Subject: Re: For Approval: Educational Community License 1.0
From: "Christopher D. Coppola" <chris.coppola@rsmart.com>
Date: Mon, 30 Apr 2007 15:01:22 -0700
Mon, 30 Apr 2007 15:01:22 -0700
Brian,

Thanks for your thoughtful comments. We pursued this idea during the  
Summit we held on licensing among our community. Unfortunately we  
could not get agreement from some of the key members of our community  
(key contributors). Specifically it was cited that this approach  
would be inconsistent with CA law relating to ownership of IP created  
with state funds.

/Chris.



On Apr 30, 2007, at 12:58 PM, Brian Behlendorf wrote:

> On Mon, 30 Apr 2007, Christopher D. Coppola wrote:
> > We had a chance to discuss the suggestion that we should mention  
> in the ECL
> > 2.0 that there is only one sentence that is different from the  
> Apache 2.0 and
> > thatís all folks need to consider if they are already familiar  
> with the
> > Apache 2.0 license.  We think itís a very helpful suggestion, and  
> we are
> > submitting a revised draft of the license that makes the change.
>
> Now it seems like a tractable effort for me to add my 2c.  :)
>
> I think we can avoid needing to approve a new license here if the
> educational community in question is willing to make a change in  
> how it
> measures contributions to the project.  Here are the two lines  
> added to
> clause 3:
>
> > Any patent license granted hereby with respect to contributions  
> by an
> > individual employed by an institution or organization is limited to
> > patent claims where the individual that is the author of the Work is
> > also the inventor of the patent claims licensed, and where the
> > organization or institution has the right to grant such license  
> under
> > applicable grant and research funding agreements. No other  
> express or
> > implied licenses are granted.
>
> I am not a lawyer, this is not legal advice, but it does seem to me  
> like
> you're unnecessarily pushing a detail of whose patents and copyrights
> you've collected on the front end (a purpose served by the various
> Contributor Agreements out there, like Apache's) into the license
> agreement on the back end.  It also seems like there may be
> employers/institutions who would be happy to fulfill the  
> obligations of a
> Contributor.
>
> Do this instead.  Within your project, for those employers who can  
> not go
> along with the obligations of being a Contributor, establish that the
> Contributor is actually the individual, warranting on their own  
> that their
> contributions are their work and they can personally fulfill the
> obligations of contributorship.  In other words, take their  
> employers out
> of the equation.  That way their employers are not bound by the patent
> commitment or any other.
>
> Since employment law usually acrues the IP ownership of works  
> created on
> employer (or on employer hardware) to the employer, what would be  
> required
> is a waiver or grant between employer and individual Contributor  
> that says
> that the Contributor owns the copyright and patent rights on works  
> they
> create on employer time.  The employer can then ask the employee to  
> grant
> back to the employer the unlimited rights of redistribution, etc.,  
> that
> would normally exist if the employer was copyright holder.
>
> A Contributor doesn't even technically need to be the IP owner;  
> they just
> need to have the required rights to grant.
>
> The qualitative difference to an end user is that even if the  
> project says
> "built with the help of developers working for University X", there  
> is no
> longer the assurance that they won't be sued down the road as end- 
> users by
> University X for something related to that very same code.  You'd  
> owe it
> to your users to get very specific about who those Contributors were -
> perhaps publicly publishing the list of who signed contributor  
> agreements.
>
> It's a repeal of patent self-defense a bit, but I guess  
> universities are
> used to that. I think this approach still protects the project against
> submarined patents, too.
>
> Again, IANAL, but if this wouldn't work exactly, something close to it
> must.
>
>         Brian
>



Brian,

Thanks for your thoughtful comments. We pursued this idea during the Summit we held on licensing among our community. Unfortunately we could not get agreement from some of the key members of our community (key contributors). Specifically it was cited that this approach would be inconsistent with CA law relating to ownership of IP created with state funds.†

/Chris.



On Apr 30, 2007, at 12:58 PM, Brian Behlendorf wrote:

On Mon, 30 Apr 2007, Christopher D. Coppola wrote:
> We had a chance to discuss the suggestion that we should mention in the ECL
> 2.0 that there is only one sentence that is different from the Apache 2.0 and
> thatís all folks need to consider if they are already familiar with the
> Apache 2.0 license.† We think itís a very helpful suggestion, and we are
> submitting a revised draft of the license that makes the change.

Now it seems like a tractable effort for me to add my 2c.† :)

I think we can avoid needing to approve a new license here if the
educational community in question is willing to make a change in how it
measures contributions to the project.† Here are the two lines added to
clause 3:

> Any patent license granted hereby with respect to contributions by an
> individual employed by an institution or organization is limited to
> patent claims where the individual that is the author of the Work is
> also the inventor of the patent claims licensed, and where the
> organization or institution has the right to grant such license under
> applicable grant and research funding agreements. No other express or
> implied licenses are granted.

I am not a lawyer, this is not legal advice, but it does seem to me like
you're unnecessarily pushing a detail of whose patents and copyrights
you've collected on the front end (a purpose served by the various
Contributor Agreements out there, like Apache's) into the license
agreement on the back end.† It also seems like there may be
employers/institutions who would be happy to fulfill the obligations of a
Contributor.

Do this instead.† Within your project, for those employers who can not go
along with the obligations of being a Contributor, establish that the
Contributor is actually the individual, warranting on their own that their
contributions are their work and they can personally fulfill the
obligations of contributorship.† In other words, take their employers out
of the equation.† That way their employers are not bound by the patent
commitment or any other.

Since employment law usually acrues the IP ownership of works created on
employer (or on employer hardware) to the employer, what would be required
is a waiver or grant between employer and individual Contributor that says
that the Contributor owns the copyright and patent rights on works they
create on employer time.† The employer can then ask the employee to grant
back to the employer the unlimited rights of redistribution, etc., that
would normally exist if the employer was copyright holder.

A Contributor doesn't even technically need to be the IP owner; they just
need to have the required rights to grant.

The qualitative difference to an end user is that even if the project says
"built with the help of developers working for University X", there is no
longer the assurance that they won't be sued down the road as end-users by
University X for something related to that very same code.† You'd owe it
to your users to get very specific about who those Contributors were -
perhaps publicly publishing the list of who signed contributor agreements.

It's a repeal of patent self-defense a bit, but I guess universities are
used to that. I think this approach still protects the project against
submarined patents, too.

Again, IANAL, but if this wouldn't work exactly, something close to it
must.

††††††† Brian