(OT) - NOT A Major Blow to Copyleft Theory

[Alexander Terekhov]

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.

regards,
alexander.

--
"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).