By: Henri Wohlfarth
The attorney for the IETF talks with the IETF Journal about intellectual property, licensing, and what makes the IETF so unusual in the world of copyrights and copylefts.
IETF attorney Jorge L. Conteras
IETF Journal: How did you get involved in the IETF?
Jorge L. Contreras: My firm, WilmerHale, has provided legal advice for the IETF from the early days. I took over from a partner who left about 10 years ago and have been working with IETF since then.
IJ: Did you ever think you would be interested in Internet standards?
JLC: I have an undergraduate degree in electrical engineering, so I was always interested in technical issues. But the law that applies to standards organizations was much less developed when I began practicing law in 1991. The first case to draw significant attention to intellectual property issues in standards organizations involved Dell Computer. In 1998, Dell participated in an SDO [standards development organization] that was creating a video bus standard. They did not comply with the IP policy of the SDO and then later tried to enforce their patents against other SDO participants. The U.S. Department of Justice brought an action against Dell, with the result that Dell’s patents were no longer enforceable. It was a significant result and one that really shook up the world of standards law.
Today, most companies that come to the IETF are aware of the Dell case and a number of more recent cases that have elaborated on the issues first raised in Dell.
IETF participants often have patents that affect standards developed at IETF, and so long as they disclose these patents in compliance with the IETF IPR [intellectual property rights] rules, they are fine. If they violate the rules, however, they risk the loss of patent rights, just as Dell did.
IJ: Has the IETF ever been sued under patents?
JLC: No, the IETF has never been sued for patent infringement. An SDO like IETF is just a forum in which participants can develop standards. IETF itself does not make or sell products, so it cannot actually infringe a patent. It is the implementers of a standard, who sell a product that implements the standard, who can be accused of infringing.
That is not to say, though, that IETF is never involved in patent litigation. Because patents are increasingly important to the companies that send participants to IETF meetings, there are sometimes lawsuits between those companies. If the lawsuits involve patents covering standards that were developed at IETF, the IETF is often called upon to provide evidence regarding the IPR policies that were in effect at the time, the participants in certain working groups, and the contributions that various parties made to a standard. In such cases, the IETF is not a defendant but merely acts as the provider of information that is essential to resolution of the case.
IJ: What other legal matters do you handle for IETF?
JLC: I advise IETF on a wide range of legal issues. One issue that has gotten attention recently is the licensing of IETF software tools to the community. The tools can be created by companies contracted by the IETF-like the IETF Secretariat-or by volunteers. There is a strong desire to release the tools on an open-source basis, and I have worked with the tools team, the IAOC and the IETF Trust to evaluate various approaches that might satisfy the many constituencies involved with the IETF. For example, certain open-source developers favour the General Public License, or GPL, but commercial enterprises often have an aversion to the GPL because it is viewed as risky when distributed with proprietary software. As part of the process, we helped develop a new variant of the Open Software License [OSL] that could be used with nonprofit enterprises. There were objections to the license from for-profit enterprises. Finally, we settled on using the open-source BSD licence, but it took many rounds of discussion to get there.
IJ: Is working with the IETF different from working with other organizations?
JLC: Oh, yes, the IETF is unique. Often, it is not actually clear who the client is. The IETF is more a concept than an entity. The Internet Society [ISOC] is the organizational home of the IETF, and ISOC signs most of the contracts for services that the IETF needs, including everything from the RFC Editor and IETF Secretariat to contracts for hotel venues and network services.
The IETF Trust is a different legal entity altogether. It is the custodian of the IPR owned by IETF, including software code, the IETF trademarks and logo, written records, and, most important, the RFC series itself.
Now that the IETF Trust is up and running, it is also available to administer rights in older RFCs. Those rights are generally still with the RFC authors, but the Trust has set up a lightweight process for authors to license their old RFCs to the Trust. A number of companies and individual authors have already done that, and we are encouraging other active IETF participants to follow suit.
IJ: Outside of the IETF, do you work with other standards bodies?
JLC: I work for numerous companies that are involved with other standards groups, both large SDOs like IEEE and smaller consortia and special interest groups. I also get involved in projects that affect Internet standards groups, like ISOC’s establishment of the Public Interest Registry to become the domain name registry for the .org top-level domain. That was an interesting project, and I continue to advise organizations in that area.
IJ: What’s been happening in the IETF’s IPR Working Group recently?
JLC: The IPR WG has nearly completed a revision of the IETF IPR policy related to copyrights [currently at BCP 78]. The revised policy will make a lot of things easier to manage. For example, if someone wants to evolve an IETF RFC in an SDO other than IETF, there’s no way for IETF to grant that permission today. The other SDO must seek permission directly from the original document authors. In some cases, that is very difficult, because authors have left their companies, moved on to other projects, or, in some cases, passed away. For example, in one case, we transferred some of the 802.11 MIB work to IEEE. That took some doing, because some of the RFCs were quite old. In that case, IEEE had to go and contact the authors, so things took a little while. Under the new policy, the IETF Trust will be empowered to grant licenses-subject to specific guidance that has been given by the IETF community.
IJ: How about the IETF’s patent policy?
JLC: The patent policy is now codified at BCP 79. The IETF has a process whereby participants have to disclose their patents if the patents are related to work that is ongoing in an IETF working group. You can also disclose other people’s patents if you know they affect the work in a WG. If you know of a third-party patent that could affect the development of a certain protocol or standard, you can disclose it.
In this way, the IETF is unusual: It does not require a patent holder to license its patent. The patent holder has to disclose it, but it is not obligated to license it. This has not discouraged companies from sending participants to IETF meetings, however. And in fact, many companies license their patents covering IETF standards for free. In some areas, however, there are lots of patents, and people do pay royalties on them.
Not long ago, some IETF participants said they believed that a certain company’s patent would cover all of IPv6. It caused quite a stir in the community. I had several discussions with the company and tried to get them to commit to licence it for free. Eventually, they never specified what they thought the patent actually covers, and to my knowledge, they never licensed it. But I’m also unaware that they have ever tried to enforce the patent against implementers of IPv6, so that’s where it stands today.
IJ: It sounds as if a lot of what you do is to manage people’s expectations about the IETF, is that right?
JLC: Yes, the IETF is an unusual organization, and even though it’s very well-known, not many people-especially other lawyers-really understand how it all works. So I spend a lot of time talking to other lawyers about the IETF processes. These include both the in-house lawyers of IETF participants and lawyers for litigants that involve IETF standards, parties that IETF contracts with, and others.
IJ: What about your book? Will there be a version 2?
JLC: I’m chair of the Technical Standardization Committee of the American Bar Association’s Section of Science and Technology Law. In that capacity, I served as editor of our committee’s Standards Development Patent Policy Manual, which was published last year and is intended to offer a set of annotated, policy-neutral language that SDOs, consortia, and others can use in developing their own patent policies. A number of IETFers worked on the book project, and I am grateful for all of their help and insights.
As is often the case, right after the publication there were changes to laws and regulations, new cases came up, and so on. So, yes, it will need an update, and I’m currently looking for volunteers to help with that project!
Jorge is the author of Standards Development Patent Policy Manual (paperback). Note: Standards Development Patent Policy Manual can also be found on Google Books.