On 26/08/11 14:43, SCHATTAUER, Karl wrote:
All,
below please find a statement of our legal representative.
Best regards,
Karl
Von: fiware-legal-bounces at lists.fi-ware.eu<mailto:fiware-legal-bounces at lists.fi-ware.eu> [mailto:fiware-legal-bounces at lists.fi-ware.eu] Im Auftrag von Weikl, Susanne (NSN - DE/Munich)
Gesendet: Freitag, 26. August 2011 09:29
An: ext Juanjo Hierro; fiware-legal at lists.fi-ware.eu<mailto:fiware-legal at lists.fi-ware.eu>
Betreff: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION)
Hello Juanjo and all,
good that we clarify this again:
There is 3 levels:
1) The Specification as such, i.e. “the piece of paper” – not controversial at all – can be circulated royalty free.
2) A Party’s implementation of such Specification - – not controversial at all – is up to the Party, whether it is royalty bearing or not.
3) The problematic level is the following: do we have to grant royalty-free licenses to all IPR (including Background!), where a Party uses such IPR when making its own implementation of the Specification? So far the agreement states “yes”, provided that it is a “normal implementation”.
Can you explain why are you deriving this ? What do you mean by "normal implementation" ? I have search for the term "normal implementation" and is nowhere in the CA. Even "normal" is not used at all regarding IPRs ...
Why do you say that "we have to grant royalty-free licenses to all IPR (including Background!), where a Party uses such IPR when making its own implementation of the Specification" ? We say just the opposite in the CA:
Parties are not barred from requesting royalties for, or protecting their rights with respect to IPRs (e.g. but not limited to patents) in any such implementations of the FI-WARE Generic Enablers Specifications, which are not directly disclosed by the FI-WARE Generic Enabler Specifications or which are not inherent to, or cannot trivially be derived as valid implementation of part of the FI-WARE Generic Enabler Specifications
Of course, we will not charge for IPRs that are inherent to or cannot trivially derived as valid implementation of part of a FI-WARE GE specification (read my comment below, further on this matter). But you would be able to charge for IPRs on aspects that are linked to those aspects that may be differential in your product, therefore not inherent nor trivially derived from just reading the spec.
This is e.g. going beyond what is normally requested in standardization, where the obligation to avail IPR is either on FRAND conditions or at least limited to “essential IPR”, not ”normal IPR”. It also goes far beyond what is requested in normal EU projects, where Background only has to be made available under FRAND terms.
In this context “reciprocity” is meant as follows: the third parties has to make available its IPRs which would be used in such a “normal implementation” of a Specification. It does not extent to any other product or IPR of such third party. What is avoided thereby is that a Party can use all the specification free of charge and block all the rest of the world from using the specifications, should it have a patent which it essentially needed for the implementation of the Specification.
Again, don't know what you mean by "normal implementation".
But, anyway, let's make one point clear. When a number of companies sit together and try to define something which can become an open standard (and that's what we aim to do in FI-WARE) what they do is that they generate public specifications and try to publicly state (typically in a legal note accompanying the specs) that any party feels should feel confident that it will be able to generate a competitive product, compliant to the specs. And that they will not be suddenly surprised because one day they discover that one of the companies who authored the specs kept (secretly) a patent on something that is "inherent" in the spec or could be trivially derived in the spec. That's regular business in open software standards. The existing clauses in the CA try to make sure that we are on the same page on this.
If there is a third party (that is, someone who is not a FI-WARE partner) that has a patent on something that existed previous to our spec, I don't know how you are going to be able to prevent that they sue us when they discover it. It's simply impossible. We will have to battle to it or fix the specs (same thing a standard body would do). If it is something they generated as a result of implementing our spec and it happens to be something "inherent to the spec" or "trivially derived from the spec", I don't understand why they would be able to sue us. We just need to accompany our GE specs with some legal note making a statement like (well, in the right legal terms, I'm not a lawyer) "No party implementing these specifications will be able to charge royalties or claim patents on any element that is directly disclosed by this specification or which is inherent to, or can trivially derived as valid implementation of, part of this specification". That would be the kind of reciprocity you are looking for, I guess. But the right thing to do will be to add the proper legal note in whatever spec we produce. Not to introduce anything in the CA (which is not public). Changing the CA doesn't solve anything.
Frankly speaking, what you ask for (the change in the CA) still doesn't make any sense to me. Legal notes we will have to enclose to produced GEs are another story. There, my comment above would apply.
Time is over. It's time to sign the current GA.
Best regards,
-- Juanjo
Therefore a clarification as in “For the sake of clarity, Parties signing this CA as well as any other third party, subject to additional conditions or agreement, may develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis.” is not nonsense, but protects all of us and fully serves the purpose, we want to achieve: an open specification.
Best Regards
Susanne
From: fiware-legal-bounces at lists.fi-ware.eu<mailto:fiware-legal-bounces at lists.fi-ware.eu> [mailto:fiware-legal-bounces at lists.fi-ware.eu] On Behalf Of ext Juanjo Hierro
Sent: Thursday, August 25, 2011 7:20 PM
To: fiware-legal at lists.fi-ware.eu<mailto:fiware-legal at lists.fi-ware.eu>
Subject: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE VERSION)
Hi all,
This discussion is sincerely ... "non-sense". I hope I will be able to explain myself.
What is public and royalty-free are the FI-WARE GE Specifications. And as pointed out in previous mails from other partners (despite it was with the omission of the term "specification" which is quite relevant in this discussion) the public and royalty-free nature of FI-WARE GE Specifications is something that was there since proposal time and rather a cornerstone reason why our project passed the evaluation and was accepted by the EC.
Given said this, an specification is here a PIECE OF PAPER, that is, documentation. What sort of reciprocity are we looking for here ? Are you asking that third parties make specifications of other products they may have public and royalty-free ? It simply has no-sense. It is like saying that Apple has to make public and royalty-free the specs of one of its products just because it has develop the Safari browser based on the public and royalty-free specs of HTML as published by the W3C (BTW, which product specification would you ask them to make public and royalty-free ? The iPhone specifications ?) Come on. NO-SENSE at all.
As repeated many times. Specifications are different than implementations. We are not making our implementations of the FI-WARE GE Specifications public and royalty-free. Nor of course can claim that third parties should give us their implementations for free either.
Unless I'm missing something rather important, this discussion is completely non-sense to me. Therefore, no changes in the CA will be incorporated in this respect.
As already announced by Luis:
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.
Best regards,
-- Juanjo
On 23/08/11 15:40, Suzanne Erez wrote:
Susanne, Kathrin, et al.,
Kathrin has some points in her argument, and so does Susanne and Karl.
But are legal arguments really the question? Or is the question what did
we agree to in November 2010 when this whole CA negotiation started?
>From the beginning, our understanding was that the Commission requires that
the GES be royalty free. This was conveyed to us by Juanjo.
Now there is a new request that goes like - we will make the GES royalty
free, but only on the condition that the "public" will promise reciprocity.
There is nothing wrong business wise in this approach, and I for one am
always happy to get other companies patents royalty free. In fact, I would
like to get RAND for the GES. But that was not our agreement with the
Commission, and we are working according to the Commission's request.
We agreed to this condition 10 months ago. I think it is now 10 months
too late to start changing the terms.
Being an engineer, I remember an old saying "there comes a time to shoot
the engineers and ship the product." I think we can adopt that and say
"there comes a time to shoot the attorneys and start the project". I think
that time is now.
good luck to us all, and happy working on the project!
Suzanne
Suzanne Erez
Counsel, IPLaw, Israel
Associate PPM, PPM 160
IBM Haifa, Israel suzanne at il.ibm.com<mailto:suzanne at il.ibm.com>
Tel: 972-4-829-6069 Fax: 972-4-829-6521
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From: "Schweppe, Kathrin" <kathrin.schweppe at sap.com><mailto:kathrin.schweppe at sap.com>
To: "SCHATTAUER, Karl" <Karl.Schattauer at alcatel-lucent.com><mailto:Karl.Schattauer at alcatel-lucent.com>, LUIS
GARCIA GARCIA <lgg at tid.es><mailto:lgg at tid.es>, "fiware-legal at lists.fi-ware.eu"<mailto:fiware-legal at lists.fi-ware.eu>
<fiware-legal at lists.fi-ware.eu><mailto:fiware-legal at lists.fi-ware.eu>
Cc: Asesoría Jurídica <asesoria_juridica at tid.es><mailto:asesoria_juridica at tid.es>, JOSE JIMENEZ
DELGADO <jimenez at tid.es><mailto:jimenez at tid.es>, LUIS LOPEZ DE AYALA HIDALGO
<ayala at tid.es><mailto:ayala at tid.es>
Date: 08/23/11 04:16 PM
Subject: Re: [Fiware-legal] FI-WARE CONSORTIUM AGREEMENT (SIGNATURE
VERSION)
Sent by: fiware-legal-bounces at lists.fi-ware.eu<mailto:fiware-legal-bounces at lists.fi-ware.eu>
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<mailto:kathrin.schweppe at sap.com>
http://www.sap.com
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Von: fiware-legal-bounces at lists.fi-ware.eu<mailto: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<mailto: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> [
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<mailto: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 27
th 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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