Subject: RE: Concerns regarding Microsoft's Royalty Free Protocol License

From: "Valerie See \(LCA\)" <[email-masked]>
Date: Wed, 10 Nov 2004 11:42:02 -0800

Forwarding this per Harald's and Larry's request, 
to follow up on what has been discussed with Larry, 
Harald and the IAB (and I would like to thank them all for the 
conversations thatwe've had on the issues that Larry has raised):

Microsoft was required by the consent decree to provide a license to 
every client-server protocol implemented in Windows.  To be sure it 
was complying with that requirement with regard to published protocols, 
Microsoft first came up with a list of every published client-server 
protocol implemented in Windows, then provided a license for those 
protocols.   That license is what is on the MSDN web page.

The consent-decree MSDN license is not an IPR disclosure, not does 
it supercede any other license or obligation.  Microsoft just made 
a list of every published client-server protocol in Windows and provided

one license applicable to all of them, to be sure of meeting the Consent

degree obligations.  Microsoft is aware of its IPR disclosure 
obligations to standards organizations such as the IETF, and is 
committed to making disclosures as required by RFC 3667 and 3668.

Microsoft's IPR disclosures pertaining to standards submitted to 
standards bodies, pursuant to standards bodies' IPR policies, are 
the definitive Microsoft IPR statements with respect to those 
standards.  The MSDN license in no way constitutes an IPR disclosure, 
nor does it modify the terms of existing IPR licenses, commitments, 
or statements provided by Microsoft.

If someone already has a license from Microsoft for a particular 
protocol on other terms, then there is no need to be concerned about 
the MSDN license, and to date there have not been many MSDN licenses 
requested. This may suggest that by and large, industry participants 
feel they already have the licenses they need.

For those who would be interested in a more detailed response to 
Larry's letter, I've attached text below where we offer some inline 
responses to his original text. 

-- Val See

................

> I wish to express my concerns regarding Microsoft's Royalty Free
> Protocol License Agreement dated Apr 19, 2004 and published on their
> website at the following URL --
>
http://msdn.microsoft.com/library/en-us/randz/protocol/>royalty_free_pro
tocol_license_agreement.asp.
> Additionally, a FAQ document is available at the following location --
>
http://msdn.microsoft.com/library/en-us/randz/protocol/published_protoco
ls_and_royalty-free_license_faq.asp

>   The Agreement specifies a total of 130 protocols which Microsoft
> is offering for license "under any applicable intellectual property 
> rights that Microsoft may have...".  Many of the listed protocols 
> are RFC documents, including, but not limited to, the core TCP/IP 
> v4 and TCP/IP v6 protocol specifications.  Microsoft does not specify 
> how this list of protocols was derived and to what extent they have 
> investigated their possible rights holdings over these protocols.  
> The list appears to be a near, but not completely, exhaustive list 
> of public protocols implemented in Microsoft products.  For example, 
> the SMTP protocol is missing from the list

The MSDN royalty-free protocol license you reference is just one of 
the various ways Microsoft licenses the protocols used by Windows 
2000 and Windows XP client operating systems to interoperate or 
communicate with Microsoft server operating systems per the consent 
decree entered by the court in November 2002.  The MSDN royalty-free 
protocol license lists published protocols that fit within that
category.
 
Microsoft also licenses non-published proprietary protocols covered 
by the consent decree per the Microsoft Communications Protocol 
Program (MCPP) described at 
http://members.microsoft.com/consent/Info/Default.aspx. 
 
Both the MCPP license and the royalty-free protocol license on MSDN 
are offered in connection with Microsoft's obligations under the 
consent decree, separate from, and in addition to, its participation 
in standards licensing programs.  The existence of these protocol 
licenses in no way affects the fact that Microsoft will offer to 
anyone a royalty-free license with terms that satisfy any obligation 
Microsoft has as a result of its participation in a standards 
setting organization - i.e., Microsoft will honor any pre-existing 
or future IP policy commitments on IETF RFCs in addition to its 
obligations under the consent decree.  See 
http://msdn.microsoft.com/library/default.asp?url=/library/en-us/randz/p
rotocol/published_protocols_and_royalty-free_license.asp:  
"To the extent that Microsoft is obligated through its participation 
in standards setting activities to offer licenses on other terms and 
conditions, Microsoft will also comply with those obligations."  The 
FAQ you reference at the beginning of your mail (at  
http://msdn.microsoft.com/library/default.asp?url=/library/en-us/randz/p
rotocol/published_protocols_and_royalty-free_license_faq.asp) 
also include Q&A that similarly address Microsoft's obligations to 
license under different terms for industry standards.
 
>    A review of IPR notices filed by Microsoft with the IETF 
> reveals only a small number of filings which would apply to 
> the protocols listed in the Agreement.  The vast majority of 
> RFC's referenced in the Agreement have no corresponding IPR 
> notices filed with the IETF.
>
>    The fact that a significant number of protocols date from 
> the early 1980's, a time during which Microsoft had little 
> patent activity, suggests that there is no reason to suspect 
> that Microsoft has any patent rights to these early protocols 
> (such as the TCP/IP v4 core protocols).  Further, in the 
> unlikely event that applicable patents may be discovered, 
> they would have likely expired at this point.

As noted in our briefer note above, the MSDN license in no way 
constitutes an IPR disclosure, nor does it modify the terms of 
existing IPR licenses, commitments, or statements provided by 
Microsoft, and IETF IPR policy rules do not require Microsoft 
to complete a patent search for the IETF protocols listed. That 
being said, I am unaware of and agree that it would be very 
unlikely for Microsoft to hold any patents that would be 
necessary to implement any IETF protocol published prior to 
1990 including TCP/IP v4.  

>    Microsoft also mentions possible copyrights in referenced 
> Technical Documentation.  However, it is my understanding that 
> should Microsoft copyrights be contained in the documentation, 
> it is Microsoft's obligation to the identify the copyrighted 
> text and have it removed in order to mitigate damages.  
> Additionally, I do not believe mere copyrights provide the 
> right to dictate the "use" of the documentation in the 
> implementation of protocols.  In my opinion, it also shows a 
> lack of respect for the authors' rights and the terms on 
> which they submitted these documents to the IETF.  Further, 
> it unfairly implies the authors may have illegaly 
> incorporated Microsoft copyrighted material without 
> giving the authors a chance to refute such implications.

To the extent that the documentation for any of the IETF 
protocols on Microsoft's list contain Microsoft copyrights, 
the copyrighted text has been licensed to the IETF as part of 
Microsoft's contributions to the IETF per the IETF IPR policy 
in place at the time of contribution.  Microsoft remains 
free to publish and disclose its own copyrighted materials 
irrespective of whether or not the IETF has included 
Microsoft's contributions in IETF IDs or RFCs. Microsoft 
does not claim to be the sole owner of copyright in all the 
published documentation for any IETF or other protocol that 
is listed.  Instead, the license is only designed to ensure 
that to the extent Microsoft does have any copyrights in that 
documentation, Microsoft is making available a license under 
those intellectual property rights consistent with its consent 
decree obligations.  A license under any copyrights Microsoft 
may have in the documentation for listed protocols does not 
"dictate" the use of that documentation in the implementation 
of those protocols; it just ensures that those who want 
copyright-related rights in connection with their use of the 
documentation to create protocol implementations can obtain 
such rights.

>    It is my concern that by merely suggesting they may hold 
> applicable rights to these protocols, Microsoft is injecting 
> a significant amount of unwarranted uncertainty and doubt 
> regarding non-Microsoft implementations of these protocols.  
> It is quite likely that an individual or organization would be 
> intimidated into signing the license agreement simply due to 
> Microsoft's vast financial and legal resources.  Further, 
> because Microsoft provides no reference to any proof of 
> applicable rights holdings (such as patent numbers), it is 
> impossible to ascertain whether Microsoft indeed has 
> legitimate rights holdings.

To the best of our knowledge no one has raised any concern 
stemming from any uncertainty as to whether or not a patent 
license for one of the published IETF protocols in the MSDN 
protocol license list is needed to distribute a non-Microsoft 
implementation, and to date there have not been many MSDN 
licenses requested.  Together with the fact of wide-spread 
adoption of these protocols today, this would suggest that 
any "intimidation" factor is more speculative than real.  

>    Of additional concern is the onerous and restrictive 
> conditions attached to the license agreement.  In particular, 
> the limitations which restrict implementations to "Server 
> Software or a component of Server Software" and the requirement 
> that implementations "are compliant with the relevant Technical 
> Documentation."
>
>    The "Server Software" requirement and definition, including 
> such amorphous concepts as how software is "marketed", would 
> likely exclude many open source and embedded software
> implementations.  It is difficult to imagine how such a 
> requirement could meet anyone's definition of "reasonable and 
> non-discriminatory".  I mention RAND terms as the document is 
> located under a directory entitled "randz" on Microsoft's 
> website.

>    The Technical Documentation compliance requirement would, 
> in a number of cases, cause implementations to interoperate 
> poorly, or not at all, due to flaws and errors in the RFC 
> documents.  Further, it would prohibit researchers from 
> making enhancements and improvements to the protocols.

Again, the license you refer to has a scope of use designed 
to be consistent with Microsoft's obligations under the consent 
decree mentioned above.  As noted above in our response at the 
beginning of this mail, Microsoft has made very clear statements 
in connection with the MSDN protocol license that Microsoft will 
offer to anyone a royalty-free license with terms that satisfy any 
obligation Microsoft has as a result of our participation in a 
standards setting organization - i.e., Microsoft will honor any 
pre-existing or future IP policy commitments on IETF RFCs in 
addition to its obligations under the consent decree.  

The additional CIFS license at 
http://msdn.microsoft.com/library/default.asp?url=/library/en-us/cifs/pr
otocol/royalty-free_cifs_technical_reference_license_agreement.asp 
is an example of a license offered by Microsoft with terms 
that differ from the terms offered pursuant to its obligations 
under the consent decree.  Anyone is free to accept either license 
at their discretion.

>    In summary, I would like to request a statement from the 
> IAB providing commentary on this Agreement and seeking 
> clarification from Microsoft. I believe the lack of specificity 
> of rights holdings (and correspondingIPR notices), as well as 
> the restrictive requirements of the Agreement, are cause for 
> significant concern. 
>
>
> ADDITIONAL NOTE:
>     It appears this Agreement may have been referenced 
> in United States v. Microsoft "Joint Status Report on 
> Microsoft's Compliance with the Final Judgements" dated 
> January 16, 2004.  The report can be found at
> http://www.usdoj.gov/atr/cases/f202100/202129.htm
>      In the report, reference is made to the fact that,
> "Microsoft will soon be releasing a much shorter license
> agreement, making approximately two dozens (sic) protocols 
> available on a royalty-free basis...".  If this is 
> indeed true, one wonders how two dozen protocols, 
> perhaps where Microsoft may have had a reasonable 
> belief of rights holdings, became the much larger list
> of 130 protocols present in the Agreement.
>
>
>   Sincerely,
>     Larry J. Blunk

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---

From: "Larry J. Blunk" <[email-masked]>
Date: Wed, 10 Nov 2004 17:08:23 -0500 (EST)

Disclaimer:  The following views and concerns are my own and do not
              reflect those of my employer, Merit Network, Inc.

> protocols.   That license is what is on the MSDN web page.

Valerie,
  I believe this is the relevant section of the Consent Decree:

-----
III.E. Starting nine months after the submission of this proposed Final 
Judgment to the Court, Microsoft shall make available for use by third 
parties, for the sole purpose of interoperating or communicating with a 
Windows Operating System Product, on reasonable and non-discriminatory 
terms (consistent with Section III.I), any Communications Protocol that 
is, on or after the date this Final Judgment is submitted to the Court, 
(i) implemented in a Windows Operating System Product installed on a 
client computer, and (ii) used to interoperate, or communicate, natively 
(i.e., without the addition of software code to the client operating 
system product) with a Microsoft server operating system product. 
-----

   It's not at all clear to me that the phrase "make available for use"
means that Microsoft is required to license all protocols.  For those
protocols which are open and free of any known IPR, I don't see any
reason for Microsoft to provide a license as they would already be 
considered "available for use".

   Further, you indicated in our phone conversation yesterday that
Microsoft was given the option to only license those protocols upon
which it believed it had specific rights.  So it would seem that it was
Microsoft's decision to include the complete list of implemented published
protocols in their license.

   Note that the July 19, 2004 Status Report states the following:
------
As reported at the April 21, 2004 Status Conference, at Plaintiffs' 
request, Microsoft has made a number of improvements to the MCPP. 
Microsoft greatly simplified the license terms and made available 
approximately 20 protocols using a click-through royalty-free license on 
MSDN. These 20 protocols had previously been offered for license only with 
payment of a royalty.
------

   The figure of 20 procotols in this report is inconsistent with
the 130 listed in the MSDN license which is dated April 19, 2004.
Are these 20 protocols ones where Microsoft has identified
potential IP rights?  If so, are there IPR disclosures filed
with the IETF for those which are IETF Documents?

> or statements provided by Microsoft.

   I realize the MSDN license is not an IPR disclosure, in fact that
was my point.  It would seem reasonable to expect that an
IETF participant who offers a license for specific IETF Documents
would be willing to provide an IPR disclosure to justify their
license.  And, yes, I do realize that this is not explicitly
required in RFC3668.

> responses to his original text. 

    This statement is not particularly comforting.  What about protocols
published after 1990?   Does this mean one can be confident in
relying on IPR disclosures filed by Microsoft with the IETF for 
determing which procotols Microsoft believes it has rights over?
Or are there protocols in the list which Microsoft believes it
may have rights over but has yet to file an IPR disclosure?
  
> > of 130 protocols present in the Agreement.

  Regards,
    Larry J. Blunk