Open Web Foundation CLA 1.0 & OWFa 1.0 FAQ

Open Web Foundation

Contributor License Agreement (CLA 1.0)

and

Final Specification Agreement (OWFa 1.0)

FAQ for Contributors, Supporters, Implementers and Users

of Open Specifications

This FAQ is not an official document of the Open Web Foundation nor is it intended to provide legal advice. The terms and conditions of the official versions of the CLA and OWFa 1.0 agreements posted at the Open Web Foundation website (www.openwebfoundation.org) in conjunction with the advice of your own attorney should guide your own interpretation of those documents. The CLA and OWFa agreements described in this FAQ were created through consensus procedures by the OWF Legal Drafting Committee and have been approved unanimously by the OWF Board of Directors. This FAQ, intended to be a helpful guide to the legal documents, was written by Lawrence Rosen, David Rudin, Stephan Wenger, and Michael Einschlag. The authors wish to acknowledge the contributions by many representative of software companies and non-profit foundations during the drafting of the CLA and OWFa 1.0 agreements, and in particular to Simon Phipps, Luis Villa and Daniel Mcloughlin for their helpful suggestions during the drafting of this FAQ. The views expressed herein are solely those of the authors. In order to encourage others to contribute to the interpretive literature about the OWF agreements, this document is licensedCC-by.

© Copyright 2011 Open Web Foundation.

TABLE OF CONTENTS

1. What is the purpose of the OWFa and the CLA version 1.0?

2. Does a contributor have to sign both the CLA and the OWFa?

3. What is the scope of the copyright license in the CLA?

4. What is the scope of the copyright license in the OWFa?

5. Are there any express conditions for the copyright license?

6. Why do the OWFa and CLA contain a patent non-assert promise?

7. What is the scope of the patent promise in the CLA?

8. What is the scope of the patent promise in the OWFa?

9. What is the purpose of the "describes...in detail" language in the Granted Claims definition?

10. Are Granted Claims to be found on a specific list of patent claims that is available for review?

11. Do Granted Claims include what some others call Necessary Claims?

12. How much detail is enough to encumber a patent claim?

13. How can we recognize functionality that is "merely referenced"?

14. Are there any un-Permitted Uses of the Granted Claims?

15. Why is there a limited opt-out for a Contribution in the CLA?

16. Do contributors and signers retain defensive uses of their Granted Claims?

17. What is the purpose of the No Other Rights provision?

18. What is the effect of the Representations, Warranties and Disclaimers provision?

19. Should I sign as an individual or a Bound Entity?

1. What is the purpose of the OWFa and the CLA version 1.0?

Both the Open Web Foundation Final Specification Agreement (OWFa 1.0) and the OWF Contributor License Agreement (CLA 1.0) apply to Specifications that are intended to be implemented and used in computer technology. (Words that are capitalized in this FAQ are defined terms in the OWFa and CLA.)

CLA (Contributor License Agreement): By signing a CLA, an individual or a Bound Entity licenses certain of its copyrights and promises not to assert certain of its patent claims so that others around the world freely can include the signer’s Contributions – and elaborate on them – in the community effort to write and implement a Specification containing those Contributions. A single signed CLA covers all future Contributions by that individual signer or Bound Entity to that Specification.

OWFa (Final Specification License Agreement): In contrast to the CLA in which the signer’s grant is limited to the signer’s Contributions, the OWFa grants are directed to the entire Specification. By signing an OWFa, an individual or a Bound Entity licenses certain of its copyrights and promises not to assert certain of its patent claims so that others can freely implement the entire final Specification as it is published, regardless of who contributed what portions.

The most recent versions of these documents are at:

OWF CLA 1.0 (Patent & Copyright)

OWFa 1.0 (Patent & Copyright)

There is also a copyright-only CLA and a patent-only OWFa that are not specifically described in this FAQ, but their terms and conditions are drawn from the above two agreements.

OWF CLA 1.0 (Copyright only)

OWFa 1.0 (Patent only)   

These agreements allow contributors and supporters who helped to create and who formally support a Specification to pledge not to enforce certain of their patents and copyrights against each other (or against future implementers and users) for implementations of that Specification.

Unfortunately, neither the CLA nor the OWFa can protect a Specification or its implementers and users against third party patent holders who refuse to sign the OWFa, but the defensive termination provisions in these agreements may help deter such litigation.

2. Does a contributor have to sign both the CLA and the OWFa?

An individual or a Bound Entity should sign the CLA at the time of its first Contribution, and then sign the OWFa when the Specification is ready to be published. The OWFa and the CLA indicate a signer’s voluntary support for the development and publication of a functional Specification by its own active community.

The CLA formalizes the copyright licenses and patent promises relating to a signer’s Contributions for a Specification at the time of its Contributions. Once a final Specification is ready to be published, contributors and supporters of the Specification will be asked to sign an OWFa to formalize their copyright licenses and patent promises to the entire Specification.

3. What is the scope of the copyright license in the CLA?

When a contributor signs the CLA and then makes a Contribution, the contributor irrevocably (except for defensive purposes) authorizes whatever copyrightable content in the Contribution that it owns or controls to be copied, modified, and distributed as part of the Specification. The CLA expressly allows anyone to create derivative works and to enhance Contributions – to the full extent of the contributor’s copyright interest in that Contribution.

This copyright grant is intended to be compatible with all open source and proprietary software licensing models.

4. What is the scope of the copyright license in the OWFa?

The OWFa also contains an irrevocable copyright license like the one in the CLA, this time for any copyrightable content that the individual signer or Bound Entity owns or controls in the entire Specification, regardless of who made which Contribution.

5. Are there any express conditions for the copyright license?

Both the CLA and the OWFa contain an attribution requirement. Copies or derivative works of the Specification must acknowledge the Specification.

6. Why do the OWFa and CLA contain a patent non-assert promise?

Both the OWFa and CLA contain an explicit non-assert promise relating to the Permitted Uses of a set of Granted Claims. A promise by a signer (individual or a Bound Entity) not to assert its patents (i.e., its Granted Claims) is functionally equivalent to a personal patent license to those Granted Claims from that signer.

The patent non-assert promises in the OWFa and CLA are personal between the signer and anyone who accepts the promises by making Permitted Uses of the Specification. In addition, the OWFa and the CLA promise that the individual signer or Bound Entity will pass its promises and obligations on to its successors in interest even in the event of its bankruptcy.

For any implementer or user who prefers a reasonable and non-discriminatory license at zero-price rather than a non-assert, both the CLA and OWFa promise that as an alternative.

7. What is the scope of the patent promise in the CLA?

When an individual or Bound Entity signs the CLA, that signer promises not to assert any of its Granted Claims for any Permitted Uses. In the CLA, Granted Claims are any patent claims that are infringed by a Permitted Use, except those patent claims that would be infringed by an implementation of the Specification if the Contribution to that Specification were removed.

Stated another way: The signer’s Granted Claims are limited to those that would not be infringed but for the signer’s Contribution.

That exception reflects the typical development track of light-weight Specifications for which there may be no clear, unambiguous scoping plan approved in advance. Thus the CLA allows a signer to avoid patent promises forced solely by the Contributions of others until the individual or Bound Entity is ready to sign the OWFa.

8. What is the scope of the patent promise in the OWFa?

In the OWFa, the signer makes a patent commitment to the entire Specification, regardless of who made which Contribution. There is no exception relating to specific Contributions.

The intent of this difference between the CLA and the OWFa is to encourage patent owners to make Contributions under the CLA, and to allow them to wait until a final Specification is ready to be published before they sign an OWFa promising a patent non-assert covering the entire Specification. A patent owner can read the entire Specification at the time of signing the OWFa to confirm that it is willing to promise its Granted Claims for the Permitted Uses of that entire Specification.

9. What is the purpose of the "describes...in detail" language in the Granted Claims definition?

The more detailed a Specification, the more patent claims may be implicated by the  definition of Granted Claims in the OWFa/CLA patent non-assert. With more patent  claims implicated, the greater confidence that implementers and users will have that they will not be sued by signers of the OWFa and CLA for infringement for those Permitted Uses. Furthermore, the more detailed a Specification, the more certainty patent owners will have about which Granted Claims they are promising not to assert

The OWFa and CLA 1.0 require enough detail in the Specification to identify Granted Claims, so that there will be fewer arguments later about what patent claims became Granted Claims for royalty-free implementation. The definition of Granted Claims includes this sentence:

"Granted Claims include only those patent claims that are infringed by the implementation of any portions of the Specification where the Specification describes the functionality causing the infringement in detail and does not merely reference the functionality causing the infringement."

This in detail requirement means any functional instructions in a Specification beyond a mere reference, and enough detail that an engineer would be able to implement the functionality that a Granted Claim covers.

The effect of this inclusion rule for Granted Claims in the OWFa and CLA 1.0 depends upon both the amount of detail in the Specification and the limitations of a specific Granted Claim.

10. Are Granted Claims to be found on a specific list of patent claims that is available for review?

No. The identity of Granted Claims for a Specification are often unknown at the time a Specification is written, either because patent owners haven't actually searched for relevant patent claims in their patent portfolios, or because the engineers and business executives writing and approving a Specification don't know what patent claims actually exist in their portfolios. Indeed, some Granted Claims may be drafted and officially approved in their final forms by the Patent Office long after a Specification is written and implemented.

What the OWFa and CLA do is to focus attention on the Specification. That document, written by engineers to guide implementation, can contain as much detail as engineers deem appropriate to provide under the circumstances to promote interoperable implementations.

11. Do Granted Claims include what some others call Necessary Claims?

Traditional standards organizations often define terms such as “Necessary Claims” or “Essential Claims” to identify the set of patent claims that are being made available by license or non-assert for implementers and users of software specifications. The Open Web Foundation prefers the term “Granted Claims” because, as that term is defined in the CLA and OWFa, this can include more claims and is ultimately (perhaps) an easier concept for engineers and users to understand.

Simply put, many traditional standards organizations say that a patent claim is not a Necessary Claim unless implementations of a Specification must necessarily infringe that patent claim for commercial or technical reasons. On the other hand, the Open Web Foundation OWFa and CLA 1.0 agreements declare that a Granted Claim is any patent claim that reads on an implementation of a detailed functional portion of the Specification, regardless of whether there are viable alternatives to that detailed functional portion.

Since Granted Claims depend on the amount of detail the engineers supply in a Specification, and Necessary Claims depend on the uniqueness of a particular functionality, it is hard to predict whether one definition includes more claims than the other in a particular case. The differences between the two definitions, however, can greatly influence the quality of software standards: Engineers cannot affect what is a Necessary Claim, but the more detail that engineers include in a Specification, the more likely that Granted Claims are included. Indeed, by including appropriate detail about what functionality engineers believe to be covered by a Necessary Claim, engineers can ensure that a Necessary Claim will also be a Granted Claim.

The greater detail in the Specification about the technology also gives patent owners greater certainty.

In this way, engineers and business executives who write and approve software Specifications can, by supplying more detail, make it easier to identify the actual Granted Claims that may be infringed. Patent owners can read those Specifications and sign the OWFa and CLA understanding what they are being asked to contribute. The result under the Open Web Foundation model will be more detailed Specifications.

12. How much detail is enough to encumber a patent claim?

Patent infringement can only be determined in the context of a specific patent claim and a specific implementation under normal patent litigation rules. None of that is known when typical software Specifications are written. Assuming that the implementation of a Specification does turn out to infringe, however, the defense is that the patent claim is a Granted Claim. A patent claim is a Granted Claim if it is described in detail and not merely referenced in the Specification.

Everything in the definition of Granted Claim is intended to refer to the Specification, written by engineers, approved by business executives, and describing a specific process or technology that must be implemented in order to conform to the Specification. Writing Specifications is not the same as writing patent applications, and so the standard of proof for whether a patent claim is a Granted Claim is intended to rely on expert engineering opinion about what is sufficient detail to implement the Specification, not what is sufficient detail to support the issuing of a patent. This Specification is in the language of the engineers who wrote it, and so the detail required must be evaluated from the viewpoint of those engineers and not a “person of ordinary skill” as is the case for a patent.

Nor must the Specification describe each limitation of a patent claim in detail.  Engineers are not expected to read or understand patent claim language in order to describe Granted Claims. The test for whether a patent claim is a Granted Claim is whether an engineer implementing the Specification would understand, in light of current technology, what must be done to implement the Specification. Again, this requires a reading of the Specification rather than patent claims.

Rather than evaluating whether a claim in question covers the only viable way the Specification could be implemented, Granted Claims analysis answers whether the Specification described “in detail” the functionality causing the claim to be infringed.

Since engineers control the Specification, engineers should describe in detail any functionality that they suspect may be covered by Granted Claims to which they wish to obtain promises of non-assertion under the OWFa and CLA non-assert.

13. How can we recognize functionality that is "merely referenced"?

As with any legal dispute that may arise about whether a patent claim is a Granted Claims under the patent non-assert in the OWFa and CLA, the term “merely referenced” will depend upon the words of the Specification itself and the state of the technology at the time.

This test is intended to exclude 1) patent claims on underlying technology such as operating systems, disk storage devices, displays, and memory that are components in every software solution and are merely referenced in the current Specification, and 2) references to external specifications (often referred to as “normative references”), which do not subject those external specifications to the OWFa or CLA.

14. Are there any un-Permitted Uses of the Granted Claims?

The definition of Permitted Uses is intentionally stated in the affirmative. Because there are no explicit un-Permitted Uses, this patent non-assert is similar to the affirmative but limited patent grants in most modern open source licenses. As long as implementers are doing Permitted Uses, the non-assert of the CLA or OWFa applies and they can expect that non-assert promise to protect them from patent infringement assertions by individual signers and by Bound Entities (and their Related Entities) over those Permitted Uses.

However implementers should beware: Outside of that zone of patent protection, no promises apply. Implementers are individually responsible for evaluating the patent landscape for other software that does not satisfy the two conditions in the definition of Permitted Uses. These conditions limit the patent protection zone 1) for the purpose of implementing the Specification, and 2) as long as all required portions of the Specification are implemented.

15. Why is there a limited opt-out for a Contribution in the CLA?

The CLA (but not the OWFa) provides a limited 45-day patent opt-out period for Contributions. This allows an individual signer or a Bound Entity to reconsider its Contributions in light of its patent portfolio and of the Specification at that point in time, and for a limited  period of time to retract its promises relating to that Contribution.

16. Do contributors and signers retain defensive uses of their Granted Claims?

Granted Claims are still available for certain defensive purposes. Outside the Permitted Uses of the Specification, the patent owner retains its entire patent rights including its defensive rights. But within the Permitted Uses of the Specification, there are two defensive termination provisions in the OWFa and CLA:

○     Under section 3.1.2.1, if anyone sues an individual signer or a Bound Entity -- or indeed any entity -- for patent infringement for Permitted Uses of the Specification, the Bound Entity’s promises not to assert its Granted Claims and its copyrights automatically terminate as to that litigator.

○     Under section 3.1.2.2, if Related Entities of a Bound Entity (such as affiliates or others under common Control with that Bound Entity) sue for patent infringement for Permitted Uses of the Specification, the Bound Entity itself loses its licenses from other contributors.

Of course, defensive termination only means that the patent and copyright licenses terminate; it doesn’t mean that the patent or copyright owner is actually required to sue anyone for infringement.

The goal is to protect the Specification and its contributors, implementers and users from patent infringement lawsuits.

Note that the OWFa and CLA place restrictions on how an individual signer or Bound Entity transfers ownership of its patents. The patent commitments and defensive rights relating to that Specification are transferred to subsequent owners of the Granted Claims.

17. What is the purpose of the No Other Rights provision?

Implementers and users should not assume that an individual signer or a Bound Entity is giving them more intellectual property rights than are expressly granted by the CLA and OWFa. Read the agreements carefully and ask your own attorney to interpret them in light of your own intellectual property interests.

18. What is the effect of the Representations, Warranties and Disclaimers provision?

The Representation, Warranties and Disclaimers provision states all the reassurances that individual signers or Bound Entities provide by signing the CLA and OWFa. Contributors and supporters are generously giving away their copyright and patent rights for Permitted Uses of the Specification around the world. These grants are AS-IS and WITHOUT WARRANTY, except as explicitly stated in these agreements for specific limited warranties.

Note also that the Non-Circumvention provision immediately above the Representations, Warranties and Disclaimers provision helps ensure that individual signers and Bound Entities are not acting in ways that would threaten the integrity of the Specification for all implementers and users.

This ideal of mutual benefit and reward for intellectual property in software specifications is the driving force for the Open Web Foundation.

19. Should I sign as an individual or a Bound Entity?

If you are executing the OWFa or CLA as a representative of a corporation or any other enterprise or organization, sign the document as a Bound Entity. If you are an individual representing only yourself and contributing only your own personal intellectual property (patents or copyrights), sign the document as an individual.

In some jurisdictions, employees and contractors are assumed to be acting on their employer’s behalf when contributing to industry standards. In those situations, the commitments and promises you make in the OWFa and CLA are also the commitments and promises of your employer. If you are employed by or a contractor to a corporation or any other enterprise or organization, you should consult your own attorney or your employer to determine whether you should sign as a Bound Entity or as an individual.

Specification projects may have their own OWFa and CLA execution procedures. They may also require more identifying information than is captured in the signature block at the bottom of the agreements.