© Practising Law Institute INTELLECTUAL PROPERTY Course Handbook Series Number G-1307

Advanced Licensing Agreements 2017

Volume One

Co-Chairs Marcelo Halpern Ira Jay Levy Joseph Yang

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24

Open Source Issues and Opportunities (PowerPoint slides)

David G. Rickerby Boston Technology Law, PLLC

If you find this article helpful, you can learn more about the subject by going to www.pli.edu to view the on demand program or segment for which it was written.

2-315 © Practising Law Institute

2-316 © Practising Law Institute nstitute I aw L 2017 th racticing 10:45 AM - 12:15 PM Issues and P Advanced Licensing Agreements 2017 May 12 David G. Rickerby Opportunities

2-317 © Practising Law Institute Introduction to Open Source Introduction to Enforced Sharing Open Managing Source Overview z z z

2-318 © Practising Law Institute “Open” “Source” – “Source” “Open” licensing software Any to available the source makes model that etc. modify, distribute, copy, What is Open Source? What is z

2-319 © Practising Law Institute The human readable version of the code. version The human readable and logic. interfaces, secrets, Exposes trade What is ? z z

2-320 © Practising Law Institute As opposed to Object Code…

2-321 © Practising Law Institute ~185 components ~19 different OSS licenses - most reciprocal Open Source is Big Business ANDROID -Apache 2.0 Declared license:

2-322 © Practising Law Institute Many Organizations

2-323 © Practising Law Institute Mobile Automotive F inancialServices Everything Healthcare Solving Problems in Many Industries Solving Problems

2-324 © Practising Law Institute Both commercial and open source licenses are based commercial Both on ownership of intellectual property. and retain others. grant certain rights Both are governed by the same laws. Both may include provisions which be Both the other type of license, and, with incompatible other licenses of the same type. indeed with So, what’s the big deal? Why isn’t this just like a commercial license? In many ways they are the same: z z z z

2-325 © Practising Law Institute : open source licenses impose sharing obligations Tend to have different goals not lawyers for developers by and written Are usually of the IP and reuse combination Encourage uncontrolled most commercial way than a different in Form a contract form a contract at all they don’t fact some argue (in licenses – merely act as a permission) Some on users But… Open Source Licenses z z z z AND z

2-326 © Practising Law Institute Requires licensor to make improvements or enhancements improvements or make Requires licensor to similar terms available under Primary example the GPL: Licensee must distribute is “work based on the program” and cause such works to be licensed … under the terms of GPL remain proprietary Modifications/enhancements may Distribution in source code or object permitted provided copyright notice & liability disclaimer are included and contributors’ names are not used to endorse products Primary examples: Berkeley Software Distribution (BSD), Apache – – – – – FOSS (Free and Open Source Software) FOSS (Free and Academic/Permissive Two Basic Schools of Open Source z z

2-327 © Practising Law Institute from http://www.gnu.org/philosophy/free-sw.html The freedom to run the program, for any purpose (freedom 0). The freedom to study how the program works, and change it to make The freedom to redistribute copies so you can help your neighbor The freedom to distribute copies of your modified versions others Definition from the “Free software” is a matter of liberty, not price. To understand the Free software is a matter of the users' freedom to run, copy, distribute, z z z z concept, you should think of “free” as in “free speech,” not beer.” study, change and improve the software. More precisely, it means that the program's users have four essential freedoms: do what you wish (freedom 1). Access to the source code is a precondition for this. (freedom 2). (freedom 3). By doing this you can give the whole community a chance to benefit from your changes. Access to the source code is a precondition for this.

2-328 © Practising Law Institute no additional license can be required from http://www.opensource.org/docs/osd Redistribution [Unrestricted] distribution in source code as well compiled form. individual technology of others who redistribute of others who the program 3. Must Allow Modifications and Derived Works Derived 2. and and must allow Program must include Source Code Modifications Allow 3. Must 4. Integrity of the Author's Source Code 5. No Discrimination Against Persons or Groups – 6. License Endeavor Discrimination Against Fields of No of 7. Distribution 1. Free Software Other Restrict 8. Not License Must Not Be Specific to a Product Must 9. License 10. License Must Be Technology-Neutral – not predicated on any Principles of Open Source Licensing from the

2-329 © Practising Law Institute ) 3.0 3.0) (PostgreSQL) (CNRI portion of ) License V1.0 (RPSL-1.0) 2.0) License 1.0 (Watcom-1.0) Source License (NCSA) (WXwindows) 50. Nethack General Public License 51. Nokia Open Source License (Nokia) 52. Open Software License Non-Profit 53.2.0 License Public OCLC Research 54. Open Group Test Suite License 55. Open Software License 3.0 (OSL- 56.License version 2.1 OSET Public 57. PHP License 3.0 (PHP-3.0) 58. The PostgreSQL License 59. Python License (Python-2.0) 60.(CNRI-Python) license CNRI Python 61.(QPL-1.0) License Q Public 62. RealNetworks Public Source 63. Public License Reciprocal 1.5 64.License Source Code Public Ricoh 65.License 2.0 (SimPL- Simple Public 66. (Sleepycat) 67.License 1.0 (SPL-1.0) Sun Public 68. Sybase Open Watcom Public 69. Open University of Illinois/NCSA 70. Universal Permissive License (UPL) 71. Vovida Software License v. 1.0 72. W3C License (W3C) 73. wxWindows Library License 74. X.Net (Xnet) License 75.BSD License Zero Clause 76. Zope Public License 2.0 (ZPL-2.0) 77. zlib/libpng license (Zlib) www.opensource.org v3 (AGPL-3.0) version 2.0 (GPL-2.0) version 3.0 (GPL-3.0) version 2.1 (LGPL- Public License 2.1) version 3.0 (LGPL- Public License 3.0) (HPND) Disclaimer Permissive v.1.1 Reciprocite Recipriote Forte RL) 2.0) 25.License 1.0.0 Free Public 26. GNU AfferoPublic License General 27.Public License GNU General 28.Public License GNU General 29.General or "Lesser" GNU Library 30.General or "Lesser" GNU Library 31. Historical Permission Notice and 32.License 1.0 (IPL-1.0) IBM Public 33. IPA Font License (IPA) 34.(ISC) ISC License 35. LaTeXLicense Project Public 1.3c 36. Licence Libre du Quebec – 37. License Libre Quebec – du 38. License Libre de Quebec- 39.1.02 Version License Lucent Public 40. MirOS Licence (MirOS) 41. Public License Microsoft (MS-PL) 42.License (MS- Reciprocal Microsoft 43. MIT license (MIT) 44. Motosoto License (Motosoto) 45.(MPL- 2.0 License Public 46. Multics License (Multics) 47. NASA Open Source Agreement 1.3 48.(NTP) NTP License 49. Naumen Public License (Naumen) 3.0) (AGPL-3.0) (AAL) License (BSD-3-Clause) "FreeBSD" License (BSD-2-Clause) Open Source License 1.1 (CATOSL- 1.1) 1.0 (CDDL- Distribution License 1.0) License 1.0 (CPAL-1.0) 1.0 Version 2.0 (ECL-2.0) Version 1.1 (EUPL-1.1) 1.0) 78 Current OSI Approved Licenses ( 1. 3.0 (AFL- Academic 2. Affero General Public License 3.0 3. Adaptive Public License (APL-1.0) 4. 2.0 5. Apple Public Source License 6. 2.0 7. Attribution Assurance Licenses 8."Revised" "New" or BSD 3-Clause 9."Simplified" or BSD 2-Clause 10.License (BSL-1.0) Boost Software 11. CeCILL License 2.1 (CECILL-2.1) 12.Trusted Computer Associates 13. Common Development and 14.Attribution Common Public 15.Public License Version CUA Office 16. EU DataGrid License Software 17.1.0 Public (EPL-1.0)License 18. eCos License version 2.0 19. Community Educational License, 20. Eiffel Forum License V2.0 (EFL-2.0) 21. Entessa Public License (Entessa) 22.Public License, European Union 23. Fair License (Fair) 24. Frameworx (Frameworx- License

2-330 © Practising Law Institute 28% 20% 16% 8% 4% 4% 4% 2% 2% 6% . MIT License MIT 2.1 (LGPL) License Public General GNU Lesser GNU General Public License (GPL) 2.0 (GPL) License Public GNU General Apache License 2.0 3.0 (GPL) License Public GNU General ISC License 3.0 (LGPL) License Public General GNU Lesser Microsoft Public License BSD License 2.0 (3-clause, New or Revised) License Artistic License () Artistic License 10 Most Common Open Source Licenses 1. 6. 7. 2. 3. 4. 5. 8. 9. 10. Note: The table above lists Note: The table above lists the top licenses used that open are source in projects number of by ranked projects using the license, according Software KnowledgeBase. to the Duck pulled Black This data was on October 20, 2016

2-331 © Practising Law Institute under for the open source program and FOSS Licenses (GPL2, GPL3, Affero GPL, LGPL) are going code available to require you make the source license the same on the program. is based which any work you distribute Many other Open Source licenses (Mozilla, CPL) are you modifications going to require you make available but not works which program, make to the open source interface with it. A few BSD) are going to open source licenses (Apache, you want with the code let you do pretty much whatever all disclaim credit and as long you give appropriate as a free (there is no such thing and liability warranties lunch). z z z An oversimplified summary: An oversimplified

2-332 © Practising Law Institute or works based on distribute http://www.gnu.org/licenses/gpl.html contains or is or contains .” collective or derivative from the Program or any part thereof, to be to part thereof, or any the Program from , that in whole or part , that publish “[T]he intent is to exercise the right to control “[T]he intent is to distribution of you that work any cause must “You derived parties all third to no charge licensed as a whole at of this License under the terms the Program.” Enforced Sharing: GPL v2 z z

2-333 © Practising Law Institute http://www.gnu.org/licenses/lgpl.html . linking a "work that uses the Library" with the uses the Library" a "work that linking A program that contains no derivative of any portion of the no derivative of any A program that contains Enforced Sharing: LGPL 5. being work with the Library by to but is designed Library, the a "work that uses with it, is called or linked compiled Library". Such a work, in isolation, is not derivative work of of this License. the scope outside falls and therefore the Library, However, is a derivative of the Library that an executable creates Library a than rather of the Library), portions contains it (because is therefore The executable uses the library". "work that distribution for terms 6 states License. Section by this covered of such executables

2-334 © Practising Law Institute http://www.gnu.org/licenses/lgpl.html Accompany the work with the complete corresponding machine-readable source source machine-readable corresponding the work with complete Accompany … linking with the Library. for mechanism shared library Use a suitable As an exception to the Sections above, you may also combine or link a "work that you may also combine the Sections above, to As an exception Accompany the work with a written offer, valid for at least three years, to give three years, to at least valid for offer, the work with a written Accompany 6. portions of the a work containing produce uses the Library" with Library to provided that the of your choice, that work under terms and distribute Library, own use and reverse the customer's of the work for modification permit terms debugging engineering for such modifications. of the work that Library is used with each copy notice prominent give must You supply a must You by this License. in it and that the Library its use are covered you notices, displays copyright If the work during execution of this License. copy as a the Library among them, as well for notice include the copyright must do one of you must Also, of this License. the copy directing the user to reference these things: a) changes were used in the work … the Library including whatever for code b) c) a charge no more in Subsection 6a, above, for specified the same user materials … this distribution. of performing than the cost Enforced Sharing: LGPL

2-335 © Practising Law Institute Enforced Sharing: GPL v3 You may convey a covered work in object code form under the terms of under the terms form work in object code a covered may convey You the machine-readable sections 4 and 5, provided that you also convey of this License… under the terms Corresponding Source work” means either the unmodified Program or a work based A “covered on the Program. with it that, without do anything a work means to “propagate” To infringement liable for you directly or secondarily permission, would make or it on a computer executing except law, copyright under applicable (with distribution Propagation includes copying, copy. modifying a private the public, and in some making available to or without modification), other activities as well. countries kind of propagation that enables other a work means any “convey” To with a user through Mere interaction copies. or receive make parties to is not conveying. of a copy, with no transfer network, computer

2-336 © Practising Law Institute Work? § 101, A “derivative work” is a work based upon one or more § 102(b), In no case does copyright protection for an original work Enforced Sharing: What is a Derivative preexisting works, such as a translation, musical arrangement, a as such preexisting works, picture version, sound dramatization, fictionalization, motion any recording, art reproduction, abridgment, condensation, or other form in which a work may be recast, transformed, or adapted. of authorship extend to any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or such work. embodied in The Copyright Act doesn’t really help for Software: Act The Copyright z A work consisting of editorial revisions, annotations, elaborations, or other modifications which, as a whole, represent an original work of authorship, is a “derivative work.” z

2-337 © Practising Law Institute Circuit, Computer Associates Intl., Inc. th program to determine whether nd and 11 th , 10 th Abstract from the original program its constituent structural parts. (incorporated ideas, Filter unprotected portions those ideas, and expression necessary to elements). Compare any and all remaining creative expression with 2 structure of derivative. , 5 Circuit has a modified version that applies the test only modified version that Circuit has a nd Ɣ Ɣ Ɣ st 2 after filtering out § 102(b) unprotected elements – particularly methods of operation or control. (Lotus Development Corp. v. Borland Int’l., Inc., 49 F.3d 807 (1st Cir. 1995)). 1 v. Altai, Inc., 982 F.2d 693 (2nd Cir. 1992); – – Abstraction, Filtration, Comparison Test Comparison Abstraction, Filtration, Work? Enforced Sharing: What is a Derivative z

2-338 © Practising Law Institute Work? 9th Circuit has adopted the analytic dissection test (Apple Are there substantial similarities in both the ideas and expressions “Thin” protection is given to non-copyrightable facts or ideas that Depending on the degree of protection, court sets standard for Enforced Sharing: What is a Derivative Computer, Inc. v. Microsoft Corp., 35 F.3d 1435 (9th Cir. 1994)) of the works? Are similar features (if any) protected by copyright? are protectable because they are combined/presented. of how “Broad” protection is given to copyrightable expression. comparison of works as a whole to determine if derivative. “Thin” protection requires virtually identical; “broad” protection requires only a “substantial similarity.” Analytic Dissection Test z z z z

2-339 © Practising Law Institute In 2012, District Court decided that the command structure and taxonomy of the APIs were not protectable under copyright law. On May 9, 2014, the Federal Circuit partially reversed the district court ruling, ruling in Oracle's favor on the copyrightability issue, and remanded the issue of fair use to the district court. A petition for certiorari was denied by the United States Supreme Court on June 29, 2015. A second trial began on May 9, 2016 – Oracle requested 8.8B in damages. The trial jury sided in favor of Google, ruling the action to be fair use. (May 29, 2016). Work? Enforced Sharing: What is a Derivative Oracle v. Google – protection of APIs z z z z z

2-340 © Practising Law Institute Google wrote its own version of Java for Android using the same “taxonomy of all the names of methods, classes, interfaces, and packages” as Oracle’s Java. Question as to copyrightability a taxonomy/API. Argument that this of element of software is purely functional and necessary for technology systems to speak one another. Court finding enough for Federal Circuit overruled District creativity copyright purposes, but sent case back for retrial on the question of Fair Use. Google won the retrial ruling the action to be fair use. Broad implications for use open source. Does interoperability make everything derivative? AN OVERSIMIPLIFACTION OF A COMPLEX CASE Work? Enforced Sharing: What is a Derivative > z z z z z

2-341 © Practising Law Institute Know and understand the facts Read the license from which you Know the norms of community the source are taking Play nice – – – – The key to any open source analysis is the same: The key to Keys to Open Source z

2-342 © Practising Law Institute “No covered work shall be deemed part of an effective fulfilling applicable law technological measure under any copyright treaty obligations under article 11 of the WIPO adopted on 20 December laws prohibiting or 1996, or similar restricting circumvention of such measures. “ in, or with, specifically If you convey an object code work ... for use in, a User Product, and the conveying occurs as part of a transaction in which the right of possession and use User Product is transferred to the recipient in perpetuity or for a fixed term (regardless of how the transaction is characterized), must be accompanied by the the Corresponding Source ... Installation Information. Ɣ Ɣ Anti-DRM Anti- Patent License Grant /Patent Non-Assertion as License Condition AGPL Compatibility – – – – Other commercial concerns: GPL v3, LGPL AGPL z

2-343 © Practising Law Institute To alleviate litigation concerns As an important M&A Issue To comply with Customer diligence More participation in open source communities: what are your employees contributing? – – – – Companies are adopting open source policies and processes: Focus is Compliance z

2-344 © Practising Law Institute for sample policies. for And… services, this is my sell you to like As much as I’d so check out OPEN SOURCE, http://www.linuxfoundation.org/programs/legal /compliance Published Policy Open Source Process Owner Approval Processes Monitoring & Tracking Process Obligation Verification Process Elements for an Open Source Program? z z z z z

2-345 © Practising Law Institute Monitor Software Acquisitions –Monitor ignorance is not an excuse. Track you changes and releases – you need to be is shipping. able to provide the exact code that Don’t have a “Build Guru” – users need to be able to successfully build your code. You need that are provide the scripts and other materials build and install. necessary to – – – Free Software Foundation’s compliance guide - Free Software Foundation’s http://copyleft.org/guide/comprehensive-gpl- guidepa2.html z Be Ready to Comply with the Letter of the Requirements

2-346 © Practising Law Institute Legalese: make it understandable Specific policy that ignores other issues Policy too strict so VOA: Violated on Arrival Does not allow for edge cases Does not provide for modification to meet changes in business model/products z z z z z Common Mistakes

2-347 © Practising Law Institute process Treat the management of open source cross-functional as an integrated, software business Establish policies, define the process and process owners Phase the deployment to yield near-term results Technology platforms can automate the process, enhance cross-functional collaboration and ensure validation Summary z z z z

2-348 © Practising Law Institute ? Questions

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