patent lawyer's comments

[Graham Seaman <graham@collector.hscs.wmin.ac.uk>]

Below are some comments on licensing and hardware designs
from a US patent lawyer (with his permission). All comments
without > are his; the rest are mine.

Graham
--------------------------------------------------------------
From: "John Berryhill, Ph.D., J.D." <jberryhill@ddhs.com>
To: <G.Seaman@westminster.ac.uk>

It's not entirely clear (to me, at least) what you want to do here.  Are you
saying that you want to apply a GNU-like GPL to the "design" or to the piece
of hardware itself?

Copyright applies to the manner in which creative ideas are expressed, but
not to the underlying idea itself.  Software is a work of authorship
embodied as a written expression, but hardware per se is not (barring any
conceptually separable decorative elements of the hardware).  That said,
your drawing of the hardware, or your CAD file is a written, expressive work
subject to copyright.  In the U.S., for example, it used to be that a
blueprint for a building was subject to copyright, but the building itself
was not.  More recently, the U.S. laws were amended to take into account
certain "architectural works," but I digress.

Among the bundle of rights associated with copyright is the exclusive right
to make "derivative works" - i.e. works derived from, or incorporating, the
original copyrighted work, and including some further quantum of expressive
material.  What the GNU GPL does is to confer a license to make a derivative
work subject to the condition that the derivative work also be made
available under the GNU GPL.

So, in your example, as the copyright holder in your work, you have the
right to control the manner in which derivative works are made on the basis
of your drawing or CAD file - i.e. where the licensee produces a modified
drawing or CAD file which somehow incorporates or modifies the work you had
originally done.  If they produce their own drawing of a piece of hardware
that accomplishes the same function, but it is drawn in a different way,
then their work is not "derivative" in the sense that the term is used in
copyright.  Your capsule summary of this principle applied to a circuit
diagram is appropriate - drawing the diagram in a different way to preserve
the circuit function without appropriating the "expressive" component of the
original diagram avoids the copyright in the original diagram.

On the other hand, if you were interested in applying this sort of principle
to the hardware per se, then you cannot impose such a license.  Because the
hardware probably does not fall into a category of copyrightable subject
matter, you do not have the right to control the making of "derivative
hardware" under copyright principles.  If you want to have control over the
underlying principle accomplished by the hardware, then you are going to
have consider that other can of worms - patent.

Above all, if this "problem" is based on your actual circumstances, then you
would need to consult with a competent attorney in your jurisdiction so that
she may more fully explore the relevant facts and the law of your
jurisdiction with you.

John B. Berryhill, Ph.D. J.D.
Patent Agent
Dann, Dorfman, Herrell, & Skillman
Philadelphia, Pennsylvania
United States of America


From: "John Berryhill, Ph.D., J.D." <jberryhill@ddhs.com>
To: <G.Seaman@westminster.ac.uk>
Subject: RE: copyleft/click-wrap
Date: Thu, 7 Oct 1999 11:41:27 -0400

> I'm not clear what you mean by applying the GPL to 'the piece of hardware
> itself' - the software equivalent would be something like 'applying the
> gpl to the CDROM on which the executable is placed', which doesn't make
> much sense to me.

I guess what I was getting at is that a coffee cup and a book are both
objects of industrial manufacture.  If I make a drawing of a coffee cup, I
have a copyright in that drawing of the coffee cup - automatically, and as
soon as I make the drawing.  I can prevent others from copying my drawing,
or I can license them to make copies and impose various conditions on that
license (such as the GNU gpl).  The same holds true with the words in the
book - I have a copyright in the sequence of words contained in the book.

Now, let's say that someone manufactures a coffee cup based on my drawing.
They have not copied my drawing, they don't need a license to copy the
drawing, and I can't impose conditions on what they do with the cup.  If
someone manufactures a duplicate of my book, on the other hand, they would
have to duplicate the sequence of words that constitutes the subject of my
copyright.

The drawing of a coffee cup is not the coffee cup.  One of my favorite
artists is the surrealist Rene Magritte.  You may be familiar with his
painting of a tobacco pipe, where he painted the words above the pipe, "This
is not a pipe" (in French).  I can make a pipe, I just can't copy his
painting.

> I assume this is the same as software: for example, the idea of a hash
> table is not copyrightable; how my program implements one, is. Similarly,
> the idea of a FIFO controller is not copyrightable, but my particular
> implementation of one may be.

Your drawing of a FIFO controller is copyrightable.  Your FIFO controller is
not.

> manufacturer who has used them as input to his equipment) then I don't
> want to impose any conditions on the distributor
> (possibly apart from not permitting him to remove a logo or similar device
> from the board which indicates where the design information can be found).

In the case of a PCB layout, actually, the board will contain a duplicate of
the spatial arrangement of the conductors, and you can impose copyright
restrictions on it ("mask works" are expressly included in U.S. copyright
law, at least).

I'd be more concerned about what disclaimer to use.  Let's say one of these
hardware designs, if produced, would infringe a patent.  You may be
considered as having induced infringement by distributing the design and
encouraging people to make the infringing device.

> I've heard from Georgia Tech that lawyers in CMU may also
> be looking at it, but don't have any contact names. So I'm kind of
> casting around in the dark for now.

One of the problems is that technological paradigms change faster than legal
ones.  So, it's fairly easy for a lawyer to make distinctions between
"software" and "hardware" that, frankly, are unintelligble to folks who have
come to the point where there isn't a practical distinction between a piece
of software and a specification for a piece of hardware.  So, it doesn't
seem right that software can be both copyrightable and patentable, whereas
hardware generally cannot.  The confusion and irrationality of the present
state of affairs is a function of the historical development of the various
intellectual property regimes, because law is not made by engineers.