Suggested addition to the open-source definition

Mon Apr 24 14:48:15 UTC 2006

Good morning Matthew,

You raise an interesting point - one certainly worthy of debate as there is
significant disagreement in the open source community about the legitimacy
of software patents (or patents in general for that matter), and what patent
rights an open source licensor should be able to exercise against its open
source licensees and vice-versa.  The most problematic aspect of the draft
GPL v 3 is its glaring attempt to coerce down-stream licensors
(sub-licensors) to license their entire patent portfolios, even if those
patents have nothing to do with the modified version of the software
licensed by those sub-licensors.  I do not intend to debate the GPL 3.0 here
as I do not know if this is the appropriate forum.  However, my point is
that opinions in the open source community vary widely on patent issues.

You proposed the following language as a possible solution to the software
patent issue:

>11. License must not restrict non-software related rights

>The license must not restrict the licensee's ability to exercise rights 
>unrelated to the field of software, and any copyright license must not 
>automatically terminate upon the exercising of these rights.

Your thesis is that open source software licenses should not be used as a
weapon to defend other IP rights.  In other words, if company "A" asserts
its "non-software" patents against company "B", company A's license to
company B's open source software should not terminate.  

I am not sure that your proposed language solves the problem you pose.  Nor
am I certain that your thesis is necessarily sound for all licenses.  

First, what does the phrase "unrelated to the field of software" mean?  Are
the mechanisms upon which software is executed unrelated, or related to the
field of software?  After all, one cannot execute software in a vacuum. 

Second, is company B restricting company A's ability to exercise rights
"unrelated to the field of software" if the terms of the open source license
automatically terminate upon A's assertion of patent rights against B?
Technically, company B cannot prevent company A from practicing the
inventions disclosed in company A's patents (unless company B also has
patents "unrelated to the software field" that relate to company A's
patents).  Company B can prevent company A only from using company B's open
source software.  

Third, the language of your proposed Section 11 goes beyond the patent arena
and would preclude the automatic termination of the license in the case of
copyright infringement, trademark infringement, trade secret theft, etc.
Are you proposing that company A should be able to steal company B's trade
secrets without suffering an automatic termination of the license?  I doubt
this is what you intend.

Fourth, in most circumstances company A is in control of its technology
plan.  Company A chose to use company B's software under an open source
license either because the software was superior to anything else in the
market, the price was right, or it did not want to re-create the wheel.
Company A could instead have chosen to develop its own solution, to license
a solution from a third party, or to license company B's solution under a
commercial, royalty-bearing license.  Company A also is in a position to
determine whether it's continued use of company B's software under an open
source license is more important than asserting its patent or other IP
rights against B.  Company A has the freedom to either forgo the IP suit, or
to replace company B's open source software before it initiates a suit
against B.  What you are in effect proposing is that company A should be
able to assert patents, copyrights and any other IP rights against company B
while continuing to benefit from company B's investment in the open source
software.

Fifth, you may be thinking of situations in which a fortune 500 or other
large publicly traded firm is company B (given your example using Apple).
What if company B has 10 employees and revenues of $1M, while company A is
Microsoft?  Microsoft could continue using company B's software to make
millions while it buries company B in insurmountable legal expenses...

I would like to discuss this issue in greater depth as there may be
reasonable restrictions on patent enforcement that a majority of those in
the open source community can reasonably adopt.  I do not think that the
community as of yet is near any such resolution.  Maybe it never will be,
but a rounded discussion could help to raise the community's awareness of
the multifaceted nature of the issue...   

Thanks for your post!

Dave
David A. Temeles, Jr.
Temeles & Temeles, PC
703.354.7905 x 230 (Tel)
703.354.7905 (Fax)
dtemeles at nvalaw.com
1616 Anderson Road, Suite 101
McLean, VA 22102

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-----Original Message-----
From: Matthew Garrett [mailto:mjg59 at srcf.ucam.org] 
Sent: Monday, April 24, 2006 9:03 AM
To: license-discuss at opensource.org
Subject: Suggested addition to the open-source definition

I can't find any other list mentioned on opensource.org that seems more 
appropriate for this, so:

11. License must not restrict non-software related rights

The license must not restrict the licensee's ability to exercise rights 
unrelated to the field of software, and any copyright license must not 
automatically terminate upon the exercising of these rights.

Rationale
---------

>From section 12.1 of the APSL 2.0:

12.1 Termination. This License and the rights granted hereunder will
terminate:

(c) automatically without notice from Apple if You, at any time during
the term of this License, commence an action for patent infringement
against Apple; provided that Apple did not first commence
an action for patent infringement against You in that instance.

No restriction is made to the field of software. Apple is a hardware 
manufacturer - it is not implausible that they are violating some number 
of non-software patents. However, anyone seeking to protect their 
intellectual property against Apple loses the right to use APSLed 
software.

While many people perceive software patents as having a chilling effect 
on the industry (especially the open source areas of it), far fewer seem 
to believe that the patent system itself is unacceptable. Open source 
licenses should not be used to protect unrelated intellectual property 
or make wider political points, and copyright licenses that terminate 
when the user does something perfectly reasonable and morally acceptable 
should be rejected.

Note that I'm not calling for non-copyright grants to be irrevokable - 
allowing for patent grants to be terminated in response to a patent suit 
seems reasonable. But as it is, using software under the APSL 2.0 
effectively requires a limited patent grant to Apple.

-- 
Matthew Garrett | mjg59 at srcf.ucam.org