Process Mechanics

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MongoDB's Server Side Public License is fatally flawed

A few days ago, MongoDB, Inc changed the license of its widely-used database software to the "Server Side Public License" or SSPL. They also submitted the SSPL for review by the Open Source Initiative, where it is under active discussion.

The key concept in the SSPL is that it is a "super AGPL," designed to make it difficult for commercial entities to build services around the underlying software. This goal was made explicit by Eliot Horowitz, the CTO of MongoDB:

Today, Affero GPL 3.0 uses the broadest scope of copyleft, among the commonly used open source licenses. MongoDB has been making its database software available under AGPL for many years now. AGPL was written to close the “SaaS loophole” by requiring those offering software as a service to make source code available. However, for some kinds of software that is popular for cloud deployment, AGPL has not resulted in sufficient legal incentives for some of the largest users of infrastructure software, such as international cloud providers, to participate in the community. Many open source developers are struggling with a similar reality, and some of our competitors have moved to proprietary licensing models. The alternative, to be blunt, is for us to be that last standing unpaid open source database developer for cloud providers, who sell access to our software for significant fees, but may not adequately contribute back to our community. Faced with the choice of moving to a proprietary model by applying licensing restrictions to our software, we prefer instead to continue using the copyleft model to create a workable incentive for cloud providers to share with the rest of the community.

The Remote Network Interaction provision of AGPL has not provided enough incentive to change the behavior of cloud providers for several reasons:

  • It is not clear that it extends to software that controls the functionality of the database software, such as management, automation, monitoring, storage and hosting software.

  • It only applies if the software is modified, and the definition of a modification references back to copyright principles that are not settled law.

We have addressed each of these concerns in the Server Side Public License, by (i) clarifying that the copyleft obligation applies to those who make the functionality of the software available to third parties, (ii) expressly including management, automation, monitoring, storage and hosting software that is integrated with the functionality of the database software, and (iii) removing the modification requirement.

Most of the discussion so far has focused on the broader community context as well as the overall desirability of having a super-AGPL to assist in certain types of monetization.

All of this misses the key point that the license is likely unenforceable.

The Doctrine of Copyright Misuse

"Copyright misuse" is an affirmative defense to copyright infringement that has developed over the past thirty years or so. For those who may not be focused on this issue, this is the copyright version of patent misuse. It is most often associated with fraud on the copyright office, but it also has a significant set of precedents associated with using copyright to expand the scope of control of licensee behavior beyond the bounds of the copyrighted work.

The key cases for this strand of copyright misuse are Lasercomb America, Inc. v. Reynolds, 911 F.2d 970 (4th Cir. 1990), DSC Communications Corp. v. DGI Technologies, Inc., 81 F.3d 597 (5th Cir. 1996), and probably Practice Management Info. Corp. v. American Medical Assoc., 97 Daily Journal D.A.R. 10221 (9th Cir. 1997) because it marks the adoption of copyright misuse as a doctrine in the 9th Circuit where MongoDB is located.

Turning to the text of the SSPL, this is the most directly problematic clause:

“Service Source Code” means the Corresponding Source for the Program or the modified version, and the Corresponding Source for all programs that you use to make the Program or modified version available as a service, including, without limitation, management software, user interfaces, application program interfaces, automation software, monitoring software, backup software, storage software and hosting software, all such that a user could run an instance of the service using the Service Source Code you make available.

This clause is designed to sweep in and force the licensing and disclosure of code that is not the same "work" as MongoDB. But, quoting from Lasercomb:

We are of the view, however, that since copyright and patent law serve parallel public interests, a "misuse" defense should apply to infringement actions brought to vindicate either right.... Both patent law and copyright law seek to increase the store of human knowledge and arts by rewarding inventors and authors with the exclusive rights to their works for a limited time. At the same time, the granted monopoly power does not extend to property not covered by the patent or copyright.

Thus, we are persuaded that the rationale of Morton Salt in establishing the misuse defense applies to copyrights. In the passage from Morton Salt quoted above, the phraseology adapts easily to a copyright context:

The grant to the [author] of the special privilege of a [copyright] carries out a public policy adopted by the Constitution and laws of the United States, "to promote the Progress of Science and useful Arts, by securing for limited Times to [Authors] ... the exclusive Right ..." to their ["original" works]. But the public policy which includes [original works] within the granted monopoly excludes from it all that is not embraced in the [original expression]. It equally forbids the use of the [copyright] to secure an exclusive right or limited monopoly not granted by the [Copyright] Office and which it is contrary to public policy to grant. (Lasercomb at 976-977, internal citations omitted.)

Specifically, there are two broad areas of concern:

  1. Use of a copyright or patent to exercise exclusive rights beyond the scope of the government grant. As stated by one court: "Misuse of copyright applies where the copyright owner tries to extend the copyright beyond its intended reach, thereby augmenting the physical scope of copyright protection. It typically arises in situations where it is alleged that the copyright owner projected his unique rights in a work onto other, unrelated products or services." (Religious Tech. Ctr. v. Lerma, 1996 U.S. Dist. LEXIS 15454, 1578-1579).

I don't think it is arguable that MongoDB is trying to exercise control beyond the scope of the copyrighted work. The question is whether this would implicate the exclusive rights of the MongoDB licensee (the party running the service). In this case, the SaaS provider is likely a copyright holder of a non-derivative-work software used to provide the service. As such, the SaaS provider has the exclusive right to control the copying/distribution and overall licensing of its non-derivative-work software. Forcing the licensing and distribution of the non-derivative-work software is "projecting [MongoDB's] unique rights in a work onto other, unrelated products or services."

  1. The use of a copyright or patent to restrict competition (even if it doesn't rise to the level of an antitrust issue). As described above, the entire purpose of the SSPL is to prevent competition to MongoDB from entities lawfully copying MongoDB's source code.

This is a big one. MongoDB is trying to use the SSPL to make certain types of businesses uneconomical, because those types of businesses are substitutes for MongoDB licenses in the market. This is specifically called out as being against public policy in Lasercomb (quoting Compton v. Metal Products, Inc., 453 F.2d 38 (4th Cir. 1971)):

"The need of [Metal Products] to protect its investment does not outweigh the public's right under our system to expect competition and the benefits which flow therefrom, and the total withdrawal of Compton from the mining machine business . . . everywhere in the world for a period of 20 years unreasonably lessens the competition which the public has a right to expect, and constitutes misuse of the patents." (Lasercomb at 979).

As a practical matter, all this means that the second that MongoDB tries to enforce the SSPL, it is likely to meet with a challenge that goes to the enforceability of the license itself, and not to the scope of the work. Further, if copyright misuse is proven, MongoDB will be prevented from enforcing its copyright against any party until it has purged the misuse by abandoning the SSPL and proven that any anticompetitive effects have dissipated. (Id. at 979, see comparison with Morton Salt).


Another issue is impracticablility (sometimes called commercial frustration). The AGPL can already be problematic in practice, making it so that many companies completely avoid AGPL software. This mirrors the advice I usually give my clients as well.

The reason why isn't just - or even primarily - because the AGPL is designed to plug the "ASP loophole" and enforce reciprocal licensing on server-side code. The problem is that the AGPL moves the time when compliance must take place from the time of distribution - a discrete, controllable event - to the time when someone accesses the software over the network. It is extremely difficult in an enterprise situation to build an ongoing compliance framework that properly takes this indeterminacy into account.

The SSPL inherits this weakness of the AGPL, and goes further, making compliance impossible. The SSPL states:

Offering the Program as a Service.

If you make the functionality of the Program or a modified version available to third parties as a service, you must make the Service Source Code available via network download to everyone at no charge, under the terms of this License. Making the functionality of the Program or modified version available to third parties as a service includes, without limitation, enabling third parties to interact with the functionality of the Program or modified version remotely through a computer network, offering a service the value of which entirely or primarily derives from the value of the Program or modified version, or offering a service that accomplishes for users the primary purpose of the Software or modified version. (emphasis added)

Let's assume for a moment that I intended to run a service and completely comply with the terms of the SSPL. Let's look again at the definition of the "Service Source Code":

“Service Source Code” means the Corresponding Source for the Program or the modified version, and the Corresponding Source for all programs that you use to make the Program or modified version available as a service, including, without limitation, management software, user interfaces, application program interfaces, automation software, monitoring software, backup software, storage software and hosting software, all such that a user could run an instance of the service using the Service Source Code you make available. (emphasis added)

This amazingly broad. For example, this would include deployment scripts and software (e.g., Ansible, Salt, and my scripts) - but I don't own the copyrights to that software, and I cannot release it "under the terms of [the SSPL]."

Let's assume that it is ok somehow to pass forward other open source software, solving that problem. What about my continuous integration software (e.g. CircleCI), or my business backup software (e.g. Jungle Disk) or my code hosting service (e.g. Github)? There is no logical bound to this license. Taken on its face, I would theoretically be bound to release the internal source code of services from third parties that I included in or relied upon to deliver my service.

For anyone thinking that construction of the SSPL as a contract rather than a license saves it, impractibility is a defense under contract.

Thus, assuming that MongoDB was able to successfully argue past the copyright misuse defense, an accused infringer would then, quite rightly, plead impracticability (or frustration) - with the likely result that MongoDB would end up getting approximately the same amount of code that they would receive anyway under the AGPL.

Reduced patent valuation resulting in securities fraud?

I was looking around and saw the following: Patent Owners Face Increased Fraud Liability Risk The core question posed by the article is simple: If the patent portfolio is a significant part of the value for a company do changes in patent law change company valuations - and can business leaders commit fraud liability by not disclosing those changes?

Individual patent decisions clearly affect company value. Business leaders regularly report on the results of significant litigation or note as a risk the expiration of key patents in a portfolio. The question is whether generalized risks to a portfolio such as recent Supreme Court decisions (e.g. Alice, Myriad, Mayo) or recent legislation (e.g. AIA) create a particularized reduction in value for a company.

I am betting that the answer would probably be "no," but it is just a matter of time before an enterprising attorney decides to try this theory out, and generalized changes to patent law become part of the litany of risks recited by some companies.

Quick thoughts on TC Heartland

I just read the transcript of the oral arguments in TC Heartland, and my initial impression is that Kraft—the respondent/one who wants to uphold the current venue interpretation—is starting out in a very difficult situation. Take, for example, this exchange (emphasis added in bold):

JUSTICE BREYER: (Speaking of the legislative history) But did it say, if you pass
this, don't worry about getting rid of 1400, because this gets rid of it? I mean, did they say anything like that at all?

MR. JAY: No. Because 1400 still serves a function.... But... I think it's important to note that under our view, 1400(b) does do work. It is the venue statute. So you have to show either that the defendant reside—all defendants reside there, or all defendants are subject to suit there under the other—under the second half. That's different from what the general venue statute provides, which, for example, can base venue on the residence of only one defendant. There is significance; there is work left to be done for 1400(b).

Translated from legalese, Mr. Jay (for Kraft, the respondent) is arguing that his client's preferred interpretation doesn't simply make 1400(b) (the patent-specific venue statute) irrelevant.

But the fact that he is needing to argue this point is problematic for his case.

Prior coverage here.

Copyrights and Patents at the Supreme Court

It is IP month at the Supreme Court this month, with two decisions issued (Star Athletica v. Varsity Brands and SCA Hygiene Prods. v. First Quality Baby Prods.) and two cases being argued (Impression Prods., Inc. v. Lexmark International, Inc. and TC Heartland LLC v. Kraft Foods Group Brands LLC). Of these, Impression Products and TC Heartland are likely to have the largest impact.

Impression Prods., Inc. v. Lexmark International, Inc.

In Impression Products, Lexmark sold printer cartridges overseas subject to a declaration that they could not be refilled, but instead had to be returned to the company. Impression lawfully bought the cartridges, refilled them, and imported them into the United States. (NB: I mentioned Impression Products last week in the context of commenting on one of the amicus briefs and its associated economic analysis.)

The key issue in Impression Products is "patent exhaustion" - the doctrine that a patent holder exhausts all rights in a patented product when there is an authorized, lawful sale. Unlike in copyright, where the "first sale" doctrine has been codified for about a century, patent exhaustion is largely a matter of federal common law.

What further complicates this case is the fact that the sales were overseas. Patent law is territorial; patent exclusivity only applies within the borders of a nation where a patent has been granted. It is not clear whether an authorized sale in another jurisdiction would exhaust rights within the US.

Impression Products was argued earlier this week, and it is somewhat unclear which way the court will go. Justice Breyer made a number of comments about not restricting trade, and I think that the Court will be very mindful of the potential transaction costs it may impose if downstream buyers need to run a patent clearance on each item (and each patentable subcomponent of each item) that they buy. My best guess is that this will be the key policy issue that the justices will focus on.

That said, the extraterritoriality is a significant hurdle for Impression Products. In some ways it doesn't make sense or seem "fair" that a sale in another jurisdiction would result in "spooky action at a distance" using up patent rights in the United States. I would not be surprised at all if the Court tries to split the difference on this issue somehow (perhaps the "sale" occurs where it was authorized?).

TC Heartland LLC v. Kraft Foods Group Brands LLC

TC Heartland has the biggest opportunity to upset the existing order in the patent world. Technically, this is about the venue statute relative to patents - i.e., where it is acceptable to sue a corporation for patent infringement. I'll quote from the amicus brief filed on behalf of the Internet Association and others:

In the nineteenth century, Congress passed a statute to restrict venue in patent cases, 28 U.S.C. § 1400(b), in order to correct the abuses under the general venue statute that allowed alleged infringers to be sued almost anywhere. This Court repeatedly interpreted the statute narrowly, but has not considered the statute since the Nixon Administration. More recently, the Federal Circuit has concluded that venue in patent cases is synonymous with personal jurisdiction. Combined with its embrace of an expansive theory of personal jurisdiction, the Federal Circuit effectively has held that venue over an alleged corporate infringer is proper in almost any district in the country. Stated differently, the statute that was passed to restrict venue in patent cases has now been interpreted to allow more expansive venue over corporations in patent cases than in non-patent cases.

Extensive statistical evidence and academic research demonstrate that the Federal Circuit’s approach has resulted in rampant forum shopping. By 2001, 29% of all patent cases were filed in only five of the 94 districts, and 44% of a ll patent cases were filed in 10 districts. Since that time, forum shopping has dramatically accelerated. Between 2007 and 2015, 52% of all patent cases were filed in only five districts, and 66% of all patent cases were filed in 10 districts. In the first half of 2015, 52% of all patent cases were filed in only two districts, the Eastern District of Texas and the District of Delaware, the district in which this case arose. In 2015, a single judge in the Eastern District of Texas handled one-third of all patent cases nationwide. Recent studies have concluded that the most popular patent districts compete to adopt procedures that will—and do—attract plaintiffs to their districts.

The "single judge" that the brief refers to is Rodney Gilstrap, sitting in the Federal Courthouse in Marshall, Texas. Judge Gilstrap's court has become an effective national court for patent litigation, and his court rules affect litigation against companies located nation- (and world-)wide. The Federal Circuit has been aware of the concentration of patent cases in the Eastern District of Texas for many years, but they have not only refused to act, but have found that venue is proper, leading to the current case.

My sense—and I'm definitely not alone in this—is that the Supreme Court didn't take this case to agree with the Federal Circuit's interpretation. A summary affirmance could have done that. The question for me is how far does the opinion go. Will it say that venue has never been appropriate for many of these companies? If so, that may result in a loss of subject matter jurisdiction for some cases, forcing the courts to dismiss cases that are in process. We'll see.

Star Athletica v. Varsity Brands

In Star Athletica, the court was asked to determine whether copyright law protected cheerleader's uniforms. This was an unsettled question because copyright law explicitly excludes functional works, and clothes have usually been considered to be primarily functional. But that doesn't mean that any artwork on clothing is unprotected. Rather, the copyright statute says:

"...the design of a useful article, as defined in this section, shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.

In the case of cheerleader's uniforms, the artistic aspects are so mixed with the functional aspects that it was unclear whether those artistic elements were sufficiently independent of the utilitarian aspects of the uniforms.

The Supreme Court declined to impose a strict rule, saying that copyright would apply: "if the feature (1) can be perceived as a two- or three-dimensional work of art separate from the useful article and (2) would qualify as a protectable pictorial, graphic, or sculptural work either on its own or in some other medium if imagined separately from the useful article." The Court also said that not all clothing designs would be protectable under copyright, but that the cheerleading designs in this case passed the test.

This seems to me to be a case of the Court exercising judicial restraint. The decision simply re-emphasized the already-existing rule within the statute and didn't make any sweeping pronouncements. There will definitely be a new crop of lawsuits trying to figure out what it might mean for a design to be distinct enough to be "imagined separately" from the underlying article, but the answer to the question of copyright in clothing designs ends up being a rousing "it depends."

SCA Hygiene Prods. v. First Quality Baby Prods.

In SCA, the court ruled on an defense called laches and whether it applies in patent cases. Laches is an "equitable" (i.e., judicially-created) defense that amounts to "use it or lose it" - you might lose your ability to file a lawsuit if there is an unreasonable delay in filing. It is the common-law version of a statute of limitations.

In this case, the Court said that the time frame for damages in the patent statute was effectively the same as a statute of limitations, and so laches should not apply.

This is slightly odd logic, in that the six-year lookback for patent damages is a "reverse" statute of limitations, running backwards from filing rather than forward from the time that the injury (i.e., patent infringement) first occurred. However, the practical impact will probably be slight. For the past several decades, courts have only allowed laches as a defense when there were extraordinary circumstances leading to reliance by the accused infringer.

Recent news in IP (Week of Mar. 10, 2017)

A few recent articles that have caught my eye:

The House Has Passed H.R.720: The Lawsuit Abuse Reduction Act of 2017

Source: Benesch's Sixth Circuit and Ohio Class Action-Plus Report

This is deep in the weeds if you don't follow civil trial procedure, but this could be a big deal. Any time a lawyer files something with a court, they are required to certify that the filing is done in good faith, is not frivolous, etc. This is codified in Federal Rules of Civil Procedure as Rule 11.

Currently, if a lawyer is caught doing something that the court considers in bad faith, the judge has the right to impose a variety of punishments, including fines that the lawyers or their clients must pay personally. As a practical matter, though, rule 11 motions are hardly ever made and the results are usually closer to a stern dressing-down than a penalty.

The linked bill (H.R. 720, the Lawsuit Abuse Reduction Act of 2017) changes rule 11 so that penalties are mandatory. It makes rule 11 challenges and findings much more serious.

From an IP perspective, one of the key enablers of patent litigation abuse is the ability patent plaintiffs to file cursory, technically incorrect, or astoundingly vague claims - and to keep defendants in the dark about the scope of their arguments until forced to make things clearer by the court... a year or more later.

I have frequently felt that filings that are clearly incorrect based upon publicly available information should be sanctionable under rule 11. If this bill passes, perhaps they may be.

Autonomous Driving in California: A New Frontier or Business as Usual?

Source: Squire Patton Boggs

This is reporting on some of the new autonomous driving regulations that are being promulgated by the California DMV. This is a final draft, so now it goes into the formal rulemaking process.

Even with the loosening up that these rules represent, it is still harder to test and deploy autonomous vehicles in California than in a lot of other states. This is a California currently has the most testing taking place, probably due to Silicon Valley, but there is apparently some willingness to test and deploy in other states that have a more accommodating regulatory stance.

I've been interested in this area for a while. I've been doing some study for my panel at the Connected and Automated Vehicle Workshop hosted by the Greater Austin-San Antonio Corridor Council. We are on the front end of a very large industry - this is a space to watch.

How tech’s ruling class stifles innovation with efficient infringement

Source: IPWatchdog

Another day, another hyperbolic IPWatchdog article. This takes a perfectly reasonable article (Tech’s Ruling Class Casts a Big Shadow) wondering whether there is too much consolidation in the tech industry and uses it, without support, to accuse the largest tech companies of "efficient infringement" - i.e., consciously violating IP rights because it is allegedly cheaper to litigate than to license.

I'll probably write something more about this in the future, but I have a hard time believing that efficient infringement exists on a commercially significant scale - and anyone who has been through multi-million dollar patent litigation would agree. This is especially true in light of recent Supreme Court rulings that make treble damages for willful infringement much easier to get. That's not to mention that any lawyer that recommended efficient infringement to a client would be committing malpractice and be potentially on the hook.

No, the problem is not with any mythical "efficient infringement," no matter how much some folks would like to elevate that to an evil on the same level as patent trolling. The problem is that people tend to overvalue and overstate the reach of their IP in the context of real business transactions, and so they are disappointed when they try to license and there are no takers.

An Economic Argument Against Mandatory Patent Exhaustion

Source: Patently-O

A guest post on Patently-O by Randy Barnett of Volokh Conspiracy fame, ahead of the Impression Products v. Lexmark argument at the Supreme Court.. He argues that the best policy is a "presumptive exhaustion" regime where the presumption can be overcome via clear contractual language.

I'm not sure I agree, but I take almost anything Randy Barnett says seriously. It's a good argument, at least with reference to the theory. But from a practical perspective, I don't think that the "presumptive exhaustion" would actually work. Specifically, the effect of a "presumptive exhaustion" doctrine would be mostly indistinguishable from a "no exhaustion" doctrine.

Why? Because lawyers are businesspeople too, and within seconds of the release of an opinion establishing presumptive exhaustion there would be lawyers offering client alerts saying, "Update your contracts now to maintain your patent rights!" There would surely be some one-time fallout for non-renegotiable contracts. But within weeks there would be a new slide in the "contract mistakes to avoid" CLE and non-exhaustion would become a new standard term in almost every contract.