Subject: Google's patent license for VP8 [was: Google WebM?]
From: "Lawrence Rosen" <lrosen@rosenlaw.com>
Date: Thu, 20 May 2010 12:53:36 -0700
Thu, 20 May 2010 12:53:36 -0700
Here is the patent provision of Google's license for its VP8 codec:

 

Subject to the terms and conditions of the above License, Google hereby
grants to You a perpetual, worldwide, non-exclusive, no-charge,
royalty-free, irrevocable (except as stated in this section) patent license
to make, have made, use, offer to sell, sell, import, and otherwise transfer
this implementation of VP8, where such license applies only to those patent
claims, both currently owned by Google and acquired in the future,
licensable by Google that are necessarily infringed by this implementation
of VP8. If You or your agent or exclusive licensee institute or order or
agree to the institution of patent litigation against any entity (including
a cross-claim or counterclaim in a lawsuit) alleging that this
implementation of VP8 or any code incorporated within this implementation of
VP8 constitutes direct or contributory patent infringement, or inducement of
patent infringement, then any rights granted to You under this License for
this implementation of VP8 shall terminate as of the date such litigation is
filed.

 

[See http://www.webmproject.org/license/software/.] This license to the VP8
codec software otherwise resembles the BSD license. In its first sentence it
expressly authorizes "redistribution and use [of this implementation] in
source and binary forms, with or without modification" (emphasis added).

 

It is typical for a patent owner to tie its patent license to its own
implementation, but open source copyright licenses change all that. How does
this limited patent license apply to modifications of this implementation
that are expressly authorized by the remainder of this BSD-like license?

 

The way I could interpret this Google license, the world is being granted a
license to patent claims "necessarily infringed by this implementation of
VP8," and then those patent claims are licensed for authorized derivative
works (which are no longer "this implementation"). Should I infer that
Google is licensing its necessary patent claims for much more than "this
implementation"? Or not? A patent and copyright license that allows
modifications is illusory and meaningless without also licensing those same
necessary patent claims for those authorized modifications. Or perhaps
Google is locking us in to its own specific implementation of VP8, thereby
frustrating software freedom and innovation.

 

How do you read this limited patent license in combination with a generous
BSD license? Is this a subtly phrased requirement to conform to the VP8
specification or to use only Google's code, or just a drafting ambiguity in
an open source patent and copyright license? I wish to believe the latter.

 

/Larry

 

Lawrence Rosen

Rosenlaw & Einschlag, a technology law firm (www.rosenlaw.com) 

3001 King Ranch Road, Ukiah, CA 95482

Cell: 707-478-8932



Here is the patent provision of Google's license for its VP8 codec:

 

Subject to the terms and conditions of the above License, Google hereby grants to You a perpetual, worldwide, non-exclusive, no-charge, royalty-free, irrevocable (except as stated in this section) patent license to make, have made, use, offer to sell, sell, import, and otherwise transfer this implementation of VP8, where such license applies only to those patent claims, both currently owned by Google and acquired in the future, licensable by Google that are necessarily infringed by this implementation of VP8. If You or your agent or exclusive licensee institute or order or agree to the institution of patent litigation against any entity (including a cross-claim or counterclaim in a lawsuit) alleging that this implementation of VP8 or any code incorporated within this implementation of VP8 constitutes direct or contributory patent infringement, or inducement of patent infringement, then any rights granted to You under this License for this implementation of VP8 shall terminate as of the date such litigation is filed.

 

[See http://www.webmproject.org/license/software/.] This license to the VP8 codec software otherwise resembles the BSD license. In its first sentence it expressly authorizes "redistribution and use [of this implementation] in source and binary forms, with or without modification" (emphasis added).

 

It is typical for a patent owner to tie its patent license to its own implementation, but open source copyright licenses change all that. How does this limited patent license apply to modifications of this implementation that are expressly authorized by the remainder of this BSD-like license?

 

The way I could interpret this Google license, the world is being granted a license to patent claims "necessarily infringed by this implementation of VP8," and then those patent claims are licensed for authorized derivative works (which are no longer "this implementation"). Should I infer that Google is licensing its necessary patent claims for much more than "this implementation"? Or not? A patent and copyright license that allows modifications is illusory and meaningless without also licensing those same necessary patent claims for those authorized modifications. Or perhaps Google is locking us in to its own specific implementation of VP8, thereby frustrating software freedom and innovation.

 

How do you read this limited patent license in combination with a generous BSD license? Is this a subtly phrased requirement to conform to the VP8 specification or to use only Google's code, or just a drafting ambiguity in an open source patent and copyright license? I wish to believe the latter.

 

/Larry

 

Lawrence Rosen

Rosenlaw & Einschlag, a technology law firm (www.rosenlaw.com)

3001 King Ranch Road, Ukiah, CA 95482

Cell: 707-478-8932