Subject: RE: testing kit conformance as a condition of distribution
From: "Lawrence Rosen" <lrosen@rosenlaw.com>
Date: Tue, 29 Jun 2004 23:14:19 -0700

 Tue, 29 Jun 2004 23:14:19 -0700
Brian,

I am surprised that Sun is still making this an issue. I thought several of
us had already told them that their proposed Notice is flat-out incompatible
with open source:

   NOTICE FROM SUN MICROSYSTEMS: 
   Any redistributed derivative work of the software licensed hereunder 
   must be compatible and branded with the appropriate compatibility logo
   specified by Sun and licensed by Sun persuant [sic] to a separate 
   Trademark License required to be executed by you with Sun.

Under open source principles, neither Sun nor Apache nor anyone else can
impose requirements on the character or content of derivative works of open
source software. Sun seeks here to impose such requirements in the name of
compatibility and branding. That won't fly. I'm confident no such provision
would be found acceptable in an open source license.

ASF and its customers must remain free to create compliant or non-compliant
derivative works as they, in their sole judgment, decide to do. The only
thing that Sun should retain is the right to prevent non-compliant versions
from using Sun's certification marks, and this they can do under basic
trademark law even without that unacceptable provision. That provision isn't
really necessary for Sun, but it sure hurts the freedom to create derivative
works.

The alternative wording that ASF proposed on your Geronimo download page
would work:

   Any claims of compliance to Java(tm) Technology Specification(s) 
   apply only to the original, unmodified Work. Derivative Works do 
   not inherit compliance and may be subject to third-party restrictions
   on claims of compliance and use of related trademarks. 
 
This is a true statement under trademark law and so saying it isn't really
necessary. A simpler way to resolve the open source incompatibility would be
simply to remove the offensive provision entirely from the J2EE license. As
I recall, nothing in the J2EE license otherwise grants rights to apply Sun's
marks on non-compliant software. Sun can still protect its certification
marks and trademarks without that provision and Sun loses nothing by
deleting it. But if Sun's lawyers insist on making this point about
trademark law explicit, perhaps they can devise appropriate wording for an
"Exclusions from License" provision that doesn't restrict the freedom to
create derivative works.

By the way, I like certification marks, including Sun's. I think they help
customers to select software that meets important standards. I just don't
like it when companies try to force free software to bear certification
marks its authors may not want or need.

/Larry

Lawrence Rosen 
Rosenlaw & Einschlag, technology law offices (www.rosenlaw.com)
General counsel, Open Source Initiative (www.opensource.org) 
3001 King Ranch Road, Ukiah, CA 95482 
707-485-1242 * fax: 707-485-1243 
email: lrosen@rosenlaw.com 


> -----Original Message-----
> From: Brian Behlendorf [mailto:brian@collab.net]
> Sent: Monday, June 28, 2004 11:09 PM
> To: license-discuss@opensource.org
> Subject: testing kit conformance as a condition of distribution
> 
> 
> I know this list is supposed to be about reviewing proposed licenses
> rather than speculation, but hopefully you'll at least find this question
> more on-topic than most.
> 
> With respect to the language at the top of:
> 
> http://geronimo.apache.org/download.html
> 
> and for context:
> 
> http://nagoya.apache.org/eyebrowse/ReadMsg?listName=announce@apache.org&ms
> gNo=52
> 
> The NOTICE Sun is asking us to post seems, to me, to effectively
> constitute an additional term of copyright.  Such a term would not seem to
> be OSD compliant.  Empirically I can argue this easily, as no open source
> license has been approved with such a conformance requirement on
> derivative works (AFAIK).  The Sun Internet Standards Source License comes
> close, but it also allows the release of non-conformant works so long as
> the full source code to non-conformant works is available.  What I need
> are solid sound-bite-y easy-to-explain but non-dogmatic arguments as to
> why such a conformance requirement is not compatible with the way Open
> Source works (putting aside compatibility with any particular licenses).
> 
> Thanks in advance,
> 
>  	Brian
> --
> license-discuss archive is at http://crynwr.com/cgi-bin/ezmlm-cgi?3

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