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The Novell-MS Deal: What Happens *After* the 5 Years?
Sunday, December 03 2006 @ 04:21 PM EST

A friend asked me a question yesterday that I couldn't answer, so I did some research to see if I could find one. The question was: In the Novell-Microsoft deal, what happens at the end of the 5-year term? If you as an individual programmer write code, contribute it, and it's covered by the patent agreement during the five years, what happens to it afterward? Is that contributed code still covered? Are you?

If you are a programmer, that is a question you'll want to ask your lawyer, but for the rest of us who may be just wondering, I thought I'd share with you what I've noticed. I have at least found the right places to look.

We already know that the agreement covering so-called "hobbyists" (an offensive and inaccurate term on its face in this context) is of no value to anyone living, because there are no programmers on Planet Earth that I know of who fit the description in that Microsoft's Patent Pledge for Non-Compensated Developers. The pledge only holds for you writing software and then using your own software all by your lonesome, not if you distribute or share it. It doesn't apply to others using your work.

Is there anyone who writes code only for himself who was in danger of being sued by Microsoft before, even if there were a lot of solitary uses for software code? Just forming the question makes me burst out laughing. Why, then, did Novell sign something so ridiculously silly? That promise seems worthless to me. And worse, it's demeaning. Don't get me started on the subject of conceptual malevolence. I think we can guess which company's lawyers wrote that piece of work.

But here, we'll be looking at the programmers who are contributing code to others, specifically to SUSE, both the paid products and the openSUSE project. We may still be able to find a few programmers left who are willing to consider doing that somewhere on the planet. We will start with the "Patent Cooperation Agreement - Microsoft & Novell Interoperability Collaboration", the Covenant with Customers (ha ha). I will mention in passing that the media is misinterpreting or at least overstating Richard Stallman's remarks about the agreement and GPLv2's section 7, in my opinion. There is no "blessing" of this agreement to date that I am aware of, and I think I'd be aware of it if it happened.

So, let's take a look at our question. For clarity, I've stripped out some of the verbiage and highlighted some of the important sections, but your lawyer will be looking at absolutely every word, naturally. But for the rest of us, let's notice the main thrust:

Covenant to Customers

Microsoft,... hereby covenants not to sue Novell’s Customers and Novell’s Subsidiaries’ Customers for infringement under Covered Patents of Microsoft on account of a such Customers’ use of specific copies of a Covered Product as distributed by Novell ... for which Novell has received Revenue ...and (ii) within the scope authorized by Novell...the “received Revenue” requirement above is deemed satisfied with respect to such Customer receiving from Novell a free update to a component of a specific copy of a Covered Product for which Novell has previously received Revenue, but is not satisfied with respect to such Customer receiving a free upgrade or a new version of such specific copy unless Novell has received Revenue for such upgrade or new version.

So I understand that to say that they cover products Novell got paid for and if there are components upgraded free, they are covered. However, if you get a free upgrade for the whole thing or a new version, it is not covered unless Novell gets paid again. Let's continue:

For specific copies of Covered Products distributed by Novel for Revenue before the end of the Term, the foregoing covenant shall apply as to all Covered Patents, including Captured Patents. For specific copies of Covered Products distributed by Novell for Revenue after the end of the Term, the foregoing covenant shall apply only as to Captured Patents.

This sounds rather confusing. The definitions matter. What, then, is a "Captured Patent"? We need to know, because it appears to be the only type that continues to be covered after the five years. Now, reading further, here's what a captured patent is:

“Captured Patents” means Covered Patents entitled, in whole or in part, to an effective filing date on or before January 1, 2001 (i) which a granting party ...during the Term owns or controls, or (ii) under which ... a granting party... during the Term has the ability or right to grant a covenant not to sue...

All right. But what then is a "Covered Patent"?

“Covered Patents” means Patents entitled, in whole or in part, to an effective filing date on or before January 1, 2012, (i) which a granting party ... during the Term owns or controls, or (ii) under which... a granting party... during the Term has the ability or right to grant a release, covenant not to sue or other freedom from suit. Covered Patents do not include Extendible Third Party Patents.

Now, I'm not a lawyer, but I notice that they keep saying "during the Term" and that makes my ears perk up. If I cared deeply, I would have my lawyer ask about that. But what we can get from this is that the only difference I see between the two definitions is that a captured patent doesn't include the wording: "grant a release ...or other freedom from suit" whereas a covered patent could be covered by any of the three. A captured patent, as I read it, then, is only granted a covenant not to sue.

Why does that matter to me? Because we started with a distinction being made, namely that after the term, meaning the five years, only captured patents are covered. I can't tell you why that language is like that, or what it means, because I haven't seen the actual agreement, but it's clear that there are several ways patents at least can be covered. Some of the ways only last for the term, but I gather the promise not to sue continues for the captured patents. How does that play out? More, this time regarding developers:

Also, the foregoing covenant will apply to customers' and developers' use of copies of Covered Products distributed by Novell that are in development (including, without limitation, work in process; trial, alpha, beta and release candidate versions; and other versions of products intended for but not yet generally released for Revenue on a commercial basis), even if Novell does not receive Revenue in connection therewith, provided that such copies are solely provided for development, testing or evaluation purposes and any support thereof, if any, continues for no longer than one-hundred eighty (180) days from distribution. In any case, the covenant granted pursuant to this paragraph shall expire as to such customers and developers One-Hundred Eighty (180) days from distribution to such covered customers and developers.

So I think that is saying that developers are covered while they work on code that isn't released yet, but once it is released by Novell, they'd have to buy it by 180 days if they wanted coverage, because it stops being covered then. If I were a developer, I'd want to ask my lawyer about that, because it sounds to this nonlawyer like the poor doob could write code for Novell and not be able to even safely use it after 180 days, let alone distribute it to others. Clearly this is not a normal GPL atmosphere.

There's another gotcha, from all I can understand of the wording:

Microsoft reserves the right to update (including discontinue) the foregoing covenant pursuant to the terms of the Patent Cooperation Agreement between Novell and Microsoft that was publicly announced on November 2, 2006; however, the covenant will continue as to specific copies of Covered Products distributed by Microsoft for Revenue before the end of the Term.

So, Microsoft can get out of this deal according to the terms of the deal that we are not allowed to see. But if they do change their corporate mind and cancel the promise not to sue, if your product was covered when you bought it, it stays covered if you bought it during the 5 years.

What about the code? Note that what is covered isn't code; it's purchased products. I personally would be very nervous about the code.

The developers have to look to their agreement:

Microsoft hereby covenants not to assert Microsoft Patents against each Individual Contributor ... for Your distribution of Your personally authored original work ... directly to, but only if, and to the extent, (i) Your Original Work becomes part of SUSE Linux, SUSE Linux Enterprise Desktop or SUSE Linux Enterprise Server, and (ii) You ensure that as a result of Your contribution,, and all further recipients of Your Original Work, do not receive any licenses, covenants or any other rights under any Microsoft intellectual property. This pledge is personal to You and does not apply to any use or distribution of Your Original Work by others.

Again, as you can see, it's the product that is covered. You won't get sued, I gather, if your stuff ends up in the paid products listed, but it's not covered anywhere else and neither are you. And then, I think we find our answer:

Microsoft further reserves the right to terminate this pledge and revoke this pledge to You upon the expiration or termination of that certain patent agreement entered into by and between Microsoft and Novell Inc., dated as of November 2, 2006.

Could that be clearer, openSUSE developers? My conclusion is that the only safe assumption is that Microsoft retains an absolute right to terminate and revoke without any contractual restraint. In other words, one must assume that the covenant not to sue is actually a covenant not to sue unless Microsoft wants to sue. It's up to you whether you find such language reassuring. Why, one might ask, would such revocation language be necessary? And if you are a business, are you really any safer using Novell's SUSE than any other Linux distro, with that clause in the agreement, subject to terms that you don't even know?

Naturally, one would be prudent to also consider the source of the promise.

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