Brian Lally Assistant Chief Counsel Intellectual Property Law Division U.S. Dept. of Energy 9800 S....
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U.S. DEPARTMENT OF
ENERGYOffice of Science-Chicago Office
Brian LallyAssistant Chief CounselIntellectual Property Law DivisionU.S. Dept. of Energy9800 S. Cass Ave.Argonne, IL [email protected]: (630) 252-2042 Fax: (630) 252-2779
Licensing OSSit’s not as hard as you think
This presentation is intended for general information purposes only and does not constitute legal advice. The presentation should not be used or relied upon as a substitute for independent legal advice.
U.S. DEPARTMENT OF
ENERGYOffice of Science-Chicago Office
What is Open Source Software (OSS)?
Open source = a licensing approach
Open source = License
the license defines the community and how it will interact
different licenses create different communities
Community
U.S. DEPARTMENT OF
ENERGYOffice of Science-Chicago Office
Open Source Software Definition
More than just access to the source code
OSS is software licensed under an agreement that conforms to the Open
Source Definition*:
Freedom to Redistribute Access to Source Code Freedom to Modify-Derivative Works No Discrimination against persons or groups or fields of endeavor Integrity of Author’s source code Redistribution accordance with the Open Source Licensing Agreement License must not be specific to a product, must restrict other software and
must be technology neutral
*see, open source initiative (opensource.org)
U.S. DEPARTMENT OF
ENERGYOffice of Science-Chicago Office
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Protect yourself and your organization
Most OSS licenses release the authors from any responsibility. Choose a license that protects you from liability.
If joining an existing community-understand the licenses within the OSS community that you are contributing to-adopt a license that is compatible with the predominant license the community
If you are building a new community-the type of license you chose will help determine how your community develops-Do you want to encourage participation by commercially entities? Do you want to ensure that the source code always remains open? Pick the right license for the community you want to develop.
Consider dual licensing
Consider a GPL compatible license
Pragmatism v. Ideology
When in doubt contact your IP Counsel!
Open Source Licensingchoosing the right license matters
U.S. DEPARTMENT OF
ENERGYOffice of Science-Chicago Office
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OSS Licensing Families
Academic Licenses Permissive Licenses Weakly Protective Licenses
Protective Licenses
“freedom” to users of the code
“freedom” to users of the code with more robust terms
Divides code but ensures that original code remains “free”
ensures code stays “free”
Commercially friendly Commercially friendly Limited Commercial Use Limits commercial adoption
Examples: Berkeley (BSD) (new/modified) MIT/X11
Examples: Apache (AL)
Examples: Mozilla (MPL) Eclipse (EPL) Common Public License (CPL) LGPL
Examples: GPL
permissive(commercially friendly)
Restrictive(copyleft)
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ENERGYOffice of Science-Chicago Office
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Academic and Permissive Licenses
You can use, modify, and redistribute the code in your product, but you must give attribution to the original author.
derivatives can relicense
gives most of the control to the user
allows for commercial development (closed source)
permissive license similar to academic with more robust terms and conditions (patent, TM, contribution provisions)
MIT/X11 New/Modified BSD Apache 2.0
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ENERGYOffice of Science-Chicago Office
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Weakly Protective Licensespartially closed licenses
Derivative or File based distinctions
divides code into pieces
allows linking (use of library) to proprietary program
the source code of the original library (and any modifications) must be redistributed freely
however, the application itself can remain closed
commonly used for libraries and platforms
LGPL 2.1 LGPL 2.1 + LGPL 3.0 and 3.0+Mozilla (MPL) 1.1
U.S. DEPARTMENT OF
ENERGYOffice of Science-Chicago Office
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Strongly Protective Licenses reciprocal licenses (viral licenses)
Derivative works remain under the original license. Copyleft.
ensures the code will remain open
no artificial separation of code
derivative works remain under the license
copyright holder retains much control
limits commercial development
GPL 2.0 GPL 2.0 + GPL 3.0 and 3.0+
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ENERGYOffice of Science-Chicago Office
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You can’t just mix and match OSS licenses
They must be compatible*
* When in doubt consult with your IP counsel
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ENERGYOffice of Science-Chicago Office
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OSS License Compatibility
Public Domain
MIT/X11
New/Modified BSD
Apache 2.0
GPL 2.0
GPL 2.0 +
GPL 3.0 and 3.0+
LGPL 2.1
LGPL 2.1 +
LGPL 3.0 and 3.0+
Mozilla (MPL) 1.1
permissive(commercially friendly)
Restrictive(copyleft)
Only compatible with GPL 3.0
and 3.0+
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ENERGYOffice of Science-Chicago Office
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DOE OSS Approach
An evolutionary approach: DOE policies on OSS have evolved over time
DOE is reducing barriers to accessing OSS at our Labs
DOE policies are aimed at granting flexibility to our Lab contractors.
Lawyers should not be mandating how software is distributed
Allow Labs to select appropriate licenses.
Address misperceptions about working with DOE and our Labs
Be prepared to adapt to a changing scene
U.S. DEPARTMENT OF
ENERGYOffice of Science-Chicago Office
Software Licensing at DOE Labs . . . an evolution
Pre-2002 2002-2003 2003-2010 2010-present
Required Approvals*
DOE Program and DOE Patent Counsel
DOE Program and DOE Patent Counsel
DOE Program No affirmative approval necessary*
Blanket Program Approvals
Not contemplated Allowed Allowed Allowed
Available licenses
traditional DOE copyright license terms
Industry standard OSS licenses
Custom OSS Licenses that meet DOE minimum requirements
traditional DOE copyright license terms
Industry standard OSS licenses
Custom OSS Licenses that meet DOE minimum requirements
traditional DOE copyright license terms
Industry standard OSS licenses
Custom OSS Licenses that meet DOE minimum requirements
traditional DOE copyright license terms
* but must provide DOE program two weeks notice to object.
Rigid Flexible
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ENERGYOffice of Science-Chicago Office
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DOE M&O OSS Contract Req.
CLAUSE I.112 - DEAR 970.5227-2 RIGHTS IN DATA-TECHNOLOGY TRANSFER, subparagraph (f)
Lab report software and decides whether OSS is desired Obtain Program Approval Form DOE F 241.4 to ESTSC Select an OSS License Lab must maintain an OSS Log and provide Public Access to the OSS Periodic Export Control Reviews
Technology transfer mission clause of the M&O Contracts is not applicable (e.g., product liability indemnification, U.S. competitiveness, U.S. preference clauses are not required)
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ENERGYOffice of Science-Chicago Office
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Laboratory created OSS
Labs have flexibility to choose standard OSS Licenses (or create custom licenses that meet min req)
Lab should provide public access to OSS and may monitor to determine effective dissemination
DOE prefers Labs to allow liberal distribution without much restriction on redistribution of derivative works.
Lab may request/accept voluntary contributions to Laboratory distributed OSS. Labs should use reasonable efforts to:
Ensure 3rd party has legal right to make submissions Log/track submittals that add significant code/functionality Check for viruses Lab should inform DOE of any 3rd party infringement claim
Dual licensing: Labs may license both commercial and non-commercial versions however: Lab needs DOE approval to commercially license software.
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ENERGYOffice of Science-Chicago Office
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Program Approvals
DOE Program Approvals: ASCR/ASCI – Blanket Approval for all software developed under OASCR/ASCI program
funding to be licensed as OSS All other DOE Programs (funding 50% or more of software development) “opportunity to
object” with two (2) weeks prior notice of licensing as OSS Exceptions: specific export controls prohibitions (e.g., encryption), 3 rd party proprietary
code, classified code, DOE program overrides (e.g., HPSS), DOE objection within 2 weeks of notification, special contract terms
DHS funding – “programmatic “approval” needed on individual basis (even if only partially funded by DHS) for licensing as OSS at this point
DoD funding – No additional programmatic approval for licensing as OSS
NIH funding – No additional programmatic approval for licensing as OSS
NSF funding – No additional programmatic approval for licensing as OSS
U.S. DEPARTMENT OF
ENERGYOffice of Science-Chicago Office
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3rd Party OSS at DOE Labs
Creating Derivative works of 3rd party OSS: Labs may assert copyright as OSS derivative works without notice to DOE program or approval
from DOE patent counsel . (also no requirement to deposit in ESTSC)
Copyright transfer to 3rd party: some licenses transfer copyright to 3rd party licensor. If Lab contribution < 25% of total OSS code, than transfer is permitted. (no notice or deposit requirement). If greater than 25% DOE patent counsel must be consulted.
When a lab creates a derivate work, a 3rd party OSS license may control and Lab counsel should be consulted.
Be careful of pass-through of legal terms (warranties etc.)
If Lab wishes to commercially license a software package that combines 3rd party OSS then the Lab is required to obtain approval from both DOE program and DOE patent counsel.
DOE encourage Labs to use OSS when appropriate however:-Lab counsel should be consulted to ensure that 3rd party license terms don’t contain terms contrary to DOE policy. (Lab issued guidance)
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ENERGYOffice of Science-Chicago Office
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SciDAC.gov
SciDAC funded software list https://outreach.scidac.gov/scidacoverview/init/default/scidac_current?mode=all
DOE Office of Science and Technical Information (osti.gov)
Energy Science and Technology Software Center (ESTSC)
http://www.osti.gov/estsc/
Sample DOE Lab Software Sites
Argonne National Laboratory http://www.anl.gov/techtransfer/Software_Shop/OpenSourceSoftware.html
Lawrence Berkeley National Laboratory
http://www.lbl.gov/tt/techs/oss.html
Los Alamos National Laboratory https://computing.llnl.gov/?set=resources&page=os_projects
Sandia National Laboratories https://software.sandia.gov/
Sample Direct OSS Sites
Globus Toolkit http://www.globus.org/toolkit/
Chombo https://seesar.lbl.gov/anag/chombo/
Where can I find DOE funded OSS?
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ENERGYOffice of Science-Chicago Office
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https://outreach.scidac.gov/scidac-overview/init/default/scidac_current?mode=all
SciDAC Software website
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ENERGYOffice of Science-Chicago Office
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Example of licensing DOE sponsored OSS Software
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ENERGYOffice of Science-Chicago Office
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Violating OSS License Termsreal world consequences
Jacobsen v. Katzer (U.S. Court of Appeals) -- 2008An OSS License terms were “conditions” not just “covenants”
Not merely breach of contractCopyright Infringement – generally available:
InjunctionsStatutory Damages ($750 to $30,000 per infringement, up to $150,000 per violation if the copyright owner can prove willful infringement. Attorneys fees
Oracle v. Google (U.S. District Court, Northern District Calif.) filed August 12, 2010
Android (released under an Apache OSS licensed) allegedly infringed 7 patents and one copyright (Java, released under GPL) owned by Oracle (which bought Sun Microsystems earlier 2010).Oracle requesting:
Destroy copies, treble damages, attorneys’ fees
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ENERGYOffice of Science-Chicago Office
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Questions?
Contact Information:
Brian LallyAssistant Chief CounselIntellectual Property Law DivisionU.S. Dept. of Energy-Chicago Office9800 S. Cass Ave.Argonne, IL [email protected]: (630) 252-2042 Fax: (630) 252-2779
U.S. DEPARTMENT OF
ENERGYOffice of Science-Chicago Office
Open Source v. Proprietary Software
Open Source Proprietary
Licensor distributes source code Licensor distributes object code only
License flows with the code unilateral permissionNo negotiationNo affirmative assent
“arms length transaction”-meeting of the minds-sometime negotiated-affirmative assent (click, sign etc.)
Modifications are allowed Modifications are generally prohibited
Permissive Use-source and object code-may copy, modify and distribute-may allow others to do the same
Use Restrictions-object code only-limited copying-no reverse engineering-no distribution
licensee may do its own development and support and may hire a third party to do it
upgrades, support and development is done by the licensor
Licensor Obligations-No warranties-No updates/upgrades-No support obligations-no indemnification
Licensor Obligations:-Warranties-Updates-Maintenance/Support-Indemnification