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From "Roy T. Fielding" <field...@gbiv.com>
Subject Re: Open Source, Patents and "Patent Exhaustion"
Date Fri, 11 Apr 2008 05:12:55 GMT
On Apr 11, 2008, at 1:40 AM, Lawrence Rosen wrote:
> [Since this is on license-discuss, I reserve the right to retract  
> anything I
> say here.... It is not legal advice. /Larry]
>
> Geir Magnusson wrote:
>> This is true, but it's important we face the notion of "derivative
>> work" head on, because I think that it's part of what causes us to  
>> get
>> tangled in this issue.
>
> Unfortunately, Geir is right. Even though the notion of derivative  
> works
> doesn't apply directly to patent law, it does apply to Apache  
> software. Geir
> isn't the first to be perplexed by the connection.
>
> Here's how I believe we intend to do it in ASF (right, Roy?) Just  
> to be
> clear, the place where important "derivative works" come into the  
> picture is
> in bold below, not until step 4:
>
> 1. We first identify the "Work" to which the patent license  
> applies. Let's
> call it Harmony. In the case of a contribution to Harmony, we look at
> Harmony *after* it is combined with the contribution, literally  
> what that
> combination would be and how it might function on the exact date  
> and time of
> the contribution but nobody actually does it that quickly or that
> precisely.... While that combination is, in some sense, a  
> derivative work of
> Harmony, this isn't the place where derivative works matter. All we  
> need to
> do is look at Harmony after that contribution is combined with it,  
> and call
> it HARMONY.
>
> 2. The set of interesting "Patent Claims" includes those claims  
> owned or
> licensable by the contributor--now or in the future--that read on that
> version of HARMONY.

Right.

> 3. ASF receives a perpetual license [as I understand the CLA] to  
> practice
> those Patent Claims in the Harmony project (however that project  
> evolves
> through derivative works and other ways)--and for any other  
> projects that
> ASF's brightest minds can conceive of. As always, we will  
> distribute that
> software under the Apache License. Here, too, the notion of  
> derivative works
> is not important. ASF can always create derivative works or start from
> scratch. We have a perpetual license to those Patent Claims.

Yes, but note that (under the CLA) the grant is "You hereby grant to the
Foundation and to recipients of software distributed by the Foundation a
perpetual".  In other words, the CLA grant is not limited once the  
set of
claims is determined.  Apache is not granting the license -- we are
informing the recipient of the licenses that have been granted to all
recipients of our software and the fact that the grant is reciprocal.

Geir has been questioning the difference between the CLA text and the AL
text, even though his examples are all cases where the ASF would require
a CLA. *shrug*  He is not paying attention to the definition of Work in
the Apache License.  He is ignoring the fact that the license comes from
the patent owner, not the ASF, and that the Apache License is not a
conduit for patent rights other than by virtue of the behavior of the
patent owner in contributing some patented claims under the terms of
a license that explicitly permits the normally-monopolized rights.

> 4. Our licensees and their customers receive a perpetual license [as I
> understand the Apache License] to those Patent Claims only for  
> software that
> ASF actually distributes (including Harmony, of course, in our  
> example), and
> to DERIVATIVE WORKS of that software, regardless of who creates those
> DERIVATIVE WORKS. They do not get a license for independent works. The
> implication is that our licensees and their customers must accept our
> license, including our patent cross-license and defensive termination,
> warranty exclusion, etc., and must actually start with Apache  
> software, not
> start from scratch, to create DERIVATIVE WORKS.

That is not true of permissions granted under the CLA.  Anyone who  
receives
software (any software) from us has a license to the contributed claims.

Under the Apache License (if we would accept such a contribution without
a CLA), the scope of claims granted is defined by the combination as you
describe above.  What folks have a hard time understanding is that the
license to do patently-controlled things with the Work (any software
covered by the Apache License terms), which is the only license we
explicitly talk about in the AL, does not magically limit all of the
other patent licenses (explicit or implied) that the recipient may have
from other sources, including the CLA.

At least that's the plan.  It is fair to say that any lawsuit that would
attempt to extract royalties for a patent on claims that were  
contributed
to an Apache project would be *very* strange and painful for all  
concerned.
The goal of the Apache licenses is to encourage contributions from very
conservative companies while at the same time discouraging any behavior
that might lead one to believe there would be any gain from a lawsuit
on us or downstream users.  It does not need to be perfect.

> In summary, ASF receives somewhat broader patent rights than ordinary
> licensees. We get to start the chain with software that we create  
> "from
> scratch", but downstream licensees and their customers only get  
> rights to
> make, use and sell copies and DERIVATIVE WORKS of our software.
>
> Roy or anyone else, is that correct?

It is more accurate to say that we receive a lot of rights on behalf
of our downstream users and we only advertise some of those rights
while passing them downstream.  The reason we don't make it clear to
the recipient that we have actually arranged for them more permissions
than actually stated in our license is because we can only track those
permissions associated with what we actually distribute as the Work.

....Roy


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