[License-review] Approval: Server Side Public License, Version 1 (SSPL v1)

Meeker, Heather J. hmeeker at omm.com
Sat Oct 20 00:00:15 UTC 2018

I am writing on behalf of MongoDB on the copyright misuse questions raised in this discussion.

Copyright misuse is an equitable defense against infringement claims.  It has been acknowledged in several US circuits but not all of them, and it is not often successful.  In almost all cases where courts declined to enforce a copyright license violation due to copyright misuse, the misuse consisted of anticompetitive behavior similar to actions that would compose antitrust liability.

For example, in Lasercomb, the license agreement required the licensee to agree not to develop a competitive computer-aided design program for 99 years.  Lasercomb America v. Reynolds. 911 F.2d 970, 15 USPQ2d 1846 (4th Cir. 1990).  In Practice Management Information Corp. v. American Medical Ass'n  121 F.3d 516 (9th Cir. 1997) the AMA licensed "CPT" health care codes (in which the AMA claimed a copyright) on a condition that the licensee not use any other such competing codes.  In Assessment Technologies v. WIREdata. 350 F.3d 640 (7th Cir. 2003), the copyright holder tried to limit the licensee's access to the licensee's own data stored using the software.  This defense is almost always applied to prevent a copyright holder from leveraging its copyright to impose anti-competitive practices.

This is not a general rule that imposing any license condition not directly relating to copyright is unenforceable.

We considered this issue prior to submitting the license for review.  It is a largely theoretical defense, and it is not clear that the existence of a possible defense to license terms is a reason to reject a license.  While a clever defendant might raise such a defense, that does not mean that the license is prima facie unenforceable, or that this discussion should create a roadmap for bringing such a defense.

GPL itself has been challenged as an antitrust violation in the SCO case back in 2003, and in a later case where the 7th Circuit said, "The GPL and open-source have nothing to fear from the antitrust laws." Wallace v. IBM, 467 F.3d 1104 (2006).

Sharing of source code is just not an anticompetitive practice.  The SSPL imposes no restrictions on the use of the software and requires licensee to make no covenants limiting the licensee's right to conduct business.

Heather Meeker

From: License-review <license-review-bounces at lists.opensource.org> On Behalf Of VanL
Sent: Thursday, October 18, 2018 5:53 PM
To: license-review at lists.opensource.org
Subject: Re: [License-review] Approval: Server Side Public License, Version 1 (SSPL v1)

On Thu, Oct 18, 2018 at 6:40 PM Kyle Mitchell <kyle at kemitchell.com<mailto:kyle at kemitchell.com>> wrote:

As for copyright misuse, in the language of Lasercomb, I
don't believe either my submission or SSPL purports to
"suppress any attempt by the licensee to independently
implement the idea which [the software] expresses", or to
adopt competing implementations by others.

Granting first that we don't *really* know until a court rules, I read these differently. Specifically, I see a couple key threads in the law relating to copyright (or patent) misuse:

1) Use of a copyright or patent to exercise exclusive rights beyond the scope of the government grant. For example, "Misuse of copyright applies where the copyright owner tries to extend the copyright beyond its intended reach, thereby augmenting the physical scope of copyright protection. It typically arises in situations where it is alleged that the copyright owner projected his unique rights in a work onto other, unrelated products or services." (Religious Tech. Ctr. v. Lerma, 1996 U.S. Dist. LEXIS 15454, 1578-1579). Or, in the words of Lasercomb (quoting Morton Salt): "Morton was thereby using its patent to restrain competition in the sale of an item which was not within the scope of the patent's privilege."

In this case, I don't think it is argued (or arguable) that MongoDB would in this case be trying to exercise control beyond the scope of the copyrighted work. The question is whether this would implicate the exclusive rights of the MongoDB licensee (the party running the service). While it is in the sense of a negative limitation, I think that a copyright holder has the exclusive right to control the copying/distribution and overall licensing of the non-derivative-work software. Hence, I think a court would find misuse.

2) The use of a copyright or patent to restrict competition (even if it doesn't rise to the level of an antitrust issue). In this case, you are right that the SSPL doesn't purport to prevent the creation of a similar, competing database. However, again, the entire purpose of the SSPL is to prevent competition to MongoDB by copies that would otherwise be lawful, and allowed by any other open source license. From Lasercomb:

"The need of Joy to protect its investment does not outweigh the public's right under our system to expect competition and the benefits which flow therefrom, and the total withdrawal of Compton from the mining machine business . . . everywhere in the world for a period of 20 years unreasonably lessens the competition which the public has a right to expect, and constitutes misuse of the patents." Lasercomb Am., Inc. v. Reynolds, 911 F.2d 970, 979.<https://advance.lexis.com/api/document/collection/cases/id/3RTS-8SR0-003B-5075-00000-00?page=979&reporter=1102&cite=911%20F.2d%20970&context=1000516>

Replying broadly to your comments about contract law: It may be possible to accomplish some of these ends via contract law (putting aside the impracticablility defense), but you give up your big hammers: a) injunctions (other than specific performance...sometimes) and b) punitive or statutory damages.

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