[KI-LC] [BoT] A new Non-Assert Covenant to consider adopting

Brett McDowell email at brettmcdowell.com
Thu Nov 19 17:22:24 EST 2009


Regarding the strategic question, let's review what we know.

- Google, Yahoo!, Facebook and MSFT have *all* licensed spec under OWFa (as of this week)
- Google, Yahoo! and MSFT were the lead co-contributors to OWFa
- The only tech spec license Kantara offers now is one that none of those companies have ever agreed to in the past

So, adopting OWFa is no guarantee any of those companies will decide to do work in Kantara Initiative Work Groups, but not adopting it may well keep them out.

I picked up something important in Bill's comment that also comes into play: offering a choice of Non-Assert Covenants (NAC's).  Any license limited to "necessary claims" (like OWFa and Liberty Option) is going to be seen as not as inclusive/enabling/open as it might be.  So I propose the Board consider adopting both OWFa and an even simpler NAC that isn't limited by "necessary claims" simultaneously. 

I found a reasonable candidate online that would meet these criteria and at least one significant patent holder has already used for work in our industry:


Non-Assertion Covenant
_______ irrevocably covenants that, subject solely to the condition described below, it will not assert any of its U.S. or foreign patents against that portion of a product that implements the ________ specification by itself or that implements that specification together with _______ . 

Condition: this covenant shall not apply with respect to any individual, corporation or other entity that asserts or threatens at any time to enforce its own or any other party's U.S. or foreign patents against any _________ Implementation. 

This statement is not an assurance either (i) that any of _________ issued patents cover a _________ Implementation or are enforceable, or (ii) that a __________ Implementation would not infringe patents or other intellectual property rights of any third party. 

No other rights except those expressly stated in this Non-Assertion Covenant shall be deemed granted, waived, or received by implication, or estoppel, or otherwise.
Note: I'm picking those one to direct your attention to because it's already known in our space (used for OpenID in this case [1]) but also that it meets some key differentiating criteria from the OWFa (that was debated in OWF by the way).  But any other NAC that was not limited to "necessary claims", especially one with broad "defensive suspension" would be a rational option for the BoT to add to the list (again, only two NAC's, not more!).

For more on some comparisons of licenses you might want to review this vendor-neutral analysis by ConsortiumInfo.Org [2]


[1] http://www.sun.com/software/standards/persistent/openid/nac.xml
[2] http://www.consortiuminfo.org/standardsblog/article.php?story=20060126112043223


Brett McDowell  |  http://info.brettmcdowell.com  |  http://KantaraInitiative.org

On Nov 19, 2009, at 4:47 PM, Colin Wallis wrote:

> ..and Bill's comment is the nub of Bill's position as I understand it - keep it simple to the existing 3, because if you add OWF you will potentially open the floodgates of options-on-options.
>  
> Sure, OWF the non-assert covenant IPR license may have weaknesses that Bill sees now (thanks Bill - will be very useful for the later guidance material!) and perhaps other folks over in OWF will sooner or later as they implement it.
>  
> And no doubt OWF will modify it, if the members grumble and/or don't take it up.
>  
> Meanwhile, we will be ahead of other SDO's because at least we have a choice!
>  
> Moving from Legal to Strategic for a moment, if we were to offer OWF's license do we feel some of their members would do stuff in KI? We have offered many olive branches in the past and been disappointed!  Would this be a game-changer? Or potentially give us more headaches for little gain?
>  
> Even from our own membership base, is there going to be enough motivation for OWF-type licenses over the next 12 months?  Is it worth asking them?
>  
> Several thoughts in the above I know…sorry
>  
> Cheers
> Colin
>  
>  
> From: lc-bounces at kantarainitiative.org [mailto:lc-bounces at kantarainitiative.org] On Behalf Of Bill Smith
> Sent: Friday, 20 November 2009 4:36 a.m.
> To: Kantara BoT
> Cc: Kantara Leadership Council
> Subject: Re: [KI-LC] [BoT] A new Non-Assert Covenant to consider adopting
>  
> -1 (if this is the only non-assert covenant the Board will consider)
>  
> On Nov 19, 2009, at 7:00 AM, Nat Sakimura wrote:
> 
> 
> +1, for various reasons. 
> 
> On Wed, Nov 18, 2009 at 6:47 AM, Brett McDowell <email at brettmcdowell.com> wrote:
> Many of you know that the Open Web Foundation has been working on a non-assert covenant IPR license for some time.  What you might not know is that I had spent some time working on it with them in the Spring.  As of today it is considered approved.  They have decided to label it version "0.9" to indicate it might change over time and they are open to enhancing it, but do not mistake that for "draft" or "tentative".  This license is final and there is no work underway to develop it any further at this time.
> 
> What interesting about this license is that Google, Microsoft, and Yahoo! have clearly been the driving force behind it's development and each has committed to license specifications under this license.
> 
> News & list of specs under OWFa:
> http://openwebfoundation.org/2009/11/introducing-the-open-web-foundation-agreement.html
> 
> The agreement itself:
> http://openwebfoundation.org/legal/agreement/
> 
> Talking points from OWF regarding the agreement:
> http://wiki.openwebfoundation.org/How_to_use_the_agreement
> 
> I encourage the Board of Trustees to consider adding this to our IPR Policy as the first (and perhaps only) non-assert covenant in our menu of options.
> 
> If you have questions about this license, I may be able to answer them on this week's call under "AOB" (assuming we get through the full agenda in time).
> 
> P.S.
> If there are concerns with the license please let me know as I now (once again) serve on the Open Web Foundation Legal Affairs Committee.
> 
> 
> Brett McDowell  |  http://info.brettmcdowell.com  |  http://KantaraInitiative.org
> 
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> 
> -- 
> Nat Sakimura (=nat)
> http://www.sakimura.org/en/
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