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From Cliff Schmidt <cli...@apache.org>
Subject Re: Yahoo! DomainKeys Patent License
Date Sat, 06 Jan 2007 07:04:00 GMT
For anyone interested, here's what my opinion of the DomainKeys  
license was when I replied to a legal-internal question on it on Nov  
2nd.

Cliff

=====

 > Yahoo! DomainKeys Patent License Agreement v1.2
 >
 > Copyright (c) 2006, Yahoo! Inc. All rights reserved.
 >
 > This Yahoo! DomainKeys Patent License Agreement (this "Agreement") is
 > between Yahoo! Inc. ("Yahoo!") and you ("Licensee").  By  
attempting to
 > exercise any rights granted under this Agreement, Licensee agrees  
to be
 > bound by all the terms and conditions set forth below, and subject  
to those
 > terms and conditions, Licensee may use the intellectual property  
described
 > below.

Doesn't require every user/redistributor to sign and fax in an
agreement to Yahoo, which is nice.

Minor point, but it looks like you agree to this license by both
attempting to exercise rights AND (according to 3.3) by placing "This
code incorporates intellectual property owned by Yahoo!." into the
NOTICE file.

 > 1.      DEFINITIONS.
 >
 >         1.1 "DomainKeys Developer(s)" means any individual or  
entity other
 >             than Yahoo! (and Yahoo!'s subsidiaries) who uses or  
distributes
 >             Implementations under a direct or indirect license  
from Yahoo!.
 >
 >         1.2 "Implementations" means the specific portions of a  
hardware or
 >             software implementation expressly required to be  
compliant with
 >             the Specifications for the sole purpose of a sender
 >             verification solution in connection with e-mail.

similar to the MS OSP's (which we've said is allowable), "to the
extent it conforms to a Covered Specification".  Could be more clear,
especially if there was a TCK-like thing, but I think we can live with
it.

 >         1.3 "Specifications" means the specification found through  
the
 >             following link: http://antispam.yahoo.com/ 
domainkeys#license or
 >             a successor link designated by Yahoo! from time to time.
 >
 >         1.4 "Yahoo! Patent Claims" shall mean those claims of all  
Yahoo!
 >             foreign and domestic patents that base their priority  
on or
 >             issue from the patent applications identified at the  
following
 >             link: http://antispam.yahoo.com/domainkeys#license or a
 >             successor link designated by Yahoo! from time to time.

This might be worth discussing.  Although it's nice to have the
specific four patents listed at the included link, it does appear to
limit this license to only those patents and the ones basing their
priority on them.  I'd be interested in our lawyers thoughts on how
this compares to something like Microsoft's, license to patents that
are "necessary to implement only the required portions of the Covered
Specification that are described in detail and not merely referenced
in such Specification.  "  This could be more clear as well, but it's
also not limiting the license to a specific set of patents.  OTOH,
these patents were apparently disclosed as part of Yahoo's IETF RFC
2026 IP disclosure.  I'm sure they know they'd find themselves in a
Rambus situation if they tried to claim other undisclosed patents for
something they tried to standardize.

 >         1.5 "Licensee" means an individual, company, or other  
legal entity
 >             exercising any rights under this Agreement.  Any  
individual who
 >             accepts the terms and conditions of this Agreement on  
behalf of
 >             a company or other legal entity represents and  
warrants that
 >             the individual has the authority to enter into this  
Agreement
 >             on behalf of the company or other legal entity.
 >
 > 2.      LICENSE GRANT.
 >
 >         2.1 Subject to the terms and conditions of this Agreement,  
Yahoo!
 >             hereby grants Licensee a royalty-free, perpetual,  
worldwide,
 >             sublicensable, non-exclusive license under its rights  
to the
 >             Yahoo! Patent Claims that are necessary to make, use,  
sell,
 >             offer for sale, and/or import Implementations.

This is good; sublicensable is nice.

 > 3.      TERMS.
 >
 >         3.1 Licensee hereby grants Yahoo! and its subsidiaries a  
license
 >             under all patent claims owned or licensable by  
Licensee without
 >             requirement of paying additional consideration to  
make, use,
 >             sell, offer for sale, import and/or license any
 >             Implementations.

This is somewhat interesting.  It's a cross-licensing thing to Yahoo,
but I wouldn't say the terms are completely reciprocal.  First of all,
the Licensee doesn't get to limit the set of patents licensed as Yahoo
does; although, as I mention above, it is unlikely that Yahoo would
try to play that card.  Secondly, Yahoo's license has all the terms
listed below; whereas, any licensee's license to Yahoo is apparently
made without any conditions at all.  I'm not sure why they didn't just
say "grants Yahoo! and its subsidiaries a license under all patent
claims owned or licensable under the same terms that Yahoo! grants
this license to the Licensee" (or something like that).  I don't see a
huge consequence of this (the non-assert and retaliation stuff works
this way, but there would be no room for the same kind of disclaimers
or attribution terms, as far as I can tell).

One other note; every time I read this, I keep thinking that they
should have put commas around "without requirement of paying
additional consideration", because until you get to the last word
("Implementations") it looks like its a license to everything you own.
Minor point.

 >         3.2 Licensee agrees not to assert against Yahoo! or any  
DomainKeys
 >             Developer or any licensee of any DomainKeys Developer  
a patent
 >             infringement claim based on the manufacture, use,  
sale, offer
 >             for sale and/or importation of any Implementations
 >             ("Implementation Patent Claim"); provided that if any  
other
 >             DomainKeys Developer or any licensee of such DomainKeys
 >             Developer asserts a patent infringement claim against  
Licensee
 >             based on the manufacture, use, sale, offer for sale  
and/or
 >             importation of Implementations, Licensee's covenant  
not to sue
 >             that DomainKeys Developer shall immediately expire.

like the patent license from the Licensee to Yahoo above, but this
time it is a non-assert that includes all other developers and with a
patent retaliation clause.  I don't see any major problem here.

 >         3.3 To indicate the Licensee's assent to the terms and  
conditions
 >             of this Agreement, the Licensee must include, attach, and
 >             preserve the following prominently displayed statement  
in the
 >             source code and documentation (or within a display  
where such
 >             third party notices generally appear) of any such
 >             Implementations: "This code incorporates intellectual  
property
 >             owned by Yahoo!."

This is the second time it tells you what you do to agree.  We would
need to put this statement in our NOTICE file.  This is one of those
non-reciprocal requirements that every Licensee with patent claims
covering Implementations would not be able to require of Yahoo.

 >         3.4 Licensee may not use the name of Yahoo! to endorse or  
promote
 >             any products, services, or Implementations without  
specific
 >             prior written permission of Yahoo!. "DomainKeys" is a  
trademark
 >             of Yahoo!. However, Licensee may state that Licensee's
 >             Implementations are "DomainKeys compliant", "supports
 >             DomainKeys", or is "DomainKeys-enabled", without  
citation to
 >             Yahoo!. All use of the DomainKeys trademark will inure to
 >             Yahoo!'s benefit, and Licensee agrees not to claim any
 >             ownership in the DomainKeys trademark or challenge its  
validity
 >             or enforceability.  Licensee must create its own  
product or
 >             service names or trademarks for its Implementations, and
 >             Licensee agrees not to use the term "DomainKeys" in or  
as part
 >             of a name or trademark for its Implementations and  
shall not
 >             use the DomainKeys trademark in a manner that suggests  
that
 >             Yahoo! is the source of Licensee's Implementations. Upon
 >             request, Licensee agrees to allow Yahoo! to review  
Licensee's
 >             software distributed or marketed in connection with the
 >             DomainKeys trademark and shall promptly remedy any use  
of the
 >             trademark in connection with software that is not an
 >             Implementation.

Generally harmless and useless.  I don't believe this says anything
that trademark statutes and case law doesn't already say.

 >         3.5 Yahoo! may, from time to time and at its sole discretion,
 >             update or modify the terms of this Agreement.  If  
Yahoo! makes
 >             any such modifications, Licensee may continue under  
the terms
 >             and conditions of this Agreement or agree to the  
updated or
 >             modified terms and conditions.

Gives an developer the option -- no problem here.

 >         3.6 Licensee may choose to distribute Implementations  
under this or
 >             a different agreement, provided that:
 >
 >                 (a) a copy of this Agreement or the different  
agreement is
 >                     included with each Implementation along with the
 >                     following prominently displayed statement: "By  
making,
 >                     using, selling, offering for sale, importing,  
and/or
 >                     sublicensing Implementations as permitted, you  
agree to
 >                     the terms and conditions of the Yahoo! DomainKeys
 >                     Patent License Agreement or other agreement  
contained
 >                     herein."; and

This statement would need to go in our LICENSE file.

 >                 (b) if distributed under a different agreement, such
 >                     different agreement contains terms and  
conditions that
 >                     (i) provide no fewer rights, privileges,  
obligations,
 >                     and immunities to DomainKeys Developers than  
the terms
 >                     and conditions of this Agreement, including,  
without
 >                     limitation, Sections 1.1, 3.1, 3.2, 3.4, 3.5,  
3.8, and
 >                     4.1-4.3.

This just reiterates that we don't have to include exactly this
license, as long as we don't try to limit rights.  We obviously can't
offer more rights or fewer obligations than we have a license to.
Bottom line is that I believe we would also need to follow the
statement above with this entire license, all within (or referenced
from within) the LICENSE file.

 >         3.7 This Agreement and the rights hereunder will terminate
 >           automatically:
 >
 >                 (a) if Licensee at any time during the term of this
 >                     Agreement asserts any Implementation Patent Claim
 >                     against Yahoo! or any of its subsidiaries;
 >
 >                 (b) if Licensee at any time during the term of this
 >                     Agreement asserts any Implementation Patent Claim
 >                     against any DomainKeys Developer or any  
licensees of
 >                     any DomainKeys Developer; or
 >
 >                 (c) where (a) or (b) do not apply, if Licensee  
fails to
 >                     comply with any term(s) of this Agreement and  
fails to
 >                     cure such breach within 30 days of Licensee  
becoming
 >                     aware of such breach.

similar to what was already stated in 3.1 and 3.2 (although I think
there's a case covered here that isn't covered there).  No problem to
me.

 > 4.      LEGAL DISCLAIMERS.
 >
 >         4.1 THE YAHOO! PATENT CLAIMS, THIS AGREEMENT, THE DOMAINKEYS
 >             TRADEMARK, AND THE SPECIFICATIONS ARE PROVIDED ON AN  
"AS IS"
 >             BASIS, WITHOUT REPRESENTATIONS OR WARRANTIES OF ANY KIND,
 >             EITHER EXPRESS OR IMPLIED, INCLUDING, WITHOUT  
LIMITATION, ANY
 >             REPRESENTATIONS OR WARRANTIES OF TITLE, NON-INFRINGEMENT,
 >             MERCHANTABILITY, INTEGRATION OR FITNESS FOR A PARTICULAR
 >             PURPOSE. Licensee is solely responsible for  
determining the
 >             appropriateness of exercising any rights under this  
Agreement
 >             and using the Specifications and the DomainKeys  
trademark and
 >             assume all risks associated in connection therewith,  
including,
 >             but not limited to, the risks and costs of program  
errors,
 >             compliance with applicable laws, damage to or loss of  
data,
 >             programs or equipment, and unavailability or  
interruption of
 >             operations.
 >
 >         4.2 By attempting to exercise any rights under this  
Agreement,
 >             Licensee expressly acknowledges and agrees that no  
assurances
 >             are provided by DomainKeys Developers with respect to the
 >             validity of the Yahoo! Patent Claims or that the
 >             Specifications, the DomainKeys trademark or any  
implementations
 >             related to the Specifications or the DomainKeys  
trademark do
 >             not infringe or misappropriate the patent, trademark  
or other
 >             intellectual property rights of any other entity.  
DomainKeys
 >             Developers disclaim any liability to Licensee for claims
 >             brought by any other person or entity based on  
infringement or
 >             misappropriation of intellectual property rights or
 >             otherwise. As a condition to exercising the rights and  
licenses
 >             granted hereunder, Licensee hereby assumes sole  
responsibility
 >             to secure any other intellectual property rights needed.
 >
 >         4.3 DOMAINKEYS DEVELOPERS SHALL NOT HAVE ANY LIABILITY FOR  
ANY
 >             DIRECT, INDIRECT, INCIDENTAL, SPECIAL, EXEMPLARY, OR
 >             CONSEQUENTIAL DAMAGES (INCLUDING WITHOUT LIMITATION LOST
 >             PROFITS), HOWEVER CAUSED AND ON ANY THEORY OF LIABILITY,
 >             WHETHER IN CONTRACT, STRICT LIABILITY, OR TORT (INCLUDING
 >             NEGLIGENCE OR OTHERWISE) ARISING IN ANY WAY OUT OF THE  
EXERCISE
 >             OF ANY RIGHTS UNDER THIS AGREEMENT, EVEN IF ADVISED OF  
THE
 >             POSSIBILITY OF SUCH DAMAGES, AND EVEN IF THE REMEDIES  
PROVIDED
 >             FOR IN THIS AGREEMENT FAIL OF THEIR ESSENTIAL PURPOSE.

Looks like generally standard disclaimers of warranty and limitation
of liability.

 > 5.      MISCELLANEOUS PROVISIONS.
 >
 >         5.1 This Agreement shall be governed by and construed  
under the
 >             laws of the United States and the State of California  
without
 >             giving effect to California conflict of law provisions  
or to
 >             construction provisions favoring either party on the  
basis of
 >             which party drafted any portion of this Agreement. All  
actions
 >             arising out of or relating to this Agreement that involve
 >             Yahoo!  as a party will be adjudicated exclusively by the
 >             Superior Court of the State of California for the  
County of
 >             Santa Clara or the United States District Court for the
 >             Northern District of California.
 >
 >         5.2 This Agreement constitutes the entire agreement  
between the
 >             parties with respect to the subject matter hereof.  In  
the
 >             event that any provision of this Agreement is deemed  
to be
 >             invalid, such invalidity shall not affect the  
remainder of this
 >             Agreement.  The failure of Yahoo! to require  
performance by
 >             Licensee of any provision hereof shall not affect the  
full
 >             right to require such performance at any time  
thereafter; nor
 >             shall the waiver Yahoo!  of a breach of any provision  
hereof be
 >             taken or held to be a waiver of the provision itself.
 >
 >         5.3 This Agreement shall be binding and inure to the  
benefit of the
 >             parties hereto and their respective permitted  
successors and
 >             assigns.

I don't see anything bad in here either (although there are open
source folks out in the world who don't like licenses governed by
specific US jurisdictions, but we've accepted that by allowing
CPL/EPL/MPL/CDDL libraries in our projects).

====


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