[OSM-legal-talk] Q&A with a lawyer

[Matt Amos]

On Tue, May 12, 2009 at 8:34 AM, Peter Miller <peter.miller at itoworld.com> wrote:
> On 12 May 2009, at 04:13, Matt Amos wrote:
>> On Tue, May 12, 2009 at 3:17 AM, Peter Miller <peter.miller at itoworld.com
>> > wrote:
>> Clark agreed with your lawyer that having a choice of law is the
>> normal "done" thing in contracts, and suggested that we would want to
>> consider either US or UK law. apparently this choice of law doesn't
>> have an effect on the IP rights and is mainly for interpreting the
>> contractual parts of the license.
>>
>> in the situation you describe, it is my understanding that we would
>> have a better chance prosecuting the final UK company under IP laws
>> (e.g: copyright, database rights) on the original database. given the
>> difference in IP laws in vietnam or china (i'm guessing) it would be
>> easier to go after them based on the contractual parts of the license.
>
> The governing law issue is clearly an either/or. We either use the un-
> ported version, or a nominated jurisdiction, we can't do anything in
> the middle! Jordan is keen on un-ported one, our lawyer strongly
> advocates a nominated jurisdiction and so does does Clark. Clearly
> this is something we need to make a decision about.

there is no "middle" - Clark's point was that the nominated
jurisdiction is mainly used for interpreting contractual parts of the
license. the IP rights in the database would probably be judged under
local law, regardless of any nominated choice of law in the license.

in your example the reason for going after chinese/vietnamese
infringers with contract law is that (i'm supposing) their IP rights
are different and we would have a chance at using UK contractual law
in the foreign court.

for this reason it would be helpful to bring cases against infringers
in the UK, since this is the base for the OSMF and where the primary
DB is, so we would have the full IP protection. however, as Clark
pointed out, if the infringer has no assets in the EU, then it would
be very hard to enforce the court's decision.

> However.... if the OSMF can change the license and given that it is a
> viral license then surely anyone else can also change the licensing of
> any derived database? Our lawyer mentions that the OSMF could 'sell it
> of commercial terms' or make it available to a single person. If this
> is true then why can't anyone else do the same. I really don't
> understand the legal mechanism being used for this and need to look at
> it more closely.

i think frederik is right on this - the Licensor is always OSMF and if
OSMF is bound by the contributor agreement then OSMF can't release the
database under any license other than (insert mechanism for choosing
licenses here), which is agreed to by all contributors.

> Ok, so we seem to be heading for a position where the OSMF is the
> critical aggregator and publisher of the main DB and has significant
> powers to make changes to terms etc. If this is the case then the
> article of association and all sorts of other things need to be
> improved to avoid the risk of 'carpet baggers' (see http://en.wikipedia.org/wiki/Carpet_baggers#United_Kingdom
>  for details of how mutual building societies got ripped apart for
> cash). OSM is already valuable and will only get more valuable and
> there would be considerable gain from 'privatising' it and care is
> needed at this point to avoid it.

indeed, but this is an issue for you and other interested persons to
raise with OSMF directly, i don't think its within the remit of the
License Working Group.

> It may well be reasonably to allow the OSMF to discontinue hosting the
> database, however I believe that it should in that situation be
> required to make the whole database available free of charge to
> someone/anyone who will host it.  What we must not allow is for the
> OSMF to be able to morph into a for-profit company where the terms of
> service allow it to profit from the brand name, the full database, the
> regular contributors and a dominant market position. This has happened
> before with open source projects and is not pretty or for the wider
> benefit. Our lawyer has already pointed out some areas of weakness in
> the articles of association for the foundation. I will put that review
> on the OSM wiki soon.

wouldn't the contribution agreement achieve exactly what you want? the
database wouldn't be released under anything but the ODbL or anything
else chosen by the (insert mechanism here). i'm guessing its easily
possible for OSMF to enter into a pledge, as trolltech did, allowing
the data to be freed if OSMF are no longer willing or able to continue
themselves.

> However... lets try to keen the ODbL/ODCL issues clearly distinct from
> our own issues (contributor agreements, articles of association etc)
> which we as the OSM project need to resolve. Possibly the OSM related
> issues should have a separate set of wiki pages in the category
> 'foundation' to make the distinction very clear indeed.

i couldn't agree more.

cheers,

matt