The European Union Public License (EUPL) version 1.1 was released and approved by the Open Source Initiative (OSI) on January 9, 2009. A major milestone in the evolution of open source licensing, the EUPL contains some important distinctions that set it apart from other popular open source licenses: it’s written with native language support for all EU member countries, it’s compatible by design with a number of OSI-approved licenses and — also by design — incompatible with the GNU General Public License version 3.0 (GPL v3). Could this possibly be a message to the Free Software Foundation (FSF) and the open source community that there really is a vital, innovative world outside the borders of the United States?

While members of the open source community often bristle at the mention of yet another license, many people have welcomed this one. The EUPL is unique in its encouragement of interoperability, freedom, and lack of license lock-in upon redistribution. By making specific distinctions, it represents a divergence from the typical freedoms afforded by whatever the latest iteration of the GPL may be.

As noted in the Wikipedia entry for the EUPL, the EU had some specific goals in mind when drafting this license:

“With license proliferation a growing problem, the European Union justifies its license as the first open source license to be released by an international governing body. The European Union also wishes to dispel legal uncertainties, real or perceived, in respect of other open-source licenses, such as the GNU General Public License, by creating a software license which takes due account of European Union Law. A third goal of this license is to create an open-source license available into 22 official languages of the European Union, and is sure to conform to the existing copyright laws of each of the 27 Member States of the European Union. Lastly, to dispel fears of license proliferation, the license was developed with other open-source licenses in mind and specifically authorizes covered works to be re-released under the following licenses: GNU General Public License (GPL) v. 2; Open Software License (OSL) v. 2.1, v. 3.0; Common Public License v. 1.0; Eclipse Public License v. 1.0; CeCILL v. 2.0.”

At the same time, the EUPL tries to take a more international view on the enforceability of an agreement that requires oversight in many jurisdictions. Licenses originating in the United States are derivatives of US copyright law, so as far as they’re concerned international considerations are non-existent. While translations of existing FSF licenses are informative and referential, the US English employed is the only contract language.

Why Should You Care?

Both the EUPL and the GPL v3 are copyleft licenses, so some of you may be wondering whether there are any significant differences between them. Choosing the correct license could be as simple as using the GPL v3 if the software is originated in the US, and the EUPL v1.1 if the software is from Europe. Who really cares?

We do, and here’s why: the EUPL v1.1 is conspicuously missing something that could be fairly significant depending upon which side of the Atlantic you happen to live and work. The GPL v3 is not included in the EUPL’s list of “compatible licenses” under which subsequent works can be re-released — a provision included in the EUPL in order to help fight license proliferation. We agree that license proliferation is a growing problem with open source licenses, but why did the EU specifically exclude the GPL v3 from the list?

One explanation for the EUPL’s purposeful incompatibility with the GPL v3 might involve freedom, and what it means to open source licenses. As copyleft licenses, the aim of both the EUPL v1.1 and the GPL v3 is to free the code from proprietary copyright laws. However, the freedoms provided by the GPL v3 may be limited to the US, and so may not be “free” enough for the global community. For example, is it truly freedom if you’re protected from intellectual property claims, but then forced to use a specific license — one not of your own choosing — to distribute your original work? This may be one of the problems that the EU has with the GPL v3. Once a work is created under the GPL v3, all subsequent works will be licensed under it as well. In contrast, works licensed under the EUPL v1.1 can be re-licensed under any of the different licenses on their compatibility list. Perhaps the EU does not want software created under the EUPL v1.1 to be trapped within the confines of the GPL v3 later.

Here’s something else to consider. The GPL was originally derived from US copyright law, which creates a license bias toward issues unique to the United States. It may very well be that the FSF created their license to be specific to the US software community, but that distances it from the global community. There’s a large world of software developers and users outside of the US, and their concerns are different those of US-based developers and users. It makes sense that they want a license that addresses those differences. Many OSI-approved licenses (including but not limited to the GPL v3) do not address a global audience, and it’s a fair assumption that current efforts like the EUPL are just a hint of what is to come in global or regional licensing outside the US.

By excluding the GPL v3 from compatibility with the EUPL, the European Commission is indirectly pushing out the FSF as a presence in open source licenses in Europe. The GPL v3 is the FSF’s license for the 21st century, and it is now incompatible with what may very well become the predominant license in the EU. As the first license to be released by an international governing body, the EUPL has the potential to become widespread not only in Europe but worldwide. The 22 different languages in which the EUPL v1.1 is released also increase the likelihood that usage will spread quite quickly. Given these circumstances, we think it’s pretty significant that the GPL v3 cannot be merged with any code under the EUPL v1.1.

The Players

EUPL v1.1 and the European Union

The European Union Public License (EUPL) v1.1 was released on January 9, 2009. This license was created by the European Commission, the executive branch of the European Union, and is available in all 22 languages of the EU. The European Union, for those who do not know already, is a union of 27 European countries (called Member States) that was established on November 1, 1993. These Member States joined together for various economic and political reasons. Primarily, the partnership allows for easier commerce and trade among the different countries. The creation of the EUPL is another step in unifying and standardizing the products — in this case software products — that are used within the European Union.

By creating a license in multiple languages, with equal validity for all linguistic versions, the EU has created a framework within which future open source projects in the European Union can work. It’s also worth noting that the EUPL is the first license to be released by an international governing body. The original version (EUPL v1.0) was created on January 9, 2007 and its provisions still account for most of the license. Only seven modifications were made to the original license, and these were included primarily for purposes of clarification. The main revisions in the 2009 version of the EUPL allow for other linguistic versions of the license to be created by the European Union, giving it worldwide distribution potential.

GPL v3 and the Free Software Foundation

The GNU General Public License (GPL) v3 was released on June 29, 2007. It was created by the Free Software Foundation (FSF), which is headed by Richard Stallman. The FSF, which was founded on October 4, 1985, is a US-based, non-profit corporation that promotes the free software movement — an ideology that combats US copyright law to allow for modification and redistribution of software code without restriction. According to Richard Stallman: “The free software movement is not merely personal. It is a political movement like the environmental movement, the civil rights movement, etc.”

The original GPL license was released in January of 1989 and we’ve seen two subsequent versions since then. The GPL v3 is considerably different from the GPL v2 (which makes sense, since the GPL has been around much longer than the EUPL). In each version, the FSF attempts to maintain their values while adapting to the current technological situation. The main revisions and concerns in the GPL v3 involve modern topics such as time-shifting restrictions, Digital Millennium Copyright Act (DCMA) specifics, and “tivoization”.

The Differences – An Overview

The primary differences between the EUPL v1.1 and the GPL v3 can be summarized in the following points:

• An EU commission created the EUPL license to be enforceable in the native languages of all the member countries.
• The EUPL’s defined compatibility with other licenses avoids certain downstream licensing conditions.
• The EUPL is purposely incompatible with the GPL v3, although it does allow under certain conditions re-licensing under CeCILL v. 2.0, which is GPL v.3 compatible.
• The EUPL does not contain language on time-shifting restrictions or DCMA-specific language, and it doesn’t address issues of tivoization.
  • Time-shifting is the recording of programming to a storage medium to be viewed or listened to at a time more convenient to the consumer. Typically, this refers to TV programming but can also refer to radio shows via podcasts.
  • The Digital Millennium Copyright Act (DMCA) is a United States copyright law that implements two 1996 treaties of the World Intellectual Property Organization (WIPO). It criminalizes the production and dissemination of technology, devices, or services intended to circumvent measures (commonly known as Digital Rights Management or DRM) that control access to copyrighted works. It also criminalizes the act of circumventing an access control, whether or not there is actual infringement of copyright itself.
  • Tivoization is the creation of a system that incorporates software under the terms of a copyleft software license, but uses hardware to prevent users from running modified versions of the software on that hardware.
• The EU’s license contains none of the GPL’s explicit (and US-biased) patent language.
• The EUPL doesn’t enforce a time limit (like 3 years) for the required distribution of source code — it’s more open-ended. As long as the program is being distributed, the source code will be available.
• The EUPL appears to be simple, clear, and less restrictive than the GPL v3 license. It reads more like the Apache license than the GPL v3. It’s simply formatted, with 15 explicit sections that say what needs to be said, and it contains little apparent excess.

Compatible Licenses

According to article 5 of the EUPL, the “compatible licenses” are:

• GNU General Public License (GNU GPL) v. 2
• Open Software License (OSL) v. 2.1, v. 3.0
• Common Public License v. 1.0
• Eclipse Public License v. 1.0
• Cecill v. 2.0

Summary

Original work, licensing for redistribution, and freedom are concepts that have legal and financial ramifications throughout the world. With the ever-increasing popularity of open source software and the need to protect such works and their associated freedoms, many open source licenses need to evolve in order to address global — or, as in the case of the EUPL, regional — concerns. The EUPL seems to have adapted to this open source climate and has the potential to challenge the GPL by differentiating on a few important key points:

• Some people feel that the FSF is too political, and regional users clearly feel that the organization is overly focused on the United States.
• The EUPL stands up to what some view as prohibitive and confusing constraints of the GPL licenses. Here is a license that appears more friendly to the intention of software openness, without the many constraints (patent, tivioization, US jurisdiction, etc.) that can make licenses too localized, and thus difficult to embrace and support on a broad scale.
• Lastly, in the EUPL there is no mention at all of money or freedom. Freedom means never having to be told you are free.

The EUPL v1.1 is a legal instrument, simple and clear to interpret, with less baggage than the GPL v3, and with the intent to enforce locally while inter-operating with certain key licenses. As the world increasingly sees the value of transparency in code development, it can be argued that licensing needs to be less about a “movement” and more about the proper identification of rights, restrictions, and obligations for use of third party software.

This brings to the forefront concerns about the complexity of open source licensing, and a need for much more clarity. Perhaps the community needs global license templates that can be used across borders, that will span language and continental gaps while still allowing local enforcement and understanding. The EUPL certainly makes an effort to localize the rules surrounding the freedoms of the use of original work, but we need to go further.

The use of open source software components is a simple idea. Software use is governed by just a few things:

• Use: personal, redistribution, modification and redistribution, and contribution to the core project.
• Requirements: maintenance of copyright notice, attribution, indemnification, license-free use of original and included third party work, and availability of source code (not always mandatory, depending on the license).
• Restrictions: regional, limitations of liability, legal jurisdiction, and time limits.

That’s it. While there are more clauses, and more complex ways to describe it, there are only so many ways that software can be used; the Apache license distinctly describes four, and the GPL v2 does not even reference personal use. It seems that software licensing needs to be simplified into a “representative language” that spans the globe, is legally enforceable, and is clear.

A big distinction here is that usually, when we talk about license proliferation, the discussion focuses on yet another derivation of US copyright law in the form of another license written and enforceable only in the US English language. Open source licensing needs to surpass the US English language barrier and address a global audience of users. Real freedom will happen when original works can be shared, with constraints and conditions, in a way that can be understood by users and enforced by courts in all parts of the world. For the global future of open source software, fewer licenses are better, but one license best.

The EUPL shows that by using compatible licenses, a simple message can be communicated, a broader scope of freedoms can be encouraged, and developers can be provided an “out”. It’s our guess that more OSI-approved licenses will eventually evolve to include a compatibility clause like that in the EUPL v1.1, which allows developers to take their code and get away from the current license if they’re unhappy with the way things are going. It remains to be seen if the FSF will embrace this degree of freedom in the future.

Is freedom just another word? No, freedom is choice. And while licensing choice is baked into the EUPL v1.1, it’s not currently afforded to developers modifying GPL v2 and GPL v3 licensed software.

References and Credits

Licenses

EUPL 1.1 — http://ec.europa.eu/idabc/eupl
GPL v3 — http://www.gnu.org/licenses/gpl-3.0.html

Software patents

http://gpl3.blogspot.com/2008/08/gpl-project-watch-list-for-week-of-0822.html

US Copyright

http://gpl3.blogspot.com/2008/06/gpl-project-watch-list-for-week-of-0613.html

Jacobsen: Copyright Case

http://gpl3.blogspot.com/2008/10/gpl-project-watch-list-for-week-of-1010.html
http://gpl3.blogspot.com/2008/01/gpl-project-watch-list-for-week-of-0125.html

The Research Group

The Research Group collects and manages data regarding software policy management, open source licenses, and global software vulnerability management issues. Data and references for this article were researched by Ernest Park and Antony Tran. The Research Group actively takes submissions regarding stories, FOSS issues, and project announcements, and we are grateful to the hundreds of core contributors who have devoted their time and resources at helping us provide up-to-date information. The Research Group has hosted over 80 interns in the last year from the leading schools in the United States. To submit stories and announcements, receive more information on products, or inquire about internships, please write to rdgroup@airius.com.

Remember those New Year’s resolutions? We know, it happens to us every year as well. All those push-ups we promised ourselves—seems like such a long, long time ago now. There’s always next year. But just to make you feel better, we’ve got a ready-made broken resolution solution for you, and it’s much easier to catch up on than anything having to do with Physical Fitness. Do yourself a big, huge, legal favor this year and read our series on Internet Law. Seriously, don’t get caught messing with the top four major intellectual property laws in the United States; it’s so much easier to inform yourself than to defend yourself (or pay someone else to defend you).

Mark Radcliffe and Dianne Brinson are the authors of The Internet Law and Business Handbook. (The book is currently out of print and undergoing revision, but you can reserve a copy of the next edition by sending an email to mradcliffe@sonic.net.) We’ve commissioned them to supply a series of articles to cover most of what you need to know about the legal issues you’ll encounter doing business on the Net. Among the detours into Internet Law they describe, you’ll find the answers to these (and other) burning questions:

• Does copyright protection apply to the work of Celestial Beings?
• How about my work? Beauty and artistic merit aside, does it qualify?
• How do I obtain a copyright?
• How original does “original thought” actually have to be?
• Trademark, copyright – what’s the difference, anyway?
• How secretive is a Trade Secret, and what have I got to do to keep mine securely under wraps?

Mark and Dianne cover a lot of ground here, so we’ll provide you with a quick summary. Sit up and pay attention, now. Internet users in the United States need to be aware of four major intellectual property laws:

• Copyright law
• Patent law
• Trademark law
• Trade secret law

If you’re to avoid ending up on the wrong side of the law, you’ve got to be able to define which category your work falls under, and you’ve got to know how to make the system work for you. Our first article in the series covered copyright law, defining the types of work that are covered, and the standards to which those works must adhere. The authors have come up with some great examples to brighten up the legalese, and they outline the procedures that must be followed in order to protect your own work.

Last month’s article on patent, trademark and trade secret law examined the basics of United States patent law as defined under the Patent Act. What’s covered? What are the standards? How do you protect your work? Read the article for answers to these questions, and you’ll discover the value of novelty, usefulness and (we love this term) non-obviousness, too. If you think you know it all already, go ahead and skip straight to the latest Security Issues, but we remind you that you ignore Internet Law at your peril.

This month’s article on ownership of copyrights is the last in the three-part series. Our legal experts will explain the Copyright Act, as well as touching on ownership regulations for patents, trademarks and trade secrets. If you acquire, make use of, or develop content for the Web, you really do need to understand this stuff. Some of the examples given hit closer to home than is comfortable; as in the story about the Marketing Director who was really pretty darn sure she had the permission she needed to use those photos on her company’s site, or the curious story of the Web Developer and the Shopping Cart.

We want the best for you, we really do. And we sincerely hope that all your Physical Fitness dreams come true—as a matter of fact, we recommend that you get up from your desk and stretch right now.

Better? Good.

Now all you need to do is read the article that follows and you’ll have kept at least one of your New Year’s resolutions. You’ll be thoroughly informed about issues of Internet Law, and that really is, well, big. You can always get back on that diet when you’re finished reading!

Ownership of Copyrights

This article covers the Copyright Act’s ownership rules, and, in less detail, the ownership rules for patents, trademarks, and trade secrets. Ownership rules discussed here apply only in the United States. Other countries have their own rules of intellectual property ownership.

The intellectual property ownership rules discussed in this article are default rules that apply if the parties—employer and employee, employer and independent contractor, Web developer and client—do not reach their own agreement, in writing, on ownership.

Introduction

You need to understand copyright’s ownership rules if you acquire, use, or develop Web content. Here’s why:

The types of material used for Web site content—music; graphics; text; and video, film, and television show clips—are protected by copyright, as are Web site designs and software. If you want to use copyrighted material belonging to a third party on your Web site, generally you need the permission of the copyright owner. Only the permission of the true owner will protect you from an infringement suit. Getting permission from someone who mistakenly believes he or she is the copyright owner will not protect you.

Example: Web Marketing Director saw some photographs she liked on Z Company’s Web site. Director contacted Z Company’s president and got permission to use the photographs on the Web site owned by Director’s company. The photographs were created for Z Company by a freelance photographer. If the copyrights in the photographs are owned by the photographer (likely) and Z Company does not have the right to sublicense the use of the photographs, Z Company cannot authorize Director to use the photographs. Only the photographer can. Getting permission to use the photographs from Z Company will not protect Director if the photographer sues Director for copyright infringement.

If you create Web content or commission freelancers (graphic designers, writers, or photographers, for example) to create Web content, you should give careful consideration to the question who will own the copyright in that content. The exclusive rights of copyright discussed in Internet Law Part I: Copyright Law belong to the copyright owner.

Example: Web Entrepreneur commissioned Graphic Designer to create graphics for a Web site. If Web Entrepreneur owns the copyright in the graphics, then Entrepreneur has the exclusive right to reproduce and modify the graphics for use on another Web site. If Graphic Designer owns the copyright, Entrepreneur needs Graphic Designer’s permission to reproduce and modify the graphics for use on another Web site.

If you are involved in Web site development, either as a developer or a client, you should give careful consideration to the question of who will own the copyright in Web site designs and program code, for the reason just discussed.

Example: Web Developer created a Web site for Client. The Web site includes a shopping cart program. Whether Web Developer can use the shopping cart program in projects for other clients depends on who owns the copyright in the program.

INITIAL OWNERSHIP

Ownership of copyright initially belongs to the author or authors of the work. 17 USC § 201(a).

Example: Sarah, a photographer, took a photograph of the Lincoln Memorial. Sarah is the author of the photograph and the initial owner of the copyright in the photograph.

The “author” is generally the individual who created the work, but there is an exception for “works made for hire.” This exception is discussed in the next section.

THE WORK MADE FOR HIRE RULE

The “author” of a work made for hire is the employer or hiring party for whom the work was prepared. This default ownership rule is known as the work made for hire rule. Unless the parties have agreed otherwise in a signed written document, the employer or hiring party owns the copyright of a work made for hire. 17 USC § 201(b).

There are actually two branches to the work made for hire rule: one covering works made by employees, and one covering specially commissioned works. 17 USC § 101. We discuss these in this section.

Works Made by Employees

A work created by an employee within the scope of his or her employment is a work made for hire. The employer for whom the work is made is the author of the work for copyright purposes and is the owner of the work’s copyright (unless the employee and employer have agreed otherwise).

Example: As part of his job, John, an employee of Big Company’s training division, created original interactive training materials on e-commerce for Big’s marketing staff. Even though John created the training materials, Big is the author for copyright purposes. Big owns the copyright in the training materials (unless John and Big have agreed in a signed contract that John owns the copyright).

The work made for hire rule does not give employers ownership of works made by employees outside the scope of their employment.

Example: Darryl, an engineer at Productions, Inc., does nature scene watercolors in his free time. The work made for hire rule does not apply to Darryl’s watercolors. If Productions wants ownership of the copyrights in the watercolors, it must get an assignment (discussed in “Assignments,” below) from Darryl.

Specially Commissioned Works

The second category of works made for hire is limited to nine types of specially ordered or commissioned works. These are works commissioned for use as:

• A contribution to a collective work.
• Part of a motion picture or other audiovisual work.
• A translation.
• A supplementary work.
• A compilation.
• An instructional text.
• A test or answer material for a test.
• An atlas.
• A sound recording.

For these types of works, if the hiring party and independent contractor creating the work agree in writing, before the contractor begins the project, to designate the work as a work made for hire, the work is a work made for hire. If the parties do not have an agreement to treat the independent contractor’s work as a work made for hire, it’s not a work made for hire.

Example: Game Company hired Don, a software developer, to design the software for Game Company’s new online game (an audiovisual work). Game Company and Don did not agree in writing to consider the software a work made for hire, so the software is not a work made for hire. Don owns the copyright in the software.

Even if the hiring party and independent contractor agree in writing to consider the independent contractor’s work a work made for hire, the work is not a work made for hire unless it falls into one of the nine special categories listed in the first paragraph of this subsection.

Example: Sarah commissioned John, a freelance painter, to do an oil painting of Sarah’s home. Although Sarah and John agreed in writing that the painting would be considered a work made for hire, the written agreement does not make the painting a work made for hire because the painting is not in one of the nine categories of works that can be specially commissioned works made for hire. If Sarah wants to own the copyright, she needs an assignment (discussed in “Assignments,” below) from John.

The rules governing ownership of copyrights in works created before January 1, 1978 (the effective date of the Copyright Act of 1976), were different from the rules described in this article. The 1909 Copyright Act did not distinguish between employees and independent contractors (works created by both independent contractors and employees were automatically owned by the employer or hiring party unless the parties agreed otherwise). In the case Community for Creative Nonviolence v. Reid, 490 US 730 (1989), the U.S. Supreme Court made it clear that the current Copyright Act does distinguish between employees and independent contractors.

The issue in Reid was who owned the copyright in a sculpture created by the artist Reid for the Community for Creative Nonviolence (CCNV). The Court concluded that the work made for hire rule did not apply for two reasons: Reid was not an employee of CCNV, and the sculpture was not one of the types of works that could be designated a work made for hire by written agreement of the parties.

Foreign Copyright Law

The work made for hire rule discussed in this article applies to copyrights in the United States. Other countries have different rules on copyright ownership. Although many countries have rules similar to the first branch of the Copyright Act’s rule (works made by employees), the second branch (specially commissioned works) of the U.S. rule does not exist in most countries.

To obtain international copyright ownership for works that fall within the second branch of the Copyright Act’s work made for hire rule, parties that commission works should obtain assignments of copyrights (see “Assignments,” below) from independent contractors.

JOINT AUTHORSHIP AND OWNERSHIP

According to the Copyright Act, the authors of a joint work jointly own the copyright in the work they create. 17 USC § 201(a). A joint work is defined in Section 101 of the Copyright Act as “a work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole.”

Example: Ann and Bruce worked together to create an e-commerce site, with Ann developing the software and user interface and Bruce developing the content. The work is a joint work, and Ann and Bruce jointly own the copyright.

Of course, if Ann and Bruce worked as employees of an employer rather than as individuals, their employer would be the copyright owner, as discussed in “The Work Made for Hire Rule,” above.

You do not become the author of a joint work merely by contributing ideas or supervision to a work. You do so by contributing material that meets the standards for copyright protection (see “Standards,” in Internet Law Part I: Copyright Law).

Example: Susan suggested that John write a book on how to beat the stock market, and John did so. Susan is not a joint author of John’s book.

Joint Authorship or Not?

Corky Ballas, a competitive dancer, asked a music producer to create a compact disk of music appropriate for dance competitions. Ballas made suggestions about concepts and suggested songs for the recording. When Ballas and the producer parted company, Ballas claimed to be a joint author of the completed CD. The court held that the producer was the sole author, because Ballas had contributed only uncopyrightable ideas and concepts to the project. Ballas v. Tedesco and Ballroom Blitz Music Inc., 41 FSupp2d 531 (DNJ 1999).

When the copyright in a work is jointly owned, according to U.S. law, each joint owner can use or license the work (authorize others to use it) without the consent of the other owner, provided that the use does not destroy the value of the work and the parties do not have an agreement requiring the consent of each owner for use or licensing. A joint owner who licenses a work must share any royalties he or she receives with the other owners.

Many foreign countries (Germany and France, for example) require that all joint owners consent to the grant of a license. Generally, joint ownership is not recommended because of the complications it adds to licensing worldwide rights. In addition, it is unclear what effect the filing of bankruptcy by one joint owner would have on co-owners.

COMMUNITY PROPERTY

In nine states (Arizona, California, Idaho, Louisiana, Nevada, New Mexico, Texas, Washington, and Wisconsin), any property acquired during a marriage is jointly owned by the husband and wife. Whether a copyright in a work created by one spouse during marriage is community property is unclear. In Marriage of Worth, a California state court held that the copyrights in several books created by a man during his marriage were jointly owned by the man and his wife. 195 Ca3d 768 (1987). The court’s reasoning—that the copyrights were community property because they were the result of one spouse’s expenditure of time, effort, and skill during the marriage—could apply to patents, trademarks, and trade secrets as well. However, a federal court in Louisiana recently held that copyrights created by one spouse during a marriage are not community property because treating copyrights as community property would risk damaging the Copyright Act’s goals of predictability and certainty as to copyright ownership and national uniformity. Rodrigue v. Rodrigue, 55 FSupp2d 534 (ED La 1999).

ASSIGNMENTS

A transfer of the ownership of a copyright is known as an assignment. When a copyright is assigned, the assignee (individual or company to whom it is assigned) becomes the owner of the exclusive rights of copyright in the protected work. (These rights are discussed in “The Exclusive Rights,” in Internet Law Part I: Copyright Law.)

Example: Tom, an individual working on his own, created Web development tool software and then assigned the copyright in the software to Software Publisher. After the assignment, Software Publisher has the exclusive right to reproduce and publicly distribute the software. If Tom starts selling the software, he will be infringing the Software Publisher’s rights as copyright owner.

The ownership of copyright may be transferred in whole or in part. 17 USC § 201(d). Examples of partial transfers are an assignment of the copyright for a term of ten years (time limitation) and an assignment limited to California (geographic limitation). In addition, the individual exclusive rights (reproduction, modification, and so forth) can be transferred.

Assignments are common in many industries—for example, music composers often assign copyrights in their compositions to music publishers.

An assignment is not valid unless it is in writing and is signed by the owner of the rights conveyed or the owner’s authorized agent. 17 USC § 204(a).

Is an Email a Signed Writing?

So far, only one court has ruled on the question of whether an email satisfies the Copyright Act’s “signed writing” requirement. That court held that the email at issue in that case was not “signed.” Ballas v. Tedesco and Ballroom Blitz Music Inc., 41 FSupp2d 531 (DNJ 1999). Until this issue is clarified—either through amendment to the Copyright Act or through a general federal electronic records law—don’t rely on emails to satisfy the “signed writing” requirement. (A federal electronic records law is likely to be passed by late 2000.)

An assignment can be recorded in the Copyright Office to give others “constructive notice” of the assignment. Constructive notice is a legal term that means you are presumed to know a fact (because it is a matter of public record) even if you have no actual knowledge of the fact.

Recording an assignment in the Copyright Office to give constructive notice protects the assignee from future conflicting transfers. An assignment that is recorded properly within one month after its signing prevails over a later assignment. If the assignment is signed outside the U.S., the assignee has two months to record it. 17 USC § 205(d).

Example: Songwriter assigned the copyright in her song to Music Publishing Company in Boston on August 1, 1993. On August 15, 1993, Songwriter assigned the copyright in the same song to World Enterprises. So long as Music Publishing recorded its assignment properly in the Copyright Office by September 1, Music Publishing owns the copyright because its assignment prevails over Songwriter’s later assignment to World Enterprises.

A properly recorded assignment even prevails over an earlier assignment that was not recorded if the later assignment meets two criteria:

• The later assignment was taken in good faith and without notice of the earlier assignment.
• The assignee paid money or something of value for the assignment or made a promise to pay royalties.

Example: Author assigned the copyright in his novel to Publishing, Inc. on November 1, 1993. Publishing, Inc. did not record the assignment. On January 15, 1994, Author assigned the copyright in the same novel to Media, Inc. for $10,000. Media, Inc. recorded its assignment in the Copyright Office. So long as Media, Inc. acted in good faith and did not know or have reason to know about Author’s 1993 assignment to Publishing, Inc., Media, Inc. owns the copyright. The assignment to Media, Inc. prevails over Author’s earlier assignment to Publishing, Inc.

LICENSES

A license is a copyright owner’s grant of permission to use a copyrighted work in a way that would otherwise be copyright infringement. A copyright owner who grants a license is known as a licensor. A party receiving a license is known as a licensee.

Implied in every license is a promise by the licensor to refrain from suing the licensee for infringement based on activities within the scope of the license.

A copyright license can be exclusive or nonexclusive. An exclusive license is a license that cannot overlap another grant of rights.

Example: Author granted Publisher the exclusive right to sell Author’s novel in the United States. She granted Movie Developer the exclusive right to create and distribute a movie version of the novel. Both Publisher and Developer have exclusive licenses. There is no overlap between the two licenses.

Under copyright law, an exclusive license is considered a “transfer of copyright ownership.” 17 USC § 101. An exclusive license, like an assignment, is not valid unless it is in writing and signed by the owner of the rights conveyed. A nonexclusive license is valid even if it is not in writing.

No Writing, No Case

During the Cannes Film Festival, New World Entertainment orally agreed to grant Television Espanola the exclusive right to broadcast the television show Spiderman in Spain. Written documents were to be prepared by Television Espanola later. When Television Espanola delivered the documents to New World for signing, New World refused to sign, because by then it had granted the broadcast rights for Spain to another party. Television Espanola sued New World for breach of contract. Television Espanola lost the case because oral exclusive copyright licenses are unenforceable. Radio Television Espanola S.A. v. New World Entertainment, Ltd., 183 F3d 922 (9th Cir 1999).

An exclusive license, like an assignment, can be recorded in the Copyright Office to give constructive notice. Recording the exclusive license protects the license against unrecorded earlier transfers of copyright ownership and against later transfers. (See “Assignments,” above.)

TERMINATION RIGHT

The author of a work other than a work made for hire has the right to terminate any license or assignment granted on or after January 1, 1978 during a five-year period that starts thirty-five years after the grant was made. If the grant involves the right to distribute the work to the public, the termination period begins thirty-five years after distribution begins or forty years after the grant was made, whichever is earlier. 17 USC § 203.

For works published before January 1, 1978, a different rule applies to pre-1978 licenses and assignments: The five-year termination period begins fifty-six years after the work was published. 17 USC § 304(c). For older works in their renewal term in 1998 for which the termination right had expired before 1998, there is an additional five-year termination period beginning at the end of seventy-five years from the date the copyright was originally secured. 17 USC § 304(d).

The termination right cannot be waived in advance. If the author dies before the termination period begins, the termination right can be exercised by the author’s widow or widower, children, and grandchildren. If none of these people are alive at the time the termination right can be exercised, the right can be exercised by the author’s executor, administrator, personal representative, or trustee.

OWNING A COPY OF A WORK

Copyright law distinguishes the ownership of a copy of a protected work (a print of a photograph, a compact disc, a book, a diskette) from ownership of the intangible copyright rights. The transfer of a copy of a work does not transfer any rights in the copyright. Thus, purchasing a book (a copy of a literary work, in copyright terminology) does not give you permission to make copies of the book and sell those copies.

There are several exceptions to the principle that the transfer of a copy of a work does not transfer copyright rights. We’ll discuss the most important ones in the rest of this section.

Displaying a Copy

The owner of a lawfully made copy of a work has the right to display the copy publicly, “either directly or by the projection of no more than one image at a time, to viewers present at the place where the copy is located.” 17 USC § 109(c).

Making a Backup Copy

It is not infringement for the owner of a copy of a computer program to make another copy of the program if doing so is necessary to use the program or for archival purposes. 17 USC § 117(a).

“First Sale” Doctrine

The owner of a lawfully made copy of a work has the right to resell or otherwise dispose of possession of that copy. This exception to the distribution right is known as the “first sale doctrine.” 17 USC § 109(a).

Example: Don bought a copy of Publisher’s new book on Web design. Don can resell his copy of the book. The first sale doctrine gives him that right.

Sale or License?

The first sale doctrine is only triggered by a sale of a copy of a work, not by a license. Software and database products, whether delivered online or in tangible form, are generally licensed rather than sold. Licenses allow software suppliers to tailor products to specific markets. A multiuser site license, for example, provides different use rights and carries a different price from a single-user license. Software and database suppliers also use licenses to obtain protection for factual information and prohibit reverse engineering.

For mass-marketed software and databases delivered in tangible form (diskette or CD-ROM), licenses generally take the form of “shrink wrap” agreements contained on or in the product packaging. Some people maintain that shrink wrap agreements do not create binding contracts because they are “contracts of adhesion” (contracts based on “offers” that give the consumer no meaningful choice). They believe that the typical transaction wherein a consumer acquires a copy of mass-market software or database material is a sale, triggering the first sale doctrine.

Some courts agree with this analysis. The Court of Appeals for the Fifth Circuit held that an end-user software license prohibiting reverse engineering was a contract of adhesion. Vault Corp. v. Quaid Software Ltd., 847 F2d 255 (5th Cir 1988). The Court of Appeals for the Third Circuit also held shrink wrap licenses invalid. Step-Saver Data Systems, Inc. v. Wyse Technology, 939 F2d 91 (3d Cir 1991). However, more recently, the Seventh Circuit Court of Appeals held that shrink wrap licenses are enforceable unless their terms are objectionable on grounds applicable to contracts in general. ProCD, Inc. v. Zeidenberg, 86 F3d 1447 (7th Cir 1996). The court noted that even though the consumer in this case could not review the license terms before concluding the transaction, ProCD’s license gave the consumer the right to reject the product if the consumer found the license terms unsatisfactory.

Sale or License Transaction?

Sometimes the documents used in a transaction use “sale” terminology and “license” terminology, making it unclear whether the transaction is a sale triggering the first sale doctrine or not. In Adobe Systems Inc. v. One Stop Micro Inc., 84 FSupp2d 1086 (ND Cal 2000), Adobe sued a company that had acquired copies of “education versions” (stripped-down, less expensive versions) of Adobe products, removed the “education version” labels, and sold the products to consumers. The defendant claimed that it had a right to distribute the software because it had purchased the copies from educational resellers who had purchased the copies. The reseller agreement used the word “purchase.” Other language in the reseller agreement indicated that Adobe was only granting licenses to educational resellers. The court found that the reseller agreement was a license, so the first sale doctrine was not triggered between Adobe and the educational resellers. The court held that the defendant infringed Adobe’s copyrights by distributing the products without a license.

PATENTS, TRADEMARKS, AND TRADE SECRETS

Patent law does not have a work made for hire rule. Patentable inventions created by employees within the scope of their employment are owned by the employee. However, the employee may have a legal obligation to transfer ownership to the employer under the patent law’s “hired to invent” doctrine. This doctrine provides that when an employee is hired to perform research or solve a specific problem, the employer is entitled to get an assignment of a patent received by the employee on the results of the research. Generally, as a condition of employment, employers require employees to agree to assign their interests in patentable inventions to the employer. The Patent Act implicitly recognizes the validity of such agreements, providing that a patent may be granted to the assignee of the inventor.

A trademark is owned by the first party to use it in connection with goods or services or the first to apply to federally register it. A trademark can be owned by an individual, company, or any other legal entity.

An employer or hiring party generally owns trade secrets developed by employees and by independent contractors who are hired to invent.

Ownership of patents, trade secrets, and trademarks, like the ownership of copyrights, can be assigned. As with copyrights, owners of these types of intellectual property frequently grant licenses authorizing others to do things that would otherwise violate the owner’s exclusive rights.

Broken those New Year’s resolutions yet? Well, we didn’t really care about them anyway. Except for the one we assigned you last month (hint: it’s much easier to keep than anything having to do with Physical Fitness). Do yourself a big, huge, legal favor this year and read our three-part series on Internet Law. Seriously, don’t get caught messing with the top four major intellectual property laws in the United States; it’s so much easier to inform yourself than to defend yourself (or pay someone else to defend you).

Mark Radcliffe and Dianne Brinson are the authors of The Internet Law and Business Handbook. (The book is currently out of print and undergoing revision, but you can reserve a copy of the next edition by sending an email to mradcliffe@sonic.net.) We’ve commissioned them to supply a series of articles to cover most of what you need to know about the legal issues you’ll encounter doing business on the Net. Among the detours into Internet Law they describe, you’ll find the answers to these (and other) burning questions:

• Does copyright protection apply to the work of celestial beings?
• How about my work? Beauty and artistic merit aside, does it qualify?
• How do I obtain a copyright?
• How original does “original thought” actually have to be?
• Trademark, copyright – what’s the difference, anyway?
• How secretive is a Trade Secret, and what have I got to do to keep mine securely under wraps?

Mark and Dianne are covering a lot of ground, so here’s a quick summary. Sit up and pay attention, now. Internet users in the United States need to be aware of four major intellectual property laws:

• Copyright law
• Patent law
• Trademark law
• Trade secret law

If you’re to avoid ending up on the wrong side of the law, you’ve got to be able to define which category your work falls under, and you’ve got to know how to make the system work for you. Last month’s article covered copyright law, defining the types of work that are covered, and the standards to which those works must adhere. The authors provide some great examples to brighten up the legalese, and they outline the procedures that must be followed in order to protect your own work.

This month’s article on patent law, trademark law and trade secret law examines the basics of United States patent law as defined under the Patent Act. What’s covered? What are the standards? How do you protect your work? You’ll find answers to these questions, as well as discovering the value of novelty, usefulness and (we love this term) non-obviousness. If you think you know it all already, go ahead and skip straight to the latest Security Issues, but we remind you that you ignore Internet Law at your peril.

Consider this: think you can patent an abstract idea? How about the discovery of a scientific principle, or a natural phenomenon? Easy, you say – of course you can’t patent, say, the discovery of the electricity contained in the lightning bolt that went right through you at the gas pump the other day, shocking you into a brilliant abstract idea for how to build a better mousetrap. Well, no. But you can patent the mousetrap. What’s more, if you don’t patent the mousetrap, the Emergency Room intern who was party to your crazed babbling while you were being treated for lightning-caused injuries might; and sure enough – before you know it you’ll be washed up; toiling away in obscurity and regaling your cynical grandchildren with tales of how you almost made a fortune.

To think you could have had all that money, if only you’d read this article.

Next month we’ll cover copyright ownership. Our legal experts will explain the Copyright Act, as well as touching on ownership regulations for patents, trademarks and trade secrets. If you acquire, make use of, or develop content for the Web, you really do need to understand this stuff. Some of the examples given hit closer to home than is comfortable; as in the story about the Marketing Director who was really pretty darn sure she had the permission she needed to use those photos on her company’s site, or the curious story of the Web Developer and the Shopping Cart.

As part of our continuing effort to help you keep at least one promise to yourself in 2009, we provide you with this next installment on Internet Law. If you develop or deal in Web content, it’s much more important to the community that you inform yourself about these legal issues, than it is that you have washboard abs, or that you quit drinking all that Sangria. Avail yourself of Mark & Dianne’s legal know-how! We really don’t want to have to say we told you so…

Patent Law

Introduction

Patent law in the United States is based on a federal statute, the Patent Act. States are prohibited from granting protection similar to that provided by the Patent Act.

Types of Works Protected

Patent law protects inventions (utility patents) and ornamental designs for articles of manufacture (design patents).

Inventions protected by utility patents include any new and useful process, machine, manufacture, or composition of matter. Inventions can be electrical, mechanical, biotechnology or chemical in nature. Examples of inventions protected by utility patents are a microwave oven, genetically engineered bacteria for cleaning up oil spills, a computerized method of running cash management accounts, and a method for curing rubber.

Internet-related inventions protected by utility patents include communications protocols, data compression techniques, interfaces, networking methods, encryption techniques, interfaces, online payment systems, and information processing and retrieval technologies. In the area of e-commerce, patentable inventions and processes include electronic postage, electronic cash, and e-commerce business methods (discussed below).

Examples of manufactured articles protected by design patents are a design for the sole of running shoes, a design for sterling silver tableware, and a design for a water fountain.

Standards

There are strict requirements for granting utility patents and design patents. We’ll discuss the requirements in this section.

Design Patents

To qualify for a design patent, a design must be new, original, and ornamental. Design patents are generally not suitable for protecting elements of Internet-related software processes. Design patents are considered rather narrow intellectual property protection because they are limited to the ornamental appearance of an article. Owners of design patents rarely sue to enforce their patents against infringers.

Utility Patents

To qualify for a utility patent, an invention must be new, useful, and “nonobvious.”

To meet the novelty requirement, the invention must not have been known or used by others in this country before the applicant invented it, and it also must not have been patented or described in a printed publication in the U.S. or a foreign country more than one year before the application date. The philosophy behind the novelty requirement is that a patent is issued in exchange for the inventor’s disclosure to the public of the details of his invention. If the inventor’s work is not novel, the inventor is not adding to the public knowledge, so the inventor should not be granted a patent.

Meeting the useful requirement is easy for most inventions. An invention is useful if it can be applied to some beneficial use in society.

To meet the nonobvious requirement, the invention must be sufficiently different from existing technology and knowledge so that, at the time the invention was made, the invention as a whole would not have been obvious to a person having ordinary skill in that field. This requirement makes sure patents are only granted for real advances, not for mere technical tinkering or modifications of existing inventions by skilled technicians.

First to Invent or First to File?

Who gets the patent if two inventors, working independently of each other, achieve patentable results around the same time? In the United States, the patent goes to the first person who invented the claimed subject matter (even if the first to invent was not the first to file a patent application). Only the U.S. has a first-to-invent system. In other countries, the first person who files a patent application gets the patent, even if he or she is not the first to invent the claimed subject matter.

It is difficult to obtain a utility patent. Even if the invention or process meets the requirements of novelty, utility, and nonobviousness, a patent will not be granted if the invention was patented or described in a printed publication in the U.S. or a foreign country more than one year before the application date, or if the invention was in public use or on sale in the U.S. for more than one year before the application date. This rule is known as the “statutory bar.” If you think your technology might be patentable, you should contact a patent attorney before you display or distribute your invention. The one-year grace period following disclosure of the invention is available only in the U.S. In most other countries, the patent application must be filed prior to any public disclosure of the invention.

“Printed Publications” on the Internet

In applying the statutory bar rule, material is considered a “printed publication” if it has been sufficiently accessible to that portion of the public interested in the particular field. Presumably, material made available on the Internet could count as a “printed publication.” Contact a patent attorney before publishing information about potentially patentable material on the Web.

Abstract ideas and mental conceptions are not patentable. Discoveries of scientific principles, laws of nature, and natural phenomena are not patentable (although applications of such discoveries are). Mathematical algorithms that have not been reduced to some type of practical application have been held to be unpatentable. However, a claim to a system or method that recites a mathematical algorithm and produces “a useful, concrete and tangible result” may be patentable. State Street Bank & Trust Co. v. Signature Financial Group, 149 F3d 1368 (Fed Cir 1998), cert. denied, 525 US 1093 (1999). The software process involved in the State Street Bank case was used by a computer system to recompute the share prices of a pool of mutual funds after each day’s trading activities ended, taking into account the day’s gains and losses and expenses attributable to each mutual fund. The final share prices were the “useful, concrete and tangible result.”

Until recently, methods of transacting business were thought not to be patentable. However, in the State Street Bank case, the court made it clear that systems or methods which implement business methods are patentable if they meet the requirements of novelty, usefulness, and nonobviousness.

You’ve probably read about new patents being issued for Internet-related methods of doing business. Here are a few:

• CyberGold’s patent for a method that rewards customers who receive online ads
• Netcentives’ patent for rewarding online purchasers with airline frequent-flyer miles
• Priceline.com’s patent for reverse auctions
• Open Market’s patents related to secure online credit-card payments
• Amazon.com’s patents on “one-click” technology and affiliate programs

Some people think that business methods should not be patentable. In State Street Bank, the Court of Appeals for the Federal Circuit, which reviews all patent appeals, held that processes which are otherwise patentable subject matter are not rendered unpatentable because they involve business methods. The Supreme Court, by denying certiorari, declined to review the position taken by the Court of Appeals. Unless Congress amends the Patent Act, processes involving business methods are patentable. However, they must meet the stringent requirements for patent protection discussed earlier in this section. The Patent and Trademark Office is now subjecting business methods patents to a second-level review.

Procedure for Getting Protection

Patent protection is obtained by demonstrating in an application filed with the U.S. Patent and Trademark Office, www.uspto.gov, that the invention meets the stringent standards for grant of a patent. The patent application process is an expensive, time-consuming process (it generally takes at least two years). Although you can file a patent application yourself, the application process is complex. You should consider using an experienced patent attorney or patent agent (a non-lawyer who has passed the special patent bar exam given by the U.S. Patent and Trademark Office).

If you want to be able to claim “patent pending” status without undertaking the expense and paperwork involved in a regular patent application, consider filing a “provisional patent application” (PPA). A PPA remains in effect for one year. The PPA filing date can be used to prove that the invention described in the PPA document predates other inventions in the field.

Exclusive Rights

A patent owner has the right to exclude others from making, using, selling, offering to sell, or importing the patented invention or design in the United States during the term of the patent. Anyone who makes, uses, sells, offers to sell, or imports a patented invention or design within the United States during the term of the patent without permission from the patent owner is an infringer—even if he or she did not copy the patented invention or design or even know about it.

Example: Developer’s staff members, working on their own, developed software for manipulating images in multimedia works. Although Developer’s staff didn’t know it, Inventor has a patent on that method of image manipulation. Developer’s use of the software infringes Inventor’s patent.

Duration

Under current law (effective June 8, 1995), utility patents are granted for a period of twenty years from the date the patent application was filed but in many countries you need to pay “maintenance fees” to keep the patent in force.

Example: Amazon.com, Inc. was issued a patent on its affiliates program on February 22, 2000. The patent application was filed on June 27, 1997. The patent will expire in June 2017.

Under prior law, patent protection lasted seventeen years from the date the patent was issued. Under the current law, if a patent application is pending for longer than three years, the patent’s term can be extended to give the applicant seventeen years to enjoy the patent.

Example: Inventor filed a patent application on June 15, 1997. She was granted a patent on December 15, 2000. Her term can be extended so that her patent will not expire until December 2017.

The extension is available only if the delay is not the fault of the applicant.

For utility patents in existence prior to June 8, 1995, the patent term is the greater of seventeen years from the date of issue (the term under prior law) or twenty years from the application filing date. Design patents are granted for a period of fourteen years.

The patent application must contain a written description of the invention and how to make and use the invention in such complete terms as to enable others to make and use it. Once a patent is issued, this information—known as the disclosure—becomes available to the public, as do the patent’s “claims” (patentee’s defined legal rights). Once the patent on an invention or design has expired, anyone is free to make, use, or sell the invention or design.

The Patent and Trademark Office maintains a free online searchable database of U.S. patents issued since January 1, 1976 at www.uspto.gov. Google has compiled a free searchable database of US patents issued between 1790 and 2006 available at www.google.com/patents. Commercial services such as Micropatent (www.micropatent.com) include pre-1971 patents in their databases. Patents may also be searched at Patent and Trademark Depository Libraries located throughout the U.S. Information on the libraries is available at www.uspto.gov.

Sample Specification and Claim Language

The specifications section of Amazon.com’s affiliates program starts with this description: “The present invention provides a software system and method for enabling an Internet sales entity . . . to efficiently market and sell goods in cooperation with Web sites or other network sites of respective business partners, referred to herein as ‘associates’.” The first claim starts this way: “A method of selling items with the assistance of associates, the method comprising: providing a Web site system that includes a browsable catalog of items and provides services for allowing customers to electronically purchase the items . . .” This patent is Patent 6,029,141, “Internet-based customer referral system.”

While most countries publish patent applications, Congress has only recently changed the U.S. Patent Act to allow the Patent and Trademark Office to publish patent applications. Effective November 29, 2000, the Patent and Trademark Office will publish patent applications eighteen months after they are filed, unless the applicant certifies that foreign patent protection is not being sought in a country that requires publication of applications eighteen months after filing. The publication provision does not apply to applications for design patents.

Limitations on Exclusive Rights

There are two major limitations on the patent owner’s exclusive rights. They are discussed in this section.

Functionally Equivalent Products

A patent owner can exclude others from making, using, or selling products or using processes that do substantially the same work as the patented invention in substantially the same manner. However, a patent does not protect the patent owner from competition from functionally equivalent products or processes that work in different ways.

Example: Microco owns a patent covering a laser printer. While Microco can prevent others from making, using, or selling laser printers that work in substantially the same manner as Microco’s printer, it cannot prevent others from making, using, or selling laser printers that operate in a different manner.

Invalidation

The validity of an issued patent is subject to challenge in an infringement proceeding or a re-examination proceeding. Defendants in infringement suits usually raise the defense of patent invalidity, asserting that the invention covered by the patent was not novel or nonobvious. It is not unusual for a patent infringement suit to result in a determination that the U.S. Patent and Trademark Office made a mistake in granting the patent.

Patent Validity

Patent invalidity is certain to be an issue in infringement suits to enforce e-commerce business methods patents. For example, when Amazon.com sued Barnesandnoble.com for infringing Amazon’s “One-Click Shopping” patent, Barnesandnoble.com’s defenses included patent invalidity. Barnesandnoble.com maintained that One-Click Shopping was not novel or nonobvious—and that the patent examiner who granted the patent to Amazon.com would have realized that had the examiner had all the relevant “prior art” available to him when he reviewed Amazon’s patent application.

Avoiding Infringement

New Internet-related and e-commerce patents are being granted in record numbers. If you learn of a patent and are concerned that your operations may infringe it, get advice from a patent attorney.

Consulting a patent attorney is particularly important if your potentially infringing operations are still in the planning stages. Based on the legal advice you receive, you may decide to modify your operations to avoid infringement—or you may decide to get a license from the patent owner. Avoid investing more money or time in your plans until you get legal advice.

If you learn that a patent has recently been granted on a method of doing business you are already using, you may have an “early inventor” defense (also known as a “first inventor” defense). The early inventor defense was added to the Patent Act in late 1999, after the State Street Bank case (discussed earlier in this section) was decided. Prior to that decision, business methods were thought not to be patentable. Now thousands of business methods patent applications are being filed. The early inventor defense, applicable only to business methods patents, is a complete defense to infringement for those who meet two requirements:

• Commercially used the subject matter covered in the patent prior to the patentee’s patent application date.
• Acting in good faith, “reduced the subject matter to practice” (executed the invention) at least one year before the patentee’s application filing date.

“Submarine patents” have long been a concern in fast-moving fields. A submarine patent is one that remains secret until it is issued, by which time competitors and other companies have made substantial investments to use the technology covered by the new patent. There is nothing you can do to eliminate the risk of submarine patents. However, the fact that many patent applications will now be published eighteen months after they are filed helps to reduce the risk.

If you are concerned that someone else is going to apply for a patent on a business method they and you are already using on the Internet, take comfort in the statutory bar mentioned earlier in this section. No patent can be granted on an invention that was in public use or on sale in the U.S. for more than one year prior to the patent application date.

Trademark Law

Introduction

Trademarks and service marks are words, names, symbols, or devices used by manufacturers of goods and providers of services to identify their goods and services, and to distinguish their goods and services from goods manufactured and sold by others.

Example: The trademark FrontPage is used by Microsoft Corporation to identify the company’s Web development software and to distinguish its software from other vendors’ Web development software.

For ease of expression, we will use “trademark” in this article to refer to both trademarks (used on goods) and service marks (used for services).

For trademarks used in commerce, federal trademark protection is available under the federal trademark statute, the Lanham Act. Many states have trademark registration statutes that resemble the Lanham Act, and all states protect unregistered trademarks under the common law (nonstatutory law) of trademarks.

Types of Works Protected

Examples of words used as trademarks are Kodak for cameras and Burger King for restaurant services. Examples of slogans used as trademarks are Fly the Friendly Skies of United for airline services and Get a Piece of the Rock for insurance services. Examples of characters used as trademarks are Pillsbury’s Dough Boy for baked goods and Aunt Jemima for breakfast foods.

Sounds can be used as trademarks, such as the jingle used by National Public Radio. Product shapes and configurations—for example, the distinctively shaped bottle used for Coca-Cola—can also serve as trademarks.

Standards

Trademark protection is available for words, names, symbols, or devices that are capable of distinguishing the owner’s goods or services from the goods or services of others. A trademark that merely describes a class of goods rather than distinguishing the trademark owner’s goods from goods provided by others is not protectible.

Example: The word “corn flakes” is not protectible as a trademark for cereal because that term describes a type of cereal that is sold by a number of cereal manufacturers rather than distinguishing one cereal manufacturer’s goods.

A trademark that resembles a trademark already in use in the U.S. so closely that it is likely to cause confusion or mistake is not protectible. Geographically descriptive marks—”Idaho” for potatoes grown in Idaho—are not protectible trademarks for products that originate in the geographical area (all Idaho potato growers should be able to use “Idaho” in connection with selling their potatoes). Geographically misdescriptive marks that are deceptive are not protectible.

Example: Hiromichi Wada, the owner of a Michigan leather goods shop, attempted to federally register the name New York Ways Gallery for leather goods. The Patent and Trademark Office refused to register the name because it thought the public would assume Wada’s goods were from New York. The Court of Appeals for the Federal Circuit upheld the Patent and Trademark Office’s decision. In re Hiromichi Wada, 194 F3d 1297 (Fed Cir 1999).

Procedure for Getting Protection

The most effective trademark protection is obtained by filing a trademark registration application in the Patent and Trademark Office, www.uspto.gov. Federal law also protects unregistered trademarks, but such protection is limited to the geographic area in which the mark is actually being used.

Federal Protection

Federal registration is limited to trademarks used in interstate commerce (or intended for use in interstate commerce). Before November 1989, a trademark application could be filed only after the trademark’s owner had actually used the trademark in commerce. Under current law, a person who has a “bona fide” intention to use a trademark in commerce may apply to register the trademark.

For federally registered marks, the use of notice of federal registration is optional. A federal registrant may give notice that his or her trademark is registered by displaying with the trademark the words “Registered in U.S. Patent and Trademark Office” or the symbol ®.

State Protection

State trademark protection under common law is obtained simply by adopting a trademark and using it in connection with goods or services. This protection is limited to the geographic area in which the trademark is actually being used.

State statutory protection is obtained by filing an application with the state trademark office. Those relying on state trademark law for protection cannot use the federal trademark registration symbol, but they can use the symbol ™ (or, for a service mark, ℠).

Domain Names as Trademarks

The mere registration of a domain name does not convey trademark rights. However, if you use your domain name to identify your goods or services—using it in ads for your e-commerce site, for example—it acquires trademark protection.

Exclusive Rights

Trademark law in general, whether federal or state, protects a trademark owner’s commercial identity (goodwill, reputation, and investment in advertising) by giving the trademark owner the exclusive right to use the trademark on the type of goods or services for which the owner is using the trademark. Any person who uses a trademark in connection with goods or services in a way that is likely to cause confusion is an infringer. Trademark owners can obtain injunctions against the confusing use of their trademarks by others, and they can collect damages for infringement.

Example: Distributed Learning Company is selling a line of interactive training products under the trademark Personal Tutor. If Giant Multimedia Company starts selling interactive training products under the name Personal Tutor, purchasers may think that Giant’s products come from the same source as Distributed Learning’s products. Giant is infringing Distributed Learning’s trademark.

One of the most important benefits of federal registration of a trademark is the nationwide nature of the rights obtained. For the registrant, federal registration in effect reserves the right to start using the mark in new areas of the U.S.

Example: In March 1999, Small Multimedia Company, a California corporation, obtained a federal trademark registration on the trademark Abra for computer games. Small Multimedia did not begin using the trademark on computer games in New York until 2000. In September 1999, Giant Company started using Abra on computer games in New York. Because Small Multimedia’s federal registration gives it a right to use Abra throughout the United States that is superior to Giant’s right to use Abra, Small Multimedia can stop Giant from using Abra on computer games in New York—even though Giant started using Abra in New York before Small Multimedia did.

A trademark owner’s rights under state trademark law (and the rights of an unregistered trademark owner under federal law) are generally limited to the geographical area in which the owner has used the trademark.

Example: (For this example, we changed just one fact from the previous example.) Small Multimedia Company did not get a federal trademark registration. Now Giant’s right to use Abra on computer games in New York is superior to Small Multimedia’s right to use Abra on computer games in New York, because Giant was the first to actually use the trademark on computer games in New York.

Internet Use

In the last example, what if Small Multimedia Company, the first company to use Abra on computer games, sold its games on a Web site? People anywhere in the world could view the Web site. Does that mean that Small Multimedia was using Abra throughout the world? We don’t know the answer. It is unclear how the above rule would apply when a trademark is protected only under state or common law and is used on the Internet.

Duration

A certificate of federal trademark registration remains in effect for ten years, provided that an affidavit of continued use is filed in the sixth year. A federal registration may be renewed for any number of successive ten-year terms so long as the mark is still in use in commerce. The duration of state registrations varies from state to state. Common law rights endure so long as use of the trademark continues.

Limitations of Exclusive Rights

Trademark law does not give protection against use of the trademark that is unlikely to cause confusion, mistake, or deception among consumers, but dilution laws may provide such broader protection.

Example: Western Software has a federal registration for the use of Flap on Web development tool software. If Giant Company starts using Flap on its desktop publishing software, Giant may be infringing Western Software’s trademarks because consumers may think the desktop publishing software and the Web development tool software come from the same source. If Giant starts using Flap on fire extinguishers, though, Giant is probably not infringing Western Software’s trademark. Consumers are unlikely to think that the Flap software and the Flap fire extinguishers come from the same source.

Avoiding Infringement

For tips on how to avoid trademark infringement in naming your products and services, tips on how to avoid trademark infringement when choosing domain names, and rules for using trademarks owned by others, see The Internet Law and Business Handbook. (This book is currently out of print and undergoing revision, but you can reserve a copy of the next edition by sending an email to mradcliffe@sonic.net.)

Trade Secret Law

Introduction

A trade secret is information of any type that is valuable to its owner, not generally known, and kept secret by the owner. Even negative information such as research options that have been explored and found to be worthless can be trade secrets.

Trade secrets are protected only under state law. The Uniform Trade Secrets Act, in effect in a number of states, defines trade secrets as “information, including a formula, pattern, compilation, program, device, method, technique, or process that derives independent economic value from not being generally known and not being readily ascertainable and is subject to reasonable efforts to maintain secrecy.”

Types of Works Protected

The following types of technical and business information are examples of material that can be protected by trade secret law:

• Customer lists
• Designs
• Instructional methods
• Manufacturing processes
• Document-tracking processes
• Formulas for producing products

Inventions and processes that are not patentable can be protected under trade secret law. Patent applicants generally rely on trade secret law to protect their inventions while the patent applications are pending.

Standards

Six factors are generally used to determine whether material is a trade secret:

• The extent to which the information is known outside the claimant’s business.
• The extent to which the information is known by the claimant’s employees.
• The extent of measures taken by the claimant to guard the secrecy of the information.
• The value of the information to the claimant and the claimant’s competitors.
• The amount of effort or money expended by the claimant in developing the information.
• The ease with which the information could be acquired by others.

Information has value if it gives rise to actual or potential commercial advantage for the owner of the information. Although a trade secret need not be unique in the patent law sense, information that is generally known is not protected under trade secret law.

Procedure for Getting Protection

Trade secret protection attaches automatically when information of value to the owner is kept secret by the owner.

Exclusive Rights

A trade secret owner has the right to keep others from misappropriating and using the trade secret. Sometimes the misappropriation is a result of industrial espionage. Many trade secret case defendants are people who have taken their former employers’ trade secrets for use in new businesses, or new employers of such people.

Trade secret protection endures so long as the requirements for protection—generally, value to the owner and secrecy—continue to be met. The protection is lost if the owner fails to take reasonable steps to keep the information secret.

Example: After Sam discovered a new method for manipulating images in multimedia works, he demonstrated his new method to a number of other developers at a multimedia conference without requiring the developers to sign nondisclosure agreements. Sam lost his trade secret protection for the image manipulation method because he failed to keep his method secret.

Limitations on Exclusive Rights

Trade secret owners have recourse only against misappropriation. Discovery of protected information through independent research or reverse engineering (taking a product apart to see how it works) is not misappropriation. However, many software license agreements prohibit reverse engineering.

Federal Criminal Trade Secret Law

The Economic Espionage Act of 1996 (EEA) makes stealing or knowingly buying trade secrets a criminal offense punishable by a fine of up to $250,000, imprisonment of up to fifteen years, or both. The EEA provides higher penalties for stealing or knowingly buying trade secrets for the benefit of a foreign government or agent.

Avoiding Infringement

To avoid infringing trade secrets, you should avoid using valuable confidential business and technical information you acquired while working for a former employer. When you hire someone to perform exactly the same duties he or she used to perform for another company, you run the risk of being sued for trade secret infringement. An individual is allowed to carry general knowledge or skill from one job to the next. Drawing the line between general knowledge or skill and protected trade secrets belonging to the former employer can be difficult. Consider consulting an experienced attorney if you need to make this distinction.

Customer Contacts List

Haber worked in sales at North Atlantic Instruments. He left North Atlantic and joined Apex Signal Corporation, where he immediately began calling the customer contacts he had developed and used while working at North Atlantic. North Atlantic sued for trade secret misappropriations and won. The customer contact list was held to be a trade secret belonging to North Atlantic because North Atlantic had taken appropriate steps to keep the information secret. North Atlantic Instruments v. Haber, 188 F3d 38 (2d Cir 1999).

International Protection

To obtain patent, trademark and trade secret protection in another country, you must comply with that country’s requirements for obtaining protection. For these intellectual property rights, there are no international conventions that provide automatic protection for U.S. rights owners. However, the World Intellectual Property Organization has proposed a Patent Law Treaty which will, if adopted, simplify the filing of multi-country patent applications.

Some inventors file patent applications in other countries simultaneously with the U.S. filing. The Paris Convention and the Patent Cooperation Treaty allow an inventor who files a patent application in the U.S. to delay filing in member countries based on the earlier U.S. application date. The European Patent Convention offers a way to file a single patent application for a patent which will be valid in 17 European countries. The European Community Trademark system provides a centralized procedure for obtaining trademark rights in European Community countries. The Madrid Protocol permits United States trademark owners to obtain trademark rights in a number of countries by filing a single application.

2007 was the one of the most active years for legal developments in the history of free and open source (“FOSS”), and 2008 saw a continuation of important legal developments for FOSS. So without further adieu, here’s our list of the top ten FOSS legal developments in 2008.

1. First Major Appellate Decision For a FOSS License. Last year, the District Court in San Francisco in Jacobsen v. Katzner decided the first case under US law interpreting an open source license. That decision had the potential to significantly undercut the ability of FOSS licensors to enforce their license. However in August, the Court of Appeals for the Federal Circuit (“CAFC”) overturned the District Court decision and strongly supported the right of FOSS licensors to obtain copyright remedies for breach of FOSS licenses: such remedies include injunctive relief (an order by the court to the licensee to obey the license) and statutory damages of up to $150,000 for each infringed work. (Read more about the victory for open source in the Jacobsen Decision.)

2. Final End Of the SCO Attack On Linux. Although SCO’s lawsuits against IBM and others were largely resolved by the decision last year against SCO in its litigation with Novell over ownership of the copyrights to UNIX, several important issues remained. This year the court confirmed its ruling against SCO and awarded Novell $2,547,817 from the amount paid to SCO by Sun. The decision is interesting because the court came to different conclusions about whether licenses to SVRX software in SCO’s agreements with Sun and Microsoft were “incidental.” This term was important because SCO did not owe royalties to Novell if the license of the SVRX software (the royalties from which would have to be paid to Novell) was “incidental” to the licensing of Unixware. This case demonstrates the importance of careful drafting in intellectual property licenses.

3. First Settlement of Patent Infringement Litigation For an Open Source Community. Red Hat’s settlement of the Firestar litigation demonstrated the need to carefully consider the nature of open source communities on the settlement of patent litigation. Unlike traditional patent settlements, Red Hat ensured that the settlement covered other members of the community including upstream licensors of products incorporated in the Red Hat product and downstream licensees. The settlement of patent litigation for open source products needs to deal with the complexity of many open source products and communities. This reality makes settlement of patent litigation much more complicated for open source products than for traditional software. (Read more about the patent litigation settlement agreement between Red Hat and Firestar.)

4. Major Litigation on GPL. In December, the Software Freedom Law Center (SFLC) filed suit against Cisco Systems, Inc. alleging that Cisco had violated the GPLv2 and LGPLv2 in its distribution of certain software whose copyright is owned by the Free Software Foundation (FSF), including GNU C Library, GNU Coreutils, GNU Readline, GNU Parted, GNU Wget, GNU Compiler Collection, GNU Binutils, and GNU Debugger. The complaint asserts that Cisco distributed the programs without providing complete and corresponding source code as required by the GPLv2 and LGPLv2. FSF requested that an injunction be issued against Cisco and that damages and litigation costs be awarded to the FSF. The SFLC states that they filed the lawsuit reluctantly and had negotiated with Cisco for two years on the issues. The suit raises the question of whether the SFLC is becoming more willing to file suits to enforce the GPL. For example, the SFLC has been vigorously enforcing the rights under the GPLv2 for Busybox.

5. Enforcement of GPL For Busybox Continues. The Software Freedom Law Center has continued to enforce the GPLv2 on behalf of the owners of the copyright in Busybox software. Although most of these cases apparently are settled without litigation, SLFC filed suit three suits this year: Bell Products, Super Micro Computer, Inc. and Extreme Networks, Inc.

6. Open Source Litigation From Other Countries. Although litigation about open source licenses has generally been confined to Germany and the United States, one case that settled this year about the enforceability of the GPL was in Isreal. The plaintiff, Maryanovsky, claimed that the IchessU software violated the terms of the GPL because IchessU software did not include credit for him and was released under a proprietary end-user license agreement. He also suggested that an audio-visual module developed by IchessU was a derivative work, since it could not compile without his code. The case was filed in 2006, but was settled confidentially this year.

7. SFLC Guide to Legal Issues and GPL Compliance. The increasing ubiquity of open source software as well as the litigation to enforce the GPL and other open source licenses has made understanding the obligations imposed by the GPL very important for a wide range of companies. The SFLC has been the leader in developing and enforcing the GPL. They shared their views of the legal issues in open source and the obligations imposed by the GPL in two publications: A Legal Issues Primer for Open Source and Free Software Projects and A Practical Guide for GPL Compliance. The Primer and Guide are quite useful. Although licensing attorneys may not agree with all of their conclusions (the nature of the law and the lack of court decisions make this statement true about most open source license issues), the Primer and the Guide should be read by any lawyer working with open source legal issues.

8. American Law Institute Publishes Draft of Principles of the Law of Software Contracts with Significant Problems for Open Source Software. The ALI is a very prestigious and influential non-profit institution whose purpose is “to promote the clarification and simplification of the law and its better adaptation to social needs.” The Principles state that the “best practices” in software licensing would be to include two new “non-disclaimable” warranties which would result in significant problems for the open source community. The warranties are the (1) warranty of non-infringement of intellectual property rights (such as patents or copyrights) if the contributor knew or should have known of the infringement and the contributor holds himself out by occupation as having knowledge or skill peculiar to the software and (2) warranty of no hidden material defects. Current law (and all OSI-approved licenses) permit the contributor (and any licensor) of open source software to completely disclaim all warranties—i.e., promises about performance or non infringement which could result in liability to a contributor or a licensor (so called AS IS provisions). If accepted by the courts, these recommendations would have a significantly negative effect on open source licensors. (Read more about how the ALI’s legal recommendations could create new liabilities for open source licensors.)

9. Publication of Version 1.3 of GNU Free Documentation License. The new version permits the use of the Free Documentation License (FDL) with the Creative Commons Attribution ShareAlike License (CCASL). The draft is an interim one and SFLC is working on FDL 2.0. However, the Wikimedia Foundation requested the FDL be made compatible with the CCASL. This change recognizes the need for the two major branches of “free” content licenses to be compatible just as the GPLv3 was modified to be compatible with the Apache license.

10. Project Governance Concerns Become More Important. The recent fork in the Twiki community (an open source wiki project) demonstrates the need for a community to think about how it will manage itself. As open source projects have greater economic value, the potential for the community to split over decisions regarding the direction of the project (in particular, commercialization) will increase. Communities need to develop processes to discuss these issues and come to a conclusion that is supported by the community. Although forks are always an option for open source projects, they generally create significant loss of momentum and can doom a project if it has competitors offering similar functionality. In the case of Twiki, the ownership of the Twiki trademark by Peter Theony, the project leader, was critical to the control of the project.

The OpenLogic Certified Library includes hundreds of open source projects and licenses. While many of these licenses are custom, most are based — at least loosely — on one of the 18 most commonly used license types. We’ve laid out for you in table form a detailed comparison of the common features of these licenses.

The three tables below compare the licenses on these general, and commonly considered, points, in increasing detail:

• Author
• Date published
• OSI Approved
• GPL Compatible
• Copyleft

For those of you new to licensing, some definitions:

GPL Compatible licenses allow the combination of the code covered by them with programs that use the GPL without conflict.  Some free/open source software licenses are not GPL-compatible which means they impose conditions not in keeping with the GPL.

Copyleft licenses – of which the GPL is the most commonly used – require any work originating in the licensed code to be made available under terms identical to that specified by the license that applies to the originating code.

Comparing Licenses One to Another

Here’s a pdf of the highest level comparison…

A little more detail…

And the most detail yet…

If you’d like, you can download the entire license matrix in either Microsoft Excel (XLS) or OpenDocument Spreadsheet (ODS) format.

Figuring out the licensing terms of the open source gadget you’d like to use in the widget you’re prototyping (and hope to offer for sale next quarter) is not as difficult as, say, absorbing the details of evolutionary biology, but neither is it a guaranteed walk in the park. In other words, it’s not dreadfully difficult, but often it’s not as easy as you might hope, either. As walks go, it’s closer to the legerdemain accomplished by a professional dog walker (picture all that threading and unthreading as the dogs fan out and weave grass patch to tree trunk). At its worst, it’s maybe just a bit more complex.

OpenLogic’s researchers work diligently to confirm the accuracy of licenses for the open source projects included in the OpenLogic Certified Library. They follow a process carefully crafted from many years experience, refined and sauced liberally with intuition, creativity and not-a-little tenacious detective work. As they’d be the first to tell you, this work is not for weenies and is best left to the professionals. However, if you insist on trying your hand, there are a few tricks they’re willing to share.

Where To Look

About half the time, getting an initial sense of the licensing of an open source project is as simple as navigating to the project’s home page, and taking a gander at the menu options scrolled variously down the left or across the top. Much of the time, if  ‘License’ is one of them, you can follow the link and, voila: license text.

Even this simplest case, though, is not always as simple as it seems. Our legal department issued the edict that ‘distribution is King’ which means that, regardless of what the Web site claims, the license found in the distribution is the license the project is released under. To be certain you’re using the correct license, you always want to locate and download the distribution to determine a match. Later in this article, we talk about typical filenames given to license files, and where in the distribution they’re most often found.

Projects that use a hosting site such as SourceForge will have a summary page that lists basic project information. This information typically includes the license. AcegiSecurity, for instance. Their Web site (www.acegisecurity.org) does not appear to include a link to the license information. But, notice in the upper right hand corner the link to Acegi on SourceForge:

A couple more clicks, and you’ve arrived at Acegi’s summary page which reports the license as Apache 2.0. In this case, this information is correct, however, sometimes the SourceForge information is out-of-date.  If the project you’re researching will be modified and included in work for sale, you should confirm the license by checking the distribution.

If none of these paths result in license information, check the project documentation for a FAQ, for instance, the Mozilla License FAQ. If there is one, it will often have an intuitively titled entry covering license terms. If there’s no FAQ, search for ‘license’ first on the home page, and then by using the site’s search function if there is one. If none of this turns up information, follow with a general Google search (project name + version + ‘license’)  and often the appropriate page on the project site will appear in the results.

Why You Shouldn’t Stop There

We mentioned quickly the possibility of downloading the distribution and confirming the licensing of a project by exploring it. You might think that, given all of this, downloading the distribution first would be the most reasonable approach. This is risky for a couple of reasons.  In many instances the Web site and the distribution will conflict for one reason or another. While legal says the ‘distro is king’, there are situations in which a conflict between the two licenses could cause problems. If, for example, the distribution contained a permissive license like Apache 2.0, but the Web site included text that indicated commercial use of their work required the Gnu Public License (GPL) and they hadn’t included a FLOSS Exception like MySQL.

Additionally, some enterprises restrict the download of distributions based on licenses like the Gnu Public License (GPL). As an engineer or manager researching the licensing issues around using a certain project, you’ve got a textbook chicken/egg situation: in order to be certain on the license, you need a peek at the distro, in order to get access to the distro, you need to know if the license is safe.

What You’ll Find

If you’re a developer of more than a little experience, you won’t be surprised at the range of organizational strategies at work inside the distributions. The rest of us have experienced symptoms such as cold sweats and dizziness and, in one instance, actually fainting dead away when faced with Yet Another variation on the theme. You can pad the room and go on alone, or you can make use of some of these set ups our researchers have seen.

Sometimes you’ll find the license information at the top level and sometimes you’ll have to dig. Some of the locations we have found license files:

• Licenses directory
• Copying directory
• Legal directory
• Docs directory
• Lib directory
• Project-name directory
• License-name directory

Some of the file names that may contain license information:

• License.txt
• Copying.txt
• Legal.txt
• Readme.txt
• Copyright.txt
• Notices.txt
• Specific License Name.txt

What You Should Do with What You Find – And How

So, say the Web site and the distribution of the project you’re interested in using both claim that the project uses Apache Software License version 1.1? Now you’ll need to eyeball the text and make sure that, in fact, they are the same license. It is not uncommon for projects to modify standard licenses to include custom text. Here, again, the Web site version and the distro version might differ. More likely, though, the Web site and distro will match, but the license will deviate from the standard version of the license. For examples of the standards, see the Open Source Initiative site and the Free Software Foundation.

For short and relatively uncomplicated licenses such as BSD and MIT, an eyeballing to make sure that the licenses match the standard is probably good enough. But, for more complex licenses like the MPL, you’ll want to use a ‘diff tool’ like KDiff to compare the text a project uses against the standard.

Other tools OpenLogic researchers leverage include Fossology and OhCount.

Other Tidbits

You’ll also want to make sure to read carefully any text on the license page of the project Web site that specifies the versions of the project to which a particular license or license version applies.

And, Finally

OpenLogic researchers perform all of this analysis, and more, on every version of every project in the Certified Library. We’re happy to do the heavy lifting on research, but if you’ve got access to a legal team, you should run what we’ve found by them, too. We rely heavily on our legal team to interpret anything remotely questionable. Look for ‘Special Notes’ on any package that qualifies as such.

Project Description

3GPP is a partnership of telecommunications-related organizations designed to create “evolved Third Generation and beyond Mobile System specifications”. So, in other words, it’s an effort to develop certain specifications relating to 3G mobile communications.  The 3GPP AMR Speech Codec Library is a suite of tests for verifying that an implementation complies with the relevant specification.

License Issue

3GPP AMR Speech Codec Library was requested by an OpenLogic customer. Specifications can be a challenge because often times a specification itself is not open source but a reference implementation is, or vice-versa. During the certification process, OpenLogic could find no open source license or statements as to whether the project was open source, though a statement was found indicating that the specification is free for commercial use. The information included on the project website around legal issues was confusing and of limited use. Additionally, an unusual proprietary license was included with the technical specification, but not with the source code.

This combination of circumstances made it difficult if not impossible to determine the actual licensing terms of the package. Our analysis determined that although it was free and the source was available, the licensing terms were not consistent with OpenLogic’s definition of open source software. Normally, the certification effort might end here, but since this package was specifically requested by a customer, we escalated the issue to our legal staff.

Resolution

The OpenLogic legal team returned the following assessment:

• Neither the codec nor the specification appear to be released under any sort of open source license (or anything resembling an open source license).  The terms under which they have been released are in question.
• The actual origin of the codec also appears to be in question.  While it may have come from the efforts of the 3GPP or one or more of its members, under what agreements(s) they were created and what rights have been granted by the authors is not clear.

Even after legal review, OpenLogic was still uncertain as to the origin, ownership and license terms of this project, though legal did confirm that it is not open source. We contacted the project community to request permission to distribute the specification in one customer’s private library on a case-by-case basis and permission was denied.  We informed the customer, which was able to update designs in order to avoid the use of this package.

Project Description

Cobertura is a free Java tool that calculates the percentage of code accessed by tests. It is based on jcoverage. Some of its main features include:

• Executable from Ant or from the command line.
• Instruments byte code after compilation.
• Generates reports in both HTML and XML.
• Shows the percentage of lines and branches covered for each class, each package, and for the project.
• Shows the McCage cyclomatic code complexity for each class, the average code complexity for each packet, and the average cyclomatic code complexity for the project.
• Provides sorting of HTML results by class name, percentage of lines covered, and more.

Use Cobertura to identify which parts of a Java code base are lacking test coverage.

License Issue

This project is dual licensed under the Apache 1.1 and GPL V2 licenses.

The Ant tasks are licensed under the Apache 1.1 license. Because the Ant tasks are loaded directly into the runtime of Ant, and the GPL is incompatible with all versions of the Apache license, Ant tasks can’t be licensed under the GPL.

The rest of Cobertura is under the GPL because Cobertura is a fork of the GPL version of JCoverage. The terms of the GPL require that forks – or any other project based on a GPL licensed project – also use the GPL license.

Additionally, because use of Cobertura modifies JCoverage code, there are other license implications.

Resolution

We added a special note to the Cobertura package details page in OLEX explaining the situation and pointing users directly to all of the relevant information available on the community website.

Project Description

gSOAP eases the development of SOAP and XML Web services in C and C++ by performing XML to C/C++ language binding. By providing a transparent SOAP API that leverages strong typing to map XML schemas to C/C++ definitions, it frees users from the burden of WSDL and SOAP details.

Use gSOAP to implement or interact with web services. It is portable across a variety of platforms, and provides compiler tools for a WSDL parser, and a SOAP stub and skeleton compiler. It follows the WS-I Basic Profile 1.0a compliance recommendations, and warns about potential interoperability issues before building a new web service application. This helps to keep users from having to go through another development cycle to make the service compliant. Its supported standards include:

• SOAP 1.2
• SOAP RPC encoding
• SOAP document/literal style
• XML-RPC
• UDDI v2 inquire and publish APIs
• SOAP attachments: MIME, DIME and MTOM
• WS-Addressing
• WS-Discovery
• WS-Security
• SSL/TLS encryption and certificate authentication

License Issue

gSOAP is distributed under several licenses:

• The GNU General Public License
• The gSOAP Public License 1.3, which is based on the Mozilla Public License 1.1
• The gSOAP Commercial License

The community made no clear statements regarding the choice to multi-license the project.  Further, the relationship between the licenses was unclear. Following the OpenLogic certification process, we were able to provide customers with the following guidelines:

• The software is offered under the GPL to enable it to be used with open source projects, and requires all software development to be open-sourced under the GPL or a GPL-compatible license.
• The gSOAP Public License allows commercial and non-commercial use of gSOAP without fees or royalties. It can have products built on top and distributed under any license, including proprietary, as long as a notice of copyright and disclaimer of warranty is in the product’s documentation.
• The gSOAP Commercial License is for use with the wsdl2h WSDL parser, UDDI code, and sample applications which are only licensed under the GPL or the gSOAP Commercial License. Any use of the listed tools or source code for proprietary product development requires the gSOAP Commercial License.

Resolution

Multi-licensed projects are a common source of confusion for users of open source software. In this instance, OpenLogic was able to clarify the intent and obligations of the three unique licensing options.  As a service to our customers and the community at-large, we’ve added an entry to the OLEX knowledge base which explains the licensing of gSOAP in detail.  Perhaps as a result of our input and inquiries, the project has also updated their Web site to explain the license situation more clearly.

Project Description

The Jacl project provides a self-contained implementation of a Tcl (Tool Command Language) interpreter. It also facilitates communication between Java and Tcl interpreters.

Jacl can be used to add scripting functionality to an existing Java application, or to take advantage of Java methods from Tcl procedures. An alternative to Jacl is Tcl Blend, which provides similar functionality in a Tcl extension.

License Issue

During the certification process for Jacl 1.4.1 in May 2008, OpenLogic discovered that versions of Jacl previous to 1.4 were licensed under a proprietary copyright statement. This statement is included as a text file in the distribution as the “Jacl License”. The project website offered no additional information on the license. Examining the contents of additional distributions, OpenLogic found the copyright statement mentioned on the website and in the original distribution, and researchers also found a Sun license. The Sun license had no name or title, but launched immediately into terms and conditions.

Using text comparison tools, OpenLogic researchers determined this Sun license was not one previously encountered. A close read of the license text revealed the following potentially restrictive clause regarding development: “[use is] expressly subject to Sun’s continuing ownership of the Software”. According to OpenLogic’s definitions, a true open source license contains no restrictions, and thus an evaluation of a license that results in ‘potentially restrictive’ text is reason enough for a project to fail OpenLogic’s certification process. But there were two additional red flags:

1. There are only two OSI-approved Sun open source licenses, and this license was not similar to either.
2. Sun is a commercial entity.

The OpenLogic certification team searched Google with chunks of the license text looking for a match and scoured Sun’s pages, but had no luck turning up the exact license text in any other location. An ordinary project would have failed certification at this point, but OpenLogic determined to take the research a bit further because Jacl 1.4.1 was a specific customer request.

Returning to the distribution, OpenLogic’s researchers scoured the directories for additional clues and found a file that included the following text: “Jacl 1.0 was released by the now defunct SunScript group at Sun Labs. Newer versions of Jacl have been developed by…” and following this text was a list of the project developers. This answered some of the questions about the genesis of the license, and Sun’s history with the project and researchers contacted the project developers.

Discussion with the developers clarified a number of points regarding the relationship between the licenses and, most importantly, OpenLogic was assured that lawyers from Sun, AMD and IBM — all with an interest in the project at various junctures via staff involvement — had reviewed the licensing and found it adequate.

Resolution

Satisfied that the project was indeed open source, OpenLogic kept the copyright notice and added the Sun license under the name Sun Microsystems Laboratories License. This combination was called the Jacl Software License. A note on the Jacl knowledgebase entry within OLEX explains the situation as follows:

“Originally developed by Sun Microsystems in conjunction with developers affiliated with the University of California, Berkeley, Jacl uses both the Sun Microsystems Laboratories license, and a copyright, permission statement and warranty disclaimer added by the University. OpenLogic refers to this combination as the ‘Jacl Software License’.”