Subject: RE: royalty-free blanket statements and reasonable terms

From: "Contreras, Jorge" <[email-masked]>
Date: Mon, 25 Aug 2003 11:31:39 -0400

I think that "reasonable and non-discriminatory" were added to 
prevent abuse of the RF offering, so that a licensor couldn't 
say that it offered RF licenses, but had otherwise unreasonable 
terms that would practically prevent implementation.  If there 
is a feeling that the words "reasonable and non-discriminatory" 
are too vague (and they may well be), then I would suggest that 
the RF licensor be required to disclose ALL the terms of the proposed
 RF license explicitly.  This would provide the most information to 
the WG making the determination.  The wording could read:

   However, the requirement for an IPR disclosure is satisfied by a blanket
   statement of the IPR discloser's willingness to license all of its
   potential IPR meeting the requirements of Section 6.6 (and either Section
   6.1.1 or 6.1.2) to implementers of an IETF specification on a royalty-free
   basis [NEW: and other terms and conditions that are disclosed in the
  IPR disclosure statement].

I would not recommend getting into whether or not "interactions" are required
between the licensor and implementer.  That could create some very sticky
issues around contractual consent, abuse of market power, etc.

Jorge

-----Original Message-----
From: Scott Bradner [mailto:[email-masked]]
Sent: Monday, August 25, 2003 10:33 AM
To: [email-masked]; [email-masked]
Subject: Re: royalty-free blanket statements and reasonable terms

> I'm not sure where the WG stands on this issue. I've posted what I
> think may be a potential issue (see below), but few have responded on
> what (if anything should be done). Either folk think this isn't an
> issue to worry about (in which case I guess the current text is OK),
> or we need to decide what needs to be done.

could the problem be delt with by 
	1/ dropping the "reasonable and non-discriminatory term"
and
	2/ saying that a blanket RF statement is ok only if no 
	  individual interactions will be needed with implementors or users?

Scott

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---

From: "Contreras, Jorge" <[email-masked]>
Date: Mon, 25 Aug 2003 14:20:08 -0400

In the introductory paragraph, why must an RF license be "non-assignable" and "non-sublicensable"?  Does this mean that a truly royalty-free license that is assignable does not qualify as "RF"?  That would be an odd result.  Did the W3C have a specific reason for including these terms?

-----Original Message-----
From: Scott Bradner [mailto:[email-masked]]
Sent: Monday, August 25, 2003 12:18 PM
To: [email-masked]
Subject: Re: royalty-free blanket statements and reasonable terms

if we were to put a version of the W3C RFC definiition on as an
appendix it might look like this

Appendix A. Royalty-Free Licensing
   The following description of what constitutes royality-free licensing
   has been adapted from the W3C.

   With respect to a Recommendation developed under this policy, a
   Royalty-Free license shall mean a non-assignable, non-sublicensable
   license to make, have made, use, sell, have sold, offer to sell,
   import, and distribute and dispose of implementations of the
   Recommendation that:

   1. shall be available to all, worldwide;

   2. shall extend to all IPR that Covers technology in a specified IETF
      Document owned or controlled by the licensor;

   3. may be limited to implementations of the IETF of the technology in
      the specified IETF Document, and to what is required by the
      specified IETF Document;

   4. may be conditioned on a grant of a reciprocal RF license (as
      defined in this appendix) to all IPR that Covers technology in a
      specified IETF Document owned or controlled by the licensee. A
      reciprocal license may be required to be available to all, and a
      reciprocal license may itself be conditioned on a further
      reciprocal license from all.

   5. may not be conditioned on payment of royalties, fees or other   
      consideration;

   6. may be suspended with respect to any licensee when licensor is
      sued by licensee for infringement of claims essential to implement
      the technology in any IETF Document; 

   7. may not impose any further conditions or restrictions on the use  
      of any technology, intellectual property rights, or other
      restrictions on behavior of the licensee, but may include
      reasonable, customary terms relating to operation or maintenance  
      of the license relationship such as the following: choice of law
      and dispute resolution; 

   8. shall not be considered accepted by an implementer who manifests
      an intent not to accept the terms of a Royalty-Free license as  
      offered by the licensor.

   License term:

   9. The RF license conforming to the requirements in this policy shall
      be for the life of the patents in question.

---

From: Scott Bradner <[email-masked]>
Date: Tue, 26 Aug 2003 07:04:26 -0400 (EDT)

> I think (speaking as a process guardian only) that recommending such a 
> definition (which adding it as an appendix would essentially do) is not 
> appropriate as a change to the document after it has passed through IETF 
> Last Call.

ack

Scott

---

From: Powers Chuck-rxcp20 <[email-masked]>
Date: Mon, 25 Aug 2003 13:47:48 -0700

Scott,

   In its current form, this definition of RF, if it applied to any RF commitment made by an IETF contributor, would constitute a substantial change in running code, as it would obligate participants (and their employers/sponsors) to a licensing commitment beyond that currently defined in the IETF IPR policy (e.g. include patents they are not personally aware of, etc).

   The RF definition in the W3C Patent Policy was drafted, in part, as the definition of what licensing commitment W3C Members are to be obligated to (e.g. impacts any applicable patents they own, whether they are aware of that patent or not), rather than as an RF commitment that a member would _choose_ to adopt when making an IPR licensing commitment. As such, either some edits need to be made for IETF use, or it needs to be made clear that this RF definition only applies to a "blanket" RF commitment made to the IETF.

   I have made some proposed edits to the text below which are in line with the IETF IPR policy, although the wordsmithing is probably less than optimal.

regards,

Chuck

------------------------

Appendix A. Royalty-Free Licensing
    The following description of what constitutes royalty-free licensing
    has been adapted from the W3C.

 
    2. shall apply to the IPR which Covers the specified IETF Document
       which is specifically identified by the licensor making the RF
       licensing commitment; [Note: in the case of a blanket RF
       commitment, specifically identified could be "all IPR we own"]
 
    3. may be limited to implementations of the technology in
       the specified IETF Document, and to what is required by the
       specified IETF Document;
 
    4. may be conditioned on a grant of a reciprocal RF license (as
       defined in this appendix) to all IPR that Covers technology in a
       specified IETF Document owned or controlled by the licensee.

 

    License term:

> Sent: Monday, August 25, 2003 11:18 AM
> To: [email-masked]