(OT) - Major Blow to Copyleft Theory

Alexander Terekhov alexander.terekhov at gmail.com
Mon Aug 27 15:30:58 UTC 2007

On 8/27/07, John Cowan <cowan at ccil.org> wrote:
> Alexander Terekhov scripsit:
> > "Whether this constitutes a gratuitous license, or one for a
> > reasonable compensation, must, of course, depend upon the
> > circumstances; but the relation between the parties thereafter in
> > respect of any suit brought must be held to be contractual, and not an
> > unlawful invasion of the rights of the owner."; DE FOREST RADIO TEL. &
> > TEL. CO. v. UNITED STATES, 273 U.S. 236 (1927).
> Of course that (a) was a patent rather than a copyright action (b)
> involved the U.S. as defendant at a time when tort claims against the
> U.S. were unenforceable (sovereign immunity) (c) addressed an implicit,
> not an explicit license (d) had no notion of conditions on the license
> at all.
> But why go on?  Clearly I am fighting a battle of wits with an unarmed
> man.

Wow, armed man.


"If a breach of contract (and a copyright license is just a type of

Repeat 10 times: a copyright license is a contract.

While a party that owns copyright rights is ordinarily entitled to pursue
infringement claims against any third party who violates them, the courts
have recognized that the rights and remedies available to copyright
holders change significantly when the owner elects to give others a
nonexclusive license to use such property. In that situation, the
owner/user relationship is fundamentally different. Absent a license, the
rights of the copyright holder are governed by statutory and common
law rules applicable to such rights. With a license, however, the terms
and covenants of the license establish the applicable rules. See
Effects Associates, Inc. v. Cohen , 908 F.2d 555, 559 (9th Cir. 1990)
(in granting a copyright license, the licensor gives up its right to sue
the licensee for infringement).

Recognizing that the existence of consensual licensing arrangements
significantly changes the applicable rules and the expectations of the
parties, federal courts have held that a party cannot normally pursue a
copyright infringement action based upon the licensees breach of
covenants in the license agreement. As a general rule, " if the
[licensees] improper conduct constitutes a breach of a covenant
undertaken by the licensee . . . and if such covenant constitutes an
enforceable contractual obligation, then the licensor will have the
cause of action for contract," not for copyright infringement. Graham
v. James , 144 F.3d 229, 236-37 (2d Cir. 1998) quoting 3 Melville B.
Nimmer & David Nimmer, Nimmer on Copyright, 10.15[A] at 10-120
(1998); see also Kolbe v. Trudel , 945 F. Supp. 1268, 1270-71
(D. Ariz. 1996). As the Ninth Circuit explained in Topolos v. Caldewey,
698 F.2d 991, 993 (9th Cir. 1983):

[A] case does not arise under the federal copyright laws . . . merely
because the subject matter of the action involves or affects a copyright.


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