FW: 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 12:07:45 UTC 2008

I am rather new to actually posting in discussion groups, so please excuse
my rather clumsy attempts to communicate with the group.  Rick correctly
pointed out that I accidentally took the discussion out of the group.  So, I
am resending my last email, this time to the group as a whole.  


The following discussion 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.

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,

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.

DAT RESPONDS: Everything seemed black and white in my business law classes.
Then I went to law school and learned that there's a lot of gray out there.
Now, after practicing for 15 years, I've learned that judges are every bit
as prone to error as you and me.  Unfortunately, they are often overloaded
and they do not have the benefit of being able to focus on a limited area of
the law for decades at a time.  The only difference is that the judge's
opinion matters a whole lot more than yours or mine.  Regardless of how
clear I think the law is on an issue, I never bet on judges, witnesses or
cases.  Litigation is always a crapshoot for a variety of reasons.  Appeals
are infinitely more so.  As for the moral rights issue (attribution
requirement under Artistic License), Section 106(a) applies solely to works
of visual art such as paintings, drawings, prints, sculpture and still
photographic images (See, 17 USC 106(a) and 101.  Software is deemed a
literary work.  Therefore, Section 106(a) is not relevant.  (Since I
originally sent this email to Rick last night, he separately responded to
this section - please see his separate response)

> 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. 

DAT RESPONDS: Yes, "copies" under 17 USC 101 are defined as "material
objects ... in which a work is fixed by any method now known or later
developed...".  I am not suggesting that 109(a) applies to softcopies.  Yet,
it appears to apply to "copies" that are affixed in the form of a CD, DVD,
floppy disk, hard-drive, flash drive, paper, papyrus, etc.  

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

DAT RESPONDS: 17 USC 109(a) states in relevant part:

	(a) Notwithstanding the provisions of section 106 (3), THE OWNER OF
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.

Notice that the statute does not say copies "purchased", but copies
"lawfully made".  I think one can make a credible argument that any copies
that Katzer makes (e.g., affixes in the form of a CD, DVD, floppy disk,
hard-drive, flash drive, paper, papyrus, etc.) are lawfully made under Title
17 because the Artistic License specifically authorizes the creation of
copies.  A credible argument also can be made that Katzer's copies of the
modified software are likewise lawfully made.  If this is the case, and
Katzer is the owner of the CD's, DVD's, floppy disks, etc., then I do not
understand your statement about 109(a) above.  I'm not aware if Katzer made
and distributed tangible copies, or merely softcopies, so the Jacobsen v.
Katzer case might be a poor example in this particular situation.  That,
however, does not alter the wording of 109(a) and its application to copies
stored in a tangible medium.
> 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.

DAT RESPONDS: Yes, I am quite aware of this fact that many software licenses
grant permission to "use" the software even though this is not one of the
exclusive rights granted under Section 106.  However, in using software, one
is in fact loading the software into memory and therefore making a copy of
it - an exception to the monopoly right to make copies under 106 permitted
under Section 117(a)(1).  More to the point, software licenses also
frequently incorporate rights to patents, trademarks, trade secrets, etc. in
which use is protected - so the terms "use" or "exploit" are often, but not
always, used to account for the fact that the licensor is in effect
promising not to sue the licensee for infringement of any IP embodied in the
software, not just the copyrights embodied therein.

> 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?

DAT RESPONDS: Actually, the defense of equitable estoppel does not
necessarily relate to the enforcement of an agreement evidenced in a written
contract.  Rather, it is often used as a defense to prevent the other party
from enforcing the express terms of a written contract or from enforcing
rights conferred by common law or statute (e.g, patents and copyrights).
The party relying on equitable estoppel as a defense is doing so precisely
because he/she has no contractual defense.  

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