In a previous email to license-discuss, I submitted version 2.1 of the Open Software License (OSL) and the Academic Free License (AFL) for OSI approval. This is an explanation of the change. I'm purposely starting this separate thread so that we can separate the OSI approval process (based on compatibility with the OSD) from the policy concerns that prompted this change.
The main criticism of section 10 of OSL/AFL version 2.0 is that it creates a substantial business risk to licensees who own patents. If they someday seek to assert one of their patents against the licensor, they may lose the right to the software being licensed even if the patent is unrelated to that software. They risk non-enforceability of their present patents - and even perhaps their future patents - if they someday sue a licensor for patent infringement relating to any software. That risk cannot easily be measured. This concern was most strongly expressed in an email from Scott Peterson of HP. Scott didn't actually name the OSL/AFL version 2.0. He was most concerned at the time about a proposed Apache license (since modified to satisfy HP's objection) and the Mozilla Public License (see MPL sections 8.2 and 8.3) and Common Public License (see CPL section 7). I recognized that a similar problem exists in several other approved commercial open source licenses from companies like IBM, Nokia, Apple and others. The OSL/AFL version 2.0, which contains a patent termination provision I had intentionally modeled on the one in the IBM Public License, had the same "problem." (Caution: There are subtle differences among these license termination provisions.) I contacted Scott directly to understand his concern. I have since discussed this privately with attorneys for several other companies. I agree with them that a change is needed to make these licenses friendlier to companies that own large patent portfolios. The problem lies in subsection (i) of section 10 in OSL/AFL version 2.0 (and in similar sections in the MPL, CPL and other licenses). Here for easy reference is the provision from the earlier version of the license: PREVIOUS VERSION OSL/AFL 2.0: 10) Termination for Patent Action. This License shall terminate automatically and You may no longer exercise any of the rights granted to You by this License as of the date You commence an action, including a cross-claim or counterclaim, for patent infringement (i) against Licensor with respect to a patent applicable to software or (ii) against any entity with respect to a patent applicable to the Original Work (but excluding combinations of the Original Work with other software or hardware). Because of the phrase "patent applicable to software" in subsection (i), the licensor is conditioning the license for this Original Work on the licensee's not suing for patent infringement of any patent applicable to any software. For a licensee with a big patent portfolio, there is no easy way to assess that cost or limit that risk. Such a company may come to discover that important unrelated patents in its portfolio have been emasculated because the company has in-licensed some software under an open source license containing this section 10. The company's patents relating to other software can no longer effectively be asserted against infringers who happen to be licensors of valuable open source software. Better, those companies say, given the uncertainty of the risk, not to accept this software under such licenses in the first place. One of the difficult challenges in any license - open source or proprietary - is to balance the interests and rights of licensees who own patents with the interests and rights of licensors who own software. Parties to software licenses traditionally negotiate license terms and conditions and, through the process of negotiation, some acceptable balance is achieved between the interests of the licensor and licensee. But mass market software licenses are not negotiated and so, when you acquire Windows or Linux, for example, you take the software under its license or leave it. It requires a sophisticated licensee to stand up to a mass market software license and say, "This isn't a fair provision, and I won't accept the software under those terms." Here again for easy reference is the new section 10: NEW VERSION OSL/AFL 2.1: 10) Termination for Patent Action. This License shall terminate automatically and You may no longer exercise any of the rights granted to You by this License as of the date You commence an action, including a cross-claim or counterclaim, against Licensor or any licensee alleging that the Original Work infringes a patent. This termination provision shall not apply for an action alleging patent infringement by combinations of the Original Work with other software or hardware. The new section 10 defensive termination provision terminates the license to this Original Work only if the licensee asserts a patent claim against this Original Work. The condition relating to unrelated software is removed. The termination provision now applies if an infringement lawsuit is filed against Licensor or any licensee; the previous version included any entity. These differences meaningfully reduce the scope of the patent termination provision and make it friendlier to patent-owning companies. That's the whole point. Such companies can now feel more comfortable in-licensing open source software. The community will grow and more open source software will be created. Private correspondence that I have received from several companies reassures me that companies and open source projects will all feel more comfortable with this compromise patent termination provision in OSL/AFL version 2.1. I welcome public comments on license-discuss or private emails to me. Lawrence Rosen Rosenlaw & Einschlag, technology law offices (www.rosenlaw.com) General counsel, Open Source Initiative (www.opensource.org) 3001 King Ranch Road, Ukiah, CA 95482 707-485-1242 * fax: 707-485-1243 [EMAIL PROTECTED] -- license-discuss archive is at http://crynwr.com/cgi-bin/ezmlm-cgi?3