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 12:46:25 UTC 2008

Sorry guys, another email that was meant for the list but ended up going
through private email... I have put the disclaimer in lower case as John
suggested and incorporated John's reply [noted as: JOHN COWAN Further
Replies] for your edification.


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.

dtemeles at nvalaw.com scripsit:

> (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.)

That seems extreme.  Surely if a copyright license is terminated with
respect to someone by reason of breach of covenant, *every* such license
with identical terms is terminated.  The license comes from the original
licensor, remember (or a contributor with respect to his contributions),
not from a mere verbatim-copy distributor.

Otherwise, we'd have to say that there is no such thing as revocation
of a public license at all.  *Do* you mean to say that?

DAT RESPONDS: It is not inconceivable to me that a court would hold that
certain public licenses that fail to provide for a termination right cannot
be revoked.  Nevertheless, I think you would agree that even if a court
theoretically determined that my license to a copy of Vista was terminated,
I could go to Best Buy or CompUSA and buy another copy.  The fact that my
license to one copy is terminated would not render invalid my license to all
subsequent copies that I lawfully acquire.  What is the basis for arguing
that the situation is any different with respect to open source software?

JOWN COWAN Further Responds:
OSS licenses exist for a different purpose from proprietary ones.  In the
former, the license exists primarily to defend the copyright, whereas in the
latter, the copyright is maintained primarily to defend the license (by
allowing violators to be sued for copyright violation instead of, or in
addition to, breach of the license).

What is more, a proprietary license is unquestionably a bilateral contract,
whereas OSS licenses are often bare licenses.  If you are willing to create
a new bilateral contract with me after the first one is breached, that's one
thing: but if I enter upon your land pursuant to a bare license (a notice
board, say, saying HUNTING AND FISHING PERMITTED) and you then decide to
revoke my license and eject me even though I am hunting and/or fishing, do
you suppose I can take advantage of the notice board again and re-enter your
land?  I doubt it.

(In civil-law countries, my entering the land pursuant to the notice board
creates a "facio ut facias" contract, so the position is different.)

DAT Further Responds:
I'll address the whole bare license v. contract issue another day (need to
get to work!).  If the Artistic License is a bare license as you suggest,
the remedy the licensor would seek is not a termination of the license, but
an injunction prohibiting the licensee from committing future acts in
violation of the license (and likely seeking monetary damages or specific
performance related to the past violations).

Returning to my original hypothetical, however, it implicitly assumes that
the bare license argument is out the window.  It treats the Artistic License
as a contract just like the judge in Jacobsen v. Katzer.  If the license is
terminated, what would prohibit the former licensee from lawfully acquire
another license to the software?  Where in the Artistic License does it say
that past infringers are prohibited from obtaining a license?  The answer is
nowhere.  Why?  Because the Artistic License assumes that an injunction
remedy is available - the point of an injunction being to secure compliance
with the terms of the license, not the termination of the licensee's right
to use the software in compliance with the license.  Upon what grounds do
you think a judge would even have the authority to prospectively bar the
licensee's future lawful use of the license?  The hunting hypo you mention
is slightly off target in that the landowner likely would not grant the
hunter a new right to enter upon his lands to hunt - yet the licensor under
the Artistic License is inviting everyone in the world to use his software -
without exception for past infringers...

dtemeles at nvalaw.com scripsit:

> 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.

Quite so.

dtemeles at nvalaw.com scripsit:

> 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.

On that rather complex chain of assumptions, then yes: which is another
way of saying "if the license is broken, it's broken".

DAT Responds: I do not think that the chain of assumptions is all that
unrealistic - please see my recent reply to Russ Nelson's comments.

dtemeles at nvalaw.com scripsit:

> 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.)).

It's awfully shaky ground, though.  We've had it come up before in dealing
with the hypo "What happens if a GPLv2 licensor revokes the license?"
All past conduct seems clearly safe on general principles, and equally
all future acts of copying, distributing, modifying are forbidden.
The gray area where e.e. may or may not operate is in what happens to
people who are currently in compliance as to their "in-flight" copies
and modifications.

DAT Responds: I do not necessarily agree that EE is on shaky ground or that
it would apply solely to past acts/grants.

BTW, the disclaimer usual on this list is "I am not a lawyer [or: I am
a lawyer but not *your* lawyer]; this is not legal advice."

DAT Responds: I appreciate the tip, but I am very cautious about meeting
ethical requirements and I want to mitigate, to the extent possible, the
risk that someone would take my post out of context and try to use it
against me and my client in litigation.

JOHN COWAN Further Responds:
I understand why you are trying to be safe, but the effect of CAPITALS is
that you are SHOUTING at the people you are trying to talk with.
This is a deeply ingrained synaesthetic reflex for people on Internet
mailing lists.  If you *must* include such a disclaimer, at least write it
in conventional upper and lower case.

DAT Further Responds:
Duly noted and adopted.

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