patent 101

[Disclaimer: I’m not saying this on behalf of my employer, I have no exposure to MPEG-LA’s licensing agreements, and I’m not making a broader claim about the h264/ogg debate; I just want to clarify one specific point of law.]

“If some patent troll decides H.264 violates a patent, they must go to court with MPEG LA, not individual licensees.” — John Gruber, Daring Fireball

Let this be a friendly public service announcement: patent law says that anyone who uses a patent, not just the manufacturer or licensor of the patent-infringing good, can potentially be dragged into court on a charge of patent infringement. (This is not the first installment of this reminder.) This misunderstanding of how patent law functions gives people a false sense of security- they think they are safe because they are ‘just’ using, when in fact patent trolls are known to go around to small individual consumers of ‘infringing’ software and extort settlements from them in order to build their war chests for later, larger suits. Or in other, more specific words: there is certainly nothing in patent law that says that an H264 patent troll ‘must’ go after MPEG-LA and can’t go after individual licensees.

Of course, going after users is rare. Furthermore, it is certainly possible that MPEG-LA might (for political reasons) try to enter into a court fight on the side of someone being attacked by an H264-related troll; it is even possible that the licensing agreement requires such entry if the defendant is an MPEG-LA licensee. (If the latter is what Gruber was getting at, that would be interesting to know.) Even entry by MPEG-LA on your sideis not likely to completely protect you; even if they were to promise to cover all costs and settlements, the engineers and businessfolks who made the decision would still likely be hauled into court to testify as to whether the infringement was done on purpose, how it was done, etc.

Bottom line: there may be contractual obligations at play here, and if so, I’d love to hear clarification, but as far as statute goes, what Gruber says about who can sue whom is mistaken.

13 thoughts on “patent 101”

  1. Also, even when a patent troll decides to attack those manufacturing/selling the product, they can basically go after everyone involved in the process. I had a patent laywer tell me they could decide to go after the lady who cleans the engineers desks at night personally if they felt her contribution to be important enough. Well, he immediatly added that such an absurd claim would go nowhere very fast soon. But for example if you’re an independent contractor who does some hired work for a big company that ends up in litigation you might get caught up in the crossfire. I had him add a clause to my standard contract that would force my customers to legally step in for me if my work for them ended up being part of a patent litigation.

  2. The MPEG-LA agreements are actually really, really clear on this point: they say that there’s no guarantee that the agreement covers all the ‘essential’ patents, and you’re entirely on your own if another patent holder (whether ‘troll’ or a vaguely-legitimate practising patent holder) decides to sue you.

    Some of MPEG-LA’s patent pools in fact explicitly state that there ARE other essential patents not covered (the MPEG-2 pool, as an example).

    The patent pools have always been a ‘necessary but not sufficient’ step towards being able to legally use these encumbered codecs, a fact which escapes most of the commentators promoting use of encumbered codecs on the web.


  3. Going after users isn’t all that rare. See also MSFT with TomTom (the linux/vfat patents anyway) and MSFT with Amazon.

  4. “Of course, going after users is rare.” Not so rare: see SCO and Linux users.

    There are lot of cases where some “patent troll” goes after companies, web sites owners, etc. in a lawsuit spree.

    Users are not just “end users” like you and me.

    In the case of Firefox everyone that reuses the code could be in trouble.

  5. @Nathan Nutter

    “Gruber posted an update about this post as well admitting such error:

    He did very little and changed very little. Not only is he ignorant of the facts he also has flawed reasoning (not corrected).

    Nor did he changed all the other wrong “facts” on his article.

    Famous name, very little substance. As usual…

  6. If Mike Smith is correct then Gruber’s full article is completely useless and FUDster.

  7. I thought that line looked suss when I first read it.

    From the latest post, Master John writes: “If Ogg Theora takes off and becomes popular, would anyone be surprised if MPEG-LA started suing Ogg Theora users for licensing fees? I’d be surprised if they didn’t.”

    Is that an argument for supporting MPEG-LA’s H.264? Unbelievable!

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