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A Reader’s Guide to the Firestar Settlement
July 15, 2008
by Rob Tiller, Vice President and Assistant General Counsel, IP
Last month, we announced that Red Hat had settled a patent infringement case with an agreement that was significant in fashioning a new model for protection for the open source community. In the agreement, we obtained coverage not only for Red Hat, but also for upstream and downstream members of the community involved in developing, using, modifying, and distributing code included in Red Hat’s products and in the community projects that Red Hat sponsors, including Fedora. We demonstrated that it is possible to satisfy the letter and spirit of GPL licensing in resolving patent litigation.
The free and open source software community is a spirited, independent-minded group of people who think for themselves. It is not surprising, therefore, that there have been numerous questions about the agreement and requests to make it publicly available. In the spirit of freedom and openness, we are happy to make the agreement public today here. We hope it will be a useful tool both in addressing existing legal threats and also in suggesting methods for addressing threats as yet unknown.
The agreement is, of course, a legal document. Some of the language is routine legal terminology, and some concerns the parties to the case and is of no general interest. On the other hand, the agreement has some important ideas expressed in terminology that may be unfamiliar to the non-lawyer reader, and so some explanation may be useful. Here are some pointers on where to find the juicy parts and how to figure out what they mean. To state the obvious, this is not intended as legal advice and should not be relied on as such.
When you read the substance of the agreements, it’s helpful to know that terms with initial capitals are defined terms with definitions given in Section 1. It may be easier to read the other sections initially and refer back to the Section 1 definitions as the need arises. The following definitions are worth particular note: Current and Near Future Intellectual Property, Derivative, Future Intellectual Property, Licensed Patents, Red Hat Brand, Red Hat Combination Product, Red Hat Community Member, Red Hat Derivative Product, Red Hat Licensed Product, Red Hat Product, and Specified Patents.
Section 1.10 defines Licensed Patents to include Specified Patents, which are in turn defined in Section 1.22 to include U.S. Patent No. 6,101,502, U.S. Patent No. 5,937,402, U.S. Patent No. 5,826,268, U.S. Patent No. 5,542,078, and U.S. Patent No. 5,522,077, and any other patent owned, controlled, or enforceable by DataTern before the effective date, any patent issuing from or claiming priority to a pending patent application by DataTern, and any foreign counterpart of the listed patents.
Section 3 of the agreement is entitled “Payment,” but the material on this issue has been redacted here. This is because the parties agreed that this term must remain confidential.
Section 5 contains the terms of the license given by the patent holder to Red Hat (in Section 5.1) and to community members (in Section 5.2). The terms of the license are broad: “a perpetual, fully paid-up, royalty-free, irrevocable worldwide license of the Licensed Patents for any and all purposes . . . .”
The license covers Red Hat Licensed Products, which is defined in Section 1.20 to include Red Hat Products, Red Hat Derivative Products, and Red Hat Combination Products. This category is not limited to commercial products distributed by Red Hat. Red Hat Products include code distributed under a “Red Hat Brand,” which, based on the definition in Section 1.16, includes, for example, Fedora and JBoss. It also includes upstream predecessor versions of any such code pursuant to Section 1.21.
This already-broad class of software is then expanded further by the definitions of Red Hat Derivative and Combination Products, which include software derived from code distributed under a “Red Hat Brand” (which is broadly defined), and combinations of such code with other code. Because this includes downstream derivatives and combinations based on projects developed upstream from Red Hat, JBoss, and Fedora, it covers not only software distributed by us, but also software from such projects that is distributed by our competitors such as Novell and Sun Microsystems under their own brands.
It is worth noting that Section 5.4 specifies two classes of products that are not covered by the license. Section 5.4 explains that the license does not apply where there is infringement without use of or reference to any portion or functionality of the “Red Hat Product” (as broadly defined in the agreement). Thus merely combining a non-infringing “Red Hat Product” with unrelated code that does purportedly infringe one of the licensed patents will not by itself immunize the other code from suit. The point here is to disallow “gaming the system” as to code developed and distributed outside the ecosystem that includes Red Hat, Fedora, and JBoss merely by, for example, attaching it to a line of code from within that ecosystem.
Release of Claims
Section 6 includes a release and covenant not to sue protecting Red Hat and community members from possible claims for past infringement. Through the definition of “Current and Near Future Intellectual Property,” the release and covenant cover both existing patents of DataTern, Inc. (“DataTern”) and Amphion Innovations PLC (“Amphion”) and any patents acquired by those entities within five years of June 6, 2008. In addition, the release and covenant give protection for activity within the same five years with respect to patents acquired by DataTern and Amphion after that five-year period. Note that, like the license, the release and covenant do not cover combination or derivative products to the extent that infringement occurs without use of or reference to any portion or functionality in the broadly defined “Red Hat Product” concerned.
In Section 6.5, DataTern and Amphion agree to indemnify Red Hat and community members from losses resulting from claims brought within ten years of June 6, 2008 by FireStar Software, Inc. (“FireStar”) alleging patent infringement of patents owned as of June 6, 2008. FireStar was the entity that brought the original lawsuit here, although it transferred the Licensed Patents to DataTern prior to execution of the settlement agreement.
Third Party Beneficiaries
Section 9.12 clarifies that community members are intended third party beneficiaries with regard to the license and release and covenant not to sue with rights to assert the agreement defensively.
We recognize that the settlement agreement requires close reading, and that even after close reading the reader may have questions. To the extent there are questions that have general applicability, please forward them along to email@example.com, and we’ll try to address them in future posts.