By Daniel Eran Dilger

Published: 03:00 AM EST (12:00 AM PST)

Google's efforts to create a royalty-free video codec for the web are now being actively undermined by the MPEG Licensing Authority, which has announced plans to represent patent holders who claim infringement.

A report by Florian Mueller of FOSS Patents notes the MPEG LA has announced plans to put "Google's WebM video format VP8 under patent scrutiny."

The group, which represents a large number patent holders who have collectively pooled their intellectual property to develop interoperability standards for multimedia, has announced "a call for patents essential to the VP8 codec specification" as the first step in creating a patent pool to collect royalties from users of Google's WebM.

The MPEG LA announcement states that "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."

Essentially patented

Mueller wrote, "since I'm against software patents, I'd be happy to see a patent-free video codec put competitive pressure on dozens of major patent holders. But I make a clear distinction between what I'd like to see happen and what I consider realistic."

He explained that "MPEG LA's patent evaluators (legal and technical experts) will analyze all of the submitted patents to determine their 'essentiality.' In any standardization process, an 'essential' patent is understood to be required for an implementation of the standard in question, as opposed to patents that may be somewhat related to it but not absolutely necessary."

The MPEG LA says "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."

Clearly know what they're doing

Google has said it believes WebM is not "patent encumbered," but is not willing to indemnify its users if they are sued by other patent holders. Once the MPEG LA examines the patents of holders who believe their patents do indeed encumber Google's future plans for free distribution of WebM, all the patent holders involved will negotiate to set the terms for sharing the royalties that will be collected based on the relative value of each stakeholder's intellectual property.

The MPEG LA would then approach WebM users and ask for royalty payments, a move that would force Google, Mozilla and other users of WebM to fight each of the patent claims in court to seek to overturn each as invalid or to prove that there is no infringement. "Depending on the size and quality of the pool, that can be a formidable or practically insurmountable challenge," Mueller wrote.

"I want to be frank," Mueller concluded. "Despite my dislike for software patents, if I had to bet money, I would bet it on MPEG LA, not on Google. MPEG LA has a pretty strong track record in codec patent licensing. One may or may not like their business model, but they clearly know what they're doing. By contrast, Google's flagship open source project, Android, has turned out to be a patent suit magnet."

The industry in MPEG LA vs Google

Apple supports H.264 because it allows the company to deliver video products without facing patent uncertainties. The company is also a stakeholder in the MPEG LA patent pool for H.264, which VP8 and other codecs originally developed by On2 appear to be based on. However, Apple is known to be a minority player in the patent pool, having contributed elements that apparently involved relinquishing royalty demands, such as the MPEG4 container format based on the original QuickTime's container.

Even Microsoft, which has a large patent portfolio related to video technologies based on its work to develop Window Media and the VC-1 codec, has publicly stated that income from its share of H.264 licensing royalties is about half what it actually contributes back as a user of the technology.

Most commercial companies have no problem paying the licensing fees related to H.264, but the fees are more difficult for open source projects such as Mozilla, which would also prefer to use unrestricted open codecs compatible with its mission to provide free software.

Google, while facing no difficulty in paying for H.264 licensing, would similarly prefer to be able to distribute its free software, including Chrome OS, without having to pay for the use of commercial codecs. Google also pays for the use of H.264 on YouTube.

Last month, Google attempted to push adoption of WebM by announcing that it would disable support for H.264 in its Chrome browser, a move that suggested the firm may also turn off support for H.264 on YouTube at some point, which would render the site inaccessible from Apple's iOS devices and most other mobile products.

We're hoping things will just work out

In a statement published by The Register, a Google spokesperson wrote that "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 site noted that Google's WebM license "says that if you use the technology, you can't make patent claims against it," but patent holders who believe that WebM incorporates their technology are unlikely to either use WebM or be swayed by the commitments of other companies who chose not to assert their patents against it.

Google has similarly shrugged off claims that its free Android operating system may be infringing the patents and other intellectual property of Oracle, following its development as a Java-like platform. Google resolved its largest patent infringement case, involving Yahoo and its acquired Overture subsidiary, by simply granting its competitor a large amount of stock.

Other companies in the industry are more wary of patent issues, the foremost being Apple, which is said to be the world's most frequently sued company on earth in the realm of patent suits.