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Just a reminder, these posts are not legal advice. This site is the personal blog of Mark Radcliffe and the opinions expressed are those of Mark Radcliffe and not those of his clients, DLA Piper or the clients of DLA Piper.

About Me:

Mark Radcliffe

I have been practicing law in Silicon Valley for over thirty years assisting startups and global companies develop and market innovative products and services. I have participated in multiple business cyles in Silicon Valley from hardware to software to internet to cloud. My projects have included developing the dual licensing business model for open source startup, developing the original domain dispute resolution policy for NSI and assisting Sun in open sourcing the Solaris operating system. Recently, I served on the US Japan Innovation and Entrepreneurship Council (one of ten members) to develop a plan to encourage the innovation in Japan and the United States. I have been working with the same attorneys since 1986 although we have merged with other law firms several times. I am now a partner at DLA Piper, a (relatively) new global law firm formed in 2005 from the merger of three law firms. The firm now has 4200 lawyers in 31 countries and 77 cities. My experience in corporate securities (particularly venture capital) and intellectual property enables me to assist companies structure the financing and intellectual property strategy for developing ane exploiting a new product or service. I and my team work with fifty startups at one time as well as Global Fortune 100. I have been fortunate enough to work with companies in software, cloud computing, semiconductor, health care IT and Web 2.0.

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 supports the assumption that the General Public License is enforceable. http://fsffrance.org/news/arret-ca-paris-16.09.2009.pdf. The case also suggests a new basis for licensees to allege breach of contract for commercial licenses: the failure of the licensor to comply with the open source licenses for modules included in the commercial product.The case involved a claim for rescission under Civil Code Article 1184 that permits rescission of a contract and the award of damages, or specific enforcement, if the other party does not perform its contractual obligations.

The case originated when Edu4 won an RFP issued by AFPA for a system to run adult educational programs. The RFP required the use of VNC software.  Edu4 provided the software, which was licensed under the General Public License (GPL). 

The GPL requires that the company distributing the licensed software provide either the source code of the software or a written offer to provide the source code. Edu4 promised to provide the source code to AFPA, but failed to do so.  Edu4 also removed two copyright notices in the VNC software and substituted its own notices; deleted the text of the GPL; and failed to properly indicate that VNC software had been integrated in the deliverables.  In addition, Edu4 deleted user features that AFPA alleged created the risk of an intrusion of privacy.

AFPA subsequently argued that the contract had been breached, and ceased its performance.  Edu4 claimed wrongful termination and was awarded damages by the lower court.  On appeal, the Paris Court overturned the lower court decision, finding that Edu4 breached its contractual obligations by delivering a product that 1) created a risk to user privacy because  modifications by Edu4 allowed other users or remote users to assume control over all the workstations and 2) did not comply with the GNU GPL because 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.  Other suits to enforce the GPL of which I am aware have been brought by the owner  of the copyright (or its agent) in the GPL licensed product to enforce the GPL.   I want to thank my partner in Paris, Carol Umhoefer, for assisting me in understanding the significance of this case. 

This decision is important for two reasons:

1.  For the first time, the GPL was  found, indirectly, enforceable under French law.

2. It reminds us that licensees of the code can also sue to enforce the rights resulting from the GPL

3. It may also suggest a new basis for licensees to charge breach of the commercial license agreement:  the licensor has failed to comply with the terms of open source licenses to software included in the product under the commercial license agreement