18 May 2009

Symbian Foundation Legal Policy

Notwithstanding recent inroads made by Apple with respect to the iPhone Mac OS-based operating system, the Symbian operating system is the most successful operating system in use today for high-end smart phones, largely thanks to the efforts of Nokia. The Symbian Foundation, a non-profit consortium of various companies in the wireless industry, is charged with charting the future course of the open source Symbian Foundation Platform, based on Symbian OS. The Foundation has recently released legal documents comprising the framework for inbound source code contributions to the platform, as well as outbound licensed rights enjoyed by members and non-members alike. The following constitutes a high level summary of the Symbian Foundation licensing structure.

Inbound Contributions

A. Foundation Members.
(i) each member grants to the Foundation
- for each “Contribution”, a
- royalty-free, perpetual, worldwide, non-exclusive
- copyright and trade secrets license
- to use, distribute, copy and make derivative works of such Contributions
- as part of the Foundation Platform under the Foundation Member License.
(ii) “Contribution” = any work (including source, binary, and documentation) “originally submitted via any form of electronic or other written communication to the Foundation for inclusion in, or documentation of, the Foundation Platform”.
(iii) no patent licenses are granted; the Patent Policy exclusively controls (see below).
(iv) each member permits the Foundation to license the Contribution under the Foundation Public License, provided that the Foundation must name the contributing Member a distributor under the Foundation Public License.
(v) the Foundation agrees to treat as confidential Contributions in source code form.
(vi) each Member undertakes obligations to ensure that no third party software licensed under inconsistent terms has been introduced into any Contribution, including the obligation to use commercially reasonable efforts to procure substitute licenses from the third party or provide a replacement or workaround, and “otherwise offer the Foundation commercially reasonable assistance in resolving the issue.” This could be interpreted to require an indemnification or defense of the third party claim. However, patents would most likely not be an issue under this clause, as it appears to be limited to the situation in which third party code has been incorporated without authorization.

B. Foundation Non-Members.
(i) each non--member grants to the Foundation
- for each “Contribution” (defined identically to that above), a
- royalty-free, perpetual, worldwide, non-exclusive
- copyright and trade secrets license
- to use, distribute, copy and make derivative works of such Contributions
- as part of the Foundation Platform.
(ii) each non-member grants to the Foundation and recipients of Foundation’s distributions a
- royalty-free, perpetual, worldwide, non-exclusive license
- to make, have made, use, sell, offer to sell, export, import and otherwise dispose of the Foundation Platform
- under such non-member’s patents that are necessarily infringed by the Contributions as such and
- in combination with the Foundation Platform and any wireless devices.

C. Open Source Contributions.
The membership rules specify that once the platform is released under a public open source license approved by the Foundation’s board (currently, EPL) then future contributions will be governed by that license and not either of the two contribution agreements above.

Outbound Contributions

A. Symbian Foundation License (aka "Foundation Member License") (SFL)
(i) the Foundation grants to each member
- for each Software Component and Modification (definitions below)
- a royalty free, perpetual, worldwide, non-exclusive
- copyright and trade secrets license
- to use copy, and perform Software Components and Modifications
- to distribute to other members same in binary and source code forms, under the same terms as the SFL, and
- to distribute generally solely in binary code form in connection with the products or services of the member and only as part of the platform.
(ii) no patent licenses granted; the Patent Policy controls (see below)
(iii) “Software Components” = “software source code released and licensed by the Foundation or any member under this Agreement”.
(iv) “Modifications” = “any work of authorship being additions and/or changes to source code files of the Software Components”
(v) source code of Software Components must be kept confidential
(vi) mandatory delivery of Modifications to the Foundation (not clear whether Modifications need to be in binary or source code forms)
(vii) the member must indemnify, hold harmless and defend the Foundation from any claims arising from exploitation of the Software Components and Modifications

B. Foundation Public License
(i) currently this is designated as Eclipse Public License v. 1.0 (EPL)
(ii) weak copyleft and business friendly license
(iii) “contributions” = “additions or changes”
(iv) contributions must be open-sourced under EPL
(v) excludes additions which are (a) separate modules licensed separately and (b) not derivative works
(vi) binary forms may be distributed under terms of choice, provided that the source code of the Program is made available under the terms of EPL
(vii) contains an express patent license for Contributions, alone or in combination w/Program
(viii) “patent peace” clause: initiating patent litigation terminates all rights as of the time of bringing patent claim
(ix) commercial distributors required to indemnify and hold harmless other contributors for acts/omissions arising from commercialization, excluding IP infringement claims
(x) NY and US law controls; no jury trial; 1 year limitations period
(xi) the interaction or relationship between the Symbian Foundation License, the Member Contributor Agreement, and the Eclipse license is unclear; ie, is it possible for a member to provide contributions for, and to license externally, the platform under the terms of Eclipse?

The Symbian Foundation License will eventually be replaced, according to the Foundation's legal policy overview summary, with Eclipse, but older versions of the platform will continue to be licensed under SFL. It’s not clear whether the transition to the EPL would cover everything that had been licensed under SFL.

Also, the licenses above are not actually licenses covering the Foundation Platform. In other words, the licenses do not actually grant any rights to the platform. Rather, rights are granted with respect to components of software (as the Foundation may start with and as members contribute) that the Foundation agrees to include in the platform. Presumably the Foundation will, as expected, license everything that had always been included in Symbian OS, but there’s actually no guarantee that this will be the case. Noteworthy in this respect is that the Symbian Foundation is a non-profit entity separate and distinct from Symbian Software Limited, a division of Nokia. As the legal overview explains, “Symbian Software Limited retains exclusive responsibility for all licensing and marketing activities related to the proprietary operating system named ‘Symbian OS’”.

Patent Policy

A. Applies to and from each member.

B. Each member agrees to license “Platform Patents” (definition below) to the other members under fair, reasonable and non-discriminatory (FRAND) terms, provided that such terms
- permit each member to make, use, sell, offer to sell, import, export and otherwise dispose of, or to practice any process or method embodied in, any official Symbian release
- provided each such member is also a licensee of such Contribution
- for use in devices designed by a member or sold by or on behalf of a member.

C. Each member agrees to license “Contribution Patents” (definition below) to the other members a personal, royalty-free, worldwide, non-exclusive license to make, use, sell, offer to sell, import, export and otherwise dispose of, or to practice any process or method embodied in, any Contribution solely as part of the Symbian platform for a member-branded/distributed device.

D. Each member grants to the Foundation and other members a personal, royalty-free, worldwide, non-exclusive license under each Platform Patent the right to use any Symbian release or pre-release and any part thereof for research and development purposes.

E. “Platform Patents” = patents owned or licensable by a member necessarily infringed by the manufacture, use, sale, etc of any Symbian platform release issued during the member’s membership, alone or in combination with a member-branded/distributed device.

F. “Contribution Patents” = patents owned or licensable by a member necessarily infringed by the manufacture, use, sale, etc of any Contribution included in any Symbian platform release, alone or in combination with a member-branded/ distributed device.

G. Each patent license is subject to reciprocal patent licenses from/to each other member.

H. The licenses for Platform Patents and Contribution Patents described in 3.B and 3.C above are left to the parties’ negotiation in good faith.

I. Securing injunctions to remedy patent infringements by a member is not possible under this policy.

In summary, if the member owns any patents that happen to read on any part of the Foundation platform, now or in the future (even after termination of the relationship), the member is required to license those patents to other Foundation members under FRAND terms; ie, the member is permitted to impose commercial terms for the licensing of such patents, provided such terms are fair, reasonable and non-discriminatory. For Contributions the member makes to the Foundation, the member is obligated to license patents that read on any aspect of such Contributions under royalty-free, perpetual terms (but there is still the possibility of requiring a written agreement with the members who seek to use such Contributions).

Patent owners have reason to be a bit wary of this policy. If any of the members commit infringement of a patent owned by a member, the latter will be confronted with arguments based on vaguely worded clauses that could serve to unduly benefit patent infringers. For example, clause 8 states:


This could be construed to preclude the availability of damages for patent infringements. When I pointed this out to Foundation counsel, counsel dismissed it as a radical interpretation, but I believe the clause as written gives unnecessary and unintended ammunition to a party infringing a member’s patents.

I found the patent policy to be unnecessarily complex, confusing in places, and overall, somewhat hostile to patent owners. For potential members with an extensive patent portfolio, this should be kept in mind. On the other hand, the policy certainly affords a high level of patent peace among the members.

Trademark Policy

The trademark policy permits members to use and display the official Foundation logo in connection with the marketing and distribution of Foundation platform implementation releases that satisfy Foundation testing requirements. Use of the logo is optional.

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