End of 2008 review: three good legal outcomes

By Rick Jelliffe
December 18, 2008 | Comments: 2

This year there were three legal cases of interest to me that resolved in 2008, each in a positive direction as far as I am concerned. In each, it turned out that the way I hoped and expected that things operated was in fact how things did operate, at least in the reality of the courts.

The first case was a US case (a Federal Court of Appeals decision on a case Jacobsen v. Katzer) testing the Artistic License: a copyright case. This is an OSI-approved open source license, and the one I have used in many instances.The principle was clearly stated:

Copyright holders who engage in open source licensing have the right to control the modification and distribution of copyrighted material.

One of the questions the court looked at was whether a breach was a matter of copyright law or contract law, which have different implications and remedies.

The second case was the UK High Court decision on an application by UK Unix Users' Group UKUUG concerning its OOXML vote. This seems to be an administrative law case, however the judge rejected the application

The application does not disclose any arguable breech of the procedures of BSI or of rules of procedural fairness.

It is not clear from this side of the globe whether the action was vexatious or merely ill-advised. The UKUUG could have participated in the BSI process if it was so important to them. £25,000 of member's fees down the drain, on an action without an adequate basis in law. In any case, an ISO vote cannot be rescinded, so what was the objective, apart from grandstanding or panic?

The third case was a US case was US case (a Federal Court of Appeals decision on a case Qualcomm Inc v. Broadcom Inc): this is an IPR case relating to the duty to disclose IP during standards participation at ISO, IEC, ITU etc. and related organizations

The ITU-T and ISO/IEC patent policy provides that "any party participating in the work of the ITU, ISO or IEC should" identify patents "embodied fully or partly" in a standard under consideration. ...we agree with the district court that JVT participants also had to disclose patents prior to final approval of a standard under the rules of the JVT parent organizations

It also has direct relevance to the meaning of some terms widely used in the various corporate licenses or covenants that the large companies give when participating in standards effort and moving over to open source.

The case also has an equity angle. The court affirmed some 1990s findings that Patent misuse arises in equity, and a holding of misuse renders the patent unenforceable until the misuse is purged; it does not, of itself, invalidate the patent.. It found that participating in a standards body without adequate disclosure and then trying to extract a pound of flesh is "patent misuse": the company still has the patent, but cannot charge for it (in the same arbitrary way, at least).

For my part, I have had a concern about the scope of licenses and covenants made by the large US corporations, such as Microsoft's Open Specification Promise. The wording of these licenses, on the face of them, speak in terms that only patents that are necessary or required for implementation are covered by the license or covenant not to sue. Now some people tried to interpret that as if it meant that optional parts of the standard were not covered: this seems a bit daft to me. My concern was more whether the license or covenant applies when there are multiple ways of implementing some part: does the availability of an alternative implementation method to the IP-encumbered method escape the OSP and other licenses?

The Qualcomm case does not directly deal with this, but it does re-affirm the RAMBUS concept that disclosure of IP during standards process is an objective test that is not based on actually might be necessary but is based on reasonably might be necessary, a broader test with little wiggle-room. Especially given that the bearer of this reason is a legal fiction of the reasonable competitor! What a figure! That courts are likely to tests of reasonableness (to competitors!) rather than actual necessity is, I think, a really positive development.

A fourth case of interest is still unresolved: the latest installment of the RAMBUS saga. It has a different set of facts to the Qualcomm case, even if the principles are the same, so its result may be different.

And the US Bilski case, is probably deserving notice too: I have not looked at it enough to comment, but it appears to strengthen the progress we had in 2007, see The world of junk patents explodes.

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"It is not clear from this side of the globe whether the action was vexatious or merely ill-advised."

Microsoft's Live Search lists the relevant pages in the first set of results for "BSI OOXML".

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