Patents and Open Standards (original) (raw)

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Patents and Open Standards

"It was never the object of patent laws to grant a monopoly for every trifling device, every shadow of a shade of an idea, which would naturally and spontaneously occur to any skilled mechanic or operator in the ordinary progress of manufactures. Such an indiscriminate creation of exclusive privileges tends rather to obstruct than to stimulate invention. It creates a class of speculative schemers who make it their business to watch the advancing wave of improvement, and gather its foam in the form of patented monopolies, which enable them to lay a heavy tax on the industry of the country, without contributing anything to the real advancement of the arts. It embarrasses the honest pursuit of business with fears and apprehensions of unknown liability lawsuits and vexatious accounting for profits made in good faith." — U.S. Supreme Court, Atlantic Works vs. Brady, 1882

"[Through the U.S. Patent Office] Any idiot can get a patent for something that should never be granted a patent." — Irving Wladawsky-Berger, IBM Vice President of Technology and Strategy (InfoWorld 2005-03-07)

Contents

Introduction: Patent Nonproliferation and Disarmament

Disclaimer: Most content in this document was written in 2001 and early 2002, when broad consensus had been growing about the "astonishing stupidity" of the U.S. patent system and the consequent need for deep reform. Some progress had been made as of 2003 Q4, after which this became a not-actively-maintained document. Any judgments, analysis, or opinions offered (may) belong to the principal author or to other authors whose publications are cited; they may not be assumed to represent opinions held by OASIS management or by any website sponsor. See some parallel references in "XML and Digital Rights Management (DRM)."

This document is about patents and IP licensing terms in the arena of open standards designed for the Internet. By "standards" we mean the de facto and de jure standards and specifications governing protocols and (meta-)markup languages that have come to provide a technological foundation for the Internet — standards which (until now) can be freely implemented without fear that someone will decide to begin levying license fees for their usage (e.g., TCP/IP, HTTP, FTP, TELNET, HTML, XML, P3P, CSS, XSL, SVG). By "open" we do not refer simply to standards produced within a democratic, accessible, and meaningfully "open" standards process; we refer to standards that can be implemented without asking for someone's permission or signing a license agreement which demands royalty payments or places the licensee under onerous obligations. We mean "open" in the sense of implementable within an open source framework, free of legal encumbrance. We mean "open standards" especially in the sense of Internet protocols and (meta-)markup languages that do not represent, nor have the potential to become, private tollbooths on the Internet highways.

A great many issues in this discussion are unsettled, as revealed by testimony presented on April 18, 2002 in the sessions "Intellectual Property Strategies in Standards Activities" and "Licensing Terms in Standards Activities" as part of the US FTC/DOJ Hearings on "Competition and Intellectual Property Law and Policy in the Knowledge-Based Economy." What would constitute a core, foundational technology in the Internet infrastructure as opposed to 'non-core'? How can we adjust to rapid, unforeseen changes in the marketplace such that technologies are appropriately recharacterized within the matrix of evolving foundational Internet standards? How can we arrive at a formula for defining a "non-discriminatory" yet "fair" license fee in a global environment where wealth is unevenly distributed and the ability to pay so vastly different within different countries? How can we ensure R&D investment in new technologies if royalty-revenue incentives are reduced by the public expectation of legally unencumbered core technologies? How can we ensure healthy competition by smaller/younger companies in the face of increasing patent assertions against standards? How can the open source development communities continue to thrive in a context where critical patented technologies cannot be absorbed into the open source framework? Can bureaucratic/administrative meltdown be avoided if the number of patented technologies continues to rise at the current rate?

Concern for the unimpeded openness of the Internet -- which allows democratized risk-free opportunity for experimentation, innovation, creativity, and competition -- is given birth in a larger legal context of patent proliferation and legislative attempts to control the use of hitherto neutral computing technologies. In the opinion of some authorities, the expanding protectionist trends observable today create a "potentially dangerous situation" that threatens the promise of the Internet's future.

Companies involved in standards activities may promise RAND (purportedly "reasonable and non-discriminatory") license terms for their patented technologies required in the implementation of the emerging standard, but their employees are sometimes prevented from discussing licensing details. The unknown economic effects of licensing terms which are to be revealed only after a patent-encumbered standard is approved present a difficulty for participants who do not hold essential patents. Worse, revelation of patent claims (aka 'patent hold-up' or 'patent ambush') upon the standard may come late, by intention or clerical inadvertence. Even in cases where no submarine patents are involved (as in the FTC's case against Rambus), there may be large disagreement among parties as to what constitutes "reasonable" terms versus extraction of exorbitant royalties from a monopoly position. Submarine pricing policy for previously 'acknowledged' technology can be just as devastating as a torpedo from a surprise patent revelation. Recognizing that technology subject to patent protection which ends up in a final standard "can enhance the quality of the standard and thereby promote both competition and innovation in affected new markets," policy-makers are concerned that "it can also enable the patent holder to obtain and exercise market power and to act opportunistically against its rivals." Most agree that standards work itself is an inappropriate locus for competition, but royalty-bearing patents interjected into the standards process represent competition and are distinctly hostile to cooperation. Beyond merely stifling competition in the appropriate arena, patents in the Internet standards environment may actually harm the industry.

Accordingly, most resources referenced in this document favor mechanisms to reduce legal encumbrances upon open standards stemming from patents, copyrights, license agreements, and license fees. The sources advocate policies for "patent nonproliferation and disarmament" in order to ensure the continued openness of the Internet. The overwhelming public sentiment, especially within the Open Source community, seems to favor the elimination of legal encumbrances upon standards that are critical to an open Internet technology infrastructure. With some exceptions, there is growing sentiment that Internet standards should be developed under an expectation of royalty-free terms of use. For good reasons, some technoloy leaders believe the health of the Internet critically depends upon this foundation. Thus Daniel J. Weitzner (W3C Technology and Society Domain Leader) testified before the United States Department of Justice and United States Federal Trade Commission that "... the Web itself has been possible only in the context of open, royalty-free (RF) standards." Surely some kind of worldwide network would exist today even if patents (monopolies) had been held and license fees extracted for every metered bit travelling in packets under TCP/IP (HTTP, FTP, TELNET, SMTP; SGML, XML, HTML) but many believe that the Internet as we have come to experience it requires royalty-free and license-free terms of access/usage.

According to this view, monopolistic control of Internet standards through patents should be severely restricted, or prohibited entirely as a matter of policy. The potential for adverse control by public sector (government) and private sector (commercial entities) power brokers should be resisted; the opportunity for commercial exploitation of the standards process itself should closely guarded -- so that the process of standards creation is not contorted, subverted, and otherwise compromised by the private goals of individuals or companies seeking to incorporate their patented ideas into public standards. Standards bodies should make it difficult for companies or mini-cartels to hijack resources and process to legitimize their proprietary technology solutions as "standards," using a public institution to subsidize a private commercial agenda and thus serve as a marketing arm. The implementation of open standards should not be impeded by negative incentives arising from the legal requirement to "apply for someone's permission" for use of a standard; nor should development be subjected to the bureaucracy of claims and counter-claims to royalty fees owed various companies for their portion of the intellectual property in a public standard. While some software patents may be legitimate (e.g., processor chip logic?), many believe policies should be established to eliminate their negative effects in the sphere of open standards designed for the Internet.

Of course, patents do legitimately exist in the realm of standards activities under current law. Under a policy of the USPTO that is now coming under fierce attack, (under-researched) unsustainable patents are increasing at an alarming rate, swelling the patent portfolios of large companies dedicated to stockpiling their arsenals of (they say) "defensive patents." But possession of a weapon enforces no obligation upon the owner to use it in every possible circumstance. Standards organizations like W3C, ISO, IETF, and OASIS would be well within their right to ask for voluntary, selective non-enforcement of patents under the jurisdiction of their member companies for standards that provide basic, ubiquitous services and building blocks. A growing public sentiment would ask that these SDOs enact policies which require signs to be posted at the entrance of rooms where working groups and technical committees will convene: No smoking. Check your patents at the door.

Against the backdrop of a common claim that companies are forced to continue to collect and maintain large patent arsenals for defensive purposes, the current [2002-04-25] W3C Patent Policy Working Group Royalty-Free Patent Policy presents the "reciprocal royalty-free license" arrangement. Under these 'Royalty-Free Licensing Requirements' the RF license may not be "conditioned on payment of royalties, fees or other consideration" but may be "conditioned on a grant of a reciprocal RF license to all Essential Claims owned or controlled by the licensee; a reciprocal license may be required to be available to all, and a reciprocal license may itself be conditioned on a further reciprocal license from all." See references in W3C Publishes Royalty-Free Patent Policy Working Draft." Reciprocal RF licensing represents one means of recognizing intellectual property while eliminating the threat of (e.g. RAND) royalty fees which could dramatically alter the balance of power in favor of companies holding vast patent portfolios.

The W3C notion of 'reciprocal RF license' is illustrated (approximately, at least) in Sun Microsystems' Intellectual Property Rights Declaration pertaining to the W3C Pipeline Note:

"Sun Microsystems, Inc. ('Sun') will offer Royalty-Free Licenses to any Essential Claims owned or controlled by Sun necessary to implement the XML Pipeline Control Language ('Pipeline') Note or any W3C Recommendation-track or Recommendation-level specification based on Pipeline. One precondition of any such license granted to a party ('licensee') shall be the licensee's agreement to grant reciprocal royalty-free licenses to any Essential Claims owned or controlled by the licensee to Sun and other companies necessary to implement the Pipeline Note or any W3C Recommendation-track or Recommendation-level specification based on Pipeline..."

Paraphrase: "With respect to any battle on this field, we lay down our weapons of patentry; we will not use them against anyone else on the field who similarly lays down their weapons. Here is our signed declaration."

A similar kind of solution aimed at neutralizing software patents might involve "joint buying scenarios" which sidestep antitrust and adhere to FTC/DOJ "Antitrust Guidelines for Collaborations Among Competitors," where it is allowed that "agreements jointly to purchase necessary inputs... do not raise antitrust concerns and indeed may be procompetitive." HP's Scott Peterson has argued that this "may often be the most efficient if not the only practical way of avoiding patent holdup or ambush problems and should be considered presumptively procompetitive on that ground." Yet another solution may be the creation of "public domain" reciprocal-license patent pools to which companies voluntarily contribute large number of patents, including patents embodying essential claims relevant to standards implementation; companies refusing to contribute (some reasonable proportion of) relevant patents the public pool would be placed at economic or political disadvantage. The goal in each case would be to free open standards from legal encumbrances and economic disincentives. Ample room is available for differing outlooks, however; some believe for example "patents are allowable in standards and specifications where the scope of licensing is not punitive."

Solutions to the growing "patent problem" will require creativity (new business models) as well as models of leadership in which standards bodies, individual companies, and courageous individuals can blaze a new trail. Arguably, charting these new paths will require that technology leaders take the high road in terms of focus upon the long-term global Good -- as opposed to a singular short-term mandate to maximize corporate profits. Arguably, leadership will require the courage to pronounce ichabod upon familiar institutions which have become so compromised that they no longer support their original constitutional purpose.

Why RAND is Not Appropriate for Internet Open Standards

Companies desiring to collect revenue from patent royalties frequently make statements of the following kind, designed apparently to put their competitors and the paying public at ease: "We are willing to grant licenses for this technology to all under reasonable and non-discriminatory terms and conditions." By what means are we supposed to be comforted by such a promise? The notion that RAND ("reasonable and non-discriminatory") terms and conditions protect the public needs to be debunked. RAND puts the patent owner in control of a government-backed monopoly. RAND offers no certain protection against license fees that constitute oppressive global taxation, and it may be judged highly discriminatory. Hence one writer's characterization of RAND as an expanded acronym: "half of 'RAND' is deceptive and the other half is prejudiced."

The English word "reasonable" sounds assuring, and "non-discriminatory" rings with political correctness. But RAND licensing terms pose a potential threat to the health of an open, accessible Internet; this verdict has been reached by IP experts and by common persons having common sense, revealed in several thousand emails sent to the W3C public comment mailing list. The 2002-02 draft Patent Policy Working Group Royalty-Free Patent Policy from the W3C Patent Policy Working Group exposes the threat of RAND and seeks to implement an alternative royalty-free (RF) policy framework. The argument for RAND as "reasonable and non-discriminatory" is flawed at many levels. For example:

Beyond these problems bound up in RAND's claims to being inherently "reasonable and non-discriminatory," RAND principles made operative in a standards setting create additional difficulties, vis-à-vis a royalty-free arrangement. Some have been identified previously. A brief [2001] publication by Jim Bell in connection with W3C operations lists these other concerns as follows:

[Note: As noted below, 'RAND' indeed can approximate 'RF' if the royalty fee is declared to be zero, eternally and irrevocably; in such case, why insist on RAND license at all, as it probably implies bureaucratic overhead? The issue is control: RAND license typically puts the patent holder in a position to set a tariff and collect a toll. If someone says in a contract negotiation "Give me control, but I don't worry, I don't intend to actually use it" -- they should probably not be believed.]

Why RAND is Appropriate for Internet Open Standards

[New section under development 2002-08-15. This section should present the point of view that RAND license/royalty is a good idea, applicable to open standards designed for the Internet. These arguments should be considered in counterpoint to arguments presented in the previous section: "Why RAND is Not Appropriate for Internet Open Standards." The readership is invited to send email nominating arguments and/or URLs germane to this section; equally, the readership is invited to send comments/suggestions pertaining to any section of this document.]

Initial thoughts:

A Way Forward

For Individual Companies

1. Hewlett-Packard. Hewlett-Packard Company has provided an exemplary model of leadership that other companies are free to emulate. See the published statements of Jim Bell on RF in the W3C context, and comments of Scott K. Peterson in his 2002-04-18 testimony to the US DOJ/FTC. Note that HP has a considerable commercial stake in software patents: according to a statement from Bruce Perens (unverified), "... IBM is said to hold 10% of software patents, and HP is one of the largest patent holders in general." The statements of Jim Bell and Scott Peterson should be read in this light.

2. Apple Computer. In October 2001, Apple Computer published a response to the draft W3C Patent Policy Framework. The statement articulated a principled dedication of Apple Computer to "royalty-free" standards in the W3C context. Excerpts:

After careful consideration of the draft patent policy, Apple believes that it is essential to continued interoperability and development of the Web that fundamental W3C standards be available on a royalty-free basis. In line with the W3C's mission to 'lead the Web to its full potential,' Apple supports a W3C patent policy with an immutable commitment to royalty-free licensing for fundamental Web standards. Apple offers this statement in support of its position.

The promise of the Web is a common framework for exchange of information, with open access for a diverse pool of developers and users. Realization of this promise demands a licensing model that is likewise open and unencumbered by private rights. We believe that W3C membership should involve not only collaboration to develop standards, but also collaboration to ensure that those standards are, in fact, open and available to diverse users without charge.

... Apple believes that W3C should promulgate only royalty-free standards, but should permit individual members to identify and exclude specific patents that they are not willing to license on a royalty-free basis... In order to proliferate royalty-free Web standards, a member's obligation to license essential patents could be conditioned on the grant of a reciprocal royalty-free license by any practitioner.

While the current [August 2001] draft patent policy does state a 'preference' for royalty-free standards, the ready availability of a RAND option presents too easy an alternative for owners of intellectual property who may seek to use the standardization process to control access to fundamental Web standards. A mandatory royalty-free requirement for all adopted standards will avoid this result.

References:

3. Sun Microsystems.

Update 2006: Sun Microsystems has been a leading pioneer and advocate of the "Non-Assertion Covenant" as an instrument for removing barriers to standards development and adoption: the non-assertion covenant can operate independent of an SSO's patent policy. It embodies "proactive promises [coming from Sun] about not enforcing patents against developers" using current and future related specifications... it means that developers of standards-based technology can be assured that Sun will not impose on them any licensing terms, conditions or fees for the use of any patents held by Sun relating to that technology... dvelopers need not do anything active in order to get this assurance; they merely need to refrain from attempting to enforce their own (or others') patents against any other developers... Examples:

[Vintage 2001/2002 text:] Sun came under fire for its handling of a (most people said "dubious") patent relating to XPointer, but this was resolved favorably with W3C. We may hope that the following statements from Simon Phipps, Simon Nicholson, Bill Smith, and Jonathan Schwartz of Sun are quoted accurately and that their declarations represent an abiding public commitment from Sun Microsystems.

4. O'Reilly & Associates. Dale Dougherty, as the Publisher of the O'Reilly Network, published a statement on behalf of O'Reilly & Associates in October, 2001. Note that this statement written against the W3C Patent Policy Framework (W3C Working Draft 16-August-2001) pre-dates the first draft of the W3C Patent Policy Working Group Royalty-Free Patent Policy (W3C Working Draft 26-February-2002). It opposes the then-proposed RAND terms for Web standards.

For Standards Bodies

Internet Engineering Task Force (IETF)

In July 2002, the IETF chartered an Intellectual Property Rights Working Group.

RFCs were published for Intellectual Property Rights in IETF Technology, IETF Rights in Contributions, and Guidelines for Working Groups on Intellectual Property Issues. See references below.

Description of Working Group [2002-07-26]: "The IETF and the Internet have greatly benefited from the free exchange of ideas and technology. For many years the IETF normal behavior was to standardize only unencumbered technology. While the 'Tao' of the IETF is still strongly oriented toward unencumbered technology, we can and do make use of technology that has various encumbrances. One of the goals of RFC2026 'The Internet Standards Process -- Revision 3' was to make it easier for the IETF to make use of encumbered technology when it made sense to do so. The IETF IPR policy, as embedded in RFC 2026 section 10, has proven fairly successful. At the same time, a perceived lack of textual clarity on some issues have made necessary the publication of clarifications such as the 'note well' statement issued in every registration package, the I-D boilerplate rules, and a huge number of discussions on specific IPR-related issues. This working group is chartered with updating and clarifying section 10 of BCP 9, RFC 2026, which deals with intellectual property rights, including, but not necessarily limited to, patent rights and copyrights."

Update 2003-05: As of November 2003, the mailing list was still quite active, and many issues were still under debate. Despite the attempts of some members to effect reform, little progress had been made toward the creation of a framework for reconciling RAND licensing terms with goals of open source projects.

References:

Earlier references:

Earlier References:

Java Community Process

The Java Community Process (JCP) is "an open organization of international Java developers and licensees whose charter is to develop and revise Java technology specifications, reference implementations, and technology compatibility kits. Both Java technology and the JCP were originally created by Sun Microsystems, however, the JCP has evolved from the informal process that Sun used beginning in 1995, to a formalized process overseen by representatives from many organizations across the Java community." On October 29, 2002 the "JCP Program Management Office (PMO) today launched a new iteration of the program, JCP 2.5. The new agreement and governing rules give more freedom and equal standing to all Java community participants enabling them to implement compatible Java specifications under a license of their own choosing including open source licenses. The Java Specification Participation Agreement (JSPA) requires all Java specifications to allow for development and distribution of compatible independent implementations, make specification products available separately and offer Technology Compatibility Kits (TCK) free of charge to qualified non-profits, educational organizations and individuals. The JCP 2.5 process document focuses on the implementation of the new agreement and on the continued availability of Java APIs as part of or independent of platform specifications..."

Open Application Group, Inc (OAGI)

The Open Applications Group is "a non-profit consortium focusing on best practices and process based XML content for eBusiness and Application Integration. It is the largest publisher of XML based content for business software interoperability in the world. Open Applications Group, Inc. members have over 6 years of extensive experience in building this industry consensus based framework for business software application interoperability and have developed a repeatable process for quickly developing high quality business content and XML representations of that content."

Excerpts from the OAGI IPR policy 9/30/2002. See the full document for context.

The Open Applications Group owns the copyright of any document written by OAGI. It is the goal of the OAGI to maintain the ability for OAGI members and non-members to use OAGI materials on a royalty free basis.

OAGI materials includes the OAGIS specification, the XML Schemas, OAMAS Downloads, presentations, white papers, or any other published document ('OAGI Materials').

OAGI commits that, in the development of any standard or guideline, they will make every reasonable attempt to ensure that no patented, patentable, or copyrighted elements are included in OAGI materials. OAGI requires that Members, observers or any other interested parties exercise reasonable efforts in bringing to its attention any copyrights, patents or patent applications, or other proprietary rights which may cover technology that may be required to use or implement any proposed standard or guideline.

Copyright. The participant grants Open Application Group Inc a non-exclusive, perpetual, irrevocable royalty-free license under the participant's copyright rights in the contribution to reproduce, distribute, perform, display and create derivative works of the contribution, solely for the purpose of creating, implementing and promoting Open Application Group Inc's e-business process specifications. Open Application Group Inc may sublicense its rights as necessary to advance this purpose.

If an above defined contribution is incorporated into a published final Open Application Group Inc specification, then the participant agrees that it will grant to any third party implementing such specification, on royalty-free and otherwise reasonable and non-discriminatory terms, a non-exclusive, non-transferable, world-wide license under any Necessary Claim that reads on such contribution to make, have made, import, sell and offer to sell those portions of specification-compliant products that implement the contribution. License terms may include but are not limited to:

Participant IP other than the above defined contributions. If an individual participant in Open Application Group Inc becomes aware that the member on whose behalf the individual participant is acting owns or controls intellectual property that would, in the opinion of the individual participant, necessarily be infringed in the course of implementing or using a Open Application Group Inc published or draft specification, for a working group that this individual participant is not a part of, (excluding intellectual property that has been contributed in accordance with this Policy) then the individual participant or the member must alert the Open Application Group Inc President to this fact...

Mechanism for accepting royalty-bearing IP. It is not the intention of the OAGI to pursue technology requiring the payment of a royalty. If such a need should arise, the OAGI President will make a recommendation to the OAGI Policy Board.

References:

Open Geospatial Consortium (OGC)

Note: The Open GIS Consortium changed its name to the Open Geospatial Consortium in September 2004; references to 'OpenGIS' are retained below.

On June 09, 2003 the Open GIS Consortium announced the adoption of a revised IPR policy which requires all contributors to license technology on a royalty-free basis. OGC is an international industry consortium of 257 companies, government agencies, and universities participating in a consensus process to develop publicly available geo-processing specifications based upon XML. The OGC's revised IPR policy "takes into account the significant patent policy work undertaken at the W3C, which has emerged as the consortium leader in establishing a pragmatic way to successfully develop royalty-free Web Standards in the current patent environment. The result reflects agreement with the basic goal to preserve a free and open standards-based information infrastructure. At the same time, the new IPR policy respects the patent rights of member organizations and the value their patents represent." OGC members support the IPR policy "because there is a belief that OpenGIS specifications must be royalty free and unencumbered by patents, and therefore freely available to any party -- buyer, commercial developer, government agency, or open source developer -- that wants to implement OpenGIS Specifications in their enterprise." The OGC's revised IPR policy will take effect on July 05, 2003.

References:

Organization for the Advancement of Structured Information Standards (OASIS)

[This entry under revision as a news story for the 2005 Revised OASIS IPR Policy is being written, to be published on the Cover Pages.]

The first IPR Policy adopted by OASIS in early 2000 was essentially a copy of licensing terms in the then-current IETF RFC 2026.

On February 7, 2005 OASIS announced the publication of a new IPR Policy (approved by the Board on January 20, 2005) and new IPR Transition Policy, both to become effective 15-April-2005. These documents were said to "represent almost three years" of revision effort by the OASIS Board. This revised IPR policy makes provision for OASIS Technical Committees to operate in one of three IPR Modes: Reasonable and Non-Discriminatory (RAND) IPR Mode, Royalty-Free (RF) on RAND Terms IPR Mode, RF on Limited Terms IPR Mode. Individual TCs select the IPR Mode they wish, and individual TC members who join a TC as a (directly) active participant agree to license any relevant essential claims under the terms of the TC's IPR Mode. Individuals who wish to participate only indirectly (as Observers) but not vote are not subject to the disclosure, contribution, and participation obligations of that TC, as are the voting Members of the TC; disclosure and licensing obligations are binding only upon companies or individuals who directly participate in a given TC.

The licensing terms described in the three IPR Modes represent just the baseline obligations under which a patent holder is required to grant a license to some party that makes a request for a license; a patent holder may make private arrangements with any other party (e.g., through a cross-licensing or patent pool agreement); "alternative terms may be substituted, if agreed to by both the patent holder and the implementer."

Note: OASIS specifications and Standards produced by TCs operating under one of the "RF" IPR Modes are not guaranteed to be "royalty free." Why not? (1) OASIS members who choose not join a particular TC, or who elect to join/participate only indirectly as Observers, may indeed have patents (perhaps disclosed, perhaps undisclosed) that read on the "RF" TC's specifications. (2) An "RF" IPR Mode TC may have transitioned to "RF" from the older ("Legacy") OASIS RAND IPR Policy, and have specifications which are legally uncumbered under IPR declarations made earlier. (3) A TC operating in an "RF" mode is not obligated to produce only royalty-free specifications, as the terms only bind the TC Members to license their own patented technology under RF terms. In other words, one must read the fine print to know whether specifications and standards associated with an "RF" IPR Mode TC are actually royalty free.

Royalty-free" licensing is not of itself adequate for (most) open source implementation environments if the patent license, to be granted upon request, contains other terms incompatible with open source (development, licensing, distribution) models. For example, an OASIS Intellectual Property Rights (IPR) Policy of 2005-04-15, applicable to some OASIS Technical Committees, provides IPR Modes for "Royalty-Free (RF) on RAND Terms" and "RF on Limited Terms." Both IPR Modes provide that an Obligated Party (patent owner) may require negotiation of an explicit executable license, with non-sublicensable patent license terms, and the license "may include reasonable, customary terms relating to operation or maintenance of the license relationship." Such license terms may or may not be acceptable to open source software developers.

OASIS says it elected to support RAND licensing for OASIS Standards as well as RF licensing (RF on RAND Terms, RF on Limited Terms) for the following reasons: (1) "The OASIS IPR Policy seeks to create the greatest possible incentive for patent holders to participate productively in an open standards process, responsibly disclose their interests, and make available, without prejudice, licenses for any essential claims they may have" [FAQ document]; (2) "To completely eliminate RAND as an option [...] would deny those OASIS members who choose to work under those terms their current rights." [OASIS-OSS memo]

References:

UN/CEFACT

[June 2006] According to documents prepared for the UN/CEFACT Twelfth Session (22-24 May 20069, Salle XI, Palais des Nations, Geneva), Agenda Item 12: Organizational Matters, the UN Office of Legal Affairs (UN OLA) approved an Intellectual Property Rights Policy in May 2006 which requires "all Participants in a UN/CEFACT Forum Group to waive their rights to enforce any of their intellectual property ('IPR') that would be necessary to implement or use a Specification developed in [a] Forum Group ('Essential IPR')."

[June 23, 2005] UN/CEFACT document 'TRADE/CEFACT/2005/MISC.7' was published June 23, 2005 as "Decisions Made at the 11th UN/CEFACT Plenary Session Held at the Palais Des Nations 22 and 23 June 2005." Item 6, UN/CEFACT Intellectual Property Rights, Decision 05-12: "The principles of the Intellectual Property Rights Policy were approved as laid down in document TRADE/CEFACT/2005/MISC.3. The Special Contact Group, in cooperation with the Bureau, was requested to prepare a document that the secretariat can clear with the UN Office of Legal Affairs. The IPR policy should be approved in an intersessional approval process by the end of 2005. The Delegations of Canada and Sweden reserved the right to submit comments later and they were requested to do so within three weeks after the Plenary to expedite the finalization process..."

[June 09, 2005] The UN/CEFACT Special Contact Group for Intellectual Property Rights Policy (IPR SCG) has produced a number of working drafts for an IPR Policy that's now [2005-06] looking very much like the W3C Patent Policy. A 2005-05-28 note from the IPR SCG summarizes the policy goals and strategy: "The draft UN/CEFACT IPR Policy ('Policy') is designed to promote the goal of enabling the implementation of UN/CEFACT Specifications without the burden of fees or restrictions. The Policy promotes this goal by requiring all participants in a UN/CEFACT Forum Group to waive their rights to enforce any of their intellectual property ('IPR') that would be necessary to implement a final technical specification developed in that Forum Group ('Essential IPR')."

A 2002-10-30 posting from Klaus-Dieter Naujok references a document containing the "Provisonal UN/CEFACT Intellectual Property Policy." Status: "The CSG reviewed the draft version 1.2 of the IPR policy which had been recommended to it by one of the Legal Rapporteurs, Mr David Marsh, and his colleagues. The CSG unanimously approved the document and adopted it as their policy. Therefore, this becomes the provisional policy of UN/CEFACT. The next steps will be to forward the document to the Heads of Delegation with the request for an intersessional approval. In the meantime, the provisional policy will be distributed as widely as possible through all channels available to UN/CEFACT including its website, list servers and the FCT." Please see the full context for the definitions of "Participant," "Contribution," and other key terms. From Section 4, 'Use of Contributions':

Copyright. The Participant grants UN/CEFACT a non-exclusive, perpetual, irrevocable royalty-free license under the Participant's copyright rights in the Contribution to reproduce, distribute, perform, display and create derivative works of the Contribution, solely for the purpose of creating, implementing, and promoting Specifications. UN/CEFACT may sublicense these rights to implementers of Specifications, or otherwise, as necessary to advance this purpose.

Patents. A Participant agrees that it will grant to any third party implementing a published final Specification that incorporates a Contribution from such Participant, on royalty-free and otherwise reasonable and nondiscriminatory terms, a non-exclusive, non-transferable, world-wide license under any Necessary Claim that reads on such Contribution to use, make, have made, import, sell and offer to sell, lease, and otherwise distribute and dispose of those portions of Specification-compliant products that implement such Contribution. License terms may include but are not limited to: (1) conditioning the license on a grant of a reciprocal royalty-free license to all Necessary Claims owned or controlled by the licensee and/or its Affiliates that would necessarily be infringed by implementation of the applicable Specification; (2) revocation of the license should a suit for patent infringement be brought by licensee against the licensor; (3) a requirement that an implementer manifests an intent to accept the terms of the royalty-free license as offered by the licensor within a reasonable period of time; and (4) a prohibition on sublicensing.

References:

World Wide Web Consortium (W3C)

W3C Patent Policy. Edited by Daniel J. Weitzner (W3C/MIT). 5-February -004. Version URL: http://www.w3.org/Consortium/Patent-Policy-20040205/. Latest version URL: http://www.w3.org/Consortium/Patent-Policy/. Previous version URL: http://www.w3.org/Consortium/Patent-Policy-20030520.html. "In order to promote the widest adoption of Web standards, W3C seeks to issue Recommendations that can be implemented on a Royalty-Free (RF) basis. Subject to the conditions of this policy, W3C will not approve a Recommendation if it is aware that Essential Claims exist which are not available on Royalty-Free terms. To this end, Working Group charters will include a reference to this policy and a requirement that specifications produced by the Working Group will be implementable on an RF basis, to the best ability of the Working Group and the Consortium." See also the news item explaining W3C's publication of a "new version of the Process Document to align with the Patent Policy, which was approved in May 2003. Among the changes are clarifications for Technical Architecture Group (TAG) and Advisory Board participation, and for the definitions of "consensus" and "First Public Working Draft." W3C has adopted a transition procedure as part of implementing the patent policy." See "World Wide Web Consortium Process Document," 5-February-2004: "The W3C Process Document describes the organizational structure of the W3C and the processes related to the responsibilities and functions they exercise to enable W3C to accomplish its mission. This document does not describe the internal workings of the Team or W3C's public communication mechanisms."

[May 20, 2003] W3C Approves Patent Policy Supporting Development of Royalty-Free Web Standards. Congratulations to the W3C Patent Policy Working Group, W3C Membership, and W3C leadership for the landmark achievement represented by final approval of the W3C Patent Policy. The policy governs the handling of patents in the process of producing Web standards; its goal is to assure "that Recommendations produced under this policy can be implemented on a Royalty-Free (RF) basis. Subject to the conditions of the policy, W3C will not approve a Recommendation if it is aware that Essential Claims exist which are not available on Royalty-Free terms. To this end, Working Group charters will include a reference to this policy and a requirement that specifications produced by the Working Group will be implementable on an RF basis, to the best ability of the Working Group and the Consortium. The policy also requires patent disclosure by W3C Members when they are aware of patents that may be essential to the implementation of W3C Recommendations." A published statement from W3C Director Tim Berners-Lee notes that the W3C Patent Policy "coincides almost exactly with the tenth anniversary of CERN's decision to provide unencumbered access to the basic Web protocols and software developed there, even before the creation of W3C... The Patent Policy represents what may be the most thorough effort to date in defining a basic patent policy for standard-setting [and] sets the benchmark for the pragmatic way to successfully develop royalty-free Web Standards in the current patent environment." The W3C Patent Policy Working Group (PPWG) "is part of the W3C Technology and Society Domain; its mission is to advise W3C on the means to address the growing challenge that patent claims pose to the development of open standards for the Web."

[March 19, 2003] W3C Releases Proposed Royalty-Free Patent Policy for Review. The W3C has issued Patent Policy Working Group Royalty-Free Patent Policy as a W3C Proposed Policy and invites public comment through 30-April-2003. "The W3C Director's decision on the final policy, which takes into account the full range of feedback, is expected in May 2003." The W3C Royalty-Free Patent Policy "governs the handling of patents in the process of producing Web standards. The goal of this policy is to assure that Recommendations produced under this policy can be implemented on a Royalty-Free (RF) basis. The Patent Policy Working Group (PPWG) is part of the W3C Technology and Society Domain; its mission is to advise W3C on the means to address the growing challenge that patent claims pose to the development of open standards for the Web." Paraphrasing the key terms of the Proposed Policy: those participating in the development of a W3C Recommendation must agree to license essential claims (viz., patents that block interoperability) on a royalty-free (RF) basis. WG participants may exclude specifically identified patent claims from the Royalty-Free commitment; these exclusions are required shortly after publication of the first public Working Draft, reducing the likelihood that surprise patents will jeopardize collective Working Group efforts. Patent disclosures regarding essential patents are required from W3C Members and requested of anyone else. Patent claims not available with terms consistent with the W3C Patent Policy will be handled by a dispute resolution process.

W3C is one of several standards bodies currently [2002] examining its patent policies with respect to published standards. The Worldwide Web Consortium has established a Patent Policy Working Group, which has released several working draft documents, including a Patent Policy Working Group Royalty-Free Patent Policy (W3C Working Draft 14-November-2002). See also the 2002-02-26 Patent Policy Working Group Royalty-Free Patent Policy, superseding the W3C Patent Policy Framework working draft of August 16, 2001. The story is still unfolding [2002-07], but the draft Royalty-Free patent policy documents address "a large number of issues raised by comments from W3C Members and the general public." According to the statement of 'Licensing Goals for W3C Recommendations' articulated in the 14-November-2002 working draft: "In order to promote the widest adoption of Web standards, W3C seeks to issue Recommendations that can be implemented on a Royalty-Free (RF) basis. Under this policy, W3C will not approve a Recommendation if it is aware that Essential Claims exist which are not available on Royalty-Free terms. To this end, Working Group charters will include W3C RF licensing requirements that specifications produced by the Working Group will be implementable on an RF basis, to the best ability of the Working Group and the Consortium."

One of the significant changes in the 2002-11-14 and 2002-02-26 WDs (relative to the 16-August-2001 Last Call draft) relates to the W3C's position on RAND licensing. Under the terms of the 2001-08 document, a preference was confirmed for W3C Recommendations that can be implemented on a royalty-free (RF) basis, but allowing, where RF is not possible, "a framework to assure maximum possible openness based on reasonable, non-discriminatory (RAND) licensing terms." In response to public comments, the RAND track has now been dropped. Comments have expressed concern that RAND-encumbered specifications would not be implemented and that RAND would lead to discrimination and fragmentation (e.g., RAND would hurt open source developers, would discriminate against the poor, would stifle innovation and reduce choice, would harm end users as well as developers, universal access and RAND are incompatible; patents and standards are incompatible, etc.). A number of issues remain to be resolved in the W3C patent policy.

From the W3C announcement: "The new Patent Policy Working Draft differs from the previous draft in three significant ways:

Consistent with the goal of promoting the "widest adoption of Web standards, W3C seeks to issue Recommendations that can be implemented on a Royalty-Free (RF) basis. Under this policy, W3C will not approve a Recommendation if it is aware that Essential Claims exist which are not available on Royalty-Free terms. To this end, RF Working Group charters will include as a requirement that the specification produced by the Working Group will be implementable on an RF basis, to the best ability of the Working Group and the Consortium." [from the WD]

Rationale for decisions in the working draft reflects public input, as documented in "Public Issues for Patent Policy Framework of 20010816". In particular, the public issue #1 (P1) cited concerns for discrimination and fragmentation:

Excerpts from the text of the testimony of Daniel Weitzner "Before the United States Department of Justice and United States Federal Trade Commission Joint Hearings on Competition and Intellectual Property Law and Policy in the Knowledge-Based Economy: Standards and Intellectual Property: Licensing Terms":

"I am the head of the World Wide Web Consortium's (W3C) Technology and Society activities, responsible for development of technology standards that enable the Web to address social, legal, and public policy concerns... My goal is to contribute to the factual basis of your inquiry into antitrust, intellectual property and technical standards by providing an overview of the experience that the World Wide Web community has had with patents over the last four years."

"This testimony will highlight three main points: (1) First, the Web itself has been possible only in the context of open, royalty-free (RF) standards. (2) Second, the 'reasonable, non-discriminatory terms' (RAND) licensing model common in many traditional standards bodies is unlikely to be accepted in the Web environment. (3) Third, W3C is working hard to develop a Royalty-Free patent policy that encourages the continued evolution of the Web as a universal information space, while respecting our Member's legitimate intellectual property rights..."

"Of critical importance to the rise of electronic commerce as a new marketplace, Web technology allows a wide variety of new systems and technologies to be built on top of the basic architecture of the Web, thus enabling continual innovation in the design of Web-based applications and services. Two key attributes of Web standards are responsible for the ubiquity and flexibility of the Web: 1) simple, extensible design, and 2) open, unencumbered standards... Whether patents and claims related to W3C technologies are in fact valid or not, the risk of costly, time-consuming litigation and possible limitations on use by the right holders, is sufficient to suffocate much of the dynamic development activity that has been driving the Web industry..."

"The strongest reaction [to the W3C Patent Policy Working Group's first proposal] came from various communities of open source developers who declared, (in several thousand emails sent to the W3C public comment mailing list) that a RAND approach would cause open source developers to stop using W3C web standards, impel some to form alternate Web standards, thus balkanizing the Web, and overall constituted a take-over of the Web by large corporate interests..." [emph added]

"W3C [has] responded to input from W3C Members and the public by adding invited experts to the Patent Policy Working Group to represent the Open Source community, creating a task force within the Patent Policy Working Group to examine how to accommodate the Open Source community, and creating a public home page for the PPWG, publishing public meeting records, and committing to additional public drafts of the framework before the policy was finalized."

"Based on input from a meeting the W3C Members, the Patent Policy Working Group recently issued a draft royalty free policy. The main features of this policy are: (1) RF licensing goals for W3C Recommendations; (2) RF licensing obligations that Working Group participants will undertake as a condition of Working Group membership, along with means of excluding specific patents from those obligations; (3) the definition of a Royalty-Free license; (4) disclosure rules for W3C Members; (5) an exception handling process for situations in which the Royalty-Free status of a specification comes under question..."

References include:

For Business Leaders as Public Servants

Individuals who put their own economic and political interests at risk for the sake of needed social change should be honored -- not as heroes, priests, or High Priests but as leaders. Though some will be recognized publicly, 99% are not, because they serve as the annoying, uncomfortable conscience in their workplaces and communities.

I'm not sure who to list here, but I know it takes individual acts of courage to stand against the status quo when it comes to serve the wrong interests. For now, I list three activists who deserve respect. Activists are easy targets for writers locked into the status quo (paid by beneficiaries of the status quo) who are compelled to discredit new ideas that challenge the ruling mindset: activists can be attacked ad hominem for their elevated rhetorical style and unqualified characterizations; they are easily labeled as extremists, paranoiacs, conspiracy theorists, anarchists, or whatever. Thoughtful people are not influenced by such labels.

1. Lawrence Lessig. Lawrence Lessig (Professor of Law, Stanford Law School) has written a thoughtful commentary in The Future of Ideas: The Fate of The Commons in a Connected World (Random House, 2001). The treatment of patents (pages 205-215) is not central to the book, but illustrates underlying dynamics that are documented fully in the book's 365 pages. Lessig writes on the "future of innovation in a time when commercial and governmental interests are exercising their control over plumbing, software, content, and patent laws to impede competition." He shows how legal and technological changes taking place in the Internet commons are creating a shift which [unchecked] "will destroy the opportunities for creativity and innovation that the Internet originally engendered. The cultural dinosaurs of our recent past are moving to quickly remake cyberspace so that they can better protect their interests against the future. Powerful conglomerates are swiftly using both law and technology to 'tame' the Internet, transforming it from an open forum for ideas into nothing more than cable television on speed. Innovation, once again, will be directed from the top down, increasingly controlled by owners of the networks, holders of the largest patent portfolios, and, most invidiously, hoarders of copyrights." See also the book reviews. Lessig's article "The Problem With Patents" [1999] identifies some critical concerns relative to "IP mania." See also Lessig's arguments from the transcript of an "Internet Society Panel on Business Method Patents," and a shorter report.

2. Bruce Perens. Bruce Perens (co-founder of the Open Source Initiative) has put himself at risk in promoting and defending royalty-free code as a critical component in the Web architecture. Perens has recently designed principles for a Sincere Choice Platform, part of the Global Technology Policy Institute. The first principle of the Sincere Choice Platform is "Open Standards: Intercommunication and file formats should follow standards that are sincerely open for all to implement, without royalty fees or discrimination." See below "Perspective: The Patent Threat to the Web" and "Software Patents vs. Free Software."

3. Richard Stallman. Stallman is a political activist in several arenas, but is famous mostly for his pioneering work on open source licensing and 'copyleft' principles. An extremist by almost any definition, but history is likely to judge him as more important than most who (without any risk) criticize him for his extremism. Richard Stallman "founded the GNU Project in 1984 and is the principal or initial author of GNU Emacs, the GNU C Compiler, the GNU Debugger GDB and parts of other packages. He is the President of the Free Software Foundation (FSF)." See sample articles on patents referenced below: "Stallman: 'Patent licenses discriminate'," and "The Danger of Software Patents."

4. Others. Who else? There are no heroes -- just good people with conviction, clarity of vision, and courage to take the ideal road against the easier road named "Pragmatism." So others, not "activists" but technology experts concerned about an open Internet, might be added to the list. They won't be just now, as I don't welcome an overflowing mailbox full of requests to be removed from the list. Were I to add them as official supporters of the "open Internet" here defined, such names might include: Philippe Aigrain (Head of Sector 'Software Technologies', European Commission DG INFSO/E2 Office N105 3/54); Jim Bell (Hewlett-Packard); Tim Berners-Lee (W3C); Christopher Blizzard (for Mozilla.org); Jonathan Borden, M.D. (Chair, ASTM E31.25 XML Healthcare Schemas); Jon Bosak (Sun Microsystems); Tim Bray (CEO, Antarcti.ca Systems); Steven Champeon (for the Web Standards Project); James Clark (Thai Open Source Software Center); Eduardo Gutentag (Sun Microsystems); Renato Iannella (IPR Systems); Rick Jelliffe (C.T.O. Topologi Pty. Ltd., Sydney, Australia); Mitch Kapor; Chris Lilley (W3C); James Mason (ISO/IEC JTC1/SC34 Chairman); John Nagle (Inventor, Nagle Algorithm); Michael Rose (Center for Tele-Information, Technical University of Denmark); Pamela Samuelson (University of California, Berkeley); Lauren Wood (SoftQuad Software). Informally, one could claim that the published responses of these individuals to the W3C's early draft [RAND] formulation are indeed representative of the overwhelming negative assessment of [RAND] royalty-bearing patents in connection with W3C standards, mutatis mutandis in connection with any standards foundational to the Internet infrastructure. The reader should inspect the email logs and summary of public comments to verify or falsify this claim. Note: It takes some courage to stand up to bad policy, especially if the bad policy is being formulated and enforced by the legal department of the company that employs you. "It takes a lot of courage to stand up to your enemies, but even more to stand up to your friends."

Patent Learning Center: Some Case Studies

[Under development.]

Introduction: According to narratives from ancient as well as modern times, bridge trolls take up residence under the bridge of a well-trafficked road and demand payment from any who would pass: 'Your money or your life.' Note that the trolls themselves do not build or maintain the bridges, nor the roads. They merely set up toll booths at the bridges needed by everyone. This is an analogy: the new information highway is an elaborate system of roads. But we mean "roads" in the abstract: spectrum, wires, switches, routers, optical cables, set-top boxes, and the code which is used to transport information packets on their way from origin to destination; the code also labels and structures the messages sent in collections of packets. To convey the wagon or carriage, the carts, and young children across the bridge, the citizens need free passage and security -- protection from trolls and their tolls. What does this mean in the modern context: no tax on identity, privacy, rights, preferences, or sniffed-out-payload-type. Think: TCP/IP, a packet-is-a-packet; end-to-end transport; the middlemen collect no tolls on the use of core technologies; the code and the roads remain open to the public; uninspected and untaxed.

The following examples provide representative case studies of IP claims upon Internet technologies. They reveal some of the current tension between laws that protect intellectual property on the one hand, and the principle of unimpeded, equal access on the other. They illustrate how the public responds to patent claims that are (arguably) overreaching and/or inappropriately interjected into Internet standards space -- where there are no realistic competitive alternatives, making the patent-monopoly detrimental to the public good.

Many of the incidents reported below take a similar course: "A company asserts patents/royalties on a(n emerging) standard previously understood by everyone else to be legally unencumbered; the public screams 'outrage!' with threats to abandon the standards effort, declaring the newly-revealed legal assertion a show-stopper; facing a publicity nightmare, the company scrambles to backpedal, oopsie-daisy..."

See also the list of "Controversial Patents" maintained by Dale Dougherty of O'Reilly; also, [Some] Patents Declared Invalid by the PTO or the Courts.

DDR/SDRAM (Rambus)

Rambus Inc.'s claims to patent royalties on Double Data Rate (DDR) memory and on synchronous dynamic random access memory (SDRAM) moved Hitachi and Toshiba [2000] to settle, leading to alarm that the entire memory industry would be in debt to Rambus for similar royalties. On June 19, 2002, the FTC came back against Rambus with charges [Rambus Incorporated, File No. 011 0017, Docket No. 9302] that it had abused the standards process: "The Commission challenges a pattern of anticompetitive acts and practices, undertaken by Rambus over the course of the past decade, and continuing even today, whereby Rambus, through deliberate and intentional means, has illegally monopolized, attempted to monopolize, or otherwise engaged in unfair methods of competition in certain markets relating to technological features necessary for the design and manufacture of a common form of digital computer memory, known as dynamic random access memory, or 'DRAM'... Rambus's anticompetitive scheme involved participating in the work of an industry standard-setting organization, known as JEDEC, without making it known to JEDEC or to its members that Rambus was actively working to develop, and did in fact possess, a patent and several pending patent applications that involved specific technologies proposed for and ultimately adopted in the relevant standards. By concealing this information - in violation of JEDEC's own operating rules and procedures - and through other bad-faith, deceptive conduct, Rambus purposefully sought to and did convey to JEDEC the materially false and misleading impression that it possessed no relevant intellectual property rights. Rambus's anticompetitive scheme further entailed perfecting its patent rights over these same technologies and then, once the standards had become widely adopted within the DRAM industry, enforcing such patents worldwide against companies manufacturing memory products in compliance with the standards..." See the Administrative Complaint and the news release.

References:

eBook Transmission (E-Data/MediaBay)

An announcement from MediaBay in August 2002 announced that the company had acquired rights to the 'Freeny Patent' and that the it would vigorously pursue collection of royalty payments from infringers. According to the summary by Calvin Reid (below): "E-Data claims that this patent gives it an exclusive 'field of use license' for spoken audio, e-book and print-on-demand transmissions over the Internet -- in other words, if you sell downloadable content you probably owe E-Data a licensing fee -- even though the patent was granted years before the Internet became a reality..."

ebXML CPPs, CPAs (IBM)

[November 25, 2002] "... the [IBM] patent [#6,148,290] covers features that might be essential to the implementation of a wide variety of ecommerce systems, not just ebXML. It's significant, therefore, that in May 2002, IBM promised to grant royalty-free licenses to all IBM patents required by CPPA v1 and v2 and committed to continue providing RF licenses for subsequent versions of CPPA. [See:] REF-1, REF-2, REF-3. The royalty-free license was later extended to open-source software as well. Much has been made of the fact that CPPA v2 still cannot be considered completely unencumbered, but it remains, to my knowledge, the only application of the technology covered by the relevant IBM patents that IBM has publicly pledged to license royalty-free. The practical effect of this as far as I can see is to make ebXML the only TPA-based B2B ecommerce framework that can be implemented without incurring a future obligation to pay royalties to IBM for the TPA component..." From the posting "The Significance of CPPA v2," by Jon Bosak, 2002-11-23.

[June 20, 2002] Summary of the ebXML topic 'IBM IPR claims against CPPA' as provided in a proposed draft statement from James Bryce Clark, 2002-06-20: "... not all of the issues are yet resolved, and the final language for some of the restrictions may not have been reached. The TC notes that its advancement of the standard does not indicate an evaluation of the IBM claims, nor an endorsement or guarantee of the commercial suitability of the eventual IPR terms. Refinement of those terms is continuing. The TC reserves the right to withdraw the standard if final permissions and terms appropriate to ebXML's goals cannot be obtained. The [OASIS ebXML] TC is concerned about several yet unresolved aspects of the current IPR declarations. The absence of permission to develop nonprofit derivative works from the specification continues to impair several significant open source development efforts. We hope to obtain clearer use permission for such efforts consistent with conventional open source development. The timing of the declarations is also unfortunate. IBM made substantial donations in 1999 of technical work that then appeared to be free of claims. That work was considered in the formulation of the final approved ebXML standards throughout 2000 and 2001. Only in 2002 was it disclosed that IBM discovered that relevant patents and patent applications had been in process throughout that period. A substantial part of the ebXML community relies on low-cost vendor-neutral standards use and tools. Timely earlier disclosure of the claims might have permitted a less disruptive exclusion of, or negotiation regarding, patent-impaired work. Appropriate action in light of those impairments, and refinements to the IPR rules to reduce delayed-disclosure loopholes in the future, may be the subject of further analysis by OASIS members."

[June 07, 2002] As of 2002-06-07 5:06 PM CDT, the website of the OASIS ebXML Collaboration Protocol Profile and Agreement TC referenced a document on 'Intellectual Property Rights' under the title "Statement from IBM regarding intellectual Property Rights" [IBM OASIS ebXML Intellectual Property Disclosure, May 16, 2002]. This document also references a 'FAQ' statement from IBM, 30-May-2002. In this connection, see the statement of Patrick Gannon, OASIS CEO, to the effect that the IBM communiqué of May 30, 2002 "clarifies many of the concerns that have been raised by members of the CPPA TC and other organizations planning to implement the CPPA specification. IBM has clarified two major issues related to (1) the reciprocity of licensing any patent claims from other parties, and (2) granting their royalty-free license to the currently published v1 & v2 specs with a commitment to extend the royalty-free license to future versions of the specs should such future version of the CPPA specs be delivered." The website document said, in part:

IBM will, upon written request, provide a nonexclusive, royalty free patent license, with other reasonable terms and conditions for all patents issued to IBM which contain essential claims and for which IBM is able to provide patent licenses (including the issued patent and unpublished patent application disclosed above), for the OASIS ebXML Collaboration Protocol Profiles (CPP's) and Collaboration Protocol Agreements (CPA's) Versions 1 and 2 specifications. This patent license is available to all entities willing to grant IBM a reciprocal license. Any party wishing to request a patent license, in support of OASIS ebXML CPP and CPA Versions 1 & 2 specifications should write to: IBM Director of Intellectual Property & Licensing; IBM Corporation, North Castle Drive, Armonk, N.Y., 10504..."

Q: Why did IBM provide a license to all patents required by the specifications? A: IBM wanted to remove any potential confusion regarding implementation of the specification. Since a complete patent search and analysis of a large portfolio is very time consuming, IBM wanted to provide the assurance that our portfolio would not impede adoption of the specifications."

Background. On March 28, 2002 Chuck Adams Jr. of IBM sent an "IBM Intellectual Property Disclosure for OASIS" declaring that one unpublished patent application and one issued patent were relevant to the OASIS TC specifications. The intellectual property disclosure identified patents as related to ebXML Collaboration Protocol Profiles (CPPs) and ebXML Collaboration Protocol Agreements (CPAs). The declaration indicated that IBM would grant OASIS RAND licenses "in accordance with IBM's usual licensing practices, when there is a necessary dependence upon IBM patent claims to implement the specifications." According to statements reported by ZDNet, Ray Walker (steering group chairman of the United Nations Centre for Trade Facilitation and Electronic Business) and OASIS CEO Patrick Gannon, the ebXML development community was surprised by the IBM declaration; ebXML participants had fully expected royalty-free terms, since IBM had earlier declared that it was donating the pertinent (draft TPA) specification to OASIS.

Initially IBM defended its position in the IP declaration, asserting: (1) that "The disclosure was [supposed] to be made to ebXML (also RAND policy) in mid-2000 in conjunction with the startup of the CPP-CPA team" but there had been an "unfortunate snafu earlier somewhere inside IBM...someone dropped the ball"; (2) that with respect to "IBM was donating all of its TPA work to ebxml... 'There is donating the draft specification and donating the IPR; they are two different things..."; (3) that "... the [patent] filing date is long before IBM said anything about electronic agreements publicly and long before the ebXML CPP-CPA team got started..."; (4) that the "very late disclosure" of RAND license encumbrance "was a screw-up, not a malicious act...". On April 18, 2002 an informal message from IBM's Martin Sachs indicated that IBM had decided not to "charge royalties for either of the two patents mentioned in the declaration"; James Bryce Clark signified in response that the ebXML team expected "to be able to reach a satisfactory resolution." The IBM response was judged unsatisfactory to some because of its informality and because it would still require ebXML implementers to apply to IBM for a license.

As of 2002-04-24, James Bryce Clark indicated that "the question of whether IBM is going to provide an irrevocable assurance is still not settled. It is possible that they will come to realize that 'we aren't charging for it this week' isn't a full answer..."; he noted that "'I won't charge today' and 'I won't charge ever' are different..."

Articles:

Applets and Browser Plugins (Eolas/University of California)

[August 28, 2003] W3C Opens Public Discussion Forum on US Patent 5,838,906 and Eolas v. Microsoft. W3C has published a report from Steven R. Bratt (W3C Chief Operating Officer) on the matter of US Patent 5,838,906 and the Eolas v. Microsoft lawsuit. The patent is described as applicable to Java applets, browser plug-ins, ActiveX components, Macromedia Flash, Windows Media Player, and related "embedded program objects." The W3C document reports on a recent meeting of W3C Members and other key commercial and open source software interests, held to "evaluate potential near-term changes that might be implemented in browsers, authoring tools, and Web sites as a result of the court case." A new W3C 'public-web-plugins' list provides a public discussion forum for those concerned with the patent and recent court decisions. Since the patent may "potentially have implications for the World Wide Web in general, including specifications from W3C, the W3C believes that it is important for the Web community to begin now to consider and contribute to the range of technical options available." According to W3C's summary, the relevant patent assigned to The Regents of the University of California and managed by Eolas Technologies Inc. "claims to cover mechanisms for embedding objects within distributed hypermedia documents, where at least some of the object's data is located external to the document, and there is a control path to the object's implementation to support user interaction with the object. The implementation can be local or distributed across a network, and is automatically invoked based upon type information in the document or associated with the object's data."

References:

GIF Image Format (Unisys)

According to the 1997 article of "History of the Portable Network Graphics (PNG) Format" from Greg Roelofs, the popular PNG image format was developed in response to an attempt by Unisys to enforce patents/royalty fees on the ubiquitous GIF (Graphics Interchange Format): "'The LZW algorithm was incorporated [into GIF] from an open publication [says Tim Oren, then Vice President of Future Technology at CompuServe], and without knowledge that Unisys was pursuing a patent. The patent was brought to our attention, much to our displeasure, after the GIF spec had been published and passed into wide use.' There are claims that Unisys was made aware of this as early as 1989 and chose to ignore the use in 'pure software'; the documents to substantiate this claim have apparently been lost. In any case, Unisys for years limited itself to pursuit of hardware vendors--particularly modem manufacturers implementing V.42bis in silicon... All of that changed at the end of 1994. Whether due to ongoing financial difficulties or as part of the industry-wide bonk on the head provided by the World Wide Web, Unisys in 1993 began aggressively pursuing commercial vendors of software-only LZW implementations. CompuServe seems to have been its primary target at first, culminating in an agreement -- quietly announced on 28 December 1994, right in the middle of the Christmas holidays -- to begin collecting royalties from authors of GIF-supporting software. The spit hit the fan on the Internet the following week; what was then the comp.graphics newsgroup went nuts, to use a technical term. As is the way of Usenet, much ire was directed at CompuServe for making the announcement, and then at Unisys once the details became a little clearer; but mixed in with the noise was the genesis of an informal Internet working group led by Thomas Boutell. Its purpose was not only to design a replacement for the GIF format, but a successor to it: better, smaller, more extensible, and free..." [published in the Linux Gazette in January 1997 and was subsequently (re)printed in the April 1997 issue of Linux Journal; also as Chapter 7 of PNG: The Definitive Guide, O'Reilly, June 1999]

"... Unisys also waited more than 10 years before trying to enforce its patent on GIF -- the Web's most commonly used graphics file format. Although the patent for GIF was awarded in 1985, it wasn't until 1999 that Unisys began asking companies such as Yahoo and Disney to start paying for its use. As a result, some Web sites have considered alternative file formats to GIF such as PNG. Unisys's patent expires in the United States in 2003..." [From the 2002-04-11 ZDNet article of Adrian Mello, "Will Patent Disputes Spoil the Web's success?"]

From The GIF Controversy: A Software Developer's Perspective. "Between 1987 and 1994, GIF (Graphics Interchange Format) peacefully became the most popular file format for archiving and exchanging computer images. At the end of December 1994, CompuServe Inc. and Unisys Corporation announced to the public that developers would have to pay a license fee in order to continue to use technology patented by Unisys in certain categories of software supporting the GIF format..." - mcb

Unisys website statement [2002-05-02]: "License Information on GIF and Other LZW-based Technologies: More and more people are becoming aware that the reading and/or writing of GIF images requires a license to use Unisys patented Lempel Ziv Welch (LZW) data compression and decompression technology, including United States Patent No. 4,558,302, Japanese Patent Numbers 2,123,602 and 2,610,084, and patents in Canada, France, Germany, Italy and the United Kingdom. Since January of 1995, Unisys has entered into almost two thousand license agreements for use of GIF and other LZW-based technology..."

Other references:

Hyperlinking/Hypertext (British Telecom)

Update 2002-08-26. According to CRN's "Judge Throws Out Hyperlink Lawsuit," "...U.S. District Judge Colleen McMahon rejected BT Group's claim that it owns the patent on hyperlinks... McMahon rejected BT's claim that each Web server on the Internet is a central computer and thus the Internet falls within the patent's scope...'The Internet is a network of computers intertwined with each other in order to allow users around the world to exchange information,' she wrote. 'The whole purpose of the Internet is for the sources of information to be in many places rather than centralized'..."

Summary: In June and December 2000, British Telecom apparently began to make threats against US companies on the basis of claims that it had a patent governing hyperlink technology; it apparently filed a lawsuit against Prodigy. Authorities in the field of hypertext generally regard the claim preposterous, not least for the reason that Doug Engelbart, Ted Nelson, and others "invented" hyperlinking years before the putative BT patent(s). The Register for example reported: "Apparently, on December 9, 1968, Douglas C Engelbart and 17 researchers at the Augmentation Research Center, Stanford Research Institute, in Menlo Park, California presented a 90-minute live public demo in which hypertext was wheeled out for all to see. The demo also included the first public appearance of the 'mouse'. Real Player footage of the demo can be here..." See also MouseSite for more extensive coverage of the "pioneering work of Douglas Engelbart and his colleagues at Stanford Research Institute in the 1960s."

The (ir)relevant BT patent is apparently US patent 4,873,662, "Information handling system and terminal apparatus therefor" [1989]

From Reuters, reporting in USA Today (February 2002): "Since the controversial lawsuit became public in late 2000, BT has come under heavy fire from computer programmers, developers and Web business executives alike, a group that has traditionally attacked technology patents of any kind. Public critics of BT say the notion of hypertext linking was devised decades before BT developed its own version in the 1970s, for which it was issued the US patent in 1989. In a unique display of solidarity, the Internet and legal communities have used Web message boards over the past year to ferret out claims that "prior art" for hypertext links exists. Most cite British scientist Ted Nelson, who ostensibly coined the word 'hypertext' in 1963, using the term in his book Literary Machines in 1965..."

From on the "BT Hyperlink Patent": "British Telecom in the 70s and 80s filed patents in the US on the concept of cross-references in hypertext. In 2000 BT discovered one of these "Rembrandts in the Attic" (US 4,873,662) and decided to use it for squeezing money out of internet access providers. Litigation is beginning in 2002-02..."

From "BT Goes to Law Over Hyperlink Patent" by BBC News Online internet reporter Mark Ward. 15-December-2000. "BT [British Telecom] is going to court to enforce its claim to have invented the hyperlinks that bind the internet together. This week, it filed a lawsuit in a New York court seeking damages from a US internet service provider over its use of hyperlink technology. Earlier this year, BT claimed to have invented hyperlinks - the technology that lets people jump from webpage to webpage with the click of a mouse... A spokeswoman for BT said it did not know how long it would take for the court case to be settled but was expecting it to take a long time. She did not rule out legal action against other companies if discussions with them proved fruitless. BT has yet to receive a penny in licence fees. Many industry historians poured scorn on BT when it made its announcement pointing out that hypertext and hyperlinks were developed by US computer scientist Ted Nelson long before BT thought them up. Tim Berners-Lee, the man widely credited as the driving force behind the World Wide Web, says Mr Nelson was a key influence."

From "BT Launches US Hyperlinks Legal Action," by Tim Richardson, in The Register (December 14, 2000): "... In June [2000], BT said it owned the patent to hyperlinks and wanted ISPs in the US to cough up hard cash for the privilege of using them. Since then it has been negotiating with a number of ISPs in the US over recouping revenue. But it has always insisted that if this proved fruitless, it would resort to legal action. The monster telco said a patent filed in 1976 - and granted in 1989 - proves it owns the intellectual property rights to those natty little devices that link Web content together. Patent 4,873,662 was lodged following work on text-based online information systems Viewdata and Prestel by the General Post Office (GPO) before it was split into the Post Office and BT. No one at Prodigy returned calls this afternoon. When we explained the situation to one woman, she just laughed. Out loud. Uncontrollably..."

IETF Sender ID Specification (Microsoft)

In September 2004, the Apache Software Foundation (ASF) sent an open letter to the IETF MTA Authorization Records in DNS (MARID) Working Group announcing the decision of ASF projects not to implement or deploy the IETF Sender ID specification under terms required by Microsoft's Patent License Agreement. The letter from Apache also expressed concern that "no company should be permitted IP rights over core Internet infrastructure" and urges the IETF to "revamp its IPR policies to ensure that the core Internet infrastructure remain unencumbered." Other entities, including Earthlink and Debian Project, also announced decisions not to implement the Sender ID spec under the Microsoft Patent License Agreement.

Background: Legal review of the Microsoft Patent License Agreement General Counsel of the Open Source Initiative and others determined that Microsoft's license terms were "generally incompatible with open source, contrary to the practice of open Internet standards, and specifically incompatible with the Apache License 2.0." According to the text of a "Conversation with MSFT Regarding License" posted to the MARID WG by Matt Sergeant (MessageLabs) as a 'Report on Sender-ID meeting hosted by Microsoft on August 31, 2004': "... Ultimately I put it to him [Craig Spietzle, Microsoft] that the license would have to change should open source implementations of Sender-ID be a requirement for adoption. I pressed him: 'Will you fix the license?'. I never really got a confirmed yes or no, but my feeling was 'no' when we ended the conversation. I suggested that they give their IP to the IETF (such as I believe there is precedence of — I know that IBM has committed patents to the public domain before in a similar act of openness), to which I was told that Craig believed this was a reasonable idea, but that Bill Gates himself had vetoed that idea because of the current focus on patent gathering..."

References:

JPEG (Forgent Networks)

Update 2005-04-22: On April 21, 2005, Forgent Networks filed a lawsuit against Microsoft through its wholly owned subsidiary, Compression Labs, Inc, for patent infringement in connection with the JPEG '672' patent. See the announcement, timeline, complaint filing, and CNET News.com summary news story.

Excerpts from the Microsoft Complaint filed April 15, 2005:

Microsoft Corporation's Complaint and Demand for Jury Trial, In the United States District Court for Northern District of California, Microsoft Corporation (Plaintiff) v Compression Labs Inc., and Forgent Networks, Inc. (Defendants)...

1. "Microsoft Corporation ('Microsoft') files this complaint agsinst [CLI/Forgent] ... seeking, among other relief, the following: (a) a declaratory judgment that U.S. Patent No. 4,698,672 ('the "672" Patent') is not infringed, is invalid and is unenforceable, in whole or in part, for the reasons alleged below; (b) a declaratory judgment that Microsoft has a direct and/or implied license to the '672 patent; (c) a declaratory judgment that CLI/Forgent be estopped from attempting to enforce the '672 patent; and (d) damages and declaratory relief under statutory and common law for CLI/Forgent's statutory unfair competition, equitable estoppel and patent misuse...

6. In addition to bringing suit against Microsoft's customers in the Texas Actions, CLI/Forgent has suggested to Microsoft, in correspondence, that Microsoft needs to take a license under the '672 patent to "compensate CLl for [Microsoft's] use of JPEO encoding and decoding technology covered by the '672 Patent." Therefore, Microsoft has an objectively reasonable apprehension that CLI/Forgent will bring suit against it. (7) An actual controversy exists between Microsoft and the Defendants, and Microsoft is entitled to declaratory relief in the form requested herein...

8. The JPEG Standard was first adopted in September 1992, following years of research and collaboration in the international standards community, which included the International Standards Organization ("ISO"), the International Telegraph and Telephone Consultative Committee ("CCITT") and the American National Standards Institute ("ANSI").

9. The JPEG Standard defines an international standard for compression, decompression, transmission and storage of digital still images — anything from photographs to documents to graphics. The JPEG Standard permits users to store and share digital still images among products from various manufacturers without concern over compatibility. Products that incorporate the JPEG Standard include a wide variety of hardware devices or software applications such as personal computers, personal digital assistants, digital cameras, digital camcorders, cellular telephones, Internet browsers, document or photo viewers, editing software, printers, scanners, fax machines and the like. The most common representation of the JPEG Standard is the ".jpg" file extension used on computers and related devices to store photographs and other digital still images.

10. CLI/Forgent has been and is attempting unlawfully to subvert the JPEG Standard and to extract millions of dollars in unwarranted profits based on consumers' long reliance on the JPEG Standard through their purchases of JPEG-enabled products. Now that industries and their customers have adopted and become dependent on the JPEG Standard, CLI/Forgent is attempting to assert the '672 patent against the standard, insisting that the '672 patent covers technology embodied in and essential to practicing the JPEG Standard.

11. CLI/Forgent has initiated a campaign of threats, litigation and other tactics designed to cause doubt and uncertainty and ultimately to prevent others from freely practicing the JPEG Standard. CLI/Forgent intends to force manufacturers to make unwarranted licensing payments to CLI/Forgent, thus denying producers and users of JPEG-enabled products the benefits and efficiencies of a ubiquitous standard. CLI has sued more than 30 companies that refused to capitulate to its licensing demands, wrongfully alleging that the practice of the JPEG Standard infringes the '672 patent.

12. CLI/Forgent's campaign to enforce the '672 patent stems from a history of deception, delay and improper behavior. CLI's unlawful conduct is highlighted, in part, by the following: (i) CLI intentionally failed to disclose known, material prior art to the United States Patent and Trademark Office (the 'Patent Office'); (ii) CLI engaged in a pattern of misleading conduct, silence and misrepresentations about the purported relevance of the '672 patent to the JPEG Standard; (iii) CLI/Forgent unreasonably and inexcusably delayed in notifying Microsoft and its customers of their alleged infringement; and (iv) CLI/Forgent committed deceptive and misleading conduct by claiming to have acquired control over the technology in the JPEG Standard that companies have incorporated into their products, despite the knowledge that: (a) the '672 patent is not infringed, is invalid and is unenforceable; (b) the '672 patent was obtained through fraud on the Patent Office by failing to disclose anticipatory prior art; and (c) CLI failed to disclose the purported applicability of the '672 patent to the standard-setting community, during its participation in the adoption of the JPEG Standard..."

"The Joint Photographic Experts Group (JPEG) and the Joint Bi-Level Image experts Group (JBIG) are joint committees of the ITU (Telecommunications branch, ITU-T) and ISO/IEC JTC1 SC29 WG1. They have been meeting for over ten years, initially starting as a working group of SC2, responsible for character coding... The best known standard from JPEG is IS 10918-1 (ITU-T T.81), which is the first of a multi-part set of standards for still image compression. A basic version of the many features of this standard, in association with a file format placed into the public domain by C-Cube Microsystems (JFIF) is what most people think of as JPEG..." [Home page]

"Concerning Recent Patent Claims." From the news item reviewed and approved at the 27th WG1 Boston Meeting, July 19, 2002:

"Considerable interest has been expressed in the views of the JPEG committee concerning claims made by Forgent Networks Inc on their web site concerning intellectual property that Forgent have obtained through their acquisition of Compression Labs Inc. They refer specifically to US Patent 4,698,672, which refers amongst other claims to technology which might be applied in run length coding, found in many technologies including the implementations of a baseline version of ISO/IEC 10918-1, commonly referred to as JPEG. The committee has examined these claims briefly, and at present believes that prior art exists in areas in which the patent might claim application to ISO/IEC 10918-1 in its baseline form. The committee have also become aware that other organisations including Philips, and Lucent may also be claiming some elements of intellectual property that might be applied to the original JPEG and JBIG (IS 11544 standards)."

"... the JPEG committee will be collecting, through its new web site (to be launched shortly) a substantial repository of prior art and it invites submissions, particularly where the content may be applied to claims of intellectual property. A note will be placed on the web site shortly explaining the process for such submissions. This effort will take some time to organise, but the JPEG committee hope to have it in place prior to its next meeting in Shanghai in October 2002."

"It has always been a strong goal of the JPEG committee that its standards should be implementable in their baseline form without payment of royalty and license fees, and the committee would like to record their disappointment that some organisations appear to be working in conflict with this goal. Considerable time has been spent in committee in attempting to either arrange licensing on these terms, or in avoiding existing intellectual property, and many hundreds of organisations and academic communities have supported us in our work."

"The up and coming JPEG 2000 standard has been prepared along these lines, and agreement reached with over 20 large organisations holding many patents in this area to allow use of their intellectual property in connection with the standard without payment of license fees or royalties..."

References:

MPEG-4

In January 2002, an announcement from MPEG LA LLC about MPEG-4 royalties and use-fees angered several constituencies. The use fee was set at $0.00033 per minute, equivalent to 2 cents an hour for MPEG-4 video data, to paid for by ISPs (thus, pased on to end users). As of 2002-06-08, the licensing disagreement between the MPEG LA (with its 18 patent-holding companies) and industry was into its fifth month of stalemate. Apple Computer said it hopes the licensing problem will be solved later in the summer (of 2002). According to Damien Cave (see below), "The debate over MPEG-4 has shaken the market.. instead of accepting MPEG-LA's expensive terms, or simply staying with the proprietary formats provided by Real, Microsoft and Apple, parts of the multimedia universe might do what the Net has always done best -- route completely around the problem."

References:

W3C P3P and Intermind

On May 3, 1999 the World Wide Web Consortium (W3C) announced that it was "investigating the status of a patent claim which threatens open access to privacy protection technology known as the Platform for Privacy Preferences (P3P). To aid in its investigative efforts, W3C called on the Web Community for help in locating 'prior art,' technology whose existence could be relevant to the validity of the patent..." [from the PR]

W3C's Daniel J. Weitzner testified 2002-04-18 that the P3P and the Intermind Patent issue had been "resolved in a way that enabled widespread adoption of the standard:... The analysis conducted by Barry Rein of Pennie & Edmonds, and made available to both W3C Members and the public, established a reasonable basis for believing that implementers could comply with P3P without infringing the patent. Today, P3P is a W3C Recommendation and widely implemented across the Web."

The P3P 1.0 Recommendation references a document P3P1.0 Patent Statements; as of 2002/04/16 05:05:56 it read "Patent statements for P3P1.0: None so far."

Articles

Rights Expression Language: ContentGuard's XrML

ContentGuard, Inc. is owned by Time Warner, Inc. and Microsoft Corporation, with Xerox Corporation holding a small equity interest. The company's website and marketing literature make sweeping claims about the breadth and depth of the ContentGuard patent portfolio "pertaining to the distribution of digital works and to any rights language", including the (trademarked) eXtensible rights Markup Language (XrML).

On 2004-04-01, MPEG-21 Part 5 was published as an ISO Standard: ISO/IEC 21000-5:2004, Information technology — Multimedia framework (MPEG 21) — Part 5: Rights Expression Language [REL]. ISO MPEG REL defines "an XML-based language for expressing rights related to the use and distribution of digital content as well as access to services." ISO MPEG REL is based upon the proprietary XrML specification owned by ContentGuard. According to a June 01, 2004 message posted to the Atom-Syntax mailing list, ContentGuard believes "products or systems that implement either of the [XrML or ISO MPEG REL] specifications may infringe one or more of ContentGuard's patents and will need a patent license from us." Concrete discussions about license fees payable to ContentGuard "usually entail signing an NDA [non-disclosure agreement] before discussing actual fee structures." See the memo posted by Asbjørn Ulsberg, quoting Rajan Samtani (Director, Sales & Marketing, CONTENTGUARD, Inc.) in response to an inquiry about ContentGuard's XrML patents.

[How] do ContentGuard's patent claims pose a substantial threat to the freedom of information in the Internet context? Interested readers should consider the following data, seeking to understand the combined significance. See also the analysis which follows items 1-5.

  1. ContentGuard claims to have "invented the rights expression language concept" [*]
  2. ContentGuard claims that its patents pertain "to the distribution of digital works and to any rights language" [*]
  3. ContentGuard has "submitted" XrML to MPEG-21, TV-Anytime, and OASIS; the company "plans to propose XrML to any standards organization seeking a Rights Language" [*]
  4. ContentGuard envisions XrML as a "single extensible rights language standard" broadly applicable to Internet domains in which transactions need to be governed by "rights and conditions in any part of a value chain," for example, web services, "financial services [portfolio analysis, real time video, on-line consulting, research reports], metadata, content management, content delivery and distribution, and access control, security services, ebooks, digital publishing, digital broadcasting, music, video, digital cinema, digital TV, and all other content/media types" [*]
  5. ContentGuard earlier [2000] offered royalty-free licensing of XrML, but in more recent statements [2002] has been promising "reasonable and non-discriminatory [RAND] terms and conditions" [*]

Analysis of ContentGuard's Claims

If Xerox and Microsoft can succeed in a legal defense of ContentGuard's patent claims, and succeed in having XrML (and derivatives) incorporated into a significant proportion of Internet "trust" transactions under RAND royalty/licensing terms, the Internet will be profoundly changed -- to the severe detriment of the average user/consumer. Under that scenario, the analysis of Leslie Gornstein in Online Journalism Review may prove to be correct: "the information you get over your laptop, Palm or pen probably won't be free. And if it is free to peek at, you probably won't be able to copy and paste it, print it, look at it a second time, or store it on your hard drive in any way -- unless you pay for the privilege... What's scary about DRM is that there's nothing built into the forthcoming rights protection software that protects consumers' rights under fair use laws -- the same laws that allow people to tape their favorite TV shows. But [ContentGuard CEO Michael] Miron says assuring such rights is too much of a burden for his [ContentGuard] software team, arguing that every country has different intellectual property laws..."

Whether the XeroxPARC/ContentGuard claims to have "invented the rights expression language concept" will withstand legal challenge is as yet (?) undetermined. Who knows what will happen once a public appeal has been issued for revelation of prior art, as was done in the case of P3P and the Intermind patent. From casual, non-legal investigation of the ContentGuard 'Sturdy Patent Portfolio' and a not-so-casual investigation of the early history of markup (1970s, 1980s), one could conclude that the notions granted "invention" and "US patent" status were ideas obvious to almost everyone who thought about and published on (GenCode, SGML) markup in the earliest years. The important pioneering work of Mark Stefik notwithstanding, one may question whether the ContentGuard claims would hold up under a worldwide concerted effort to legally overthrow them; see for example these US patents: #6,236,971 [November 10, 1997; May 22, 2001]; #5,638,443 [November 23, 1994; June 10, 1997] #5,634,012 [November 23, 1994, May 27, 1997]; #5,715,403 [November 23, 1994; February 3, 1998]; #5,629,980 [November 23, 1994; May 13, 1997].

Readers need to understand the significance of ContentGuard's "contribution" (also called "submission") of the XrML specification to OASIS, MPEG-21, TV-Anytime (and potentially to "any standards organization seeking a Rights Language"). This act surrenders nothing of critical importance, though it can serve to deceive. While the "contribution" of the XrML specification to the OASIS TC process opens up future development of XrML to (potentially) a wider body of critical opinion, the submission itself does not diminish the public threat from ContentGuard's patented IP. As the ebXML community learned recently, donating the draft specification and donating the IPR are two different things. Because ContentGuard believes it has patents relevant to "any rights language," there is no potential risk in "offering" the specification to multiple standards organizations. For little or no effort/cost, putting XrML into play broadly within standards work can represent a few well-spent marketing dollars for XrML: visibility, prestige, legitimacy, international approval, and ubiquity. ContentGuard seems to have (?) elected OASIS as the principal custodian for XrML-TNG, but how the OASIS "standard" actually turns out in technical terms vis-à-vis MPEG-21 REL and XrML Version 2.0 could be inconsequential from ContentGuard's point of view. So long as XrML delivered into the hands of multiple standards bodies is conceived and characterized as a "rights language" or "rights expression language," ContentGuard can take this position: "The DTD/schema/code for XrML 2.0 can diverge (fork) in several ways under the requirements of the various standards organizations using XrML as a (contributed) basis for their rights language; XrML does not even need to survive as the official name; so long as the relevance of ContentGuard patents is sustained in all standards environments, the effective monopoly of ContentGuard on DRM is achieved."

Most people see this plainly; Bill Rosenblatt's article in "DRM Watch Update" (April 02, 2002) serves as an example: "ContentGuard is able to relinquish control of OASIS' rights language design while retaining the ability to charge for licenses to the language. ContentGuard can do this because it holds patents on any rights language, not just XrML as it exists today. OASIS, unlike other standards bodies (such as the W3C), allows companies like ContentGuard to contribute technology that can be licensed for money, as long as it's on RAND (reasonable and nondiscriminatory) terms... ContentGuard's patents allow it to take legal action against other organizations that would advance their own rights language. As another important step towards market acceptance, ContentGuard will need to assure the industry that it does not intend to use its patent portfolio as a stick with which to beat other organizations. Only the passage of time will provide this assurance..." [DRM Standards. GiantSteps/Media Technology Strategies]

Contrariwise, a document sponsored by ContentGuard recently addressed the XrML patent issues in this manner:

"There are some concerns about XrML being the intellectual property of ContentGuard, and not yet being managed by an independent standards body. However, ContentGuard has made clear its intent to turn XrML over to an independent standards body and make their patents, if needed to implement a system using XrML, available under 'Reasonable and Nondiscriminatory' terms. Furthermore, they have recently announced their involvement with OASIS by chairing a new OASIS technical committee, The OASIS Rights Language Technical Committee, and will contribute XrML to this committee. With those two things in place, the question of XrML becoming the standard should rest on its merits as a rights expression language." [See: "Rights management and the new infrastructure for truly dynamic product development for publishers of all kinds." White Paper sponsored by ContentGuard, written by Bill Trippe for The Gilbane Report; April 23, 2002.]

In this text, ContentGuard seems to suggest that the promise of RAND and the "contribution" of the XrML specification to an OASIS TC should eliminate public "concerns" about the patents. To the contrary: RAND implies a license to exact tariffs on a global scale, and "submission" to OASIS may imply eventual conferral of a "standards" seal of approval and legitimacy upon a legally encumbered specification. Thoughtful people will not be fooled by this kind of language.

ContentGuard's attempt to position XrML as a "single extensible rights language standard" with broad applicability to Internet domains in which transactions need to be governed by "rights and conditions in any part of a value chain" may be viewed positively or negatively. Interoperable computing solutions are good. Monopolistic control of DRM transactions on a universal scale backed by RAND royalty fees is not good, and rightfully will be opposed. There is a certain appeal to the notion of a markup-based rights/security/permission framework applied to digital content from its inception (authoring) through editing and distribution; there is likewise a certain appeal to the notion of a DRM framework applicable to all of web services, "financial services [portfolio analysis, real time video, on-line consulting, research reports], metadata, content management, content delivery and distribution, and access control, security services, ebooks, digital publishing, digital broadcasting, music, video, digital cinema, digital TV, and all other content/media types." But attaching a micro-penny royalty fee to every metered transaction (payable to ContentGuard) has little appeal. As Len Bullard observed: "Business will not accept tollbooths on business transactions." As Lawrence Lessig and other legal experts have warned, this kind of monopolistic control embedded into the foundations of Internet "code" would constitute a serious threat to the freedom of information. Competitive efforts will be launched to answer this RAND monopoly threat -- to oppose and neutralize the (proposed) universal relevance of ContentGuard's patented (XrML) DRM technologies.

The ContentGuard promise to license XrML and related standards under RAND terms and conditions should not be viewed as a comforting statement. We present elsewhere some arguments against RAND in the context of foundational Internet services based upon open standards.

Sources for ContentGuard Patent Statements

Note: The goal here is to ensure that no statement reproduced here is taken out of context so as to be misleading or otherwise to misrepresent any authorial intent; the reader should examine all original contexts.

The "invention" of the digital rights language concept:

Patents relevant to any rights language:

Submission of XrML to multiple standards bodies:

XrML as designed for all content/media types:

XrML under RF and RAND terms:

Some rights language activities:

Stylesheets: CSS, XSL (Microsoft)

Summary from the Web Standards Project document entitled "Web Standards Project Calls For Clarification of Whether Patent Gives Microsoft Control Over Two Key Web Standards":

U.S. Patent No. 5860073 appears to include key concepts used in W3C's Cascading Style Sheets (CSS) and eXtensible Style Language (XSL) standards, which could potentially require these currently-open standards to be licensed from Microsoft.

If the CSS and XSL standards are in fact covered by the patent, WaSP believes Microsoft, which participated in W3C's development of these standards, should immediately take legal steps to ensure these Web standards remain openly available on a nondiscriminatory basis, assuming that it has not already done so.

This could include turning over the patent to W3C, or other legal licensing agreements that irrevocably protect these open standards, WaSP also called on any other companies that may be pursuing other patents that affect W3C standards to take similar measures.

The patent application was filed in 1995 as the W3C deliberations on the CSS standards began. While Microsoft representatives to W3C may have been unaware of the patent effort, the patent application itself refers to W3C's efforts, which WaSP believes means that Microsoft as an applicant was aware of the issue and should have disclosed its patent effort to W3C. [...]

[April 18, 2002] W3C's Daniel J. Weitzner testified 2002-04-18 that the Microsoft Style Sheet Patent issue had been "resolved in a way that enabled widespread adoption of the standard: ... During the development of W3C's style sheet specifications, Microsoft announced that it had been issued a patent (US Patent #5860073) which might cover W3C's Cascading Style Sheet (CSS) Recommendations. Microsoft was a participant in various W3C style sheet activities and quickly offered royalty-free licenses to W3C members in order to assure that implementation of this standard would proceed."

References:

XPointer (Sun Microsystems)

On December 6, 2000 Sun published "XPointer patent terms and conditions" which fairly rocked the W3C XLink/XPointer development community. The opening statement in the 'TERMS AND CONDITIONS' is shocking (as relevant to a W3C specification) even if one reads no further: "By receiving and/or implementing the XPointer Specification, You acknowledge and agree to be bound by the following terms and conditions:" Other statements read (in part) "The term of this Agreement shall begin on the date that You download or otherwise receive the XPointer Specification and shall extend through the last date on which a Patent expires... In no event shall Sun or You be obligated to extend the covenant not to sue granted hereunder to any product not incorporating a fully compliant implementation of the XPointer Specification... You agree to provide documentation of any Modification to W3C no later than the first date on which such Modification is made available to others, including but not limited to the first date on which such Modification is made available to others through alpha distributions or distributions under obligations of confidentiality..."

The patent at issue was United States Patent number 5,659,729 [use number search], with application #595477, filed February 1, 1996 in the name of Jakob Nielsen. The abstract reads: "Embodiments of the present invention use a new extension to the HTML language to support remotely specified named anchors. A remotely specified named anchor, when embedded within a source document, instructs a browser program to access a portion of a destination document indicated in the remotely specified named anchor. When the browser program reads a remotely specified named anchor such as <a href=http://foo.com/bar.html/SCROLL="Some Text"> from the source document, the browser program performs the following steps: 1) the browser retrieves the destination file 'bar.html' from the server 'foo.com', 2) the browser searches the file bar.html for 'Some Text', and 3) if the browser finds the character swing being searched for, then the browser displays the file bar.html, scrolled to the line containing the first character of the character string being searched for."

W3C's Daniel J. Weitzner testified 2002-04-18 that the Sun XPointer/XLink Patent issue had been "resolved in a way that enabled widespread adoption of the standard: ... A patent (US Patent #5659729) on technologies relevant to the XLink specification was disclosed by Sun during the process of developing the XLink specification. Though there was not a clear model for Royalty-Free licensing in W3C, Sun worked to develop a license that would enable Royalty-Free implementation of this standard."

Sun IPR statement on XPointer. Posted to XML-DEV by Eve L. Maler on 24-April-2001. It reads in part: "Sun Microsystems, Inc. ('Sun') agrees it will grant royalty-free licenses, under reasonable terms and conditions, and on a non-discriminatory basis, under Sun's essential patent claims to make, use, sell, offer for sale, or import implementations of XPointer. One precondition of any license granted to a party shall be the party's agreement to grant royalty-free licenses to Sun and other companies to make, use, sell, offer for sale, or import implementations of XPointer under the party's essential patent claims. Sun expressly reserves all other rights it may have..." Note that this statement was intended to correct and supersede the previous Sun IPR statement (which created the public debate). [source]

The patent itself is/was widely perceived to be unsustainable. See for example the April 25, 2001 posting "Sun IPR Statement on XPointer," written by [Dr.] Steve DeRose (Brown University Scholarly Technology Group; also W3C Editor, XML Linking Language [XLink] Version 1.0 = W3C Recommendation 27-June-2001; also W3C Editor, XML Pointer Language (XPointer) Version 1.0, = W3C Candidate Recommendation 11-September-2001). Re: the comment/opinion of Len Bullard, viz., "Sun believes it can defend the [XPointer] patent..." [Steve writes:] "Actually, if their technical people have clue 1, they cannot believe this. I suspect what they believe is what you said later, that no one will bother fighting them. The patent is so utterly bogus there's not the faintest chance they could defend it against a halfway competent attack. I personally implemented 3 [three] systems, each at least 3 [three] years prior to their application, that 'infringe' it. If you read the patent broadly enough for XPointer to infringe, then HTML infringes it as well. Sun is clearly counting on not having to fight it (sadly, given the way patent law is set up, that's a good bet -- the reason we have myriad patents this foolish)..." Local commentary: Steve DeRose and Eve Maler (Eve sought to recuse herself in the Sun/W3C context) are both eminently wonderful and smart people, and both are editors of the W3C XLink Recommendation. This leads me to conclude that Eve, forced (unfortunately for her) into the role of messenger for Sun legal department, was simply conveying messages she was politically obligated to convey. Few people in the world, bar none, have as much knowledge of "hypertext linking" as Dr. Steve DeRose. His locution utterly bogus as predicated of the putative Sun patent, unless uttered irresponsibly, leads me to conclude that Sun's legal department, exercising inordinate power, as is commonplace for legal departments in US companies, ruled on a matter out of scope and beyond its sphere of technical competence [a general problem of knowledge specialization, and a special problem of US companies]. US companies seem prone to do what their powerful legal departments tell them they are obligated to do: "make extravagent and overreaching claims, even outrageous claims, thereby putting the onus upon competitors to dislodge the assertions..." Good people like Eve and Steve are unfairly caught in the crossfire.

Other references:

Patent Reform

Patents: General Resources

Notes

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