2020 November

IP Gotchas: Open Source Software

November 9, 2020

Many companies use open source software to produce goods and services, and many also actively develop software using open source libraries and modules. Open source software is commonly used for online software services, smart phone apps, downloadable executables, or embedded in the memory chips of physical products. Its use has grown because open source software is easy to obtain, actively maintained by a strong user base, performs well, and best of all, it is free. This makes it an easy choice, especially for young start-up companies trying to preserve precious capital. However, open source software relies on copyright law and built in license agreements to keep it “open”. Confusion about the legal issues involved tends to give rise to a number of misconceptions about open source software.

It’s free – so there are no restrictions to worry about. “Free” in the open source context means free to use within the confines of copyright law and according to the terms of the open source license. Open source license agreements are self-executing which means that a user does not have to click “I accept” when downloading open source code – but the terms of the open source agreement are still binding on the organization. Also, different open source software packages may be subject to different terms. There are currently at least 80 different open source licenses in play, and using multiple open source packages in a large system may mean agreeing to licenses that have conflicting terms. Failure to consider these issues in advance may be crippling. A long development effort could be wasted if the combined product includes open source modules with conflicting license terms that make it impossible to distribute the end product.

Our legal department will handle the licensing issues. Open source licenses are self-executing. That means a software developer who uses the software has already entered into a binding software license regardless of whether the organization has granted that individual the authority to do so. This is true whether the open source modules are used in-house or distributed as part of a product or service. The corporation would likely be required to abide by the license terms, whether or not management was aware of the license. Also, once the open source material is part of the end product or service, the corporation is vulnerable to the threat of termination of the license if the terms of the license are not met. On termination of the license, any later use of the software would infringe the copyright.

It’s a minor software thing, and not that big of a deal. Not true. Discovery that open source software is in use may come at the most inopportune times during a merger or acquisition, when an IPO or venture capital financing deal is in the works, or in litigation. This can leave the organization scrambling to resolve critical issues at the worst times. Finding this out at critical times may cast a negative light on the entire organization and can dramatically change the outcome. For example, when IBM was negotiating to acquire Think Dynamics in 2003, the discovery of open source software that was previously unaccounted for resulted in a reduction in the final offer from $67 million to $46 million.

We didn’t change the open source code, so we have no issues. Maybe. It is true that open source licenses usually require that modifications to the open source software itself must be licensed according to the terms of the original license – meaning they must be freely distributed to anyone who uses the software. Thus, modifying your copy of the open source code to include your proprietary algorithms is generally a bad idea if you want to keep them under wraps. But what if the open source code is unchanged, but it is compiled into a single executable with the proprietary code? What if the open source code and proprietary code are compiled separately and dynamically linked at run time? Does a mere reference to a simple sort routine or hash table algorithm in an open source library put the entire code base under the open source license? The answer is “probably not”, but no one can say for sure, and other specific details about the software could change that outcome. This area is especially gray because the courts have not decided what constitutes a derivative work in the open source context. Some open source licenses clarify things a little, but generally speaking, the full legal ramifications of using open source software alongside proprietary code are still unclear.


Firm Named “Best Law Firms” by U.S. News & World Report and Best Lawyers

November 5, 2020

For the eleventh consecutive year, Woodard, Emhardt, Henry, Reeves & Wagner, LLP has been named U.S. News Media Group (U.S. News) and Best Lawyers “Best Law Firms” list. For 2021, Woodard was recognized with top regional rankings in 5 practice areas including Copyright Law, Litigation – Intellectual Property, Litigation – Patent, Patent Law and Trademark Law.

Firms included in the 2021 “Best Law Firms” list are recognized for professional excellence with persistently impressive ratings from clients and peers. Achieving a tiered ranking signals a unique combination of quality law practice and breadth of legal expertise.


New associates: Step one — develop your skills

November 2, 2020

Many of you recently passed the state bar exam and were sworn in to practice law within the last couple of months. Now it is time to start practicing law, implement what you learned in law school and begin to learn from your colleagues how to be a lawyer in the real world. Some of you may be looking for advice on how to proceed following your law school experience. I was in your shoes one year ago and will now impart some of the “knowledge” I have learned in my first year as a lawyer. It is up to you to decide if what I have learned is helpful to you or if I am full of it.

Develop a solid foundation

It is tempting to want to hit the ground running. Many lawyers want to try the biggest cases and to leave their mark on the profession. However, in order to do so, you need to develop a solid foundation of skills. In every area of the law, there are steps you must take to develop those skills. My advice is to learn what they are and become proficient in each no matter how rudimentary. Learn how to use a calendar, how to file a document with the court, how best to communicate with partners and clients, and how to work well with others in your firm including the paralegals, staff and assistants. Do not shy away from difficult work or hide from a partner with a reputation for being tough to work for. If there are partners at your firm willing to teach you, be grateful and learn as much as you can from their experiences. I believe the best way for anyone to learn is to do — make sure to gather as much work as possible. Working on a variety of matters will provide you with real-world legal experience and exposure to clients, helping you build your client service skills.

To read the full article, visit The Indiana Lawyer