Presented at Embedded Systems Conference 2016 by Richard Leach, Brooks Kushman P.C. and Rod Cope, Rogue Wave Software. This session provides both legal and practical considerations in developing embedded systems using open source software (OSS). We discusss open source development tools, how to integrate OSS into embedded systems and different OSS licenses, and provide a road map to compliance. We will also explore how recent court decisions like Oracle v. Google and XimpleWare v. Versata and Ameriprise have altered the landscape by which developers navigate.

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Legal and Practical Concerns with Software Development
Rod Cope, Rogue Wave Software
Rick Leach, Brooks Kushman, P.C.

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Disclaimer
• This presentation shall not be taken as legal advice and is only for
educational purpose.

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Software touches all IP categories
• Copyright – The main theme of this presentation
• Patent – currently under scrutiny by the USPTO in regards to Patent
Eligibility under §101.
• Trade Secret – Consider the new Defend Trade Secret Act of 2016 (DTSA).
• Trademark – Consider a GUI (Color scheme, Boot Sounds, Imagery, Icons,
Arrangements, etc.)

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DTSA – Brief Overview
• Ex Parte Seizures – The DTSA provides for the seizure of property necessary to prevent the propagation or dissemination
of the trade secret.
• Immunity Notice Requirements – For an employer to preserve its rights to exemplary damages and attorney fees, the
employer “shall” provide notice to an employee, contractor, or consultant of his or her immunity rights.
• Inevitable Disclosure – Under DTSA, a court cannot prevent a person from entering into an employment relationship,
and any conditions placed on such employment shall be based on evidence of threatened misappropriation and not
merely on the information the person knows.
• State Law Preemption – The DTSA provides for a Federal forum for relieve but the DTSA does not preempt state law.
• In summary, given the extreme value of trade secrets, and the growing threat of trade secret theft, businesses should
audit their trade secret protection practices in light of DTSA, and existing state laws, and to take appropriate steps to
protect those trade secrets. This includes
• (1) instituting practices to detect trade secret misappropriation – especially through electronic means – as soon as possible,
• (2) revising all contracts or agreements relating to trade secrets or other confidential information with any employee, contractor, or
consultant to provide the notices required by DTSA,
• (3) instituting employee exit strategies to warn both the exiting employee and their next employer of the employee’s trade secret
obligations, and
• (4) reviewing the measures taken to protect trade secrets to ensure that such measures meet the requirements of both DTSA and state law

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Why use Open Source Software?
• ~$60B/year savings*
• > 4 Billion Files
• >7,500 repositories
• > 2,000 Licenses
• ~ 97% say they use OSS
• ~ 64% companies participate in OSS projects
• ~ 88% companies expect to increase
contributions to OSS
https://www.blackducksoftware.com/
* http://www.freesoftwaremagazine.com/articles/creating_wealth_free_software

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OSS Compliance: Should I care?
• Diversion of Time, Talent,
Resources
• Impact to Customers &
Reputation
• Potential waiver of IP
rights
• Potential Damages

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Benefits and Risks
OSS Projects are on the rise … and so is Policing of the projects

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Copyright: What is it?
• Protection of Artistic Expressions, not
ideas or functionality
• Music
• Movies
• Artwork
• Literature
• Software

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Rights of a Copyright Owner
• Exclusive rights
• Distribute – Sell
• Reproduce – Copy
• Adapt – Create derivative work
• Perform
• Display
• Transmit
• Neither Registration nor notice required to create protection

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Copyright Introduction
License
$$$
Copyright
Owner User
• Owner chooses to enter into a contract with User
• Owner grants rights to Sell, Copy, Adapt, . . .
• User provides some consideration ($$$)
• User agrees to abide by the license terms
• Other people not allowed to Sell, Copy, Adapt, . . .

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Introduction to ‘Copyleft’
Copyleft
License
$0.0
• Owner chooses to enter into a contract with User
• Owner grants rights to Sell, Copy, Adapt, . . .
• User provides some consideration ($$$)
• User agrees to abide by the license terms
• Everyone is allowed to Sell, Copy, Adapt, . . .
(As long as they comply with license terms)

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Strong Copyleft – The Cost of Freedom
• Strong Copyleft is a copyright licensing scheme for making a
program (or other work) free, and requiring all modified and
extended versions of the program to be free as well
http://www.gnu.org/copyleft/copyleft.en.html

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Permissive Licenses
• “… [A] permissive license that is short and to the point. It lets people do anything
they want with your code as long as they provide attribution back to you and
don’t hold you liable.“ - http://choosealicense.com/
• Common permissive licenses include BSD, MIT, Apache
13https://en.wikipedia.org/wiki/Permissive_software_licence

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Top 20 Common Open Source Licenses
https://www.blackducksoftware.com/top-open-source-licenses#top20
What’s the
difference?
> 75% of software
uses 5 Licenses

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MIT License
The MIT License (MIT)
Copyright (c) [year] [fullname]
Permission is hereby granted, free of charge, to any person obtaining a copy of this software and associated documentation files
(the "Software"), to deal in the Software without restriction, including without limitation the rights to use, copy, modify, merge,
publish, distribute, sublicense, and/or sell copies of the Software, and to permit persons to whom the Software is furnished to do
so, subject to the following conditions:
The above copyright notice and this permission notice shall be included in
all copies or substantial portions of the Software.
THE SOFTWARE IS PROVIDED "AS IS", WITHOUT WARRANTY OF ANY KIND, EXPRESS OR IMPLIED, INCLUDING BUT NOT LIMITED TO
THE WARRANTIES OF MERCHANTABILITY, FITNESS FOR A PARTICULAR PURPOSE AND NONINFRINGEMENT. IN NO EVENT SHALL THE
AUTHORS OR COPYRIGHT HOLDERS BE LIABLE FOR ANY CLAIM, DAMAGES OR OTHER LIABILITY, WHETHER IN AN ACTION OF
CONTRACT, TORT OR OTHERWISE, ARISING FROM, OUT OF OR IN CONNECTION WITH THE SOFTWARE OR THE USE OR OTHER
DEALINGS IN THE SOFTWARE.
http://opensource.org/licenses/MIT

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GPLv2 License select sections
Preamble. Finally, any free program is threatened constantly by software patents. We wish to avoid the danger that redistributors
of a free program will individually obtain patent licenses, in effect making the program proprietary. To prevent this, we have made
it clear that any patent must be licensed for everyone's free use or not licensed at all.
2. You may modify your copy or copies of the Program or any portion of it, thus forming a work based on the Program, and copy
and distribute such modifications or work under the terms of Section 1 above, provided that you also meet all of these conditions:
a) You must cause the modified files to carry prominent notices stating that you changed the files and the date of any change.
b) You must cause any work that you distribute or publish, that in whole or in part contains or is derived from the Program or any
part thereof, to be licensed as a whole at no charge to all third parties under the terms of this License.
c) If the modified program normally reads commands interactively when run, you must cause it, when started running for such
interactive use in the most ordinary way, to print or display an announcement including an appropriate copyright notice and a
notice that there is no warranty
http://www.gnu.org/licenses/gpl.txt

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GPLv3 License select sections
1. "The ‘Corresponding Source’ for a work in object code form means all the source code
needed to generate, install, and (for an executable work) run the object code and to modify the work, including scripts to
control those activities. . . . ”
6. Conveying Non-Source Forms: You may convey a covered work in object code form under the terms of sections 4 and 5,
provided that you also convey the machine-readable Corresponding Source
under the terms of this License
10. Automatic Licensing of Downstream Recipients: "...and you may not initiate litigation (including a cross-
claim or counterclaim in a lawsuit) alleging that any patent claim is infringedby making, using,
selling, offering for sale, or importing the Program or any portion of it."
11. Patents: . . . Each contributor grants you a non-exclusive, worldwide, royalty-
free patent license. . .
http://www.gnu.org/licenses/gpl.txt

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18
LGPLv2.1 Section 5

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A History of License Options
19911988 2001 2004 2007 2012
BSD & MIT
Licenses
GPLv2 Apache 2.0 GPLv3 MPL 2.0CPL
· Implied License
&/or Estoppel
· Implied License
&/or Estoppel
· Patent Disincentive
Clause
· Express Patent
License
· Broad Patent
Retaliation Clause
· Express Patent
License
· Patent Retaliation
Clause
· Broad Express Patent
License
· Anti-Tivoization clause
· Patent Non-Assert
· Patent Disincentive
Clause
· Express Patent
License
· Patent Retaliation
Clause

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Thoughts on Derivative Works?
Proprietary
Software
MIT
License
Static OR Dynamic Linking
• Provide Copyright Notice
• Provide License
Proprietary
Software
LGPL
v2.1
Dynamic Linking
LibraryExecutable
Proprietary
Software
LGPL
v2.1
Static Linking
Executable
Proprietary
Software
GPL v3
Static OR Dynamic Linking
• Provide Copyright Notice
• Provide License
• Provide Open Source code
• Provide modifications &
change log
• Provide Disclaimer of
warranty in the OSS
• Provide Library Source
Code
• Provide Copyright Notice
• Provide License
• Provide Open Source code
• Provide modifications &
change log
• Provide Disclaimer of
warranty in the OSS
• Provide proprietary Object
Code and/or Source Code
so that a modified Library
can generate an executable
• Provide Copyright Notice
• Provide License
• Provide Open Source code
• Provide modifications &
change log
• Provide Disclaimer of
warranty for all GPL code
• Provide proprietary Object
Code and/or Source Code
• Provide License to all IP in
the proprietary code that
uses or is linked to GPL
Related to
linking or
something
else?

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GPL/GPL License Compatibility
http://www.gnu.org/licenses/gpl-faq.html#v2v3Compatibility

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Infringement – Consequences
• § 504 – Damages (Actual or Statutory)
• Actual damages to Owner and profits of the Infringer
• Statutory (Timely Registration required) $750 - $30,000 per
infringement, If willful up to $150,000!
• § 505 – Costs and Attorney Fees
• Usually linked with Willfullness (Pre-Registration required)
• § 502 – Injunction, § 503 – Impounding, and § 506 – Criminal
Prosecution

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Step 1: Have a license policy
• You must decide which licenses are acceptable for your
company (and potentially your customers).
• The policy depends on how you plan to use the software.
• GENIVI has the following policy
• Red – GPLv3; LGPLv2/3; BSD 4; MPL1.1; Flora
• Yellow – GPLv2; LGPL2.1; AFL 3; OSL 3; OpenSSL; Public domain
• Green – MPL 2.0; BSD 2/3; MIT/X11; Apache 1.1/2; Artistic 2/1
http://docs.projects.genivi.org/License/Public_Policy_for_GENIVI_Licensing_and_Copyright_v_1.0.pdf
NO
OK
???

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Step 2: Educate your Developers
• Which software/licenses are acceptable and not
• Which software licenses need to be discussed
• How and who to contact with questions – Point Person
• Disclosure of software use to Point Person

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Step 3: Compliance
Apple -
iPhone
Mercedes-Benz

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Example Supply ChainComponent
Manufacturer
Development Board –Drivers Sub-Assembly – Libraries
Product
Manufacturer
OSS contribution Retailer

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Who can help ?

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Dependency Issues Impact Licensing
•OSS often depends on or bundles other OSS
•Need to look at all the dependencies and bundled
projects and their licenses
• Important: The licenses may not be the same!
•Example:
• Geronimo (Apache license) uses MySQL (GPL) through the
MySQL driver (formerly LGPL but now GPL)

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Multiple Packages, Multiple Licenses• When a developer downloads and installs those projects they also get additional open source components
that are installed automatically (over 90 additional!!)
AspectJ (19)
- Ant (1.6.3)
- Apache Avalon (4.1.2)
- ASM (2.0)
- ASM (2.2.1)
- Batik (unknown)
- BCEL (5.1)
- Commons BeanUtils (unknown)
- Commons Digester (unknown)
- Commons Logging (unknown)
- DocBook XML (4.1.2)
- DocBook XSL Stylesheets (1.44)
- FOP (0.20.5)
- JDiff (unknown)
- JUnit (3.8.1)
- Jython (2.1)
- Regexp (1.2)
- Saxon (unknown)
- Xalan (2.4.1)
- JDK (1.4.2_12)
Spring Framework (61)
- ActiveMQ (1.1)
- Ant (1.6.5)
- ANTLR (2.7.5H3)
- AOP Alliance (1.0)
- Apache (OJB) (1.0.4)
- Apache xml-apis (1.2.01)
- c3p0 (0.9.0.4)
- cglib (2.1.3)
- com.oreilly.servlet (1.0)
- Commons Attributes (2.1)
- Commons BeanUtils (1.6)
- Commons Codec (1.3)
- Commons Collections (3.1)
- Commons DBCP (1.2.1)
- Commons Digester (1.6)
- Commons Discovery (0.2)
- Commons Fileupload (1.0)
- Commons HttpClient (3.0)
- Commons Lang (2.1)
- Commons Logging (1.0.4)
- Commons Pool (1.2)
Ant (7 bundled)
- Apache xml-apis (1.5)
- Xerces (2.6.2)
- BCEL (5.1)
- BeanShell (1.3.0)
- BSF (2.3.0)
- JUnit (3.8.1)
- JDK (1.4.2_12)
MySQL Connector
(9)
- Ant-Contrib (1.0-b2)
- AspectJ (1.2)
- c3p0 (0.9.1-pre6)
- Commons Logging (1.0.4)
- JBoss Application Server (3.2.7)
- JDBC (2_0)
- JTA (1.0.1)
- JUnit (3.8.1)
- Log4j (1.2.9)
- Commons Validator (1.1.4)
- dom4j (1.6)
- EasyMock (1.1)
- Ehcache (1.1)
- Enterprise Java Beans (2.0)
- Free Marker (2.3.4)
- Hessian (3.0.1)
- Hibernate (2.1.7)
- Hibernate (3.0.5)
- HSQLDB (1.8.0)
- iBATIS (2.1.7)
- iText (1.3)
- J2EE Connector Arch (1.0)
- Jakarta JSTL (1.0.3)
- Jamon (1.0)
- Jasper Reports (1.0.3)
- Java Servlet API (2.4)
- JavaBeans (JAF) (1.0.1)
- JavaMail (1.3)
- JavaServer Faces (1.1)
- JAX-RPC (1.1)
- Jaxen (1.1-beta4)
- JDBC (2_0)
- JDO (2.0)
- JMX (1.0)
- JOTM (2.0.9)
- JTA (1.0.1B)
- JUnit (3.8.1)
- jxl (2.6)
- Log4j (1.2.13)
- ORO (2.0.8)
- POI (2.5.1)
- Quartz (1.5.2)
- Rowset (1.0.1)
- Struts (1.2.8)
- Tag Libs (1.0.6)
- TOPLink (1.0)
- Velocity (1.4)
- Velocity Tools (1.1)
- XDoclet (1.1)

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Bundling OSS into other code
Project Foo:
GPL v2
Project Time:
BSD
Project Commercial:
Restrictive EULA
Project Foo:
GPL v2
Project
Time:
BSD
What if I take a file that is under one license and I distribute it under a different
license–do I have to comply with the original license?

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Use of
OSS under GPL
Revisions made to FOSS
Linked to or bundled with
proprietary code Use by wholly
owned sub
Sub is sold to a
3rd party
Internal Use
Use by an
outsourcer or
contractor
Software shared
with “partner”
during further
development
Software
distributed to
end users
Using OSS Distributing OSS
Changes in how FOSS is used can impact license compliance
Example: How OSS is used may change...

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Jacobsen v. Katzer: Opens the door
• Model train software under Artistic License
• Distribution without notice (non-compliance)
• Question: contract or copyright
• Contract – State Court and no consideration (OSS is free)
• Copyright – Federal Court,
• OSS license obligations are conditions precedent to the license.
• Failure to comply with obligations extinguishes license.
• Case settled.

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Google v. Oracle: Make or Buy?

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Google v. Oracle: Make or Buy?
Which should I choose ?

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Google v. Oracle: 9 lines is enough
“the jury reasonably found
that Google’s copying of the
rangeCheck files was more
than de minimis;” - CAFC

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APIs/taxonomy are copyrightable
• “the declaring code and the structure,
sequence, and organization of the API
packages are entitled to copyright
protection” – CAFC (Google v. Oracle)

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Upon Remand – Google saved writing a $9.3 Billion
check by “fair use” doctrine
• June 2015 – Supreme Court denied Certiorari
• March 2016 – Oracle Filed for $9.3 Billion
• Actual Damages of 0.475B and Profits Apportioned to Infringed Java Copyrights $8.829B.
• May 2016 – On remand to the District Court for a trial on Google’s fair use
defense, a jury unanimously found that Google’s was protected by Fair Use
• Under Fair Use, reproduction for purposes such as criticism, comment, news
reporting, teaching, scholarship, or research, is not an infringement of
copyright

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Versata, Ameriprise, Ximpleware
• “the GPL is a ‘viral’ license in the sense the incorporation of a GPL-covered
software program into a new program ‘infects’ the new program and
requires it to become open source , too” – District Court W.D. Texas
• Take away: Compliance is important even for customers (Ameriprise)

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Welte v. Fantec – Germany
• GPLv2.0 software used in a media player
• Fantec : Fantec’s supplier assured them compliance with GPL terms.
• Result: Welte was awarded Attorney’s fees and damages.
• German Court stated:
• “Here, Defendant was not allowed to rely merely on its suppliers’ assurances that
the works supplied did not infringe any third-party rights.
• In any case, Defendant should have performed its own review of the software, or
have someone preform, by hiring knowledgable third parties, such a review of the software
offered and provided by Defendant – even if this would have resulted in additional costs.”

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Ximpleware v. Versata – Downstream use
• Versata provided Distribution Channel Management software to Ameriprise
• Versata sued Ameriprise for redistributing DCM software
• Ameriprise counterclaimed Versata violated GPLv2 under copyright that preempted the breach of contract
filed by Versata.
• XimpleWare developed and owns XML parsing software used by Versata
• XimpleWare sued both Versata and Ameriprise
• Ameriprise patent license under preamble, never modified code, did not distribute
• XimpleWare, downstream license terminates when Versata license terminates
• Court Held: “even if the original licensee—here, one of the Versata entities—breaches its license for
whatever reason, third-party customers of that original license retain the right to use XimpleWare’s software
so long as the customer does not itself breach the license”
40

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Ximpleware v. Versata – Take-away
• “the GPL is a ‘viral’ license in the sense the incorporation of a GPL-
covered software program into a new program ‘infects’ the new
program and requires it to become open source , too” – District Court
W.D. Texas
• Compliance is important even for customers (Ameriprise)

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Roadmap to Compliance
• 1st appreciate Open Source Software’s benefits
• 2nd develop an Open Source Software Strategy
• 3rd know your code: Education, Point Person
• 4th know the licenses associated with your code
• 5th comply or use different software

43. #ESCminn#ESCminn
Rod Cope
• CTO, Rogue Wave Software
• Previous:
• Founder and CTO, OpenLogic
• IBM, IBM Global Services, GE, Anthem BCBS
• roguewave.com
• rod.cope@roguewave.com
• @RodCope

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Rick Leach
• Intellectual Property Attorney at Brooks Kushman, P.C.
• brookskushman.com
• rleach@brookskushman.com
• LinkedIn Information

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Thank You!
Questions?
@ESC_Conf