managing ip while using open source: copyright and patent...
TRANSCRIPT
Managing IP While Using Open Source:
Copyright and Patent Licensing Assessing Software Options, Mitigating Risk of IP Infringement in Software Development
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TUESDAY, FEBRUARY 20, 2018
Presenting a live 90-minute webinar with interactive Q&A
James G. Gatto, Open Source Team Leader,
Sheppard Mullin Richter & Hampton, Washington, D.C.
Heather Meeker, Partner, O’Melveny & Myers LLP, Menlo Park, Calif.
Gideon Myles, Lead IP Counsel, Dropbox, San Francisco
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Open Source: Potential IP issues
• in-bound: associated with using open source software
• out-bound: associated with contributing to the open
source community
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Open Source: Potential in-bound issues
IP Issues
Trade Secrets none
Copyrights ownership when multiple contributors
Trademarks generally not licensed
Patents
what rights are you receiving?
can those rights terminate? if so, when
and how?
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Open Source: Potential out-bound issues
IP Issues
Trade Secrets gone upon release
Copyrights ownership when multiple contributors
Trademarks existing 3rd party trademark rights?
Patents what rights are you granting?
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Patents and Open Source
Patents Open
Source
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Patents and Open Source
• Can invent a new, non-obvious method or process
• Can create an implementation of the method or process
• Can open source an implementation of a method or
process
Patents Open
Source
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Patents and Open Source
• Not mutually exclusive
• Can file for a patent and open source software related
to the same technology
• Applies to wholly new projects as well as contributions
to existing projects
Patents Open
Source
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Why Patent and Open Source?
• Defense
• Minimum - prevent others from asserting patents
against your open source software
• Ideal - patent protects broader method
• grant license to particular implementation
• protect against competing implementations
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Patents and Open Source: Potential issues
• What rights are you granting?
• Lack of mutual awareness
• Changing product strategy
• Unknowingly granting patent rights as OS project
evolves
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Patents and Open Source -- Navigating the Choppy Waters of Parallel Grants
Strafford
February 20, 2018
Heather Meeker, Partner
Standards and Implementations
Morse Code
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PERL
C
Parallel Licensing
Copyright (software) Patents (inventions)
USER
A Tipping Point
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Controversy
Does a parallel grant violate the Open
Source definition?
https://opensource.org/osd
Difference between patent grants and
copyright grants
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Open Source and SSO Licensing Compared
Characteristic Open Source SSO
Patents From contributors From working group
Copyright Open source
licenses
Documentation licenses (or reference
implementations)
Trade Secrets None None, upon release. Often confidential
prior to release.
Trademark Not licensed Often subject to certification licensing
● SSO fundamentals are licensed via patent licenses or patent licensing (RAND)
commitments
● Open source licenses are software licenses
● Other licensing
○ Creative Commons licenses are non-software copyright licenses, which can be
used for documentation
○ Reference Implementations are copyrightable software (often permissive open
source licenses)
○ APIs are copyrightable (but not exactly software) and need licenses
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Open Source Software and Standards Licensing
Parallel Licensing -- Case Study
Case Study: ReactJS
● Timeline
○ 2000s: WebM and other parallel licensing models
○ 2012: Yahoo! sues FB for patent infringement
○ 2013: ReactJS additional patent grant released
○ 2015: License revised
○ 2010s: Broad adoption of ReactJS
○ 2017: Moved to “category X” by Apache
○ 2017: Facebook changes licensing
● Patent licensing was unchanged from Apache 2.0
● Defensive termination was different
● Scope of defensive termination similar to private licenses
● Scope of defensive termination similar to CPL
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Heather Meeker
[email protected] +1-510-463-1116
Thank You for Your Time!
My book: Open (Source) for Business (2nd Edition) Available in Kindle or paperback form on Amazon.com, or in pdf form at: www.heathermeeker.com/book-update-page Password: MeekerOSFB1.1