The world needs royalty-free media standards
Since 1997 when regulatory authorities began approving patent pooling for MPEG standards, core technologies of MPEG have been offered under royalty-based pool licensing regimes now seen by many as one of the defining characteristics of MPEG’s success as the world’s leading media technologies standardizing body, even though the lack of royalty-free, standardized codecs is a sorely missed technology for the World Wide Web.
But this view of MPEG as only a royalty-bearing standard is far from universally shared. In 2008, even the head of MPEG said:
“I believe MPEG should enlarge its portfolio of standards by offering some that are expected to be royalty free and typically less performing and with less functionality next to those that are state of the art, more performing and with more functionality….
The problem is of course not in that obligation but in the fact that “fair – reasonable – non discriminatory” used to be meaningful words when standards were designed for the needs of one industry whose members generally shared the business model according to which the standard would be used….
So, the problem is not “how many cents, tens of cent or euros of licensing fee is fair and reasonable” but “how can licensing be fair and reasonable without specifying a business model”. The issue is serious and more than one MPEG standard did not have the acceptance it deserved because the licensing terms, perfectly acceptable and probably “fair and reasonable” for certain business models were rejected by those who had different ideas in mind.”
And H.264 and MPEG-4 AVC were launched in 2001 as a joint project between ITU-T Q.6/SG16 and ISO/IEC JTC 1/SC 29/WG11 with the undertaking that the “JVT [Joint Video Team] will define a “baseline” profile. That profile should be royalty-free for all implementations.”
What Went Wrong Last Time
The failed royalty-free baseline
Initially in 2001, the royalty-free baseline undertaken by ISO and ITU in developing the joint h.264 and MPEG-4 AVC standards had apparent consensus support. A specific IPR process was developed, that stated:
The JVT codec should have a simple royalty free “baseline” profile (both on the encoder and decoder) in order to promote the wide implementation and use of the JVT codec. All implementations should have such a common baseline profile core, in order to allow minimal interoperability among all JVT codecs. The above requirement means that all technology applied in the baseline profile shall have no IPR, expired IPR, or valid but royalty-fee-free IPR.
All contributions for the baseline profile were required to make one of the two following assertions:
2.1 The Patent Holder is prepared to grant – on the basis of reciprocity for the above Recommendation | Standard – a free license to an unrestricted number of applicants on a worldwide, non-discriminatory basis to manufacture, use and/or sell implementations of the above Recommendation | Standard. 2.2.1 The same as box 2.2 above, but in addition the Patent Holder is prepared to grant a “royalty-free” license to anyone on condition that all other patent holders do the same.
Enthusiastic defenders publicly challenged sentiments that “[t]here’s a strong anti-free-license movement in MPEG”. For example, in 2002 the head of the MPEG marketing organization publicly countered the above statement, saying:
Sweeping statements like these are very unhelpful. It may indeed be unlikley that full JVT codec is going to be RF (Royalty-Free). There is, however, a strong desire among many parties to try and establish a RF baseline.
The head of the MPEG Requirements group similarly stated:
As the current chairman of MPEG Requirements, I would claim that MPEG is doing everything to support the royalty free approach for the baseline profile of MPEG-4 part 10 (AVC) … and there is a very large support within MPEG members. . Of course there is also people with a (legitimate) different opinion but I would personally claim this is a minority.
But from the beginning, some vendors vocally opposed creating a royalty-free baseline. As early as May, 2002, one prominent vendor filed a proposal to the JVT asserting “It is very unlikely that the applied strategy of JVT to aim for a royalty free baseline player can be achieved … [t]herefore JVT is suggested to abandon this approach….”
In March 2003, 31 companies involved in the development process and/or holding essential patents confirmed their support for a royalty-free Baseline Profile. But by late 2003, hopes dimmed as patent pool licensing groups began issuing press releases indicating that patent licenses would cover the baseline profile as well as other profiles:
(1) Does this mean that the goal of a royalty-free Baseline Profile is not going to happen ? …. I’ll answer for what I know and understand today. 1) Via Licensing’s website states that their proposed terms cover “use of Baseline, Main, and Extended Profiles”. MPEG LA’s announcement states “These terms cover the entire AVC Standard regardless of which Profile(s) are used”. I think that gives you the answer.
In December 2008, a well-known US Federal Circuit case,Qualcomm Inc. v. Broadcom Corp, vindicated and upheld the JVT royalty-free IPR process and decisively denounced the efforts to undermine it:
In sum, we conclude that Qualcomm, as a participant in the JVT prior to the release of the H.264 standard, did have IPR disclosure obligations, as discussed above, under the written policies of both the JVT and its parent organizations”
And also in 2007, SC29, the oversight group of the MPEG part of the JVT, revised its patent policy and reemphasized its preference for royalty-free standards whenever possible:
“Although royalty-bearing patented technologies may be included in SC 29 standards, SC 29 suggests to its WGs to promote, whenever possible, the inclusion of technologies that either do not require a patent license, or that only require a RAND license without a royalty or license fee.”
The Way Forward
Learning lessons, improving process, moving forward
So now it is time for ISO/MPEG and ITU to complete the royalty free undertaking begun in 2001. On November 4, 2009, ITU announced a “preliminary official call” for proposals with the headline “signals work start for H.264/MPEG-4 AVC successor”.
However, this call does not identify a royalty-free track like in the 2001 JVT Terms of Reference that similarly launched h.264/MPEG-4 AVC.
Neither did the “Draft requirements for “EPVC” enhanced performance video coding project” issued in July 2009. Instead, the call only states that it “is being made subject to the common patent policy of ITU-T/ITU-R/ISO/IEC … and the other established policies of the standardization organization.” The common patent policy itself refers to contributions either RAND (royalty bearing) or royalty-free.
At the same time, MPEG is also considering launching new royalty bearing activities for transport streams — MMT (Multimedia Transport), even though the very widely used MPEG transport stream patent pool is moving into a 20-year patent-expiration event horizon.
The ITU/MPEG final call for proposals is scheduled for Jan. 22, 2010. By then, ITU and ISO should add back in an explicit call-out for a royalty free track, at least as specific as the 2001 Terms of Reference that launched h.264/MPEG-4 AVC in the first place.
And this time, with an even more proactive IPR analysis process. As a recent WIPO document (Standards and Patents, SCP/13/2, Feb. 18, 2009, available here) suggests:
“The most straightforward way could be to conduct a patent search either individually or collectively by the members of a technical body and share the search results among the members. If the patent search is made collectively, the cost may be shared by the participating members.”
Historically, there was a concern that prior art searching might inadvertently raise a potential of treble damages in the case of willful infringement in the US, to either the SDO or participants. However, as the WIPO report notes, a recent US Federal Circuit case (In re Seagate Tech., LLC, 497 F.3d 1360 (Fed. Cir. 2007)) overturned precedent and held that proving willful infringement required at least a showing of objective recklessness.
Moreover, in 2007 IEC, ISO and ITU adopted a harmonized common patent policy that clearly encourages and empowers disclosure as early as possible by participants and third parties of any known patents or applications:
“[A]ny party participating in the work of the Organizations should, from the outset, draw their attention to any known patent or to any known pending patent application, either their own or of other organizations. In this context, the words “from the outset” imply that such information should be disclosed as early as possible during the development of the Recommendation | Deliverable…. In addition to the above, any party not participating in Technical Bodies may draw the attention of the Organizations to any known Patent, either their own and/or of any third-party.
So the need is clear, the time is right, lessons have been learned, and the path is defined. It is time for ISO/MPEG and ITU to deliver on its 2001 royalty-free undertaking and complete royalty-free media standards, and any new work should be expressly pre-conditioned on delivering a royalty-free result.