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What is OSS?

Open Source Software (OSS) is computer software that is released under a specialized “OSS license” that grants users permission to view, change, and redistribute the software. Many varieties of OSS licenses exist and can generally be grouped into permissive licenses and copyleft licenses.

Permissive licenses typically grant users the right to do what they please with a software, including incorporating the software into proprietary products. When an author releases their software under a permissive license, the author is given no guarantee for how the software will be used / distributed in the future. Examples of widely-used permissive licenses include the MIT license, the Apache license, and Berkeley Software Distribution (BSD) licenses.

Copyleft licenses allow users to view, change, or redistribute software, but require that any derivative work from the software uphold the copyleft license. When an author releases their software under a copyleft license, the author is given a guarantee that any derivative work of their software will also have a copyleft license. Examples of widely-used copyleft licenses include the GNU General Public License (GPL).

Case Law Involving OSS

In one of the first major cases involving OSS licenses, Jacobsen v. Katzer (2008), the United States Court of Appeals for the Federal Circuit (CAFC) ruled that an open source “Artistic License” to copyrighted program code for controlling model trains was enforceable and the underlying copyright was infringed. Furthermore, the CAFC held generally in Jacobsen that copyright holders who engage in open source licensing have the right to control the modification and distribution of the copyrighted material.

More recently in Artifex Software, Inc. v. Hancom, Inc. (2017), the Northern District of California cited Jacobsen as a basis to establish that royalty-free licensing under open source conditions does not preclude a claim for damages with a decision that stated a “jury can use the value of the commercial license as a basis for any damages determination.”

Additionally, in Artifex, the district court ruled that GPL-licensed code can be treated like a legal contract, and developers can sue if the obligations of these licenses are not followed.

Such decisions have supported the enforceability of OSS licenses and suggest that potential copyright infringers ignore the terms of such licenses at their peril.

OSS and Patents

In the United States, software can be protected under both copyright and patent law. Whereas copyright protects the underlying expression of source code (i.e., the way the software is written), patents protect the software’s functionality.

OSS licenses grant rights under copyright and do not inherently bar an author from obtaining protection on patentable aspects of the software. This can be problematic for users of OSS who want to avoid infringement of another entity’s patent.

To protect contributors from such legal discrepancies between copyrights and patents, many OSS licenses have explicit clauses that address would-be patentees. For example, the GNU GPL explicitly states:

You may not initiate litigation (including a cross-claim or counterclaim in a lawsuit) alleging that any patent claim is infringed by making, using, selling, offering for sale, or importing the Program or any portion of it.

In such cases, an inventor who distributes software under the GNU GPL cannot assert their own patent rights against subsequent users of the GNU GPL software.

Further, some OSS licenses include clauses that terminate a licensee’s rights to use the OSS if the licensee asserts a patent infringement claim relating to the use of the OSS. Such provisions are often referred to as “patent retaliation clauses”.

Patent retaliation clauses can become a substantial risk for patentees intending to assert their software patent. For example, suppose that an enterprise constructs a product that is a derivative of software covered by an OSS license with a patent retaliation clause. Then, suppose that the enterprise obtains a patent on the features they added to the derivative work. If the enterprise sues a third-party for patent infringement, the license to distribute the enterprise’s own software (a derivative work of the original software covered by the open source license with a patent retaliation clause) could be revoked under the terms of the OSS license. Under such a hypothetical scenario, the enterprise may lose the right to distribute their own product.

The Future of OSS

OSS has created enormous value throughout the software industry. However, for the OSS model to continue, viable business models must exist to reward creators and maintainers of OSS.

Currently, the software industry is experiencing a rise in cloud providers: large organizations who offer computational resources to run software in production environments. Cloud providers benefit from the use of OSS in their production environments, but typically leave the costs of maintaining and updating the OSS to open source authors.

Many organizations are creating specialized OSS licenses to address these issues. For example, MongoDB, a database software company that “open sources” most of their products, has shifted to a Server Side Public License (SSPL) to exclude cloud providers. The SSPL requires that those who provide an SSPL product in a hosted platform must also make their infrastructure code for the hosted platform available under an OSS license.

OSS has evolved to fit the various and wide-ranging needs of the technology industry. For example, the rise of cloud providers has drastically changed open source models for many technology companies. With the next waves of technological change, such as autonomous vehicles, blockchain, and IoT, newer, more complex OSS licenses may be drafted, and argued in the courts, to protect the interests of software innovators and the OSS community. With very few court cases decided to date relating to OSS licenses, this will be an interesting area of law to follow moving forward.

 

Aaron Gin, Ph.D. is a partner with McDonnell Boehnen Hulbert & Berghoff LLP. Dr. Gin has broad experience in preparing and prosecuting U.S. and foreign applications for patents and trademarks. He provides advice in support of patent validity, infringement, patentability analyses, and litigation matters in the electrical and computing technology areas. Dr. Gin has experience with Inter Partes Review (IPR) proceedings and he has also authored amicus curiae briefs for patent cases in the U.S. Court of Appeals for the Federal Circuit and the Supreme Court of the United States.

Joshua J. Lustig is a patent agent with McDonnell Boehnen Hulbert & Berghoff LLP. Mr. Lustig provides technological advice in support of validity, infringement, and patentability analysis in the electrical, computer and software areas. Mr. Lustig’s patent prosecution experience includes all phases of U.S. and foreign patent prosecution. Mr. Lustig has drafted and prosecuted patent applications directed towards autonomous vehicles, semiconductor devices, neural networks, robotics, graphical user interfaces, network communications, medical devices, digital image processing, aPaaS software, media production and broadcasting systems, and other electrical engineering, computer engineering, and software-based technologies.