Lora Bentley spoke with Antoinette (Toni) Tease, a registered patent attorney who practices in the areas of intellectual property and technology law. She currently serves as chair of the information technology (IT) division of the American Bar Association's Intellectual Property Law section. Ms. Tease spoke to us regarding this article about the Free Software Foundation's efforts to prevent future agreements like that recently struck between Microsoft and Novell.
Bentley: Assuming for the sake of argument that the GPL v3 terms as described in the Boston.com article were in effect when the Microsoft-Novell agreement was reached, how can Microsoft be bound by them considering Microsoft is not the vendor that has released software code under that particular license? Is it merely a matter of how the deal was structured between them?
Tease: Unlike prior versions of the GNU General Public License (GPL), which did not address patent rights, the current draft of the GPL version 3 has several provisions that address patent rights. Section 2 states that the license to use the open source code "terminates if you bring suit against anyone for patent infringement of any of your essential patent claims" based on any version of the open source program. An "essential patent claim" is a patent claim that would give someone permission to make, use or sell the program. In other words, the GPLv3 takes the position that open source software should be free not only from copyright claims but also from patent claims. This policy statement is summarized in Section 11 of the GPLv3, which states: "You receive the Program with a covenant from each author and conveyor of the Program that the covenanting party will not assert any of the party's essential patent claims in the material that the party conveyed, against you, arising from your exercise of rights under this License." This means, for example, that if Red Hat distributes to its customers, it cannot turn around and sue those customers for infringement of Red Hat patents based on functionality that is incorporated in Linux.
Furthermore, the GPLv3 imposes on those who "convey" (former versions of the GPL used the term "distribute") open source code to others the obligation to "shield downstream users" against patent infringement claims brought by a party with which the conveying party has entered into a non-sublicensable patent license agreement (this is presumably a reference to the Microsoft-Novell agreement) that purportedly covers functionality incorporated in the distributed open source program, or, in the alternative, to ensure that the source code to the licensed program is publicly available. In my view, this particular section of the GPLv3 is convoluted and may not fully address the problem that the Free Software Foundation (FSF) is intending to address.
By "shield," the FSF may mean indemnify, or it may mean that the licensee is required to extract a promise from the licensor that it will not sue anyone else for infringement of the same patent based on the use or distribution of a GPL-governed software program. This language needs to be clarified. The alternative - that the conveying party (which is also the patent licensee in this scenario) ensure that the source code for the covered work is publicly available - does not protect users of that code from patent infringement lawsuits brought by the patent holder. It addresses the issue of access to the code, but it does not address the issue of shielding those parties from liability for patent infringement.
In direct response to the question, the GPLv3 purports only to bind parties that convey a software program that is governed by the GPLv3 or a derivative work thereof. Unless Microsoft itself is distributing Linux, it would not be governed by the GPLv3. Rather, the GPLv3 as currently drafted would impose an obligation on Novell to somehow "shield" its customers from patent lawsuits brought by Microsoft, or, alternatively, to make the source code publicly available (which really doesn't address the problem of patent lawsuits being brought by Microsoft against Novell's customers).
In the hypothetical posed in the question, there are a number of ways in which Novell could "shield" its customers from patent claims brought by Microsoft. Novell could require Microsoft to waive such claims in the agreement between Microsoft and Novell, or Novell could include an indemnification provision in its agreements with its customers.
Bentley: How can a waiver of the right to sue one Linux distributor equal waiver of the right to sue any Linux distributor - especially when the waiver is only one part of a larger agreement between two specific parties?
Tease: The GPLv3 is not an agreement between two specific parties; instead, it is an agreement between a community of software developers, on the one hand, and one or more users of the software, on the other hand. The agreement between Microsoft and Novell, which was an agreement between two parties, included a covenant not to sue based on the cross-licenses granted in the agreement. Similarly, Section 11 of the GPLv3 includes a covenant that no conveyor of a covered program will sue a user of that program for patent infringement. Section 2 of the GPLv3 states that the license to use the open source code terminates upon breach of this covenant not to sue. In my view, those provisions should be as enforceable as any other provision of the GPLv3.
Bentley: If the Free Software Foundation's approach to preventing such agreements from happening in the future isn't adequate, is there any approach that would work? What would it be?
Tease: As stated above, I do not believe that the GPLv3 as currently drafted fully solves the problem that the FSF would like to solve, namely, protecting all users of GPL-governed code from patent lawsuits based on their use of a covered program. With that said, I believe that it is only fair that someone who benefits from the collaborative efforts of the open source community should not be able to assert a proprietary interest in the fruit of those efforts. What the GPLv3 does not address, however, is the flip side of that equation: Should the open source community be exempt from patent liability based on inventions that are developed independently of the open source community?
In my view, the open source community should be as accountable in terms of patent infringement as any other party. In that respect, if Microsoft or any other company has developed and patented software that was not derived in any manner from open source code (in other words, Microsoft did not rely on the fruits of the collective labors of the open source community but rather developed the patented software entirely on its own), then the distributors of that software should be as accountable as anyone else for patent infringement.
The practical problem with this approach, however, is that it is rare for any commercial software today to be entirely devoid of open source code or any benefit derived from the use of open source code. That's where the equitable questions arise - who should have the burden of proving that a software invention was developed independently of any benefit derived from the efforts of the open source community? What standard of proof should apply? What happens if the company that developed the patented software used open source build tools but did not incorporate any open source code into its code base?
In other words, where do we draw the line between saying that a patent holder has benefited from the collective efforts of the open source community (and therefore should forego its patent rights) and creating a special exception to patent infringement for a separate category of players (i.e., the open source community)?
There are many in the open source community who believe that software should not be patented at all. But as long as this country maintains the position that software is patentable, we will have to resolve the conflict between the "free software" ideology of the open source community and the proprietary nature of software patents.