Use of open-source software and related copyright license infringement

1. What is open-source software?
   • Open-source software (OSS) is code that is designed to be publicly accessible.
   • The owner of the software can release their software to the public through a copyright license: the license grants users the right to use, investigate, enhance, change, and distribute the software and its source code.
   • Popular open-source licenses include MIT licenses, NU General Public license, and the Apache License.
2. A copyright is a type of intellectual property that protects original creative works, including software code.
   • Copyrighted work can’t be reproduced or published, in whole or in substantial part, without express consent of the copyright owner.
   • Consent for using an open-source software is provided through the user agreeing to the copyright license.
   • Open-source software licenses serve as a legal agreement between open-source author and the user.
   • Many of the provisions contained within open-source software licenses address patent or copyright licensing to preserve the free and distributable nature of open-source software.
3. Benefits of using OSS:
   • Open-source software offers a flexible, cost-effective, and speedy solution to developers in the process of developing innovative software solutions.
4. User beware:
   • It is of utmost importance that the licensing conditions of open-source software are respected during use.
   • Refraining from reading and following the licensing conditions can expose a user to a great deal of risk- you can be held legally accountable for copyright infringement and/ or breach of contract.

5. Certain open-source software licenses have begun to incorporate express patent grant clauses into their licensing terms to protect from this intellectual property claims (e.g. GPLv3 and Apache 2.0).
   • Using an OSS with patent grant clauses for your software solutions means that you are generally secure from patent infringement claims brought by the OSS license holder.
   • However, many open-source licenses do not contain these licenses.
6. Due diligence considerations:
   • Generally, companies should compile the open-source software that is in use, as well as their licenses, in order to help identify risks of potential copyright infringement.
7. An open-source software policy within your company should include the following requirements:
   • Obtaining permission of the use by the employer.
   • Logging any open-source software used.
   • Investigating licensing requirements of the open-source software to ensure compliance.
8. Detecting OSS use in your company:
   • Monitoring and screening programs can be used to detect the presence of open-source software.
   • They can scan and find potential open-source risks in source code.
   • These programs can help the implementation of an OSS policy.
   • An example of a program is “Synopsys”.
9. When considering software purchases, it may be important to have discussions with the purchaser about the availability of indemnification warranties for potential open-source breach claims.

Key considerations for Canadian companies:

• Create a comprehensive open-source software policy.
• “When you purchase a software program, make sure that you inquire about any open- source software used and obtain indemnification warranties to protect you from potential open-source breach claims” says Kim Capiau, Registered Trademark Agent and IP Analytics expert at Stratford Intellectual Property.
• Keep in mind that it is always a good idea to seek legal advice before deciding how to deal with your Intellectual Property (IP). This will help you make an informed decision and know what to expect.
• Beyond IP considerations, there may be other reasons to track OSS used by your company. U.S. authorities are increasingly looking at regulations around the concept of Software Bill of Materials (SBOM) from a Cybersecurity perspective. The National Institute of Standards and Technology is leading on this work that stems from Executive Order 14028, improving the Nation’s Cybersecurity.

Additional information:

• For information about IP protection in the US, please see the Canadian Intellectual Property Office’s publication on Doing business abroad: Protecting your IP in the United States
• For material relating to the export of goods to the US, please see the Doing Business in the United States webpage
• For more information on going global with your IP, visit ca/export-ip