Slides used at presentation given at the 2008-07 Palmetto Open Source Software Conference - Legal Issues in Open Source: Patents, Trademarks, Copyrights, and Licenses

1. Legal Issues in Open Source:
Patents, Trademarks,
Copyrights and Licenses
Calhoun “Reb” Thomas
Thomas Law Firm
803-748-0336
CRT@ThomasFirm.com
July 30, 2008

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3. 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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4. Giving It Away?
Is giving software away a business
model?
Netscape browser
Four Freedoms (not free beer)
To use for any purpose
To share with others
To change as you want
To share your changes
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5. Copyrights & Patents
 Article I Section 8 of our Constitution
“The Congress shall
provides that
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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6. 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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7. 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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8. 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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9. 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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10. 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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11. 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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12. 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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13. 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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14. 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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15. 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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16. Patents
 Most recent patent issued yesterday
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17. 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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18. 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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19. 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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20. 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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21. 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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22. 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 quot;Lesserquot; General Public License
(LGPL), GNU Library or quot;Lesserquot; 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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23. 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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24. 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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25. 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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26. 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)
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