With the kind permission of Adam C. Engst, XNSORG President, I am forwarding the following to Debian-Legal for review and comment. I have been working with Mr. Engst for awhile to try to reconcile the XNS project with the principles of the free software / open source communities. He appears to be sincere, and I hope that some of the more legally-minded folk here can provide some feedback to assist them.
Note that relevant documents can be found on the XNSORG website at: http://www.xns.org/governance/legaldocs/ -------- Original Message -------- Subject: Reconciling the XNS patent situation with the OSD Date: Wed, 1 Nov 2000 15:32:34 -0800 From: "Adam C. Engst" <[EMAIL PROTECTED]> To: Drummond Reed <[EMAIL PROTECTED]>, [EMAIL PROTECTED],[EMAIL PROTECTED], [EMAIL PROTECTED],"Brady R. Johnson" <[EMAIL PROTECTED]>, Mike Goldman <[EMAIL PROTECTED]>, Jim Kingdon <[EMAIL PROTECTED]>, "Lawrence E. Rosen" <[EMAIL PROTECTED]>, Rick White <[EMAIL PROTECTED]>, [EMAIL PROTECTED] Hi all (and apologies for the length of this), I've had conversations with all of you (except Jim Kingdon, who had concerns about our patent situation upon being contacted by Rich Holladay of the XNSORG Open Source Working Group with regard to SourceForge) about what needs to be done to establish an Open Source Definition-compliant approach to open source licensing for XNS. In particular, discussions with Mike Goldman have indicated that before even deciding on a open source licensing approach, we may need to modify the patent license granted to XNSORG by OneName to avoid running into the "No Discrimination Against Fields of Endeavor" clause (#6) or other problems. Plus, I have some general questions that I'm still trying to find answers to - hopefully those can help shed light on the situation. Let's assume for the purposes of argument that we're going to adopt one or two of the existing OSD-compliant licenses, so wording of a specific license isn't in question here. And let's also assume for the purposes of argument that the requirements of the XNS Global Terms on software deployed into the XNS system are irrelevant, since those govern the activities of members of the XNS community, and are thus separate from the open source license itself. If I'm wrong on either of those assumptions, we can discuss them separately - I want to concentrate on the patent issues here. First though, let me note that XNSORG is trying very hard to do the right thing by the OSD here; the fact that these problems exist is indicative mostly of our inexperience with open source and the unusual situation we've found ourselves in. We very much want to resolve this situation for everyone's benefit. OK, on to the questions: A) OneName has licensed its patent rights and software to XNSORG to give XNSORG the right to release the XNS software as open source. This strikes me as unusual - most people releasing open source are doing so with their own stuff. Is it a problem to consider XNSORG the "owner" of OneName's patent rights and software for the purposes of issuing code under an open source license? B) Assuming that (A) is not a problem, are there problems with how we have currently worded the patent and software license for open source? Mike Goldman felt that the negatively worded statement (excluding several small aspects of the patent rights via the RESERVED TECHNOLOGY AREA) was problematic and suggested a positively worded version (state explicitly what _is_ included, rather than what is not). Does that help? C) Is there anything else that would require modification to avoid conflicting with the OSD? I'll go through what I think are the relevant sections of the Patent License and aim for more specific points. You can read the full text at this link to make sure I haven't omitted anything important. I just didn't want to confuse the matter with the rest of the legalese. <http://www.xns.org/governance/legaldocs/patentlicense.html> >2.1 Patent License Grant. Subject to the terms and conditions >set forth below, ONENAME grants XNSORG a worldwide, exclusive within >the Field of Use defined in Section 2.6, irrevocable except as >expressly provided herein, royalty-free license under ONENAME'S >PATENT RIGHTS to engage in activities within the Field of Use with >such right to sublicense as is specified in Section 3.1. The >license granted in this section 2.1 is hereinafter referred to as >the "Patent License". Is the fact that the license is revocable as provided in Section 6 below a problem? Also, is the Field of Use clause in 2.6 below problematic? >2.2 License Limitations. The grant of Section 2.1 is limited as follows: > >2.2.1 No rights are granted under ONENAME'S PATENT RIGHTS to the >RESERVED TECHNOLOGY AREA and ONENAME expressly reserves all rights >in the RESERVED TECHNOLOGY AREA. This would seem to be the wording problem again - do it in a positive way and the Reserviced Technology Area goes away. Is that reasonable? >2.2.2 ONENAME also reserves the right to practice ONENAME'S PATENT >RIGHTS excepting only the right to grant to any other party any >license rights in conflict with those rights granted XNSORG in >Section 2.1. ONENAME reserves, in particular, the right to practice >such patent rights within the Field of Use. I have a feeling that open source people may not like this clause, but I can't tell why. >2.3 Marking. XNSORG agrees, for itself and all sublicensees, to >observe and to require all sublicensees to observe the reasonable >requirements of ONENAME, as communicated from time to time, with >respect to the marking of products licensed or provided under the >license herein granted with the word "Patent," followed by the >number or numbers of the patent or patents applicable thereto under >a license granted hereunder, or such similar notice as ONENAME shall >require to satisfy U.S. or other countries' legal requirements. Is this a concern? It would seem to be a lawyerly detail. >2.5 Software Use License: ONENAME grants XNSORG an exclusive >(except as to ONENAME), worldwide, irrevocable license to use >ONENAME'S SOFTWARE to engage in activities within the Field of Use >for the duration of ONENAME'S rights in ""ONENAME'S SOFTWARE. The >license provided in this Section 2.5 is hereinafter referred to as >the "Software License." Other than possibly the Field of Use limitation, this would seem to be fine for the purposes of giving XNSORG the necessary rights to the XNS software. >2.6 Field of Use means COMPUTER PROGRAMS enabling data >communication across the Internet and private and public data >networks in accordance with the XNS TECHNICAL SPECIFICATION, and the >XNS PROTOCOL, as they currently exist, using a COMMUNICATION AGENT >for transferring information from a publisher of information to a >subscriber of information in accordance with the claims of ONENAME's >U.S. Patents 5,862,325, 6,044,205 and 6,088,717 (individually and >collectively). COMMUNICATION AGENT PATENTS insofar as necessary to >supplement the disclosure in the section of the COMMUNICATION AGENT >PATENTS titled Basic Processes and Communications Control Functions >("DATA COMMUNICATION CONTROL SECTIONS") and/or claimed by the claims >of the COMMUNICATION AGENT PATENT the subject matter of which are >mainly described in the DATA COMMUNICATION CONTROL SECTIONS of the >COMMUNICATION AGENT PATENT. My impression from talking to Mike Goldman is that this is problematic, since it restricts the rights that XNSORG has and can pass on to everyone else. I can see why it was included originally, since it makes sense when licensing rights to state how those rights can be used, but I think it might be a significant question for OneName as to how to modify this to avoid impacting the Fields of Endeavor clause of the OSD while still being comfortable with the Patent License. >3.1 XNSORG has the right to grant sublicenses to the MEMBERS of >the XNS COMMUNITY under ONENAME'S Patent License and under the >Software License, pursuant to terms of the OPEN SOURCE LICENSE >AGREEMENT, but not otherwise. The rights granted in this >subparagraph 3.1 are referred to collectively as "ONENAME'S Core >Technology License." Here's where we can sublicense via whatever open source license we end up with... >3.3 ONENAME may assign or otherwise transfer ONENAME'S PATENT >RIGHTS, and this Agreement shall not be construed as imposing any >restrictions on such transfer except as follows: The fact of transfer shouldn't be a problem - I can't see how OneName could do anything but include such language. >3.3.1 ONENAME shall make it an express condition of any assignment >or transfer of ONENAME'S PATENT RIGHTS that the party acquiring >ONENAME'S PATENT RIGHTS agree to the terms and continuation of this >Agreement for the term thereof; and This seems good to me. >3.3.2 The acquiring ONENAME'S PATENT RIGHTS provides a written >undertaking to XNSORG stating that it will comply with all terms >and conditions of this Agreement, and any other agreement being in >effect at the time between ONENAME and XNSORG involving ONENAME'S >PATENT RIGHTS. This also seems good to me, since it basically says that any acquiring party is bound by the license. >6. TERM AND TERMINATION > >6.1 Termination For Cause. > >6.1.1 Mutual Right of Termination for Breach. Either party may >terminate this Agreement for cause if the other party breaches any >material term of this Agreement, provided that the terminating party >has provided sixty (60) days written notice of such breach and such >breach has not been cured in such sixty (60) day period. Material >terms of this agreement shall include at least the following >provisions: Sections 2 and 3. I get the impression that the fact this agreement could be terminated would be a problem, since if the agreement is terminated, XNSORG suddenly has no right to license OneName's patent rights under the open source license. I don't know what happens to the existing licensees at that point. >6.1.2 Bankruptcy and Similar Causes. Either party may terminate >this Agreement for cause if the other party: (a) files or has filed >against it a petition in bankruptcy; (b) has a receiver appointed to >handle or liquidate its assets or affairs; (c) makes or attempts to >make an assignment for the benefit of creditors; (d) has a civil >judgment entered against it which is for an amount greater than >available cash or the most recent year's revenues; or (e) otherwise >for a period of at least ninety (90) days ceases to operate as a >going concern, which shall be evidenced by events such as the >inability to fund operations, large scale termination of employment, >relinquishing substantially all office space, or other similar >indicia. For Section 6.1.2(a) through (d), termination shall be >effective immediately upon receipt of notice. For Section 6.1.2 >(e), termination shall be effective once said ninety-day period has >elapsed. On the other hand, if XNSORG goes belly up for whatever reason, OneName can then terminate this license agreement and either assign the rights directly or license them to a replacement organization for XNSORG. That would seem a good thing, no? >6.4 Upon expiration or termination for any reason of this >Agreement, the following provisions shall survive: Sections 1, 2.2, >2.3, 2.6 through 2.10, 4, 5, and 7 through 9. This wouldn't seem to be sufficient to protect patent rights in the case of termination, from the open source viewpoint. >6.4.1 If termination is due to ONENAME'S breach or cause >attributable to ONENAME, the following provisions shall also >survive: 2.1, 2.4 through 2.6, and 3. But this does protect XNSORG's license to the patent rights in the case of problems with OneName. >6.5 Continuity of License Rights. In the event the Agreement is >terminated by XNSORG under Section 6.1.2 above, the following >additional provisions shall apply: all of Section 2. As does this, no? I include these definitions for reference since they seem to be the primary relevant ones. Obviously, OneName's Patent Rights would need to remain in any license, but the Reserved Technology Area might be able to go away entirely with a positively worded approach. >ONENAME'S PATENT RIGHTS means and includes the rights held by >ONENAME under U.S. Patents Nos. 5,862,325, 6,044,205 and 6,088,717 >(individually and collectively "COMMUNICATION AGENT PATENTs"), and >any US patents or patent applications claiming priority under 35 USC >ยงยง 119(e), 120 or 121 therefrom, as well as any international or >foreign patent applications or patents claiming priority on any of >the COMMUNICATION AGENT PATENTS ("COMMUNICATION AGENT PATENT >APPLICATIONS"), and any reexamination certificates or reissued >patent to issue based on any such U.S. or foreign patents or the >COMMUNICATION AGENT PATENTS. > >RESERVED TECHNOLOGY AREA or AREAS means any application of ONENAME'S >technology or INTELLECTUAL PROPERTY RIGHTS not licensed hereunder as >the CORE TECHNOLOGY AREA. Without limitation, RESERVED TECHNOLOGY >AREA includes Directory Service Objects described in column 102, >line 27 to column 105, line 51 of the '325 Patent; Payment Service >Objects described U.S. Patent No. 5,862,325 (the "'325 Patent") in >column 119, line 13 to column 123, line 15 of the '325 Patent; >Feedback Service Objects described in column 124, line 21 to column >128, line 30 of the '325 Patent; and Schedule Control described in >column 136, line 28 to column 141, line 46 of the '325 Patent; and >any service, method or system which does not rely upon and use the >XNS PROTOCOL. Reference to the '325 Patent for its disclosure is >exemplary, and applies also to the other patents within ONENAME'S >PATENT RIGHTS. cheers... -Adam PS: People included on this message are as follows. If you know of someone else who can contribute in a positive fashion, please bring them in too. Me, chairman of the XNSORG Board of Directors Mike Goldman, related to the Debian Project Jim Kingon, of VA Linux Systems and SourceForge Larry Rosen, of the Open Source Initiative Tim O'Reilly, of O'Reilly & Associates Geoffrey Strongin of the XNSORG Board Ross Ortega of the XNSORG Board Drummond Reed of OneName and the XNSORG Board Brady Johnson, XNSORG General Counsel Rick White, OneName General Counsel Steve Henry, patent lawyer for OneName ______________________________________________________________________ Adam C. Engst, XNSORG President XNS Name: =Adam Engst Email: <[EMAIL PROTECTED]> Web: <http://www.xns.org/>
