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

[Shuji Sado]

Pamela-san and All,

I have been translating almost all of this discussion into Japanese as I
work through it, and it has been a genuinely deep discussion. It has also
been costing me a little sleep lately. :)

I think Pamela-san's latest message usefully identifies the philosophical
divide, but Mike's clarification of the scope of the trigger makes me
wonder whether the choice is quite as binary as it first appears.

Mike has now clarified that "indirectly" in Section 5 is intended to refer
to secondary liability, such as a claim that making, using, or distributing
the Model Materials contributes to infringement by others. He also
clarified that OpenMDW-1.1 does not reach back to artifacts used in
creating the model unless those artifacts are themselves included in the
subsequently published Model Materials.

That distinction matters to me.

A claim that copyrighted material was unlawfully acquired or copied during
training is not, by itself, the same as a claim that the resulting Model
Materials directly or indirectly infringe copyright. So, on Mike's stated
interpretation, the picture in which an ordinary creator sues merely over
unauthorized use of their work in training and therefore loses the OpenMDW
license seems broader than the intended scope of the trigger.

The trigger is instead directed at claims against the licensed Model
Materials themselves, whether as direct infringement or under a theory of
secondary liability. And when I look at that narrower relationship, I still
have difficulty finding a reason why copyright should be categorically
different from patent.

Suppose the copyright holder of novel A is using model X under OpenMDW, and
then sues the provider asserting that model X itself infringes the
copyright in novel A. The copyright claim does not disappear. The plaintiff
remains free to pursue the claim and seek whatever remedies are available.
What terminates are the OpenMDW grants the plaintiff received with respect
to those Model Materials.

In that situation, I am not sure Open Source principles require the
plaintiff to continue receiving permission to copy, modify, and distribute
the same Model Materials that the plaintiff is asserting are infringing. I
also do not think recognizing this necessarily leads to the broader
position that any legal claim involving licensed materials may properly
trigger termination.

Yokoi-san's question and Mike's answer help here as well. OpenMDW grants
rights relating to copyright, patent, database rights, and trade secrets,
but database-right and trade-secret claims do not trigger termination. Mike
explained that the trigger was not designed simply to mirror every right in
the grant, but rather around the realistic litigation threats faced by
openly published model materials.

So perhaps the limiting principle need not be either "patents are
historically special" or "any claim against licensed materials may trigger
termination." Richard-san's historical point may explain why patent
termination developed first, but I am not sure that history by itself
establishes a categorical boundary for what may be acceptable today.

I am increasingly inclined toward a more general principle:

A defensive termination provision may be acceptable where the assertion is
directed at the licensed subject matter itself, provided that the scope and
consequences of the termination are reasonably related and proportionate to
that assertion.

This would not make every type of litigation a permissible trigger. It
would instead ask whether there is a sufficiently close nexus between the
assertion and the licensed subject matter, and whether the termination goes
no further than is reasonably justified by that assertion. To me, that
seems more durable than drawing the line solely according to whether the
asserted right is a patent or a copyright.

--
Shuji Sado
Chairman, Open Source Group Japan
https://opensource.jp/
English blog: https://shujisado.org/
Japanese blog: https://shujisado.com/


2026/9/3 8:46 Pamela Chestek <pamela at chesteklegal.com>:

> 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
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> pamela at chesteklegal.com
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