Return-Path: X-Original-To: apmail-legal-discuss-archive@www.apache.org Delivered-To: apmail-legal-discuss-archive@www.apache.org Received: from mail.apache.org (hermes.apache.org [140.211.11.3]) by minotaur.apache.org (Postfix) with SMTP id 371891721D for ; Fri, 22 May 2015 00:34:17 +0000 (UTC) Received: (qmail 3632 invoked by uid 500); 22 May 2015 00:34:17 -0000 Delivered-To: apmail-legal-discuss-archive@apache.org Received: (qmail 3483 invoked by uid 500); 22 May 2015 00:34:16 -0000 Mailing-List: contact legal-discuss-help@apache.org; run by ezmlm Precedence: bulk List-Help: List-Unsubscribe: List-Post: Reply-To: legal-discuss@apache.org List-Id: Delivered-To: mailing list legal-discuss@apache.org Received: (qmail 3472 invoked by uid 99); 22 May 2015 00:34:16 -0000 Received: from Unknown (HELO spamd3-us-west.apache.org) (209.188.14.142) by apache.org (qpsmtpd/0.29) with ESMTP; Fri, 22 May 2015 00:34:16 +0000 Received: from localhost (localhost [127.0.0.1]) by spamd3-us-west.apache.org (ASF Mail Server at spamd3-us-west.apache.org) with ESMTP id 297F3182865 for ; Fri, 22 May 2015 00:34:16 +0000 (UTC) X-Virus-Scanned: Debian amavisd-new at spamd3-us-west.apache.org X-Spam-Flag: NO X-Spam-Score: 2.9 X-Spam-Level: ** X-Spam-Status: No, score=2.9 tagged_above=-999 required=6.31 tests=[DKIM_SIGNED=0.1, DKIM_VALID=-0.1, DKIM_VALID_AU=-0.1, HTML_MESSAGE=3, SPF_PASS=-0.001, URIBL_BLOCKED=0.001] autolearn=disabled Authentication-Results: spamd3-us-west.apache.org (amavisd-new); dkim=pass (768-bit key) header.d=rosenlaw.com Received: from mx1-us-west.apache.org ([10.40.0.8]) by localhost (spamd3-us-west.apache.org [10.40.0.10]) (amavisd-new, port 10024) with ESMTP id QYs-wJ7x1EN9 for ; Fri, 22 May 2015 00:34:02 +0000 (UTC) Received: from gproxy7-pub.mail.unifiedlayer.com (gproxy7-pub.mail.unifiedlayer.com [70.40.196.235]) by mx1-us-west.apache.org (ASF Mail Server at mx1-us-west.apache.org) with SMTP id 367AF204F2 for ; Fri, 22 May 2015 00:34:02 +0000 (UTC) Received: (qmail 18272 invoked by uid 0); 22 May 2015 00:32:55 -0000 Received: from unknown (HELO cmgw3) (10.0.90.84) by gproxy7.mail.unifiedlayer.com with SMTP; 22 May 2015 00:32:55 -0000 Received: from box597.bluehost.com ([66.147.242.197]) by cmgw3 with id WuT31q0014GF2VN01uT69i; Fri, 22 May 2015 00:27:06 -0600 X-Authority-Analysis: v=2.1 cv=d9Vml3TE c=1 sm=1 tr=0 a=NRJ8aB/FPT4S3utBguGD+g==:117 a=NRJ8aB/FPT4S3utBguGD+g==:17 a=cNaOj0WVAAAA:8 a=f5113yIGAAAA:8 a=4F77bVRYAAAA:8 a=FxJxCPAPh0wA:10 a=AqkBdCNi7UMA:10 a=h1PgugrvaO0A:10 a=DAwyPP_o2Byb1YXLmDAA:9 a=Zr7miEi8wWIA:10 a=cKsnjEOsciEA:10 a=2oeSqxxVzlsA:10 a=5RPZlWmqAAAA:8 a=2s1d3EjnAAAA:8 a=yPCof4ZbAAAA:8 a=mV9VRH-2AAAA:8 a=gK-oylifTyJ6dxPLMb0A:9 a=YV0odtU7cW6Zp1D-:21 a=jkBCFyabbRIBKtl-:21 a=QEXdDO2ut3YA:10 a=yMhMjlubAAAA:8 a=SSmOFEACAAAA:8 a=NUOuIFIvbSCVxgUfzJYA:9 a=dLEtMyLnHjaC_jy5:21 a=Z4q8eiyA61uCXsrm:21 a=jgeTSbs8yQfr-0Yx:21 a=gKO2Hq4RSVkA:10 a=UiCQ7L4-1S4A:10 a=hTZeC7Yk6K0A:10 a=frz4AuCg-hUA:10 DKIM-Signature: v=1; a=rsa-sha256; q=dns/txt; c=relaxed/relaxed; d=rosenlaw.com; s=default; h=Content-Type:MIME-Version:Message-ID:Date:Subject:In-Reply-To:References:Cc:To:From:Reply-To; bh=UaYtiX6OTfP3/j2jJUm2V3JoGN8ZKeiE0NQJbGR6xM8=; b=Ot1bMlG1iDCtLGaGjxexd6NeCM5BNZQLiXitQXaUPykPwtWK8Fil28xq6xMwJj+kDobo1a00vGA400CHJCEkaLANm0/s0Spu2GE0E5nTybhdp/W46mQOr82E7lXvYkLK; Received: from [70.36.224.178] (port=25816 helo=LawrenceLenovo) by box597.bluehost.com with esmtpsa (TLSv1.2:DHE-RSA-AES256-GCM-SHA384:256) (Exim 4.84) (envelope-from ) id 1YvauL-000338-JS; Thu, 21 May 2015 18:33:49 -0600 Reply-To: From: "Lawrence Rosen" To: Cc: "Lawrence Rosen" References: <0ebc01d093f7$197e7ef0$4c7b7cd0$@rosenlaw.com> In-Reply-To: Subject: RE: Proposal: Disclosure of patents by Apache projects Date: Thu, 21 May 2015 17:33:45 -0700 Message-ID: <0ffa01d09426$f7fb8b30$e7f2a190$@rosenlaw.com> MIME-Version: 1.0 Content-Type: multipart/alternative; boundary="----=_NextPart_000_0FFB_01D093EC.4B9DC4A0" X-Mailer: Microsoft Outlook 15.0 Thread-Index: AQGcqBNAAheXYVdKBm96SzOYG9nt+wMKFMNgndahb4A= Content-Language: en-us X-Identified-User: {1397:box597.bluehost.com:rosenla1:rosenlaw.com} {sentby:smtp auth 70.36.224.178 authed with lrosen@rosenlaw.com} ------=_NextPart_000_0FFB_01D093EC.4B9DC4A0 Content-Type: text/plain; charset="utf-8" Content-Transfer-Encoding: quoted-printable 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 =20 Hi Jim, =20 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. =20 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." =20 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=3Dodec=20 =20 /Larry =20 =20 From: Jim Wright [mailto:jim.wright@oracle.com]=20 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 =20 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? =20 =20 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. =20 Regards, Jim On May 21, 2015, at 11:51 AM, Lawrence Rosen > wrote: To: legal-discuss@apache.org =20 =20 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. =20 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.=20 =20 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. =20 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: =20 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. =20 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). =20 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. =20 On the other hand, we have a NOTICE file and we owe our customers = whatever the facts are. =20 I'm looking for agreement by our customers to this NOTICE policy in a = very antagonistic, patent-hating Apache community. =20 /Larry ------=_NextPart_000_0FFB_01D093EC.4B9DC4A0 Content-Type: text/html; charset="utf-8" Content-Transfer-Encoding: quoted-printable

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." =C2=A0Take a look at In Re Seagate Technology, = =C2=A0http://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=3Dodec

 

/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> = wrote:

To: 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

=
------=_NextPart_000_0FFB_01D093EC.4B9DC4A0--