(OT) - Major Blow to Copyleft Theory

Alexander Terekhov alexander.terekhov at gmail.com
Fri Aug 24 13:36:09 UTC 2007

So to speak. :-)


The decision makes two important points: (1) the Artistic License is a
contract and (2) the failure to include the copyright notices was not
a "restriction" on the scope of the license. The first point is
important because the Free Software Foundation and some lawyers have
taken the position that open source licenses are not contracts. They
have good reasons for wishing to avoid some contract formalities, but
this position has complicated discussions about the enforceability and
remedies for open source licenses. This decision does not settle the
issue for the GPL because it does not apply to the GPL and it is only
a District Court decision, (lawyers really prefer to have an appellate
decision, such as from the Ninth Circuit or the Supreme Court) but it
does suggest how courts would approach the issue.

The second point is very important because it deals with remedies.
Generally, the remedy for contract violations under US law is damages,
not "injunctive relief" (which means that the court order a party to
cease their violation). On the other hand, copyright infringement
generally includes a presumption that injunctive relief is
appropriate. Thus, the question of whether the violation of a license
is a contract violiation or copyright infringement (it can be both) is
very important, because licensors would prefer to obtain an injunction
prohibiting the breach of the license. The question turns on a nuanced
legal issue of whether the term in the license is a "restriction on
the scope" of the license or a covenant. In the first case, the
failure to comply with the provision means that the licensee is
outside the scope of the license and thus is a copyright infringer (as
well as liable for breach of the contract). On the other hand, if the
term is merely a covenant, then the failure to comply with it is a
breach of contract. The most celebrated case dealing with this issue
involved the Java license between Sun and Microsoft in which the court
found that the obligation on Microsoft to meet the Java compatability
tests was a covenant, not a restriction on the scope of the license
and the court denied Sun an injunction on those grounds (Sun got an
injunction for unfair competition).

However, in this case, the court found that the condition to include a
proper notice was not a restriction on the scope of the license and,
thus, Katzen was not liable for copyright infringement. The court then
denied the injunction. The court did not provide an analysis of why it
reached this conclusion. I believe that this decision is simply wrong.

The use of the term "condition" in the Artistic License should mean
that the terms imposed are restrictions on the scope of the license.

Oh really?

"We think that the payment of royalties and the inclusion of a notice
crediting James's authorship are to be considered covenants, not
conditions. The construction of the licensing agreement is governed
by New York law. See Bartsch v. Metro-Goldwyn-Mayer, Inc. , 391 F.2d
150, 153 (2d Cir. 1968). Generally speaking, New York respects a
presumption that terms of a contract are covenants rather than
conditions ... 'The law favors covenants, rather than conditions
precedent.'), aff'd , 193 N.Y. 661 (1908)." Graham id.

The GPL contains no conditions precendent. At least under New York law.

Here the word "conditions" is historical and refers generally to
"conditions precedent"... some condition that must be satisfied
*before* a grant of rights is effective. Failure to meet a "condition
precedent" stated in a contract gives rise to an infringement
violation under section 504 because you never got permission in the
first place. Conditions precedent are disfavored in the law:

"Nor can we construe payment in full as a condition precedent to
implying a license. Conditions precedent are disfavored and will not
be read into a contract unless required by plain, unambiguous
language." Sulmeyer v. United States (In re Bubble Up Delaware, Inc.),
684 F.2d 1259, 1264 (9th Cir.1982)


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