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Posted to legal-discuss@apache.org by Jérôme Verstrynge <jv...@gmail.com> on 2010/10/21 21:34:20 UTC
Legal questions about moving JXTA/JXSE project to ASF
Dear Apache,
My name is Jérôme Verstrynge and I am the lead for the latest release of
JXTA/JXSE (2.6). Oracle has officially announced this week that it was
withdrawing from the JXTA/JXSE project. This is something we expected to
happen sooner or later. The community's voting is an overwhelming
victory for Apache. I am preparing an application to join the incubator.
We have a couple of legal issues we would like to discuss with you.
- All JXTA code has been release under Apache License 1.1 (see
https://jxta.dev.java.net/jxta_license.htm). We are currently trying to
have it released under Apache 2.0.
- Many parts of the code are covered by patents. Some patent are
obviously covered by prior art, but not all.
- The string of email below summarizes the discussion in the community.
- One of our community member contacted its lawyer and says that since
code has been released under Apache 1.1, we are safe. Do you agree?
- Someone on the Apache incubator maillist said that Apache 1.1 license
allows sub-licensing? Does it mean we could move the code under Apache
license 2.0 if we can't obtain this from Sun/Oracle?
- Someone suggested we re-engineerd existing code, but the lawyer seems
to say we would be in grey area (c.f.,"The grey area comes where a
modification of the existing code, in an area covered by the patents, is
so important, that it could be considered not as a modification of the
existing code (covered by the Apache License) but as a new
implementation of what is covered in the patents."). Do it make sense to
re-engineer that code?
- Oracle/Sun is not eager to transfert the JXTA trademark. We now
believe it has to do with the fact that this name appears in many patent
applications. Does it mean we should pick another name to move to ASF?
Thanks,
Jérôme Verstrynge
-----------------------------------------------------------------------------------------------------------------------------------------------------------------------
On 21/10/2010 9:32, Bruno Grieder wrote:
> On patents, here is some initial lawyer feedback (or what I
> understood), with the warning that it is coming from an European
> lawyer and we are talking about software patents, an American problem.
>
> -the answer is not trivial
>
> -Oracle's withdrawal does not affect the patent situation, in the
> sense that a new (emphasis on new) implementation of what is described
> in the patents without their consent has always been and is still a
> breach of their patents (that is true of any patent)
>
> -code made by Oracle released under Apache 2.0 can be freely used
> under the terms of this license (in short the current JXTA code is
> safe since it is "patented" but was released by Oracle itself under
> the terms of the Apache License).
>
> The grey area comes where a modification of the existing code, in an
> area covered by the patents, is so important, that it could be
> considered not as a modification of the existing code (covered by the
> Apache License) but as a new implementation of what is covered in the
> patents.
>
> IMHO, no immediate problem even fixing the current code but in the
> long run we should strive to remove pieces of code clearly covered by
> Oracle's patents.
>
> Another reason for doing this, is that Simon did a quick patent search
> yesterday and found quite a large number of Oracle patents related to
> JXTA.
>
> Most surprising is US patent 7,788,522 B1 by Ms. Abdelaziz and
> Traversat, Oracle being the assignee, and dated August 2010, e.g. a
> couple of months ago, although no code has been contributed by
> Sun/Oracle for a much, much longer period (two years?). That patent,
> like all other patents has the word "jxta" all over the place; that I
> guess, also gives another angle to the "trademark issue".
>
> b.
>
>
> On 20 oct. 2010, at 18:43, Jérôme Verstrynge wrote:
>
>> ASF: It looks like an overwhelming victory for ASF. I'll wait until
>> Friday before taking action.
>>
>> Patent: Again, I am not a lawyer, but I have been trough the process
>> of obtaining a patent from the USPTO. I worked with Lawyers in
>> Boston. The USPTO challenged our patent twice and we rebutted them
>> twice. We finally got the patent.
>>
>> I'll repeat myself here (and check with your Lawyer if you don't
>> believe me), but in a patent, the only thing that matters in court is
>> the claims and the filling date. If their is prior art covering the
>> claims, then the patent is invalid. In our case, their is prior art
>> (Gnutella), hence any serious Lawyer would recommend Oracle (or
>> whoever owns the patent) to not challenge anyone. There is no need to
>> be scared and size does not matter in this case.
>>
>> On the other side, it is not because Oracle announced its withdrawal
>> from JXTA that the situation was different in the first place...
>>
>> JXTA trademark: I don't think Oracle's decision is fair. If they
>> don't change their mind, I plan to take further action. We don't have
>> to tolerate and accept it this. Oracle is not standing behind its own
>> commitment. There is a case to put pressure here.
>>
>> Jérôme
>>
>> On 20/10/2010 12:00, cees_pieters@wxs.nl wrote:
>>>
>>> Adrian, although I think you are right, I believe that Larry Ellison
>>> only likes to sue big fish, so I suspect we'll be of too little
>>> interest for Oracle to make JXTA an issue. Besides this JXTA has
>>> been developed with open source licenses from the start, so it would
>>> seem difficult (at least for me) to see how this could be turned
>>> back or restrained.
>>>
>>> -----Original Message-----
>>> From: Adrian Ivan [mailto:adrian@coena.com]
>>> Sent: Wed 20/10/2010 10:05
>>> To: dev@jxta.dev.java.net
>>> Subject: Re: [jxta-dev] Re: [jxta-announce] JXTA Future
>>>
>>> don't want to sound paranoic, but maybe one/more company here gets
>>> bigger and successful.
>>> these giant companies seem to be very sue happy, so we need to be
>>> covered from the start.
>>>
>>> adrian
>>>
>>>
>>>
>>> On 10/20/2010 10:59 AM, Bruno Grieder wrote:
>>> > Adrian,
>>> >
>>> > I am not a lawyer (I have one at home + a corporate lawyer; I will ask
>>> > and share the result);
>>> >
>>> > This is my basic understanding right now. Until yesterday, official
>>> > date of withdrawal of Oracle, the code use is "safe". The code was
>>> > released, used, modified, etc.. with their full consent and knowledge
>>> > under terms clearly agreed and stated by them.
>>> >
>>> > The problem lies with future modifications to areas covered to their
>>> > patents and the use of these.
>>> >
>>> > I would not overestimate the "danger" though. First, I still hope we
>>> > can get that letter and then, any "move" by Oracle will likely be
>>> > motivated by a business decision, not a legal decision. Right now, the
>>> > only business decision I can see from them, is cutting their costs
>>> down.
>>> >
>>> > b.
>>> > Amalto Technologies - http://www.amalto.com <http://www.amalto.com/>
>>> >
>>> > Direct/France: +33 1 83 62 39 73
>>> > Mobile: +33 6 33 27 46 85
>>> > Skype: bgrieder
>>> >
>>> > On 20 oct. 2010, at 09:27, Adrian Ivan wrote:
>>> >
>>> >> To have a clear picture,
>>> >>
>>> >> as for "business users" of jxta, ie companies that build products
>>> >> using jxta technology, how safe are we from the juridical point of
>>> >> view in regards to Oracle?
>>> >>
>>> >> Adrian
>>> >>
>>> >>> On 20 Oct 2010, at 06:25, Bruno Grieder wrote:
>>> >>>
>>> >>>> Jerôme,
>>> >>>>
>>> >>>> As you know, as a "business user" I am of those requesting a
>>> >>>> written authorization on patents from Oracle.
>>> >>>>
>>> >>>> I am less worried by the validity of the patent or by Oracle's
>>> >>>> chances of winning a patent case, than by the future possibility
>>> >>>> offered to Oracle of using the patent as the ground to start a
>>> >>>> case. They are big, and we may be "sued out" whatever the outcome
>>> >>>> of the case may be.
>>> >>>>
>>> >>>> During the call, I understood from the Oracle representative, that,
>>> >>>> -It has never been and is still not Sun/Oracle intention to
>>> >>>> prevent free development and free use of the JXTA technology in any
>>> >>>> way, and as a gesture Oracle will immediately move the license to
>>> >>>> Apache 2.0
>>> >>>> -After replacement of GlassFish 2 by GlassFish 3, Sun/Oracle will
>>> >>>> not be using JXTA in any of its products.
>>> >>>> It would therefore be very hard to understand why Oracle would not
>>> >>>> accept granting in writing a free and irrevocable right to use the
>>> >>>> patent.
>>> >>>>
>>> >>>> Oracle's patent(s) mostly cover the DHT. There are other DHT
>>> >>>> algorithms and ready Java implementations out there, Kademlia in
>>> >>>> particular (but also Tapestry, Pastry, etc...) or projects like
>>> >>>> Apache Cassandra that implement advanced DHT and that do not suffer
>>> >>>> the patent limitations above. I realize, though, that changing the
>>> >>>> DHT algorithm may be a big work touching very low level components
>>> >>>> of JXTA.
>>> >>>>
>>> >>>> I would like to hear your opinion and that of other community
>>> >>>> members on this but I feel we should finish stabilizing the 2.6
>>> >>>> branch "as is" and accelerate the design work on 3.0 since
>>> >>>> significant changes may be required, not to mention those required
>>> >>>> to match Apache requirements, should we eventually go there.
>>> >>>>
>>> >>>>
>>> >>>> Bruno
>>> >>>>
>>> >>>> Amalto Technologies - http://www.amalto.com
>>> <http://www.amalto.com/> <http://www.amalto.com/>
>>> >>>>
>>> >>>> On 19 oct. 2010, at 20:19, Jérôme Verstrynge wrote:
>>> >>>>
>>> >>>>> Dear all,
>>> >>>>>
>>> >>>>> We just had the conference call with Bernard prior to this
>>> >>>>> announcement. I have been anticipating this decision and initiated
>>> >>>>> some contact with the Apache Software Foundation. I registered to
>>> >>>>> their incubator mailing list and asked whether they would consider
>>> >>>>> an application from the JXTA community, the answer was:
>>> >>>>> In general, I would say that JXTA is more than welcome, if your
>>> >>>>> community thinks that is the best course of action.
>>> >>>>> The next step for us is to start an open decision about where to
>>> >>>>> migrate next and to vote. Hence, if anyone has other hosting
>>> >>>>> suggestions/proposals to make than ASF, please communicate it now.
>>> >>>>> Then we'll proceed with voting.
>>> >>>>>
>>> >>>>> Three technical issues need to be solved:
>>> >>>>>
>>> >>>>> *The licensing* - JXTA is currently operating under a modified
>>> >>>>> Apache 1.1 license. Bernard announced during the conference that
>>> >>>>> he would change this into a Apache 2.0 license on the current
>>> >>>>> JXTA-JXSE website. The SCA that all contributors signed allows
>>> this.
>>> >>>>>
>>> >>>>> *The 'JXTA' trademark* - It does not seem like Oracle/Sun is
>>> >>>>> willing to transfer or to authorize its usage to third a party,
>>> >>>>> although it would only require a simple written authorization from
>>> >>>>> them (c.f. our current 1.1 Apache license terms).
>>> >>>>>
>>> >>>>> On
>>> >>>>>
>>> http://www.oracle.com/technetwork/topics/oracle-open-source-faq-090399.html,
>>> >>>>> Oracle says:
>>> >>>>>
>>> >>>>> "Oracle is committed to developing, supporting, and promoting Open
>>> >>>>> Source. Oracle has been, and continues to be, committed to
>>> >>>>> offering choice, flexibility, and a lower cost of computing for
>>> >>>>> end users."
>>> >>>>>
>>> >>>>> I don't see how disengaging from an Open Source project and
>>> >>>>> forcing the remaining community to fork it under a new name fits
>>> >>>>> with the above commitment of promoting and supporting Open Source.
>>> >>>>> It is plain contradiction and shows little respect to
>>> >>>>> contributions made by other members of the community in the past.
>>> >>>>> The JXTA project has always been an open source project and all
>>> >>>>> participants have a legitimate claim on the name. I hope Oracle
>>> >>>>> will change its mind and walk its talk.
>>> >>>>>
>>> >>>>> *The 'JXTA' patent* - Oracle now owns a Sun patent related to JXTA
>>> >>>>> (Patent N°: US 7,464,168 B1). It describes a 'system and method
>>> >>>>> for decentralized entity presence'. The claims of this patent
>>> >>>>> covers for many parts of the technology implemented in
>>> JXTA/JXSE code.
>>> >>>>>
>>> >>>>> Several participants to the conference call requested that Oracle
>>> >>>>> provides a written authorization to use the technology contained
>>> >>>>> in the patent. Bernard is to investigate and follow-up on this
>>> issue.
>>> >>>>>
>>> >>>>> On the other side, I am not a Lawyer, but:
>>> >>>>>
>>> >>>>> i) What is relevant in patents is the content of claims. The rest
>>> >>>>> of the document has no value, but informative value.
>>> >>>>> i) From Wikipedia (and my own experience with patents): "Prior art
>>> >>>>> (...) constitutes all information that has been made available to
>>> >>>>> the public in any form before a given date that might be relevant
>>> >>>>> to a patent's claims of originality. If an invention has been
>>> >>>>> described in prior art, a patent on that invention is not valid."
>>> >>>>> ii) In
>>> >>>>>
>>> http://www.uspto.gov/patents/resources/methods/aiplafall02paper.jsp,
>>> >>>>> at section IV.E., the USPTO says: "Applicant's own work, available
>>> >>>>> to the public more than one year prior to the filing date, is
>>> >>>>> prior art."
>>> >>>>> iii) The JXTA patent was filed on October 19, 2004.
>>> >>>>> iv) In July 2003, the status of the Gnutella 0.4 standard was
>>> >>>>> already available on:
>>> >>>>> http://rfc-gnutella.sourceforge.net/developer/index.html
>>> >>>>> v) The Gnutella 0.4 protocol defines a ping functionality 'used to
>>> >>>>> actively discover hosts on the net'.
>>> >>>>> vi) The above (v) constitutes prior art on several claims of the
>>> >>>>> JXTA patent. Since remaining claims rely on those claims, they
>>> >>>>> fall too in a domino pattern. What is left is insufficient in
>>> >>>>> itself to constitute an invention.
>>> >>>>>
>>> >>>>> If Oracle were to refuse to provide a right to use the technology
>>> >>>>> described in the patent, and therefore, walk their talk, it would
>>> >>>>> be very risky for them to attempt any challenge against any user
>>> >>>>> of the technology. I believe most court would consider the
>>> >>>>> evidence for prior art and declare the patent invalid.
>>> >>>>>
>>> >>>>> Waiting for your feedback,
>>> >>>>>
>>> >>>>> Jérôme
>>> >>>>>
>>> >>>>>
>>> >>>>> On 19/10/2010 19:10, Bernard Traversat wrote:
>>> >>>>>>
>>> >>>>>> It has been a long journey since Sun started the JXTA open-source
>>> >>>>>> project more than 10 years ago. For the past couple
>>> >>>>>> of years, investments in the JXTA technology from Sun diminished
>>> >>>>>> to the point where the project and contributions were
>>> >>>>>> completely managed by external community members. As Sun, Oracle
>>> >>>>>> has no plan to further invest in JXTA. One of the reasons
>>> >>>>>> that we developed JXTA has an open-source project was to allow
>>> >>>>>> the community to evolve the technology if the objective
>>> >>>>>> of the core team were changed.
>>> >>>>>>
>>> >>>>>> We already started to engage community leaders to ensure a smooth
>>> >>>>>> transition. We will be maintaining the source repository
>>> >>>>>> and jxta.org <http://jxta.org> <http://jxta.org/> site while
>>> a new home for both
>>> >>>>>> the code and supported content is investigated by the community.
>>> >>>>>>
>>> >>>>>> I would like to thank all those who have supported the activities
>>> >>>>>> of JXTA over the years, and to extend my best wishes to
>>> >>>>>> the community for future success in their endeavor to evolve the
>>> >>>>>> technology.
>>> >>>>>>
>>> >>>>>> B.
>>> >>>>>>
>>> >>>>>
>>> >>>>
>>> >>>
>>> >>
>>> >
>>>
>>>
>>
>
Re: Legal questions about moving JXTA/JXSE project to ASF
Posted by Jérôme Verstrynge <jv...@gmail.com>.
My bad, I was not registered to the mailing list. I missed the answer.
Thanks for your answer.
Jérôme
On 28/10/2010 0:24, Ralph Goers wrote:
> Sam Ruby replied to you last week. Normally, email is sent to the
> legal discuss mailing list and Sam replied to the list, not to you
> individually. The assumption is that if you are going to ask a
> question you will subscribe to the list to participate in the
> conversation. You can view his reply at
> http://mail-archives.apache.org/mod_mbox/www-legal-discuss/201010.mbox/%3cAANLkTi=Y7BNu1eEEdSu_ZUuibVkLA=R5=rRBR=1BNF5C@mail.gmail.com%3e
>
>
> Ralph
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Re: Legal questions about moving JXTA/JXSE project to ASF
Posted by Sam Ruby <ru...@intertwingly.net>.
On Thu, Oct 28, 2010 at 12:49 AM, Jérôme Verstrynge <jv...@gmail.com> wrote:
>
> Our contact at Oracle said they would not oppose a fork of the code/project.
> He said he is currently taking a look at release under Apache 2.0.
That works.
>> As to the patent questions, I don't think they can be answered in
>> abstract terms; but overall I am not I see no reason for undue
>> concern. Others are welcome to chime in here.
>>
>> Sam Ruby
>
> About patents, there is a typo in your sentence: "(...) overall I am not I
> see no
> reason (...)". Do you mean our concerns are legitimate or not?
Yes, there is a typo. Drop the words "I am not". Overall I see no
reason for undue concern. Particularly if the owner relicenses the
original code under the Apache License, Version 2.0.
> Thanks,
>
> Jérôme
- Sam Ruby
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Re: Legal questions about moving JXTA/JXSE project to ASF
Posted by Jérôme Verstrynge <jv...@gmail.com>.
Hi Sam,
Thank you for your answer:
> Looking at the license, using the terms JXTA requires prior written
> permission, and it appears that we will likely be unable to obtain
> that permission. That does mean that a rename is in order.
We are currently voting for a new name in the community.
> Again looking at the license, the third clause is problematic to us.
> It clearly wasn't meant to be -- it is more of a historical relic of
> what people thought was a good idea at the time. That being said, a
> software grant would be required for us to be able to release the code
> under the Apache License, Version 2.0. (Yes, once upon a time we
> relicensed our own code; but that is a different matter than taking
> somebody else's code and not following the terms of the license)
Our contact at Oracle said they would not oppose a fork of the code/project.
He said he is currently taking a look at release under Apache 2.0.
> As to the patent questions, I don't think they can be answered in
> abstract terms; but overall I am not I see no reason for undue
> concern. Others are welcome to chime in here.
>
> Sam Ruby
About patents, there is a typo in your sentence: "(...) overall I am not I see no
reason (...)". Do you mean our concerns are legitimate or not?
Thanks,
Jérôme
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Re: Legal questions about moving JXTA/JXSE project to ASF
Posted by Ralph Goers <ra...@dslextreme.com>.
Sam Ruby replied to you last week. Normally, email is sent to the legal discuss mailing list and Sam replied to the list, not to you individually. The assumption is that if you are going to ask a question you will subscribe to the list to participate in the conversation. You can view his reply at http://mail-archives.apache.org/mod_mbox/www-legal-discuss/201010.mbox/%3cAANLkTi=Y7BNu1eEEdSu_ZUuibVkLA=R5=rRBR=1BNF5C@mail.gmail.com%3e
Ralph
On Oct 27, 2010, at 8:24 PM, Jérôme Verstrynge wrote:
> Dear Apache,
>
> I have sent you the email below last week, but I have not received an answer since. Is this email list/address still active?
>
> Thanks,
>
> Jérôme Verstrynge
>
> On 21/10/2010 15:34, Jérôme Verstrynge wrote:
>>
>> Dear Apache,
>>
>> My name is Jérôme Verstrynge and I am the lead for the latest release of JXTA/JXSE (2.6). Oracle has officially announced this week that it was withdrawing from the JXTA/JXSE project. This is something we expected to happen sooner or later. The community's voting is an overwhelming victory for Apache. I am preparing an application to join the incubator.
>>
>> We have a couple of legal issues we would like to discuss with you.
>> - All JXTA code has been release under Apache License 1.1 (see https://jxta.dev.java.net/jxta_license.htm). We are currently trying to have it released under Apache 2.0.
>> - Many parts of the code are covered by patents. Some patent are obviously covered by prior art, but not all.
>> - The string of email below summarizes the discussion in the community.
>>
>> - One of our community member contacted its lawyer and says that since code has been released under Apache 1.1, we are safe. Do you agree?
>>
>> - Someone on the Apache incubator maillist said that Apache 1.1 license allows sub-licensing? Does it mean we could move the code under Apache license 2.0 if we can't obtain this from Sun/Oracle?
>>
>> - Someone suggested we re-engineerd existing code, but the lawyer seems to say we would be in grey area (c.f.,"The grey area comes where a modification of the existing code, in an area covered by the patents, is so important, that it could be considered not as a modification of the existing code (covered by the Apache License) but as a new implementation of what is covered in the patents."). Do it make sense to re-engineer that code?
>>
>> - Oracle/Sun is not eager to transfert the JXTA trademark. We now believe it has to do with the fact that this name appears in many patent applications. Does it mean we should pick another name to move to ASF?
>>
>> Thanks,
>>
>> Jérôme Verstrynge
>>
>> -----------------------------------------------------------------------------------------------------------------------------------------------------------------------
>>
>> On 21/10/2010 9:32, Bruno Grieder wrote:
>>>
>>> On patents, here is some initial lawyer feedback (or what I understood), with the warning that it is coming from an European lawyer and we are talking about software patents, an American problem.
>>>
>>> -the answer is not trivial
>>>
>>> -Oracle's withdrawal does not affect the patent situation, in the sense that a new (emphasis on new) implementation of what is described in the patents without their consent has always been and is still a breach of their patents (that is true of any patent)
>>>
>>> -code made by Oracle released under Apache 2.0 can be freely used under the terms of this license (in short the current JXTA code is safe since it is "patented" but was released by Oracle itself under the terms of the Apache License).
>>>
>>> The grey area comes where a modification of the existing code, in an area covered by the patents, is so important, that it could be considered not as a modification of the existing code (covered by the Apache License) but as a new implementation of what is covered in the patents.
>>>
>>> IMHO, no immediate problem even fixing the current code but in the long run we should strive to remove pieces of code clearly covered by Oracle's patents.
>>>
>>> Another reason for doing this, is that Simon did a quick patent search yesterday and found quite a large number of Oracle patents related to JXTA.
>>>
>>> Most surprising is US patent 7,788,522 B1 by Ms. Abdelaziz and Traversat, Oracle being the assignee, and dated August 2010, e.g. a couple of months ago, although no code has been contributed by Sun/Oracle for a much, much longer period (two years?). That patent, like all other patents has the word "jxta" all over the place; that I guess, also gives another angle to the "trademark issue".
>>>
>>> b.
>>>
>>>
>>> On 20 oct. 2010, at 18:43, Jérôme Verstrynge wrote:
>>>
>>>> ASF: It looks like an overwhelming victory for ASF. I'll wait until Friday before taking action.
>>>>
>>>> Patent: Again, I am not a lawyer, but I have been trough the process of obtaining a patent from the USPTO. I worked with Lawyers in Boston. The USPTO challenged our patent twice and we rebutted them twice. We finally got the patent.
>>>>
>>>> I'll repeat myself here (and check with your Lawyer if you don't believe me), but in a patent, the only thing that matters in court is the claims and the filling date. If their is prior art covering the claims, then the patent is invalid. In our case, their is prior art (Gnutella), hence any serious Lawyer would recommend Oracle (or whoever owns the patent) to not challenge anyone. There is no need to be scared and size does not matter in this case.
>>>>
>>>> On the other side, it is not because Oracle announced its withdrawal from JXTA that the situation was different in the first place...
>>>>
>>>> JXTA trademark: I don't think Oracle's decision is fair. If they don't change their mind, I plan to take further action. We don't have to tolerate and accept it this. Oracle is not standing behind its own commitment. There is a case to put pressure here.
>>>>
>>>> Jérôme
>>>>
>>>> On 20/10/2010 12:00, cees_pieters@wxs.nl wrote:
>>>>>
>>>>> Adrian, although I think you are right, I believe that Larry Ellison only likes to sue big fish, so I suspect we'll be of too little interest for Oracle to make JXTA an issue. Besides this JXTA has been developed with open source licenses from the start, so it would seem difficult (at least for me) to see how this could be turned back or restrained.
>>>>>
>>>>> -----Original Message-----
>>>>> From: Adrian Ivan [mailto:adrian@coena.com]
>>>>> Sent: Wed 20/10/2010 10:05
>>>>> To: dev@jxta.dev.java.net
>>>>> Subject: Re: [jxta-dev] Re: [jxta-announce] JXTA Future
>>>>>
>>>>> don't want to sound paranoic, but maybe one/more company here gets
>>>>> bigger and successful.
>>>>> these giant companies seem to be very sue happy, so we need to be
>>>>> covered from the start.
>>>>>
>>>>> adrian
>>>>>
>>>>>
>>>>>
>>>>> On 10/20/2010 10:59 AM, Bruno Grieder wrote:
>>>>> > Adrian,
>>>>> >
>>>>> > I am not a lawyer (I have one at home + a corporate lawyer; I will ask
>>>>> > and share the result);
>>>>> >
>>>>> > This is my basic understanding right now. Until yesterday, official
>>>>> > date of withdrawal of Oracle, the code use is "safe". The code was
>>>>> > released, used, modified, etc.. with their full consent and knowledge
>>>>> > under terms clearly agreed and stated by them.
>>>>> >
>>>>> > The problem lies with future modifications to areas covered to their
>>>>> > patents and the use of these.
>>>>> >
>>>>> > I would not overestimate the "danger" though. First, I still hope we
>>>>> > can get that letter and then, any "move" by Oracle will likely be
>>>>> > motivated by a business decision, not a legal decision. Right now, the
>>>>> > only business decision I can see from them, is cutting their costs down.
>>>>> >
>>>>> > b.
>>>>> > Amalto Technologies - http://www.amalto.com
>>>>> >
>>>>> > Direct/France: +33 1 83 62 39 73
>>>>> > Mobile: +33 6 33 27 46 85
>>>>> > Skype: bgrieder
>>>>> >
>>>>> > On 20 oct. 2010, at 09:27, Adrian Ivan wrote:
>>>>> >
>>>>> >> To have a clear picture,
>>>>> >>
>>>>> >> as for "business users" of jxta, ie companies that build products
>>>>> >> using jxta technology, how safe are we from the juridical point of
>>>>> >> view in regards to Oracle?
>>>>> >>
>>>>> >> Adrian
>>>>> >>
>>>>> >>> On 20 Oct 2010, at 06:25, Bruno Grieder wrote:
>>>>> >>>
>>>>> >>>> Jerôme,
>>>>> >>>>
>>>>> >>>> As you know, as a "business user" I am of those requesting a
>>>>> >>>> written authorization on patents from Oracle.
>>>>> >>>>
>>>>> >>>> I am less worried by the validity of the patent or by Oracle's
>>>>> >>>> chances of winning a patent case, than by the future possibility
>>>>> >>>> offered to Oracle of using the patent as the ground to start a
>>>>> >>>> case. They are big, and we may be "sued out" whatever the outcome
>>>>> >>>> of the case may be.
>>>>> >>>>
>>>>> >>>> During the call, I understood from the Oracle representative, that,
>>>>> >>>> -It has never been and is still not Sun/Oracle intention to
>>>>> >>>> prevent free development and free use of the JXTA technology in any
>>>>> >>>> way, and as a gesture Oracle will immediately move the license to
>>>>> >>>> Apache 2.0
>>>>> >>>> -After replacement of GlassFish 2 by GlassFish 3, Sun/Oracle will
>>>>> >>>> not be using JXTA in any of its products.
>>>>> >>>> It would therefore be very hard to understand why Oracle would not
>>>>> >>>> accept granting in writing a free and irrevocable right to use the
>>>>> >>>> patent.
>>>>> >>>>
>>>>> >>>> Oracle's patent(s) mostly cover the DHT. There are other DHT
>>>>> >>>> algorithms and ready Java implementations out there, Kademlia in
>>>>> >>>> particular (but also Tapestry, Pastry, etc...) or projects like
>>>>> >>>> Apache Cassandra that implement advanced DHT and that do not suffer
>>>>> >>>> the patent limitations above. I realize, though, that changing the
>>>>> >>>> DHT algorithm may be a big work touching very low level components
>>>>> >>>> of JXTA.
>>>>> >>>>
>>>>> >>>> I would like to hear your opinion and that of other community
>>>>> >>>> members on this but I feel we should finish stabilizing the 2.6
>>>>> >>>> branch "as is" and accelerate the design work on 3.0 since
>>>>> >>>> significant changes may be required, not to mention those required
>>>>> >>>> to match Apache requirements, should we eventually go there.
>>>>> >>>>
>>>>> >>>>
>>>>> >>>> Bruno
>>>>> >>>>
>>>>> >>>> Amalto Technologies - http://www.amalto.com <http://www.amalto.com/>
>>>>> >>>>
>>>>> >>>> On 19 oct. 2010, at 20:19, Jérôme Verstrynge wrote:
>>>>> >>>>
>>>>> >>>>> Dear all,
>>>>> >>>>>
>>>>> >>>>> We just had the conference call with Bernard prior to this
>>>>> >>>>> announcement. I have been anticipating this decision and initiated
>>>>> >>>>> some contact with the Apache Software Foundation. I registered to
>>>>> >>>>> their incubator mailing list and asked whether they would consider
>>>>> >>>>> an application from the JXTA community, the answer was:
>>>>> >>>>> In general, I would say that JXTA is more than welcome, if your
>>>>> >>>>> community thinks that is the best course of action.
>>>>> >>>>> The next step for us is to start an open decision about where to
>>>>> >>>>> migrate next and to vote. Hence, if anyone has other hosting
>>>>> >>>>> suggestions/proposals to make than ASF, please communicate it now.
>>>>> >>>>> Then we'll proceed with voting.
>>>>> >>>>>
>>>>> >>>>> Three technical issues need to be solved:
>>>>> >>>>>
>>>>> >>>>> *The licensing* - JXTA is currently operating under a modified
>>>>> >>>>> Apache 1.1 license. Bernard announced during the conference that
>>>>> >>>>> he would change this into a Apache 2.0 license on the current
>>>>> >>>>> JXTA-JXSE website. The SCA that all contributors signed allows this.
>>>>> >>>>>
>>>>> >>>>> *The 'JXTA' trademark* - It does not seem like Oracle/Sun is
>>>>> >>>>> willing to transfer or to authorize its usage to third a party,
>>>>> >>>>> although it would only require a simple written authorization from
>>>>> >>>>> them (c.f. our current 1.1 Apache license terms).
>>>>> >>>>>
>>>>> >>>>> On
>>>>> >>>>> http://www.oracle.com/technetwork/topics/oracle-open-source-faq-090399.html,
>>>>> >>>>> Oracle says:
>>>>> >>>>>
>>>>> >>>>> "Oracle is committed to developing, supporting, and promoting Open
>>>>> >>>>> Source. Oracle has been, and continues to be, committed to
>>>>> >>>>> offering choice, flexibility, and a lower cost of computing for
>>>>> >>>>> end users."
>>>>> >>>>>
>>>>> >>>>> I don't see how disengaging from an Open Source project and
>>>>> >>>>> forcing the remaining community to fork it under a new name fits
>>>>> >>>>> with the above commitment of promoting and supporting Open Source.
>>>>> >>>>> It is plain contradiction and shows little respect to
>>>>> >>>>> contributions made by other members of the community in the past.
>>>>> >>>>> The JXTA project has always been an open source project and all
>>>>> >>>>> participants have a legitimate claim on the name. I hope Oracle
>>>>> >>>>> will change its mind and walk its talk.
>>>>> >>>>>
>>>>> >>>>> *The 'JXTA' patent* - Oracle now owns a Sun patent related to JXTA
>>>>> >>>>> (Patent N°: US 7,464,168 B1). It describes a 'system and method
>>>>> >>>>> for decentralized entity presence'. The claims of this patent
>>>>> >>>>> covers for many parts of the technology implemented in JXTA/JXSE code.
>>>>> >>>>>
>>>>> >>>>> Several participants to the conference call requested that Oracle
>>>>> >>>>> provides a written authorization to use the technology contained
>>>>> >>>>> in the patent. Bernard is to investigate and follow-up on this issue.
>>>>> >>>>>
>>>>> >>>>> On the other side, I am not a Lawyer, but:
>>>>> >>>>>
>>>>> >>>>> i) What is relevant in patents is the content of claims. The rest
>>>>> >>>>> of the document has no value, but informative value.
>>>>> >>>>> i) From Wikipedia (and my own experience with patents): "Prior art
>>>>> >>>>> (...) constitutes all information that has been made available to
>>>>> >>>>> the public in any form before a given date that might be relevant
>>>>> >>>>> to a patent's claims of originality. If an invention has been
>>>>> >>>>> described in prior art, a patent on that invention is not valid."
>>>>> >>>>> ii) In
>>>>> >>>>> http://www.uspto.gov/patents/resources/methods/aiplafall02paper.jsp,
>>>>> >>>>> at section IV.E., the USPTO says: "Applicant's own work, available
>>>>> >>>>> to the public more than one year prior to the filing date, is
>>>>> >>>>> prior art."
>>>>> >>>>> iii) The JXTA patent was filed on October 19, 2004.
>>>>> >>>>> iv) In July 2003, the status of the Gnutella 0.4 standard was
>>>>> >>>>> already available on:
>>>>> >>>>> http://rfc-gnutella.sourceforge.net/developer/index.html
>>>>> >>>>> v) The Gnutella 0.4 protocol defines a ping functionality 'used to
>>>>> >>>>> actively discover hosts on the net'.
>>>>> >>>>> vi) The above (v) constitutes prior art on several claims of the
>>>>> >>>>> JXTA patent. Since remaining claims rely on those claims, they
>>>>> >>>>> fall too in a domino pattern. What is left is insufficient in
>>>>> >>>>> itself to constitute an invention.
>>>>> >>>>>
>>>>> >>>>> If Oracle were to refuse to provide a right to use the technology
>>>>> >>>>> described in the patent, and therefore, walk their talk, it would
>>>>> >>>>> be very risky for them to attempt any challenge against any user
>>>>> >>>>> of the technology. I believe most court would consider the
>>>>> >>>>> evidence for prior art and declare the patent invalid.
>>>>> >>>>>
>>>>> >>>>> Waiting for your feedback,
>>>>> >>>>>
>>>>> >>>>> Jérôme
>>>>> >>>>>
>>>>> >>>>>
>>>>> >>>>> On 19/10/2010 19:10, Bernard Traversat wrote:
>>>>> >>>>>>
>>>>> >>>>>> It has been a long journey since Sun started the JXTA open-source
>>>>> >>>>>> project more than 10 years ago. For the past couple
>>>>> >>>>>> of years, investments in the JXTA technology from Sun diminished
>>>>> >>>>>> to the point where the project and contributions were
>>>>> >>>>>> completely managed by external community members. As Sun, Oracle
>>>>> >>>>>> has no plan to further invest in JXTA. One of the reasons
>>>>> >>>>>> that we developed JXTA has an open-source project was to allow
>>>>> >>>>>> the community to evolve the technology if the objective
>>>>> >>>>>> of the core team were changed.
>>>>> >>>>>>
>>>>> >>>>>> We already started to engage community leaders to ensure a smooth
>>>>> >>>>>> transition. We will be maintaining the source repository
>>>>> >>>>>> and jxta.org <http://jxta.org/> site while a new home for both
>>>>> >>>>>> the code and supported content is investigated by the community.
>>>>> >>>>>>
>>>>> >>>>>> I would like to thank all those who have supported the activities
>>>>> >>>>>> of JXTA over the years, and to extend my best wishes to
>>>>> >>>>>> the community for future success in their endeavor to evolve the
>>>>> >>>>>> technology.
>>>>> >>>>>>
>>>>> >>>>>> B.
>>>>> >>>>>>
>>>>> >>>>>
>>>>> >>>>
>>>>> >>>
>>>>> >>
>>>>> >
>>>>>
>>>>>
>>>>>
>>>>
>>>
>>
>
Re: Legal questions about moving JXTA/JXSE project to ASF
Posted by Jérôme Verstrynge <jv...@gmail.com>.
Dear Apache,
I have sent you the email below last week, but I have not received an
answer since. Is this email list/address still active?
Thanks,
Jérôme Verstrynge
On 21/10/2010 15:34, Jérôme Verstrynge wrote:
> Dear Apache,
>
> My name is Jérôme Verstrynge and I am the lead for the latest release
> of JXTA/JXSE (2.6). Oracle has officially announced this week that it
> was withdrawing from the JXTA/JXSE project. This is something we
> expected to happen sooner or later. The community's voting is an
> overwhelming victory for Apache. I am preparing an application to join
> the incubator.
>
> We have a couple of legal issues we would like to discuss with you.
> - All JXTA code has been release under Apache License 1.1 (see
> https://jxta.dev.java.net/jxta_license.htm). We are currently trying
> to have it released under Apache 2.0.
> - Many parts of the code are covered by patents. Some patent are
> obviously covered by prior art, but not all.
> - The string of email below summarizes the discussion in the community.
>
> - One of our community member contacted its lawyer and says that since
> code has been released under Apache 1.1, we are safe. Do you agree?
>
> - Someone on the Apache incubator maillist said that Apache 1.1
> license allows sub-licensing? Does it mean we could move the code
> under Apache license 2.0 if we can't obtain this from Sun/Oracle?
>
> - Someone suggested we re-engineerd existing code, but the lawyer
> seems to say we would be in grey area (c.f.,"The grey area comes where
> a modification of the existing code, in an area covered by the
> patents, is so important, that it could be considered not as a
> modification of the existing code (covered by the Apache License) but
> as a new implementation of what is covered in the patents."). Do it
> make sense to re-engineer that code?
>
> - Oracle/Sun is not eager to transfert the JXTA trademark. We now
> believe it has to do with the fact that this name appears in many
> patent applications. Does it mean we should pick another name to move
> to ASF?
>
> Thanks,
>
> Jérôme Verstrynge
>
> -----------------------------------------------------------------------------------------------------------------------------------------------------------------------
>
> On 21/10/2010 9:32, Bruno Grieder wrote:
>> On patents, here is some initial lawyer feedback (or what I
>> understood), with the warning that it is coming from an European
>> lawyer and we are talking about software patents, an American problem.
>>
>> -the answer is not trivial
>>
>> -Oracle's withdrawal does not affect the patent situation, in the
>> sense that a new (emphasis on new) implementation of what is
>> described in the patents without their consent has always been and is
>> still a breach of their patents (that is true of any patent)
>>
>> -code made by Oracle released under Apache 2.0 can be freely used
>> under the terms of this license (in short the current JXTA code is
>> safe since it is "patented" but was released by Oracle itself under
>> the terms of the Apache License).
>>
>> The grey area comes where a modification of the existing code, in an
>> area covered by the patents, is so important, that it could be
>> considered not as a modification of the existing code (covered by the
>> Apache License) but as a new implementation of what is covered in the
>> patents.
>>
>> IMHO, no immediate problem even fixing the current code but in the
>> long run we should strive to remove pieces of code clearly covered by
>> Oracle's patents.
>>
>> Another reason for doing this, is that Simon did a quick patent
>> search yesterday and found quite a large number of Oracle patents
>> related to JXTA.
>>
>> Most surprising is US patent 7,788,522 B1 by Ms. Abdelaziz and
>> Traversat, Oracle being the assignee, and dated August 2010, e.g. a
>> couple of months ago, although no code has been contributed by
>> Sun/Oracle for a much, much longer period (two years?). That patent,
>> like all other patents has the word "jxta" all over the place; that I
>> guess, also gives another angle to the "trademark issue".
>>
>> b.
>>
>>
>> On 20 oct. 2010, at 18:43, Jérôme Verstrynge wrote:
>>
>>> ASF: It looks like an overwhelming victory for ASF. I'll wait until
>>> Friday before taking action.
>>>
>>> Patent: Again, I am not a lawyer, but I have been trough the process
>>> of obtaining a patent from the USPTO. I worked with Lawyers in
>>> Boston. The USPTO challenged our patent twice and we rebutted them
>>> twice. We finally got the patent.
>>>
>>> I'll repeat myself here (and check with your Lawyer if you don't
>>> believe me), but in a patent, the only thing that matters in court
>>> is the claims and the filling date. If their is prior art covering
>>> the claims, then the patent is invalid. In our case, their is prior
>>> art (Gnutella), hence any serious Lawyer would recommend Oracle (or
>>> whoever owns the patent) to not challenge anyone. There is no need
>>> to be scared and size does not matter in this case.
>>>
>>> On the other side, it is not because Oracle announced its withdrawal
>>> from JXTA that the situation was different in the first place...
>>>
>>> JXTA trademark: I don't think Oracle's decision is fair. If they
>>> don't change their mind, I plan to take further action. We don't
>>> have to tolerate and accept it this. Oracle is not standing behind
>>> its own commitment. There is a case to put pressure here.
>>>
>>> Jérôme
>>>
>>> On 20/10/2010 12:00, cees_pieters@wxs.nl wrote:
>>>>
>>>> Adrian, although I think you are right, I believe that Larry
>>>> Ellison only likes to sue big fish, so I suspect we'll be of too
>>>> little interest for Oracle to make JXTA an issue. Besides this JXTA
>>>> has been developed with open source licenses from the start, so it
>>>> would seem difficult (at least for me) to see how this could be
>>>> turned back or restrained.
>>>>
>>>> -----Original Message-----
>>>> From: Adrian Ivan [mailto:adrian@coena.com]
>>>> Sent: Wed 20/10/2010 10:05
>>>> To: dev@jxta.dev.java.net
>>>> Subject: Re: [jxta-dev] Re: [jxta-announce] JXTA Future
>>>>
>>>> don't want to sound paranoic, but maybe one/more company here gets
>>>> bigger and successful.
>>>> these giant companies seem to be very sue happy, so we need to be
>>>> covered from the start.
>>>>
>>>> adrian
>>>>
>>>>
>>>>
>>>> On 10/20/2010 10:59 AM, Bruno Grieder wrote:
>>>> > Adrian,
>>>> >
>>>> > I am not a lawyer (I have one at home + a corporate lawyer; I
>>>> will ask
>>>> > and share the result);
>>>> >
>>>> > This is my basic understanding right now. Until yesterday, official
>>>> > date of withdrawal of Oracle, the code use is "safe". The code was
>>>> > released, used, modified, etc.. with their full consent and knowledge
>>>> > under terms clearly agreed and stated by them.
>>>> >
>>>> > The problem lies with future modifications to areas covered to their
>>>> > patents and the use of these.
>>>> >
>>>> > I would not overestimate the "danger" though. First, I still hope we
>>>> > can get that letter and then, any "move" by Oracle will likely be
>>>> > motivated by a business decision, not a legal decision. Right
>>>> now, the
>>>> > only business decision I can see from them, is cutting their
>>>> costs down.
>>>> >
>>>> > b.
>>>> > Amalto Technologies - http://www.amalto.com <http://www.amalto.com/>
>>>> >
>>>> > Direct/France: +33 1 83 62 39 73
>>>> > Mobile: +33 6 33 27 46 85
>>>> > Skype: bgrieder
>>>> >
>>>> > On 20 oct. 2010, at 09:27, Adrian Ivan wrote:
>>>> >
>>>> >> To have a clear picture,
>>>> >>
>>>> >> as for "business users" of jxta, ie companies that build products
>>>> >> using jxta technology, how safe are we from the juridical point of
>>>> >> view in regards to Oracle?
>>>> >>
>>>> >> Adrian
>>>> >>
>>>> >>> On 20 Oct 2010, at 06:25, Bruno Grieder wrote:
>>>> >>>
>>>> >>>> Jerôme,
>>>> >>>>
>>>> >>>> As you know, as a "business user" I am of those requesting a
>>>> >>>> written authorization on patents from Oracle.
>>>> >>>>
>>>> >>>> I am less worried by the validity of the patent or by Oracle's
>>>> >>>> chances of winning a patent case, than by the future possibility
>>>> >>>> offered to Oracle of using the patent as the ground to start a
>>>> >>>> case. They are big, and we may be "sued out" whatever the outcome
>>>> >>>> of the case may be.
>>>> >>>>
>>>> >>>> During the call, I understood from the Oracle representative,
>>>> that,
>>>> >>>> -It has never been and is still not Sun/Oracle intention to
>>>> >>>> prevent free development and free use of the JXTA technology
>>>> in any
>>>> >>>> way, and as a gesture Oracle will immediately move the license to
>>>> >>>> Apache 2.0
>>>> >>>> -After replacement of GlassFish 2 by GlassFish 3, Sun/Oracle will
>>>> >>>> not be using JXTA in any of its products.
>>>> >>>> It would therefore be very hard to understand why Oracle would not
>>>> >>>> accept granting in writing a free and irrevocable right to use the
>>>> >>>> patent.
>>>> >>>>
>>>> >>>> Oracle's patent(s) mostly cover the DHT. There are other DHT
>>>> >>>> algorithms and ready Java implementations out there, Kademlia in
>>>> >>>> particular (but also Tapestry, Pastry, etc...) or projects like
>>>> >>>> Apache Cassandra that implement advanced DHT and that do not
>>>> suffer
>>>> >>>> the patent limitations above. I realize, though, that changing the
>>>> >>>> DHT algorithm may be a big work touching very low level components
>>>> >>>> of JXTA.
>>>> >>>>
>>>> >>>> I would like to hear your opinion and that of other community
>>>> >>>> members on this but I feel we should finish stabilizing the 2.6
>>>> >>>> branch "as is" and accelerate the design work on 3.0 since
>>>> >>>> significant changes may be required, not to mention those required
>>>> >>>> to match Apache requirements, should we eventually go there.
>>>> >>>>
>>>> >>>>
>>>> >>>> Bruno
>>>> >>>>
>>>> >>>> Amalto Technologies - http://www.amalto.com
>>>> <http://www.amalto.com/> <http://www.amalto.com/>
>>>> >>>>
>>>> >>>> On 19 oct. 2010, at 20:19, Jérôme Verstrynge wrote:
>>>> >>>>
>>>> >>>>> Dear all,
>>>> >>>>>
>>>> >>>>> We just had the conference call with Bernard prior to this
>>>> >>>>> announcement. I have been anticipating this decision and
>>>> initiated
>>>> >>>>> some contact with the Apache Software Foundation. I registered to
>>>> >>>>> their incubator mailing list and asked whether they would
>>>> consider
>>>> >>>>> an application from the JXTA community, the answer was:
>>>> >>>>> In general, I would say that JXTA is more than welcome, if your
>>>> >>>>> community thinks that is the best course of action.
>>>> >>>>> The next step for us is to start an open decision about where to
>>>> >>>>> migrate next and to vote. Hence, if anyone has other hosting
>>>> >>>>> suggestions/proposals to make than ASF, please communicate it
>>>> now.
>>>> >>>>> Then we'll proceed with voting.
>>>> >>>>>
>>>> >>>>> Three technical issues need to be solved:
>>>> >>>>>
>>>> >>>>> *The licensing* - JXTA is currently operating under a modified
>>>> >>>>> Apache 1.1 license. Bernard announced during the conference that
>>>> >>>>> he would change this into a Apache 2.0 license on the current
>>>> >>>>> JXTA-JXSE website. The SCA that all contributors signed
>>>> allows this.
>>>> >>>>>
>>>> >>>>> *The 'JXTA' trademark* - It does not seem like Oracle/Sun is
>>>> >>>>> willing to transfer or to authorize its usage to third a party,
>>>> >>>>> although it would only require a simple written authorization
>>>> from
>>>> >>>>> them (c.f. our current 1.1 Apache license terms).
>>>> >>>>>
>>>> >>>>> On
>>>> >>>>>
>>>> http://www.oracle.com/technetwork/topics/oracle-open-source-faq-090399.html,
>>>> >>>>> Oracle says:
>>>> >>>>>
>>>> >>>>> "Oracle is committed to developing, supporting, and promoting
>>>> Open
>>>> >>>>> Source. Oracle has been, and continues to be, committed to
>>>> >>>>> offering choice, flexibility, and a lower cost of computing for
>>>> >>>>> end users."
>>>> >>>>>
>>>> >>>>> I don't see how disengaging from an Open Source project and
>>>> >>>>> forcing the remaining community to fork it under a new name fits
>>>> >>>>> with the above commitment of promoting and supporting Open
>>>> Source.
>>>> >>>>> It is plain contradiction and shows little respect to
>>>> >>>>> contributions made by other members of the community in the past.
>>>> >>>>> The JXTA project has always been an open source project and all
>>>> >>>>> participants have a legitimate claim on the name. I hope Oracle
>>>> >>>>> will change its mind and walk its talk.
>>>> >>>>>
>>>> >>>>> *The 'JXTA' patent* - Oracle now owns a Sun patent related to
>>>> JXTA
>>>> >>>>> (Patent N°: US 7,464,168 B1). It describes a 'system and method
>>>> >>>>> for decentralized entity presence'. The claims of this patent
>>>> >>>>> covers for many parts of the technology implemented in
>>>> JXTA/JXSE code.
>>>> >>>>>
>>>> >>>>> Several participants to the conference call requested that Oracle
>>>> >>>>> provides a written authorization to use the technology contained
>>>> >>>>> in the patent. Bernard is to investigate and follow-up on
>>>> this issue.
>>>> >>>>>
>>>> >>>>> On the other side, I am not a Lawyer, but:
>>>> >>>>>
>>>> >>>>> i) What is relevant in patents is the content of claims. The rest
>>>> >>>>> of the document has no value, but informative value.
>>>> >>>>> i) From Wikipedia (and my own experience with patents):
>>>> "Prior art
>>>> >>>>> (...) constitutes all information that has been made available to
>>>> >>>>> the public in any form before a given date that might be relevant
>>>> >>>>> to a patent's claims of originality. If an invention has been
>>>> >>>>> described in prior art, a patent on that invention is not valid."
>>>> >>>>> ii) In
>>>> >>>>>
>>>> http://www.uspto.gov/patents/resources/methods/aiplafall02paper.jsp,
>>>> >>>>> at section IV.E., the USPTO says: "Applicant's own work,
>>>> available
>>>> >>>>> to the public more than one year prior to the filing date, is
>>>> >>>>> prior art."
>>>> >>>>> iii) The JXTA patent was filed on October 19, 2004.
>>>> >>>>> iv) In July 2003, the status of the Gnutella 0.4 standard was
>>>> >>>>> already available on:
>>>> >>>>> http://rfc-gnutella.sourceforge.net/developer/index.html
>>>> >>>>> v) The Gnutella 0.4 protocol defines a ping functionality
>>>> 'used to
>>>> >>>>> actively discover hosts on the net'.
>>>> >>>>> vi) The above (v) constitutes prior art on several claims of the
>>>> >>>>> JXTA patent. Since remaining claims rely on those claims, they
>>>> >>>>> fall too in a domino pattern. What is left is insufficient in
>>>> >>>>> itself to constitute an invention.
>>>> >>>>>
>>>> >>>>> If Oracle were to refuse to provide a right to use the technology
>>>> >>>>> described in the patent, and therefore, walk their talk, it would
>>>> >>>>> be very risky for them to attempt any challenge against any user
>>>> >>>>> of the technology. I believe most court would consider the
>>>> >>>>> evidence for prior art and declare the patent invalid.
>>>> >>>>>
>>>> >>>>> Waiting for your feedback,
>>>> >>>>>
>>>> >>>>> Jérôme
>>>> >>>>>
>>>> >>>>>
>>>> >>>>> On 19/10/2010 19:10, Bernard Traversat wrote:
>>>> >>>>>>
>>>> >>>>>> It has been a long journey since Sun started the JXTA
>>>> open-source
>>>> >>>>>> project more than 10 years ago. For the past couple
>>>> >>>>>> of years, investments in the JXTA technology from Sun diminished
>>>> >>>>>> to the point where the project and contributions were
>>>> >>>>>> completely managed by external community members. As Sun, Oracle
>>>> >>>>>> has no plan to further invest in JXTA. One of the reasons
>>>> >>>>>> that we developed JXTA has an open-source project was to allow
>>>> >>>>>> the community to evolve the technology if the objective
>>>> >>>>>> of the core team were changed.
>>>> >>>>>>
>>>> >>>>>> We already started to engage community leaders to ensure a
>>>> smooth
>>>> >>>>>> transition. We will be maintaining the source repository
>>>> >>>>>> and jxta.org <http://jxta.org> <http://jxta.org/> site while
>>>> a new home for both
>>>> >>>>>> the code and supported content is investigated by the community.
>>>> >>>>>>
>>>> >>>>>> I would like to thank all those who have supported the
>>>> activities
>>>> >>>>>> of JXTA over the years, and to extend my best wishes to
>>>> >>>>>> the community for future success in their endeavor to evolve the
>>>> >>>>>> technology.
>>>> >>>>>>
>>>> >>>>>> B.
>>>> >>>>>>
>>>> >>>>>
>>>> >>>>
>>>> >>>
>>>> >>
>>>> >
>>>>
>>>>
>>>
>>
>
Re: Legal questions about moving JXTA/JXSE project to ASF
Posted by Sam Ruby <ru...@intertwingly.net>.
On Thu, Oct 21, 2010 at 3:34 PM, Jérôme Verstrynge <jv...@gmail.com> wrote:
> Dear Apache,
>
> My name is Jérôme Verstrynge and I am the lead for the latest release of
> JXTA/JXSE (2.6). Oracle has officially announced this week that it was
> withdrawing from the JXTA/JXSE project. This is something we expected to
> happen sooner or later. The community's voting is an overwhelming victory
> for Apache. I am preparing an application to join the incubator.
>
> We have a couple of legal issues we would like to discuss with you.
> - All JXTA code has been release under Apache License 1.1 (see
> https://jxta.dev.java.net/jxta_license.htm). We are currently trying to have
> it released under Apache 2.0.
> - Many parts of the code are covered by patents. Some patent are obviously
> covered by prior art, but not all.
> - The string of email below summarizes the discussion in the community.
>
> - One of our community member contacted its lawyer and says that since code
> has been released under Apache 1.1, we are safe. Do you agree?
>
> - Someone on the Apache incubator maillist said that Apache 1.1 license
> allows sub-licensing? Does it mean we could move the code under Apache
> license 2.0 if we can't obtain this from Sun/Oracle?
>
> - Someone suggested we re-engineerd existing code, but the lawyer seems to
> say we would be in grey area (c.f.,"The grey area comes where a modification
> of the existing code, in an area covered by the patents, is so important,
> that it could be considered not as a modification of the existing code
> (covered by the Apache License) but as a new implementation of what is
> covered in the patents."). Do it make sense to re-engineer that code?
>
> - Oracle/Sun is not eager to transfert the JXTA trademark. We now believe it
> has to do with the fact that this name appears in many patent applications.
> Does it mean we should pick another name to move to ASF?
Looking at the license, using the terms JXTA requires prior written
permission, and it appears that we will likely be unable to obtain
that permission. That does mean that a rename is in order.
Again looking at the license, the third clause is problematic to us.
It clearly wasn't meant to be -- it is more of a historical relic of
what people thought was a good idea at the time. That being said, a
software grant would be required for us to be able to release the code
under the Apache License, Version 2.0. (Yes, once upon a time we
relicensed our own code; but that is a different matter than taking
somebody else's code and not following the terms of the license)
As to the patent questions, I don't think they can be answered in
abstract terms; but overall I am not I see no reason for undue
concern. Others are welcome to chime in here.
- Sam Ruby
> Thanks,
>
> Jérôme Verstrynge
>
> -----------------------------------------------------------------------------------------------------------------------------------------------------------------------
>
> On 21/10/2010 9:32, Bruno Grieder wrote:
>
> On patents, here is some initial lawyer feedback (or what I understood),
> with the warning that it is coming from an European lawyer and we are
> talking about software patents, an American problem.
> -the answer is not trivial
> -Oracle's withdrawal does not affect the patent situation, in the sense that
> a new (emphasis on new) implementation of what is described in the patents
> without their consent has always been and is still a breach of their patents
> (that is true of any patent)
> -code made by Oracle released under Apache 2.0 can be freely used under the
> terms of this license (in short the current JXTA code is safe since it is
> "patented" but was released by Oracle itself under the terms of the Apache
> License).
> The grey area comes where a modification of the existing code, in an area
> covered by the patents, is so important, that it could be considered not as
> a modification of the existing code (covered by the Apache License) but as a
> new implementation of what is covered in the patents.
> IMHO, no immediate problem even fixing the current code but in the long run
> we should strive to remove pieces of code clearly covered by Oracle's
> patents.
> Another reason for doing this, is that Simon did a quick patent search
> yesterday and found quite a large number of Oracle patents related to JXTA.
> Most surprising is US patent 7,788,522 B1 by Ms. Abdelaziz and Traversat,
> Oracle being the assignee, and dated August 2010, e.g. a couple of months
> ago, although no code has been contributed by Sun/Oracle for a much, much
> longer period (two years?). That patent, like all other patents has the
> word "jxta" all over the place; that I guess, also gives another angle to
> the "trademark issue".
> b.
>
> On 20 oct. 2010, at 18:43, Jérôme Verstrynge wrote:
>
> ASF: It looks like an overwhelming victory for ASF. I'll wait until Friday
> before taking action.
>
> Patent: Again, I am not a lawyer, but I have been trough the process of
> obtaining a patent from the USPTO. I worked with Lawyers in Boston. The
> USPTO challenged our patent twice and we rebutted them twice. We finally got
> the patent.
>
> I'll repeat myself here (and check with your Lawyer if you don't believe
> me), but in a patent, the only thing that matters in court is the claims and
> the filling date. If their is prior art covering the claims, then the patent
> is invalid. In our case, their is prior art (Gnutella), hence any serious
> Lawyer would recommend Oracle (or whoever owns the patent) to not challenge
> anyone. There is no need to be scared and size does not matter in this case.
>
> On the other side, it is not because Oracle announced its withdrawal from
> JXTA that the situation was different in the first place...
>
> JXTA trademark: I don't think Oracle's decision is fair. If they don't
> change their mind, I plan to take further action. We don't have to tolerate
> and accept it this. Oracle is not standing behind its own commitment. There
> is a case to put pressure here.
>
> Jérôme
>
> On 20/10/2010 12:00, cees_pieters@wxs.nl wrote:
>
> Adrian, although I think you are right, I believe that Larry Ellison only
> likes to sue big fish, so I suspect we'll be of too little interest for
> Oracle to make JXTA an issue. Besides this JXTA has been developed with open
> source licenses from the start, so it would seem difficult (at least for me)
> to see how this could be turned back or restrained.
>
> -----Original Message-----
> From: Adrian Ivan [mailto:adrian@coena.com]
> Sent: Wed 20/10/2010 10:05
> To: dev@jxta.dev.java.net
> Subject: Re: [jxta-dev] Re: [jxta-announce] JXTA Future
>
> don't want to sound paranoic, but maybe one/more company here gets
> bigger and successful.
> these giant companies seem to be very sue happy, so we need to be
> covered from the start.
>
> adrian
>
>
>
> On 10/20/2010 10:59 AM, Bruno Grieder wrote:
>> Adrian,
>>
>> I am not a lawyer (I have one at home + a corporate lawyer; I will ask
>> and share the result);
>>
>> This is my basic understanding right now. Until yesterday, official
>> date of withdrawal of Oracle, the code use is "safe". The code was
>> released, used, modified, etc.. with their full consent and knowledge
>> under terms clearly agreed and stated by them.
>>
>> The problem lies with future modifications to areas covered to their
>> patents and the use of these.
>>
>> I would not overestimate the "danger" though. First, I still hope we
>> can get that letter and then, any "move" by Oracle will likely be
>> motivated by a business decision, not a legal decision. Right now, the
>> only business decision I can see from them, is cutting their costs down.
>>
>> b.
>> Amalto Technologies - http://www.amalto.com
>>
>> Direct/France: +33 1 83 62 39 73
>> Mobile: +33 6 33 27 46 85
>> Skype: bgrieder
>>
>> On 20 oct. 2010, at 09:27, Adrian Ivan wrote:
>>
>>> To have a clear picture,
>>>
>>> as for "business users" of jxta, ie companies that build products
>>> using jxta technology, how safe are we from the juridical point of
>>> view in regards to Oracle?
>>>
>>> Adrian
>>>
>>>> On 20 Oct 2010, at 06:25, Bruno Grieder wrote:
>>>>
>>>>> Jerôme,
>>>>>
>>>>> As you know, as a "business user" I am of those requesting a
>>>>> written authorization on patents from Oracle.
>>>>>
>>>>> I am less worried by the validity of the patent or by Oracle's
>>>>> chances of winning a patent case, than by the future possibility
>>>>> offered to Oracle of using the patent as the ground to start a
>>>>> case. They are big, and we may be "sued out" whatever the outcome
>>>>> of the case may be.
>>>>>
>>>>> During the call, I understood from the Oracle representative, that,
>>>>> -It has never been and is still not Sun/Oracle intention to
>>>>> prevent free development and free use of the JXTA technology in any
>>>>> way, and as a gesture Oracle will immediately move the license to
>>>>> Apache 2.0
>>>>> -After replacement of GlassFish 2 by GlassFish 3, Sun/Oracle will
>>>>> not be using JXTA in any of its products.
>>>>> It would therefore be very hard to understand why Oracle would not
>>>>> accept granting in writing a free and irrevocable right to use the
>>>>> patent.
>>>>>
>>>>> Oracle's patent(s) mostly cover the DHT. There are other DHT
>>>>> algorithms and ready Java implementations out there, Kademlia in
>>>>> particular (but also Tapestry, Pastry, etc...) or projects like
>>>>> Apache Cassandra that implement advanced DHT and that do not suffer
>>>>> the patent limitations above. I realize, though, that changing the
>>>>> DHT algorithm may be a big work touching very low level components
>>>>> of JXTA.
>>>>>
>>>>> I would like to hear your opinion and that of other community
>>>>> members on this but I feel we should finish stabilizing the 2.6
>>>>> branch "as is" and accelerate the design work on 3.0 since
>>>>> significant changes may be required, not to mention those required
>>>>> to match Apache requirements, should we eventually go there.
>>>>>
>>>>>
>>>>> Bruno
>>>>>
>>>>> Amalto Technologies - http://www.amalto.com <http://www.amalto.com/>
>>>>>
>>>>> On 19 oct. 2010, at 20:19, Jérôme Verstrynge wrote:
>>>>>
>>>>>> Dear all,
>>>>>>
>>>>>> We just had the conference call with Bernard prior to this
>>>>>> announcement. I have been anticipating this decision and initiated
>>>>>> some contact with the Apache Software Foundation. I registered to
>>>>>> their incubator mailing list and asked whether they would consider
>>>>>> an application from the JXTA community, the answer was:
>>>>>> In general, I would say that JXTA is more than welcome, if your
>>>>>> community thinks that is the best course of action.
>>>>>> The next step for us is to start an open decision about where to
>>>>>> migrate next and to vote. Hence, if anyone has other hosting
>>>>>> suggestions/proposals to make than ASF, please communicate it now.
>>>>>> Then we'll proceed with voting.
>>>>>>
>>>>>> Three technical issues need to be solved:
>>>>>>
>>>>>> *The licensing* - JXTA is currently operating under a modified
>>>>>> Apache 1.1 license. Bernard announced during the conference that
>>>>>> he would change this into a Apache 2.0 license on the current
>>>>>> JXTA-JXSE website. The SCA that all contributors signed allows this.
>>>>>>
>>>>>> *The 'JXTA' trademark* - It does not seem like Oracle/Sun is
>>>>>> willing to transfer or to authorize its usage to third a party,
>>>>>> although it would only require a simple written authorization from
>>>>>> them (c.f. our current 1.1 Apache license terms).
>>>>>>
>>>>>> On
>>>>>>
>>>>>> http://www.oracle.com/technetwork/topics/oracle-open-source-faq-090399.html,
>>>>>> Oracle says:
>>>>>>
>>>>>> "Oracle is committed to developing, supporting, and promoting Open
>>>>>> Source. Oracle has been, and continues to be, committed to
>>>>>> offering choice, flexibility, and a lower cost of computing for
>>>>>> end users."
>>>>>>
>>>>>> I don't see how disengaging from an Open Source project and
>>>>>> forcing the remaining community to fork it under a new name fits
>>>>>> with the above commitment of promoting and supporting Open Source.
>>>>>> It is plain contradiction and shows little respect to
>>>>>> contributions made by other members of the community in the past.
>>>>>> The JXTA project has always been an open source project and all
>>>>>> participants have a legitimate claim on the name. I hope Oracle
>>>>>> will change its mind and walk its talk.
>>>>>>
>>>>>> *The 'JXTA' patent* - Oracle now owns a Sun patent related to JXTA
>>>>>> (Patent N°: US 7,464,168 B1). It describes a 'system and method
>>>>>> for decentralized entity presence'. The claims of this patent
>>>>>> covers for many parts of the technology implemented in JXTA/JXSE code.
>>>>>>
>>>>>> Several participants to the conference call requested that Oracle
>>>>>> provides a written authorization to use the technology contained
>>>>>> in the patent. Bernard is to investigate and follow-up on this issue.
>>>>>>
>>>>>> On the other side, I am not a Lawyer, but:
>>>>>>
>>>>>> i) What is relevant in patents is the content of claims. The rest
>>>>>> of the document has no value, but informative value.
>>>>>> i) From Wikipedia (and my own experience with patents): "Prior art
>>>>>> (...) constitutes all information that has been made available to
>>>>>> the public in any form before a given date that might be relevant
>>>>>> to a patent's claims of originality. If an invention has been
>>>>>> described in prior art, a patent on that invention is not valid."
>>>>>> ii) In
>>>>>> http://www.uspto.gov/patents/resources/methods/aiplafall02paper.jsp,
>>>>>> at section IV.E., the USPTO says: "Applicant's own work, available
>>>>>> to the public more than one year prior to the filing date, is
>>>>>> prior art."
>>>>>> iii) The JXTA patent was filed on October 19, 2004.
>>>>>> iv) In July 2003, the status of the Gnutella 0.4 standard was
>>>>>> already available on:
>>>>>> http://rfc-gnutella.sourceforge.net/developer/index.html
>>>>>> v) The Gnutella 0.4 protocol defines a ping functionality 'used to
>>>>>> actively discover hosts on the net'.
>>>>>> vi) The above (v) constitutes prior art on several claims of the
>>>>>> JXTA patent. Since remaining claims rely on those claims, they
>>>>>> fall too in a domino pattern. What is left is insufficient in
>>>>>> itself to constitute an invention.
>>>>>>
>>>>>> If Oracle were to refuse to provide a right to use the technology
>>>>>> described in the patent, and therefore, walk their talk, it would
>>>>>> be very risky for them to attempt any challenge against any user
>>>>>> of the technology. I believe most court would consider the
>>>>>> evidence for prior art and declare the patent invalid.
>>>>>>
>>>>>> Waiting for your feedback,
>>>>>>
>>>>>> Jérôme
>>>>>>
>>>>>>
>>>>>> On 19/10/2010 19:10, Bernard Traversat wrote:
>>>>>>>
>>>>>>> It has been a long journey since Sun started the JXTA open-source
>>>>>>> project more than 10 years ago. For the past couple
>>>>>>> of years, investments in the JXTA technology from Sun diminished
>>>>>>> to the point where the project and contributions were
>>>>>>> completely managed by external community members. As Sun, Oracle
>>>>>>> has no plan to further invest in JXTA. One of the reasons
>>>>>>> that we developed JXTA has an open-source project was to allow
>>>>>>> the community to evolve the technology if the objective
>>>>>>> of the core team were changed.
>>>>>>>
>>>>>>> We already started to engage community leaders to ensure a smooth
>>>>>>> transition. We will be maintaining the source repository
>>>>>>> and jxta.org <http://jxta.org/> site while a new home for both
>>>>>>> the code and supported content is investigated by the community.
>>>>>>>
>>>>>>> I would like to thank all those who have supported the activities
>>>>>>> of JXTA over the years, and to extend my best wishes to
>>>>>>> the community for future success in their endeavor to evolve the
>>>>>>> technology.
>>>>>>>
>>>>>>> B.
>>>>>>>
>>>>>>
>>>>>
>>>>
>>>
>>
>
>
>
>
>
>
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