[License-discuss] Views on React licensing?

Tzeng, Nigel H. Nigel.Tzeng at jhuapl.edu
Tue Dec 13 17:02:11 UTC 2016

MIT may be considered a single legal entity but is composed of many different colleges, laboratories, etc with their own office of tech transfer.   While supporting open source is valuable so is supporting entrepreneurs and IP policies at research universities will have to support both.  Universities, researchers and entrepreneurs depend on IP protection for both revenue and grants.

The issues are covered in the ECL v2 discussions from 2006 and apply also to the USG.  They are covered on page 12 of the report:

"Two outputs of the Summit addressed these concerns: the ECL 2.0 outbound license and the new form of institutional contribution agreement. These revisions were designed to accommodate concerns about the reach of the patent license provisions in the contributor agreement. The patent license provision was modified so that no license would be granted to patents developed by anyone other than the author of the contribution, and also to recognize the possibility that there may be funding agreements or other prior commitments that limit the institution's flexibility to grant a license.

While these licenses represent progress, they also reflect some policy decisions by participating institutions that bear long-term thought. For example, a license to patents that arise only out of the work of contributors to the project does not cover patents that arise out of other work at the university, reflecting a choice to protect the ability of individual inventors at the university, and the ability of the university itself, to benefit from the commercialization of the patent, where licensing these patents in connection with community projects may be beneficial to the community as a whole."


I don't have any software patents.  I don't support software patents.  But I am very very disinclined to give away another researcher's software patents just because I open sourced code and my OTT didn't realize that it tread on a patent that someone else at the university created.  ECL v2 is designed to make this impossible to do accidentally.

From: License-discuss <license-discuss-bounces at opensource.org<mailto:license-discuss-bounces at opensource.org>> on behalf of John Cowan <cowan at ccil.org<mailto:cowan at ccil.org>>
Reply-To: License Discuss <license-discuss at opensource.org<mailto:license-discuss at opensource.org>>
Date: Monday, December 12, 2016 at 5:47 PM
To: "lrosen at rosenlaw.com<mailto:lrosen at rosenlaw.com>" <lrosen at rosenlaw.com<mailto:lrosen at rosenlaw.com>>
Cc: License Discuss <license-discuss at opensource.org<mailto:license-discuss at opensource.org>>
Subject: Re: [License-discuss] Views on React licensing?

On Mon, Dec 12, 2016 at 4:16 PM, Lawrence Rosen <lrosen at rosenlaw.com<mailto:lrosen at rosenlaw.com>> wrote:

If Yoyodyne or Soylent sue MIT because they had previous exclusive patent licenses or contracts, that is court fun for them. It doesn't involve me.

Agreed.  I only mentioned this hypo to defend my claim that if MIT can't keep track of what they have licensed to whom, the word "incompetent" is fit for purpose, not in any specifically legal sense but in the sense of not being ordinarily prudent in the management of their property.  MIT would get a short sharp shock if they tried to sell the same piece of real estate to two different purchasers on the grounds that proper records were too expensive to maintain.

[<LER>] I would tell Yoyodyne to take up their dispute with MIT. I'm not a party. The worldwide open source user community is not a party to some secret exclusive deal between Yoyodyne and MIT.

Now this I do not understand.  If Yoyodyne is the exclusive licensee, then surely it has the right to sue/enjoin you as a user of their patented technology, and your claim to have a subsequent license from the former patent holder isn't going to help you, particularly if that former patent holder disclaims it.  This follows from the fact that if Charlie writes a program that unknowingly infringes Alice's patent and then allow Bob to use it, Alice can take action against either Bob or Charlie.  In this case, MIT is Charlie, and the fact that MIT originally handed over the patent to Alice shouldn't matter: when Alice asks for one more nickel, Charlie won't be able to get off the train.

I know that it's not typical for a patent holder to sue Bobs who merely use a patented article that they obtain from a non-licensed manufacturer, but that's a matter of it being economically inefficient to sue a huge list of known and unknown customers, not a derogation of their right to do so.

John Cowan          http://vrici.lojban.org/~cowan        cowan at ccil.org<mailto:cowan at ccil.org>
Knowledge studies others / Wisdom is self-known;
Muscle masters brothers / Self-mastery is bone;
Content need never borrow / Ambition wanders blind;
Vitality cleaves to the marrow / Leaving death behind.    --Tao 33 (Bynner)

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