license with patent grants appropriate for specifications?

[Lawrence Rosen]

Chuck,

If I give you a license to walk along my beachfront property in Malibu, that
doesn't mean you automatically get a license to walk along my beachfront
property in Maui. Nor do you automatically get a license to walk along other
people's beachfront property. [By the way, I don't really own any beachfront
property; this is just a fantasy.] 

If I give you a license to use my patent to create standards-compliant
software, you don't automatically get a license to create non-compliant
software or a license to patents owned by third parties. In real life,
depending upon the technology at issue, you should independently evaluate
whether you actually need patent licenses from me or anyone else, and you
may ultimately decide to ignore my offer to give you a license. [By the way,
I don't really own any patents on relevant technology, so don't read into my
failure to give you a license any restriction on your actually being able to
create compliant *or* non-compliant software. From a legal perspective, you
may be perfectly free to do so, depending upon who owns patents and what
licenses they commit to offer.] 

Under open source and open standards rules and the practices of most
standards organizations, patent holders don't expressly forbid you from
creating non-compliant implementations of a standard, but neither must they
license you to do so. 

Walk upon private property at your own risk.

/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)
 

> -----Original Message-----
> From: Chuck Swiger [mailto:chuck at codefab.com]
> Sent: Saturday, January 15, 2005 9:57 AM
> To: lrosen at rosenlaw.com
> Cc: 'Ian Jackson'; license-discuss at opensource.org
> Subject: Re: license with patent grants appropriate for specifications?
> 
> Lawrence Rosen wrote:
> >> As I wrote earlier, the patent licence must extend at least to
> >> noncompliant Open Source derivatives of an original compliant
> >> implementation.  Otherwise the software is not Open Source because the
> >> community is not free to make and distribute modified versions.
> >
> > Not as I see it. To be compatible with open source, the patent license
> must
> > at least extend to the creation of conforming implementations, and it
> must
> > not forbid non-conforming implementations. On a case-by-case basis,
> > additional patent licenses may be needed from the original licensor or
> from
> > third parties for non-conforming applications.
> 
> What you say here is true, but if the original software is OSD-compliant,
> then
> the patent license(s) for the original software need also be freely
> available
> to non-conforming applications.  OSD #3 states: "The license must allow
> modifications and derived works, and must allow them to be distributed
> under
> the same terms as the license of the original software."
> 
> If the original software involves material for which a patent license is
> needed, that patent license must be freely available or else the original
> software itself could not be Open Source (per OSD #1).  If a free patent
> license was available for the original work, that same free patent license
> must also be available for derived works per OSD #3.
> 
> There exist no qualifiers to OSD #3 which would allow an OSD-compliant
> license
> to exclude some derivative works, whether on the basis of standards-
> compliance
> or for any other reason. [1]  However, now that I think about it, perhaps
> OSD
> #4 could be used to mitigate against the problem of people releasing
> deliberately non-compliant derivatives of Open Source Software.
> 
> *ahem*  I wasn't thinking of Microsoft when I mentioned people just now,
> and
> Sun's Java isn't currently Open Source, but for the sake of example: if
> Java
> was licensed so that OS vendors redistributing Java had to provide the
> source
> for an unmodified, standards-compliant JVM and any changes to that JVM as
> external patch files, perhaps that would be enough to satisfy Sun's
> concerns
> about people being stuck with non-standard JVM's.
> 
> Or perhaps not-- I am not qualified or in the position to evaluate Sun's
> position and IP concerns with regard to Java-- but my point is that the
> OSD
> will permit licenses to take measures to ensure that the original
> standards-compliant version of software is always available to end-users
> who
> want it.  And if the end-users prefer a non-standards-compliant modified
> version of that software, well, that's just fine, too: enabling users to
> decide for themselves which software they prefer to use is a core freedom
> that
> both Open Source and Free Software agree upon.
> 
> --
> -Chuck
> 
> [1]: I am not including the case where open source software is modified to
> include patented works from non-open source software.  The OSD
> requirements
> would obviously not apply to those patent licenses.  :-)