Situation:
Dunlap Bennett & Ludwig was engaged to advise a client facing the challenge of protecting software that contained a mix of open source and proprietary source code, especially concerning the assertion rights of the US government in intellectual property. The open-source code issue was further complicated by a mix of various open source licenses including copyleft and permissive terms from GPL, EPL, Apache, and MIT. The client needed assistance in developing a strategic plan to safeguard their software, including copyrighting, trade secret protection, and navigating contract negotiations with US government attorneys regarding ownership rights.
Solution:
Recognizing the nuanced nature of the challenge, Dunlap Bennett & Ludwig’s legal team adopted a comprehensive and accessible approach that involved working with the client to create a code matrix to identify license types and provisions that from the various licenses that put intellectual property at risk. DBL began by conducting a thorough analysis of the software, identifying components that fell under open-source licenses and those constituting proprietary source code. To protect proprietary elements, DBL developed a strategic plan involving copyright and trade secret protections that ranged from requirements for new code, to trade secret copyright applications for original code.
A key part of Dunlap Bennett & Ludwig’s strategy was the development of a matrix that delineated the rights and obligations associated with each component of the software. This matrix provided a clear overview of the intellectual property landscape, aiding in decision-making. DBL also engaged in contract negotiations with US government attorneys, ensuring that ownership rights were clearly defined and aligned with the client’s interests.
Results:
The collaborative efforts between Dunlap Bennett & Ludwig and the client produced positive outcomes. The software was effectively protected through a combination of copyright and trade secret strategies. The software license matrix provided a valuable tool for the ongoing management and protection of the intellectual property associated with the software. The final solution met the client’s goal of obtaining a final original source code that could be used in government contracts as COTS (Commercial Off the Shelf Software), without conveying unlimited rights, or in some cases government purpose rights.
In contract negotiations with US government attorneys, Dunlap Bennett & Ludwig’s strategic approach resulted in a clear and mutually beneficial agreement. Ownership rights were successfully defined, providing the client with the confidence to continue developing and leveraging their software in government contracts without compromising their intellectual property.