First legal shots fired at Google's VP8 codec

Google wants to make its VP8 video codec a patent-free standard. The competition just threw down the first big challenge to that strategy. MPEG-LA, lhe group that manages the licensing of patents for the H.264 codec, is forming a patent pool for VP8. What does this mean?
Written by Ed Bott, Senior Contributing Editor

11-Feb-2011 Noon PST Updated to include response from MPEG LA (at end of post).

Update 2: Added Google statement

Google wants to make its VP8 video codec a patent-free standard. The competition just threw down the first big challenge to that strategy.

MPEG LA, the group that manages the licensing of patents for the H.264 codec, announced today that it is forming a patent pool and gathering claims from companies that believe they have patents essential to the VP8 codec:

MPEG LA, LLC, world leader in alternative one-stop patent licenses, announces a call for patents essential to the VP8 video codec specification used to deliver video images. The VP8 video codec is defined by the WebM Project at http://www.webmproject.org.

In order to participate in the creation of, and determine licensing terms for, a joint VP8 patent license, any party that believes it has patents that are essential to the VP8 video codec specification is invited to submit them for a determination of their essentiality by MPEG LA’s patent evaluators. At least one essential patent is necessary to participate in the process, and initial submissions should be made by March 18, 2011. Although only issued patents will be included in the license, in order to participate in the license development process, patent applications with claims that their owners believe are essential to the specification and likely to issue in a patent also may be submitted. Further information, along with terms and procedures governing patent submissions, can be found at http://www.mpegla.com/main/pid/vp8/default.aspx.

This development isn't a complete surprise. As I noted previously, Larry Horn, CEO of MPEG LA, has gone on record with suggestions that this day would arrive:

The license offered by MPEG LA charges a royalty for decoders wherever or however deployed. In addition, no one in the market should be under the misimpression that other codecs such as Theora are patent-free. Virtually all codecs are based on patented technology, and many of the essential patents may be the same as those that are essential to AVC/H.264. Therefore, users should be aware that a license and payment of applicable royalties is likely required to use these technologies developed by others, too.

Today's brief announcement raises many more questions than it answers. Have MPEG-LA and Google been in discussions about this issue? How strongly does Google believe in the strength of the patents it purchased that underlie the VP8 standard? (Remember, this technology wasn't developed in-house.)

More to the point: If a patent pool is successfully formed, will it license those patents for free? Patent expert Florian Mueller says that outcome is "unlikely" and says "Despite my dislike for software patents, if I had to bet money, I would bet it on MPEG LA, not on Google." I agree.

How long will this take to play out? Mueller notes that submissions of patents for inclusion in the pool aren't going to be posted in public, and forming the pool could take some time after the close of submissions, as the pool members agree on terms and revenue-sharing arrangements:

I don't know whether MPEG LA will publish the list of patents identified after technical evaluation of all submissions, or only after successful conclusion of commercial negotiations. The latter seems more likely to me. One way or the other, we may only be months away from seeing a list of patents found to read on WebM/VP8.

I have requests in to both MPEG-LA and Google for additional comments and will update when I hear back.

Update: An MPEG LA spokesperson responds to a few questions via e-mail:

Q: What's the role of MPEG LA in all this?

A: MPEG LA provides voluntary licenses of convenience to users enabling them to obtain coverage under the essential patents of many different patent holders as an alternative to negotiating separate licenses with each. As such, we provide a service bringing together many patent holders with many technology users so that technical innovations can be made widely available. MPEG LA takes the market as we find it. It is the marketplace of users that makes the decision what technologies they want, and where an alternative one-stop license would be of convenience to them to help reduce their uncertainty and risk in using a technology, MPEG LA makes an alternative license available.

Q: Does this indicate that MPEG-LA does not agree with Google’s assertion that it controls all patents associated with the VP8 video codec?

A: Yes, as we have said in the past, we believe VP8 uses many patents owned by different parties. To the extent VP8 includes technology owned by others, then a pool license which removes uncertainties regarding patent rights and royalties by making that technology widely available on the same terms to everyone would be beneficial to the market.

I also asked whether MPEG LA and Google have engaged in any direct talks. I didn't get a direct answer, just this fairly vague bit of boilerplate:

As to your second question, MPEG LA’s call for patents is open to anyone with essential VP8 patents including Google, if they should have any.

 If I had to guess, I would bet that means no.

Update 2: Google still hasn't responded to my e-mail request, but The Register just printed the text of a statement it received from a Google spokesperson:

"MPEG LA has alluded to a VP8 pool since WebM launched - this is nothing new," the statement reads. "The web succeeds with open, community-developed innovation, and the WebM Project brings the same principles to web video.

"The vast majority of the industry supports free and open development, and we’re in the process of forming a broad coalition of hardware and software companies who commit to not assert any IP claims against WebM. We are firmly committed to the project and establishing an open codec for HTML5 video.”

The statement notably does not include any promise of indemnification by Google against any patent claims that might be asserted by a third party - like the prospective members of the MPEG LA patent pool.

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