Why I Believe IBM is Free to Sue The Pants Off TurboHercules - Updated 12Xs

By Pamela Jones

April 08 2010

It seems Groklaw will have to open a new category, answering Florian Mueller FUD [ http://www.groklaw.net/article.php?story=20091021164738392 ]. As you know he recently claimed [ http://fosspatents.blogspot.com/2010/04/ibm-breaks-taboo-and-betrays-its.html ] that IBM had violated its public pledge not to sue Linux for patent infringement. I think he's mistaken. IBM, when it announced the patent pledge [ http://news.zdnet.com/2100-3513_22-137630.html ], specifically reserved the right to defend itself from attack:
"IBM has no intention of asserting its patent portfolio against the Linux kernel, unless of course we are forced to defend ourselves," said Nick Donofrio, senior vice president for technology and manufacturing, drawing applause in a speech at the LinuxWorld Conference and Expo.
And in the TurboHercules story, who is suing whom? It's not IBM, folks. The complaint against IBM [ http://www.businesswire.com/portal/site/home/permalink/?ndmViewId=news_view&newsId=20100323006004&newsLang=en ] was filed with the EU Commission by TurboHercules. At that exact moment, did they not take themselves out from under the patent pledge's safety umbrella?

So be it.

Meanwhile, IBM's Dan Frye has reiterated [ http://www.linux.com/news/featured-blogs/158-jim-zemlin/299092-ibms-open-source-patent-pledge ] its patent pledge in an email published on the Linux Foundation Executive Director Jim Zemlin's blog. IBM hasn't sued anyone. TurboHercules is filing complaints, to which IBM is responding.

Here's the text:

Dear Jim:

There’s been recent interest in IBM’s “500 patent” pledge made in 2005 and how it applies today. It’s always important to get the facts, and the words of the pledge itself [ http://www.ibm.com/ibm/licensing/patents/pledgedpatents.pdf ] are the facts we need.

“The pledge will benefit any Open Source Software. Open Source Software is any computer software program whose source code is published and available for inspection and use by anyone, and is made available under a license agreement that permits recipients to copy, modify and distribute the program’s source code without payment of fees or royalties. All licenses certified by opensource.org and listed on their website as of 01/11/2005 are Open Source Software licenses for the purpose of this pledge.

“IBM hereby commits not to assert any of the 500 U.S. patents listed below, as well as all counterparts of these patents issued in other countries, against the development, use or distribution of Open Source Software.”

IBM stands by this 2005 Non-Assertion Pledge today as strongly as it did then. IBM will not sue for the infringement of any of those 500 patents by any Open Source Software.


Daniel Frye
VP, Open Systems Development
IBM Linux Technology Center -

Personally, I think they absolutely are free from the pledge with respect to TurboHercules.

TurboHercules jumped on Florian's claims, of course, as did the media, such as the Wall St. Journal [ http://blogs.wsj.com/brussels/2010/04/06/an-open-question-about-a-pledge/ ]:

Roger Bowler, TurboHercules’s co-founder, says that neither TurboHercules’s offerings, nor the Hercules emulator, infringes IBM’s intellectual property. Regardless, he calls IBM’s claims a violation of the 2005 pledge. “The pledge goes on to define Open Source Software as software certified by the Open Source Initiative (OSI). The Hercules emulator is an OSI-certified open source project,” he says in a statement. “Thus, IBM’s patent threats are indeed a violation of its 2005 pledge. That IBM is now claiming that IBM alone gets to decide what open source efforts can and cannot benefit from that pledge speaks volumes about its underlying motivations.“
Puh lease.

That link also explains that TurboHercules is the company, and that it offers support and services associated with Hercules, the software. IBM now says, as quoted by ZDNet's Tom Espiner [ http://www.zdnet.co.uk/news/server-os/2010/04/07/ibm-denies-breaking-open-source-pledge-40088553/ ], that it questions if the patent pledge covers TurboHercules in any case:

"In 2005, when IBM announced open access to 500 patents that we own, we said the pledge is applicable to qualified open-source individuals or companies," said an IBM spokesperson. "We have serious questions about whether TurboHercules qualifies. TurboHercules is a member of organisations founded and funded by IBM competitors such as Microsoft to attack the mainframe. We have doubts about TurboHercules' motivations."
For sure. And now that they've launched a legal attack against IBM, what stands in IBM's way? I'm not a lawyer, but I can read.

You know what I think the real problem is here? OSI has a list of licenses that no one should have on any approved list, in my view, including some from Microsoft, and I don't think they plan to fix that any time soon. But they should. I said a long time ago that I expected Microsoft and/or its proxies to come up with some devilishly clever way to take advantage of that list and specifically the IBM patent pledge. When IBM first announced the patent pledge, I mentioned that worry, but IBM paid no attention to li'l ole me.

Now the chickens are flying home to try to roost, fanned on by the Microsoft block of evildoers, as I like to call them, Shadow-like [ http://hubpages.com/hub/The-Shadow-Knows ]. Who knows what evil lurks in the hearts of men. But here's what I do believe: Microsoft really does want to damage Linux, folks. Did you think if you were nice to them, they'd reciprocate? Hahahahaha. Suckahs.

TurboHercules is listed as being under the Q Public License [ http://www.hercules-390.org/herclic.html ] version 1.0, which is on the OSI list [ http://www.opensource.org/licenses/alphabetical ] of approved Open Source licenses, although renamed the Qt Public License. For context, here's [ http://www.gnu.org/licenses/license-list.html ] what the FSF says is the problem with the Q Public License:

This is a non-copyleft free software license which is incompatible with the GNU GPL. It also causes major practical inconvenience, because modified sources can only be distributed as patches.

We recommend that you avoid using the QPL for anything that you write, and use QPL-covered software packages only when absolutely necessary. However, this avoidance no longer applies to Qt itself, since Qt is now also released under the GNU GPL.

Since the QPL is incompatible with the GNU GPL, you cannot take a GPL-covered program and QPL-covered program and link them together, no matter how.

However, if you have written a program that uses QPL-covered library (called FOO), and you want to release your program under the GNU GPL, you can easily do that. You can resolve the conflict for your program by adding a notice like this to it:

As a special exception, you have permission to link this program with the FOO library and distribute executables, as long as you follow the requirements of the GNU GPL in regard to all of the software in the executable aside from FOO.
You can do this, legally, if you are the copyright holder for the program. Add it in the source files, after the notice that says the program is covered by the GNU GPL.
So the TurboHercules project chose a license that is incompatible with the GPL. A coincidence? See what I mean about OSI? I reiterate that the OSI list needs to be pruned a bit to exclude some of the licenses on their approved list. Take care of the toy train problem while you are at it, will you?

But in any case, even using this list and going strictly by IBM's public pledge, IBM is free to defend itself.

Here's [ http://www.turbohercules.com/news/permalink/a-statement-from-roger-bowler-about-hercules-and-ibm/ ] what TurboHercules says they want:

We are not asking that IBM be subjected to punishing fines or anything like that. We simply want IBM to agree to allow legitimate paying customers of its z/OS mainframe operating system to deploy that software on the hardware platforms of their choice – including, should they so choose, on low-cost servers using Intel or AMD microprocessors and Hercules.
Shades of Psystar. That's "all" they wanted from Apple, remember?

Needless to say, Groklaw will try to cover this case going forward.

Update: The Register's Timothy Prickett Morgan picked up on the story [ http://www.theregister.co.uk/2009/09/25/turbohercules_goes_commercial/ ] behind this story last fall:

TurboHercules is co-headquartered in Paris, France, where Bowler moved after he left the United Kingdom, and in Seattle, Washington, in close proximity to the one big software company that has in the past taken a shining to anything that gave Big Blue some grief, particularly with mainframes. (Yes, we mean Microsoft).

Update 2: The letter is here [ http://www.zoobab.com/ibm-turbohercules-patent-threat-letter ], and I'll show it to you as text. As you will see the list of patents was illustrative, because evidently there had been a conversation earlier in which TurboHercules had expressed lack of knowledge of any possible infringement. It's not a threat letter. Trust me, this is not how a threat letter looks:


March 11, 2010

Mr. Roger Bowler
TurboHercules SAS

Re: TurboHercules

Dear Mr. Bowler

We have received and considered your letter of November 18, 2009. The comments you provide do not lead IBM to reconsider IBM's position as set out in my letter of November 4, 2009. Your suggestion that TurboHercules was unaware that IBM has intellectual property rights in this area is surprising. IBM has spent many years and many billions of dollars developing its z-architecture and technology, and is widely known to have many intellectual property rights in this area. IBM's litigation against PSI for, among other things, patent infringement and trade secret misappropriation is a matter of public record, and well known in the industry. According to your own statements, your product emulates significant portions of IBM's proprietary instruction set architecture and IBM has many patents that would, therefore, be infringed. For illustration, I enclose with this letter a non-exhaustive list of IBM U.S. patents that protect innovative elements of IBM's mainframe architecture and that IBM believes will be infringed by an emulator covering those elements. For your information, the enclosed list also includes a non-exhaustive list of relevant IBM U.S. published patent applications. Apart from concerns about unauthorized use of proprietary IBM information by one or more TurboHercules contributors, IBM therefore has substantial concerns about infringement of patented IBM technology. In these circumstances, I trust you will understand that IBM cannot agree to your request to reconsider its position.


Mark S. Anzani VP and Chief Technology Officer, IBM System z

So, why doesn't Florian and the folks he is lobbying for release the earlier letter from Bowler, in which he apparently expressed that he was unaware that "IBM has intellectual property rights in this area"? This letter, then is addressing that expression and responding to it with incredulity. The list is to show Bowler that, indeed, IBM has rights that it believes TurboHercules would infringe if it goes forward, and I see that IBM is saying that the infringement is not just patents. That's how I understand this sentence: "Apart from concerns about unauthorized use of proprietary IBM information by one or more TurboHercules contributors, IBM therefore has substantial concerns about infringement of patented IBM technology." So patents are not the whole story, from IBM's point of view. The letter, then, was a refusal letter, letting Bowler know that IBM's answer to what was evidently a request that IBM alter its position was no, it would not. And it's essentially implying that Bowler couldn't really be unaware of IBM's rights, that IBM simply did not believe they didn't know, but if they didn't, here's a list of patents, and by the way that is not the only issue IBM had with their plan, which IBM was not agreeable to. Now go back and read again what Florian wrote. Seriously.

Update 3: Jay Maynard, Project manager for the Hercules open-source emulator for IBM mainframe systems, has now taken a membership in Groklaw and has posted [ http://www.groklaw.net/comment.php?mode=display&sid=20100408153953613&title=Correcting%20the%20record&type=article&order=&hideanonymous=0&pid=0#c842641 ] why he dislikes the GPL and refuses to work with it:

I've opposed the GPL for more than two decades. My fundamental objection to it is that it is an attempt by one programmer to tell another what he may do with his own work.
Cluebat: that is exactly what TurboHercules is doing to IBM, trying to tell IBM what it MUST do with its own code.

Some have questioned the Register's report that there is a TH Seattle presence. Groklaw's bugstomper, however, provides evidence in this comment [ http://www.groklaw.net/comment.php?mode=display&sid=20100408153953613&title=Here%27s%20proof%20of%20the%20link%20to%20the%20Seattle%20office&type=article&order=&hideanonymous=0&pid=842615#c842642 ], and confirmed by Maynard here [ http://www.groklaw.net/comment.php?mode=display&sid=20100408153953613&title=Not%20a%20drop%20box...&type=article&order=&hideanonymous=0&pid=842682#c842701 ].

And for the community, do I really need to say anything more? He said it all right there.

Update 4: I found some examples [ http://www.smithhopen.com/litigation_cease_and_desist_letter_strategies.aspx ] of real cease and desist letters for you, and so you will understand how courts view what is and isn't a cease and desist letter leading to apprehension of litigation, here's an article [ http://library.findlaw.com/2003/Oct/31/133125.html ] that explains that topic on Findlaw, "Patent Law – "Reasonable Apprehension" After Receipt of a Cease-and-Desist Letter – Grounds for Declaratory Judgment Action". It's more interesting than the title might make you think, so take a look and you'll see even more clearly that this letter is no such thing, as I read it, anyway.

Update 5: Thomas Vinje speaks out [ http://www.pcworld.com/businesscenter/article/193559/opensource_advocate_enters_ibm_antitrust_fray.html ] about Florian:

Thomas Vinje, the founder of the European Committee for Interoperable Systems (ECIS), which ranks IBM among its members, said that "Microsoft lies behind the antitrust complaints against IBM." Mueller can in turn be linked to Microsoft, he said, because he joined forces with Microsoft to oppose the Oracle-Sun deal, which was approved after an in-depth investigation by the Commission that ended in December. Vinje acted for Oracle in that case.

"They have learned how to play the game in Europe," Vinje said of Microsoft, which itself has been the target of antitrust regulators there. Microsoft has invested huge amounts in attacking its rivals, including Oracle and Google as well as IBM, in Brussels in recent years, he said.

For any who are new, here is an interview [ http://www.groklaw.net/article.php?story=20070928012238284 ] Groklaw's Sean Daly conducted with Mr. Vinje in 2007.

Update 6: Steven J. Vaughan-Nichols has a statement [ http://www.linuxplanet.com/linuxplanet/opinions/7034/2/ ] from IBM's Inna Kuznetsova:

As Inna Kuznetsova, IBM's VP, Marketing & Sales Enablement for Systems Software and former director of Linux Strategy, told me, "We stand by our pledge of 500 patents to the open-source community. The pledge is applicable to any individual, community or company working on or using software that meets the OSI definition of open source software - now or in future. The letter in question was not a legal document but a part of ongoing dialog between IBM and TurboHercules. Intentionally taking things out of context to create FUD and throw doubt on IBM's commitment to open source is shameful and facts-twisting."
Another good point. The letter didn't come from Legal, which a cease and desist would have.

Update 7: The letters between TurboHercules' President Roger Bowler and Mike Anzani, VP and Chief Technology Officer, IBM System z are here [ http://www.turbohercules.com/TH_IBM_Letters/ ]. If you take a look at the letter [ http://www.turbohercules.com/uploads/files/TH-letter-to-IBM-2009-11-18.pdf ] from TurboHercules to Anzani that he was responding to, you will find this paragraph:

We also were surprised at the suggestion that our TurboHercules product -- which merely relies on Hercules open source emulation software to run z/OS on Intel-based servers -- might infringe certain IBM intellectual property. Hercules has been widely used in the development community, as well as within IBM itself, over the past ten years. Prior to receiving your letter, we were not aware of any claim that Hercules might infringe IBM's intellectual property. If you believe that the Hercules open source project infringes any IBM intellectual property, please identify it so that we can investigate that claim.
So it was actually TurboHercules who asked for the list that IBM sent. Once IBM sent it, they accused IBM of threatening them.

Update 8: Here's why IBM may view TurboHercules as not covered by its patent pledge. Hercules is an open source product, but TurboHercules is a business on top of that product, but not exclusively that product. For example, here's how TurboHercules describes [ http://www.turbohercules.com/solutions/turnkey_product/ ] its "turnkey solution", its hardware/software product/service:

System Configuration

The local and remote TurboHercules systems consist of:

1. A HP Proliant DL380G6 server equipped with:

a. 2 Intel Quad Core Processors

b. 32GB of main memory

c. 10TB of RAID 5 based disk storage

2. HP R5500 UPS system equipped with 2 extended run modules

The following options are available to tailor each system to the mainframe they will be supporting:

1. Memory – up to 192GB per server

2. Storage – up to 192TB per server

The software supplied is:

1. Base operating system – Windows Server 2008 R2 Enterprise Edition

2. TurboHercules application – a platform-optimized binary of the Hercules emulator

3. Local 3270 emulator package (for use with IBM supplied operating systems)

4. Terminal and X-Windows emulators (for use with z/Linux)

It is expected that the user will supply properly licensed copies of all guest operating systems and applications that will be used during any disaster recovery/business continuity testing or real outage situation.

Service and Support

First point of contact for all issues will be through the TurboHercules support organization. If it can be determined that the issue relates to the hardware of the system, the TurboHercules support group will bring the HP support team into the conversation. Otherwise, all software issues will he handled directly by the TurboHercules support team.

So the base operating system is Windows. So, you tell me. Is TurboHercules an "Open Source company"? And what, exactly, is HP's role in all this?

But what, you may ask, do they provide if you only want the software? Then are they an Open Source company? Let's look [ http://www.turbohercules.com/solutions/software/ ]:

Software Requirements

The software only package consists of the TurboHercules package itself. It is up to the customer to supply the underlying host operating system and any other utilities necessary to invoke and control the operation of the TurboHercules package. The minimums are:

1. Host operating system – Windows Server 2008 R2 Enterprise Edition or DataCenter Edition. Earlier versions (Windows Server 2008 and earlier) will not correctly support the TurboHercules binary.

2. Some form of 3270 emulation to support IBM mainframe operating systems such as z/OS, etc. We recommend Vista 3270 from Tom Brennan Software as one package that is known to work well not only with TurboHercules but as a 3270 emulator in general.

3. If you are planning to run some version of z/Linux on TurboHercules you will need a terminal emulator (PuTTY) and some form of X-Window emulation. One suggested solution is the XMing package available through SourceForge or the original XMing project website.

Update 9: And now that we have all the letters, please notice that the company's press release conflicts with the record of what happened. Here's what TurboHercules told the world:

Not only did IBM deny our request, but it now suddenly claims, after ten years, that the Hercules open-source emulator violates IBM intellectual property that it has refused to identify.
Look at the date of that press release [ http://www.businesswire.com/portal/site/home/permalink/?ndmViewId=news_view&newsId=20100323006004&newsLang=en ]. They filed with the EU Commission on the date of the press release, March 23. Now look at the date of the list of patents that TH specifically asked for and IBM sent them. March 11. So is it true that IBM refused to identify the intellectual property that it believes would be violated?

How could that happen that TurboHercules would make such a statement? You tell me. Was it true? You have eyes. At the time, the letters had not been made public. So the funny part is, by Florian launching the FUD campaign by releasing the letter, he revealed what now looks like a deliberate and rather cynical smear campaign against IBM, hoping to cause the FOSS community to turn against IBM.

I would hope TurboHercules would now correct its statement in that press release, at a minimum.

Update 10: Florian instead "clarifies" by stressing [ http://fosspatents.blogspot.com/2010/04/clarification-of-terminology-assert-vs.html ] again that he thinks IBM is a big meanie. He quotes a bit of the IBM patent pledge, but he ignores a significant phrase as to what IBM said it would cover:

Open Source Software is any computer software program whose source code is published and available for inspection and use by anyone, and is made available under a license agreement that permits recipients to copy, modify and distribute the program's source code without payment of fees or royalties.
Now let's take a look at the first letter that TurboHercules sent to IBM, or at least the first one in the four that have been made available. Notice that the letter writer did NOT think that what they intended to do was covered by the patent pledge, because instead of availing itself of that pledge and just going forward, here is what TurboHercules proposed to IBM and asked for:
TurboHercules seeks to establish a commercial business that offers customers a choice in mainframe-compatible platforms, while contributing to the long-term health of the IBM mainframe ecosystem. Because the lasting success of the IBM mainframe platform is the prerequisite for our own success, it is very important to us to secure IBM's approval for our business model.

Sepecifically, we would like you to consider making available to your mainframe customers a license for IBM operating systems on the TurboHercules platform. TurboHercules S.A.S., as the commercial entity, would provide support for a complete turnkey system based on these licenses. The pricing, conditions and limitations of that license would be at the sole discretion of IBM on reasonable and fair terms. We propose to focus on secondary workloads such as training, demonstrations, pre- and post-processing, data preparation, disaster recovery, archiving, development and testing.

See the mismatch for yourself? I read that as saying that TH wanted IBM to come up with a license, for which they would be paid. That alone takes the offering outside of the pledge, in that the pledge is only for software that does not require royalties or fees under the license. The letter, in fact, goes on to propose a secondary type of license, academic licenses, that "would allow a wider range of schools and universities to teach mainframe concepts and skills using the TurboHercules platform." But what TH wanted was IBM's code. They wanted to make money using IBM's code. IBM said no. So they file a complaint with the EU Commission to try to force them to say yes.

So did they think they could rely on IBM's patent pledge? If so, why ask for a license? And when IBM said no, did they threaten Hercules? Or TurboHercules's new business model? See the difference? Did they even mention the pledge? Did their proposal of commercial licensing match the requirements of the IBM patent pledge? So which party was it that was proposing a business based on commercial licenses, in direct contradiction of the terms of the patent pledge?

Update 11: Some try to explain the fact that the TH press release claimed IBM did not identify its intellectual property prior to TH filing its complaint with the EU Commission by pointing out that letters from the US to Europe can take a long time, and that the TH website says the Anzani letter was not received prior to the filing.

Is that true? Let's see what TH's Bowler says [ http://www.turbohercules.com/news/permalink/a-statement-from-roger-bowler-about-hercules-and-ibm/%255C ] happened:

IBM complains in its press statement in response to our antitrust filing that we “seek to use governmental intervention” to advance our interests. However, we acted only as a matter of last resort. Indeed, just a few days before we filed the complaint with the European Commission, Mr. Mark Anzani, the CTO of IBM’s mainframe division, wrote to me to allege that the open source Hercules emulator may have violated no fewer than 173 of IBM’s patents or patent applications.
As you can see, he openly states that they had the list of patents prior to the press release, which was sent out the same day that TurboHercules filed its complaint. That makes the press release actionable in the US anyway, I would think. Or in simpler and more human terms, it was a smear against IBM, and while there may be some explanation, until we hear one, it looks very, very bad.

Update 12: Take a look at this part of the QPL:

3. You may make modifications to the Software and distribute your modifications, in a form that is separate from the Software, such as patches. The following restrictions apply to modifications:
a. Modifications must not alter or remove any copyright notices in the Software.

b. When modifications to the Software are released under this license, a non-exclusive royalty-free right is granted to the initial developer of the Software to distribute your modification in future versions of the Software provided such versions remain available under these terms in addition to any other license(s) of the initial developer.

Talk about your back door to proprietary use of an Open Source project. Now maybe that is what the project wants, and they get to choose the license. But can you see what IBM might be noticing the future holds if it agreed to TurboHercules's request?

04:42 PM EDT

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