday, May 21, 2015 12:57 PM
> To: Lawrence Rosen
> Cc: Legal Discuss
> Subject: Re: Proposal: Disclosure of patents by Apache projects
>
> On Thu, May 21, 2015 at 2:51 PM, Lawrence Rosen <lr...@rosenlaw.com> wrote:
>> To: legal-discuss@apache.org
>>
>> Elsewhere on internal Apache member email lists we've been discussing
>> a patent that may or may not apply to Apache software. I already
>> quoted publicly the strongly-held opinion of one Apache member that
>> "this patent is just plain BS, IMHO." He may be right.
>>
>> My concern is that Apache members are not qualified to make this
>> determination about any patent. Nor is the Apache Software Foundation
>> resourced to do that analysis professionally for our users.
>>
>> However, I believe that ASF is obligated to disclose whatever patent
>> information comes to our developers' and members' attention. This is
>> one of the key purposes of a NOTICE file in open source software.
>>
>> Others disagree strongly. Here is what Roy Fielding wrote here on 27
>> Mar
>> 2012: http://s.apache.org/B3F. I quote part of it now:
>>
>>
>> It has been discussed. This idea is the moral equivalent of pointing
>> a gun at our user while saying that it is most likely unloaded. It
>> simply isn't done.
>>
>> Adobe has not asked for it to be done. The only company that has ever
>> asked for it to be done is Sun, and we not only refused to do so -- we
>> exited the entire Java community process because of it.
>>
>> So, the answer to your suggestion is well known. Sam knows that answer.
>> He does not need to discuss it with you or anyone else because there
>> is already a long history behind it and a board precedence. We do not
>> notify our users that an unspecified patent might possibly be owned by
>> some third-party based on a theoretical reading of a patent license on
>> a specification that we don't even implement. If that third-party
>> identifies a specific patent AND indicates that the patent might apply
>> to our product, then we would include information about that in a
>> README file (assuming we didn't kill the product outright).
>>
>>
>> As a non-patent but practicing attorney, I don't believe I'd ever
>> personally recommend that we kill an international Apache project
>> outright simply because someone pointed a US patent gun at it.
>
> Nor would we. I'll also note that that is not what Roy said.
>
> Our policy is that "The Apache Software Foundation is a nonprofit organization that is dedicated to open source software development. We never knowingly incorporate patented technology in our own products unless such technology has been offered free for everyone."
>
> If we became aware of a specific patent that appeared to be valid, enforceable, read on an Apache project, and the owner was unwilling to license that patent to us under terms that enable us to release our code under the terms of the Apache License, Version 2, then we would take appropriate action. In extreme cases, that could include killing the product outright. Nothing 'simple' or automatic about that.
>
>> On the other hand, we have a NOTICE file and we owe our customers
>> whatever the facts are.
>
> We also have README file.
>
> The question Roy addressed is whether or not we should include in the README information about an "unspecified patent might possibly be owned by some third-party based on a theoretical reading of a patent license on a specification that we don't even implement".
>
>> I'm looking for agreement by our customers to this NOTICE policy in a
>> very antagonistic, patent-hating Apache community.
>
> You are welcome to speak for yourself, but you do not speak for the Apache community on this matter.
>
>> /Larry
>
> - Sam Ruby
>
>
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Re: Proposal: Disclosure of patents by Apache projects
Posted by Sam Ruby <ru...@intertwingly.net>.
On Thu, May 21, 2015 at 11:38 PM, Lawrence Rosen <lr...@rosenlaw.com> wrote:
> Greg Stein wrote:
>
>> Sam may be unqualified to state a legal opinion, but he is qualified to
>> help
>
>> form Foundation policy based on people (such as yourself) who have the
>
>> proper legal acumen.
>
>
>
> Not what I said. He can state any legal opinion he wants. This is what Sam
> wrote:
>
>
>
>>> If we became aware of a specific patent that appeared to be valid,
>>> enforceable, read on an Apache project, and the owner was unwilling
>>> to license that patent to us under terms that enable us to release
>>> our code under the terms of the Apache License, Version 2, then we
>>> would take appropriate action. In extreme cases, that could include
>>> killing the product outright. Nothing 'simple' or automatic about that.
>
>
>
> Those are the things I said he (and you) are not qualified to determine. But
> you are entitled to your opinions. Publish those opinions in a NOTICE file
> and Apache customers will take them for what they are worth. There is
> certainly no willful infringement worries to ASF or our customers if we
> ignore your non-attorney's opinions on validity, enforceability,
> infringement, or contract terms.
I'm very confused.
In one paragraph you state "ignore your non-attorney's opinions", and
in the very same paragraph you say "publish those opinions".
In any case, I do believe that the relevant Executive Officers of the
Foundation are qualified to seek advice and counsel and to act based
on that advice.
My sense is that Jim is right in that publishing unqualified opinions
may at times do more harm than good, and therefore the policy you have
proposed does not seem like a wise one. That doesn't mean "never
publish". It means to work with counsel to make a determination based
on the specific patent involved to make a determination as to how to
proceed.
One of the outcomes of that discussion will be a determination as to
whether or not we are willing to waive privilege.
- Sam Ruby
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Re: Proposal: Disclosure of patents by Apache projects
Posted by Mark Struberg <st...@yahoo.de>.
I think the point is that almost every line of code you write is probably covered by a nonsense patent these days.
I also like to ask to not over-interpret the recent SA patent for memory caches (which to me seems to have been the trigger for this discussion). Sometimes companies patent something to use it desctructively or are even patent trolls. But by FAR most patents nowadays just get filed for defensive reasons.
I bet that at least 2/3rd of patents these days do not hold in court. But it’s easier to just reply with a ‚oh btw, we have patented this ${insertBetrandsQuote} ourselves as well‘ than to go through a 2 years legal battle.
At the end it’s simply impossible to enlist all possible patents some ASF project ‚potentially infringes‘ as this list would be longer than our source code itself ;) As long as we don’t know about established patents which hit us we should just ignore them. At the end of the day each ‚users‘ must check the risks themselves.
LieGrue,
strub
> Am 22.05.2015 um 11:53 schrieb Jim Jagielski <ji...@jaguNET.com>:
>
> Legally, we may be allowed to waterboard.
>
> Our policy is that it is torture, and so we don't.
>
>
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Re: Proposal: Disclosure of patents by Apache projects
Posted by Jim Jagielski <ji...@jaguNET.com>.
Legally, we may be allowed to waterboard.
Our policy is that it is torture, and so we don't.
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Re: Proposal: Disclosure of patents by Apache projects
Posted by Greg Stein <gs...@gmail.com>.
On Thu, May 21, 2015 at 10:38 PM, Lawrence Rosen <lr...@rosenlaw.com>
wrote:
> Greg Stein wrote:
>
> > Sam may be unqualified to state a legal opinion, but he is qualified to
> help
>
> > form Foundation policy based on people (such as yourself) who have the
>
> > proper legal acumen.
>
>
>
> Not what I said. He can state any legal opinion he wants. This is what Sam
> wrote:
>
>
>
> >> If we became aware of a specific patent that appeared to be valid,
>
> >> enforceable, read on an Apache project, and the owner was unwilling
>
> >> to license that patent to us under terms that enable us to release
>
> >> our code under the terms of the Apache License, Version 2, then we
>
> >> would take appropriate action. In extreme cases, that could include
>
> >> killing the product outright. Nothing 'simple' or automatic about that.
>
>
>
> Those are the things I said he (and you) are not qualified to determine.
>
His "we" includes ASF counsel(s), who would obviously be involved in the
scenario he posits. Has nothing to do with Sam personally.
So, yes, Sam is still qualified to form/state such a policy, informed by
appropriate legal opinion. Just what I said originally. There is no reason
to keep harping on Sam's individual inability to form legal opinions "based
on [his] resume". We all know this, and your repetition is not
constructive, and is distracting.
Yes, you're a lawyer. Great. Sam, myself, and most other ASF Members are
not. Great. ... but that doesn't disqualify us from constructing policy.
-g
RE: Proposal: Disclosure of patents by Apache projects
Posted by Lawrence Rosen <lr...@rosenlaw.com>.
Greg Stein wrote:
> Sam may be unqualified to state a legal opinion, but he is qualified to help
> form Foundation policy based on people (such as yourself) who have the
> proper legal acumen.
Not what I said. He can state any legal opinion he wants. This is what Sam wrote:
>> If we became aware of a specific patent that appeared to be valid,
>> enforceable, read on an Apache project, and the owner was unwilling
>> to license that patent to us under terms that enable us to release
>> our code under the terms of the Apache License, Version 2, then we
>> would take appropriate action. In extreme cases, that could include
>> killing the product outright. Nothing 'simple' or automatic about that.
Those are the things I said he (and you) are not qualified to determine. But you are entitled to your opinions. Publish those opinions in a NOTICE file and Apache customers will take them for what they are worth. There is certainly no willful infringement worries to ASF or our customers if we ignore your non-attorney's opinions on validity, enforceability, infringement, or contract terms.
However, there is potential patent risk to everyone if we don't disclose what we think we know.
/Larry
From: Greg Stein [mailto:gstein@gmail.com]
Sent: Thursday, May 21, 2015 7:46 PM
To: legal-discuss@apache.org; Lawrence Rosen
Subject: Re: Proposal: Disclosure of patents by Apache projects
On Thu, May 21, 2015 at 3:21 PM, Lawrence Rosen <lrosen@rosenlaw.com <ma...@rosenlaw.com> > wrote:
Sam Ruby wrote:
>...
That proves my point. From your resume I can determine that you are unqualified to determine any of that.
Sam may be unqualified to state a legal opinion, but he is qualified to help form Foundation policy based on people (such as yourself) who have the proper legal acumen.
The Foundation manages risk for itself, its communities, and its downstream users. That management is informed (not directed) by input from legal professionals. Sam is not one of them, but he does not have to be. Same for myself and the other Directors and community members working to formulate the best path for the Foundation.
Cheers,
-g
Re: Proposal: Disclosure of patents by Apache projects
Posted by Greg Stein <gs...@gmail.com>.
On Thu, May 21, 2015 at 3:21 PM, Lawrence Rosen <lr...@rosenlaw.com> wrote:
> Sam Ruby wrote:
>
>...
> That proves my point. From your resume I can determine that you are
> unqualified to determine any of that.
>
Sam may be unqualified to state a legal opinion, but he is qualified to
help form Foundation policy based on people (such as yourself) who have the
proper legal acumen.
The Foundation manages risk for itself, its communities, and its downstream
users. That management is informed (not directed) by input from legal
professionals. Sam is not one of them, but he does not have to be. Same for
myself and the other Directors and community members working to formulate
the best path for the Foundation.
Cheers,
-g
RE: Proposal: Disclosure of patents by Apache projects
Posted by Lawrence Rosen <lr...@rosenlaw.com>.
Sam Ruby wrote:
> You are welcome to speak for yourself, but you do not speak for the
> Apache community on this matter.
Absolutely true, and I do speak for myself. We each bring our separate value to this thread.
> If we became aware of a specific patent that appeared to be valid,
> enforceable, read on an Apache project, and the owner was unwilling
> to license that patent to us under terms that enable us to release
> our code under the terms of the Apache License, Version 2, then we
> would take appropriate action. In extreme cases, that could include
> killing the product outright. Nothing 'simple' or automatic about that.
That proves my point. From your resume I can determine that you are unqualified to determine any of that.
You are supremely qualified to write a NOTICE file.
/Larry
-----Original Message-----
From: Sam Ruby [mailto:rubys@intertwingly.net]
Sent: Thursday, May 21, 2015 12:57 PM
To: Lawrence Rosen
Cc: Legal Discuss
Subject: Re: Proposal: Disclosure of patents by Apache projects
On Thu, May 21, 2015 at 2:51 PM, Lawrence Rosen <lr...@rosenlaw.com> wrote:
> To: legal-discuss@apache.org
>
> Elsewhere on internal Apache member email lists we've been discussing
> a patent that may or may not apply to Apache software. I already
> quoted publicly the strongly-held opinion of one Apache member that
> "this patent is just plain BS, IMHO." He may be right.
>
> My concern is that Apache members are not qualified to make this
> determination about any patent. Nor is the Apache Software Foundation
> resourced to do that analysis professionally for our users.
>
> However, I believe that ASF is obligated to disclose whatever patent
> information comes to our developers' and members' attention. This is
> one of the key purposes of a NOTICE file in open source software.
>
> Others disagree strongly. Here is what Roy Fielding wrote here on 27
> Mar
> 2012: http://s.apache.org/B3F. I quote part of it now:
>
>
> It has been discussed. This idea is the moral equivalent of pointing
> a gun at our user while saying that it is most likely unloaded. It
> simply isn't done.
>
> Adobe has not asked for it to be done. The only company that has ever
> asked for it to be done is Sun, and we not only refused to do so -- we
> exited the entire Java community process because of it.
>
> So, the answer to your suggestion is well known. Sam knows that answer.
> He does not need to discuss it with you or anyone else because there
> is already a long history behind it and a board precedence. We do not
> notify our users that an unspecified patent might possibly be owned by
> some third-party based on a theoretical reading of a patent license on
> a specification that we don't even implement. If that third-party
> identifies a specific patent AND indicates that the patent might apply
> to our product, then we would include information about that in a
> README file (assuming we didn't kill the product outright).
>
>
> As a non-patent but practicing attorney, I don't believe I'd ever
> personally recommend that we kill an international Apache project
> outright simply because someone pointed a US patent gun at it.
Nor would we. I'll also note that that is not what Roy said.
Our policy is that "The Apache Software Foundation is a nonprofit organization that is dedicated to open source software development. We never knowingly incorporate patented technology in our own products unless such technology has been offered free for everyone."
If we became aware of a specific patent that appeared to be valid, enforceable, read on an Apache project, and the owner was unwilling to license that patent to us under terms that enable us to release our code under the terms of the Apache License, Version 2, then we would take appropriate action. In extreme cases, that could include killing the product outright. Nothing 'simple' or automatic about that.
> On the other hand, we have a NOTICE file and we owe our customers
> whatever the facts are.
We also have README file.
The question Roy addressed is whether or not we should include in the README information about an "unspecified patent might possibly be owned by some third-party based on a theoretical reading of a patent license on a specification that we don't even implement".
> I'm looking for agreement by our customers to this NOTICE policy in a
> very antagonistic, patent-hating Apache community.
You are welcome to speak for yourself, but you do not speak for the Apache community on this matter.
> /Larry
- Sam Ruby
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Re: Proposal: Disclosure of patents by Apache projects
Posted by Sam Ruby <ru...@intertwingly.net>.
On Thu, May 21, 2015 at 2:51 PM, Lawrence Rosen <lr...@rosenlaw.com> wrote:
> To: legal-discuss@apache.org
>
> Elsewhere on internal Apache member email lists we've been discussing a
> patent that may or may not apply to Apache software. I already quoted
> publicly the strongly-held opinion of one Apache member that "this patent is
> just plain BS, IMHO." He may be right.
>
> My concern is that Apache members are not qualified to make this
> determination about any patent. Nor is the Apache Software Foundation
> resourced to do that analysis professionally for our users.
>
> However, I believe that ASF is obligated to disclose whatever patent
> information comes to our developers' and members' attention. This is one of
> the key purposes of a NOTICE file in open source software.
>
> Others disagree strongly. Here is what Roy Fielding wrote here on 27 Mar
> 2012: http://s.apache.org/B3F. I quote part of it now:
>
>
> It has been discussed. This idea is the moral equivalent of pointing a gun
> at our user while saying that it is most likely unloaded. It simply isn't
> done.
>
> Adobe has not asked for it to be done. The only company that has ever asked
> for it to be done is Sun, and we not only refused to do so -- we exited the
> entire Java community process because of it.
>
> So, the answer to your suggestion is well known. Sam knows that answer.
> He does not need to discuss it with you or anyone else because there is
> already a long history behind it and a board precedence. We do not notify
> our users that an unspecified patent might possibly be owned by some
> third-party based on a theoretical reading of a patent license on a
> specification that we don't even implement. If that third-party identifies
> a specific patent AND indicates that the patent might apply to our product,
> then we would include information about that in a README file (assuming
> we didn't kill the product outright).
>
>
> As a non-patent but practicing attorney, I don't believe I'd ever personally
> recommend that we kill an international Apache project outright simply
> because someone pointed a US patent gun at it.
Nor would we. I'll also note that that is not what Roy said.
Our policy is that "The Apache Software Foundation is a nonprofit
organization that is dedicated to open source software development. We
never knowingly incorporate patented technology in our own products
unless such technology has been offered free for everyone."
If we became aware of a specific patent that appeared to be valid,
enforceable, read on an Apache project, and the owner was unwilling to
license that patent to us under terms that enable us to release our
code under the terms of the Apache License, Version 2, then we would
take appropriate action. In extreme cases, that could include killing
the product outright. Nothing 'simple' or automatic about that.
> On the other hand, we have a NOTICE file and we owe our customers whatever
> the facts are.
We also have README file.
The question Roy addressed is whether or not we should include in the
README information about an "unspecified patent might possibly be
owned by some third-party based on a theoretical reading of a patent
license on a specification that we don't even implement".
> I'm looking for agreement by our customers to this NOTICE policy in a very
> antagonistic, patent-hating Apache community.
You are welcome to speak for yourself, but you do not speak for the
Apache community on this matter.
> /Larry
- Sam Ruby
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Re: Proposal: Disclosure of patents by Apache projects
Posted by Stephen Connolly <st...@gmail.com>.
So here's the thing. The NOTICE file is baked into the release. We don't
change releases, we create new releases.
If you add something to the NOTICE for a specific release then that is
present in that release for all time going forward.
So the situation you describe sounds like the following:
* There is rumoured to be a patent that may or may not be infringed by a
range of releases of a specific Apache product.
First off, most likely some existing releases are already within scope of
the rumour but we cannot fix their NOTICE files... we can only affect the
next release.
So as a consumer of Apache releases, I cannot trust that the NOTICE file
provides me with information about potential patent infringements because
the information about the infringement may not have been known at the time
of the release.
Secondly, the rumour may prove false... or the patent holder may issue
Apache with a license that allows us to distribute our product.
So as a consumer of Apache releases, I cannot trust that any information
provided in the NOTICE file about potential patent infringements is
accurate because the information may no longer be valid.
Thus I would argue that NOTICE files are exactly the wrong place to provide
information about rumoured patent infringements.
Now if there is a specific patent holder that provides us details of a
specific patent and how it is being infringed... well we still have the
issue of old releases... but for new releases we can either rework the
product to non-infringement or seek a license. We cannot release new
versions in good faith until one of those two solutions has been arrived
at, and we can document the specific *non-rumour* patent details as
necessary in the NOTICE file for subsequent releases.
I guess what I am suggesting is that we really need the download page for
each product to have a link to rumoured patent infringements and known
outcomes... (and I'm less sure about the rumoured part... but I could be
convinced of the benefits if a strong argument can be made)
-Stephen
On 21 May 2015 at 19:51, Lawrence Rosen <lr...@rosenlaw.com> wrote:
> To: legal-discuss@apache.org
>
>
>
> Elsewhere on internal Apache member email lists we've been discussing a
> patent that may or may not apply to Apache software. I already quoted
> publicly the strongly-held opinion of one Apache member that "this patent
> is just plain BS, IMHO." He may be right.
>
>
>
> My concern is that Apache members are not qualified to make this
> determination about any patent. Nor is the Apache Software Foundation
> resourced to do that analysis professionally for our users.
>
>
>
> However, I believe that ASF is obligated to disclose whatever patent
> information comes to our developers' and members' attention. This is one of
> the key purposes of a NOTICE file in open source software.
>
>
>
> Others disagree strongly. Here is what Roy Fielding wrote here on 27 Mar
> 2012: http://s.apache.org/B3F. I quote part of it now:
>
>
>
> It has been discussed. This idea is the moral equivalent of pointing a
> gun
>
> at our user while saying that it is most likely unloaded. It simply isn't
> done.
>
> Adobe has not asked for it to be done. The only company that has ever
> asked
>
> for it to be done is Sun, and we not only refused to do so -- we exited the
>
> entire Java community process because of it.
>
>
>
> So, the answer to your suggestion is well known. Sam knows that answer.
>
> He does not need to discuss it with you or anyone else because there is
>
> already a long history behind it and a board precedence. We do not notify
>
> our users that an unspecified patent might possibly be owned by some
>
> third-party based on a theoretical reading of a patent license on a
>
> specification that we don't even implement. If that third-party identifies
>
> a specific patent AND indicates that the patent might apply to our product,
>
> then we would include information about that in a README file (assuming
>
> we didn't kill the product outright).
>
>
>
> As a non-patent but practicing attorney, I don't believe I'd ever
> personally recommend that we kill an international Apache project outright
> simply because someone pointed a US patent gun at it.
>
>
>
> On the other hand, we have a NOTICE file and we owe our customers whatever
> the facts are.
>
>
>
> I'm looking for agreement by our customers to this NOTICE policy in a
> *very* antagonistic, patent-hating Apache community.
>
>
>
> /Larry
>