Subject: Re: STWL 1.0, revision 3
From: "Robert E. Jones, III" <rjones@robjob.com>
Date: Tue, 16 Nov 2004 13:52:51 -0500

At 07:24 AM 11/16/2004, Bernhard Fastenrath wrote:
>Robert E. Jones, III wrote:
>
>>Berhhard
>>Two big issues with the language you have below:
>>The first is enforceability.  While I am not aware of how European courts 
>>would view this clause, I can tell you the US courts would more than 
>>likely view this as an overreaching clause and find it 
>>unenforceable.   Anytime you try to regulate behavior out-side the direct 
>>scope of a contract (my favorite law school example is a fictional clause 
>>in a car-rental agreement that requires a renter to run a marathon while 
>>wearing the rental cars logo), courts take a very hard look at it.  In 
>>this case you would be asking people to give up rights that are 
>>independent of and completely unrelated to the particular deal at 
>>hand.  I think that you would have an almost impossible task in trying to 
>>get a US court to go along with this.  About the best you can probably do 
>>is narrowly tailor the language to the specific deal  or software (ie, 
>>you agree not to enforce it against the licensor or against other users 
>>of the specific software being licensed.)
>
>This license may be invalid for private users of the software but most 
>patent owners are companies and as a license for a business entity this is 
>completly in order. I'm quite sure it's the same in the US.

While I understand what you are trying to achieve, the fact that the 
licensee would be a corporation would be completely irrelevant in US 
courts.   About the only issue that would save this clause is if the 
license was  fully negotiated at arms length by two sophisticated parties 
and the clause could be considered to be part of the consideration for the 
license itself.  In case of a pure license like this, where there is 
arguably little or no negotiation, US courts would  view this as an 
overreaching clause and I have little doubt that they would ever enforce 
it.    US courts tend to be willing to cut out even related clauses from a 
non-negotiated license (such as arbitration clauses, or venue clause) so I 
can see them being very reluctant to enforce a clause that requires a party 
to give up rights they may otherwise have outside of the scope of the 
license.  So,  for as much as I am sure that you want it to be otherwise, I 
am fairly confident this would never hold up in a US court.

As a further thought though, I guess I wonder also why anyone who owned a 
software patent would ever even agree to this.  Again, with all due respect 
to the purpose you wish to achieve, it seems to me that the clause is so 
punitive, that it would never be worth anyone's while to ever agree to the 
license.  Assuming that people and corporations are economically rational 
(without any value judgement attached to whether that is true or even a 
good thing or a bad thing), I have a hard time believing that any piece of 
software that would be licensed under this license would be worth the cost 
of  related to giving up their patent rights by using it.  It would 
probably be easier to find another piece of software or to write it 
themselves.  In the end, if the license is as punitive as this seems to be, 
no one is going to ever use it.

Again, I respect what you are trying to achieve, I am just not sure this 
particular provision would do much towards achieving that goal from a 
practical point of view.


>>The second problem is the last line.  You cannot have a license that runs 
>>for a particular period, then is suspended and then pops back into 
>>existence.  More than likely, the last sentence would be interpreted as 
>>just terminating the license.
>
>Why not? I can attach a limited validity period to a software license
>and I can terminate a software license by adding clauses that terminate 
>the license. Why should it be invalid to declare the license void and then 
>allow it to be reestablished after certain conditions are met?

Mostly the answer to your question is that as a mater of contract/license 
interpretation, US courts tend to avoid interpreting language that would 
allow rights to bounce in and out of existence.  More than likely they 
would just interpret it to meaning that the license is terminated.  Also, 
the term "voids" has a specific meaning in contract law which usually means 
that not only does something not exist, but that it never existed in the 
first place.  So, if you "void" the contract, you can't have something 
being "reestablished" if it never existed in the first place.  If you said 
"suspends" which implies that the license itself is still in existence but 
the rights have been halted temporarily, you might have better luck.

Sorry about the overly pedantic and legalistic point of view.   For full 
disclosure, I am a lawyer for a software company who drafts licenses 
agreement day in and day out, so I tend to see the things that work and 
don't work.  That is the view point that I am coming from.



Do you think the clause makes it sufficiently clear that the intention is 
to make it impossible to license the software while a patent is valid that 
has been enforced against open source software or open source users 
regarding open source software?

I think its clear, however, I am also the view point that its pretty much 
unenforceable.  Might make a good statement of purpose in collateral 
material, but I doubt that you would find a judge in the US that would let 
you enforce it.

Anyway, just as I see it.

Robert E. Jones, III