Legal Discuss
  1. Legal Discuss
  2. LEGAL-133

Does an Apache Project with Patents pose legal risk for its users?

    Details

    • Type: Question Question
    • Status: Closed
    • Priority: Major Major
    • Resolution: Unresolved
    • Labels:
      None

      Description

      Company-A contributes code to Project-X under Apache License, and has patents on the technology contributed.
      This is permitted [e.g. Citrix having patents related to CloudStack].

      Company-B now downloads Project-X, and starts using it.
      Due to business reasons, Company-B forks Project-X, and starts maintaining a private branch with private changes [which is permissible under Apache License].
      Company-B is using the software commercially.

      Is this a patent violation?

      Note that there is no list of patents for Project-X maintained anywhere, and Company-B is not aware of Company-A patents which it may be infringing upon in private-fork of Project-X.

        Activity

        Hide
        Lawrence Rosen added a comment -

        > Is this a patent violation?

        This may be a patent infringement, depending on the specific patent claims and the functions actually performed by the forked software. There is no absolute answer to this question in the absence of specific patent claims. I suggest, though, that if you suspect that patents exist that Project-X infringes, this is important information for software developers to consider before contributing to or forking the code.

        > Note that there is no list of patents for Project-X maintained anwhere, and Company-B is not aware of Company-A patents which it may be using in private-fork of Project-X.

        This is precisely why I have repeatedly advised here at Apache that our NOTICE file retain all patent and other notices that might apply to Apache's software. In the absence of that NOTICE, Company-B is operating in the dark in a treacherous patent minefield. We owe our customers all the information we possess about potential risks.

        > Does an Apache Project with Patents pose legal risk for its users?

        Yes. The analysis of that risk is fact-specific, not answerable in general. Some risks can safely be ignored, others may subject you to patent litigation.

        It bothers me that Apache projects don't inform our users that patents have been asserted. A recent example of this with some Adobe patents was already answered here previously, and you might want to refer to Jira LEGAL-120 for a similar issue. For the record, I disagree with current Apache legal processes concerning potential patent risks. Even IETF, which has a weak and barely-enforceable patent policy, provides more information about patent encumbrances to their specifications than we do about our software that implements those specifications. That is a disservice to our users and contributors, in my opinion.

        /Larry

        Show
        Lawrence Rosen added a comment - > Is this a patent violation? This may be a patent infringement, depending on the specific patent claims and the functions actually performed by the forked software. There is no absolute answer to this question in the absence of specific patent claims. I suggest, though, that if you suspect that patents exist that Project-X infringes, this is important information for software developers to consider before contributing to or forking the code. > Note that there is no list of patents for Project-X maintained anwhere, and Company-B is not aware of Company-A patents which it may be using in private-fork of Project-X. This is precisely why I have repeatedly advised here at Apache that our NOTICE file retain all patent and other notices that might apply to Apache's software. In the absence of that NOTICE, Company-B is operating in the dark in a treacherous patent minefield. We owe our customers all the information we possess about potential risks. > Does an Apache Project with Patents pose legal risk for its users? Yes. The analysis of that risk is fact-specific, not answerable in general. Some risks can safely be ignored, others may subject you to patent litigation. It bothers me that Apache projects don't inform our users that patents have been asserted. A recent example of this with some Adobe patents was already answered here previously, and you might want to refer to Jira LEGAL-120 for a similar issue. For the record, I disagree with current Apache legal processes concerning potential patent risks. Even IETF, which has a weak and barely-enforceable patent policy, provides more information about patent encumbrances to their specifications than we do about our software that implements those specifications. That is a disservice to our users and contributors, in my opinion. /Larry
        Hide
        Sam Ruby added a comment -

        > It bothers me that Apache projects don't inform our users that patents have been asserted. A recent example of this with some Adobe patents was already answered here previously

        In the case of LEGAL-120, Adobe hasn't asserted any specific patents, and we haven't chosen to implement the function that might infringe on those patents, if we knew what they were. Given this, I am at a loss as to what we might inform our users of.

        Further discussion of LEGAL-120 should occur on that JIRA item.

        Show
        Sam Ruby added a comment - > It bothers me that Apache projects don't inform our users that patents have been asserted. A recent example of this with some Adobe patents was already answered here previously In the case of LEGAL-120 , Adobe hasn't asserted any specific patents, and we haven't chosen to implement the function that might infringe on those patents, if we knew what they were. Given this, I am at a loss as to what we might inform our users of. Further discussion of LEGAL-120 should occur on that JIRA item.
        Hide
        Doug Cutting added a comment -

        > Company-A contributes code to Project-X under Apache License, and has patents on the technology contributed.

        Please see section 3 of the Apache license:

        http://www.apache.org/licenses/LICENSE-2.0.html#patent

        In general, when Company-A contributes to Apache Project-X it also must contribute a license to its patents on those contributions. Company-B would thus generally have a license to those patents via the contribution under the Apache license.

        See also the relevant FAQ:

        http://www.apache.org/foundation/license-faq.html#PatentScope

        Show
        Doug Cutting added a comment - > Company-A contributes code to Project-X under Apache License, and has patents on the technology contributed. Please see section 3 of the Apache license: http://www.apache.org/licenses/LICENSE-2.0.html#patent In general, when Company-A contributes to Apache Project-X it also must contribute a license to its patents on those contributions. Company-B would thus generally have a license to those patents via the contribution under the Apache license. See also the relevant FAQ: http://www.apache.org/foundation/license-faq.html#PatentScope
        Hide
        Henri Yandell added a comment -

        Closing this as there doesn't seem to be anymore discussion happening and/or needed.

        Show
        Henri Yandell added a comment - Closing this as there doesn't seem to be anymore discussion happening and/or needed.

          People

          • Assignee:
            Unassigned
            Reporter:
            Priyank Rastogi
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            Dates

            • Created:
              Updated:
              Resolved:

              Development