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From: "Roy T. Fielding" <fielding@gbiv.com>
Subject: Re: a note about indirect contributions
Date: Wed, 23 Apr 2008 15:29:42 -0700
To: Legal Discuss <legal-discuss@apache.org>

Over on the POI list, Andy wrote:

> Roy's message I really didn't get.  If I pay you to do some work  
> for me
> in the garden then you are then authorized to sell my house?

If you contract with someone to sell your house, and they do so, then
the house is sold.  One cannot claim that the contractor did not have
the right to sell your house, after the fact, and then raise the asking
price to see if the buyer will follow along.  I think there is plenty
of precedent to back up that bit of property law, but you would have
to check with a lawyer to be sure.

If you contract a software developer to develop and distribute software
that reads on your patent, the software developer can only legally do so
if that contract makes the contractor a licensee of that patent.  If the
distribution is specifically to contribute the patented technology to an
open source project that has certain conditions on contributions that
are well known by the public, and the intent of the contract is to
contribute under those conditions, then the patent owner must have
licensed the contractor to do exactly that, even if it isn't spelled
out in detail in the words of the contract.  The presumption is that the
owner has agreed to what the contractor needs to fulfill the contract.

I doubt there is precedent for this in software licensing, even if it
is based on very old contract/property law, which is why it is spelled
out specifically in our contributor agreements.  The text is based on
what Apple's lawyers asked me to review for APSL2.  It was added to AL2,
by me (with permission), specifically for the purpose of defending
Apache against indirect contributions.  It was later vetted by dozens
of lawyers in our public review, and an even larger legal team within
IBM tore through it word-by-word when they were internally debating
over the CCLA.

My opinion is not a "creative reading" of the terms of contribution
(if anything, it was a "creative writing") and I have no doubt about
its intent because I am the one who put it in.  The only unknown concern
is its enforceability in court, which we will only truly learn by
counter-suing a company when they try to collect royalties later on.
We are in no hurry to do that.

Honestly, we are now 13 years into this organization and we still have
never been sued (knock on wood).  That isn't just because we are lucky.
It is because we prepared for these issues a long time ago and made use
of the best lawyers in the software business.

The question was whether the ASF (and POI) are legally covered by
the terms of the Sourcesense CCLA.  The answer is YES, once we have
that CCLA properly recorded.  Is it better to have a CCLA directly
from the owner of the patents?  YES, of course, but it is NOT NECESSARY.
If it were necessary, then there would be a huge hole in our CLAs that
any company could drive a truck through without letting us know
about it via a press release.  Feel free to get those extra assurances
from the horse's mouth, but do not claim they are necessary.

Obviously, we are aware of the need for an adequate license on
indirect contributions.  That is the only reason we have the
"control ... by contract" text in the CCLA!  It is reasonable to ask
the legal committee to verify that we have such protection when that
isn't understood.  It is not reasonable, once verification has been
given, to assume that Andy's personal opinion on the law outweighs
the intent of the author of the CLAs and the combined legal review
that has already been poured over the text.  If you want to do more,
then do more, but do not damage the Foundation by making unfounded
accusations about our contribution process OR our capability to
anticipate the legal needs of our own projects.

....Roy


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