Frenemies: How IP Law Helps FOSS Communities, guest blog by Clark Asay

Sep 11

Written by: Guestblogger
9/11/2013 8:15 AM  RssIcon


In previous posts here and here I assessed the intellectual property (IP) risks that free and open source software (FOSS) communities face, as well as some possibilities of how to address them. And I’m certainly not the first nor will I be the last to make such assessments; there is a natural tendency in FOSS communities to view IP law with distrust, since the FOSS movement arose in part as a reaction to corporations using IP rights to thwart openness and sharing of technology.

But while some of this distrust may be merited, this focus tends to blind FOSS communities to aspects of IP law that actually serve them well. While certainly not perfect, patent, copyright, trademark, and trade secret law each has something to offer FOSS communities. Below I briefly describe some of the ways in which each helps or can help them.

1. Copyright

Because software is generally automatically subject to copyright protection, the FOSS movements’ founders were able to use copyright as the basis for making FOSS available to the public under permissive copyright licenses. Without copyright, of course, there may not have been a problem to fix. But copyright has proved flexible; it allows both FOSS adherents and proprietary software vendors to each pursue their visions of how the world of software should work.

The virtue of this flexibility manifests itself in several ways. For instance, because the main copyright licenses used in FOSS communities are by now well-known, they help reduce transaction costs because subsequent users are more likely to be familiar with the terms and their rights under them. While I have written elsewhere that in the corporate setting the licenses may have the opposite effect—that is, increasing transaction costs, and for no good reason in most cases—for many developers familiarity with the licenses likely helps instill trust and thereby foster reuse. Indeed, FOSS copyright licenses may function in some ways more like a trademark, signaling to subsequent developers that the source is to be trusted (more on trademarks below).

Copyright law also includes limitations that can and have helped FOSS communities. For instance, copyright only extends to particular expressions of ideas, but not the underlying ideas themselves. When an idea can only be expressed in a limited numbers of ways, the idea is said to merge with the expression, whereby copyright generally does not apply. Copyright also does not apply to functional systems, processes, or methods of operation (these are generally protectable under patent or trade secret law, if anywhere).

FOSS communities have benefited from these limitations in the past year, and their importance may increase in the future. For instance, Oracle recently asserted patent and copyright infringement against Google based on Google’s use of 37 Java API packages in the Android ecosystem. The district court ultimately held that the Java APIs in question aren’t copyrightable because they serve a functional role in a system or method of operation; they are necessary to use for interoperability purposes. Oracle’s patent claims also failed. Oracle is appealing the ruling, but in the meantime, the ruling and the copyright limitations behind it provide at least some comfort to FOSS communities in pursuing open, collaborative software development. And if the ruling is confirmed, it and other similar rulings may help pave the way for a more open future for FOSS developers.

2. The DMCA

Another partial boon to FOSS communities is the Digital Millennium Copyright Act of 1998 (DMCA). The DMCA is not strictly copyright law, but it is related to copyright; Congress enacted it in part as a response to the perception that the growing digitization of content would increase instances of copyright infringement. Many of its provisions are therefore meant to protect copyright holders against the potential for increased copyright infringement (e.g., prohibitions on circumventing DRM or trafficking in tools that enable such circumvention); these are typically the provisions that draw the ire of copyright minimalists, including many in the FOSS world. In fact, Section 3 of the General Public License Version 3.0 is meant to counteract the DMCA’s DRM provisions, which I’ve written about here.

But the DMCA also includes some provisions that help protect FOSS development and use of copyrighted materials in general. For instance, the DMCA includes “safe harbors” that shield online service providers from liability arising from the activities of its users—e.g., uploading infringing content to the site—so long as the service providers adhere to certain basic requirements of the DMCA (e.g., removing infringing content once notified by a copyright holder). YouTube and other online services would have a difficult time surviving without this important liability shield.

For FOSS-hosting sites such as FOSS foundations (e.g., the Outercurve Foundation), Github, Sourceforge, and others, the protections that the DMCA offers can also play an important role in enabling them to facilitate FOSS development. Copying software code from proprietary vendors and uploading it to online FOSS repositories seems rare in the FOSS world. But to the extent that it may happen, the DMCA shields DMCA-compliant service providers from concerns about potential liability. It therefore makes providing software development platforms to FOSS communities that much less risky.

3. Trademark

Traditionally trademark law’s primary objective has been to protect consumers; trademark rights in use of certain marks are granted in order to protect consumers from potential confusion regarding the source of the goods or services. And this remains the primary focus of trademark law today.

Trademark law is mostly a win-win for FOSS communities. Effective branding is one of the key ways by which FOSS projects distinguish themselves, and trademark law helps ensure that effective branding can occur in the FOSS world. This is especially crucial given the open, permissive nature of FOSS. For instance, without trademark law, someone that forks a FOSS project might use the same marks as the original source in order to borrow on the original source’s reputation and thereby draw users to its forked version. In such cases, significant user confusion may result. Likely for this and related reasons, many of the primary FOSS licenses explicitly disclaim any trademark rights being granted.

Trademark law also generally only protects marks when they are used as a source identifier in the marketplace. Thus, when developers use third-party APIs and a third-party mark is necessarily used as part of implementing the APIs, technically the third-party mark is not being used as a source identifier in the marketplace in such scenarios. At least in terms of trademark law, then, the developer should be in the clear in using trademarks as a necessary part of implementing the APIs (you should consult your own attorney, of course, on any of these issues).

4. Patents

As I’ve written here and here, patent law is probably FOSS’s biggest foe. And while there’s much to be desired in terms of changing patent law to better accommodate FOSS development, patent law already does provide some help to FOSS communities, or at least some self-help solutions.

Perhaps the most straightforward way is patent law’s concept of prior art; patents technically shouldn’t issue on inventive concepts that have already been developed and released to the public prior to the would-be patent holder inventing or filing for the same invention. The preceding sentence, though, is certainly an oversimplification; a set of complex rules exists for determining whether something constitutes prior art. This post won’t get into the nitty-gritty, other than to say that those rules generally mean that FOSS communities can do themselves a great deal of good by developing high-quality software and releasing it to the public as quickly as possible.

Much has been written, though, about the inadequacies of the US Patent Office in terms of familiarizing itself with the prior art before issuing patents; patents issue all the time on things that have been in use for years, or were obvious in light of what already existed.

But rather than simply bemoan this state of affairs, FOSS communities can and should take advantage of newly introduced procedures under the recently enacted America Invents Act of 2011 (AIA). Under the AIA, “inter partes” review is available to potentially invalidate any patent, regardless of whether the patent was issued prior to or after the AIA became effective. A “post-grant” review procedure also became available to those wishing to invalidate patents issued post-AIA; it is available 9 months from the patent issuing and includes more favorable procedures than inter partes review for challenging issued patents.

These procedures get complex fairly quickly (a good high-level summary can be found here). But the point is simply that, despite the AIA falling short of the hopes of many, it did make some headway in providing means by which FOSS communities can more readily invalidate patents that should have never issued. Efforts such as the “Post Issue Peer to Patent” project are a great start on this front. Expanding on these and related efforts promises to benefit FOSS communities.    

5. Trade Secrets

Trade secret law generally protects information that derives economic value from not being known or readily ascertainable through appropriate means, and which is subject to reasonable efforts to maintain its secrecy. Often companies choose between the (relatively) short-term protection offered by patents and the (potentially) infinite protection offered under trade secret law.

Another key difference between trade secret law and patent law—and which can benefit FOSS communities—is that trade secret law does not protect the owner of trade secrets against independent development by someone else. A patent, conversely, can generally be asserted against an “infringer” who is using technology that the patent’s claims cover, even if the infringer came up with the technology independently (i.e., didn’t copy it from the patent holder).

So under trade secret law, if FOSS communities develop technology that happens to be very similar to the trade secrets of a third party, but which they developed without misappropriating the trade secrets of that third party, trade secret law generally provides no recourse against them. Furthermore, if a third party releases products into the public and the trade secrets used in the product can be discovered through reverse engineering the product, such reverse engineering is generally considered an appropriate means by which to obtain the information under state trade secret law (on the other hand, copyright infringement may occur if code is copied, and contractual restrictions on reverse engineering can also come into play).

One significant exception to this allowance for reverse engineering is a federal statute (the Economic Espionage Act of 1996) that, on its face, may criminalize reverse engineering. This federal statute is the subject of much debate, however, and some believe that U.S. attorneys are unlikely to bring suits against parties for activities that are permitted under state law. So far, the available evidence seems to bear this out.   


While FOSS development doesn’t always mesh well with traditional IP law, IP law does provide FOSS communities some aid. Above I’ve reviewed some of the ways that each body of IP law may help FOSS communities. That’s not to say that IP law doesn’t need significant reform in order to better accommodate FOSS. I’ve argued here and here for several specific reforms that I believe would help better reconcile FOSS development with traditional IP law. But in the meantime, FOSS communities would be well served taking advantage of the aspects of IP law that already help them.       


11 comment(s) so far...


Re: Frenemies: How IP Law Helps FOSS Communities, guest blog by Clark Asay

In summary: intellectual property laws are a good thing for Open Source because they can help protect against intellectual property laws. Great.

On the other hand, I agree with you about the trademarks bit.

By James Stevens on   9/12/2013 3:48 AM

Re: Frenemies: How IP Law Helps FOSS Communities, guest blog by Clark Asay

A very interesting article on how to live with an abusive spouse. A must read for victims.

By Shawn H Corey on   9/12/2013 8:42 AM

Re: Frenemies: How IP Law Helps FOSS Communities, guest blog by Clark Asay

Great post, Prof. Asay! One additional benefit to FOSS with Copyright Law that you don't mention, at least under US law, is that to the extent that breach of an open source license is enforceable as copyright infringement (see Jacobsen v. Katzer), open source authors may be able to get injunctive relief (and possibly statutory damages). Since most open source is free (as in beer), proving actual damages under contract law can be problematic for purposes of getting an injunction to prevent future infringement. Copyright law strengthens the ability of open source authors to enforce the licenses they attach to their code.

By Friend of FOSS on   9/12/2013 9:50 AM

Re: Frenemies: How IP Law Helps FOSS Communities, guest blog by Clark Asay

Above I’ve reviewed some of the ways that each body of IP law may help FOSS communities. That’s not to say that IP law doesn’t need significant reform in order to better accommodate FOSS. Thanks for your article.

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