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From "Roy T. Fielding" <field...@gbiv.com>
Subject Re: a note about indirect contributions
Date Thu, 24 Apr 2008 00:02:16 GMT
On Apr 22, 2008, at 11:46 PM, Henning Schmiedehausen wrote:
> On Tue, 2008-04-22 at 15:25 -0700, Roy T. Fielding wrote:
>> On Apr 22, 2008, at 12:11 PM, Gianugo Rabellino wrote:
> [...]
>>> I'm fully with you on Work For Hire scenarios, but I wouldn't go as
>>> far as saying that any kind of contract means a joint contribution
>>> per se.
>>
>> It isn't *any* kind of contract.  It is a contract for company B to
>> contribute
>> to the ASF under our contribution licenses.  That is transitive
>> because it
>> demonstrates the intent of the patent owner that a contribution be  
>> made,
>> which would be an inherent contradiction if the patent owner
>> simultaneously
>> demanded exclusive use rights on that same technology.
>
> Hm, that is actually interesting, because in the past, I did give
> companies a discount, if I am allowed to give code that I developed as
> part of an internal project back to into the open source project.
>
> Your statement means, that this will drag that company into the  
> project
> as a joint contributor and if any of my contributions infringe on
> patents, this will actually make that company liable.

No, that's not what my statement means.  If the company does not own
the patent rights, then it can't supply you with the licenses necessary
to contribute them.  There is no inherent contradiction in such a
contract that would cause the license to be implied.

The company may be liable for anything it orders as part of your  
contract;
the CCLA is not going to make any difference in that regard.  What the
CCLA text does is establish the scope of what licenses owned or  
controlled
by the joint You are granted to the ASF and users of our software to
include anything necessary to make use of Your contributions.
How else are we supposed to make use of those contributions?

If, OTOH, a company knowingly and intentionally hires you to contribute
code that infringes some third party's claims, then it should be liable
to the patent owner just as it would be liable if it hired someone to
steal a pizza.  Ultimately, the result of civil litigation depends as
much on intent as it does on the effect.

In any case, this is an entirely different scenario than the current  
one,
where the patent owner is proudly announcing that they are contributing
to the ASF indirectly.

> I can see that as a big hurdle for any client to allow me to  
> contribute
> changes back to a project.
>
> How would you suggest that I (as consultant / contractor) shield my
> customer against these claims? "Don't tell anyone that I got paid for
> working on open source" doesn't seem to be a viable option.

Most companies actually want the publicity associated with your
contribution and are willing to trade this very small risk for that
benefit (I think if you asked them they might have already considered
this risk or placed it in your contract as a burden on you).  If not,
then the solution is for you to retain ownership of the entire work
product and let you make your own decision about contributing.
Exactly what that would mean for patent claims would probably depend
on how the work product was defined, but there's way too many
hypotheticals in this question to even attempt a guess.

Regardless, we can only trust that you, as a Contributor, will not
intentionally contribute things in violation of our CLA.  That seems
to be good enough to keep us out of trouble, so far, and if it ever
does fall through we have the legal foundation in place to shield us
while we recover from any mistakes.

....Roy

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