Suggested addition to the open-source definition

On Mon, Apr 24, 2006 at 10:48:15AM -0400, David A. Temeles,
Jr. wrote:

> Your thesis is that open source software licenses
should not be used as a
> weapon to defend other IP rights.  In other words, if
company "A" asserts
> its "non-software" patents against company
"B", company A's license to
> company B's open source software should not terminate.
 

Indeed.

> First, what does the phrase "unrelated to the
field of software" mean?  Are
> the mechanisms upon which software is executed
unrelated, or related to the
> field of software?  After all, one cannot execute
software in a vacuum. 

I'll be the first to admit that the wording needs work.
I'd consider the 
line to be whether the rights can be considered to be
attached to the 
software itself, or the rights absolutely necessary to use
that 
software, but would welcome suggestions on this point.

> Second, is company B restricting company A's ability
to exercise rights
> "unrelated to the field of software" if the
terms of the open source license
> automatically terminate upon A's assertion of patent
rights against B?

If those patent rights are unrelated to software, then I'd
think so. The 
second clause was intended to clarify that.

> Third, the language of your proposed Section 11 goes
beyond the patent arena
> and would preclude the automatic termination of the
license in the case of
> copyright infringement, trademark infringement, trade
secret theft, etc.
> Are you proposing that company A should be able to
steal company B's trade
> secrets without suffering an automatic termination of
the license?  I doubt
> this is what you intend.

An interesting question. To a large extent, yes, that is
what I intend. 
The legal system already provides protection for that
eventuality - I 
don't believe open source licenses should also be
attempting to do so. 
But I'm somewhat less concerned about those issues, and can
see the 
other side of the argument - a license with a clause along
the lines of 
"If you commit a legal offense against the licensor,
this license will 
be immediately terminated" wouldn't strike me as
terribly offensive.

I think that's somewhat covered by the existing language. I
don't 
believe there's a right to trademark infringement or theft
of trade 
secrets.

> Fourth, in most circumstances company A is in control
of its technology
> plan.  Company A chose to use company B's software
under an open source
> license either because the software was superior to
anything else in the
> market, the price was right, or it did not want to
re-create the wheel.
> Company A could instead have chosen to develop its own
solution, to license
> a solution from a third party, or to license company
B's solution under a
> commercial, royalty-bearing license.  Company A also is
in a position to
> determine whether it's continued use of company B's
software under an open
> source license is more important than asserting its
patent or other IP
> rights against B.  Company A has the freedom to either
forgo the IP suit, or
> to replace company B's open source software before it
initiates a suit
> against B.  What you are in effect proposing is that
company A should be
> able to assert patents, copyrights and any other IP
rights against company B
> while continuing to benefit from company B's
investment in the open source
> software.

That's precisely what I'm proposing, and I think that
that's part of 
what has defined the open source movement. Historically, the
only 
real restrictions that have been considered acceptable are
ones that are 
seen to either benefit or protect the open source community
(such as 
copyleft or the MPL's patent license termination), with
restrictions 
that benefit the original software (such as the QPL's grant
of a 
reciprocal license for modifications). Language like the
APSL's goes 
much further than that. The cost of a patent license to
Apple is 
arguably much greater than the cost of any given piece of
software under 
the APSL to someone else - in the typical case, there is a
large 
disparity in the value of what is given and received.

> Fifth, you may be thinking of situations in which a
fortune 500 or other
> large publicly traded firm is company B (given your
example using Apple).
> What if company B has 10 employees and revenues of $1M,
while company A is
> Microsoft?  Microsoft could continue using company B's
software to make
> millions while it buries company B in insurmountable
legal expenses...

I agree that this is a real issue, and agree that
reformation of certain 
more irritating aspects of the US legal system would be
beneficial. I'm 
not convinced that using open source licenses is the right
way to 
attempt to avoid those issues, though.

> I would like to discuss this issue in greater depth as
there may be
> reasonable restrictions on patent enforcement that a
majority of those in
> the open source community can reasonably adopt.  I do
not think that the
> community as of yet is near any such resolution.  Maybe
it never will be,
> but a rounded discussion could help to raise the
community's awareness of
> the multifaceted nature of the issue...   

I entirely agree.

Thanks,
-- 
Matthew Garrett | mjg59srcf.ucam.org

Good evening Matthew:

My apologies for the delayed response (interspersed below)


-----Original Message-----
From: Matthew Garrett [mailto:mjg59srcf.ucam.org] 
Sent: Monday, April 24, 2006 11:32 AM
To: David A. Temeles, Jr.
Cc: license-discussopensource.org
Subject: Re: Suggested addition to the open-source
definition


DAT wrote:
> Your thesis is that open source software licenses
should not be used as a
> weapon to defend other IP rights.  In other words, if
company "A" asserts
> its "non-software" patents against company
"B", company A's license to
> company B's open source software should not terminate.
 

MG Responded: Indeed.
____________________________________________________________
_____________
DAT wrote:
> First, what does the phrase "unrelated to the
field of software" mean?
Are
> the mechanisms upon which software is executed
unrelated, or related to
the
> field of software?  After all, one cannot execute
software in a vacuum. 

MG Responded:
I'll be the first to admit that the wording needs work.
I'd consider the 
line to be whether the rights can be considered to be
attached to the 
software itself, or the rights absolutely necessary to use
that 
software, but would welcome suggestions on this point.

DAT Replies: We will need to finish fleshing out the issue
before I can
properly suggest alternate language...

____________________________________________________________
____________

DAT Wrote:
> Second, is company B restricting company A's ability
to exercise rights
> "unrelated to the field of software" if the
terms of the open source
license
> automatically terminate upon A's assertion of patent
rights against B?

MG Responded:
If those patent rights are unrelated to software, then I'd
think so. The 
second clause was intended to clarify that.

DAT Replies: 
Matthew, I think you missed my point, or I made an incorrect
assumption
about what you were saying in the first place.....  Let me
be more direct
and restart with your proposed language:

"The license must not restrict the licensee's ability
to exercise rights
unrelated to the field of software, and any copyright
license must not
automatically terminate upon the exercising of these
rights."

I understood you to imply that a clause that automatically
terminates a
software license upon the Licensee's assertion of IP rights
against the
Licensor, with the rights being unrelated to the field of
software,
constitutes a restriction on the Licensee's ability to
exercise those IP
rights.  Technically, I do not agree with this assertion. 
The automatic
termination clause prohibits the assertion of the IP against
the Licensor
(and in some cases any downstream user of the software) only
for so long as
the Licensee continues to use the licensed software.  The
license does not
actually prohibit the Licensee's use of the IP - it merely
says that if the
Licensee desires to use the IP against the Licensor (or in
some cases,
downstream users), then the Licensee is in effect choosing
to terminate the
license.

Contrast this, however, with the GPLv3's assertion of an
express patent
license from the Licensee.  If a Licensee redistributes the
software or
distributes a modified version of the software, then the
Licensee is deemed
to grant all downstream and upstream users a license under
all present and
future patent claims owned or licensed by the Licensee.  The
express patent
license granted by the Licensee does not: i) limit the scope
of the claims
licensed to those that would be infringed by the modified
software at the
time it was released by Licensee; ii) limit the scope of how
the patent
rights may be implemented - the license grants all users the
right to use
the patent claims in running, modifying, copying or
distributing the
software, among other things; or iii) appear to terminate
upon the
Licensee's termination of the software license (e.g., by
suing the Licensor
for patent infringement).  This express license appears to
constitute a far
greater restriction on, or dimunition of a Licensee's
patent portfolio than
the automatic termination of the license.  

____________________________________________________________
______________ 

DAT Wrote:
> Third, the language of your proposed Section 11 goes
beyond the patent
arena
> and would preclude the automatic termination of the
license in the case of
> copyright infringement, trademark infringement, trade
secret theft, etc.
> Are you proposing that company A should be able to
steal company B's trade
> secrets without suffering an automatic termination of
the license?  I
doubt
> this is what you intend.

MG Replied:
An interesting question. To a large extent, yes, that is
what I intend. 
The legal system already provides protection for that
eventuality - I 
don't believe open source licenses should also be
attempting to do so. 
But I'm somewhat less concerned about those issues, and can
see the 
other side of the argument - a license with a clause along
the lines of 
"If you commit a legal offense against the licensor,
this license will 
be immediately terminated" wouldn't strike me as
terribly offensive.

I think that's somewhat covered by the existing language. I
don't 
believe there's a right to trademark infringement or theft
of trade 
secrets.

DAT Responds:
There is no right to trademark infringement or to steal
trade secrets - but
we may simply have a disagreement over the timing of the
termination on this
one.  I do not think that it is either fair or equitable to
prohibit a
software developer from terminating a license, automatically
or by
discretion, when the Licensee is suing the Licensor.  I'll
address my
reasons in response to the next point.
____________________________________________________________
_____________

DAT Wrote:
> Fourth, in most circumstances company A is in control
of its technology
> plan.  Company A chose to use company B's software
under an open source
> license either because the software was superior to
anything else in the
> market, the price was right, or it did not want to
re-create the wheel.
> Company A could instead have chosen to develop its own
solution, to
license
> a solution from a third party, or to license company
B's solution under a
> commercial, royalty-bearing license.  Company A also is
in a position to
> determine whether it's continued use of company B's
software under an open
> source license is more important than asserting its
patent or other IP
> rights against B.  Company A has the freedom to either
forgo the IP suit,
or
> to replace company B's open source software before it
initiates a suit
> against B.  What you are in effect proposing is that
company A should be
> able to assert patents, copyrights and any other IP
rights against company
B
> while continuing to benefit from company B's
investment in the open source
> software.

MG Replied:
That's precisely what I'm proposing, and I think that
that's part of 
what has defined the open source movement. Historically, the
only 
real restrictions that have been considered acceptable are
ones that are 
seen to either benefit or protect the open source community
(such as 
copyleft or the MPL's patent license termination), with
restrictions 
that benefit the original software (such as the QPL's grant
of a 
reciprocal license for modifications). Language like the
APSL's goes 
much further than that. The cost of a patent license to
Apple is 
arguably much greater than the cost of any given piece of
software under 
the APSL to someone else - in the typical case, there is a
large 
disparity in the value of what is given and received.

DAT Responds:

"Historically, the only real restrictions that have
been considered
acceptable are ones that are seen to either benefit or
protect the open
source community" - I do not see how an automatic
termination of a single
Licensee's license would harm the open source community. 
In fact, such
language may increase the community's protection because it
would give the
Licensee/patentholder pause to think before asserting the
patents against
the Licensor or anyone else using the software.

I assume that you are saying that the value of a patent
license granted to
Apple by a Licensee is worth more to Apple than the value of
the software
license is to the Licensee.  This should not be true.  In
weighing the
decision to use open source software v. proprietary
software, the Licensee
should add the value of any patent license granted to the
Licensor (and
possibly other users) into the cost of the open source
solution.  (This is
one of the main problems with mandatory Licensee patent
grants in open
source licenses - the opportunity costs can render the open
source solution
far more expensive than the cash consideration demanded by
proprietary
vendors.)  A Licensee would license the software and agree
to the mandatory
patent grant only if the opportunity cost to the Licensee of
the grant is
equal to or less than the value of the software license to
the Licensee. 
____________________________________________________________
_____________

DAT Wrote:
> Fifth, you may be thinking of situations in which a
fortune 500 or other
> large publicly traded firm is company B (given your
example using Apple).
> What if company B has 10 employees and revenues of $1M,
while company A is
> Microsoft?  Microsoft could continue using company B's
software to make
> millions while it buries company B in insurmountable
legal expenses...

MG Replied: 
I agree that this is a real issue, and agree that
reformation of certain 
more irritating aspects of the US legal system would be
beneficial. I'm 
not convinced that using open source licenses is the right
way to 
attempt to avoid those issues, though.

DAT Responds:
The Licensor cannot reform the US legal system.  The
required reformation
will take many years, many billions of dollars, and the
agreement of a large
number of citizens, businesses and politicians.  However,
the Licensor can
structure the software license to provide it with some
protection should the
Licensee decide to go after the Licensor.
____________________________________________________________
_____________
DAT Wrote:
> I would like to discuss this issue in greater depth as
there may be
> reasonable restrictions on patent enforcement that a
majority of those in
> the open source community can reasonably adopt.  I do
not think that the
> community as of yet is near any such resolution.  Maybe
it never will be,
> but a rounded discussion could help to raise the
community's awareness of
> the multifaceted nature of the issue...   

MG Replied:

I entirely agree.
____________________________________________________________
_______________


Enjoy the evening,

Dave Temeles