Mark H. Webbink471
INTRODUCTION
In my two most recent career roles, collaboration has been at the centre of my daily activities. During my time as general counsel for Red Hat Inc., the world's leading provider of open source solutions, I dealt on a daily basis with issues of open source collaboration in all its many variants. More recently, as Executive Director of the Center for Patent Innovations at New York Law School, I headed up the ‘Peer-to-Patent’ Project, a program designed to improve patent quality by harnessing the collaborative efforts of citizen-experts to help identify relevant information that is helpful to patent examiners in assessing patent applications. Each of these activities has provided a unique perspective as to how collaboration occurs and can be promoted.
OPEN SOURCE DEVELOPMENT – THE CHOICE IMPERATIVE
The development and licensing of computer software which utilizes open source software development and licensing practices have become wildly popular in the last decade. Open source developers believe, for good reason, that an open development environment (where each developer is allowed to express their best ideas and defend the merits of those ideas among a peer development group) leads to better software. However, just as there is no single open source license that covers all open source software, there are a wide range of open source development practices. What legal counsel who work with open source groups often find is that it is critical to marry the right open source license with the selected open source development model.
For example, one popular open source license is the Berkeley Software Distribution license or BSD. This license is essentially a copyright license that places no reciprocal burdens on the party receiving the software. The recipient can freely modify the software, copy the software and redistribute the software. Importantly, that recipient can also embed that software in other open source applications as well as in traditional ‘closed’ source applications. This generally leads to a great deal of development freedom but not always a great deal of development discipline.
By contrast, open source software licensed under the GNU General Public License (or GPL, either version 2 or 3) carries with it certain reciprocal obligations due by a receiving party who elects to redistribute that software. Most specifically, the redistributing recipient is obligated to license the redistributed code under the GPL, whether the code is merely that which they received or a modified version. This license approach tends to enforce greater discipline during the development process as the developers must maintain an awareness of what they are distributing, whether it is the original or a derivative work, and to whom they are distributing the software.
Such diversity in the open source license and development models has led to a plethora of open source licenses, more than a hundred at last count. This leads to a diversity of contracting issues by receiving parties, including business, government and academic entities. Some of these licensing approaches are more problematic from a contract perspective than others. For example, when Red
Hat wanted to engage university academics in the development of open source software, it found the open source license model to be inconsistent with established university policies on intellectual property. Which party would own the intellectual property arising from the work? What if some of that intellectual property included patentable subject matter, would patents be pursued and who would hold them? Patents on software are anathema to open source developers, but are often highly coveted by universities seeking to generate additional revenue streams.
The complexity of university intellectual property policies and open source licensing resulted in having to negotiate such agreements one institution at a time. Private universities tended to have more flexibility than State-wide university systems (for example, the University of California). Trying to adopt a model open source intellectual property policy and contracting model that would be widely adopted by diverse academic institutions was simply not practical.
An alternative approach was to focus on fundamental principles that would govern such collaborations. One example of this approach is the IBM-developed Open Collaboration Principles472 for university collaboration. These principles establish a policy for handling intellectual property rights that arise from software related collaborations between industry and universities under circumstances where the participants intend the results to be made part of a royalty free public commons. The devil still remains in the detail, but these principles help to define the approach to be followed in preparing specific collaborative development agreements covering open source software. IBM followed this initial set of principles with a second set of principles entitled Free Participant Use Principles.473 This second approach intends to make intellectual property in the results of the collaboration (foreground intellectual property) available to the participants without royalty or other fees and to non-participants on either a royalty-free or a reasonable and non-discriminatory basis. As with the earlier principles around open source development, this second set of principles merely provides a framework for the development of a specific contract.
The advantage of this ‘principles-based’ approach is that it establishes the broad guidelines of the intended collaboration and, at least in theory, makes it easier to resolve specific contractual issues that arise in the collaboration.
From the perspective of an open source developer and a lawyer, intellectual property collaborations solely related to copyright are easier to establish than those collaborations that involve patents. This is largely due to the unique nature of patents which are emblematic in traditional patent licensing, for example, the value of the patent, the breadth of its claims, the extent of infringement, etc. In patent licensing practice, each arrangement must be negotiated on its own unique merits and there is a real danger in becoming too formulaic or model driven.
IMPROVING GOVERNMENT THROUGH COLLABORATION
The New York Law School's Peer-to-Patent474 Project is one of the earliest examples of harnessing
the intellect of citizens to improve government decision-making. In Peer-to-Patent, citizen-experts join forces to identify and assess prior art that is relevant to pending patent applications, forwarding both the relevant prior art and annotations to U.S. Patent Office examiners for their use in determining the patentability of the associated patent application.
472 See http://www-304.ibm.com/jct09002c/university/scholars/collaborativeresearch/docs/OpenCollaborationPrinciples_2005.pdf. 473 See http://www-304.ibm.com/jct09002c/university/scholars/collaborativeresearch/docs/FreeParticpantUsePrinciples_2007.pdf. 474 See http://www.peertopatent.org.
Peer-to-Patent actually involves collaboration within several communities of interest, including patent applicants (who benefit from accelerated examination and stronger patents), scientists and technologists (avoiding non-meritorious patents), government (improving patent quality and reducing workload) and the general public (greater certainty as to patent validity reducing unwarranted licensing and litigation activities). Peer-to-Patent collaboration has evolved from voluntary participation with the threshold for participation set quite low. Rules are simple and are not onerous. The collaborative process, although supported by sophisticated technology, involves relatively unsophisticated transactions and processes. From the Peer-to-Patent Project, we have observed that certain levels of generic technology can be adapted to provide the mechanism for obtaining and providing expert feedback to a wide range of government fact-finding and decision-making activities. Governments at all levels, local, State/provincial, and national, have long been interested in citizen feedback. For local and State governments, information gathering is relatively easy and can quite frequently be accomplished through hearing, conferences and meetings. In other words, citizen- experts can readily be available in person. This tends not to be the case with national governments, as such citizen-experts are spread over wide geographic areas and travel serves act as a barrier to such direct participation. For this reason, web-based collaboration tools can serve to increase collaboration by reducing the barriers to such participation.
It is also interesting to note that improved government decision-making and openness have been incorporated into the Obama campaign platform.
Open Up Government to its Citizens: The Bush Administration has been one of the most secretive, closed administrations in American history. Our nation’s progress has been stifled by a system corrupted by millions of lobbying dollars contributed to political campaigns, the revolving door between government and industry, and privileged access to inside information - all of which have led to policies that favor the few against the public interest. An Obama presidency will use cutting-edge technologies to reverse this dynamic, creating a new level of transparency, accountability and participation for America'scitizens.475
CONCLUSION
It is difficulty to conceptualize any form of standard agreement that will be useful in complex collaborative transactions. Transactions are simply too diverse. Issues are too complex. Crossing national jurisdictions will add to the complexity of intellectual property, competition and contract law.
What is more realistic is a series of principles along the lines of IBM’s Open Collaboration Principles. Using these principles as a starting point, a series of standard clauses could be developed, somewhat
long the lines of the Uniform Commercial Code in the United States,476 which would have the effect
of gap-filling default clauses. If a contract does not address a particular issue, then these default clauses would apply.
In addition, it would be useful to provide a ‘decision tree’ to govern the development of such collaboration agreements which would ask questions such as is there intellectual property? Is copyright the only form of intellectual property included? If background patents or potentially patentable subject matter are involved, then greater care and detail will be necessitated in developing a unique agreement, facilitated by established governing principles. Such an approach could streamline collaboration in an e-Research world.
475 See http://www.barackobama.com/issues/technology/#solve-problems. 476 See http://en.wikipedia.org/wiki/Uniform_Commercial_Code.
CHAPTER TWELVE