On February 10, 2010 the Linux Foundation and the Open Source Initiative will host a Strategic Planning Session for lawyers active in support of adoption of free and open source software. As we begin a new year and a new decade, we invite you to join us to consider what legal issues we anticipate may arise and what foundations we might be able to lay to support continued unimpeded development and deployment of free and open source software.
The purpose of the meeting is to collectively look forward and to consider new issues, new venues, and new technologies.
What do you foresee as the challenges that the community will face in 2010 and beyond?
The session will include panel discussions and updates, but the entire day will be more of a conversation than a lecture. We want you to come prepared to participate! Some of the topics that have been suggested already include: education of the community on patent matters; the Risk Grid and the Linking Project underway at FSFE; lessons learned from the license proliferation discussion and other comet-like issue phenomena in the open source ecosystem; how FOSS and commercial interests will co-exist and change each other in the longer term; and updates on FOSSBazaar and the SFLC activities. We are seeking your suggestions for topics to discuss in the registration process and we hope that you will be thoughtful in your response. We also hope to have several seminars by engineers on certain technical issues which are important to legal analysis.
Date: February 10, 2010
Time: 8:30 a.m. to 5 p.m.
Location: DLA Piper LLP, 2000 University Avenue, East Palo Alto, California 94303-2214
Costs: There will be a cover charge of $30 to cover catering costs for this event but there will be no conference fee.
Registration: http://events.linuxfoundation.org/component/registrationpro/?func=details&did=29
Please register early as space is limited. For more information please contact: Karen F. Copenhaver (kfc@choate.com) or Mark Radcliffe (mark.radcliffe@dlapiper.com)
As the use of free and open source software (“FOSS”) has become more ubiquitous, legal issues relating to FOSS have become more common and important. This year has seen a mix of new and old issues. Even more so than 2008, this year has seen an increase in the importance of the top ten legal issues http://lawandlifesiliconvalley.com/blog/?s=top+10+2008&x=40&y=6. My list of the top ten FOSS legal developments for 2009 follow:
1. MySQL Delays Sun/Oracle Merger. The European Commission (“EC”) delayed the closing of the Sun/Oracle merger because of concerns about the future of the MySQL database software. MySQL software is the most widely used open source database. The use of FOSS in the European Union is much higher than in the United States and the EC is very concerned about a potential reduction in competition in the database market. The EC concerns seem to fundamentally misunderstand the nature of FOSS and the ability of the community to continue the development of the software even without ownership of the copyright in the particular software. This approach has been widely criticized http://www.economist.com/businessfinance/displaystory.cfm?story_id=14861553. In mid December, Oracle offered ten commitments with respect to MySQL software. http://www.marketwire.com/press-release/Oracle-Corporation-NASDAQ-ORCL-1090000.html. The EC will make its decision next year.
2. First Lawsuit by a Commercial FOSS Vendor. Artifex uses a “dual licensing” model (providing the software under both the General Public License (”GPL”) and a commercial license) for its MuPDF rendering engine: the company filed suit against Palm for alleged copyright infringement because Palm allegedly violated the GPL (in the interests of transparency, I have worked for Palm in the past, but I am not involved in this matter) http://lawandlifesiliconvalley.com/blog/?p=376. This complaint may signal the beginning of a trend by commercial open source companies with “dual licensing” models because the success of that model depends on the difference in the scope of rights available under an open source license and a commercial license (as well as the value of the additional protections, performance warranties, support and indemnification available under the commercial license).
3. Microsoft Discovers Violation of GPL and Contributes to Linux. Microsoft Corporation continues its engagement with the FOSS community by its prompt acknowledgement and correction of its failure to comply with the GPL in its distribution of the Windows 7 USB/DVD Download Tool http://lawandlifesiliconvalley.com/blog/?p=306. In addition, Microsoft provided three drivers to Linux under GPLv2 http://lawandlifesiliconvalley.com/blog/?p=276.
4. Standard for Injunctive Relief for License Breach Is Set High. Last year, the Court of Appeals for the Federal Circuit (”CAFC”) overturned the District Court decision in Jacobsen v. Katzner and strongly supported the right of FOSS licensors to obtain copyright remedies for breach of FOSS licenses. This result was critical for FOSS licensors because copyright remedies include injunctive relief (an order by the court to the licensee to obey the license) and statutory damages of up to $150,000 for each infringed work. http://lawandlifesiliconvalley.com/blog/?p=64. The CAFC decision was so clearly in favor of Jacobsen that most lawyers thought the District Court would grant an injunction to Jacobsen upon remand. Instead, the District Court refused to grant an injunction on the basis that Jacobsen had made no showing that he had actually suffered any potential harms and that Jacobsen had “failed to proffer any evidence of any specific and actual harm suffered as a result of the alleged copyright infringement” http://lawandlifesiliconvalley.com/blog/?p=141. This decision is disappointing for FOSS licensors and hopefully other courts will not impose such a high standard for injunctive relief.
5. SCO Attack on Linux Rises From the Dead. In August, the Ninth Circuit Court of Appeals reversed the summary judgment granted Novell in its litigation over the ownership of the copyright in Unix software. The ownership of the copyrights in the Unix software is essential for SCO to prosecute cases for copyright infringement against Linux. Thus, if SCO does not own the copyright in Unix, it cannot sue third parties claiming that the distribution of Linux infringes its copyright of Unix. The original contract between SCO and Novell relating to Unix does not transfer the ownership of copyrights in Unix to SCO, but a Second Amendment provides for a “conditional” assignment. The District Court had found that the conditions of the assignment had not been met and the assignment had not become effective. The Ninth Circuit decided that the facts were not sufficiently clear to grant summary judgment and asked the District Court to try the case. This decision is likely to have little practical effect. First, the decision does not grant ownership of the copyrights to SCO, but simply provides SCO the ability to litigate the issue rather than losing on summary judgment. Given that the judge has expressed his opinion that the copyright was not transferred by Novell under the “high” standard imposed by a summary judgment (a “summary” procedure setting a high standard of proof on the moving party, Novell), it seems unlikely that he will change his decision under the lower standard of proof which applies in a lawsuit. Second, the continued prosecution of the case will be very expensive and SCO is in bankruptcy. SCO would need to find additional financing to continue the case.
6. Enforcement of GPL for Busybox Continues. The Software Freedom Law Center has continued to enforce the GPLv2 on behalf of some of the owners of the copyright in Busybox software. Most recently, the SFLC filed suit against fourteen major companies, including Samsung, Best Buy and Westinghouse http://www.softwarefreedom.org/news/2009/dec/14/busybox-gpl-lawsuit/. The suits are based on violations of the GPLv2 in a variety of consumer electronic products, such as DVD players and televisions. However, Bruce Perens, one of the authors of the Busybox software, announced that he did not approve of the litigation http://perens.com/blog/2009/12/15/23. He raised the question of the rights of one of the authors of FOSS in such litigation. This issue would depend on whether the software would be considered a “joint work” or “compilation” under copyright law http://www.copyright.gov/title17/92chap1.html#101. As is the case frequently in software and copyright, these standard copyright categories are difficult to apply to software. A traditional example of a “joint work” would be a film because the work is the result of contributions by numerous authors to create a single work. A traditional example of a “compilation” would be a magazine which is the combination of independent copyrighted works from many authors. This issue remains unresolved.
7. GPL Found to be Indirectly Enforceable in France. In case of first impression in France, the Court of Appeals in Paris has issued a holding, as part of a larger dispute over the delivery of software, that states that the terms of the General Public License were breached (and thus the GPL is enforceable under French law). The basis for the decision was that the defendant, Edu4, had deleted two copyright notices in the VNC software and replaced them with its own copyright notice and had deleted the GNU GPL license language. The case is also unusual because it involved a suit by a licensee, AFPA, against a distributor, Edu4, claiming breach based on violation of the terms of the GPL by the distributor http://lawandlifesiliconvalley.com/blog/?p=285.
8. ALI Adoption of Software Contract Principles. The American Law Institute (“ALI”) approved the Principles of the Law of Software Contracts (the “Principles”) on May 19, 2009. ALI is a very prestigious legal organization and the Principles have the potential to be very influential on courts. As I have discussed in this blog, the Principles continue to have significant flaws. The Principles were meant to clarify the ambiguity created by conflicting legal decisions and the application of multiple laws to software licenses. Despite the stated goal of summarizing the case law and recommending best practices, the Reporters have included many new concepts which impose consumer type protections on both consumer and business software licenses. Although the Reporters have tried to exclude the applications of some of the Principles to FOSS, these modifications are not clearly successful in implementing this exclusion http://lawandlifesiliconvalley.com/blog/?m=200906.
9. Microsoft Sues TomTom for Patent Infringement. Microsoft Corporation sued TomTom for patent infringement for its GPS device which includes Linux. Although a number of commentators assumed that the suit was the first salvo in the long awaited patent assault on Linux by Microsoft, I was (and am) skeptical and thought that these concerns are premature. The claims relating to Linux, such as those covering FAT, are based on features common to many operating systems and would be likely to be subject to challenge under the new higher standards for patents set by the Supreme Court. Moreover, the case settled quickly, suggesting that it was not the beginning of a Microsoft assault against Linux http://lawandlifesiliconvalley.com/blog/?p=214.
10. New GCC Runtime Exception. The FSF announced new runtime exceptions (“GCC Exceptions”) for their popular GCC programs as part of its shift of the GCC programs from GPLv2 to GPLv3. http://www.fsf.org/licensing/licenses/gcc-exception.html. The exception is similar in purpose to the existing GCC exception for GPLv2 but is based on section 7 of the GPLv3 which permits a limited (and carefully defined) number of “additional permissions.” The GCC Exceptions are necessary because the GCC program when it compiles another program may combine portions of certain GCC program header files and runtime libraries with the compiled program. Without the GCC Exception, the compiled program would be required to be licensed under GPLv3 (just as without the prior exception, the use of GCC programs licensed under GPLv2 for compilation would have required the compiled program to be distributed under GPLv2) . The GCC Exception permits the use of the GCC program to compile programs which are then licensed “under terms of your choice”, including proprietary licenses. However, the new GCC Exception has added a limitation to its scope which was not present in GPLv2 version of the exception by limiting the use of non-GPL Compatible programs in the compilation process: “A Compilation Process is “Eligible” if it is done using GCC, alone or with other GPL-compatible software, or if it is done without using any work based on GCC. For example, using non-GPL-compatible Software to optimize any GCC intermediate representations would not qualify as an Eligible Compilation Process”. This limitation was included because the GCC programs are moving to a “plug in” architecture and the FSF wanted to avoid permitting plug ins that “called out to proprietary software to transform the compiled code—effectively creating proprietary extensions to GCC and defeating the purpose of the GPL”.
I am sure that this trend will continue in 2010, so stay tuned!
The Software Freedom Law Center (“SFLC”) recently published “Practical Guide to GPL Compliance” (“Guide”).
http://www.softwarefreedom.org/news/2008/aug/20/compliance-guide/The Guide is a major contribution to the open source community. It is very clear and valuable explanation about how to comply with the obligations in General Public License Version 2 (“GPLv2”), General Public License Version 3 (“GPLv3”), Lesser General Public License Version 2 (“LGPLv2”) and Lesser General Public License Version 3 (“LGPLv3”) and more generally how to best manage the use of FOSS.
The most critical point made by the Guide is the need to understand what third party open source software is in your software product in order to comply with obligations under FOSS licenses. However, companies should be equally concerned about complying with the terms of upstream proprietary software licenses. The Internet has made numerous software components easily available and my experience is that most software programs now include numerous third party components (both open source and proprietary).
Yet software companies frequently do not have an effective procedure for managing this new reality. This failure can raise significant problems at critical points in a company’s history, such as a financing and a merger. Many acquiring companies regularly perform a software scan of the target company’s software: they will discover these third party components and demand that the target company provide proof of compliance with the upstream licenses (both FOSS and proprietary). The failure to have a procedure for monitoring use of third party software means that the target company must scramble during the merger (or financing) process to prove compliance with upstream obligations. These problems are likely to cause delay in closing the merger (or financing) and, in some cases, may cause a reduction in the price or, rarely, termination of the merger. Recently, I assisted a startup in its sale to a large publicly traded company: the target company had over 100 third party software components of which it was not aware. We had to find a method to comply with the obligations in these upstream licenses in a very short period. The result was costly in management time and legal fees (rush jobs always cost more). In that case, however, the resolution of compliance with the obligations imposed by third party proprietary software component licenses created more problems than the FOSS components licenses.
The Guide is also very valuable for its practical suggestions about how to avoid compliance problems with the GPL such as training multiple developers how to “build” the software and distributing the Corresponding Source with the binary code (rather the alternative of making a written promise to provide the Corresponding Source). The Guide also provides detailed instructions on how to comply with the obligations relating to providing Source Code: the definition of Corresponding Source and the different options available under GPLv2 and GPLv3. For example, one nuanced, but important point is that Corresponding Source under GPLv2 cannot be provided solely by download (although it can be an option), but that option is available under GPLv3.
I strongly recommend that anyone dealing with FOSS compliance should read this guide.