AOMedia Video 1 (AV1) was invented by a group of technology companies to be an open, royalty-free alternative to other video codecs, like HEVC/H.265. But a lawsuit that Dolby Laboratories Inc. filed this week against Snap Inc. calls all that into question with claims of patent infringement.
Numerous lawsuits are currently open in the US regarding the use of HEVC. Relevant patent holders, such as Nokia and InterDigital, have sued numerous hardware vendors and streaming service providers in pursuit of licensing fees for the use of patented technologies deemed essential to HEVC.
It’s a touch rarer to see a lawsuit filed over the implementation of AV1. The Alliance for Open Media (AOMedia), whose members include Amazon, Apple, Google, Microsoft, Mozilla, and Netflix, says it developed AV1 “under a royalty-free patent policy (Alliance for Open Media Patent License 1.0)” and that the standard is “supported by high-quality reference implementations under a simple, permissive license (BSD 3-Clause Clear License).”
Yet, Dolby’s lawsuit filed in the US District Court for the District of Delaware [PDF] alleges that AV1 leverages technologies that Dolby has patented and has not agreed to license for free and without receiving royalties. The filing reads:
[AOMedia] does not own all patents practiced by implementations of the AV1 codec. Rather, the AV1 specification was developed after many foundational video coding patents had already been filed, and AV1 incorporates technologies that are also present in HEVC. Those technologies are subject to existing third-party patent rights and associated licensing obligations.
Dolby is seeking a jury trial, a declaration that Dolby isn’t obligated to license the patents in questions under FRAND (fair, reasonable, and non-discriminatory) licensing obligations, and for the court to enjoin Snap from further “infringement.”
Dolby claims infringed patents are “critical” to Snapchat’s business
Dolby is accusing Snap of infringing upon four of its patents: U.S. Patent No. 10,855,99 “Inter-plane prediction”; U.S. Patent No. 9,924,193 “Picture coding supporting block merging and skip mode”; U.S. Patent No. 9,596,469 “Sample array coding for low-delay”; and U.S. Patent No. 10,404,272 “Entropy encoding and decoding scheme.”
The San Francisco-headquartered company claims that Snapchat relies heavily on HEVC for video and has acquired HEVC patent licenses through a patent pool, but that its mobile app also “accepts AV1-compliant videos, and Snap will decode and encode these videos into other formats for delivery and viewing across a range of devices.”
“Snap’s software further tracks whether AV1 decoding is supported on a given device to stream AV1 video when appropriate,” Dolby’s suit says.
Dolby asserts that AV1 “reuses” concepts from HEVC, for which implementation is generally understood to come with licensing and royalty fees, and that the codecs "are 'based on the same hybrid block-based video-coding flow' and employ nearly the same approach to dividing images into coding units... and blocks," citing a paper published by the IEEE in 2019 and titled "Fast Hevc-to-Av1 Transcoding Based On Coding Unit Depth Inheritance."
Dolby said that it and Access Advance, which it says runs a patent pool administering AV1 and HEVC-related patents held by Dolby, have been contacting Snap to get it to license AV1 patents through an Access pool. It also claimed that Snap has been informed of the option to “seek bilateral licenses from individual” licensors.
“Despite these efforts, Snap remains unlicensed. Snap has continued to use Dolby’s patented technology without paying any royalties,” the lawsuit says.
Dolby is arguing that its patented technologies are “critical to Snap’s business, driving the efficiency and quality of the videos that help keep users engaged on the application” and that Snapchat gains “an unfair competitive advantage” by not licensing the technologies.
AV1 in question
Despite AOMedia’s goal of creating a video codec that could be adopted without concerns about fees and lawsuits, numerous tech companies outside of the group dispute if AV1 meets those claims. Two patent pool administrators, Access and The Sisvel Group, are administering AV1-related patent licenses, despite AOMedia’s objections.
“The legal framework around video codecs is well established, and incorporating patented technology carries clear licensing obligations," Access CEO Peter Moller said in a statement accompanying an announcement of Dolby’s lawsuit. "Labeling a codec ‘royalty-free’ does not eliminate underlying patent rights."
Besides Dolby, InterDigital is also suing over AV1 [PDF] and is accusing some Amazon Fire streaming devices of infringing on its patents by supporting the codec.
Additionally, European Union (EU) antitrust regulators investigated AOMedia’s licensing policy in 2022 but closed the investigation in 2023 “for priority reasons,” an EU spokesperson told Reuters at the time, noting that “the closure is not a finding of compliance or non-compliance of the conduct in question with EU competition rules.”
The results of Dolby’s and InterDigital’s lawsuits could have lasting implications for AV1 adoption, which lags behind that of HEVC eight years after its release.
“Only because Big Tech says a codec should be royalty-free doesn't mean that it is. … Given that all codecs use somewhat similar techniques, the risk of an infringement of patents belonging to parties who did not offer royalty-free licenses is substantial,” intellectual property activist and commentator Florian Mueller told Ars Technica.
Mueller said that many streaming services have operated without video codec licenses for years as patent holders prioritized collecting royalties on hardware and software products. That has changed in recent years amid the growth of streaming.
“Companies like Amazon and Disney would like to persuade courts that after many years of no one, or at least no major player, knocking at their doors, they don't have to pay now,” Mueller, who runs the online publication IP Fray, said.
Although the debate over whether a codec can be truly royalty-free goes back years, the debate around AV1 is getting more attention than previous discussions. Dolby’s lawsuit in particular could have resounding implications on the AV1 standard should a judge decide that Dolby is not obligated to license patented technologies said to be leveraged by AV1.
As Mueller pointed out, HEVC was created with most essential patent holders signing a FRAND licensing pledge, which differs from AV1’s creation:
With AV1, it could turn out that there are far more patent holders out there with essential patents but no FRAND licensing obligation. In that case, they could theoretically ask for anything, even extortionate amounts, up to the point where someone would then stop implementing AV1. And the really bad thing here, which I'm sure is not Dolby's objective but it could be someone else's, is that someone could purposely make prohibitive royalty demands for AV1 in order to discourage use of the standard.
Dolby and Snap didn’t respond to requests for comment. An AOMedia spokesperson acknowledged receipt of our questions but didn’t provide responses ahead of publication.
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