Subject: Re: APSL 1.1 available for comment.
From: Gabe Wachob <gwachob@findlaw.com>
Date: Mon, 19 Apr 1999 20:29:04 -0700

Ken Arromdee wrote:

> On Mon, 19 Apr 1999, Brian Behlendorf wrote:
> > Second, does the license need to define "claim" as "claim filed in a court
> > of law", or is that obvious from the wording?
>
> "Obvious from the wording" is dangerous.  Far better that it be said
> explicitly so we don't have to worry about it.
>
> > But under patent law, as I
> > understand it, that's not good enough - we have to expend some sort of
> > reasonable effort to get people to STOP using the old, infringing version.
>
> If the license doesn't let Apple withdraw anything, how in the world could
> "reasonable effort" require that Apple withdraw anything?

Its patent law that requires Apple to withdraw that license. Patent law grants
the owner of a patent certain exclusive rights -- including the right to use an
idea. Apple cannot license those exclusive rights if it is not the owner of the
patent. The problem comes in when Apple creates software which infringes upon
those exclusive rights held by a third party.

Its sort of like me saying "You can drive that car" without me owning "that
car". I may even agree that you have to pay me $50 to use that car for the day,
but that doesn't mean that you can use the car if I don't own it just because
we made a deal about using the car. You may have a cause of action against me,
but you don't get to use that car (in the general case).

The twist in patents is that its often the case that someone can come along
later and essentially have a claim to the ownership of the car (as an analogy)
which may not have been obvious to you or I when we made the original contract.
There is no construction of a contract between you and me which could take away
the property rights of a third party who is not in contract with either of us
(in the general case). One of us can state in the contract what happens if that
ownership right is later discovered (ie the allocation of that risk between you
and me), and I think that is what the term under consideration here does. In
fact, however, I don't think the "termination" part changes how things would
end up anyway - its just basically states what would be the default rule -- but
who knows - thats why lawyers always get involved. The Apple lawyers don't want
to take chances and I'm sure are protecting themselves as much as possible (as
a good lawyer should).

You make a good point about the international aspect here -- the patent laws
may not operate to provide a third party property interest and therefore, the
license term may be actually required to get the effect Apple needs to have.
There are some harmonization treaties, however, which might make the issue less
than clear...

    -Gabe