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Copyrights and Patents and Trademarks

Oh My!

An overview of Intellectual Property as applied to Free & Open Source Software

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Major Types of Intellectual Property

● Copyrights● Patents● Trademarks● Trade Secrets*

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Copyright: What is it?

● A little (legal) Code, 17 U.S.C. § 102(a):● “Copyright protection subsists, in

accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.”

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Copyright: What is it?

● Works of Authorship: Any creative work, including software source code and binary object code.

● Bleistein Non-discrimination principle: Software does not have to be high-art to be “creative”

● FACTS are not copyrightable. – Databases: On the knife edge of copyright. The FACTS

are not copyrightable, but the structure or “selection and arrangement” might be (white pages vs. yellow pages)

● IDEAS are not copyrightable:– The idea of a web browser is not copyrightable, only the

authorship that goes into one particular web browser. ● FUNCTIONALITY is not copyrightable

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Copyright: What is it?● Original: Means that the work was made without

copying a previous work... does not necessarily mean the work is “unique” ● Example: Compaq BIOS clones done in a clean-

room– Even if the Compaq BIOS functions identically

to the IBM version, it is not necessarily violating a copyright

● Many “original” works will have similarities based on the type of work being made.– Movie Example: Westerns– Software Example: Text Editors

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Copyright: What is it?

● fixed in any tangible medium of expression● Printed on paper● Stored on a hard drive/CD/SSD/Clay Tablet/etc.● In your head: NOT fixed in a tangible medium

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Copyright: Who owns it?●Default rule: The author owns the copyright●At work: Works Made for Hire

● Employer:● If made by an employee in the normal course of

employment then the Employer owns the work● Look carefully at employment contracts● Assignment agreements are often used as a backup

● Express Written Agreement:● Problem: often does not apply to software

● Independent contractor:● The contractor owns the work, but work can be assigned

● Assignments: Transferring Ownership● Made after Jan. 1 1978 last for initial 35 year term,

assignor can take steps to revoke at the end of the term● Do not automatically revoke, but gives a chance for

“second bite at the apple”

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Copyright: What are the Protections?

Bundle of Rights in 17 U.S.C. § 106:

“Subject to sections 107 through 122, the owner of copyright under this title has the exclusive rights to do and to authorize any of the following:

(1) to reproduce the copyrighted work in copies or phonorecords;(2) to prepare derivative works based upon the copyrighted work;(3) to distribute copies or phonorecords of the copyrighted work to the

public by sale or other transfer of ownership, or by rental, lease, or lending;(4) in the case of literary, musical, dramatic, and choreographic works,

pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly;

(5) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly; and

(6) in the case of sound recordings, to perform the copyrighted work publicly by means of a digital audio transmission.”

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Copyright: Makes Copyleft Possible

● The powers granted in 17 U.S.C. § 106 give teeth to Copyleft licenses like the GPL:● License: Means others can use the work, but

ownership does not transfer.● Reproduce the software: The GPL allows this without

restriction– Mai Systems Corp. v. Peak Computer Inc.: Loading a

program from hard-drive to RAM is considered making a copy! (exceptions in 17 U.S.C. § 117)

● Prepare Derivative Works: Derivative works include binary code (“derived” by compiling), changes made to the GPL code itself, and also larger programs that incorporate GPL code from earlier works along with new code. GPL allows preparation of derivative works without restriction.

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Copyright: Makes Copyleft Possible

● Distribution of Copies:● THIS is where the GPL has teeth.● If GPL'd code is distributed, the party making the

distribution agrees to certain terms.– Source code must be made available when distributing

binary code (including source code of derivative works in the full GPL, only direct changes to LGPL code)

– The redistributing party cannot put further restrictions on the the distributed works. Applies to existing GPL code and new derivative works based on the earlier code

● Infringement of copyright protection lets a copyright holder take legal action.

● Prior to taking any legal action, the copyright must be registered with the Copyright Office.– Which version of software is infringed? Is that version

registered?● Putting NOTICE of the license and the copyright in the

source and making it available via the User Interface

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Patents: What can be Patented? ● We are actually referring to Utility patents in this talk● 35 U.S.C. § 101:

● “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.“

● “Process” as defined in 35 U.S.C. § 100 :– “The term 'process' means process, art or method, and

includes a new use of a known process, machine, manufacture, composition of matter, or material.”

● Software that is executed as part of a patentable process can be part of an embodiment of a patentable invention

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Patents: What can't be Patented?● Source code in and of itself is non-patentable

● “printed matter” doctrine● Beauregard claims have been used to claim programs as

an article of manufacture:– “A computer readable medium . . . “

● Bilski: the “machine or transformation” test for processes. ● Targeted at reducing “business method” patents that

often include some software.● Particular machine● Transformation of an article● SCOTUS: Some business methods might be still be

patentable, claims at issue are for abstract ideas● All Unpatentable:

● Abstract ideas... “Solve Energy Crisis” → too abstract● However: A specific invention (e.g. solar cell) is

patentable● Pure Mathematics... a2 = b2 + c2

● natural laws... Theory of Gravity

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Patents: What's in one?● A Specification

● Written Description telling the world what your invention is● Gives enough detail to enable the PHOSITA to practice it.

– (person having ordinary skill in the art)● Should disclose the best mode to practice the invention if

one is known.● Drawings:

● In software this includes flow chart diagrams● Claims:

● These limit what the invention covers● The specification & drawings have to

support the claims

PHARAOH notPHOSITA

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Patents: What does a Patent Cover?

● A patent covers allowable subject matter that is claimed● Claims are at the end of every utility patent, and recite

elements that limit the scope of what the invention covers.● Independent & Dependent claims: (U.S. Patent 7,113,911)

– 30. A method of interacting with a local entity wherein: (a) upon a user approaching the local entity, contact data, identifying a voice service associated with the entity but separately hosted, is presented to the user or to user-carried equipment; (b) the contact data is used by the user's equipment to contact the voice service over a wireless network;(c) the user interacts with the voice service through spoken dialog with both voice input by the user and voice output by the service; (d) the voice service controls the operation of functionality associated with the local entity by means of control data passed to the functionality over a short-range wireless link from the user-carried equipment whereby to coordinate operation of the functionality with said voice output.

– 32. A method according to claim 31, wherein the beacon device includes parameter values relating to the state of said local entity in said contact data, these parameter values being passed in (b) over the wireless network to the voice service where they are used in conditioning the output of the voice service.

What's a“local entity”?

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It's a plant! … or other“dumb” object

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Patents: Novelty & Non-Obviousness

● Even if a claim is directed to patentable subject matter, the claim ALSO has to be novel (35 U.S.C. § 102) and non-obvious (35 U.S.C. § 103)

● Novelty means that the claims have to be directed to something that is not known in any single reference in the prior art

● An individual element of the claim might be known, but the entire claim as a whole must be novel.

● Non-obviousness means that the Person Having Ordinary Skill in the Art would not have found the claimed invention “obvious” at the time the invention was made

● Combinations of known pieces of prior art can be used to reject a claim as obvious even if no single reference includes all the claim limitations.

● KSR v. Teleflex is a recent Supreme Court ruling that dealt with the tests used to determine “obviousness”

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Patents: Quid Pro Quo● Why grant patents? Quid Pro Quo:

● You tell the public how your invention works so that the PHOSITA can practice it.

● In exchange you get the right to exclude others from making, using, selling, offering to sell, and importing that which is patented for a limited time. (~20 years from filing)

● Blocking Patents:– A patent gives you the right to exclude not the

right to practice. (Intel & AMD)● On sale / public use bar: If you want a patent, you have to

apply < 1 year from any public use, disclosure, sale, or offer for sale of a product that is within the scope of the patent– This rule is stricter in foreign countries!

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Patents & Open Source Software● There is no need to know about the existence of a patent to infringe it. ● Patents publicize knowledge that could otherwise be locked up in trade secrets. In a way they are open source.

● No, you probably don't read patents... but you do read research papers, white papers, technical specifications etc.

● Some famous Open Standards have come about because of patents:

● PNG vs. GIF ● Ogg-Vorbis vs. MP3● Web-M (VP8) vs. H.264

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Trademarks: What are they?

● Trademarks let consumers identify the source of goods● See the mark and you know that it comes

from a single source● Protects consumers from words/logos that

are confusingly similar to the mark– The owner must “police” the mark

● Trademarks come into existence by use in commerce● Registration of a mark is not necessary to

have a trademark, but gives nationwide coverage & notice to others of the mark

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Trademarks: What are they?

● “Generic” terms cannot be trademarked, and look out for Genericide:● Thermos, Kerosene, Aspirin, Yo-Yo● Bad use: “Let me google that for you...”● Better: “Let me use the Google™ search engine...”

– (http://www.google.com/permissions/guidelines.html)● “Descriptive” terms can get trademark protection

only if they acquire “secondary meaning”● Proof of “secondary meaning” goes to the

Trademark Office● “Holiday Inn” “All-Bran”

● “Suggestive” Marks: no need for secondary meaning● Blu-Ray, QualComm

● Arbitrary & Fanciful:● Arbitrary: Red Hat & Apple● Fanciful marks: Kodak

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Trademarks in Open Source

● Trademarks do not apply to code directly, but they do protect the identification of the source!● Look at how sources are identified in ads!

● Redhat and Centos:● Redhat releases all of its software via GPL and other

open licenses.● Centos uses the software.. but Centos does not call

itself “Redhat” or use the Redhat logo!● Arch Linux:

● The Arch Logo was being used by an Australian company. Did not go to court but the Arch owners did contact the owners to stop the use of the mark.