Suggested addition to the open-source definition

[David A. Temeles, Jr.]

Good evening Matthew:

My apologies for the delayed response (interspersed below)


-----Original Message-----
From: Matthew Garrett [mailto:mjg59 at srcf.ucam.org] 
Sent: Monday, April 24, 2006 11:32 AM
To: David A. Temeles, Jr.
Cc: license-discuss at opensource.org
Subject: Re: Suggested addition to the open-source definition


DAT wrote:
> 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.  

MG Responded: Indeed.
_________________________________________________________________________
DAT wrote:
> 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. 

MG Responded:
I'll be the first to admit that the wording needs work. I'd consider the 
line to be whether the rights can be considered to be attached to the 
software itself, or the rights absolutely necessary to use that 
software, but would welcome suggestions on this point.

DAT Replies: We will need to finish fleshing out the issue before I can
properly suggest alternate language...

________________________________________________________________________

DAT Wrote:
> 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?

MG Responded:
If those patent rights are unrelated to software, then I'd think so. The 
second clause was intended to clarify that.

DAT Replies: 
Matthew, I think you missed my point, or I made an incorrect assumption
about what you were saying in the first place.....  Let me be more direct
and restart with your proposed language:

"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."

I understood you to imply that a clause that automatically terminates a
software license upon the Licensee's assertion of IP rights against the
Licensor, with the rights being unrelated to the field of software,
constitutes a restriction on the Licensee's ability to exercise those IP
rights.  Technically, I do not agree with this assertion.  The automatic
termination clause prohibits the assertion of the IP against the Licensor
(and in some cases any downstream user of the software) only for so long as
the Licensee continues to use the licensed software.  The license does not
actually prohibit the Licensee's use of the IP - it merely says that if the
Licensee desires to use the IP against the Licensor (or in some cases,
downstream users), then the Licensee is in effect choosing to terminate the
license.

Contrast this, however, with the GPLv3's assertion of an express patent
license from the Licensee.  If a Licensee redistributes the software or
distributes a modified version of the software, then the Licensee is deemed
to grant all downstream and upstream users a license under all present and
future patent claims owned or licensed by the Licensee.  The express patent
license granted by the Licensee does not: i) limit the scope of the claims
licensed to those that would be infringed by the modified software at the
time it was released by Licensee; ii) limit the scope of how the patent
rights may be implemented - the license grants all users the right to use
the patent claims in running, modifying, copying or distributing the
software, among other things; or iii) appear to terminate upon the
Licensee's termination of the software license (e.g., by suing the Licensor
for patent infringement).  This express license appears to constitute a far
greater restriction on, or dimunition of a Licensee's patent portfolio than
the automatic termination of the license.  

__________________________________________________________________________ 

DAT Wrote:
> 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.

MG Replied:
An interesting question. To a large extent, yes, that is what I intend. 
The legal system already provides protection for that eventuality - I 
don't believe open source licenses should also be attempting to do so. 
But I'm somewhat less concerned about those issues, and can see the 
other side of the argument - a license with a clause along the lines of 
"If you commit a legal offense against the licensor, this license will 
be immediately terminated" wouldn't strike me as terribly offensive.

I think that's somewhat covered by the existing language. I don't 
believe there's a right to trademark infringement or theft of trade 
secrets.

DAT Responds:
There is no right to trademark infringement or to steal trade secrets - but
we may simply have a disagreement over the timing of the termination on this
one.  I do not think that it is either fair or equitable to prohibit a
software developer from terminating a license, automatically or by
discretion, when the Licensee is suing the Licensor.  I'll address my
reasons in response to the next point.
_________________________________________________________________________

DAT Wrote:
> 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.

MG Replied:
That's precisely what I'm proposing, and I think that that's part of 
what has defined the open source movement. Historically, the only 
real restrictions that have been considered acceptable are ones that are 
seen to either benefit or protect the open source community (such as 
copyleft or the MPL's patent license termination), with restrictions 
that benefit the original software (such as the QPL's grant of a 
reciprocal license for modifications). Language like the APSL's goes 
much further than that. The cost of a patent license to Apple is 
arguably much greater than the cost of any given piece of software under 
the APSL to someone else - in the typical case, there is a large 
disparity in the value of what is given and received.

DAT Responds:

"Historically, the only real restrictions that have been considered
acceptable are ones that are seen to either benefit or protect the open
source community" - I do not see how an automatic termination of a single
Licensee's license would harm the open source community.  In fact, such
language may increase the community's protection because it would give the
Licensee/patentholder pause to think before asserting the patents against
the Licensor or anyone else using the software.

I assume that you are saying that the value of a patent license granted to
Apple by a Licensee is worth more to Apple than the value of the software
license is to the Licensee.  This should not be true.  In weighing the
decision to use open source software v. proprietary software, the Licensee
should add the value of any patent license granted to the Licensor (and
possibly other users) into the cost of the open source solution.  (This is
one of the main problems with mandatory Licensee patent grants in open
source licenses - the opportunity costs can render the open source solution
far more expensive than the cash consideration demanded by proprietary
vendors.)  A Licensee would license the software and agree to the mandatory
patent grant only if the opportunity cost to the Licensee of the grant is
equal to or less than the value of the software license to the Licensee. 
_________________________________________________________________________

DAT Wrote:
> 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...

MG Replied: 
I agree that this is a real issue, and agree that reformation of certain 
more irritating aspects of the US legal system would be beneficial. I'm 
not convinced that using open source licenses is the right way to 
attempt to avoid those issues, though.

DAT Responds:
The Licensor cannot reform the US legal system.  The required reformation
will take many years, many billions of dollars, and the agreement of a large
number of citizens, businesses and politicians.  However, the Licensor can
structure the software license to provide it with some protection should the
Licensee decide to go after the Licensor.
_________________________________________________________________________
DAT Wrote:
> 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...   

MG Replied:

I entirely agree.
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Enjoy the evening,

Dave Temeles