METHODS OF THE STUDY

The method of this study is a combination of (1) civil law approach of legal dogmatics;

(2) common law approach of doctrinal legal research; (3) comparative law; and (4) pragmatic, interpretative analysis on the legal doctrines subject to this study and construction of the doctrines in the context of sale, licensing and/or distribution of FOSS. Simply put, this study applies relevant patent law doctrines in the context of FOSS. The focus is not to provide a complete analysis on the patentability of computer programs, nor the doctrines of implied patent license or patent exhaustion in context of computer programs.

The first method, i.e. the civil law approach of legal dogmatics is used to describe the legal provisions of European law governing legal protection of computer programs, the

80 For philosophical background of the different FOSS movements, see for example Sanseverino at 11-26.

81 5 Mills, Reiley, et. al. §22:1.

doctrine of patent exhaustion under the case law of CJEU and the national laws of Finland as well as the quasi contract theories of implied patent license in Europe under the secondary EU law in general and the national laws of Finland specifically. In that context, the relevant provisions of secondary EU law such as the case law of CJEU, the Software Directive and the Copyright Directive as well as the national laws such as the Copyright Act and the Patent Act of Finland including their legislative history and related legal literature are touched upon as required by the civil law method of legal dogmatics. The second method, i.e. the common law approach of doctrinal legal research is, in turn, applied in connection with conducting legal research on the patentability of computer programs in the US as well as the US doctrines of patent exhaustion and implied patent license. Within the said scope of research, the relevant case law of the US courts, mainly the Supreme Court of the United States (SCOTUS) and the Court of Appeal for the Federal Circuit (CAFC), are examined for the purpose of building theories on the said concepts. While the third method, i.e. comparative law is inherently applied merely due to the fact that this study covers concepts of both the US and the European legal systems, said tool is used mainly in sections concerning comparison of the European and the US patent exhaustion doctrines as well as the comparison of the US doctrine on implied patent license to quasi-contract theories in the European context and under the national laws of Finland specifically.

Mere dogmatic legal research (civil law approach) or doctrinal legal research (common law approach) nor even comparative legal research explaining the differences in the results of the former methods would not, however, be capable of responding to the research questions presented in this study. Response to the research questions of this study requires that the general doctrines described by exploiting the ordinary research methods 1-3 are applied in practice to the various factual circumstances in context of FOSS. Therefore, as none of the above methods 1-3 is sufficient to address the research questions raised in Section 1.3 (Aims of the Study), the fourth method, i.e. pragmatic, interpretative analysis on the legal doctrines, is specifically composed for the purpose of this study, and therefore it neither is described in Section 1.2 (Methodological Considerations of Legal Sciences). The fourth method means, in practice, that information gained by exploiting the three other methods, i.e. the civil law approach of legal dogmatics, the common law approach of doctrinal legal research as well as

comparative law, is applied to the factual circumstances relevant in the context of sale, licensing and/or distribution of FOSS in order to analyze the related exposure to FOSS licensor's patent portfolio in light of the results of the earlier research on the general doctrines conducted by adhering to the three other research methods. Application of the fourth method may be closer to practicing attorneys' work than law professors' work.

Due to lack of literature on practical application of many legal theories, it may sometimes appear that pure legal scholars consider their study completed after analyzing all the relevant aspects of the law before, however, applying the theory to facts. There may be several reasons for the said situation: one of the reasons may be that law professors do not provide legal advice in connection with their research work.

Therefore, legal researchers may not be primarily focused on practical problems arising out of their legal theories or application of their theories on the factual circumstances of varying cases. However, as the research questions of this study stem from legal practitioner's professional curiosity rather than legal scholar's academic interests, the research questions are formed, and must also be addressed, accordingly by exploiting the research method 4 specifically composed for the purpose of this study for use in combination with the methods 1-3.

How then is the method of pragmatic, interpretative analysis applied in practice? There should be nothing surprising in application of the said method as it obviously is the very basic tool of any law student and legal practitioner alike. The method 4 resembles closely the IRAC method introduced in Section 1.2 (Methodological Considerations of Legal Sciences) and in this study involves 1) identification of the issue, i.e. the research question(s); 2) identification by adhering to methods 1-3 the existing rules, doctrines or theories on patent exhaustion and implied patent license in the US and Europe and/or Finland; 3) application of the theories on patent exhaustion and implied patent license to the factual circumstances pertaining to sale, licensing and/or distribution of FOSS;

and 4) drawing conclusions based on the construction of the theories in the context of sale, licensing and/or distribution of FOSS.

As stated above, this study exploits the above methods in a combination. While the methodological approach of this study includes features of each of the above methods, none of the methods is applied in its pure, traditional form as introduced in Section 1.2

(Methodological Considerations of Legal Sciences). Instead, each chosen method is adjusted to the purpose of this study: explaining how a patent holder selling, licensing and/or distributing FOSS may expose its patent portfolio to partial dilution of patents as a consequence of the doctrines subject to this study. For the same reason, the approach in the introductory sections is mainly descriptive: The availability of IPR protection for computer programs in general, and FOSS specifically, is explained and the elements, formation and enforcement of FOSS licenses are introduced, followed by an introduction of the general principles of patent exhaustion and implied patent license.

The aim is to be clear and concise in all introductory analysis, even at the expense of detailed analysis on IPR protection and nuances of the patent law doctrines as they exist in Europe and the US. The simplified approach is chosen in order to crystallize the essence and to enable evaluation of the core features of the doctrines in the highly complex context of sale, licensing and distribution of FOSS in Section 4.2 (Evaluation of the Patent Exhaustion Doctrines in Context of FOSS) and Section 5.2 (Evaluation of the Implied Patent License Doctrines in Context of FOSS). Namely, after a preliminary introduction of the doctrines on patent exhaustion, the said doctrines are applied, evaluated and analyzed in the context of sale, licensing and/or distribution of FOSS.

Further, also the legal theory of implied patent license as existing in the US is provided in the context of FOSS licensing, followed by a comparison with similar types of (quasi) contract law theories, if any, existing in North Europe (primarily in Finland).

While use of the combination of the traditional forms of dogmatic legal research, doctrinal legal research and comparative law with the pragmatic, interpretative research method for the purpose of legal dissertation may appear a bit odd to legal scholars on one hand, and (too) burdensome, academic exercise to legal practitioners on the other hand, the ultimate objective of the study should be well-justified: production of legal information, which does not only serve the theoretical needs of academic scholars, but also provides practitioners with tools to address various legal issues pertaining to use of FOSS.

Another reason why the method applied in the descriptive, introductory sections of this study is a combination of the above methods is that the boundaries between the civil law approach of legal dogmatics as well as the common law approach of doctrinal legal research are not always clear cut: many aspects of the European patent exhaustion

doctrine are based on case law of CJEU rather than enacted secondary sources of EU law: for example, unlike the copyright exhaustion doctrine, the patent exhaustion doctrine was not based on any codified EU law until very recently when the new Agreement on the Unified Patent Court and the Regulation on European patent with unitary effect were drafted. On the other hand, also legal protection of computer programs is governed by statutory federal law (such as the US Copyright Act and the US Patent Act)⁸² in the US due to which the sections of this study governing the US law are neither entirely limited to common law approach of doctrinal legal research of the US case law.

While an attempt will be made to clarify the differences of the doctrines in the context of FOSS as they exist in Europe and the US, deep theoretical comparative analysis of the differences between the legal regimes is not the purpose and thus will not be provided in this study. To the extent comparison is performed, it is conducted on micro-level by comparing the differences in the European and the US doctrines as well as the practical impact of those doctrines. Europe and the US were chosen for the scope of this study for obvious reasons: FOSS licenses subject to this study originate from the US.

Therefore it comes naturally to analyze FOSS licenses against the legal background of their own origin. Europe, in turn, was chosen for the comparative exercise because global use of FOSS results in interpretative challenges not only in the US, but all over the world, including Europe. As the author of this study has law degrees from the US and Europe (Finland) and has also practiced law, including assignments pertaining to FOSS licensing, in both continents, the evident outcome for a dual licensed legal practitioner is to start questioning whether certain preliminary findings of legal analysis would also hold true in the other jurisdiction and if not, what are the underlying distinctions in the conditions and implications of the respective legal doctrines.

While the aspirations of the study are obvious, there are numerous challenges related to construction of the "European" and the US doctrines on patent exhaustion and implied

82 Title 17 of the United States Code, the US Copyright Act (17 U.S.C.) and Title 35 of the United States Code, the US Patent Act (35 U.S.C.).

patent license, let alone comparison of those doctrines and analysis of said doctrines in context of FOSS. First, the concepts and doctrines subject to this study are by no means directly comparable: When it comes to the doctrine of patent exhaustion, the analysis of the European doctrine is mainly based on court decisions of CJEU whereas the US doctrine is mainly based on court decisions by the US Supreme Court and the Court of Appeal for the Federal Circuit. The case law of each respective court has evolved thorough out the years based on the cases and questions brought before the courts, but has left a lot of room for interpretations and need for further clarifications especially in the context of legal protection of computer programs. Second, the challenges are even greater when it comes to analysis of the "European" doctrine on implied patent license compared to the US doctrine. Namely, there is no such thing as harmonized European patent and/or patent contract law, but separate laws in each 28 jurisdiction of the EU.

Comparing the US law with non-harmonized European law would, strictly speaking, involve nearly thirty jurisdictions with different national rules. Thus, the analysis on the

"European" doctrine on implied patent license covers, in practice, analysis of the doctrine under the laws of Finland in Nordic context. While the concepts of implied patent license and/or implicit or tacit agreement are by no means directly comparable, it is still worth conducting research (without even trying to eliminate the difference in the legal systems⁸³) in order to gain by method 4 (pragmatic, interpretative analysis) new information to satisfy, even to a modest degree, some needs arising out of practicing FOSS law. If a legal research would only be limited to easily comparable provisions of statutory law, would that in practice prevent gaining information on many important questions on law. In this study, the main research questions relating to implied patent license and patent exhaustion in context of FOSS belong to patent law. However, in order to understand the overlapping IPRs governing computer programs, including FOSS, also copyright protection of computer programs and related principles of exhaustion and licensing should be understood. Accordingly, the legal concepts and doctrines related to patents and copyrights subject to this study belong to the sphere of IPR law, and more widely, to property law in general.⁸⁴ License terms and/or

83 Legrand at 249.

84 Haarmann at 2.

agreements, in turn, are governed mainly by the general principles of contract law in the absence of more specific sources of law applying to patent license agreements (which, as such, creates a methodological challenge).⁸⁵ Also the boundaries between IPR laws and competition laws are approached, as the ultimate purpose of the patent doctrines subject to this study is to secure freedom of goods within the internal markets and to avoid patent holder's unjust enrichment by prohibiting collection of double royalties.⁸⁶ 1.6 MATERIALS

When choosing the scope of materials for the basis of legal research, the materials should be selected in accordance with the applicable doctrine of the sources of law.

Therefore, the subject of IPR protection available for computer programs, including FOSS, as well as the patent law doctrines of patent exhaustion and implied patent license should be analyzed in light of the correct legal sources mandated by the respective jurisdiction. Because the scope of this research is European (primarily Finnish) law as well as the US law, the materials of this study are chosen in compliance with the doctrines of law in force in Europe and the US.

Therefore, the materials of this study concerning the European laws and legal doctrines consist of (1) EU law, including the relevant treaties, regulations, directives and case law of CJEU; and (2) the relevant national laws (however, primarily the laws of Finland), legislative history and case law (to the extent there is any relevant). The materials of this study concerning the US laws and legal doctrines consist of (1) federal case law, mainly decisions of the Supreme Court of the United States (SCOTUS) and the Court of Appeals for the Federal Circuit (CAFC); (2) as well as federal statutes; and where applicable, (3) state contract law. Further, the European and the US legal systems are placed into the context of international IPR regime due to which also international sources of law, mainly international conventions on the protection of IPRs are also discussed. Legal analysis is supported with argumentation of comparative law, acknowledging that comparative arguments based on US laws are merely within the

85 Oesch, Pihlajamaa, et. al. at 176. Domej 2010 at 20-21.

86 Charvát at 153.

category of permitted sources of law under the Finnish legal system.⁸⁷ However, since the FOSS licenses subject to this study all originate from the US, and as there is much more case law on certain subjects of this study in the US, the argumentation based on the US laws is often used in this study as a benchmark and comparison for the purpose of analyzing the topic within the EU laws, and the laws of Finland specifically.

Analysis based on the binding sources of law under the European and the US legal systems is supplemented with materials within the permissive secondary sources of law, such as academic legal literature, treatises, restatement of US laws, and law reviews articles. Accordingly, in addition to EU law (including, primarily, the national laws of Finland) and the US laws as well as the international conventions, academic legal literature has an important role in the legal analysis of this study. Support for argumentation is sought both from legal monographs written by law professors as well as law review articles written by academic scholars, practicing attorneys and in-house counsel experienced within the field of FOSS licensing. Also seasoned FOSS practitioners' guidelines and primers, such as those drafted at the FSF and the SFLC, are used as inspiration for legal analysis in this study as they reflect the views of the FOSS community in general. Accordingly, by use of various sources of legal discussion, the purpose is to provide readers with balanced analysis from the perspective of not only academia, but also industry lawyers and pro bono FOSS advocates alike.

1.7 DISPOSITION

After outlining the scientific premises of this research in Section 0 (Introduction), the core of this study is divided into five main sections. In Section 2 (FOSS and Overlapping Intellectual Property Rights) the emergence as well as the current status of the main IPR protection forms of FOSS, copyrights and patents, are introduced and discussed in the context of computer programs, both as those protection forms exist in Europe and the US. Namely, computer programs may be subject to overlapping IPRs, and may claim either copyright or patent protection.⁸⁸ While there are also other forms

87 Norrgård at 36.

88 1 Nimmer §2.19.

of protection available for computer programs, such as trademarks, trade secret protection⁸⁹ or digital rights management, this study will focus on copyrights and patents only, as they are the relevant forms of IPR protection available for FOSS from the perspective of the research questions.

In Section 3 (FOSS Licensing), FOSS will be put into the frames of contract law for the purpose of analyzing an element by element the status, structure as well as formation and enforcement of FOSS licenses. Accordingly, a firm presentation is provided on certain crucial aspects of FOSS licensing required for further analysis and discussion of the research questions, i.e. placing the FOSS licenses subject to this study against the background of contract law theories under the laws of the US and Europe (Finland).

Further, a short summary follows on enforceability of FOSS licenses, reflecting the questions raised in the past in light of the latest developments of FOSS case law. Also quick glance is taken at the challenging question of what is the correct forum and applicable law for litigating disputes arising out of FOSS licensing either in Europe or

Further, a short summary follows on enforceability of FOSS licenses, reflecting the questions raised in the past in light of the latest developments of FOSS case law. Also quick glance is taken at the challenging question of what is the correct forum and applicable law for litigating disputes arising out of FOSS licensing either in Europe or