Questions for Legal Team - UrbanOS-Examples/TechnicalWorkingGroup GitHub Wiki
Q&A from 1/9/2019 with Mehmet Munur and David Landsbergen TWG attendees: Tammy Chellis, Bill Shwanitz, Phil Norman, Brian King
Q: The SmartColumbusOS Technical Working Group has created Criteria Based License Evaluation including TWG preferences. Does this evaluation cover terms and conditions related to the City and other government agencies?
A: You have done a somewhat thorough task of comparing the licenses you are looking at. From a legal perspective, the main things are the legal implications and business decisions. The selection of what license to choose is mainly a business decision driven by your needs. The criteria looks good and seems to be leading you down the path of Apache 2.0 but what do you do about trademarks needs to be worked out.
Q: The Apache 2.0 license is a good candidate based on our evaluation as it is a permissive license that includes Patent Grant. Is this license a good match for Smart Columbus legally?
A: Covered by first question.
Q: Do you have any insight on trademark grants? Would we allow someone to use the SmartColumbus logo to represent the work? (as opposed to allowing 'powered by SmartColumbus' along with the logo). If we did, that would rule out the Apache 2.0 license.
A: This is a business decision that SmartColumbus needs to make. How does it want to treat its trademarks. Are those trademarks registered? Does the city of Columbus itself have trademarks on SmartColumbus? If so are you dealing with existing trademarks not in an open source space and if so are there conflicts with existing trademarks? And what does the city think about it and what does the city allow? Charles' input as attorney from the city is needed to expand upon this. Go ahead and look at the Apache trademark policy as it already includes 'powered by' concepts and could serve as a good template for what Smart Columbus wants to do. Can additional trademark agreements be made outside of section 6 of the Apache 2.0 license? (probably). The main thing is make sure that the trademark policy and the license compliment each other. Apache is a good starting point but again it is all driven by the business need. A trademark is separate and distinct from the software. Similarly, as an aside there could be a need to license personal data and anonymous data as well as bookmarks. Focus on the software itself first and then the trademark.
Q:Does MIT's lack of restrictions implicitly cover a patent grant? See article. If not, would a CLA that requires the contributor to provide a patent grant be sufficient to cover the issue?
A: This question was skipped as the tendency was to focus on Apache 2.0 in these discussions. These are still good questions to keep in our pocket.
Q: A Contributor Licensed Agreement (CLA) makes sure the contributor has the right to submit the code and that the contribution is compatible with the license. See the Apache 2.0 Individual CLA and the Apache 20 Corporate CLA. Do these CLAs meet the IP and legal needs for Smart Columbus? If not, what changes are required?
A: Two main issues about CLAs. What does the grant from USDOT say specifically about the ability to open source something? (it requires it) What does it say about employees and contractors. What does the City say about employees and contractors? Are there restrictions about their ability to sign a CLA and are there restrictions on Smart Columbus to sign the CLA? This is an issue for Charles.
Q: Are the works created for this project subject to the Bayh-Dole Act or equivalent? If so what is impact, e.g., on patents? Reference Issue 3 for additional context.
A: We should consider getting advice from a patent attorney on this and other patent issues. What does the USDOT grant say? David's guess was that the Bayh-Dole Act relates to researchers and not necessarily cities but would require further research to answer.
Q: The Project Management Plan for the Smart Columbus Demonstration Program dated November 2017 states "Data rights under the Award shall be in accordance with 2 CFR 200.315, Intangible property". What, if any, is the impact on open source licensing? This originates from Issue 3
A: Looked at references in the project plan and USDOT grant that confirm a preference for open source tools which may minimize the Bayh-Dole issue.
Next steps/topics:
- Set up another meeting with Charles with Columbus attorney's office.
- Smart Columbus will need to have its own policies on open source and how to guide its own employees on how to do it so all employees and contractors are on board on how to make contributions.
- Additional source funding and what their policies are on open source and how it may impact licensing.
- What kind of timeline is required to answer these questions in order to implement the open source project? (requires Charles)
Additional questions that are deferred for now
- Related to the recommendations in Core Team Membership are we allowed to take action against abusive community members? These actions would be similar to a strikes policy ( yet to be determined ) where we eventually ban someone. This ban would constitute the individual not being welcome at events, being blocked to comment on pull requests and issues etc.
- If we augment CLAs or roll our own license would the legal team be able to ascertain the impact on compatibility with other licenses? High compatibility, especially with GPL 3.0, is desirable as open source communities are distributed.