1. 1 The GIF Patent Crisis: Context of Controversy Presented by: Chris Jensen cjensen@ics.uci.edu Institute for Software Research University of California, Irvine

2. 2 The Background GIF 87a “G I F (tm) Graphics Interchange Format (tm) A standard defining a mechanism for the storage and transmission of raster-based graphics information June 15, 1987 (c) CompuServe Incorporated, 1987 All rights reserved While this document is copyrighted, the information contained within is made available for use in computer software without royalties, or licensing restrictions. GIF and 'Graphics Interchange Format' are trademarks of CompuServe, Incorporated. an H&R Block Company” - The GIF 87a Specification

3. 3 The Background II GIF 87a… “This series of pixel indices… are passed to the GIF image data stream… compressed and packaged according to a version of the LZW compression algorithm” “LZW - A sophisticated data compression algorithm based on work done by Lempel-Ziv & Welch which has the feature of very efficient one-pass encoding and decoding. This allows the image to be decompressed and displayed at the same time. The original article from which this technique was adapted is: Terry A. Welch, "A Technique for High Performance Data Compression", IEEE Computer, vol 17 no 6 (June 1984) “This basic algorithm is also used in the public domain ARC file compression utilities. The CompuServe adaptation of LZW for GIF is described in Appendix C.” - The GIF 87a Specification

4. 4 The Background III Usage continued in GIF 89a… with a twist Disclaimer. “In no event will CompuServe Incorporated be liable for damages, including any loss of revenue, loss of profits or other incidental or consequential damages arising out of the use or inability to use the information; CompuServe Incorporated makes no claim as to the suitability of the information.” Licensing. “limited, non-exclusive, royalty-free license for the use… in computer software” “software utilizing GIF(sm) must acknowledge ownership of the Graphics Interchange Format… in User and Technical Documentation.” “software utilizing GIF, which is distributed or may be distributed without User or Technical Documentation must display… a message acknowledging ownership” - The GIF 89a Specification

5. 5 The History of LZW 1977 (LZ77) is published and improved in 1978 (LZ78) 1981 LZ file for US patent 4,464,650 on LZ78 (granted 1984) for Sperry Corp 1983 Welch improves on LZ78 before leaving Sperry, who file for US patent 4,558,302 June 20, 1983 (granted Dec. 10, 1985) 1984 Welch, publishes "A Technique for High Performance Data Compression," IEEE Computer, vol. 17, no. 6, June 1984. 1986 Sperry, Burroughs form Unisys, who assumed ownership of US 4,558,302 Lempel-Ziv-Welch (LZW) Compression: http://netghost.narod.ru/gff/graphics/book/ch09_04.htmhttp://netghost.narod.ru/gff/graphics/book/ch09_04.htm

6. 6 The Seeds of Infringement GIF’s rise to popularity parallels rise of the Web: Compression, animation, transparency, availability, wide support by large Internet service provider LZW use not limited to GIF TIFF, file compression utilities, modem data compression software, others?

7. 7 The Sprout of Trouble 1989 BLTZ algorithm approved for modem standard Unisys begins licensing LZW to modem manufacturers and Adobe PostScript developers October 1989 PC Week publishes article warning developers of the LZW patent Dr. Dobbs Journal publishes article on LZW compression, leading to controversy March 1990, Dr. Dobbs EIC responds with Unisys confirmation of LZW patent, sparking “a forest of fires” Still no link to GIF

8. 8 The Issues Manifest March 1991: Byte Magazine issues warning that GIF uses the patented LZW Sentiment remained that small developers would be unaffected by patent Late 1992: Italian company inquires about GIF LZW licensing for loading and saving images Unisys grants a license for PostScript use, but fails to answer the GIF question, still unaware of GIF LZW January 1993: CompuServe began negotiations with Unisys, concluding in June 1994

9. 9 The Issues Manifest II December 1994 CompuServe licenses LZW for GIF usage within CompuServe, extending it to GIF developers interfacing with CompuServe for a nominal fee 1995 Unisys releases statement on its stand Patent would not be enforced for pre 1995 software, but applies to software created or distributed thereafter Questions, emotions rise- trouble for Cheryl

10. 10 The Problem Patent Coverage Compression (saving) Decompression (loading) File ownership Licensing responsibilities 1995 statement indicates shareware users would be responsible for LZW licensing from Unisys, but not developers Summer 1996, Unisys “clarifies” statement transferring licensing responsibility to developers

11. 11 The Solutions Jan 16, 1995: CompuServe begins working on an open GIF format Non-LZW GIF A Technical Solution to a Legal Problem Problem: conformity PNG A Social Solution to a Legal Problem Problem: lack of implementation

12. PNG Specification Version 1.0 (http://www.w3c.org/TR/REC-png.pdf) 12 COPYRIGHT NOTICE Copyright c 1996 by: Massachusetts Institute of Technology (MIT) This W3C specification is being provided by the copyright holders under the following license. By obtaining, using and/or copying this specification, you agree that you have read, understood, and will comply with the following terms and conditions: Permission to use, copy, and distribute this specification for any purpose and without fee or royalty is hereby granted, provided that the full text of this NOTICE appears on ALL copies of the specification or portions thereof, including modifications, that you make. THIS SPECIFICATION IS PROVIDED “AS IS,” AND COPYRIGHT HOLDERS MAKE NO REPRESENTATIONS OR WARRANTIES, EXPRESS OR IMPLIED. BY WAY OF EXAMPLE, BUT NOT LIMITATION, COPYRIGHT HOLDERS MAKE NO REPRESENTATIONS OR WARRANTIES OF MERCHANTABILITY OR FITNESS FOR ANY PARTICULAR PURPOSE OR THAT THE USE OF THE SPECIFICATION WILL NOT INFRINGE ANY THIRD PARTY PATENTS, COPYRIGHTS, TRADEMARKS OR OTHER RIGHTS. COPYRIGHT HOLDERS WILL BEAR NO LIABILITY FOR ANY USE OF THIS SPECIFICATION. The name and trademarks of copyright holders may NOT be used in advertising or publicity pertaining to the specification without specific, written prior permission. Title to copyright in this specification and any associated documentation will at all times remain with copyright holders. The PNG Specification

13. 13 The Implications Controversy What is the place of Intellectual Property protection in the software industry Goals of patents, IP Software dev? Expectations of openness via publication, lack of protection notice An open world Free beer?

14. http://www.microsoft.com/DEVONLY/Unisys.ht m 14 The Microsoft Connection GIF AND OTHER UNISYS LZW LICENSES Various Microsoft products provide read/write capability and/or other LZW capability covered by Unisys-owned U.S. patents 4,558,302, B1 4,558,302 and foreign counterpart patents. Although Microsoft is licensed under these patents, Microsoft’s license does not extend to software developers or third parties who use Microsoft toolkit, language, development or operating system products to provide GIF read/write and/or any other LZW capability in their own products ( e.g., by way of DLLs and APIs). Licensing information can be obtained by contacting Unisys at the following address: Unisys Corporation Welch Licensing Dept. - MSC1SW19 Township Line and Union Meeting Roads P.O. Box 500 Blue Bell, PA 19424-0001 Fax: (215) 986-3090 Inquiry may also be made via the Unisys Web site, http://www.unisys.com/ http://www.unisys.com/

15. 15 The Unanticipated Twist IBM: US Pat. 4,814,746 Data Compression Method Inventors: Victor S. Miller, Mark N. Wagman; IBM Continuation filed: August 11, 1986 Granted: March 21, 1989 AFTER the Unisys patent Clarification: Victor Miller sent me a message to clarify the matter: I think that you should know that the Miller-Wegman patent was filed on June 1, 1983 -- 19 days before the filing of Welch's patent application. The 1986 date was the filing of a continuation of the original application. Victor S. Miller

16. 16 (from http://www.bitlaw.com/source/35usc/154.html, http://www.uspto.gov/web/offices/pac/mpep/consolidated_laws.p df)http://www.bitlaw.com/source/35usc/154.html http://www.uspto.gov/web/offices/pac/mpep/consolidated_laws.p df Term. Subject to the payment of fees under this title, such grant shall be for a term beginning on the date on which the patent issues and ending 20 years from the date on which the application for the patent was filed in the United States or, if the application contains a specific reference to an earlier filed application or applications under section 120, 121, or 365(c) of this title, from the date on which the earliest such application was filed. (1) DETERMINATION.—The term of a patent that is in force on or that results from an application filed before the date that is 6 months after the date of the enactment of the Uruguay Round Agreements Act shall be the greater of the 20-year term as provided in subsection (a), or 17 years from grant, subject to any terminal disclaimers. The Patent Code: Patent Duration: 35 USC 154

17. 17 The Expiration On Mon, 10 Mar 2003 cheryl.tartler@unisys.com wrote: In Canada, the basic LZW patent expires July 7, 2004. Be advised that Unisys has many patents issued and pending on variants from basic LZW. US: June 19, 2003, at midnight US Eastern Standard Time.

18. 18 The Open Questions How have the parties negotiated a solution to the patent problem? Problem: Unisys didn’t enforce and wasn’t aware of their own patent until it had been infringed. Responsibility is in the hands of the infringer, but often difficult to determine coverage of a technology. By then, it was a defacto standard. Going after the big fish nets them the $$

19. 19 The Answers? The negotiation of the legal implications challenges of intellectual property patents means that patents hold potential to restrict usage of a technology, thereby allowing patent holders to retain possession to their discoveries, licensing only to those with the resources to do so. But, with this restriction, the technology may not become adopted, rendering it worthless, and if it is not worthless, developers will engineer a better solution that is open and does not require licensing. Otherwise, to gain acceptance, licensed tools must be so available (existence and cost- wise) that obsoletion becomes unnecessary or impossible through horizontal and vertical control of the market.

20. 20 The References The GIF Controversy: A Software Developer's Perspective http://cloanto.com/users/mcb/19950127giflzw.html Lempel-Ziv-Welch Compression http://netghost.narod.ru/gff/graphics/book/ch09_04.htm US Patent Code: 35 U.S.C. 154 http://www.uspto.gov/web/offices/pac/mpep/consolidated_laws.pdf The GIF 87a, 89a specifications The PNG specification version 1.0 http://www.w3.org/Graphics/PNG/

21. 21 The References II The LZW Patent http://patft.uspto.gov/netacgi/nph- Parser?Sect1=PTO1&Sect2=HITOFF&d=PALL&p=1&u=/netahtml/srchn um.htm&r=1&f=G&l=50&s1='4,558,302'.WKU.&OS=PN/4,558,302&RS =PN/4,558,302 Current Unisys Policy http://www.unisys.com/about__unisys/lzw/ http://www.unisys.co.jp/LZW/ http://www.burnallgifs.org Microsoft LZW patent statement http://www.microsoft.com/DEVONLY/Unisys.htm