encforceability of Open Source Licences (Re: (OT) - NOT A Major Blow to Copyleft Theory)

[dtemeles at nvalaw.com]

Quoting Rick Moen <rick at linuxmafia.com>:

> Although those are indeed well known to be issues worthy of concern on
> their own merits, I cannot help noticing that they do not actually
> _address_ the standard rejoinder to the "What happens if open source
> licence [foo] is judged invalid?" question (which was, to review, that
> without said licence, recipients would end up by statute with fewer,
> rather than more, rights to the covered work).

DISCLAIMER:

THE FOLLOWING DISCUSSION IS IS NOT LEGAL ADVICE NOR NECESSARILY AN  
EXPRESSION OF THE AUTHOR'S PERSONAL POSITION ON THE MATTERS DISCUSSED.

PLEASE SEEK THE ADVICE OF COUNSEL REGARDING YOUR SPECIFIC SITUATION.   
SEEMINGLY INSIGNIFICANT FACTS COULD DRAMATICALLY ALTER THE  
APPLICABILITY OF THE ISSUES DISCUSSED TO YOUR SPECIFIC CASE.

Rick, I think your question oversimplifies the issue.

EXAMPLE 1: Rather than declaring an entire license invalid, a court  
could deem the relevant provisions in an open source "license" to be  
covenants rather than conditions.  In the Jacobsen v. Katzer case, the  
judge ruled that the portions of the Artistic License alleged to have  
been violated were covenants rather than conditions.  The judge did  
not declare the license invalid.  The net effect is that at the end of  
the case the judge may award monetary damages rather than injunctive  
relief.  What are the monetary damages in this situation?  Possibly  
minimal.

Maybe the court would rule that Katzner's actions resulted in the  
termination of the license, but maybe not.  Which section of the  
Artistic License provides for termination?  None expressly do -  
presumably because the licensor assumes, possibly incorrectly, that it  
will be able to get an injunction to prohibit future violations.  Will  
the court find that the breach of the covenants entitle Jacobsen to  
terminate the license?  If the breach of the covenants is not deemed  
to be "material" (this is a legal term of art) under the relevant  
state law, then I suspect the court would not declare the license to  
be terminated.  (Even if the court finds that Katzer's license to  
continue using the software is terminated, what would prevent Katzer  
from obtaining another license to the software?  Afterall, anyone  
having obtained the software under the Artistic License could license  
it to him.)

Now, the interesting part about what Alexander was raising recently.   
17 USC Section 109(a) provides in part: "Notwithstanding the  
provisions of section 106(3) [17 USC 106(3)], the owner of a  
particular copy or phonorecord lawfully made under this title, or any  
person authorized by such owner, is entitled, without the authority of  
the copyright owner, to sell or otherwise dispose of the possession of  
that copy or phonorecord."  In essence, the OWNER of a particular copy  
of software is entitled to transfer that copy regardless of what the  
licensor or the license agreement.  Let's assume that the court finds  
that the Artistic License authorizes Katzer to make as many copies of  
the software as he desires.  In fact, let's assume that the court  
finds that the license authorizes Katzer's modification of the  
software and his creation of as many copies of the modified version as  
he desires.  (Arguably, the attribtion and change notice requirements  
are directed to the distribution of modified copies or the use of  
modified copies, rather than the act of modifying the software  
itself).  Let's also assume that the court finds that Katzer is the  
owner of the modified copies.  If this is the case, then Section  
109(a) arguably permits Katzer to distribute the modified copies  
without the permission of Jacobsen as the copyright holder.  In other  
words, one could argue that the attribution and change notice  
requirements in the license are irrelevant and unenforceable under  
Section 109(a). If so, the court very well could find that these  
provisions are unenforceable - without voiding Katzer's rights to  
modify and copy the software under the Artistic License.

EXAMPLE 2: In a second vein of thought, if a court finds that an open  
source license is invalid, that does not necessarily constitute the  
end of the inquiry.  There may be circumstances in which the licensee  
would be deemed to have an implied license to use the software.   
Alternately, the licensor may be deemed to have waived its rights to  
sue the licensee for the infringing conduct or the licensor might be  
equitably estopped from asserting its rights.  (See Lottie Joplin  
Thomas Trust v. Crown Pub., 456 F. Supp. 531 (S.D.N.Y. 1977), aff'd,  
592 F.2d 651 (2d Cir. 1978); see also 4-13 Nimmer on Copyright § 13.07  
("Principles of estoppel applicable elsewhere in the law are equally  
applicable in copyright infringement actions."). Equitable estoppel  
"applies both in law and in equity to deny a party the right to plead  
or prove an otherwise important fact--here, the act of  
infringement--because of something he has done or omitted to do."  
Broadcast Music, Inc. v. Hearst/ABC Viacom Entertainment Services, 746  
F. Supp. 320, 329 (S.D.N.Y. 1990) (Keenan, J.)).

> Quoting dtemeles at nvalaw.com (dtemeles at nvalaw.com):
>
>> I think there are a number of problems with the standard rejoinder.
>> The existence of widespread disagreement regarding the license v.
>> contract, statutory infringement remedies v. contract remedies, and
>> condition v. covenant issues, among other things: i) creates a level
>> of risk and uncertainty that slows the adoption and growth of open
>> source software and licensing strategies; ii) results in a number of
>> poorly drafted open source licenses; iii) contributes to license
>> proliferation.
>
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