Google's patent license for VP8 [was: Google WebM?]

[David Shofi]

Larry is right on that the "necessarily infringed" language scopes the 
patent claims that are licensed.  The license would apply as written, 
however, to "this implementation" only.  I too wonder if this was 
intentional or a slip.  I think that it is the latter due to the FAQ 
reproduced here:

What if someone makes a change to the code and gives it to me. Do I have a 
patent license from Google for that change?
You still have the right to redistribute but no patent license for the 
changes (if there are any patents covering it). We can’t give patent 
licenses for changes people make after we distribute the code, as we have 
no way to predict what those changes will be. Other common licenses take 
the same approach, including the Apache license.

David M. Shofi | Chief Intellectual Property Counsel | Office: 
203-794-1100 x4188 | Direct: 203-207-9342 | Mobile: 203-770-2865 | Fax: 
203-797-2544 | ATMI, Inc. | 7 Commerce Drive | Danbury | CT | 06810 | 
http://www.atmi.com | dshofi at atmi.com

 



"Lawrence Rosen" <lrosen at rosenlaw.com> 
05/20/2010 03:55 PM

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Subject
Google's patent license for VP8 [was: Google WebM?]






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


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