Subject: Re: For Approval: Educational Community License 1.0
From: Brian Behlendorf <brian@collab.net>
Date: Tue, 1 May 2007 10:29:30 -0700 (PDT)
Tue, 1 May 2007 10:29:30 -0700 (PDT)

Huh - one would think laws about IP created with state funds would be even 
easier to work into this model, as it would presumably either assign 
ownership to the state, or specify that it be "public domain", or 
otherwise liberally licensed - in any case further separating the academic 
institution's other IP (that they are interested in excluding from this 
pool) from the open source project.

I just can't wrap my head around the idea that making the scope of the 
patent rights less clear for recipients (placing the burden on them to 
determine who the employers of contributors are, and whether the 
contributions were on the clock or off, etc) is an improvement that merits 
certification as a new open source license - even aside from the lack of 
empathy I feel for IP holders who own so much IP they can't even be 
burdened to enumerate any that might apply to their contributions.  :)

A license like this would seem to significantly weaken the value of the 
software for new users - a new university wishing to use it would now have 
greater worries about legal jeopardy from the organizations sponsoring the 
work.  Given the precedent set and worries about the Blackboard patent, I 
would have expected academic institutions lean towards greater protections 
rather than fewer.

 	Brian

On Mon, 30 Apr 2007, Christopher D. Coppola wrote:
> 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
>>> that’s all folks need to consider if they are already familiar with the
>>> Apache 2.0 license.  We think it’s 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
>> 
>