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From "Jim Barnett" <j...@bea.com>
Subject RE: CCLA: "by combination" language
Date Thu, 01 Jun 2006 16:53:13 GMT
I think that the optimistic analysis is as Jeff says - that when an employee/agent for a patent-holding
employer/principal makes a contribution under an ICLA alone to an ASF project, and makes the
representation that he or she has the authority to make the contribution, that the representation
and associated grants are binding on both the individual contributor and how or her employer/principal
- but I also think that there is an equally plausible pessimistic analysis that may win out
in such situations.

 

Specifically, if an employee/agent wrongfully makes a contribution (such as where he or she
mistakenly believes that a work being contributed was done "freelance" and belongs to the
employee/agent yet in fact it falls within his or her principal's present line of business
and under local law title in such work actually vested in the employer) without the employer's
actual knowledge or consent, in order to have the de facto unauthorized employee/agent's representations
and grants be enforceable against the employer/principal, ASF and/or downstream licensees
could have to prove that the de facto unauthorized agent had apparent authority to make the
contribution.

 

In the post-internet world, proving apparent authority in cases of employee/agent misconduct
may not be so easy to prove.  To prove apparent authority the ASF or affected licensee would
have to establish that something the employer did or did not do contributed to the external
appearance that the employee/agent had authority to make the contribution.  Relying on the
agent/employee's representations alone is not sufficient.  In fact in several US jurisdictions,
when an employee/agent acts in a manner inconsistent with his or her employer's interests
(such as giving away intellectual property rights belonging to the employer), the agent/employee's
conduct will not be imputed to the employer/principal unless that employer-principal obtains
and retains some benefit from the unauthorized agent transaction.

 

The question of whether there are circumstantial facts sufficient to create apparent authority
and to impute the agent's actions (i.e., making a contribution and granting licenses) to the
principal is a question of fact and there are cases with virtually identical facts (employer
provided business cards, telephone service, telephone listing, etc. for an agent) where different
courts in different jurisdictions reach opposite conclusions.

 

In my opinion, it is risky to assume that every ICLA signator who makes a representation of
authority has at a minimum apparent authority sufficient to bind an employer simply because
the employer provided a means for the employee to makes a contribution (i.e., access to the
employer's property and the means of communication and distribution necessary to contribute
that property).  That may be the case, or it may not, and it's the "may not" case that we
should look at when evaluating what a particular policy impacting contribution ought to be.

 

Call me naïve, but I had assumed that the ASF policy on employee-contributors was that the
employer would be required to execute a CCLA supporting the employee's ICLA.  Remember I also
assumed that the combination patent license grant applied to a temporally boundless definition
of work, so erroneous assumptions on my part are nothing new.  :-)  That said, just as I believe
temporally boundless definition of "work" is the saner, safer policy on the combination patent
grant issue, I also believe that a mandatory execution of a CCLA by employers for employee-contributors
is the saner, safer policy on the ICLA/CCLA requirements issue.

 

Sure there may be some would-be contributors that for whatever reason want to hedge their
bet and hold out the possibility that a project they encouraged and contributed to at one
point might in the future come within the umbra of one of their patents.  Also, there may
be some employees who are dissuaded from making contributions if they believe that their freelance
activities will be exposed to their employer's scrutiny.  On balance, however, I believe that
these risks are lesser risks than the risks of having ASF project output become (through evolution)
unexpectedly encumbered by a contributor's necessary patent or of receiving an unauthorized
contribution of principal's property from a mistaken agent.

 

One of the principal benefits to licensees of the output from ASF projects is that the ASF
actually takes the time to vet issues like these and to adopt policies and promulgate documents
that support those policies, directed at making project output safe for consumption; "safe
as milk".  I think this dialogue is helpful and useful, and that it is important to consider
all sides (including the pessimistic side(s)) of such issues.

 

Regards,

 

Jim     

 

________________________________

From: Jeffrey Thompson [mailto:jthom@us.ibm.com] 
Sent: Thursday, June 01, 2006 5:48 AM
To: Doug Cutting
Cc: Cliff Schmidt; Legal Discuss
Subject: Re: CCLA: "by combination" language

 


Doug Cutting <cutting@apache.org> wrote on 05/31/2006 07:36:26 PM:

> Cliff Schmidt wrote:
> > 
> > This does not appear to be the case: BEA and IBM are clearly examples  
> > of active Apache contributors invested in large patent portfolios.
> 
> Why then are there equally large companies with large patent portfolios 
> and active Apache contributors but no CCLA on file?
> 

I hesitate to guess at the answer to that question, however, I'd like to point out that it
is probably NOT the language of the patent grant that's the cause.  The patent language in
the CCLA is identical to the language in the Apache License 2.0, which applies to the Corporation
through the authorized Contributions by its employees.  Refusing to sign the CCLA doesn't
negate that patent grant. 

Jeff 

Staff Counsel, IBM Corporation  (914)766-1757  (tie)8-826  (fax) -8160
(notes) jthom@ibmus  (internet) jthom@us.ibm.com (home) jeff@beff.net
(web) http://www.beff.net/ 

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