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Posted to legal-discuss@apache.org by Jeffrey Thompson <jt...@us.ibm.com> on 2005/04/03 22:25:00 UTC
RE: Apache License : grant of patent license and derivative works
"William A. Rowe, Jr." <wr...@rowe-clan.net> wrote on 03/31/2005 01:10:19
PM:
> I see that the ASL clause doesn't include derivative language;
>
It doesn't cover all possible derivative works. As was pointed out
earlier, open source licenses (with one notable exception that I'm aware
of) don't provide patent grants that cover all possible derivative works.
Open source licenses that don't have an explicit patent grant in them
(such as the modified BSD license) rely on an implied patent license.
While the exact scope of the implied license isn't certain, it would
likely only cover only those uses of the code specifically intended --
probably only the project to which it was directly contributed. The
current ASL language provides much better patent coverage. It covers not
only the original code in the original project, but it covers all
derivatives of that code in any ASL licensed project. Theoretically, one
could ask for a patent grant which was unlimited, but no major project
does that.
The current ASL license provides greater rights in this respect than the
GPL, EPL, BSD, SISSL, and many others I can't think of off the top of my
head.
> Three things occur to me;
>
> *) We are missing the derivative clause for patents. If we did add
Its missing only if it should be there and it isn't.
> this in the ASL 2.1 or 3.0, contributors have agreed to be bound
> to the language of future licenses. But it seems that due to how
> narrowly and specifically this clause was written, would a revised
> clause 3. be sufficient to bind previous patent contributions?
The precise effect of a license upgrade provision is uncertain when the
new license asks for broader rights than the original. I'd be surprised,
however, if that worked.
>
> *) Does the fact that this was narrowly written actually increase
> the position of the patent holder, to the detriment of the user?
> Were it better had we said nothing about patents, v.s. this
> specific language?
I don't think so. The implied patent licenses are likely not that broad.
If any of the other lawyers on the list have a case or two on point,
that'd be appreciated, because I don't have one.
>
> *) Why did we limit the impact of the self-destruct clause within
> the patent license to terminating patent licenses alone? If we
> spark GTW (global thermonuclear war, a running joke among members)
> why would we explicitly preserve their copyright license grants?
My understanding of the intent of that limitation was specifically to
avoid GTW. If there is a patent claim, the defensive suspension is
limited to the patent licenses. People would still have their copyright
licenses, with the options to modify the code if necessary to avoid the
patents at issue (which is what we want if there is a blow-up about
patents). To pull the copyright licenses too seems to me to be much too
onerous. The user is faced with, not rewriting a few modules to avoid a
patent, but replacing the entire ASF licensed project. That might not
even be possible. A commercial entity, especially a smaller one, might
not be able to survive that. In the end, I guess it is how ruthless does
the ASF want to be.
Jeff
Staff Counsel, IBM Corporation (914)766-1757 (tie)8-826 (fax) -8160
(notes) jthom@ibmus (internet) jthom@us.ibm.com (home) jeff@beff.net
(web) http://www.beff.net/
RE: Apache License : grant of patent license and derivative works
Posted by Lawrence Rosen <lr...@rosenlaw.com>.
Niclas Hedhman asked:
> What is the reasoning behind "to that software" and not "to all ASF
> software" ?? After all, there isn't many organizations in the world that
> is
> free of ASF software, which would make a great deterent...
The theory is that the licensee knows, when he in-licenses software, that he
better not assert that *that software* infringes his patents. He can compare
the value of *that software* to the value of *his patents infringed by that
software*. There would be no easy way to assess the risk if it applied to
*any ASF software* including software he doesn't even use. He might conclude
that it is better to avoid ASF software entirely.
But you're right.... If you want the strongest deterrent, that's what you
would do. I believe, however, that tying things to the particular software
is a reasonable compromise between "ruthlessness" and "toothlessness."
/Larry Rosen
> -----Original Message-----
> From: Niclas Hedhman [mailto:niclas@apache.org]
> Sent: Sunday, April 03, 2005 8:06 PM
> To: legal-discuss@apache.org
> Subject: Re: Apache License : grant of patent license and derivative works
>
> On Monday 04 April 2005 09:59, Lawrence Rosen wrote:
> > The entire license to that software, both copyright and patent grants,
> > should terminate.
>
> What is the reasoning behind "to that software" and not "to all ASF
> software" ?? After all, there isn't many organizations in the world that
> is
> free of ASF software, which would make a great deterent...
>
> Cheers
> Niclas
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Re: Apache License : grant of patent license and derivative works
Posted by Niclas Hedhman <ni...@apache.org>.
On Monday 04 April 2005 09:59, Lawrence Rosen wrote:
> The entire license to that software, both copyright and patent grants,
> should terminate.
What is the reasoning behind "to that software" and not "to all ASF
software" ?? After all, there isn't many organizations in the world that is
free of ASF software, which would make a great deterent...
Cheers
Niclas
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RE: Apache License : grant of patent license and derivative works
Posted by Lawrence Rosen <lr...@rosenlaw.com>.
William Rowe asked:
> *) Why did we limit the impact of the self-destruct clause within
> the patent license to terminating patent licenses alone? If we
> spark GTW (global thermonuclear war, a running joke among members)
> why would we explicitly preserve their copyright license grants?
Jeff Thompson answered:
My understanding of the intent of that limitation was specifically to avoid GTW. If there is a patent claim, the defensive suspension is limited to the patent licenses. People would still have their copyright licenses, with the options to modify the code if necessary to avoid the patents at issue (which is what we want if there is a blow-up about patents). To pull the copyright licenses too seems to me to be much too onerous. The user is faced with, not rewriting a few modules to avoid a patent, but replacing the entire ASF licensed project. That might not even be possible. A commercial entity, especially a smaller one, might not be able to survive that. In the end, I guess it is how ruthless does the ASF want to be.
Lawrence Rosen adds his two-cents:
I don’t see it as “ruthless.” ASF owns no patents and so terminating a patent license when ASF is sued for patent infringement is not much of a threat. I view the current license as “toothless.” Unlike IBM, ASF does not have an enormous patent portfolios and cannot afford patent litigation. FWIW, I believe that our software copyrights should be used protect us from any commercial entity – large or small – who sues ASF or its customers alleging that ASF software infringes a patent. The entire license to that software, both copyright and patent grants, should terminate.
/Larry
Lawrence Rosen
Rosenlaw & Einschlag, technology law offices (www.rosenlaw.com)
3001 King Ranch Road, Ukiah, CA 95482
707-485-1242 ● fax: 707-485-1243
Author of “Open Source Licensing: Software Freedom
and Intellectual Property Law” (Prentice Hall 2004)
________________________________________
From: Jeffrey Thompson [mailto:jthom@us.ibm.com]
Sent: Sunday, April 03, 2005 1:25 PM
To: William A. Rowe, Jr.
Cc: legal-discuss@apache.org
Subject: RE: Apache License : grant of patent license and derivative works
"William A. Rowe, Jr." <wr...@rowe-clan.net> wrote on 03/31/2005 01:10:19 PM:
> I see that the ASL clause doesn't include derivative language;
>
It doesn't cover all possible derivative works. As was pointed out earlier, open source licenses (with one notable exception that I'm aware of) don't provide patent grants that cover all possible derivative works.
Open source licenses that don't have an explicit patent grant in them (such as the modified BSD license) rely on an implied patent license. While the exact scope of the implied license isn't certain, it would likely only cover only those uses of the code specifically intended -- probably only the project to which it was directly contributed. The current ASL language provides much better patent coverage. It covers not only the original code in the original project, but it covers all derivatives of that code in any ASL licensed project. Theoretically, one could ask for a patent grant which was unlimited, but no major project does that.
The current ASL license provides greater rights in this respect than the GPL, EPL, BSD, SISSL, and many others I can't think of off the top of my head.
> Three things occur to me;
>
> *) We are missing the derivative clause for patents. If we did add
Its missing only if it should be there and it isn't.
> this in the ASL 2.1 or 3.0, contributors have agreed to be bound
> to the language of future licenses. But it seems that due to how
> narrowly and specifically this clause was written, would a revised
> clause 3. be sufficient to bind previous patent contributions?
The precise effect of a license upgrade provision is uncertain when the new license asks for broader rights than the original. I'd be surprised, however, if that worked.
>
> *) Does the fact that this was narrowly written actually increase
> the position of the patent holder, to the detriment of the user?
> Were it better had we said nothing about patents, v.s. this
> specific language?
I don't think so. The implied patent licenses are likely not that broad. If any of the other lawyers on the list have a case or two on point, that'd be appreciated, because I don't have one.
>
> *) Why did we limit the impact of the self-destruct clause within
> the patent license to terminating patent licenses alone? If we
> spark GTW (global thermonuclear war, a running joke among members)
> why would we explicitly preserve their copyright license grants?
My understanding of the intent of that limitation was specifically to avoid GTW. If there is a patent claim, the defensive suspension is limited to the patent licenses. People would still have their copyright licenses, with the options to modify the code if necessary to avoid the patents at issue (which is what we want if there is a blow-up about patents). To pull the copyright licenses too seems to me to be much too onerous. The user is faced with, not rewriting a few modules to avoid a patent, but replacing the entire ASF licensed project. That might not even be possible. A commercial entity, especially a smaller one, might not be able to survive that. In the end, I guess it is how ruthless does the ASF want to be.
Jeff
Staff Counsel, IBM Corporation (914)766-1757 (tie)8-826 (fax) -8160
(notes) jthom@ibmus (internet) jthom@us.ibm.com (home) jeff@beff.net
(web) http://www.beff.net/
---------------------------------------------------------------------
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only, are not privileged and do not constitute legal advice.
---------------------------------------------------------------------
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