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

David A. Temeles, Jr. dtemeles at nvalaw.com
Tue Feb 12 06:01:05 UTC 2008

Many of you may already be aware, but the Jacobsen v. Katzer case is not the
only case in the last year or two with the potential to significantly impact
the open source licensor's ability to rely on injunctive relief.  

The eBay v. MercExchange case is now beginning to filter through the
circuits and injunctions in patent and copyright cases are no longer
automatic.  See, e.g., In Christopher Phelps & Associates, LLC v. Galloway,
477 F.3d 128 at page 139 (4th Cir., 2007), where the Fourth Circuit stated:

Insofar as Phelps & Associates suggests that it is entitled to injunctive
relief, we reject the argument. See eBay Inc. v. MercExchange, L.L.C., ___
U.S. ___, ___, 126 S.Ct. 1837, 1839, 164 L.Ed.2d 641 (2006). In eBay, the
Supreme Court rejected any notion that "an injunction automatically follows
a determination that a copyright has been infringed." 126 S.Ct. at 1840
(reversing the Federal Circuit, which had articulated "a `general rule,'
unique to patent disputes, `that a permanent injunction will issue once
infringement and validity have been adjudged'"). The Supreme Court
reaffirmed the traditional showing that a plaintiff must make to obtain a
permanent injunction in any type of case, including a patent or copyright

A plaintiff must demonstrate: (1) that it has suffered an irreparable
injury; (2) that remedies available at law, such as monetary damages, are
inadequate to compensate for that injury; (3) that, considering the balance
of hardships between the plaintiff and defendant, a remedy in equity is
warranted; and (4) that the public interest would not be disserved by a
permanent injunction.

Id. at 1839. Moreover, the Court reiterated that even upon this showing,
whether to grant the injunction still remains in the "equitable discretion"
of the court.

-----Original Message-----
From: Rick Moen [mailto:rick at linuxmafia.com] 
Sent: Monday, February 11, 2008 7:00 PM
To: license-discuss at opensource.org
Subject: Re: encforceability of Open Source Licences (Re: (OT) - NOT A Major
Blow to Copyleft Theory)

Quoting dtemeles at nvalaw.com (dtemeles at nvalaw.com):

> Rick, I think your question oversimplifies the issue.

I thank you for taking the time.  This is indeed precisely the sort of 
thing I was imagining you had in mind (and, indeed, I did expect you
would be speaking of a judge selectively invalidating only particular 
licence clauses on one legal theory or another).

> 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.

More specifically, Judge White cited Effects Associates v. Cohen (from
the 9th Circuit appellate jurisdiction) as creating a scoping
requirement for covenants appropriate to the licences' degree of
permissiveness -- ignoring the fact that the appeals court applied that
scoping standard only to an _unwritten, implied_ copyright licence
(which of course neither release of the Artistic License, for all its
grievous faults, is).  

This is among the reasons pretty much everyone, including Mark
Radcliffe, has concluded that Judge White blundered badly -- but,
indeed, a judge _can_ (physically can) invalidate particular clauses 
of purported contracts, and there's a long history of same.

In my long-ago business law classes, I remember, however, that the aim
of the judge needs to be to enforce the intent he/she finds in the
purported contract.  And I'll bet good money that the 9th Circuit,
if/when it takes the case, will rule that White's belief that Bob
Jacobsen and co. intended to contract away their 17 U.S.C. 106(a) right
of attribution (the removal of author attribution being one of Katzer's
alleged torts) for _nothing_ to be wacked.

> 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." 

It's already been explained why Terenkov rather outrageously
misrepresented this statutory embodiment of the First-Sale Doctrine as
supposedly permitting arbitrary soft copies, as distinct from being what
it _really_ is, the right to resell the one physical copy that you
bought, and nothing else. 

A judge _could_ (physically could) rule that the Artistic Licence (some
revision) authorises "Katzer to make as many copies of the software as
he desires" with no enforceable obligations -- but (1) only if the judge
was on bad drugs, I would say, and (2) more to the immediate point, not
because of 17 U.S.C. 109(a), since the First-Sale Doctrine just doesn't
say that.  (Well, again, a judge as apparently inept as White _could_
say even that, but I figure that argument would last about five minutes
in front of the 9th Circuit.)

> 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.   

You're aware that _usage_ of software is not controlled by copyright law
at all?  Once someone has lawful possession of a creative work,
copyright law has nothing to say about his/her usage (as distinct from
other regulated acts, such as distribution, creation of derivative
works, performance of some sorts of works, and so on).

So, the possession of a licence, expressed or implied, to _use_ software
would seem not relevant to this discussion.

> 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.

I'm certainly familiar with the principle, and some of the practice, of
promissory estoppel, but, again, although a judge can certainly
invalidate purported contract clauses that are, e.g., unconscionable,
he/she is supposed to act to uphold the intent found in the document and
(consistent with the parol evidence rule) the surrounding behaviour of
the parties, right?

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