I'm Not a Patent Lawyer, I'm a Problem Solver
| Author | Heather Meeker - Melody Drummond Hansen - Luann Simmons |
| Position | Heather Meeker is a partner in O'Melveny's Silicon Valley office. A 25-year veteran of technology licensing in Silicon Valley, she is best known for her work in open source software licensing and software copyright law. She is a member of the American Law Institute and a frequent writer and speaker on technology licensing law. Melody Drummond ... |
| Pages | 15-65 |
I’m Not a Patent
Lawyer, I’m a
Problem Solver
Heather Meeker, Melody Drummond Hansen, and Luann Simmons
Emerging and growing companies don’t need patent lawyers: they need problem solvers.
Innovators are focused rst on growth and second on protecting their intellectual property. For-
ward-looking technology counsel can both anticipate potential pitfalls for growing companies
and help established companies pave the way for new technologies by educating lawmakers and
courts. Below, three technology partners share their experiences with emerging technologies and
their tips for navigating the frontiers where law and technology meet, and they also share the
points of view of some next-generation lawyers.
Open Source Opens Doors (By Heather Meeker)
“There’s a new SQL-type database product called MariaDB,” I told the CTO. “You might want to think
about migrating to that.” Afterward, I thought about how odd a comment that was—a lawyer telling a
CTO what software to use—and what a long strange trip it’s been from law school to practicing technol-
ogy licensing law.
Back in law school ethics class, we were taught that lawyers inform and counsel clients about their
cases but take a back seat when clients make decisions. Of course, nothing in law school prepared any of
us for the practice of technology law in the twenty-rst century. That I would be recommending a software
infrastructure package to a Silicon Valley CTO would have been inconceivable to my law school ethics pro-
fessor. But that’s the kind of thing I do every day, because technology licensing is not just about reading and
analyzing and negotiating licenses—it’s about knowing the technology landscape.
Image: iStockphoto
Published in Landslide® magazine, Volume 10, Number 4, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
Published in Landslide® magazine, Volume 10, Number 4 , a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
For those readers who have the intestinal fortitude to be
curious about the SQL database selection question, there is a
brief explanation in the side box. Even if you don’t have the
appetite to delve into that, it’s easy to see that the decision to
use one software package or another is both a technical and
legal decision. To make the right choice, you need to know
the features (and bugs) of both the software and its license.
Day to day, my colleagues and I make this kind of recom-
mendation a lot. Law is a service business, and to succeed,
one has to go the extra mile. A common example is licensing
due diligence for M&A deals. It’s one thing for a lawyer to
say, “The target is using software X, and its use is not compli-
ant with the license.” It’s another to say, “The target is using
software X, and its use is not compliant with the license—but
there is a competing product that’s available under a suitable
license and it only costs $1,500 per year.” When a lawyer
identies a problem, the deal stops. When a lawyer solves a
problem, the deal closes. Clients who are working on deals
need problem solvers, not just problem nders.
Any transactional lawyer will tell you that clients expect
us to know what is reasonable and customary, and not just
what is in each side’s interest. In technology law, that is par-
ticularly important, because the law lags behind innovation.
We are often working in a near vacuum of regulation and
reported case law, so our clients need to gure out how busi-
ness should be done, not just the way the law requires it to be
done. That is where creative problem solving comes in handy.
I specialize in open source software licensing, which is an
area full of both innovation and political rhetoric. Clients come
to me to help them understand how to comply with the letter of
licenses, but also how to follow community norms, avoid mak-
ing impolitic statements, and candidly, often, how to stay off the
radar. In law rm practice, we are often asked about our biggest
“wins”—but mostly, when I do my job right, my clients avoid
getting their name in The Guardian or Forbes. Practicing in this
area has been an exercise in cutting a new career trail. When I
rst told those I worked for that I wanted to be a top expert in
open source software licensing, they told me not to bother. There
was certainly no playbook for being an open source licensing
lawyer at the time. But I have always been most driven by what
I nd interesting, and open source is endlessly interesting, if
sometimes a little crazy.
One counterintuitive habit I have developed in my prac-
tice is to give away a lot of free stuff. After all, that’s the open
source way. Every time I tackle a new issue, I think, can I
write an article on this for my clients and others? Can I cre-
ate a checklist or model provision that will help other lawyers
understand this issue? How can I share what I have learned?
Because I am lucky enough to be working in a cutting-edge
area of the law, I consider it a duty to share best practices
with others. I have heard other lawyers complain that doing
this is “giving away free legal advice.” Maybe so, maybe
not, but that misses the point. Everyone needs others to kick
around ideas. I am lucky to be part of a community of other
lawyers—both in my rm and outside it—who feel comfort-
able discussing ideas and learning from each other.
Also, one of the best aspects of open source licensing
practice is that I can help my clients collaborate with others
in world-changing ways. Since about 2000, when the Linux
operating system began to be accepted in earnest by indus-
try, the level of collaboration among the biggest technology
companies in the world has skyrocketed, and that’s mainly
because of open source software licensing. If you are read-
ing this article online, the technology used to deliver it to
your eyes is most likely to include a majority of open source
software, developed by thousands of individuals and com-
panies who gave the results of their hard work away to the
world for free, because they saw the wisdom of collaborat-
ing on the technology infrastructure, instead of dividing it up
into efdoms. Between 2000 and now, the technology world
has moved from toll roads to free ones, a revolution that often
goes unnoticed because it is not obvious to the consumer. It’s
satisfying to help my clients participating in this revolution—
while managing their legal risks of course.
You Can Drive My Car; Tech Lawyers Can Drive Your
Strategy (By Melody Drummond Hansen)
I rst began to imagine a future of not driving when I failed
my rst driving test. That early experience may help explain
why I am so enthusiastic about enabling autonomous technol-
ogies. Having spent more than a decade litigating technology
cases, I also have been inspired by seeing rsthand what it
takes for my clients to build world-changing technologies.
When companies introduce new technologies, they often face
challenges not only with consumer adoption but also with
educating lawmakers and courts that may not initially under-
stand the technologies or their promise. It’s my job to help
clients bridge those gaps and navigate risks and rewards in
uncertain legal landscapes.
Autonomous technologies are one of the latest examples of
promising innovation developing in an uncertain legal land-
scape. As with any disruptive technology, innovators in the
autonomous space can expect some of their rst legal chal-
lenges to be facing regulatory hurdles. Most federal motor
vehicle safety laws and standards were adopted decades ago
and did not anticipate the development of autonomous tech-
nologies. State lawmakers likewise traditionally assumed that a
Heather Meeker is a partner in O’Melveny’s Silicon Valley ofce.
A 25-year veteran of technology licensing in Silicon Valley, she is best
known for her work in open source software licensing and software
copyright law. She is a member of the American Law Institute and a
frequent writer and speaker on technology licensing law. Melody
Drummond Hansen is a partner in O’Melveny’s Silicon Valley ofce.
A seasoned IP litigator, she thrives at the frontiers of technology and
law, guiding established market leaders and emerging companies alike
through patent, copyright, data security, and trade secret disputes, and
helps clients clear both state and federal regulatory hurdles. Luann
Simmons is managing partner of O’Melveny’s San Francisco ofce.
She leverages her experience in software development and computer
science in complex technology litigation including patent and trade
secret matters. The Recorder named Ms. Simmons to its list of
“Women Leaders in Tech Law” in 2013 and 2017.
With thanks to Andrea LaFountain and Katie Tague of
O’Melveny’s Los Angeles and Silicon Valley ofces, respectively—two
leaders of the next generation of technology lawyers.
Published in Landslide® magazine, Volume 10, Number 4, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.
This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
human would be behind the wheel, and many state laws focus
on licensing and insuring drivers based on their individual driv-
ing records. Now, lawmakers must reconsider whether there
will be a human driver and even a steering wheel.
In the years it will take the law to catch up to autonomous
technologies, in-house and outside counsel should monitor evolv-
ing regulations and decisions from the National Highway Trafc
Safety Administration and state departments of motor vehicles to
determine when permits are required for testing and deployment,
and to comply with safety requirements. One tip for lawyers inter-
ested in autonomous technologies is to become uent in software
and hardware aspects of your clients’ products. Regulations can
vary signicantly depending on what aspects of the driving task
are performed (or capable of being performed) by a human driver.
Also, software-only products, open source, and after-market kits
warrant analyses tailored to those implementations.
Another important step for autonomous technology com-
panies is to develop forward-looking cybersecurity and data
privacy plans. For example, proposed federal legislation requires
manufacturers to develop cybersecurity plans, and certain pro-
posals also include data privacy plans. Technology lawyers
can assist by leveraging best practices from other industries, as
well as by considering which of the many competing propos-
als for cybersecurity and privacy guidelines are most likely to be
adopted by state and federal regulators as guideposts.
As growing numbers of autonomous vehicles hit the roads,
companies also will need to be prepared to address novel
questions in products liability and consumer protection laws.
Technology lawyers versed in autonomous vehicle regula-
tions will be especially equipped to assist because they will
be most familiar with developing industry standards and best
practices that impact liability and consumer messaging. As
competition heats up, companies also can expect to encounter
more traditional intellectual property disputes. While those
roads seem well traveled, autonomous technologies will pres-
ent new challenges for educating judges and juries unfamiliar
with the technology. With preparation, technology lawyers
will be ready to take the wheel.
Location, Location, Location (By Luann Simmons)
Emerging companies are not the only ones that face challenges
when they introduce new technologies. Established market lead-
ers often must explain their latest innovations to lawmakers and
juries. One example that has featured prominently in my career
is technology related to location detection and location services.
Studying physics as an undergraduate, I didn’t realize that
I would one day be called to teach judges and juries the intri-
cacies of how Wi-Fi and cellular technologies are used to
provide location information. Even friends and family are
interested to know how location information may be used in
mobile services, like mapping and advertising even where
providers and advertisers do not really “know” a user’s loca-
tion. I learned early to dig deep into technology and embrace
it. (I’ve also learned to love Keynote and PowerPoint—I have
totally mastered drawing cell towers on slides!)
As location technologies gained popularity, they also came
under increasing scrutiny from lawmakers, consumers, and
“SQL” or Structured Query Language data-
bases are used by most companies to manage
big data sets. Today, the market for databases
includes proprietary products, like Oracle, Micro-
so, and SAP database products, and open
source products, like MySQL, MariaDB, and
PostgreSQL. All of these products have different
licensing terms—as well as different features and
functionality. For example, if a company needs
to distribute lots of copies of the database so-
ware, it might prefer an open source product so
it doesn’t have to pay for a distribution license.
But a company might also find it difficult to com-
ply with the open source license terms (like the
general public license (GPL) used for MySQL) and
therefore might prefer soware available under
different open source terms (like PostgreSQL
or MariaDB) or even a proprietary database. All
of these soware packages are to some extent
substitutes for each other, but swapping one for
another can be a lot of engineering work. So,
migrating from one to the other makes sense if
the licensing concerns or fee requirements are
significant, but doing so imposes development
costs. Most CTOs know about these packages
from a technical point of view but need help
understanding the license.
Continued on page 63
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