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From Roman Shaposhnik <...@apache.org>
Subject Re: Sberbank. Corporate Contributor License Agreement
Date Mon, 15 Aug 2016 18:57:01 GMT
Hi Andrei!

first of all, welcome to ASF! It would be exciting to see you guys
contributing to
the Foundation's projects.

I assume that you're new to how the foundation works so I wanted to tell you
about a few things that old timers here take for granted, but which may surprise
newcomers:
   0. ASF is a United States 501(c)(3) non-profit corporation,
incorporated in Delaware, USA
   1. ASF is a 100% volunteer driven organization
   2. The closest you come to an official ASF opinion is when you ask
a VP of X (VP Legal
        in this particular case) for it or when you go directly to the
board of directors of ASF.
        If you ever need to go that route the following page may be
helpful: http://www.apache.org/legal/

Now, the ramifications of the above 3 items are such that most of the
feedback you're
going to get on this thread will be specific to the USA legal system
which may or may
not map directly to the situation specific to your jurisdiction. On
top of that, and I can
definitely speak for myself, be ready for the feedback that is
advisory in nature, since
at the end of the day very few of us on this list are legal
professionals (even in US jurisdiction).

With that in mind, the rest of my comments are in-line.

On Mon, Aug 15, 2016 at 8:34 AM, Корецкий Андрей Николаевич
<ANKoretskiy.SBT@sberbank.ru> wrote:
> Dear representatives of Apache Software Foundation,
>
> Sberbank of Russia (hereinafter, Sberbank) intends to conclude with you a
> Corporate Contributor License Agreement (hereinafter, CCLA) to become the
> Contributor of Apache Community.
>
> In order to avoid misunderstandings in interpretation of CCLA in the future
> and for the purpose of establishing long-term cooperation, we would like to
> clarify the following points:1. Sberbank has a 100%-owned ‘Sberbank –
> Technology’ Joint Stock Company (hereinafter, SBT), which employees will
> actually perform all contribution activities under CCLA on behalf of
> Sberbank. Therefore,  it is necessary to clarify, whether employees of  SBT
> and other subsidiary companies  of Sberbank are entitled to act as
> ‘Designated Employees’ according to the meaning of Clauses 4 and 8 of CCLA
> and Annex A to CCLA.

When I was dealing with exact same issues for some of my US  clients, the
test there was around 'control'. If the umbrella entity has that degree of
control over the subject entity you need to bring the umbrella entity into
the picture.

> If the answer to our question is positive, is it possible to include some
> adjustments in the text of CCLA to be signed by Sberbank to clearly stress
> the point that actual contributing workers, being employees of SBT, shall
> also be considered as Sberbank’s employees within the scope of CCLA?

Our default position at ASF is that we do NOT not amend our CCLA and ICLA.

I would extremely surprised if your case were to qualify as an exception.

> 2. Article 3 of CCLA “Grant of Patent License” states the following:
>
> “Subject to the terms and conditions of this Agreement, You hereby grant to
> the Foundation and to recipients of software distributed by the Foundation a
> perpetual, worldwide, non-exclusive, no-charge, royalty-free, irrevocable
> (except as stated in this section) patent license to make, have made, use,
> offer to sell, sell, import, and otherwise transfer the Work, where such
> license applies only to those patent claims licensable by You that are
> necessarily infringed by Your Contribution(s) alone or by combination of
> Your Contribution(s) with the Work to which such Contribution(s) were
> submitted”.
>
> The aforementioned provision is of concern for Sberbank due to its ambiguous
> nature.
>
> Specifically, it is unclear, whether or not it applies only to patents,
> which already existed at the moment of submission of Contribution or it can
> be also applied to future patents. Could you please clarify this matter?

It applies to any patents that can be associated with the donation going
into the Foundation. Note, however, that patent implications around open
source is a hot area of debate.

Also, given a different jurisdiction that your company is in, there may
be implications on your side (not in US), but those we won't be able to help
you with.

> It is also not clear, whether these patent license provisions may apply to
> situations, where other Contributors implemented in their Contributions some
> technologies already patented by Sberbank, but which were not implemented in
> contributions somehow submitted by Sberbank to the Project [actually,
> Sberbank may not have an interest to commercialize them].
>
> However, the
> current wording of CLA may give basis for interpretation that patent license
> provisions apply to such situations, since: 1) once those Contributions of
> third parties are submitted, they become a part of Work, and 2) Sberbank
> submitted some Contributions in the past to this Work, and it is possible to
> claim that there is a combination of these Contributions and the Work
> [containing Contributions of third parties as per point 1], which can be
> infringing for Sberbank’s patent claims.
>
> Is this interpretation possible from the point of view of Apache Foundation?

I would like to suggest that the first question you need to ask your legal
council is whether THEY think this interpretation is possible. Or better
yet, what is the likelihood (because nothing in legal is ever black-n-white)
of that interpretation to ever come in court.

IOW, regardless of what we think here at ASF, your legal risk management
is on your side and only your legal council can asses that.

Now, working with one of my clients, I came across a legal council that
allowed a non-trivial possibility of a similar interpretation. I had to work
very closely with them to convince them that the risks are manageable.
All of that hand nothing to do with ASF. ASF is not in a position to make
indemnifying statements outside of the text of Apache License (v2).

> If not, is it possible to bring clarity on this matter in the text of CLA to
> mitigate potential risks of misunderstanding?

Like I said above -- as a matter of default policy we don't do the amendments.

Thanks,
Roman.

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