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From "Jim Barnett" <j...@bea.com>
Subject Subject: Re: Derby code copyright question
Date Thu, 16 Sep 2004 00:35:09 GMT
Hello.  I am one of BEA's attorneys.  I've been working with Cliff Schmidt and the BEA Workshop
team in connection with BEA's Beehive contribution to Apache, and in that context have considered
the issue being discussed on the thread I've cut and pasted below (i.e., whether it is appropriate
for the Apache Foundation to appear as the owner of contributed code in the copyright notice
when in fact ownership of the copyright is actually retained by the contributor).
 
Here are my thoughts...
 
Having the Apache Foundation listed as copyright owner in the notices affixed to contributed
code raises a couple of significant problems.  First, it technically is incompatible with
17 U.S.C.A 401(b) which prescribes the proper format of copyright notices (i.e., (c) 200X
Copyright Owner Inc...).  A notice such as "(c) 200X Apache Foundation.  All rights reserved."
where ASF is NOT the owner is therefore an erroneous notice.  It could make enforcement of
the copyright by the true owner more difficult in the sense that an infringer could assert
"innocent infringement" as a defense to a claim by the owner for statutory damages by arguing
that the infringer was misled and believed the work belonged to ASF rather than the true owner,
and believed that it's use was authorized or licensed by ASF.  Had the infringer known that
Apache was not the true owner, it would not have copied the work.  This may not be as significant
an issue in the Apache project context as it would be in the closed source context since true
owners who contribute to Apache agree to use Apache's license terms.  The possibility of different
license terms being offered by the true owner and Apache therefore doesn't really exist.
 
A second problem relates to establishing standing to sue an infringer.  Under the Apache contribution
agreement, the contributor retains ownership of the work including the right to enforce the
copyright in the work.  Where a copyright notice mis-identifies the owner as ASF, a clever
defendant being sued by the true-owner/contributor might use that notice to introduce confusion
as to who party actually has standing to sue to enforce the copyright.  While the true owner
could establish it's ownership of the work by disclosing the contribution agreement, such
hurdles complicate the litigation and could distract a judge unskilled in trying copyright
issues from important issues like whether a preliminary injunction proscribing the infringement
ought to be issued.
 
These risks associated with these issues arguably could be reduced were the true owner to
registering the work in its own name, but not every contributor is likely to go to the trouble
or expense of registering works contributed to open source projects.
 
On the other hand, I am not certain why listing ASF as the owner in the notice is perceived
as being beneficial.  It is not uncommon in other open spec/open source contexts for all owners/authors
to be referenced in the copyright notice for a work.  For example, see the multi-party notice
for the collaboratively developed WS-Eventing Specification http://xml.coverpages.org/ni2004-08-31-a.html
 
When this issue has come up in the context of BEA Software OEM agreements (i.e., agreements
under which third party software vendors are permitted to embed BEA products in larger products,
and distribute the integrated whole), the issue of private labeling has come up.  Many ISVs
do not wish to have end users know that their product is really a value-add built on another
party's product.  Occasionally an ISV will ask to be allowed to omit BEA's name on the copyright
notice for the integrated product.  While BEA generally resists this, a handful of times we've
struck compromises along the lines suggested by Larry Rosen on the thread I've cut and pasted
below.  On at least one occasion BEA even allowed the ISV to use the following notice:  "(c)
1999 ISV Corporation, or its licensors, as applicable.  All rights reserved."  While this
could be deemed an erroneous notice on the grounds that the true owner's identity for a portion
of the work is not discernable from the notice, but it is certainly more factually accurate
and more informative than a notice that mis-identifies a non-owner/licensee as the owner of
the work.
 
Also, having owners assign copyrights to ASF would probably be a mistake.  First, ASF really
doesn't have the resources or (I would guess) the interest in enforcing copyrights assigned
to it when a third party uses the contributed work outside the scope of the Apache license.
 Second, so long as the author/contributor retains ownership of the copyright, the author
also retains some degree of protection against prospective shifts in Apache's out-bound license
terms.  In other words if tomorrow Apache decided that the FreeBSD-style license model was
passé and that the GPL model is preferable, as assignee-owner Apache could make that shift,
even if the original contributor of the work specifically relied upon Apache's commitment
to the FreeBSD-style model instead of a GPL model when making the contribution.  If the original
author retains ownership of the contribution, and were Apache to radically alter its license
model in a way undesirable to the contributor, the contributor could simply offer its original
contribution via another open source organization and/or license model more consistent with
it's perceived strategic interests.  
 
I am very curious as to what others think about this issue, and am available for e-mail or
phone consultation.  Thank you for allowing me to offer my $0.02.
 
Regards,
 
James Barnett
Senior Counsel
BEA Systems, Inc.
408-570-8442
 
-----Original Message-----

From: Roy T. Fielding [mailto:fielding@gbiv.com]

Sent: Wednesday, September 15, 2004 3:59 PM

To: general@incubator.apache.org

Cc: derby-dev@db.apache.org

Subject: Re: Derby code copyright question

 

On Sep 15, 2004, at 2:55 PM, Jennifer B Machovec wrote:

> I think the short-term (and maybe even long-term) resolution to the

> copyright notice issue may be having the ASF copyright notice in each 

> main

> file clearly apply to the whole project. This could read, for example:

> "Apache Derby is (c) Copyright The Apache Software Foundation 2004. All

> rights reserved. " Then there's no implication of copyright ownership 

> of

> individual components. The third-party copyright attributions can be

> included in the NOTICE file.

We need to limit NOTICE to acknowledging major contributions and

fulfilling the advertising clause of third-party code. It would

be a disaster if everyone with a copyright wanted to be in there.

> As Roy notes, if any contributor has

> included copyright attributions in a main file, and you don't want to

> retain those notices in that location for policy reasons, then ASF 

> needs

> to ask the contributor/copyright owner to either remove them or 

> authorize

> ASF to do so on their behalf.

Larry Rosen (I mentioned the wrong Larry in the previous note)

suggested that we place something like

Collective work Copyright 2004 The Apache Software Foundation.

[AL 2.0 Template]

Derivative work Copyright 2004 Some Other Contributor.

     Licensed to the ASF under a contributor agreement.

     Copyright 2004 Contributor Company, Inc.

     Licensed to the ASF under a contributor agreement.

The alternative being that we start asking for copyright assignments.

BTW, I don't claim that my workaround of having the copyright owner

change the copyright notice to the ASF is necessarily the right

solution; it just happens to be the one we've used in the past

and actually predates forming the ASF as a legal entity.

....Roy

 

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