by Philip H. Albert, newsfactor.com
Decisions, decisions, decisions. Do I want cable or satellite TV?
Should I dump the SUV for a hybrid? East or West Coast? Like most
major decisions, making the move to open-source software -- or not --
can cause a lot of genuine hand-wringing.
Despite all the innuendo and bias regarding the pros and cons
associated with such a decision, the legal analysis of using
open-source software is the same as the legal analysis for using
proprietary software. The devil is in the details; and those details
provide risk and opportunities. The trick is to make sure you are set
up to maximize the opportunities and minimize the risks.
It is well established that if you have access to code authored by
another and you incorporate some or all of it into your own code, that
incorporation is a "derivative work." The original author (or the
owner of that author's copyrights) can prevent dissemination of your
code unless you have a license to that original code.
That can really put a damper on sales, especially if the borrowed code
propagates throughout many projects.
The increasing use of open-source code in commercial settings
introduces new risks related to practical matters rather than to
licensing. In a typical, well-run business, there are
business-development folks, purchasing officers, engineers,
programmers, lawyers and contract negotiators.
Business development tells contracting what software it needs to
"in-license" and how the company plans to use it. The contract
negotiators then get a suitable license and coordinate with the
purchasing officers. Only when all of those steps are completed does
the vendor ship the code base to the technical team. As a result,
there is no access to the in-licensed code until licenses consistent
with the organization's business plans are in place.
With open-source software, the same process should happen, albeit with
a gravitas appropriate for the significance of the code being brought
in. Thus, if millions of dollars of investment are to be made in
product development, marketing, packaging and promotion, the full
process must be used even if the purchasing step can be skipped.
Another risk that is sometimes present with open source is that of
provenance. You might have a license to a code base from one party,
but if there are other claimants to the code, you also might need
licenses from others. That means you must know where all of the code
came from, a requirement that is not always more difficult to fulfill
with open-source code than with proprietary software.
Even if there are other claimants to copyright in the code --
especially in cases where open-source code is licensed and used in
closed-source projects -- those claimants might never know that their
code is being incorporated into the closed source. With open-source
licensing that requires that the source code be distributed in any
future distributions, the code base will be more available to
claimants and could raise the chances of claims being asserted.
None of these risks are specific to open source and they should not
matter when a company is careful about licensing. If you licensed code
properly from all interested parties, the manner of acquiring the code
base and its availability for review should not lead to copyright
claims against you.
Recognizing the Opportunities
So, if properly used, there is no real increased legal risk of using
open-source software versus proprietary software. There are, however,
many opportunities that are unique to open-source code. Some of these
advantages -- such as the ability to leverage the development efforts
of a large community of programmers that you don't have to pay -- are
well known. Other benefits are less obvious unless you happen to be a
Litigation is messy. Sophisticated users of legal services know this,
so they generally try and avoid litigation even if their opponent is a
disagreeable character. If a dispute can be settled with finality at a
cost considerably less than litigation, there will be saber rattling,
but a deal will happen. On the other hand, if one side wants something
that will cause a shut-down of the other side's business operations,
litigation is almost inevitable.
For example, when someone asserts a patent claim against Research In
Motion -- the company that makes the BlackBerry PDA -- and asks the
court to shut down the company, RIM is stuck. It has to litigate.
Designing Around the Problem
A dispute over the use of open-source code is less likely to get to
litigation because it is a lot easier to design around the problem --
except for the SCO v. IBM situation, which is an anomaly all
around. If a company finds that it might have used copyrightable
material in a way that was not permitted by the license under which it
used the material, it can design around the problem -- rather than
litigate the issue -- by removing the offending code and creating
replacement code from scratch.
Because the source code is available, it is more likely that the
company will be able to understand the operation of the code and how
to create a replacement. Duplicating the functionality of software is
not covered by copyrights, although the line between permissible
copying of functions and ideas and impermissible copying of expression
is not always clear.
This ability to design around licenses has interesting second-order
effects on the parties to a dispute. If an aggrieved copyright holder
knows that a user of the code can easily strip it out and move on, the
copyright holder is going to be more willing to make a deal that
allows the copier to keep using the code under terms that might be
acceptable to the copier.
In the domain of intellectual property, the maxim "it is easier to
obtain forgiveness than it is to obtain permission" doesn't
apply. Being forgiven for unlicensed use of intellectual property is
almost always more expensive than buying permission in the first
Given a choice, you should always negotiate for permission before
using someone else's intellectual property. Nonetheless, there are
situations in which it is not clear until well into a project that
permission was needed in the first place. To minimize the impact of
such developments, developers facing a choice among various flavors of
open-source code should opt for the one most likely to grant
For example, if you are developing a new printer series and want to
provide Linux drivers, there are likely many existing open-source
projects to form a base for your offering. Suppose you have a choice
of open-source code downloaded from a large printer manufacturer (your
eventual competitor) or from a small software house. If it later turns
out that you needed more permissions than were granted in the license,
which company is going to be easier to deal with?
The large printer manufacturer might opt for litigation to wear you
down until you quit the business, just as Polaroid did with Kodak in
the instant-photography business. By contrast, the smaller developer
might grant the necessary permissions in exchange for exposure and
other noncash benefits.
Like most major decisions, the choice to use open-source software
offers both great opportunities and serious risks. Done correctly, the
risk is no greater than with any other in-licensing of copyrightable
material. And the opportunities are greater.
Life is about choices. At some point, we need to decide if we are
ready to grab the brass ring the next time it comes around.
Philip H. Albert is a patent attorney and partner with the San Francisco
office of the intellectual property law firm Townsend and Townsend and Crew
Copyright 2005 NewsFactor Network, Inc.
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