The Impact of Decisions: Facebook’s React BSD+Patent

The Impact of Decisions: Facebook’s React BSD+Patent

Some definitions to begin with:

A License is a permit or authorization to use, do or own something. A licensor is the owner/giver of a license. A Licensee is the beneficiary of a License.

BSD Licenses are a family of licenses that are permissive, extremely simple and very liberal on the terms of use with minimal restrictions.

A patent is the sole right or title assigned to the owner (individual or corporate) of an invention that excludes any other from using such invention for a period of time. So, Mr G’s Patent prevents Mr B from using that particular invention even though Mr G’s invention could be complimentary to that of Mr B, he cannot produce the invention of Mr G together with his invention as a single product. This preventive/exclusive patent is referred to as ‘Blocking patent’. This means that though Mr G’s product could be greatly improved by Mr B’s invention, he has been blocked from doing so. Mr B and Mr G have to go in parallel directions.

In the interest of development and expansion, open source projects are set up where a basic component is made freely available but the improved versions can be jointly owned or compensated for.

An Open Source software? Simply put, is giving the free License to access, study, use, distribute, modify and improve on a set of codes. They are also referred to as Free and or Open source software (FOSS or F/OSS), Free/Libre Open Source software (FLOSS).

Open source contributors being seasoned software developers are volunteers, some from @nHubNG and from the world all over, share values such as Team spirit, freedom, longevity.

Open source pioneers/companies want to prevent or limit Patent/Infringement lawsuits imbedded in the improvements arrived at from their open source software. In order words, if Mr G invents and gives out a concrete brick (or some concrete bricks), he would want to rent or have access to the building free of charge. This gave rise to retaliation clauses.

Patent retaliation Clauses could be weak or strong. Weak, if a licensee asserts a patent claim against the licensor relating to a specific underlying software, the original patent license terminates.

Strong when any patent claim at all is made against the Licensor by the licensee even for an unrelated product. If Mr G has enjoyed an open source license for Mr B’s invention, but sues for any other infringement even though not the specific one granted, under a strong retaliation clause, he losses the license. In other words, a Mr G gives a free license to use some bricks but Mr B sues Mr G for infringing on a glass bottle patent, he loses the license to the brick itself. Facebook operates the strong patent retaliation clause.

The Facebook React Patent License provides that

Facebook, Inc. (“Facebook”) hereby grants to each recipient of the Software (“you”) a perpetual, worldwide, royalty-free, non-exclusive, irrevocable (subject to the termination provision below) license under any Necessary Claims, to make, have made, use, sell, offer to sell, import, and otherwise transfer the Software. For avoidance of doubt, no license is granted under Facebook’s rights in any patent claims that are infringed by (i) modifications to the Software made by you or any third party or (ii) the Software in combination with any software or other technology.

The license granted hereunder will terminate, automatically and without notice, if you (or any of your subsidiaries, corporate affiliates or agents) initiate directly or indirectly, or take a direct financial interest in, any Patent Assertion: (i) against Facebook or any of its subsidiaries or corporate affiliates, (ii) against any party if such Patent Assertion arises in whole or in part from any software, technology, product or service of Facebook or any of its subsidiaries or corporate affiliates, or (iii) against any party relating to the Software. Notwithstanding the foregoing, if Facebook or any of its subsidiaries or corporate affiliates files a lawsuit alleging patent infringement against you in the first instance, and you respond by filing a patent infringement counterclaim in that lawsuit against that party that is unrelated to the Software, the license granted hereunder will not terminate under section (i) of this paragraph due to such counterclaim.

A “Necessary Claim” is a claim of a patent owned by Facebook that is necessarily infringed by the Software standing alone.

A “Patent Assertion” is any lawsuit or other action alleging direct, indirect, or contributory infringement or inducement to infringe any patent, including a cross-claim or counterclaim.’

The Facebook Strong Patent Retaliation clause means if a beneficiary to the License sues, he loses his license and would also incur some liabilities such as Contractual liability, copyright liability, patent liability.

First leg, if your business solutions are built on Facebooks React, you cannot sue Facebook to assert any patents of for infringement otherwise you lose the License.

Secondly, it means you cannot benefit from or be associated with a suit to assert a Patent against Facebook or any of its subsidiaries, affiliates or products for infringement. It also means that should you build an invention with React and Facebook decides to build same or something close with React, even though React is an open source, you cannot sue.

Thirdly, A bigger company planning to acquire a smaller company may take a reverse direction where such smaller company uses React, as the Larger company would not want to be boxed or incapacitated from asserting an infringement against Facebook.

What you should know as a developer: Everything has its Pros and Cons. Whether as a contributor to the Open Source project or as a beneficiary (licensee), options would always be available to pick from and other open source projects to learn about, use of contribute to except for other personal reasons. Simply put, there are many routes into the market

What you should do as a developer: Be sure to understand the licenses offered by the opens source resources you intend to use. A safer step would be to ask or read from a Legal Practitioner who understands these implications. Be sure to also disclose to your employer the options available and cost where applicable. Think Long term.

Famolu Samuel

Head, Legal Unit

nHub Nigeria

@samofamo, @nHubNG