Intellectual Property
Cite as: Shaobin Zhu, Patent Rights Under FOSS Licensing Schemes, 4 Shidler J. L. Com. & Tech. 4 (Jun. 6, 2007), at <http://www.lctjournal.washington.edu/Vol4/a04zhu.html>
©2007 Shaobin Zhu
Free/Open Source Software (“FOSS”) licenses generally give developers and users the freedom to run software for any purpose, to study and modify software, and to redistribute copies of either the original or the modified software without paying royalties to previous developers. The FOSS community is facing increasing threats from software patents, especially from entities outside the FOSS community. This Article discusses patent rights under FOSS licenses, including the GNU General Public License (“GPL”) 2.0 and draft 3.0, the Apache License and the Mozilla Public License (“MPL”). It also addresses how current GPL draft 3.0 attempts to reconcile the conflict between software freedom/innovation and patent protection, and to resolve the compatibility of GPL draft 3.0 with other FOSS licenses.
<1>Free/Open Source Software (“FOSS”) has become a successful business model,2 but it is facing increasing threats from software patents. Under FOSS licenses, licensees enjoy the freedom to access, copy, use, modify, and redistribute original and derivative software (including object code3 and source code4 ), and to combine open source software with other software, thereby improving and adapting the software to their own uses.5 Because of its low cost, web-connected worldwide collaborators, fast innovations, and improving reliability and security, FOSS has now blossomed into a multi-billion dollar sector of the information technology industry, with companies such as IBM, Novell, Sun Microsystems, and Red Hat offering products built with the FOSS development process.6 However, FOSS licenses originally focused on rights relating to copyright, and most did not address patent rights. While it would prefer not to involve itself with the patent system, the FOSS community is facing increasing claims of patent infringement, especially from entities outside the FOSS community. A Federal Circuit Court of Appeals decision recently put a scare in the FOSS community. Under the court’s ruling in Teleflex, Inc. v. KSR Int'l Co., an invention combining prior art references may be patented unless there is a specific reference in the prior art to a teaching, suggestion, or motivation to combine prior art teachings in the particular manner claimed by a patent at issue. 7 While this decision was ultimately reversed by the U.S. Supreme Court, the FOSS community remains worried that they may face more trivial-improvement patent infringement claims.8
<2>In order to avoid patent infringement claims and maintain use rights to the software, some well-known FOSS licenses expressly or implicitly include patent grant and patent defense/termination clauses. For example, the Apache license and Mozilla Public License (“MPL”) have patent grant clauses to grant licensees a royalty-free patent license to make, use, sell or offer to sell, or import specific software. 9 They also contain patent defense clauses to discourage patent litigation against any participant in the license chain by terminating all patent licenses if the licensee sues.10 The GNU11 General Public License (“GPL”) 2.0 has no express patent grant clause, but has a clause that seeks to ensure that any patent must be licensed for everyone's free use or not licensed at all.12 Conversely, GPL draft 3.0 has a very broad patent grant clause as well as a patent retaliation clause that embraces a termination clause, and allows contributors to enhance retaliation rights by placing additional requirements on licensees.13 However, the current draft of GPL 3.0 has attracted concerns from the FOSS community about how GPL 3.0 reconciles the conflict between software freedom/innovation and patent protection, how GPL 3.0 works compatibly with GPL 2.0 and other FOSS licenses, and whether GPL 3.0 is the best option for a FOSS project.
<3>While FOSS licenses generally protect end user freedom in the realm of copyright, they have no effective protection against threats from software patents, especially from entities outside the FOSS community.14 Many FOSS projects lack the financial and institutional resources necessary to defend themselves in patent litigation.15 According to some commentators, the FOSS community often needs access to technologies and industry standards that are developed and patented by conventional for-profit companies.16 Some of these companies are willing to license the necessary technologies, often royalty-free, but these licenses are generally conditioned on reciprocity and no sublicensing.17 For instance, Microsoft grants a reciprocal, royalty-free, non-sublicenseable, worldwide patent license to make, use, import, offer to sell, sell and distribute directly or indirectly to end users, the object code of software conforming to the Sender ID Specification.18 FOSS programs, especially if licensed under the GPL, cannot work in this system. FOSS licenses generally preclude royalty payments, however modest,19 and even if no royalties are required, FOSS licensees cannot accept the condition of no sublicensing.20 This leaves FOSS licensees with a problem. If a FOSS program has no patent licensing protection from technologies and industry standards that are patented by conventional for-profit companies, then the FOSS program writers, distributors and users are vulnerable to patent infringement claims.21
<4>Another possible threat to FOSS projects stems from a recent federal court patent law ruling. Under U.S. patent law, after meeting utility and novelty requirements, an inventor may obtain a patent if the invention is nonobvious.22 Small details and obvious improvements shall not be patented. 23 In Graham v. John Deere Co., the Supreme Court established a flexible framework for determining whether an invention is nonobvious over prior arts by inquiring into the following factual factors: the scope and content of the prior art; differences between the prior art and the claims at issue; the level of ordinary skill in the pertinent art. Such secondary considerations as commercial success, long-felt but unsolved needs, and failure of others might be utilized as objective indicia of nonobviousness.24 However, in evaluating nonobviousness, both patent examiners and courts are confronted with hindsight bias. To prevent the use of hindsight based on the invention to defeat patentability of the invention, in addition to the above factors, the Federal Circuit requires the examiner to show a teaching, suggestion, or motivation to combine multiple prior art references that create the case of obviousness.25 In Teleflex, Inc. v. KSR Int'l Co., the Federal Circuit transformed the above framework into a rigid requirement for determining obviousness – the teaching-suggestion-motivation (TSM) test is the primary means of establishing obviousness under Section 103(a).26 When this ruling came out, some were worried that litigants would be forced to search through reams of technical papers for a document in which someone, somewhere, has stated the obvious.27 It was worried that the test would increase the number of trivial-improvement software patents, and thereby may cause new problems for FOSS projects.28 However, the U.S. Supreme Court recently reversed the Federal Circuit’s judgment, holding that the Federal Circuit’s TSM test is narrow, rigid, and inconsistent with 35 U.S.C. § 103 and Graham.29
<5>In responding to the threat from software patent holders, the FOSS community has created innovative licensing schemes. Permissive licenses,30 such as the Apache licenses, have different patent rights clauses from reciprocal licenses,31 such as the MPL and GPL.
<6>Linux operating system projects32 and Apache Software Foundation projects33 are the most widely known and successful FOSS projects. Apache Software Foundation projects are licensed under a permissive license.34 Apache software may be used by anyone, anywhere, for any purpose, including for inclusion in proprietary derivative works, without any obligation to disclose source code.35 Contributors are required to submit a signed Contributor License Agreement to convey copyright and patent rights.36
<7>The latest 2.0 version of the Apache license has a detailed patent grant clause to convey a broad patent grant from all contributors to the software to all licensees, royalty-free.37 Any contributor must grant a perpetual, worldwide, non-exclusive, no-charge, royalty-free, irrevocable patent license to the applicable software.38 The grant is limited to a contribution or product that the licensor controls or creates, and does not cover changes by others over which the licensor has no control.39
<8>In addition, the patent license has a far-reaching termination clause. If a licensee of a work sues a contributor for patent infringement, then any patent licenses granted to the licensee under the Apache License for that work terminate.40 This terminates only the granted patent licenses, not the entire Apache License, although effectively this termination may increase risk of use. This termination rule is not restricted to the contributor's code, but applies to any patent claim against the software in original or modified form. The intent is to use the leverage of software and business costs, expressed in operational reliance and investment in use of the program, to forestall patent litigation against any participant in the license chain.41
<9>The Mozilla Public License (“MPL”) was originally crafted in 1998 to govern the distribution of Netscape’s open sourced Internet browser.42 The latest version of the license is MPL 1.1.43 The MPL is characterized as a hybridization of the modified Berkeley Software Distribution (“BSD”) License and the GPL.44 The primary difference between the GPL and more "permissive" FOSS licenses such as the BSD License and Apache License is that the GPL seeks to ensure that the FOSS freedoms - the freedom to access, copy, use, modify, and redistribute original and derivative software, and combine free software with other free software, thereby improving and adapting the software to their uses45 - are preserved in copies and in derivative works. GPL does this by requiring derivative works of GPL-licensed programs to also be licensed under the GPL. In contrast, BSD-style licenses allow derivative works to be redistributed as proprietary software.46
<10>The MPL has been adapted by others to a license for their software, most notably Sun Microsystems, as the Common Development and Distribution License for OpenSolaris.47 The license is regarded as a weak copyleft: source code file copied or changed under the MPL must stay under the MPL while derivative works, containing covered code with code not governed by MPL, may not.48 Unlike strong copyleft licenses such as the GPL, the code under the MPL may be combined in a program with proprietary files that are not derivative works of the MPL code.49 The Mozilla Suite and Firefox have been relicensed under multiple licenses, including the MPL, GPL and LGPL (GNU Lesser General Public License, formerly the GNU Library General Public License).50
<11>The MPL handles patent issues much more thoroughly than other preceding FOSS licenses.51 It has an explicit patent license, where contributors agree to grant users unlimited licenses for the patents they own that apply to the whole source code.52 The MPL also has a patent defense clause53 that is more extensive than the one in the Apache License and GPL. Under the MPL license, the program authors license a contributor version to the licensee - with the right to make free copies, prepare derivative works, and distribute – as long as the licensee does not sue for patent infringement.54 However, if the licensee sues, all copyright and patent licenses to the licensee under the MPL for the contributor version are terminated. In addition, if the licensee sues the program authors for any other patent infringement unrelated to the contributor version, all patent licenses to the licensee under the MPL for any software are terminated.55
<12>In contrast to the termination clause of the Apache License, the MPL patent defense clause terminates the entire FOSS license, rather than merely rights under a patent license.56 The termination rule is not limited to a patent claim filed with respect to the MPL software, but refers to any patent claim filed against the licensor for any patent applicable to software.57 It includes any suit against any contributor with respect to any patent applicable to the original work.58 This threat of termination of the entire license would increase business costs to the suing licensee if they materially relied on the program. It would effectively stifle enforcement of a related patent against any participant in the license chain for a user or participant in the chain.59
<13>The GNU General Public License, or GPL, originally written by Richard Stallman for the GNU project, is the most widely used FOSS license.60 To ensure that FOSS freedom is preserved in copies and in any derivative works, GPL uses a legal mechanism known as “copyleft”, invented by Stallman, which requires derivative works of GPL-licensed programs to be also licensed under the GPL.61
<14>GPL 2.0, released in 1991, is the latest version.62 The GPL governs thousands of open-source projects, such as the Linux kernel and GNU Compiler Collection (GCC).63 Software governed by the GPL 2.0 gives programmers and users built-in FOSS freedoms, but lacks an explicit patent license grant. However, the Preamble of GPL 2.0 expresses the view that "any free program is threatened constantly by software patents" and therefore that "any patent must be licensed for everyone's free use or not licensed at all."64 Thus, some scholars think that GPL 2.0 includes an implied patent license grant with respect to any patents a distributor has that may read on the GPL licensed program.65 The implied patent license is granted to all subsequent distributees.66 The implied patent grant is only effective in combination with the original licensed code or its derivative work.67 Because GPL 2.0 does not have an explicit patent license grant, a FOSS project under GPL 2.0 facing a patent infringement claim may have to terminate just because it would be too costly and time-consuming to find out what the real risk is. FOSS project users, in addition to the creators, also face the risk of patent infringement suits.68
<15>In dealing with potential patent claims, GPL 2.0 has a “Freedom or Death” termination clause69 – “any patent must be licensed for everyone's free use or not licensed at all.”70 GPL 2.0 does not allow the development of software that requires any kind of license payments for third party patents.71 If and when a valid patent claim by a third party prevents a GPL licensor from making, using, or selling the software, such software will no longer be free and can no longer be distributed under GPL 2.0.
<16>Regarding geographical limitations of patent rights, GPL 2.0 allows licensors to continue to license their works in the geographical regions where the patents do not apply.72
<17>GPL 3.0 was drafted to cope with global software patent threats and to provide compatibility with more non-GPL FOSS licenses.73 In 1991, when GPL 2.0 was drafted, the United States was the only country that ostensibly allowed software patenting.74 GPL 2.0 was constructed with attention to the doctrine of implied license that is recognized under United States patent law.75 Today, most countries permit software to be patented to at least some degree.76 This worldwide shift in patent law has brought about a serious threat to the FOSS community because the doctrine of implied license may not be recognized in other jurisdictions.77 Moreover, although GPL 2.0 is the most popular FOSS license, many FOSS projects are under other licenses that are not compatible with GPL 2.0.78
<18>The current GPL draft 3.0 keeps GPL 2.0’s copyleft feature and includes new provisions addressing evolving computing issues, such as patent issues, free software license compatibility, and digital rights management (“DRM”).79 GPL draft 3.0 provides an explicit patent license covering any patents held by a GPL-covered work’s developer.80 It contains a cross-licensing restriction clause to block a developer from conveying a GPL-covered work if the developer has an arrangement with a third party that has granted a patent license selectively to that developer's customers.81 It also contains provisions that enable a developer to combine code carrying non-GPL terms with GPL licensed code.82
<19>The current GPL draft 3.0 makes the patent grant explicit.83 A distributor of a GPL licensed work automatically grants a nonexclusive, royalty-free, worldwide license for any patent claims held by the distributor, to make, use, sell, offer for sale, import and otherwise run, modify, copy, and distribute the work.84 Under the patent license, the distributor promises not to sue for patent infringement and not to enforce a patent.85
<20>If a redistributor knows that the conveyance or use of a GPL-covered work in a jurisdiction would infringe a patent under the patent license, the redistributor should make the source code of the work available, free of charge, to the public, renounce the patent license, or extend the patent license to downstream recipients.86 The license therefore attempts to ensure that downstream users of GPL licensed derivative works are protected from the threat of patent infringement allegations made by upstream distributors, regardless of which country's laws are held to apply to any particular aspect of the distribution or licensing of the GPL licensed code.
<21>When a redistributor of GPL licensed code relies upon a patent covered by a patent license to clear rights to distribute the code, the patent licensor could bring a patent infringement lawsuit against the redistributor based on the distribution or other use of the code. The patent licensor lawsuit could prevent any GPL downstream users from exercising the freedoms that the GPL license seeks to guarantee.87 Thus, the GPL license condition asks the redistributor to act to shield downstream users from these patent claims. The requirement applies only to a redistributor who knowingly relies on a patent license and the source code is not available, free of charge, to anyone to copy.88 Many companies enter into blanket patent cross-licensing agreements. With respect to some such agreements, it would not be reasonable to expect a company to know that a particular patent license covered by the agreement, but not specifically mentioned in it, protects the company's distribution of GPL licensed code.89 This draft provides specific means to protect downstream recipients, which was missing in previous drafts.90
<22>GPL draft 3.0 incorporates provisions to prevent future cross-licensing patent deals similar to that occurred between Novell and Microsoft in November 2006.91 In an unusual cross-licensing patent pact, Microsoft and Novell each agreed not to sue the other company's customers for any possible infringements of the companies' respective patents, and each agreed to pay the other hundreds of millions of dollars for both licensing and patent protection.92 The implication is that Novell pays Microsoft for distributing GPL-covered SuSE Linux software that might infringe on Microsoft's patents, and only Novell customers would be able to use it.93 Because this is a discriminatory protection from patents and is contrary to the spirit of FOSS licenses, the Free Software Foundation regards this as a big threat to FOSS community.94
<23>GPL draft 3.0 includes provisions to protect FOSS from future such threats in two ways. One is aimed at Microsoft’s role in the cross-licensing patent deal.95 The draft "assures that patents cannot be used to render the program non-free,"96 and provides that if a redistributor makes a deal to procure someone else's distribution of a GPL-covered work and grants a patent license to anybody in connection with that, then it automatically extends to all recipients of the covered work and derivative works.97 Therefore, in the Novell-Microsoft deal, Microsoft procured Novell’s distribution GPL-covered SuSE Linux software that might infringe Microsoft’s patents, and under GPL draft 3.0, Microsoft’s patent license to customers of Novell would automatically extend to all who get the software or works based on the software.98
<24>The other provision is aimed at Novell’s role in the deal. It provides that if a developer distributes a GPL-covered work under an arrangement made with a third party that is in the business of distributing software to gain promises of patent safety for the developer’s customers in a discriminatory way, then the developer violates the GPL and loses the right to distribute the work under the GPL.99 Under this provision, it seems that Novell would lose its right to distribute SuSE Linux software under the GPL and therefore GPL 3.0 would essentially prohibit any agreements along the lines of the Novell-Microsoft deal. However, GPL 3.0 Draft contains a bracketed sentence – the "grandfathering clause" – that would exempt from Section 11 any agreements made before March 28, 2007.100 This clause would allow existing Novell-Microsoft-like deals to remain intact and keep Novell's SuSE Linux covered by GPL.101
<25>There may be a licensing conflict when incorporating a GPL 3.0 governed project or derivative work into projects governed by GPL 2.0 or other FOSS licenses. This would deter those seeking to create a FOSS project from moving to GPL 3.0 by creating difficulties in project integration. 102
<26>However, section 7 of GPL draft 3.0 allows a developer to add additional permissions to the GPL when distributing a program.103 This provision extends the number of licenses compatible with the GPL. Therefore, a program can be distributed under “pure” GPL – without additional permissions from other FOSS licenses – or be distributed under GPL with additional permissions from other FOSS licenses, such as the patent retaliation provision from the Apache license. The change increases compatibility, but also makes copyleft somewhat looser. Under GPL 3.0, when a developer changes a GPL-covered work, the licenses of works does not have to be exactly the same. The developer can add, pass on or remove additional permissions. This increases flexibility and compatibility.
<27>The patent rights provisions of GPL draft 3.0 give the FOSS community greater chances for broad software freedom, but run counter to the traditional logic behind patent protection. According to one commentator, GPL 2.0 precludes the patentee from asserting his or her patent rights against people who are practicing the invention by using the GPL-licensed software.104 GPL 2.0 allows companies to assert patent claims if they stop distributing GPL-licensed software. However, GPL draft 3.0 requires that those distributing GPL-licensed software not assert patent rights they may have in that software — against anyone, not just against the parties to whom they distributed it, even after they stop distributing GPL-licensed software.105 Companies such as HP are concerned that this could permanently limit a company's ability to sue for patent infringement if the company is distributing GPL-licensed software that contains the company’s patented technologies.106 Several large companies have expressed their concerns and are reluctant to switch to GPL 3.0. 107 However, in the Novell-Microsoft deal, the two large software companies have promised not to assert their patents against individual, non-commercial developers.108 This has already brought some impact on the patent grant language of the current draft of GPL 3.0.
<28>The threat of patent litigation poses serious challenges to the FOSS community. The FOSS community has been responding by developing various licensing schemes to combat this “patent attack”. Among the most important FOSS licenses, GPL draft 3.0 is the latest endeavor of the FOSS community to fight against this “patent attack”. However, some in the FOSS community think GPL 3.0 may have gone too far and may hurt inventors’ legitimate patent rights. In addition, there are also some compatibility issues between GPL 3.0 and other FOSS licenses. As a result, it is unclear whether GPL 3.0 will be accepted as a new standard.