brian lally assistant chief counsel intellectual property law division u.s. dept. of energy 9800 s....

U.S. DEPARTMENT OF

ENERGYOffice of Science-Chicago Office

Brian LallyAssistant Chief CounselIntellectual Property Law DivisionU.S. Dept. of Energy9800 S. Cass Ave.Argonne, IL [email protected]: (630) 252-2042 Fax: (630) 252-2779

Licensing OSSit’s not as hard as you think

This presentation is intended for general information purposes only and does not constitute legal advice. The presentation should not be used or relied upon as a substitute for independent legal advice.

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What is Open Source Software (OSS)?

Open source = a licensing approach

Open source = License

the license defines the community and how it will interact

different licenses create different communities

Community

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Open Source Software Definition

More than just access to the source code

OSS is software licensed under an agreement that conforms to the Open

Source Definition*:

Freedom to Redistribute Access to Source Code Freedom to Modify-Derivative Works No Discrimination against persons or groups or fields of endeavor Integrity of Author’s source code Redistribution accordance with the Open Source Licensing Agreement License must not be specific to a product, must restrict other software and

must be technology neutral

*see, open source initiative (opensource.org)

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Protect yourself and your organization

Most OSS licenses release the authors from any responsibility. Choose a license that protects you from liability.

If joining an existing community-understand the licenses within the OSS community that you are contributing to-adopt a license that is compatible with the predominant license the community

If you are building a new community-the type of license you chose will help determine how your community develops-Do you want to encourage participation by commercially entities? Do you want to ensure that the source code always remains open? Pick the right license for the community you want to develop.

Consider dual licensing

Consider a GPL compatible license

Pragmatism v. Ideology

When in doubt contact your IP Counsel!

Open Source Licensingchoosing the right license matters

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OSS Licensing Families

Academic Licenses Permissive Licenses Weakly Protective Licenses

Protective Licenses

“freedom” to users of the code

“freedom” to users of the code with more robust terms

Divides code but ensures that original code remains “free”

ensures code stays “free”

Commercially friendly Commercially friendly Limited Commercial Use Limits commercial adoption

Examples: Berkeley (BSD) (new/modified) MIT/X11

Examples: Apache (AL)

Examples: Mozilla (MPL) Eclipse (EPL) Common Public License (CPL) LGPL

Examples: GPL

permissive(commercially friendly)

Restrictive(copyleft)

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Academic and Permissive Licenses

You can use, modify, and redistribute the code in your product, but you must give attribution to the original author.

derivatives can relicense

gives most of the control to the user

allows for commercial development (closed source)

permissive license similar to academic with more robust terms and conditions (patent, TM, contribution provisions)

MIT/X11 New/Modified BSD Apache 2.0

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Weakly Protective Licensespartially closed licenses

Derivative or File based distinctions

divides code into pieces

allows linking (use of library) to proprietary program

the source code of the original library (and any modifications) must be redistributed freely

however, the application itself can remain closed

commonly used for libraries and platforms

LGPL 2.1 LGPL 2.1 + LGPL 3.0 and 3.0+Mozilla (MPL) 1.1

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Strongly Protective Licenses reciprocal licenses (viral licenses)

Derivative works remain under the original license. Copyleft.

ensures the code will remain open

no artificial separation of code

derivative works remain under the license

copyright holder retains much control

limits commercial development

GPL 2.0 GPL 2.0 + GPL 3.0 and 3.0+

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You can’t just mix and match OSS licenses

They must be compatible*

* When in doubt consult with your IP counsel

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OSS License Compatibility

Public Domain

MIT/X11

New/Modified BSD

Apache 2.0

GPL 2.0

GPL 2.0 +

GPL 3.0 and 3.0+

LGPL 2.1

LGPL 2.1 +

LGPL 3.0 and 3.0+

Mozilla (MPL) 1.1

permissive(commercially friendly)

Restrictive(copyleft)

Only compatible with GPL 3.0

and 3.0+

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DOE OSS Approach

An evolutionary approach: DOE policies on OSS have evolved over time

DOE is reducing barriers to accessing OSS at our Labs

DOE policies are aimed at granting flexibility to our Lab contractors.

Lawyers should not be mandating how software is distributed

Allow Labs to select appropriate licenses.

Address misperceptions about working with DOE and our Labs

Be prepared to adapt to a changing scene

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Software Licensing at DOE Labs . . . an evolution

Pre-2002 2002-2003 2003-2010 2010-present

Required Approvals*

DOE Program and DOE Patent Counsel

DOE Program and DOE Patent Counsel

DOE Program No affirmative approval necessary*

Blanket Program Approvals

Not contemplated Allowed Allowed Allowed

Available licenses

traditional DOE copyright license terms

Industry standard OSS licenses

Custom OSS Licenses that meet DOE minimum requirements








* but must provide DOE program two weeks notice to object.

Rigid Flexible

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DOE M&O OSS Contract Req.

CLAUSE I.112 - DEAR 970.5227-2 RIGHTS IN DATA-TECHNOLOGY TRANSFER, subparagraph (f)

Lab report software and decides whether OSS is desired Obtain Program Approval Form DOE F 241.4 to ESTSC Select an OSS License Lab must maintain an OSS Log and provide Public Access to the OSS Periodic Export Control Reviews

Technology transfer mission clause of the M&O Contracts is not applicable (e.g., product liability indemnification, U.S. competitiveness, U.S. preference clauses are not required)

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Laboratory created OSS

Labs have flexibility to choose standard OSS Licenses (or create custom licenses that meet min req)

Lab should provide public access to OSS and may monitor to determine effective dissemination

DOE prefers Labs to allow liberal distribution without much restriction on redistribution of derivative works.

Lab may request/accept voluntary contributions to Laboratory distributed OSS. Labs should use reasonable efforts to:

Ensure 3rd party has legal right to make submissions Log/track submittals that add significant code/functionality Check for viruses Lab should inform DOE of any 3rd party infringement claim

Dual licensing: Labs may license both commercial and non-commercial versions however: Lab needs DOE approval to commercially license software.

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Program Approvals

DOE Program Approvals: ASCR/ASCI – Blanket Approval for all software developed under OASCR/ASCI program

funding to be licensed as OSS All other DOE Programs (funding 50% or more of software development) “opportunity to

object” with two (2) weeks prior notice of licensing as OSS Exceptions: specific export controls prohibitions (e.g., encryption), 3 rd party proprietary

code, classified code, DOE program overrides (e.g., HPSS), DOE objection within 2 weeks of notification, special contract terms

DHS funding – “programmatic “approval” needed on individual basis (even if only partially funded by DHS) for licensing as OSS at this point

DoD funding – No additional programmatic approval for licensing as OSS

NIH funding – No additional programmatic approval for licensing as OSS

NSF funding – No additional programmatic approval for licensing as OSS

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3rd Party OSS at DOE Labs

Creating Derivative works of 3rd party OSS: Labs may assert copyright as OSS derivative works without notice to DOE program or approval

from DOE patent counsel . (also no requirement to deposit in ESTSC)

Copyright transfer to 3rd party: some licenses transfer copyright to 3rd party licensor. If Lab contribution < 25% of total OSS code, than transfer is permitted. (no notice or deposit requirement). If greater than 25% DOE patent counsel must be consulted.

When a lab creates a derivate work, a 3rd party OSS license may control and Lab counsel should be consulted.

Be careful of pass-through of legal terms (warranties etc.)

If Lab wishes to commercially license a software package that combines 3rd party OSS then the Lab is required to obtain approval from both DOE program and DOE patent counsel.

DOE encourage Labs to use OSS when appropriate however:-Lab counsel should be consulted to ensure that 3rd party license terms don’t contain terms contrary to DOE policy. (Lab issued guidance)

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SciDAC.gov

SciDAC funded software list https://outreach.scidac.gov/scidacoverview/init/default/scidac_current?mode=all

DOE Office of Science and Technical Information (osti.gov)

Energy Science and Technology Software Center (ESTSC)

http://www.osti.gov/estsc/

Sample DOE Lab Software Sites

Argonne National Laboratory http://www.anl.gov/techtransfer/Software_Shop/OpenSourceSoftware.html

Lawrence Berkeley National Laboratory

http://www.lbl.gov/tt/techs/oss.html

Los Alamos National Laboratory https://computing.llnl.gov/?set=resources&page=os_projects

Sandia National Laboratories https://software.sandia.gov/

Sample Direct OSS Sites

Globus Toolkit http://www.globus.org/toolkit/

Chombo https://seesar.lbl.gov/anag/chombo/

Where can I find DOE funded OSS?

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https://outreach.scidac.gov/scidac-overview/init/default/scidac_current?mode=all

SciDAC Software website



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Example of licensing DOE sponsored OSS Software

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Violating OSS License Termsreal world consequences

Jacobsen v. Katzer (U.S. Court of Appeals) -- 2008An OSS License terms were “conditions” not just “covenants”

Not merely breach of contractCopyright Infringement – generally available:

InjunctionsStatutory Damages ($750 to $30,000 per infringement, up to $150,000 per violation if the copyright owner can prove willful infringement. Attorneys fees

Oracle v. Google (U.S. District Court, Northern District Calif.) filed August 12, 2010

Android (released under an Apache OSS licensed) allegedly infringed 7 patents and one copyright (Java, released under GPL) owned by Oracle (which bought Sun Microsystems earlier 2010).Oracle requesting:

Destroy copies, treble damages, attorneys’ fees

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Questions?

Contact Information:

Brian LallyAssistant Chief CounselIntellectual Property Law DivisionU.S. Dept. of Energy-Chicago Office9800 S. Cass Ave.Argonne, IL [email protected]: (630) 252-2042 Fax: (630) 252-2779

mailto:[email protected]

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Open Source v. Proprietary Software

Open Source Proprietary

Licensor distributes source code Licensor distributes object code only

License flows with the code unilateral permissionNo negotiationNo affirmative assent

“arms length transaction”-meeting of the minds-sometime negotiated-affirmative assent (click, sign etc.)

Modifications are allowed Modifications are generally prohibited

Permissive Use-source and object code-may copy, modify and distribute-may allow others to do the same

Use Restrictions-object code only-limited copying-no reverse engineering-no distribution

licensee may do its own development and support and may hire a third party to do it

upgrades, support and development is done by the licensor

Licensor Obligations-No warranties-No updates/upgrades-No support obligations-no indemnification

Licensor Obligations:-Warranties-Updates-Maintenance/Support-Indemnification

brian lally assistant chief counsel intellectual property law division u.s. dept. of energy 9800 s....

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