Managing IP While Using Open Source: Copyright and Patent...

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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Balancing IP and Open Source

Strafford

February 20, 2018

Gideon Myles, Head of IP

gideon@dropbox.com

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

hmeeker@omm.com +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