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From "Lawrence Rosen" <lro...@rosenlaw.com>
Subject RE: Proposal: Disclosure of patents by Apache projects
Date Fri, 22 May 2015 00:33:45 GMT
Jim Wright wrote:

> you might be placing end users in the unwanted position of suffering enhanced damages
for willful infringement by providing the notices you suggest

 

Hi Jim,

 

Let's not frighten developers and distributors with old fears. I'm not worried about you suffering
willful damages merely because we identify the existence of a patent.

 

Willful infringement (treble) damages awards are getting much rarer. It now requires "at least
a showing of objective recklessness ... [that] was either known or so obvious that it should
have been known to the accused infringer."  Take a look at In Re Seagate Technology,  http://www.cafc.uscourts.gov/images/stories/opinions-orders/M830.pdf.
The CAFC also reemphasized that "there is no affirmative obligation to obtain opinion of counsel."

 

And from Thomas Gray's poem, Ode on a Distant Prospect of Eton College (1742): "Thought would
destroy their paradise. Where ignorance is bliss, 'tis folly to be wise." http://www.thomasgray.org/cgi-bin/display.cgi?text=odec


 

/Larry

 

 

From: Jim Wright [mailto:jim.wright@oracle.com] 
Sent: Thursday, May 21, 2015 3:43 PM
To: legal-discuss@apache.org
Cc: Lawrence Rosen
Subject: Re: Proposal: Disclosure of patents by Apache projects

 

Larry, were you only to be giving them information they otherwise lacked, without other consequence
for their possession of that information, that might or might not be a worthwhile goal, but
it seems to me that you might be placing end users in the unwanted position of suffering enhanced
damages for willful infringement by providing the notices you suggest, or forcing them to
spend money obtaining opinions on infringement and validity before use.  Thoughts?  

 

While the goal of additional information is laudable, I might suggest that if you're going
to tell people about patent threats at all (something which requires careful thought vis-a-vis
privilege and other issues), you do so only if they specifically ask the ASF, rather than
in the NOTICE file.  This way each org can make its own decisions about how to handle this
issue.

 

 Regards,

  Jim


On May 21, 2015, at 11:51 AM, Lawrence Rosen <lrosen@rosenlaw.com <mailto:lrosen@rosenlaw.com>
> wrote:

To: legal-discuss@apache.org <mailto:legal-discuss@apache.org> 

 

Elsewhere on internal Apache member email lists we've been discussing a patent that may or
may not apply to Apache software. I already quoted publicly the strongly-held opinion of one
Apache member that "this patent is just plain BS, IMHO." He may be right.

 

My concern is that Apache members are not qualified to make this determination about any patent.
Nor is the Apache Software Foundation resourced to do that analysis professionally for our
users. 

 

However, I believe that ASF is obligated to disclose whatever patent information comes to
our developers' and members' attention. This is one of the key purposes of a NOTICE file in
open source software.

 

Others disagree strongly. Here is what Roy Fielding wrote here on 27 Mar 2012: http://s.apache.org/B3F.
I quote part of it now:

 

It has been discussed.  This idea is the moral equivalent of pointing a gun

at our user while saying that it is most likely unloaded.  It simply isn't done.

Adobe has not asked for it to be done.  The only company that has ever asked

for it to be done is Sun, and we not only refused to do so -- we exited the

entire Java community process because of it.

 

So, the answer to your suggestion is well known.  Sam knows that answer.

He does not need to discuss it with you or anyone else because there is

already a long history behind it and a board precedence.  We do not notify

our users that an unspecified patent might possibly be owned by some

third-party based on a theoretical reading of a patent license on a

specification that we don't even implement.  If that third-party identifies

a specific patent AND indicates that the patent might apply to our product,

then we would include information about that in a README file (assuming

we didn't kill the product outright).

 

As a non-patent but practicing attorney, I don't believe I'd ever personally recommend that
we kill an international Apache project outright simply because someone pointed a US patent
gun at it.

 

On the other hand, we have a NOTICE file and we owe our customers whatever the facts are.

 

I'm looking for agreement by our customers to this NOTICE policy in a very antagonistic, patent-hating
Apache community.

 

/Larry


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