[License-review] For Approval: OpenMDW License Agreement, versions 1.1 (OpenMDW-1.1)

[Pamela Chestek]

On 9/2/2026 3:39 PM, McCoy Smith wrote:
> On 9/1/2026 3:34 PM, Richard Fontana via License-review wrote:
>> On Tue, Sep 1, 2026 at 5:56 PM Josh Berkus <josh at berkus.org> wrote:
>>
>>     I'll stand by my claim, though, that any argument that can be made
>>     against the principle* of a copyright antisuit provision applies
>>     equally
>>     to a patent one.  And that if OSI decides that the former isn't
>>     OSI-compliant, then the latter isn't either, and we're going to
>>     need to
>>     revisit a lot of licenses.
>>
>>
>> This is clearly one of the questions the OSI needs to resolve: is 
>> there something special about copyright? Or is there something 
>> special about patent?
>>
>> In terms of historical precedent, I think we can leave the 
>> long-abandoned OCLC license aside as a likely case where the early 
>> OSI wasn't thinking about things as carefully as the present-day OSI 
>> would (that's about as charitable as I'm willing to be here). Having 
>> looked at the OCLC license-discuss thread the other day, I don't 
>> think anyone paid any attention to the litigation termination 
>> provision. I wonder actually if some of the license-discuss 
>> participants noticed it but thought "intellectual property" was 
>> synonymous with "patent", but I don't think any of the participants 
>> were on the board at the time other than Russ Nelson. I seriously 
>> think it's not beyond the realm of possibility that the OCLC lawyers 
>> who *drafted* the license sincerely thought "intellectual property 
>> infringement litigation" was synonymous with "patent infringement 
>> litigation".
>>
>> The OSI should also think about the other side of the question. If a 
>> copyright trigger for license termination (including copyright 
>> license termination) is okay in addition to a patent litigation 
>> trigger, what about other kinds of claims? Trademark infringement? 
>> Trade secret? What about claims concerning things having no 
>> connection to the software (or model, etc.) being licensed? 
>> Shareholder litigation? Personal injury? Employment discrimination?
>>
>> The IBM Public License says:
>>
>> "If Recipient institutes patent litigation against a Contributor with 
>> respect to a patent applicable to software (including a cross-claim 
>> or counterclaim in a lawsuit), then any patent licenses granted by 
>> that Contributor to such Recipient under this Agreement shall 
>> terminate as of the date such litigation is filed."
>>
>> Assuming the OSI would consider this acceptable in an open source 
>> license today, what if instead it said:
>>
>> "If Recipient institutes copyright litigation against a Contributor 
>> with respect to a copyright applicable to software (including a 
>> cross-claim or counterclaim in a lawsuit), then any copyright 
>> licenses granted by that Contributor to such Recipient under this 
>> Agreement shall terminate as of the date such litigation is filed."
>>
>> Surely that would not be okay ... would it?
>>
> Litigation termination triggers seem to be the one area where the 
> discussion is converging on: what sort of litigation can properly 
> terminate grants in a license, and what grants can be terminated?
>
> So: can patent litigation trigger termination? That's a fairly common 
> trigger. Against what? The example above from the IBM public license 
> (OSI-approved https://opensource.org/license/IPL-1.0) the trigger 
> applies to any patent litigation "applicable to software." I think 
> this sort of broad trigger is, to put it mildly, disfavored. What 
> about what's in the currently pending ModelGo-Attribution-2.0 license:
> "This License shall terminate immediately ... if You initiate any 
> legal action against the Licensor alleging that the Licensed Materials 
> and/or Derivative Materials infringe any patent worldwide."
> I believe many feel that extending the trigger to Derivative Materials 
> (i.e., things beyond that which the patent holder has licensed under 
> the license) is also too broad (and most of the popular licenses 
> explicitly or implicitly are not triggered by patent claims against 
> derivative works.
>
> As to Richard's question, I don't see where the trigger in OpenMDW-1.1 
> is "concerning things having no connection to the software (or model, 
> etc.) being licensed." OpenMDW-1.1's trigger says:
> "If you file, maintain, or voluntarily participate in a lawsuit 
> against any person or entity *asserting that the Model Materials 
> directly or indirectly infringe any patent or copyright,* then all 
> rights and grants made to you hereunder are terminated, unless that 
> lawsuit was in response to a corresponding lawsuit first brought 
> against you."
>
> The license grants copyright and patent rights, and the trigger is a 
> reciprocal assertion of those same rights, and both apply to the Model 
> Materials, which is what the licensor licenses and the licensee is 
> licensed to. And unlike, say, ModelGo-Attribution, the assertion in 
> OpenMDW-1.1 must be against the "Model Materials" which are defined as 
> "the materials provided to you under this agreement," not what you 
> were licensed plus anything else that is subsequently created.
>
> If people think that patent triggers are OK (and possibly that patent 
> triggers can, as in MPLv2 & GPLv3, terminate other rights, like 
> copyright), and copyright triggers are not, that's OK, and we've had 
> people try to articulate why they believe it is philosophically 
> different, but I'm not sure it leads to a slippery slope where *any* 
> sort of trigger must therefore be permissible. And I wonder how that 
> same rationale would deal with the ModelGo-Attribution-2.0 trigger.
>
I believe we are seeing a philosophical divide. I wouldn't consider the 
more expansive view a slippery slope, but it is more generous to the 
licensor because of the philosophical underpinnings.

On one side we have the view that, if you use the fruit of my labor, 
it's only fair that in exchange you not sue me. If that's the accepted 
rationale for the trigger, then as a matter of logic it should be a 
valid position for any kind of claim against the licensed materials, 
whether copyright, trade secret, patent, database, moral rights, etc. 
The further extension that Richard identified was that any claim against 
the licensor, i.e., what Facebook's BSD + Patent license tried to do, 
could also be fair game. That could be a slippery slope, but I don't 
think anyone is advocating for this expansion.

The other side of the divide is the one that believes patents are a 
special case with logic that doesn't extend beyond patents, as 
articulated in different ways by different people for different reasons.

So the question is -- which is the better path?

Just to clarify a statement you made, the OpenMDW grants patent, 
copyright, trade secret and database rights, but only infringement of 
the patent and copyright rights are a trigger.

On the ModelGo license question about Derivative Works, I don't think 
that's particularly relevant to this license, because the OpenMDW 
license doesn't take that position. It might be easier to just stick to 
the issues presented in the OpenMDW license.

Pam


Pamela S. Chestek
Chestek Legal
4641 Post St.
Unit 4316
El Dorado Hills, CA 95762
+1 919-800-8033
pamela at chesteklegal.com
www.chesteklegal.com
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