[License-review] Submission of the European Space Agency Public Licenses (ESA-PL) for approval

[Carsten Gerlach]

On 11.01.2017 13:50, jonathon wrote:

> The key issue here is «that exercising rights granted by this License
> infringes third party's intellectual property rights».
> 
> Astrolabe, Inc v Olson et al
> Case # 1:2011cv11725
> Filed 30 September 2011
> Massachusetts District Court, Boston.
> 
> Until that lawsuit was filed, nobody dreamed that the _Time Zone and
> Daylight Saving Time Database_ could be a copyright violation.
> (For those people who don't recognize the database name, it was the
> official reference for time zones for the Internet in general, and Unix
> in specific.) (That court case was voluntarily dismissed by the
> plaintiff. The specific reason why was not publicly disclosed.)
> 
> What makes that lawsuit even more surprising, is that copyright law in
> the United States neither recognizes "sweat of the brow" work product as
> being copyrightable, nor databases as being, in and of themselves,
> copyrightable.
> 
> Call that an edge case. Call it a submarine case. Regardless, what would
> a firm who uses software with the ESA-PL supposed to do, if a key data
> source for it, was the subject of a similar lawsuit?

If you positively know, or have sufficient reason to believe, that you
infringe third party rights by using a software, you will usually stop
such use.  I think that is general prudent behavior, regardless of
specific license terms.

However, I assume your issue is that in your example it is not the
software that is infringing, but the data processed with the software
(the lawsuit was basically filed for unauthorized reproduction of the
timezone database). Sec. 7 is not meant to apply to such cases - to data
is processed by the software - and I think it cannot be reasonably
construed to apply to such cases. In your example the infringement is
not caused by an exercise of rights granted by the license (e.g. by
running or copying the software), but by an exercise of rights in
respect of the data the software is processing.

> Increasingly, with patents, the only way to know if usage is infringing,
> is for a court to rule on the matter. Paying the dangeld is always a
> losing proposition, but fighting requires more resources than the
> typical organization can afford to throw away.

In such cases it might be sensible to stop the allegedly infringing use.
However, Sec. 7 does not mandate it unless the infringement is
positively known (e.g. has been confirmed by a court or the patent
holder has provided you with sufficient evidence etc.).

>> For the European space community it is crucial that any licensee is
> obliged to inform the community of any third party claims he knows of.
> 
> The ESA-PL does not mandate that known, potential third party claims be
> included.
> 
> I'll grant that "known" is both vague, and a very slippery slope,
> 
>> Since the disclosure obligation only applies to patents related to the software itself, 
> 
> But does it?
> 
> «4.5 Each Contributor must identify all of its Patent Claims by
> providing at a minimum the patent number and identification and contact
> information in a text file included with the Distribution titled "LEGAL".»
> 
> Much as I'd like to think that that clause meant _only_ the patents that
> impact the specific software, an outfit like Prenda Law will claim that
> it means the entire patent portfolio of the firm. Alternatively, since
> they are willing to bet the Dangeld, they will claim that it means the
> entire patent portfolio of the firm, plus the entire patent portfolio of
> every employee of the firm, plus the entire patent portfolio of every
> consultant to the firm, regardless of their contributions to the
> software in question.
> Clause
>> it is not clear why the obligation is exceptionally unreasonable.
> 
> It does not explicitly confine the scope of the patent list to patents
> that apply to the specific software that the license applies to.
> 
>> The aim is to ensure maximum transparency regarding potential patent
> conflicts:
> 
> Personally, I'd recommend that clause be modified/changed to:
> 
> «4.5.1 Each Contributor must identify all _patents within its patent
> portfolio, that are utilized in this software,_ by providing, at a
> minimum the patent number and identification and contact information in
> a text file included with the Distribution titled "LEGAL".
> 
> 4.5.2 Patents that a contributor is aware of, that might be utilized
> within this software, must be listed, by providing, at a
> minimum the patent holder, the patent number, and identification and
> contact information for the patent holder, in a text file included with
> the Distribution titled "LEGAL".»
> 
> ##3
> 
> I'll grant that there are a couple of issues with 4.5.2. The biggest
> being "what constitutes _is aware of_".

"Patent Claims" are defined in Sec. 1 as "patent claim(s), owned [...]
by a Contributor which would be infringed by making use of the rights
granted under Sec. 2.1 [...]".

I think that already clarifies the scope of Sec. 4.5, to the effect of
your proposed revision.

>> if the original authors or contributors own patents that could prevent
> use of the software, such patents need to be disclosed.
> 
> Clause 4.5 does not mandate disclosure of the existence of
> patents issues to third parties, that might affect the software, when
> the developers are aware of such patents.

That's correct, but we felt that such a broad obligation would be too
onerous.

Carsten