Legal Issues in Open Source:Patents, Trademarks, Copyrights and Licenses

Calhoun “Reb” ThomasThomas Law Firm803-748-0336CRT@ThomasFirm.comJuly 30, 2008

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Software Is Different

Software is the only type of property can can be protected by both copyright and patent law

Software is also normally protected by contract law (GPL, etc) and often by trade secret law (proprietary software)

The open source software model is the opposite of a trade secret

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Giving It Away?

Is giving software away a business model?Netscape browserFour Freedoms (not free beer)

To use for any purposeTo share with othersTo change as you wantTo share your changes

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Copyrights & Patents

Article I Section 8 of our Constitution provides that “The Congress shall have the power … To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries”

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Copyrights In general, copyright law provides that

the author of a work has the exclusive right to use, distribute, modify and display the work

However, the copyright to a work belongs to an employer in the case of a “work made for hire”

Employees vs independent contractors

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Copyrights “Work made for hire” and the

independent contractor – get an assignment - not all works are covered

Copyright can last a long time! Life of the author plus 70 years Works for hire – lesser of 95 years after

publication or 100 years after creation

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Copyrights Expression vs idea “Copyleft” – a short way of trying to

describe what the GPL and other similar licenses do by contract

Copyleft depends on copyright The licenses permit a user to use,

modify and redistribute covered software on the same Copyleft terms

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Copyrights Digital Millennium Copyright Act (DMCA) Making or trafficking in software or

devices whose primary purpose is defeating technological measures that control access is illegal.

GPLv3 attempts to prevent GPLv3 covered software from being used to “lock-out” (DRM) other users

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Trademarks Trademarks are primarily governed by

Federal law States trademark law is usually not

important for software A trademark identifies the source of

origin of a product Example: Cuil for search engine and

advertising services (Gaelic word for both knowledge and hazel)

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Trademarks Arbitrary or fanciful marks are much

better than descriptive or generic marks Examples (good & bad):

RED HAT for software and services JAVA for software STARBUCKS for coffee BED & BATH for selling bed & bath items QUIK-PRINT for copying services

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Trademarks Merely registering a mark as a domain

name does not provide trademark rights Registering domain name involves

entering into a contract “The registrant... represents that ... the

selected domain name, to the best of the registrant's knowledge, does not interfere with or infringe upon the rights of any third party”

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Trademarks

If you are planning to bring a product or service to market, start as early as possible with your intent-to-use (ITU) trademark application

For example: Cuil, Inc. filed an ITU application on April 11, 2008 (they should have filed much earlier, but ...)

Madrid Protocol

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Patents Similar to Copyright law in that Patent

law is Federal law, states may not legislate in this area

A patent is an intangible form of personal property

Patents only have national effect Patent Cooperation Treaty (PCT)

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Patents Over 7.4 million utility patents have

been issued by the USPTO Tuesday the Patent Office issued

approximately 3,000 utility patents The Patent Office received almost

500,000 patent applications in 2007 Almost half are filed from other

countries

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Patents

Most recent patent issued yesterday

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Patents Granted to an individual or individuals

who invents or discovers a process (method), machine, article of manufacture, composition of matter, or improvement thereof

For software the focus is usually on a “process” or this is often called a “method” or “business method” patent

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Patents Must be new, useful and non-obvious to

one of ordinary skill in the art Must be an “invention” – not just an

idea – you need complete conception and reduction to practice

Patent is the opposite of a trade secret – must fully disclose the invention

Non-obviousness is key (peertopatent)

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Patents Utility and design patents The term of a utility patent ends 20

years after the date of application Term of design patent ends 14 years

after date of issuance Applications are typically published 18

months after filed - average patent takes about 2-4 years to issue

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Patents

Having an issued patent does not give the holder the “right” to actually make their claimed invention, but it does give them the right to exclude others from: making using selling offering for sale importing the invention

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Example of growing backlog

Recent news – Microsoft is sued for patent infringement by Gotuit Media Corp. for infringing 3 patents

U.S Patent No. 5,892,536 - Systems and Methods for Computer Enhanced Broadcast Monitoring, issued on April 6, 1999; U.S. Patent No. 5,986,692 - Systems and Methods for Computer Enhanced Broadcast Monitoring, issued on November 16, 1999; U.S. Patent No. 7,055,166 - Apparatus and Methods for Broadcast Monitoring, issued May 30, 2006

First one filed in 1996 only took about 2.5 years to issue Third one filed in 1999 took over 7 years to issue

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OSI List of Different Licenses Academic Free License 3.0 (AFL 3.0), Affero GNU Public License, Adaptive Public License, Apache Software

License, Apache License, 2.0, Apple Public Source License, Artistic license, Artistic license 2.0, Attribution Assurance Licenses, New and Simplified BSD licenses, Boost Software License (BSL1.0), Computer Associates Trusted Open Source License 1.1, Common Development and Distribution License, Common Public Attribution License 1.0 (CPAL), Common Public License 1.0, CUA Office Public License Version 1.0, EU DataGrid Software License, Eclipse Public License, Educational Community License, Version 2.0, Eiffel Forum License, Eiffel Forum License V2.0, Entessa Public License, Fair License , Frameworx License, GNU General Public License (GPL), GNU General Public License version 3.0 (GPLv3), GNU Library or "Lesser" General Public License (LGPL), GNU Library or "Lesser" General Public License version 3.0 (LGPLv3), Historical Permission Notice and Disclaimer, IBM Public License, Intel Open Source License, ISC License, Jabber Open Source License, Lucent Public License (Plan9), Lucent Public License Version 1.02, Microsoft Public License (Ms-PL), Microsoft Reciprocal License (Ms-RL), MIT license, MITRE Collaborative Virtual Workspace License (CVW License), Motosoto License, Mozilla Public License 1.0 (MPL), Mozilla Public License 1.1 (MPL), Multics License, NASA Open Source Agreement 1.3, NTP License, Naumen Public License, Nethack General Public License, Nokia Open Source License, Non-Profit Open Software License 3.0 (Non-Profit OSL 3.0), OCLC Research Public License 2.0, Open Group Test Suite License, Open Software License 3.0 (OSL 3.0), PHP License, Python license (CNRI Python License), Python Software Foundation License, Qt Public License (QPL), RealNetworks Public Source License V1.0, Reciprocal Public License, Reciprocal Public License 1.5 (RPL1.5), Ricoh Source Code Public License, Simple Public License 2.0, Sleepycat License, Sun Industry Standards Source License (SISSL), Sun Public License, Sybase Open Watcom Public License 1.0, University of Illinois/NCSA Open Source License, Vovida Software License v. 1.0, W3C License, wxWindows Library License, X.Net License, Zope Public License, zlib/libpng license

This is probably not all and there will be more coming

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Some of the Groups

Free Software Foundation (fsf.org) Software Freedom Law Center GNU.org Apache Software Foundation Mozilla Foundation Open Software Initiative FOSSBazaar.org

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Main Licenses

GNU General Public License (GPL) Lesser GPL Apache License Berkeley Software Distribution (BSD) Eclipse Public License (EPL) MPL (Mozilla or Microsoft?) Common PL and CDDL

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Open Source in Mobile Phones

LiMo Foundation says it will use the GPL, Mozilla and its own “Foundation Public License or FPL

Nokia -> Symbian Foundation – moving the Symbian mobile operating system to open source over the next 2 years using the EPL

Google (Android) using Apache License

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Final Thoughts

Affero – GPL for “software as a service” or SaaS

USPTO Peer Review Pilot (also known as PeerToPatent.org) extended & expanded to include business method patents

MPL can even mean the Microsoft Public License or Microsoft Reciprocal License (two OSI approved licenses)