Subject: RE: Why sublicensing is important

From: "Hallam-Baker, Phillip" <[email-masked]>
Date: Sat, 28 Aug 2004 20:38:47 -0700

> The license states that it can be revoked if the licensee if found in 
> material breach of the terms. Microsoft's lawyers get to 
> determine that 

No they don't, the phrase material breach has a very narrow legal
definition, it means that the licensee has to fail to keep an
undertaking made. Since the only undertaking made is not to sue
microsoft for infringement of a Sender ID patent there is absolutely 
no ambiguity here.

> and the only way to challenge and resolve that if it happens, 
> would be through the courts. 

The only way to breach the terms of the license is to sue Microsoft
which means that you are already in court.

---

From: Yakov Shafranovich <[email-masked]>
Date: Sun, 29 Aug 2004 00:00:49 -0400

> microsoft for infringement of a Sender ID patent there is absolutely 

I believe that you are referring to section 2.4 of the license:

----snip---
"2.4 Defensive Suspension.

If Microsoft or any of its Affiliates, or You or any of Your Affiliates, 
are first sued for patent infringement (“the sued party”) by the other 
Party hereto or any of its Affiliates, on account of the manufacture, 
use, sale, offer for sale, importation or other disposition or promotion 
of the sued party’s Licensed Implementation or Microsoft’s Sender ID 
Implementation, as applicable, then the sued party may terminate all 
license grants and any other rights provided under this Agreement to 
such entity and such entity’s Affiliates. The foregoing shall not apply 
if the patent infringement suit that would otherwise trigger such clause 
is solely based on the sued party’s Licensed Implementation or 
Microsoft’s Sender ID Implementation (as defined in Section 2.3), as 
applicable, not complying with the scope of the license grants set forth 
in this Agreement. "
----snip---

I was refering to section 3 of the license:
----snip---
"Microsoft may terminate this Agreement (including all license grants) 
earlier if You materially breach this Agreement, and You fail to cure 
the breach within thirty (30) days after You receive notice of the 
breach from Microsoft."
----snip---

Yakov

---

From: "Anne P. Mitchell, Esq." <[email-masked]>
Date: Sun, 29 Aug 2004 03:36:45 -0700

> undertaking made.

This is inaccurate.  In practice it means simply that the alledged 
breacher has failed to live up to their part of the bargain, and there 
are any number of ways that they could do that, including simply 
forgetting to include  in both the source code and with a license 
distribution the Microsoft intellectual property rights language 
dictated in ss 2.2 of the license.

> which means that you are already in court.

That is really really incorrect, although I can understand why one 
would come to that conclusion.  One can be in breach for any number of 
reasons - always at least as many, and often more, as there are 
substantive clauses in the contract/license/agreement.

Anne