Beware Open Source Strings Attached if You Want a Patent

By Gene Quinn
October 12, 2010

Just this week I had the opportunity to consult with a client that is in the process of creating unique software that is, at least in my opinion, patentable over the prior art.  We were chatting over the telephone when he explained that the developer he hired was using certain open source code to supplement the original code being written.  Not wanting to scare my client needlessly, but suspecting the worst, I asked him to send me information on what was being taken, in particular the license agreements that govern the allegedly free open source software.  In life there are few certainties.  Death and taxes are among them; as is the fact that if you are taking open source software for your proprietary project you are likely about to do a deal with the devil that might be extremely difficult, or even impossible, to undo.

Software is unique because it can be protected by both copyrights and patents.  Copyrights in software protect the unique expression in the code, while patents protect new and nonobvious functionality.  So you copyright the code and you patent the function.  Patents are far more valuable for that reason given that a patent would protect the implementation regardless of how the code is written or what languages are used.  Thus, anything that potentially compromises patent rights should be avoided at all costs.

Copyrights in software are of extremely limited use.  Despite what open source advocates and anti-patent avengers say, a copyright in software is hardly enough to protect a unique innovation.  Simply stated, copyrights are extremely limited, weak and but for the fact that they are extremely cheap are quite useless.  But given they are so cheap to obtain if you have anything that can be copyrighted, including software, you absolutely should obtain a copyright.

The cost of filing a copyright application is $45, and if you hire an attorney to do it for you the total cost is under $350 and that would include at least some consultation via telephone to explain what you are getting.  Like so many things in life, you essentially get what you pay for.  Even at $350 a copyright is still a good deal because you have the right to access the federal courts to stop infringers, you have the right to receive your attorneys fees if you are victorious in litigation and there are always those statutory damages that are available, which can add up to a nice sum even if there are no actual damages.  But make no mistake, a copyright in software is exceptionally limited because there are myriad of ways to write code to bring about a particular functionality.  A copyright in software covers but one of those myriad of ways to write the code, so if I write different code without copying yours I couldn’t possibly infringe your copyright.  Thus, a copyright in software largely only protects you from those who would cut and paste, not those who set out on their own to replicate what you are doing.

So why the lecture on copyrights?  The open source code that you or your developer is about to take for your proprietary project is likely to be copyrighted.  Whether it is federally registered or not, it is copyrighted the minute it is fixed in a tangible medium of expression.  It is the fact that this open source code is copyrighted that creates the problem.  With copyrights, like patents, the rights the rights can be divided up any way the owner sees fit.  So the owner can give all rights, some rights or no rights.  They can also give rights under certain conditions, which is almost universally what happens in the open source code situation.  Those strings attached are real, and will almost certainly render any hopes of having proprietary software nothing more than a faint and distant memory.

Here is an example of the type of limited copyright waiver you can expect from those offering their open source code for you to copy:

Permission is hereby granted, free of charge, to any person obtaining a copy of this software and associated documentation files (i.e., “Software”), without restriction, including without limitation the rights to use, copy, modify, merge, publish, distribute, sublicense, and/or sell copies of the Software, and to permit persons to whom the Software is furnished to do so themselves. The above copyright notice and this permission notice shall be included in all copies or substantial portions of the Software.

So in other words, if you take this code you must allow others to take what you have created and give them the right to copy, modify, merge, publish, distribute, sublicense and/or sell copies.  So if you were to take open source software subject to this license then anyone would be able to take your software, regardless of whether you have a patent on it.  See how taking open source code can absolutely destroy proprietary rights?  For crying out loud this open source license doesn’t have a sunset provision and will follow you forever!

But what if you were to take the open source code and then not include the copyright notice and not give others permission to copy, modify, distribute, etc.?  If you were to do that then you would be violating the terms of the copyright license you were provided and likely would be infringing the underlying copyright in the open source code you copied, which would create a whole host of new legal problems for you.  Thus, taking open source code really does approximate a deal with the devil, at least if you were hoping to capitalize on your unique creation by being the only one possessing the underlying intellectual property rights.

Some might say that they disagree with my interpretation of the open source copyright license above, and that is fine.  But now ask yourself this question — do you want to run the risk?  There is an old saying that law professors tell their students, and once upon a time when I was a law professor I told my students — you don’t want to ever have one of your cases wind up in a casebook.  Cases are put into casebooks because they deal with a unique issue that offers a teaching point, but that means lengthy litigation and likely an appeal, which means you pay your attorneys dearly to find out whether or not taking open source code via an ambiguous copyright license means that your patent rights are compromised.  Is that the type of risk you want to take as you start your business and try and attract investors?  I doubt it.

Patents in software do not protect the code, but rather are independent from the code.  You protect the functionality as defined via a process and/or system, which can be coded in many different ways.  So patent rights are extremely valuable for software because it doesn’t matter whether anyone actually copied your code by cutting and pasting, or whether they looked at your code for inspiration and created their own, or whether they didn’t know about your code or software whatsoever.  Patent infringements isn’t about fault or intent; patent infringement asks whether the invention defined is what the alleged infringer is doing regardless of the code  used to bring it about.  Patent infringement is about strict liability.

Patents are far more valuable for software than copyrights, but by taking open source code you might be compromising your patent rights.  Ironically, if you were to take open source code under a license similar to the one above you would not likely be able to assert any patent rights you obtain against one who actually literally copies or even cuts and pastes, but you could assert your patent rights against those who didn’t literally copy your code.  Of course, those who would cut and paste copy are the ones you would most like to prevent, but might not be able to if your software has open source code.

Those who are engaged in software development and had never considered the consequences of open source code winding up in their software need to act immediately to investigate what is going on with development because if experience teaches anything it is that those who code will seek to cut corners.  To some extent, who can blame them?  Why recreate the wheel?  You do recreate the wheel when you want proprietary rights because the inclusion of anything allegedly free is going to come with strings attached — I guarantee it!

Many times you will hire an independent contractor or engage the services of a developer through a company.  These developers are tasked with bringing into being your creation, and in many if not most cases they are going to want to not have to do all the coding from scratch.  Sometimes it will be because of your requirements to stay with in a budget, and sometimes it will be because of their own limitations or their desire to turn projects around extremely quickly to maximize profits.  Whatever the reason, many coders will seek out open source solutions to use, after all it doesn’t matter to them, particularly if you haven’t specified that they are not to use any open source code.  So they take knowing full well what they are taking comes with strings attached, but it lets them finish their project and get paid.

Whatever you do, if you have a proprietary invention and you are contemplating seeking a patent or otherwise want to keep  your rights for yourself you need to be proactive. NEVER ASSUME, and make sure that those working on the project know not to even seek out or look at open source code solutions.  You need to make sure that those who are coding, whether they are employees or independent contractor developers are not using open source software, and if they are that you know exactly what the license is that you will have agreed do when your software embodying copied code is implemented.  Failure to know what has gone into your software in terms of code can be a costly oversight, and one that you might not later be able to fix in any satisfying way.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 43 Comments comments.

  1. Brian October 13, 2010 12:43 am

    Would be nice to hear your thoughts on the different licenses out there; GPL vs. Mozilla vs. Apache vs. BSD for example. It seems pretty clear that the GPL license will cause problems for commercial/proprietary software (that’s really the goal of GPL, imho), but the others seem less toxic. Anyway, it might make for an interesting article if you were so inclined…

  2. Vivek Khurana October 13, 2010 1:36 am

    Good write up on how to use open source software. But your statement that “Patents are far more valuable for software than copyrights” is total crap. Patents have not proven to spread innovation infact it is the other way round. Patents are a tool of trade and have nothing to do with technology. Patents are something that keeps cash flowing for lawyers and trolls. In many companies developers have this contest, who can get the goofiest patent through the system.

  3. John Spevacek October 13, 2010 9:13 am

    “…you don’t want to ever have one of your cases wind up in a casebook.”

    Interesting. As a scientist, I WANT my research to end up in textbooks. That means it was valuable and advanced the science.

    I’m not disagreeing with your advice to attorneys; it’s just interesting to see the different approaches.

  4. Bobby October 13, 2010 9:43 am

    “Deal with the devil” is rather harsh. To put it in terms you might use, this open source code is someone else’s intellectual property, and bad things can happen to you if you don’t respect the conditions that they have given. This concern applies to proprietary code that you don’t own the copyright to as well, and not abiding by the terms of non-FOSS licenses will probably result in far worse things happening to you, and is much more likely to end in a lawsuit. ‘Beware of foreign code’ would probably be more appropriate. FOSS is often more widely available and many people don’t bother to understand the terms, but neither of these is a fault of FOSS.

    Of course, understanding what the license entails is important, and thee are many different considerations. regarding the purely copyright issues, things generally fall into 3 categories with FOSS: no copyleft, weak copyleft, or strong copyleft.

    No copyleft means that you probably have little obligation other than to give the original author credit and include a copy of the license for the original work. You can make derivatives without having to give out source code, and linked code doesn’t need to be covered under the same license. A common example is libvorbis, a library for the vorbis audio format, which is widely used in games and embedded devices.

    Weak copyleft various somewhat, but generally means that you must contribute back your changes to the original file(s), but not to code that is linked. An example of this would be LAME, which is a widely used mp3 codec.

    Strong copyleft means that you must contribute back changes to the original code and that linked code must be under the same licenses. The Linux kernel is probably the most prominent example of this one.

    Sometimes licenses have something called an advertising clause, like the one found in the original BSD license. The language varies, but it generally means that if you advertise a product, you must note in that advertisement that it contains code from a certain party.

    Some projects have multiple licenses, including proprietary licenses often used for exceptions. Choosing this license may mean that you have to pay licensing fees, although it may not. If there is only one copyright holder or you can get in touch with all of the copyright holders, you also have the opportunity to work out an exception if one doesn’t exist. This may be difficult in projects that don’t require assignment of copyright to a governing body, since there could easily be hundreds of copyright holders.

    As you mentioned, FOSS licenses often have patent clauses, and if you are using the code, you should be sure that you find the terms appropriate, just as you should be sure to find the other terms appropriate.

    It’s also worth noting that if the code is not being distributed, then you probably have no obligations. The AGPL has some restrictions in software-as-a-service scenarios.

    Given the terms, you can decide whether or not it is appropriate for you. If your primary product is not the software in question itself, then there’s a much better chance that you’ll find these terms appropriate, as have the manufacturers of many set-top boxes and embedded devices. If you primary product is proprietary software, then you may be less inclined to do so, but then again, you may find that shifting your product to FOSS provides you a better return on investment.

  5. Anonymous October 13, 2010 11:10 am

    Your analysis of the license you quote from is wrong. The license you’re quoting from doesn’t require that “you must allow others to take what you have created and give them the right to copy, modify, merge, publish, distribute, sublicense and/or sell copies.” The license you quoted says that you may “permit persons to whom the Software is furnished to do so.” There’s a difference between “permission” and “compulsion.”

    Your analysis of the implied patent license is also wrong. The issue isn’t whether “you were to take open source code under a license similar to the one above” but instead whether you were to release your own proprietary code under a license similar to the one above.

    You may want to do a follow up addressing these points.

  6. Gene Quinn October 13, 2010 12:05 pm

    Anonymous-

    I disagree with you and your analysis. I note that you are so sure of your analysis that you choose to remain anonymous and use a fake e-mail, but I suppose that is to be expected.

    Just wondering if you might be willing to indemnify my client if he were to assume your analysis is correct and he winds up losing his rights? Of course not, silly question, because you know as well as I do that the license is not permissive but mandatory. There would be no need to say ANYTHING if it were permissive because everyone obviously has the right to allow others to engage in such activity at their own discretion. So there is only need to make such a statement that persons to whom the software is distributed be given the same right to modify, copy, distribute etc. if it is required.

    Perhaps you can identify what part of the license you think is permissive.

    Of course, my analysis is correct. I did acknowledge that there would be some that disagree because the license is ambiguous. For that reason it could be interpreted to mean any number of things, but the most logical conclusion is what I state because there is not a single word or phrase that implies the terms are permissive, but the fact that rights are given only to the extent that others are allowed to copy, modify, distribute, etc. seems to clearly favor a mandatory interpretation.

    It is a lawyers job to counsel clients objectively and to encourage them to minimize risks, particularly when the risks are extreme. Nothing could be more extreme than the forfeiture of the ability to enforce exclusive rights. So you can choose to be a risk-taker if you want and disregard the clear importance of the license, but that is not wise.

    -Gene

  7. Adam Williamson October 13, 2010 1:03 pm

    Vivek: “But your statement that “Patents are far more valuable for software than copyrights” is total crap.”

    The dude’s a patent lawyer. When he says ‘more valuable’ he doesn’t mean in terms of their overall usefulness to society or anything productive like that. He means ‘more valuable’ in the sense of ‘if you own them you can make money’.

  8. Bobby October 13, 2010 1:03 pm

    Gene,
    The license in question is the MIT or X11 license, which is not copyleft, and only has the requirement of including the notice with copies or derivatives. It is not completely permissive because it requires attribution and a copy of the notice, but about the only licenses that are more permissive are the zlib license and the WTFPL.

    “There would be no need to say ANYTHING if it were permissive because everyone obviously has the right to allow others to engage in such activity at their own discretion. ”
    That’s not true. No license means you can’t do anything with the software. Everything you can legally do with software is granted by the license or fair use and such.

    http://en.wikipedia.org/wiki/MIT_license

  9. TINLA IANYL October 13, 2010 1:14 pm

    I’m tempted to scatter some coins on the sidewalk with labels indicating that anyone using said coin to purchase an item acknowledges that the item is public property, and that anyone depositing said coin in their bank account acknowledges that any item purchased with any money from said bank account is public property. See how that flies in the Courts.

  10. David Sheldon October 13, 2010 3:06 pm

    An implied, or even explicit, grant of patent rights to other users of the open source software isn’t that scary, to me. The patent holder would probably still be able to assert his rights against other projects, including anything that doesn’t comply with the same license, and probably also against anything that couldn’t be considered a derivative work.

    There’s an even scarier wrinkle, though, with regard to some open source licenses, in that they revoke your license to distribute the software if you assert patent rights against users of the software. Here’s how that scenario might play out for your client:

    1. Client builds and sells a device that includes software that is a derivative work of software covered by a particular open source license.
    2. Client complies with the open source license by distributing client’s own code or whatever other requirements are imposed by the license. Client is thereby licensed to distribute client’s software, against any copyright claims.
    3. Client obtains a patent on the novel features they added to the derivative work.
    4. Client sues someone for patent infringement who is duplicating and selling counterfeit versions of his device.
    5. Because client asserted his patent on the open source derivative work, the license to distribute the client’s own code (a derivative work, remember), is revoked. Client has thereby lost the right to distribute HIS OWN PRODUCT.

    For an actual example of this, see the Apache 2.0 license: contributors grant a patent license to any user of the software. However, if the licensee starts a patent infringement proceeding against any such licensor based on patents embodied in the software, the contributor’s license to the licensee is canceled, so they can countersue for infringement.

    Another example is paragraph 1 of Section 8 of the GPL v3, which states that an attempt to propagate a work except as expressly provided in the license (which restricts your ability to fail to license downstream recipients) automatically terminates your rights under the license.

  11. Roland October 13, 2010 6:47 pm

    There is a lot of general fashionable muck throwing at open source in this article resulting in lack of clarity in the argument and the key points being poorly made.

    The main argument (which also applies to any project that includes software) is that you need to check the terms and conditions of all software components used in your project, to ensure they are compatible with your intentions. The basis for this argument would of been strengthened by citing the GPL which explicitly does not permit incorporation of software licensed under it into proprietary programs, however not all open source software uses the GPL, hence why you need to look at the T’s & C’s for each component. Similar care needs to be exercised with proprietary software components, just because you have purchased a commercial license doesn’t mean that you can do whatever you like with the software, you may still be limited by how you can distribute it and where you can distribute it; on an international enterprise systems project this can be a major headache, particularly if the code contains encryption algorithms…

    However, the above are largely commercial considerations which I suggest are slightly different to patentability.

    Lets take the worst case scenario (?) and the software you developed could be construed by a lawyer to be a derivative work from software released under GPL, thus requiring you to place your code under GPL. The question, which isn’t answered, is whether such a software invention that, in the opinion of a patent attorney, is “patentable over the prior art” can be successfully patented and enforced and what are the implications where the invention is wholly software-based or where the software is the intelligent glue in a tangible invention ie. what are “the strings attached”. This is an important point as previously it has been suggested that the open source movement makes use of patents to protect open source inventions.

    Finally, I agree with the final point that both software development teams and their commissioning customers need to improve their awareness of the commercial ramifications of the differing ways in which software can be developed.

  12. Gene Quinn October 13, 2010 7:39 pm

    Roland-

    I’m sorry you didn’t understand the point of the article. That, however, is a you issue not one of lack of clarity on my part. It seems you wanted to read a GPL article, but the GPL wasn’t at issue. Sorry that facts got in the way of what you would have preferred to read.

    I will say, however, that you

  13. Gene Quinn October 13, 2010 7:43 pm

    Roland-

    The points aren’t poorly made, you just didn’t understand what you read, which is a you problem not a clarity problem. You obviously wanted to read about the GPL, but I wrote about a particular situation that didn’t deal with the GPL. So the fact that you thought this diminished from the article is conclusive proof you didn’t read it carefully or you didn’t understand. I don’t know which it was, but you took a swing at me so let’s just be intellectually honest, shall we?

    Sent from iPhone

  14. Stan E. Delo October 13, 2010 9:23 pm

    Roland writes in small part: “However, the above are largely commercial considerations which I suggest are slightly different to patentability.”

    I don’t quite follow your logic here, as the granting of patent rights would seem to be all about commercializing new and novel *inventions*, be they software ((Inventions)) or perhaps Not. If I happened to directly copy freely available information that Boeing had developed, it would seem to me that Boeing could object to including their innovations in the *invention* in question, and completely gut the validity of any patents that I might otherwise acquire using their *open source* information. There would be no permissive or any other type of license, just the profitable use of their innovations without their permission. The open source thing just seems to be a way for software developers to completely avoid the whole concept of patent rights, since they seem to be mostly pretty adamant about denying the intrinsic value of patent rights. Since patents and the rights they confer have been Very successful for more than 200 years, I would submit that many software developers might go the way of many extinct creatures like Do Do birds or Pterodactyls, for instance. Fun while it lasted though, dontcha think?

    Stan~

  15. New Here October 13, 2010 11:42 pm

    The responsibility of a programmer is to avoid behavior counter to a client’s requirement(s). This includes doing research that when passed on, a client can seek the legal knowledge to avoid litigation in the future.

    As for copyright, and licenses based upon it — I offer:
    “U.S. Court of Appeals for the Federal Circuit’s 2008 ruling on Jacobsen v. Katzer”
    …”made it clear that OSS licenses are enforceable,”

  16. Vivek Khurana October 13, 2010 11:51 pm

    @Gene It isnt that people wanted to read GPL here but your article is poorly written and on top that you are saying that reader is unable to understand. If reader(s) is unable to understand what you meant, then you need to work on your writing skills and blame the reader(s)

  17. Vivek Khurana October 14, 2010 12:14 am

    @Stan Patents have not proven to be successful. Though in capitalist world every thing is measured with money and patents get you money but patents no way help in progress of technology. You are free to pick any field where patents are allowed and study it for a period of 100 years. You will notice that the rapid technological developments took place after patents in the filed expired.
    Software patents are specially bad because most of the software patents granted by USPTO are stupid. If USPTO is going to grant patents on ubiquitous things like one click purchase or battery indicator on mobile phone, how you expect the world to trust the technological capabilities of USPTO ? I have worked in companies that had software patents and a huge bunch of them. How we used to get those patents ? Think of the goofiest idea, talk to company attorney, word it as broad as possible and file it. Out of several patent applications I had been associated with, till date I have found only 2 applications that were actual innovation. But ground reality is that USPTO granted all the patents. This makes me think that does USPTO actually tries to validate that patent is innovation or not ?
    The second mis-conception about patent is that patent is means you have control. The whole patent thing and illusion of monetary value associated with patent is a facade. A patent is useless unless you enforce it. To enforce a patent you need lawyers not technologist, where as a patent claims to be technological innovation (what an irony). You need to pay huge amount of money to lawyers to fight the patent case in court. That is why most patent deals do not go for a court trial. They are mostly settled out of court and majority of patent deals are cross licencing. You use your innovation and I use your innovation but we will keep rest of the world out of it. Patents are not technological innovations but sort of currency for barter in trade.

  18. Roland October 14, 2010 7:59 am

    re: comment 14: Stan E. Delo October 13th, 2010 9:23 pm

    I was trying to put to one side what I would regard as normal commercial considerations such as ‘you can’t distribute this product to country x’ that are independent of whether a patent exists or not and considerations as to whether an invention is or isn’t patentable.

    I totally agree when deciding whether to patent something you would normally also take into consideration it’s commercial exploitation.

    Your example raises a good point about the wholesale re-use of materials gained from the public websites of third-party organisations (which may or may not have a ‘Terms & Conditions of Use’ associated with them) and including them in your own original work without gaining appropriate permissions.

    As for the merits or otherwise of open source, I’d like to just point out that this blog is powered by WordPress (see page footer) the product of an open source project, so your argument could be extended to include end users and in this particular instance patent attorneys ! :))

    My particular take on open source is that, like standards, it is here to stay. However, we are still learning: how to license it (directly relevant to Gene’s article), how to get customers to pay for it, how to create commercial products using it, and how to get paid for developing and maintaining it.

  19. Roland October 14, 2010 8:41 am

    Re. comment 13: Gene Quinn October 13th, 2010 7:43 pm

    Gene, I appreciated that the article came from a particular situation and was making the point ‘buyer beware’, however two things annoyed me about it:

    1. I didn’t see how the interpretation of the copyright waiver clause to include derived works was arrived at. Whilst I accept that this may be my problem, my expectation from working with (UK) law practitioners is that they are very effective users of language, hence my irritation that the article didn’t clearly let me see and follow the argument being made.
    2. The article seemed to treat all open source software as being the same, a point of view re-inforced by the last three paragraphs. However, as any one who has to deal regularly with open source will know there are many different open source licenses out there. Hence in my opinion this hand waving generally at open source weakened the points being made.

  20. New Here October 14, 2010 10:25 am

    Cont: From #15 …”made it clear that OSS licenses are enforceable,” –faild to complete it.

    There are some cases of “copyright based license” enforcement just earlier this year, as a number of electronic OEMs using the code of Open Source projects, counter to the licenses of the projects. Copyright is a basic right in the U.S., and any work with a legal copyright should be respected. It is this simple approach using copyright to form “copyleft” that allows any copyright work owner to license with the freedoms as those mentioned in the GPL for one example. These freedoms, have been a backbone now for almost 20 years.

    The source of the case I mentioned on post #15, can be found here:
    http://cio-nii.defense.gov/sites/oss/Open_Source_Software_%28OSS%29_FAQ.htm
    –I know that no one here needs this link, I provide it ONLY as a reference !–

    The site is full of information that covers the Departments of the United States Government using or going to use Open Source. It also has within that information (pdf) the views and considerations taken on the use of Open Source. It is worth reading.

    OSS is about organisation, cooperation, and this is an extensive membership of people business and Governments. It has taken a life of it’s own. Without people from all walks of life, going in different directions with ideas, having different needs — taking the time to work together, OSS wouldn’t be a subject worth the time to mention.

  21. Gene Quinn October 14, 2010 11:20 am

    Roland-

    The clause in the article was the entirety of the copyright license, so that is in and of itself a huge problem because many things are not answered.

    In terms of derivative works, I am unsure how you could miss the fact that it covers derivative works. A derivative work is a work based on or derived from one or more already existing works. See: http://www.copyright.gov/circs/circ14.pdf. So when license terms specifically grant the right to “modify, merge” that is by definition conveying the right to make a derivative work. Thus, when those terms must be included in the resulting work anyone would have the right to create a derivative work of whatever is created. I figured given that you came out swinging at me and criticized my article you would have at least passing familiarity with the issues involved.

    “Hand waving” regarding all open source in now way weakens the points being made. The point of the article is crystal clear. I am sorry you missed the point, which was that open source comes with strings attached. ALL open sources comes with strings attached. So it is wholly appropriate to lump ALL open source together to teach that lesson. You need to know whether you can live with the strings attached and, if not, then don’t use open source. I think as a general rule it is perfectly accurate to say that if you want complete proprietary rights you cannot and should not employ open source software. On top of that, many businesses have come to the conclusion that understanding the numerous and evolving open source license terms is too onerous and makes clearing software really untenable for those seeking proprietary rights, so it is avoided.

    You say: “I’d like to just point out that this blog is powered by WordPress…” Really? No way! You are kidding?

    Please Roland, lets keep the discussion real and intellectually honest if at all possible. What does my using WordPress have to do with anything? Exactly nothing. You are trying an offensive debating trick by introducing a head-fake that is unrelated. I have ALWAYS written that if people want to give software away for free then they should expect others to use it for free. That is totally different than to say it is a wise idea to build a patent portfolio upon a copyright foundation that you don’t own. Please, let’s keep to apples and apples and stay away from the apples and elephants comparisons.

  22. Gene Quinn October 14, 2010 11:25 am

    Vivek-

    The article isn’t poorly written. What is lacking is an understanding of the patent system, as demonstrated by your comment above to Stan. What do you mean when you say “Patents have not proven to be successful.” That on its face is incorrect, so it seems you are reading about things way over your head and intended for an audience that has familiarity with basic patent and open source issues and then complaining about the article because you yourself are clueless. Your comments about how the USPTO works confirms you know little or nothing about the patent process.

    You say: “If reader(s) is unable to understand what you meant, then you need to work on your writing skills and blame the reader(s)”

    Not true. I will tell you exactly what I told a student once upon a time. The student told me that it was my job to make sure she understood the material. I told her: “my job is to teach and there are just some students who due to their own self limited intellect and lack of desire will never be able to understand.” So it is NOT my job to make sure that every idiot understands what I write. Writing is about knowing who your audience is and writing to that audience. I write different articles for different audiences. The intended audience obviously is far more sophisticated than you.

    -Gene

  23. Vivek Khurana October 14, 2010 11:39 am

    @gene
    If you think if you think your job is to only teach whether student understands or not, then you are not teaching. You are preaching. A teacher is respected because he can even teach an idiot.
    When you are writing for general public you have to send a clear message. Even for idiots. Saying later that I am mis-quoted is an excuse.

  24. Vivek Khurana October 14, 2010 11:46 am

    Please point one example where Free software has been prevented from being used freely ? It is all about attribution. Most closed source companies use the work from free software and do not give credit to the developer. Over and above this, they sell it as there achievements. This is exploitation and free software licenses try to control this. But people with only money as the only measure for everything, fail to understand.
    In the world outside capitalist’s niche, not everything equate to money.

  25. Blind Dogma October 14, 2010 12:11 pm

    In the world outside capitalist’s niche, not everything equate to money.

    Which world would that be?

    New Here,

    So much for the self-imposed exile. i knew you would be back. Must be the Kool-Aid. Have a glass on me.

  26. New Here October 14, 2010 12:30 pm

    @Blind Dogma

    Your misunderstanding. I didn’t self exile, I just dropped out for a time. Please read my reply there again.

  27. Roland October 14, 2010 12:52 pm

    Re. Comment 21: Gene Quinn October 14th, 2010 11:20 am

    Gene

    Many thanks for the unambiguous clarifications.

    I had assumed that you had extracted the copyright clause from a larger license, also from my experience I had interpreted the intent of the clause with respect to the code wrapped around the ‘Software’ slightly differently – which demonstrates the value of getting good legal opinion.

    I think we are in violent agreement that open source comes with strings attached, I however also noted that (from my experience) closed source also comes with strings attached, but then because an organisation has purchased it , so has come through the front door, they are typically more aware of the attached strings, whereas as you point out open source tends to arrive by the back door.

    As for the use of WordPress, I was making comment on Stan’s viewpoint (expressed in comment 14) on what open source is all about, specifically the ‘ denying the intrinsic value of patent rights’. The point I was trying to make (albeit poorly) is that open source has enabled much and specifically this blog, and I do not believe for one moment that you, a patent attorney, would use open source if it implied you subscribe to this viewpoint.

    I look forward to being enlightened (and entertained) by your future blogs.

  28. New Here October 14, 2010 1:29 pm

    @Roland

    Is the idea that open source comes with strings attached, based in the fact that many open source licenses require any change or otherwise contributions be licensed as well and made available ?

    In view of other open source licenses that do not have the same requirement, as the MIT or BSD. Both of these licenses however require that copyright notices be retained in all work of the MIT or BSD code. Requirements are not “strings”.

    Roland, no ‘ denying the intrinsic value of patent rights’, not without the patent owner that enters into such an agreement with an open source project, or happens to without knowledge, include open source in a development set for a patent application. In the latter case I believe it would go, that patent claims would run into problems, this is what I believe Gene has covered if I understand correctly.

  29. Bobby October 14, 2010 2:28 pm

    @Gene
    Yes, there are strings attached with virtually any license, with the WTFPL being about the only exception. However, in this particular case, it just means that you have to put the above notice in a derivative work, not that your derivative work is automatically under the MIT license. It’s worth noting that you are given the right to sublicense. This is a very common license, and its effect on derivative works is very small. Furthermore, this license has no patent obligations.

  30. Gene Quinn October 14, 2010 5:51 pm

    Bobby-

    How much would you bet on your interpretation of the license terms? Would you be willing to risk building a company on a patent foundation that is built upon a copyright foundation that you don’t own?

    If you have to put this license into your software do you think it is reasonable others would interpret it as them having the right to copy, modify, distribute, etc?

    Certainly there are no rights to the underlying copyrights obtained other than the right to create a derivative work, so anyone could use the open source aspects. When you string a bunch open source code together, which is typical, there is no way you could ever prevent others from stringing together that same code because you don’t own the underlying rights.

    So the license is extremely ambiguous because it is extremely short. It could mean any number of things potentially, and what I say here is certainly one reasonable interpretation. It is funny how everyone is reading the license differently and filling in meaning with assumptions. That means the rights are uncertain at best, and one reason it should be avoided like the plague by those seeking proprietary rights and investors who will want to know that you own the rights to the software.

    It all comes down to risk, and investors do not like risk. They prefer certainty. You are just guessing about what this license means, and it is irresponsible for a lawyer to provide legal advice on a guess or hunch.

    -Gene

  31. Gene Quinn October 14, 2010 5:54 pm

    Vivek-

    You say: “Most closed source companies use the work from free software and do not give credit to the developer.”

    That is probably very true. I know lawyers that spend a large part of their day many days working with clients to clear software and then chasing down licenses and advising based on what programmers have co-opted into what was supposed to be proprietary software. This is a huge problem because that means that the copyrights are not owned, at least in those parts, by the company attempting to create proprietary software. It also means that they are violating the license terms and what has been taken would then be a copyright infringement.

    -Gene

  32. Gene Quinn October 14, 2010 5:59 pm

    Vivek-

    In terms of what you say about teaching, you obviously are rather ignorant. There are some people that simply will never understand no matter how good the teacher because they don’t have the aptitude. This student was one of those people. She couldn’t remember the elements to a certain crime, and she wanted her inability to memorize to be my problem. It was her problem. She either didn’t put in enough effort (likely) or she simply had a terrible memory in which case no one could ever help her. A teacher’s job is to facilitate learning, not to guarantee learning. Without effort there can be no learning on the part of the student. Your failure to recognize this truth exhibits an arrogance that is all too familiar with those who want everything handed to them and have to achieve nothing.

    When I write I send a clear message to the audience I am targeting. For you not to understand writing for a certain audience and believe that every article should be written for an idiot without any familiarity is laughably naive. The article is already 1700 words. I go through this over and over when lazy people, such as yourself, complain that an article doesn’t cover certain things. OF COURSE IT DOESN’T! You can’t cover everything in a single article. An article is NOT a treatise! Grow up!

    -Gene

  33. Bobby October 14, 2010 6:27 pm

    It’s not an very ambiguous license, it’s one of the most commonly used licenses in existence, and the responsibilities it entails are well understood. You may not be personally familiar with it, but it’s been subject to quite a bit of review.

    “If you have to put this license into your software do you think it is reasonable others would interpret it as them having the right to copy, modify, distribute, etc? ”
    Not if you make it clear what rights you hold over the software you’ve written through similar notices and EULAs, which even small companies with limited legal council can often do well. It seems unlikely to me that any outside code is going to not have a requirement of an attribution notice.

    “When you string a bunch open source code together, which is typical, there is no way you could ever prevent others from stringing together that same code because you don’t own the underlying rights.”
    If you build a proprietary product off of a mostly FOSS code base with limited improvements, then yes, it is fairly easy for others to get to the same place as you because your improvements were limited. You did less work, so it takes less work for a competitor to get to the same place as you. If you bothered to reinvent the wheel to get to the same destination, your competitor could do less work by using FOSS and get to the same place as you.

  34. Stan E. Delo October 14, 2010 6:45 pm

    New Here writes in part:
    “The responsibility of a programmer is to avoid behavior counter to a client’s requirement(s). This includes doing research that when passed on, a client can seek the legal knowledge to avoid litigation in the future.”

    Why should the programmer care even slightly about the legalities of what they write for their client? They just want to get it written as quickly as possible to improve their profits and get paid as soon as possible. Many times they will not even be aware that what they write is going to the subject for a patent application, and even if they did, why would they feel compelled to tell their client about the OSS portions they used as long as it works, unless the *inventor* asks them directly about the source code? The inventor might have tens of thousands invested or more, only to find out that their patent application is mostly or completely invalided several years later. If the inventor was unaware of the OSS code, how would they know about license requirements?

    Stan~

  35. Bobby October 14, 2010 6:57 pm

    @Stan
    “Many times they will not even be aware that what they write is going to the subject for a patent application, and even if they did, why would they feel compelled to tell their client about the OSS portions they used as long as it works, unless the *inventor* asks them directly about the source code?”
    The part about it being illegal and unprofessional is probably a big concern. Now, they might not explicitly mention that they didn’t write all the code, but they are legally obligated to include a copy of the license notice, so checking for those would be a simple but necessary step. They might not always do that, but that is a problem with the programmer in question, not with FOSS.

  36. Stan E. Delo October 14, 2010 7:15 pm

    @Bobby,

    Just out of curiosty, who would be responsible for busting their *illegal* activities? Granted an irresponsible programmer might not stay in business very long, but would it have to be a civil suit to bring them to task, or maybe the Federal Trade Commission? In either case, it would still be too late when the patent was challenged and invalidated after being granted perhaps 5 years from now. How would you assess the damages they might have incurred?

    Stan~

  37. Bobby October 14, 2010 7:49 pm

    Stan,
    Technically, both the programmer and the company making the software would be held responsible breaking the law. This happened with a Windows USB installation tool written by a third party, but MS quickly addressed the issue and complied with the license requirements. I am not aware what if anything happened afterwards between this third party and MS, but it seems to me that MS could bring some legal action.

    Generally speaking, what happens with FOSS is that complaints are sent with instruction for the options, which are basically to comply with the terms of the license or stop distributing. If it is a large concern and a deal can’t be made, a lawsuit may occur as a last resort, seeking the release of the required source code and perhaps some degree of financial compensation. A lot of times, though, the copyright holders won’t find litigation worthwhile even in the face of continued infringement, and may simply do something similar to FFMPEG’s wall of shame. That’s not to say that the copyright holders of FOSS that has been infringed couldn’t be more aggressive legally, but so far, there hasn’t been much litigation despite lots of infringement occurring.

    Also, I don’t think this is going to invalidate the patent in most cases, although it may weaken the effectiveness of enforcing the patent, since licenses with patent clauses may cause you to grant some degree of licensing to competitors, although to use it they may have to subject themselves to similar terms, depending on the license in question.

  38. Stan E. Delo October 14, 2010 9:23 pm

    Bobby,

    Thanks for the interesting case example, which seems to be saying that it would be a civil case between two private parties, unless I am missing something here. You haven’t named any third party that would be involved in any suits where *illegal* activities might be occuring, which sorta by definition defines activities that infract state or federal laws.

    On the other hand though, a patent practitioner that knowingly files a patent application that they haven’t researched thoroughly enough, or were lied to by way of ommission by others can lose their license to practice law before the USPTO (sanctions) for several years, because either the inventor or the source of the background information is not divulged to the USPTO when it was filed, or failing to inform the said patent office as soon as they became aware of any prior art.

    In especially egregious cases of the attorney or agent seemingly trying to deceive the patent office, an Inequitable Conduct charge might get them kicked out of the legal profession entirely, where the Lionel Hutz defense is not accepted any more. (Ignorance is no excuse) That only pulls their ticket to practice law though, and has nothing to do with satisfying clients that may have incurred significant economic damage due to their incompetence. (The patent office doesn’t enforce anything, as surely you must know)

    So who would enforce it if *illegal* practices were to occur? You forgot to answer that part. An inquiring mind would really like to know…

    Stan~

  39. Anon October 14, 2010 9:30 pm

    a patent application that they haven’t researched thoroughly enough

    Tell me Stan, where in the law is this “enough” requirement?

  40. Stan E. Delo October 14, 2010 10:10 pm

    Anon-
    You will have to ask the Office of Enforcement and Discipline (OED) about that, as I am not certain what constitutes Inequitable Conduct. If it is found that the practitioner has been remiss in their duty of candor, it might be very possible for them to lose their ticket to practice before the USPTO. If you don’t know where enough is, I don’t quite know what to tell you, as I am not a practitioner. Just an inventor. I can’t help but wonder what your motives might happen to be, since you seem to insist on being anonymous. I would respect your opinions a lot more if you actually had the courage to admit who you actually are, but of course that will never happen, like in the case of New Here.

    Snappy responses definately encouraged here, like Brian Liu who completely destroyed the chances for LZ to have even the slightest hope of prevailing in the case of the AG of Washington state suing them unless they promised to stop their practices at least here in WA. I think they are comparing notes a bit before they file a perhaps 6-state class-action law suit, but I have not heard back from my AAG just yet.

    Stan~

  41. Bobby October 14, 2010 10:15 pm

    @Stan
    When I say illegal, I don’t mean criminal, just that what they are doing is not allowed by the law. Civil remedies are used most of the time, although in some cases copyright infringement has been considered a criminal offense.
    I’m not entirely sure how the process would go, especially if a third party deceived the company, but judging from the warnings on DVDs, it would be the FBI prosecuting. The really interesting thing is that virtually all of the infringement that occurs with FOSS is commercial usage on an industrial scale, making the violators the prime candidates for criminal charges, but I don’t think anyone has set a precedent for that yet, and the FOSS community hasn’t really lobbied about how piracy is hurting them. It would have been a hilarious twist, though, in the Sony BMG copy protection scandal, which allegedly used LAME in a non-compliant way on top of other problems that resulted in class actions, if criminal charges for copyright infringement were brought against some of those involved.

  42. Stan E. Delo October 14, 2010 11:01 pm

    Hi Bobby,
    In a lot of cases like DVD’s or other media that are being imported without a license, it is possible in some cases to just shut down the importation by just filing a complaint with the International Trade Commission for about $200 and they will *examine* whether or not the imported products might be infringing existing US patents. In fact it seems as if the ITC is seeming to lead the *examination* process in some senses, as they are required to determine if imported products might actually be infringing something in the US, where the USPTO is hopelessly buried in new inventions, and basically has no right to enforce anything. Since the ITC can block nearly anything for several reasons, they seem to be leading the way as regards what constitutes infringement, which the new management at the USPTO seems to be very aware of.

    Stan~

  43. Anon October 15, 2010 7:52 am

    Stan,

    First, do not confuse the choice to use anonymity with not sticking behind one’s answers. Choosing to ascribe the lowest reason for my anonymity is a poor way to start a discussion and rather reflects more on you than I. There are many reasons to remain anonymous, including having your name associated with a particular firm, or even a government office, not withstanding any use of disclaimers. Try to stick to the substance of the post and do not look for motives that are not there.

    Second, my motivation for asking was not to be coy, but rather, to force you to be more conscience of your postings. Gene has made no secret that the tolerance on this site is rather low for errant postings that may lead people astray in purely legal matters, and your post indicating the level of “retaliation” was stated positively, when it is actually mere conjecture (and incorrect conjecture at that). You indicate that I should check with the OED and I disagree – you should check with the OED before you post on the topic. Please be more careful.