<!DOCTYPE html>
<html>
<head>
<meta http-equiv="Content-Type" content="text/html; charset=UTF-8">
</head>
<body>
<div class="moz-cite-prefix">On 9/2/2026 3:39 PM, McCoy Smith wrote:<br>
</div>
<blockquote type="cite"
cite="mid:253bd118-cda4-4dac-b7e2-9f22161ae2be@lexpan.law">
<div class="moz-cite-prefix">On 9/1/2026 3:34 PM, Richard Fontana
via License-review wrote:<br>
</div>
<blockquote type="cite"
cite="mid:CAC1cPGwkRamwK7cXtEw+5nH8-W2UpjboL1iko-L2sNLV2So1Jg@mail.gmail.com">
<meta http-equiv="content-type"
content="text/html; charset=UTF-8">
<div dir="ltr">
<div dir="ltr">
<div class="gmail_default"
style="font-family:arial,helvetica,sans-serif"><span
style="font-family:Arial,Helvetica,sans-serif;background-color:transparent">On
Tue, Sep 1, 2026 at 5:56\u202fPM Josh Berkus <<a
href="mailto:josh@berkus.org" moz-do-not-send="true"
class="moz-txt-link-freetext">josh@berkus.org</a>>
wrote:</span></div>
</div>
<div class="gmail_quote gmail_quote_container">
<blockquote class="gmail_quote"
style="margin:0px 0px 0px 0.8ex;border-left:1px solid rgb(204,204,204);padding-left:1ex">
I'll stand by my claim, though, that any argument that can
be made <br>
against the principle* of a copyright antisuit provision
applies equally <br>
to a patent one. And that if OSI decides that the former
isn't <br>
OSI-compliant, then the latter isn't either, and we're
going to need to <br>
revisit a lot of licenses.<br>
</blockquote>
<div><br>
</div>
<div class="gmail_default"
style="font-family:arial,helvetica,sans-serif">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?</div>
<div class="gmail_default"
style="font-family:arial,helvetica,sans-serif"><br>
</div>
<div class="gmail_default"
style="font-family:arial,helvetica,sans-serif">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". </div>
<div class="gmail_default"
style="font-family:arial,helvetica,sans-serif"><br>
</div>
<div class="gmail_default"
style="font-family:arial,helvetica,sans-serif">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? </div>
<div class="gmail_default"
style="font-family:arial,helvetica,sans-serif"><br>
</div>
<div class="gmail_default"
style="font-family:arial,helvetica,sans-serif">The IBM
Public License says:<br>
<br>
"<span
style="background-color:rgb(247,247,247);color:rgb(88,89,91);font-family:Roboto,"Helvetica Neue",Helvetica,Arial,sans-serif;font-size:14px">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."</span></div>
<div class="gmail_default"
style="font-family:arial,helvetica,sans-serif"><span
style="background-color:rgb(247,247,247);color:rgb(88,89,91);font-family:Roboto,"Helvetica Neue",Helvetica,Arial,sans-serif;font-size:14px"><br>
</span></div>
<div class="gmail_default" style=""><font color="#58595b"
face="Roboto, Helvetica Neue, Helvetica, Arial, sans-serif"><span
style="font-size:14px;background-color:rgb(247,247,247)">Assuming the
OSI would consider this acceptable in an open source
license today, what if instead it said:<br>
<br>
"</span></font><span
style="background-color:rgb(247,247,247);color:rgb(88,89,91);font-family:Roboto,"Helvetica Neue",Helvetica,Arial,sans-serif;font-size:14px">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."</span></div>
<div class="gmail_default" style=""><span
style="background-color:rgb(247,247,247);color:rgb(88,89,91);font-family:Roboto,"Helvetica Neue",Helvetica,Arial,sans-serif;font-size:14px"><br>
</span></div>
<div class="gmail_default" style=""><span
style="background-color:rgb(247,247,247);color:rgb(88,89,91);font-family:Roboto,"Helvetica Neue",Helvetica,Arial,sans-serif;font-size:14px">Surely
that would not be okay ... would it?</span></div>
<div class="gmail_default" style=""><span
style="background-color:rgb(247,247,247);color:rgb(88,89,91);font-family:Roboto,"Helvetica Neue",Helvetica,Arial,sans-serif;font-size:14px"></span><span
style="white-space: pre-wrap">
</span></div>
<br>
</div>
</div>
</blockquote>
<p>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?</p>
<p>So: can patent litigation trigger termination? That's a fairly
common trigger. Against what? The example above from the IBM
public license (OSI-approved <a class="moz-txt-link-freetext"
href="https://opensource.org/license/IPL-1.0"
moz-do-not-send="true">https://opensource.org/license/IPL-1.0</a>)
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:<br>
"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." <br>
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.</p>
<p>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:<br>
"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."</p>
<p>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.</p>
<p>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.</p>
</blockquote>
<p>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.</p>
<p>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.</p>
<p>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.</p>
<p>So the question is -- which is the better path?</p>
<p>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. </p>
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.
<p>Pam</p>
<p><br>
Pamela S. Chestek<br>
Chestek Legal<br>
4641 Post St.<br>
Unit 4316<br>
El Dorado Hills, CA 95762<br>
+1 919-800-8033<br>
<a class="moz-txt-link-abbreviated" href="mailto:pamela@chesteklegal.com">pamela@chesteklegal.com</a><br>
<a class="moz-txt-link-abbreviated" href="http://www.chesteklegal.com">www.chesteklegal.com</a></p>
</body>
</html>