Dear Luis. I think that the reference in Section 5 to "this Section" is confusing, since no rights are granted in Section 5. rather, we should refer to Section 3 which includes the license grant. The attached contains this change, and one further suggested clarification to Section 5. Regards Jonas Dr. Jonas Heitto, LL.M. Senior IP Counsel ALCATEL-LUCENT INTELLECTUAL PROPERTY & STANDARDS * Tel +49 711 821 44561 * Fax +49 711 821 44587 jonas.heitto at alcatel-lucent.com Alcatel-Lucent Deutschland AG Lorenzstraße 10 70435 Stuttgart Sitz der Gesellschaft/ Domicile of the Company: Stuttgart . Amtsgericht/ District Court Stuttgart HRB 4026 Vorsitzender des Aufsichtsrates/ Chairman of the Board of Directors: Michael Oppenhoff Vorstand/ Board of Management: Alf Henryk Wulf (Vorsitzender/ Chairman) . Hans-Jörg Daub . Dr. Rainer Fechner . Andreas Gehe Note: This e-mail message and any documents accompanying it may contain confidential and/or legally privileged information belonging to Alcatel-Lucent. If you are not the intended recipient, you are hereby notified that any disclosure, copying, distribution or the taking of any action in reliance on the information is strictly prohibited. If you have received this e-mail in error, please immediately notify us and delete all copies of the transmission. ________________________________ From: fiware-legal-bounces at lists.fi-ware.eu [mailto:fiware-legal-bounces at lists.fi-ware.eu] On Behalf Of LUIS GARCIA GARCIA Sent: Donnerstag, 21. Juni 2012 15:45 To: fiware-legal at lists.fi-ware.eu Cc: JOSE JIMENEZ DELGADO Subject: [Fiware-legal] FIWARE LEGAL NOTICE Dear all, Thanks you all for your constructive comments to this Legal Notice. As it is not possible, within this week, to reach an unanimous agreement regarding the content of a unique Legal Notice for all the FIWARE GES, we propose you the following: 1º.- To use the attached Legal Notice that is based on the previous version with minor modifications (I attach a clean copy) As you may see, we have deleted the two paragraphs related to the patent licenses. See explanation bellow. 2º.- Those FI-WARE Partners that, as copyright holders of the relevant FIWARE GES, reasonably and under justified reasons, agree not to use this text, will include the corresponding modifications they may freely decide as owners. In this case, we kindly ask you to minimize the deviation from the original text provided herein. These modifications must always respect what has been agreed in the Grant Agreement and in the Consortium Agreement, specifically in the point explained bellow. 3º.- In parallel - as we still think that a unique text would be highly advisable for all FIWARE GES legal notice - we will retake this conversation in a couple of weeks (From 22th to 29th June I´ll be on holidays) to get one agreed text applicable to all FIWARE GEs. POINTS UNDER DISCUSSIONS 1º LICENSES TO SPECIFICATION ESSENTIAL PATENTS >From our perspective, partners obligations regarding Licenses to Specification Essential Patents, are clear in the FIWARE CA: they must be granted on RF terms even if they affect to BG or SG of the Partners. Notwithstanding any conflicting terms in this CA, but subject to Annex 3 and Section 3.4.3.3,the FI-WARE Generic Enabler Specifications will be made publically available (upon publication in accordance with clause 4.4.1) on royalty free terms. For the sake of clarity, Parties signing this CA as well as any other third party may, subject to additional conditions or agreement where requested by a Party/ the Parties (provided that the right to obtain Access Rights granted under this Agreement must not be negatively affected by such request),develop and release implementations of the FI-WARE Generic Enabler Specifications on a royalty-free basis. As most of you can remember, on 22nd August 2011 we closed the CA. In this 22nd version, the text in this clause was exactly the one I´ve copied, but without the yellow marked words. These words were added, after some discussions, in the very final version of 12th September due to the fact that some partners pointed out some risks in the original wording. Let me copy here, a paragraph of an e-mail of Susanne Weikl (NSN) that perfectly reflects these risks we tried to avoid with the new wording (when she spoke about "reciprocity" and "subject to additional conditions or agreement" she´s referring to the first draft of the modification proposed) : "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". 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. 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." As you may see, at this stage of the CA modification, we all knew that these Licenses to Specification Essential patents would be granted for free. Let me copy also two more examples of the mails exchanged during those days (Kathrin, Suzanne, I hope you don´t feel uncomfortable because I use here your words..) : IBM: >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. SAP: ? 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. I can provide more examples, but I think these are enough. For those lawyers that are new in the "Legal Group" of FIWARE We kindly ask you to check this point with your colleagues. So, once the RF question is clear, for those of you that still prefer to include a paragraph with the License to the Specification Essential Patents, we suggest to include in it the reference to the "Additional Conditions or the Agreement" mentioned in the clause of the CA. For example: Subject to a previous agreement and under certain conditions, each of the FI-WARE Partners, jointly or solely, hereby agrees to grant you, a royalty-free, personal, nonexclusive, non-transferable, non sub-licensable, paid up, worldwide license, under their respective Specification Essential Patents, to make, use sell, offer to sell, and import software implementations utilizing the Specification This is just an example- IMHO if we do not make reference to this in the Legal Notice, it does not imply that we´re automatically grating RF, unconditioned licenses... the possibility of granting these license under an specific conditions or under an agreement still exist. As we told you in a previous mail: " Experienced license drafters, such as the Object Management Group (OMG), did not include a specific patent grant in Legal Notices attached to the Open Specifications they publish. So what's good for them could be also good for us. " 2º.- APPLICABLE LAW Some partners have raised the question of which law would be applicable to this legal notice. Our Legal Notice is based on the OMG legal notice and no reference to applicable law is mentioned there. From our perspective, applicable law will be the one decided by the copyright holder/s, that are the owner/s of each specification. A reference to it in this way would be acceptable. OMG is one of the most recognized industry consortia publishing open specifications. They have produced specifications linked to rather relevant standards such as CORBA, BPMN, UML, ... We believe it is pragmatic to rely on the experience of a language that has shown it works since many years. In this respect, the original Legal Notice is rather aligned with OMG's language. On the other hand, many of the companies involved in FI-WARE have participated in some OMG standard, without apparently representing any big issue, and this is something worth noticing. Best 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) [cid:image001.gif at 01CD507D.4D29C6D0] ________________________________ Este mensaje se dirige exclusivamente a su destinatario. Puede consultar nuestra política de envío y recepción de correo electrónico en el enlace situado más abajo. This message is intended exclusively for its addressee. We only send and receive email on the basis of the terms set out at http://www.tid.es/ES/PAGINAS/disclaimer.aspx -------------- next part -------------- An HTML attachment was scrubbed... URL: <https://lists.fiware.org/private/fiware-legal/attachments/20120622/cd3741e3/attachment.html> -------------- next part -------------- A non-text attachment was scrubbed... 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