Open Stack

Hi Kevin.  I am working on getting some guidance from the Foundation's
corporate counsel on whether this needs to go to the Board.  It is taking a
long time to get this resolved, I know.  But it has not been dropped.

-----Original Message-----
From: Fox, Kevin M [mailto:kevin.fox at pnnl.gov] 
Sent: Monday, December 16, 2013 11:40 AM
To: Alice King; 'Richard Fontana'
Cc: legal-discuss at lists.openstack.org
Subject: RE: [legal-discuss] Contribution snag.

Ok, so....

I wrote the network topology sort patch October 3 in about 1 hour. It is now
December 15. What do we need to do to get things resolved?

Thanks,
Kevin
________________________________________
From: Alice King [alice at alicelkingpc.com]
Sent: Thursday, December 05, 2013 7:52 AM
To: 'Richard Fontana'; 'Alice King'
Cc: legal-discuss at lists.openstack.org
Subject: Re: [legal-discuss] Contribution snag.

I was also referring to the OpenStack US Govt. CLA - sorry for the confusion
there.

Yes, I agree that code created under these circumstances (federal government
contractor) will not always be eligible for public domain treatment under
the "de minimis" exception, but a federal government contractor could still
release the work as public domain through some decision process.   Whether
or not the copyright is released as public domain does not directly bear on
the patent issue, but to my mind it is a sort of rough way to guage how the
contributing contractor views the work, and whether there is a patent
lurking somewhere that they might assert later.  In other words, is it way
to test whether it is really just a logistics problem for them to clear the
patent license given the left hand, right hand problem, or are they holding
onto something they might want to assert later.  I don't think contractors
like Batelle face the same hurdles on approval to release copyright as
public domain as they do for trying to clear a patent license.  (I found
some helpful information here on this:
https://scholarworks.iu.edu/dspace/bitstream/handle/2022/3076/Licensing_and_
Policy_Summit_Report_2007.pdf?sequence=1)

But...  Maybe including the public domain requirement is too complex and it
doesn't line up all that well with the patent issue risk.    Maybe instead
the "rule" would be that the Foundation Executive Director would have
discretion to determine for government funded research institutions whether
the burden to the contributing institution of clearing a patent license was
disproportionate to the risk to the community of a accepting the
contribution, and in those cases authorize the use of a modified Corporate
CLA that included the sentence from the ECL limiting the patent license to
things created by the same author.

This would require a case-by case analysis, but the JHUAPL situation
indicates that a case-by-case analysis might be needed to make sure the
"rule" was applied sensibly.  There is no compelling reason to grant an
exception to JHUAPL since they don't have the left hand/right hand problem
that Batelle has.




-----Original Message-----
From: Richard Fontana [mailto:rfontana at redhat.com]
Sent: Wednesday, December 4, 2013 10:49 PM
To: Alice King
Cc: legal-discuss at lists.openstack.org
Subject: Re: [legal-discuss] Contribution snag.

On Wed, Dec 04, 2013 at 03:55:39PM -0600, Alice King wrote:
> Thanks Richard.   So then Jonathan would make a decision that where both
of
> two conditions were met, a modified version of the Federal Government 
> Contractor CLA would be used.  The two conditions would be (i) the 
> work was created by a contractor under a federal government contract, 
> and (ii) the copyright in the work is public domain.
>
> I understand that the rule for federal contractors is that they do 
> retain copyright absent some exception or special term in the 
> agreement.  In this case, Batelle would have to decide, and represent 
> to the Foundation, that Kevin's work was public domain - presumably 
> under the "de minimis" exception suggested by the Batelle lawyer.
>
> If we take this approach, it seems to me that the US Government CLA 
> would be the best CLA to non-materially revise since it already 
> reflects that the copyright is public domain.  The non-material 
> revision could be the addition of the sentence that appears in the 
> Educational Community License:  "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."
>
> Is this consistent with what you are thinking might work?

Not entirely ... I don't believe that would work as a modification to the US
Government CLA. Battelle suggested use of the ECL on the assumption that it
would be the entity bound by the CLA, not the government.

I was actually imagining an alteration of the US Government CLA
https://wiki.openstack.org/wiki/GovernmentCLA that explicitly noted that the
contribution might consist of work done by federal contractors. It could,
perhaps, then be limited to cases where the contractor's work is
noncopyrightable/de minimis (as we are assuming is true of Kevin's current
work) but this doesn't seem to be generally useful, since we have to assume
the more typical case will be that the contractor's contribution is
copyrightable.

Actually, I just noticed that the existing US Government CLA omits the
section 7 language that is in the other CLAs (see Kevin's initial posting in
this thread). So perhaps the simplest thing to do is to restore that
language to the US Government CLA, or modify it slightly to cover the case
of work done by federal contractors. That requires "identifying the complete
details of its source and of any license or other restriction (including,
but not limited to, related patents, trademarks, and license agreements) of
which you are personally aware". In a sense, similar to the suggestion Kevin
originally made, except we're assuming some representative of the relevant
US government agency is signing the CLA.

This does create a possible asymmetry in patent licensing under certain
scenarios, but I'm not sure how realistic they are.

Of course section 7 suggests that any direct contributor to OpenStack who
has signed the Indiidual or Corporate CLA could submit Kevin's contribution
anyway.

- Richard

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