(OT) - NOT A Major Blow to Copyleft Theory

Alexander Terekhov alexander.terekhov at gmail.com
Fri Feb 8 16:56:08 UTC 2008

On Feb 8, 2008 4:42 PM, Russ Nelson <nelson at crynwr.com> wrote:
> Alexander Terekhov writes:
>  > The terms of the license do impose certain covenants which are NOT
>  > conditions (precedent). Translation: events "which must take place
>  > before a party to a contract must perform or do their part"
>  > (conditions precedent).  One just can't turn covenants into
>  > conditions. Got it now?
> Agreed, but if something isn't a covenant in the first place, then it
> *can* be a condition.  A covenant is a solemn promise.  The judge
> construed this agreement to license all copyright rights, with
> covenants concerning distribution.  Translation: the Defendant got a
> license to do anything he wants, and he promised to make only certain
> distributions.
> A correct interpretation would have said that the license to use is

> unconditional, but the license to redistribution is conditioned on the

Notice "... the authority to use the copyrighted material" part below!

> attributes of the work being distributed.  For example, one set of
> conditions applies to verbatim distribution.  A different set of
> conditions applies to modified distributions.  Translation: each
> redistribution is separately licensed.
> Basically, the judge wanted to rule against Jacobsen, so he did.

The Fifth Circuit in Fantastic Fakes, Inc. v. Pickwick Intl, Inc., 661
F.2d 479 (5th Cir. 1981), a case cited favorably in several Ninth
Circuit opinions, rejected an argument that a covenant can be recast
as an affirmative grant defining the "scope" of a license agreement.
In Fantastic Fakes, the plaintiff entered into a licensing agreement
authorizing the defendant to distribute certain of its copyrighted
material. The plaintiff claimed that the defendant was infringing its
copyright by distributing the material without affixing a proper
copyright notice thereto, as required by the license agreement.
Section 2 of the agreement, entitled "Grant of Rights," contained the
following affirmative license grant:

"LICENSOR" hereby grants to "LICENSEE" a nontransferable,
nonassignable and nonexclusive License for a period of 2 (TWO) years
from the date hereof, to use the "ORIGINAL MASTER RECORDINGS" listed
and identified on the schedule incorporated by reference herewith.

Id. at 481. Section 2 further provided that the license was granted
"subject to and in accordance with the following" :

(b) "LICENSEE" shall cause to appear on all sound recordings,
including cartridge tapes, produced from "ORIGINAL MASTER RECORDINGS"
a copyright notice such that said notice appears on the surface of the
copies of the recording or on the label or container, in such a manner
and location as to give reasonable notice ...

Id. at 481-82. The Fantastic Fakes court did not find that section
2(b) limited the scope of the license. See Id. at 483-84. Rather, the
court held that the notice requirement was a covenant, the breach of
which "may support a claim of damages for breach of contract but will
not disturb the remaining rights and obligations under the license
including the authority to use the copyrighted material." Id.


"Notwithstanding Jacobsen's confused discussion of unilateral
contracts, bilateral contracts, implied licenses, "licenses to the
world" and "bare" licenses in his Appellant's Brief, the issue at hand
is fairly simple."

 -- Brief of Appellees (CAFC 2008-1001).

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