[Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION)

[Schweppe, Kathrin]

Dear Karl, dear Susanne

first, SAP cannot agree to any changes to CA now, because we have already send the CA for signature. The only way to change the CA for SAP now would be an amendment.

Secondly, I disagree with your legal advisor. Reciprocity is not upon any third party discretion because the party or parties creating the Generic Enabler Specifications are free to decide upon Terms of Use they would like to attach to the Generic Enabler Specifications. It is not upon third parties to decide about the conditions for the usage of the Generic Enabler Specifications.

Thirdly, what happens if a party does not agree upon reciprocity for specific Generic Enabler Specification? I assume it should be free to all Fi-Ware partners to decide most freely upon the terms and conditions upon which the Generic Enabler Specification should be published. I do not see a connection between royalties (= money to be paid) or a reciprocal license.


Another point with regard to third party beneficiaries, the DOW states this:
"Task 2.3: Consolidation of Generic Enabler Specifications
In order to fulfil the FI-WARE promise all Generic Enablers will be accompanied by Open Specifications that will facilitate usage and integration in any FI-WARE Instance as well as the development of compliant implementations of GEs by third parties. While GE Specifications themselves will be done inside WP3-WP10, overall coordination and consolidation of these specifications is the objective and responsibility of this Task. "

I assume, if the third party beneficiary does not claim the usage license without reciprocity from the CA, they can claim it from the DOW. I understand it in that way, that we have to make available the Specification under such conditions, that a third party can develop freely an implementation of it. And to be honest, the word Open might give the impression to have even broader rights than just no royalties.

Best regards,
Kathrin

Kathrin Schweppe, LL.M.
Contract Specialist
Global Legal
SAP AG
Dietmar-Hopp-Allee 16
69190 Walldorf, Germany
T +49 6227 7-64369
F +49 6227 78-54177
E kathrin.schweppe at sap.com<blocked::mailto:nadine.heitmann at sap.com>
http://www.sap.com<http://www.sap.com/>
Sitz der Gesellschaft/Registered Office: Walldorf, Germany
Vorstand/SAP Executive Board: Bill McDermot (Sprecher/Co-CEO), Jim Hagemann Snabe (Sprecher/Co-CEO), Werner Brandt, Gerhard Oswald, Vishal Sikka
Vorsitzender des Aufsichtsrats/Chairperson of the SAP Supervisory Board: Hasso Plattner
Registergericht/Commercial Register Mannheim No HRB 350269

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Von: fiware-legal-bounces at lists.fi-ware.eu [mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von SCHATTAUER, Karl
Gesendet: Dienstag, 23. August 2011 13:54
An: LUIS GARCIA GARCIA; fiware-legal at lists.fi-ware.eu
Cc: Asesoría Jurídica; JOSE JIMENEZ DELGADO; LUIS LOPEZ DE AYALA HIDALGO
Betreff: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION)

Dear Luis, all,

below please find some comments from our legal department.


Best Regards,

Karl

Dear Luis,

Per email dated August 17, Alcatel-Lucent proposed some modifications to section 4.1 of the CA. One of the main concerns we tried to address was to incorporate an obligation on any third party joining the CA or underlying agreements to grant the same rights on its patents on the same terms and conditions on which such third party receives rights from the Consortium Partners under the CA or other associated agreements.

The final version sent to us does not address this concern. Instead it has been proposed by SAP AG to cover the reciprocity under adequate licenses attached to the GE Specifications. This approach bears the following risks:

·         It would be at the option and discretion of a third party to agree to grant reciprocity
·         Under some national laws, based on the current wording of section 4.1 a, any third party could be considered as a third party beneficiary to the CA and be eligible to request the grant of royalty free patent licenses to the GE Specs ( which would include the Parties Background, Sideground and Foreground). Consequently there is a risk that we may not have the right to request a royalty free grant back license from such third party.

For these valid reasons, the obligation on third parties to grant reciprocity should be stated in the CA. We believe that this is a very balanced approach. Therefore we propose to reword the second sentence of the second paragraph of section 4.1 as follows (modification indicated in bold letters):

"For the sake of clarity,   Parties signing this CA as well as any other third party, subject to reciprocity, may develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis."

We look forward to your response.

All the best,

Oezlem Schmitt



OEZLEM SCHMITT
IP CORPORATE COUNSEL
ALCATEL-LUCENT INTELLECTUAL PROPERTY & STANDARDS
P:       +49 711 821 44562
F:       +49 711 821 44587
Oezlem.Schmitt at alcatel-lucent.com<mailto:Oezlem.Schmitt at alcatel-lucent.com>

Alcatel-Lucent Deutschland AG
Lorenzstraße 10
70435 Stuttgart


Von: fiware-legal-bounces at lists.fi-ware.eu [mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von LUIS GARCIA GARCIA
Gesendet: Montag, 22. August 2011 10:41
An: fiware-legal at lists.fi-ware.eu
Cc: JOSE JIMENEZ DELGADO; Asesoría Jurídica; LUIS LOPEZ DE AYALA HIDALGO
Betreff: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION)

Dear all,

Although clause 4.1 was agreed and closed during our calls and e-mails discussions, some partners pointed out that it was necessary to modify it in order to enable the partners to protect and/or request royalties regarding the IPRs included in the implementations of the FI-WARE GES. We proposed a wording that, from our point of view, regulate this situations and, in parallel, didn´t affect the essence of the project at this point ( accordingly with the DoW).

In this FINAL VERSION of the CA, we´ve included the comments sent by NSN in this clause in the two first paragraphs, but not the new third paragraph as, from our perspective, goes beyond the modification requested and will give rise to another round of discussions and literally we have no more time to afford it.

This modification does not modify the initial content and sense of this crucial clause, but gives a better protection of partner´s technology when used in an implementation.  However, we must take into account that there are two aspects that cannot be subject to "protection or royalties":

1.- If it is something "inherent" to the specifications, that is to say that nobody would implement it in a different way.

2.-  If it  is one aspect of the implantation that everybody, that implement the specifications, would obviously do.

Both points are not necessary redundant.

Regarding Technnicolor concerns about the payment clause (agreed during one of the Conference calls held during the negotiation process), we´ve maintained the clause wording under our reasoning in mails of 22nd July 27th July sent to Technicolor.

We have also included a last minute minor change in the publications clause. Our technical people strongly requested us to include a shorter term for the publications clause to enable the parties to duly fulfill with a "normal" technical development of the project. It is to make shorter the term for the publications of the Public Deliverables (10 working days) and to enable the Board to decide an even shorter term in case of publications in the project website www.fi-ware.eu<http://www.fi-ware.eu> ( maximum 5 working days)  They say that a 20 days period is not practical at all, at least for these publications, specially to attend the needs of Use Cases projects and the expected content of the mentioned web site.

I´ve modified clause 4.4.1. including a new point c) and also (accordingly) clauses 3.3.1 and 3.3.2.5 (functions and decisions of the Board)

Last, accordingly with Article 1.4 of the Grant Agreement, the Commission is expecting with the signed Grant Agreement that the consortium has established and signed a Consortium Agreement. We must take into account that the 45 days period to deliver the signed Form A to the Commission expire (except I´m wrong) next 16th Sept and some partners subject their signature to the conclusion of this agreement.

Consequently, I have received definitive instructions to close the Consortium Agreement and start the signature process.

Please find attached the final Consortium Agreement for FI-WARE for signature (pdf-document). In addition, I prepared the signature pages per FI-WARE partner (word-document) based on the information received. I would like to receive the pending information to complete the signature with the name(s) and title(s) of the organization that still have not sent their details.

As you know, we all have made a big effort to get a balanced agreement (we think we´ve got it) but if any partner does not agree with the proposed text, and is not going to sign the CA, we kindly ask them to notify us ASAP to start any necessary actions to manage their exit from the project. Except for any typo, no further modifications are possible.

Please print 26 signature pages of your signature page and send them signed to the address mentioned bellow by courier mail latest by 9th September.
Telefónica Investigación y Desarrollo, S.A.Unipersonal
To the att of Mr. Javier de Pedro

DISTRITO C- Edificio Oeste 1,  4ª planta

Ronda de la Comunicación s/n

28050-Madrid (España)

We will confirm the reception of your signature and will send back one original together with the copies of the other signatures.

In addition, please send a scanned version of your signature page latest by 9th September:
The  parties  that have already sent the signed Collaboration Agreement to AALTO (or to the Coordinators of others FUTURE INTERNET projects) please send us a scanned copy of your signature page to the following e-mail address  jdps at tid.es<mailto:jdps at tid.es>;  the rest of participants that have still not signed the Collaboration Agreement, please send us also three copies of the signature page ( Annex 1) to the address mentioned above. Find enclosed the final version of the Collaboration Agreement.

If you have any further doubts regarding the signature process, please let us know.

Thanks and regards.



Luis García García
Asesoria  Jurídica // Legal Department
Tfnos: +34 914832614 //  +34913129666
Telefónica Investigación y Desarrollo, S.A.Unipersonal
DISTRITO C- Edificio Oeste 1,  5ª planta
Ronda de la Comunicación s/n
28050-Madrid (España)

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