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.

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  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  In mid December, Oracle offered ten commitments with respect to MySQL software. 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) 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 In addition, Microsoft provided three drivers to Linux under GPLv2

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.  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”  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 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 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 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

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

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

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.  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!


In the first lawsuit by a commercial open source vendor, Artifex, which uses a “dual licensing” model (providing the software under both the General Public License (”GPL”) and a commercial license) for its MuPDF rendering engine, has filed suit against Palm for alleged copyright infringement (in the interests of transparency, I have worked for Palm in the past, but I am not involved in this matter). Artifex alleges that Palm has violated its rights by using MuPDF in the Palm Pre but failing to comply with the GPL or, in the alternative, take a commercial license.  The complaint has very few details so it is difficult to determine how the GPL was violated.   

This complaint may signal the beginning of a trend by commercial open source companies with ”dual licensing” models: the success of that model, which is used by most commercial open source companies, 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. Thus, one important component of this strategy is to ensure that the open source version of their software is used within the scope of the open source license. However, litigation has been uncommon in the open source community in the US until recently and we will see if the trend towards more litigation continues next year.

The NY Times published an article about open source yesterday which was very disappointing. The article perpetuated many of the myths and misperceptions about open source. The first misperception is found in the title: “Open Source as a Model for Business is Elusive”.  Open source is not a “business model.”  It is a development methodology which supports multiple business models as I have discussed in an earlier post.  The article starts from two false premises: (1) open source software is released free of charge to the world and is maintained by volunteers and (2) the revenue for open source companies comes solely from “support” deals.  These assumptions are very dated.  For the last five years, much of the most useful open source software has been created by commercial companies who develop most of the software using their own employees, such as SugarCRM and Zimbra.  Similarly, most open source companies use a combination of license or subscription revenue as well as revenue from support services. For example, MySQL received revenues from licensing of a commercial edition its software as well as “support” revenues.

The most disappointing quote was the following: “Whether open source firms are practical as long-term businesses, however, is murkier.”  The problem is that the long term business strategy of most software companies is “murky” due to the rise of less expensive “open source” alternatives and cloud computing.  The fact that several open source companies were sold at very substantial multiples to their revenues suggests that large software companies view them as valuable.  Moreover comparing the profitability of open source businesses with the traditional enterprise software model fails to take into account the tectonic changes which the traditional software business model is undergoing.  In fact, the traditional enterprise software model has proven  not to be a “long term business” for many proprietary companies. You need only consider the demise of Siebel Systems and PeopleSoft. Open source software is one of the major driving forces in these changes. For example, the Linux operating system is the most serious competitor to Microsoft’s operating system business. The fact that it is supported by IBM, Intel and other large companies is a further testament to its competitiveness and value. Although the Linux code may be contributed by corporate employees, the Linux operating system is continues to be distributed at no charge under the GPL: it is truly an “open source” program.  Moreover,  Linux users do not care whether the contributors are corporate employees or individual “volunteers”.  And Linux has succeeded where proprietary operating systems from major companies, such as IBM’s OS2 failed.

The final part of the article continues the unfortunate pattern: it suggests that the sale of open source companies to larger traditional software companies is a failure of the “open source business model.” It is not. This conclusion fails to consider that more than 90% of venture backed software companies in the past three years have been acquired rather than gone public, whether they used an open source or a proprietary development methodology. These acquisitions prove little about the viability of the ”open source business model” or open source software companies. In fact, they suggest that sophisticated companies are willing to pay a substantial premium for such companies.

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