Facebook drops efficient infringement clause from its React software license

“Facebook, Social Media, Internet” by The Digital Artist. Public domain.

In late September, an official blog post published by Menlo Park, CA-based social media giant Facebook (NASDAQ:FB) and penned by Adam Wolff, the company’s engineering director, announced that the company would be adopting a software license agreement known as the MIT License for many of the company’s open source projects. This includes Facebook’s React platform, a Javascript library for building front-end user interfaces on hardware products. The use of the MIT License moves Facebook away from a prior software license known as the BSD + Patents License that included language which put patent owners using the React platform at a serious disadvantage.

Facebook’s decision to move away from the BSD + Patents License came in response to the Apache Software Foundation’s (ASF) declaration of that license as a Category X license. This designation meant that the Facebook license may not be included within products which are also under Apache’s open source software license. Apache’s decision to list the Facebook BSD+Patents License as a Category X license was based on the license’s specification of a patent issue which passes risk downstream to licensees which is imbalanced in favor of the licensor against the licensee.

The September blog post penned by Wolff noted that the decision to change the license agreement and relicense React and other open source products came after “several weeks of disappointment and uncertainty for our community.” Of course, Facebook only has itself to blame for those several weeks of uncertainty. A previous blog post penned by Wolf and published in mid-August defended the use of the license on its products. “We respect third party IP, including patents, and expect others to respect our IP too,” the post reads. Wolff argued that the BSD + Patents License gave engineering teams at Facebook “more room to make meaningful contributions to open source while decreasing our time spent fighting frivolous lawsuits.”

What kind of lawsuits did Facebook find to be frivolous ones? Well, pretty much any lawsuit including a claim for patent infringement. This is well-outlined by an article published on the online blog Medium which examines a clause of the BSD + Patents License that appears to be anti-competitive for other patent owners using the React platform:

“The license granted hereunder will terminate, automatically and without notice, if you (or any of your subsidiaries, corporate affiliates or agents) initiate directly or indirectly, or take a direct financial interest in, any Patent Assertion: (i) against Facebook or any of its subsidiaries or corporate affiliates, (ii) against any party if such Patent Assertion arises in whole or in part from any software, technology, product or service of Facebook or any of its subsidiaries or corporate affiliates, or (iii) against any party relating to the Software.”

The rest of the clause does throw patent owners a very small bone: their license to the React platform won’t be revoked if the patent infringement claim arises as part of a counterclaim in any patent suit filed by Facebook. But this license afforded Facebook a wide berth around any claims of patent infringement from its licensees using React and other platforms. This situation is well-analyzed by another post published by Medium which hypothesizes the effects of the license on licensees. The post notes that the patent infringement clause of the BSD + Patents License is a strong patent retaliation clause that revokes use of the React platform in response to any patent litigation filed against Facebook. Any. Which means if a React licensee has a patent covering a product in an industry that Facebook decides to enter, like home appliances, and the React licensee files suit against Facebook asserting the home appliance patent, Facebook revokes the React license. This would be a major problem for any home appliance manufacturer who uses the React platform to provide its customers with a digital user interface for any smart applications.

It’s more than a little disappointing to see that an efficient infringer has been able to work such a strong protection against patent infringement allegations into its licensing agreements. However, the fact that ASF’s Category X listing forced Facebook’s hand into a better recognition of patent owners’ rights can be seen as a positive move overall. It’s also interesting to note that this push comes from the open source community, a group which isn’t typically seen as overly concerned with patent rights.