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Subject: [legalxml-sc] Tweak IP




From: Daniel Greenwood <dang@mit.edu>
To: "Bergeron, Donald L. (LNG)" <Donald.Bergeron@lexisnexis.com>,legalxml-sc@lists.oasis-open.org
Date: Wed, 04 Sep 2002 14:09:46 -0400






Don,

First, thank you very much for handling this.  I appreciate the time
and attention you are paying and your responsiveness to this matter.

In general, I think the draft looks fine, but I'd like to suggest a
possible wording change to the IP Section so as to be more responsive
to the points made by Patrick at our last Steering Committee meeting
and during a conversation afterwards when he called to discuss the
topic more fully.  Patrick has indicated that we would be wise not to
lock our TCs into specific wording re: IP in a way that requires OASIS
Board explicit review and approval to change.  Upon further
contemplation, I think our interest in assuring continued tolerance of
the wording we came to agreement upon with OASIS can be reconciled
with Patrick's valid point.  Here is what I suggest by way of
different wording:

Original wording: "c. Further, all OASIS LegalXML Technical Committees
shall have this additional principle incorporated in their charters
before charter approval and worded as follows: 'In no event shall this
Technical Committee finalize or approve any technical specification if
it believes that the use, distribution, or implementation of such
specification would necessarily require the unauthorized infringement
of any third party rights known to the technical committee, and such
third party has not agreed to provide necessary license rights on
perpetual, royalty-free, non-discriminatory terms.'".

Proposed change: "c. Further, before charter approval, all OASIS
LegalXML Technical Committees shall incorporate into their charters
wording manifesting the principle that each of its LegalXML Technical
Committee Specification shall remain free and open for perpetual,
global use.  The following wording, when incorporated into a Technical
Committee charter, meets the foregoing requirement: 'In no event shall
. . .'".

This wording assures that the LegalXML SC can withhold approval to any
proposed TC absent our agreed upon wording (meaning that TC could
become a non-LegalXML OASIS TC) but we are also at liberty to approve
superior wording that nonetheless respects our principle.  If that
different wording is later shot down by the OASIS Board, then we can
revert to our pre-agreed wording if needed.  However, it is also
possible that the OASIS Board will not disallow different wording and
we can cross that bridge later.

Of course, it is possible that matters out of the control of the TC,
or of the Member Section, or even of OASIS, will result in a claim of
IP infringement arising out of one or our Specifications (e.g. if a
non-participating company that is unknown to any of us happens to have
IP that overlaps with our Specification and it is first discovered
upon a Cease and Desist letter, etc).  However, this sort of language
does indicate the intent of the participants and also serves as
important notice to all participants of the internal operationalized
expectation that they are not to infect a Specification with
proprietary IP without giving up rights that would prevent perpetual,
free and open use.

--- Warning: IP Content Follows --- Warning: IP Content Follows ---
Warning: IP Content Follows ---

Don't bother reading any further unless you want to learn more about a
problem with our IP language and my suggestion that my above wording
is sufficient to deal with it for now.

There is one final point about our IP clause which I'd like to note
now and possibly revisit at a later time, if warranted.  The current
wording of our IP language is subtly different from our old LegalXML
language in a way that may prove uncomfortable or unworkable later.
Specifically, our old language enshrined the rights of free AND OPEN
USE.  By contrast, our current OASIS-approved and negotiated wording
simply respects royalty free and "non-discriminatory" license terms.
I am becoming more convinced that "non-discriminatory" terms may be in
conflict with "open use".  The concept of "open use" is not a well
recognized or understood legal doctrine (having no case law heritage
or public law underpinnings).  However, it means to me (and this is
supported in much open-source and copyleft literature) that license
rights that would impede implementations meeting the technical
requirements or any business model underlying use of the standard
would not be permitted under the public license (or copyleft or
whatever you want to call it).  For instance, a license term
indicating that any application incorporating the Specification MUST
or MUST NOT incorporate other technology or specifications named by
the original IP owning entity would be an obstacle to the unimpeded
use of the Specification based upon a technology tie-in or competitor
exclusion requirement.  Similarly, if a license term indicating that
any application that incorporated the Specification MUST also include
spyware allowing the original IP owning entity to review all
transaction data, then that would tend to impede "open use" of the
Specification based upon business terms that would be problematic.
Frankly, nearly any license term governing use of the IP would likely
run afoul of the concept of "open" use.  Licensing on
"non-discriminatory" terms, however, I think can be interpreted to
mean that the same terms apply to any licensor.  One could further
interpret "non-discriminatory" to mean that the license terms shall
not discriminate against any possible technical implementation or
business model - but I think we'd need to make that more explicit if
we needed to fend off offensive terms at a later date.

I believe that the OASIS Board does not specifically approve each TC
Charter that comes before it.  That means, I suspect, that future
LegalXML TC charters that may contain even tighter IP wording that
meets and exceeds the general OASIS IP policy and that are approved by
the LegalXML SC can become formal TCs and we can then have further
precedent for better wording without losing our right to maintain our
current wording as a back-stop, if needed.

For now, I have no personal desire to re-open an IP discussion with
the OASIS board, provided that:

1. The LegalXML SC maintains the flexibility to reject any TC that
does not include the specific wording we agreed upon; and
2. The LegalXML SC maintains the flexibility to approve a future TC
with even "better" IP wording that handles problems we didn't foresee
(like the "open use" vs. "non-discriminatory" terms question).

I believe my proposed tweak to the wording proposed at the start of
this e-mail message achieves these two goals.  However, if, in the
wisdom of the LegalXML SC, it makes sense to open a direct dialog with
the OASIS Board on this question, then I'd certainly support that as
well.  Perhaps direct discussion and creation of better
person-to-person relationships will clear the air with respect to IP
and make a better environment within which to meet our common
interests.  Alternatively, I'm happy to simply put forward my proposed
wording and leave the underlying questions of more fully open IP terms
to another day.

Thanks,
 - Dan

==============================================
|  Daniel J. Greenwood, Esq.
|  Director, E-Commerce Architecture Program
|  MIT School of Architecture and Planning
|  77 Massachusetts Avenue, Room 7-231
|  Cambridge, MA 02139
|
|  http://ecitizen.mit.edu
|  or http://www.civics.com
|  dang@mit.edu
==============================================