Mailing-List: contact legal-discuss-help@apache.org; run by ezmlm
Precedence: bulk
Received-SPF: pass (asf.osuosl.org: domain of jimb@bea.com designates
 63.96.162.5 as permitted sender)
Content-class: urn:content-classes:message
MIME-Version: 1.0
Content-Type: text/plain;
	charset="us-ascii"
Content-Transfer-Encoding: quoted-printable
Subject: RE: CCLA: "by combination" language
Date: Thu, 25 May 2006 10:41:15 -0700
Message-ID: <9186D1D624F88F469BE0CC4F2DDB970B93AA8C@repbex02.amer.bea.com>
Thread-Topic: CCLA: "by combination" language
Thread-Index: AcZ/nhllGCRfZMupTDOnhZfv+bGpvQAgA/9A
From: "Jim Barnett" <jimb@bea.com>
To: "Roy T. Fielding" <fielding@gbiv.com>
Cc: "Doug Cutting" <cutting@apache.org>,
   "Legal Discuss" <legal-discuss@apache.org>,
   "Cliff Schmidt" <cliffs@apache.org>

Thanks for the historical perspective Roy.

I now understand that the original intent is that the combination aspect
of the patent license grant applies only to combinations of the
patent-encumbered contribution in conjunction with other contributions
present in the Work as of the date of contribution for the
patent-encumbered contribution, though I don't think that the words
"...to which such Contribution(s) were submitted" mail down this
intended temporal boundary.  Given the arguable ambiguity or "implied"
nature of the temporal boundary,  what would prevent implication of a
similar "date of contribution" temporal boundary to the "patent" itself,
as in "...where such license applies only to those patent claims
licensable by You AT THE TIME OF YOUR CONTRIBUTION..."?

I am assuming that the intent of the "patents licensable by you" piece
is for the converse implication (i.e., that the grant would kick in any
time You obtain a necessary patent that covers your contribution alone
or in combination with the Work as of the date of your contribution).
My initial interpretation depended in part on this assumption.  My
reasoning went something like this:  If the drafters intend to imply
"obtained at any time, whether before or after the covered contribution"
to the concept of patent, wouldn't the same implication apply to the
concept of Work for sake of consistency?

If CCLA section 3 is clarified to make express the intended temporal
boundary around the combination aspect of the grant, it might actually
help negate implication of a temporally boundary for "licensable patent"
under the interpretive doctrine of "expressio unius est exclusio
alterius"; that is when an author expresses a condition or restriction
in one part of a document, and omits to do so in another part of the
document, the interpretation ought to be that the exclusion implies an
intent that the condition or restriction not apply to any other part of
the document.

Regards,

Jim

-----Original Message-----
From: Roy T. Fielding [mailto:fielding@gbiv.com]=20
Sent: Wednesday, May 24, 2006 6:53 PM
To: Jim Barnett
Cc: Doug Cutting; Legal Discuss; Cliff Schmidt
Subject: Re: CCLA: "by combination" language

On May 24, 2006, at 5:20 PM, Jim Barnett wrote:

> Here's the relevant language from the CCLA:
>
> "Subject to the terms and conditions of this Agreement, You hereby=20=20
> grant
> to the Foundation and to recipients of software distributed by the
> Foundation a perpetual, worldwide, non-exclusive, no-charge,
> royalty-free, irrevocable (except as stated in this section) patent
> license to make, have made, use, offer to sell, sell, import, and
> otherwise transfer the Work, where such license applies only to those
> patent claims licensable by You that are necessarily infringed by Your
> Contribution(s) alone or by combination of Your Contribution(s)=20=20
> with the
> Work to which such Contribution(s) were submitted."
>
> Based on this language, my reading is that it requires contributors=20=20
> who
> hold necessary patents covering their contributions to grant rights in
> those patents in the following four use cases: (1) your contribution
> alone is covered by a patent you hold, (2) your contribution when
> combined with other contributions you later make is covered by a=20=20
> patent
> you hold,(3) your contribution when combined with other third party
> contributions in the project on the date of your contribution is=20=20
> covered
> by a patent you hold, and (4) your contribution when combined with a
> third party contribution made after the date of your contribution is
> covered by a patent you hold.  In each of these use cases the
> precondition for the patent license grant is that the contributor=20=20
> has a
> patent covering its contribution alone or its contribution together=20=20
> with
> other technologies.

I know that the first three are intended and that (4) is the
opposite of our intent at the time.  The clause is intended to exclude
third-party contributions after the fact causing the infringement;
that is the *only* reason we include the words "to which such
Contribution(s) were submitted". Those words serve no other purpose
than to limit the scope of the patents that infringe to claims that
are potentially knowable by the contributor.  Note that this limits
the number of patents that infringe, not the number of Works to which
the license is granted -- the license is granted to the ASF and all
of the recipients of ASF software, and once that license is granted
the patent claims have been exhausted.

Unless we intend to ask for a blanket contribution of all IP, we
can't insist that contributors contribute a license to anything
that might be partially claimed by a patent.  Given any valid
software patent, I can partition the sentences such that a
portion will apply to any piece of software -- it is therefore
pointless to say that patent owners should be capable of
anticipating future contributions that might infringe by
combination, since any addition is a combination.

Given that intention now appears to be unclear, I prefer Larry's
suggested additions of

    3. Grant of Patent License. Subject to the terms and conditions
    of this Agreement, You hereby grant to the Foundation and to
    recipients of software distributed by the Foundation a
    perpetual, worldwide, non-exclusive, no-charge, royalty-free,
    irrevocable (except as stated in this section) patent license
    to make, have made, use, offer to sell, sell, import, and
    otherwise transfer the Work [and derivative works thereof],
    where such license applies only to those patent claims
    licensable by You that are necessarily infringed by Your
    Contribution(s) either alone or by combination of Your
    Contribution(s) with the Work in its state at the time
    Your Contribution(s) were submitted.

since that is pretty close to what I had before IBM requested
that "and derivative works thereof" be removed.  Some people have
said that only saying "the Work" makes the license conditional,
but that doesn't make any sense to me -- the license is given
to recipients and no condition is placed on how those recipients
make use of that license.  It is a FAQ, though. *shrug*

However, any change to this text requires considerable discussion
amongst major contributors -- it is every bit as important to our
collaboration as the Apache License itself.

The rationale goes back to our discussion with Mozilla regarding
MPL 1.0 that resulted in MPL 1.1.  We could use the language from
CDDL, though I think it is much harder to read
<http://www.sun.com/cddl/cddl.html> 2.2(b) and (d).

....Roy

---------------------------------------------------------------------
DISCLAIMER: Discussions on this list are informational and educational
only.  Statements made on this list are not privileged, do not
constitute legal advice, and do not necessarily reflect the opinions
and policies of the ASF.  See <http://www.apache.org/licenses/> for
official ASF policies and documents.
---------------------------------------------------------------------
To unsubscribe, e-mail: legal-discuss-unsubscribe@apache.org
For additional commands, e-mail: legal-discuss-help@apache.org

_______________________________________________________________________
Notice:  This email message, together with any attachments, may contain
information  of  BEA Systems,  Inc.,  its subsidiaries  and  affiliated
entities,  that may be confidential,  proprietary,  copyrighted  and/or
legally privileged, and is intended solely for the use of the individual
or entity named in this message. If you are not the intended recipient,
and have received this message in error, please immediately return this
by email and then delete it.

---------------------------------------------------------------------
DISCLAIMER: Discussions on this list are informational and educational
only.  Statements made on this list are not privileged, do not
constitute legal advice, and do not necessarily reflect the opinions
and policies of the ASF.  See <http://www.apache.org/licenses/> for
official ASF policies and documents.
---------------------------------------------------------------------
To unsubscribe, e-mail: legal-discuss-unsubscribe@apache.org
For additional commands, e-mail: legal-discuss-help@apache.org