Copyright Preemption and the GPL
Gumout, a thoughtful contributor to this blog, raised the following issue, and it's a good one to discuss.[Starting gumout quote]
The GPL's section:
"2 b) You must cause any work that you distribute or
publish, that in whole or in part contains or is derived
from the Program or any part thereof, to be licensed as a
whole at no charge to all third parties under the terms of
this License."
is preempted by section 301 of the Copyright Act. In one of
the most favorable decisions ever for contract rights
concerning copyrights the Seventh Circuit in ProCD, Inc. v.
Zeidenberg; 86 F.3d 1447, 39 USPQ2d 1161 stated:
"Rights equivalent to any of the exclusive rights within the
general scope of copyright are rights established by law
rights that restrict the options of persons who are
strangers to the author. Copyright law forbids duplication,
public performance, and so on, unless the person wishing to
copy or perform the work gets permission; silence means a
ban on copying. A copyright is a right against the world.
Contracts, by contrast, generally affect only their parties;
strangers may do as they please, so contracts do not create
exclusive rights. Someone who found a copy of SelectPhoneTM
on the street would not be affected by the shrinkwrap
license though the federal copyright laws of their own
force would limit the finders ability to copy or transmit
the application program.... But whether a particular license
is generous or restrictive, a simple two-party contract is
not equivalent to any of the exclusive rights within the
general scope of copyright and therefore may be enforced."
A person finding a CD containing source code and a copy of
the GPL *is* affected by the license... They are invited to
join in the modification of the source code. The GPL is not
a simple "two party" contract. It is a recursive multi-party
contract of adhesion that attempts to publicly regulate
derivative works.
From the GPL:
"Thus, it is not the intent of this section to claim rights
or contest your rights to work written entirely by you;
rather, the intent is to exercise the right to control the
distribution of derivative or collective works based on the
Program."
Here's some of what Congress had to say concerning section
301:
"The intention of section 301 is to preempt and abolish
any rights under the common law or statutes of a State that
are equivalent to copyright and that extend to works coming
within the scope of the Federal copyright law. The
declaration of this principle in section 301 is intended to
be stated in the clearest and most unequivocal language
possible, so as to foreclose any conceivable
misinterpretation of its unqualified intention that Congress
shall act preemptively, and to avoid the development of any
vague borderline areas between State and Federal
protection."
There are few sure bets in this world but here's one:
The GPL's section 2 b) is D.O.A. in a Federal Court of
Appeals.
[ending gumout quote]
Do you agree with this? Disagree? Why?
25 Comments:
I don't think that 301 is relevent to the GPL. It seems to be aimed at state or common law, not licenses entered into by individuals. And it seems to be discussing mainly contracts, not licenses.
The GPL is not a right created by a common or state law, it is a license that applies after a copyrighted work has been published. (Assuming we accept that it is a license).
A person finding a CD with GPL'ed code on is *not* affected by the GPL, as per 301 itself. To be affected they must investigate the contents of the disk, find the COPYING file, read the license and decide to agree with it. That is they must choose to be affected by the license, they are not a passive bystander or a disinterested third party by the time they have investigated and accepted the license.
To illustrate the logical flaws here with two obviously incorrect arguments:
Any copyright license is impossible because it affects all excluded parties by excluding them from the licensed material, creating a kind of parallel copyright the same as the existing copyright, but specifically stating who is and isn't affected by it.
And any magazine advertisement for CDs is illegal because it is inviting you to enter into a contract that attempts to publicly regulate use of copyrighted material. It is recursive because anyone else who wishes to enjoy the parallel copyright you enjoy must accept the same conditions you have (ie buy the CD).
>"I don't think that 301 is relevent to the GPL. It seems to
>be aimed at state or common law, not licenses entered into
>by individuals. And it seems to be discussing mainly
>contracts, not licenses."
One of biggest myths concerning the GPL is the Free Software
Foundations's insistence that the "GPL is a license not a
contract". That's pure nonsense.
The Supreme Court in referring to patents, opined in 1927:
"No formal granting of a license is necessary in order to
give it effect. Any language used by the owner of the
patent or any conduct on his part exhibited to another,
from which that other may properly infer that the owner
consents to his use of the patent in making or using it,
or selling it, upon which the other acts, constitutes a
license, and a defense to an action for a tort. Whether
this constitutes a gratuitous license, or one for a
reasonable compensation, must, of course, depend upon the
circumstances; but the relation between the parties
thereafter in respect of any suit brought must be held to
be contractual, and not an unlawful invasion of the rights
of the owner." --- DE FOREST RADIO TEL. & TEL. CO. v. UNITED
STATES, 273 U.S. 236 (1927)
The Federal Circuit reaffirmed this holding in 2001:
"A license is governed by the laws of contract. See McCoy
v. Mitsuboshi Cutlery, Inc., 67 F.3d 917, 920, 36 USPQ2d
1289, 1291 (Fed. Cir. 1995) ("Whether express or implied, a
license is a contract governed by ordinary principles of
state contract law.").--- JAZZ PHOTO, ET AL. v ITC , 264
F.3d 1094 (Fed. Cir. 2001)
This principle was held to apply to copyrights in the Ninth
Circuit in 1996 (quoting the Second Circuit):
"Generally, a 'copyright owner who grants a nonexclusive
license to use his copyrighted material waives his right to
sue the licensee for copyright infringement' and can sue
only for breach of contract." Id. at 1121 (quoting Graham
v. James, 144 F.3d 229, 236 (2d Cir. 1998) (citing Peer
Int'l Corp. v. Pausa Records, Inc., 909 F.2d 1332, 1338-39
(9th Cir. 1990))."
--- Sun Microsystems, Inc. v. Microsoft Corp.,. 188 F.3d
1115 (9th Cir. 1996)
The Eleventh Circuit is in accord with this principle:
"Implicit in that permission was a promise not to sue for
copyright infringement–a promise that at least one court has
found to be the essence of a nonexclusive license. See In re
CFLC, Inc., 89 F.3d 673, 677 (9th Cir.1996) ("[A]
nonexclusive patent license is, in essence, "a mere waiver
of the right to sue' the licensee for infringement.")
(quoting De Forest Radio Telephone & Telegraph Co. v. United
States, 273 U.S. 236, 242, 47 S.Ct. 366, 368, 71 L.Ed. 625
(1927)). " --- Jacob Maxwell Inc., v. Veeck, 110 F.3d 749
(11th Cir. 1997)
This contract principle --- that all licenses are contracts
--- was explained to Richard Stallman by Professor Micheal
Davis in 1999.
http://lists.essential.org/upd-discuss/msg00131.html
The FSF's Eben Moglen insists the GPL is not subject to
contract enforcement but if you're a law professor and your
name isn't Nimmer or Goldstein, your word carries little
legal weight in copyright matters in federal court.
I suppose it is the right of the FSF to postulate crackpot
legal theories if they so desire... but if someone wishes to
claim that pigs fly it is incumbent upon them to produce a
flying pig.
The FSF has failed to this day to cite any credible legal
authority to support its "non-contractual license" theory.
Wow, gumout has the ability to find nearly-relevant quotations from case law, take them totally out of context, ignore readily-available contradictory evidence, and then provide shockingly bad analysis of legal issues. Readers here should beware taking any of his comments above too seriously. They are seriously flawed.
For instance, his reasoning suggests there is no such thing as a pure license ever. That's simply false. If you're my neighbor and I say to you, "Hey, this weekend while your grandkids are visiting you, you all are welcome to fish in my pond." I've granted a license. There is no contractual relationship between me and my neighbor in such a case. I can always prevent trespassers on my property and correspondingly I can always license those I choose to be on my land with my permission.
Copyright provides similar rights that can be similarly licensed. gumout's other comments that GPL 2b will be shot down in Federal court on preemption issues are similarly misleading, and adequately rebutted by another poster.
> "Hey, this weekend while your grandkids are
> visiting you, you all are welcome to fish in my
> pond." I've granted a license.
Perhaps someone will present this fishing license defense
to a federal judge at their next copyright infringement
hearing. It's certainly a novel legal strategy. It would be interesting to see how the court would react.
Gumout,
I'm pretty sure that you can have a license without a contract. The easiest example is if you put a book on a street corner. Behind the title page, right after the copyright notices, there is a phrase that states, "Whoever picks up this book may make a single copy of it, but only one."
If someone picks up the book, there is clearly no contract. No offer, no acceptance, no consideration -- no contract. However, the copyright holder has granted to the picker-upper the right to make one copy, a right that the copyright holder has under the exclusive rights granted to him under the Copyright Act. That, in a copyright context, is what we call a license.
However, I don't think this answers all of the questions here, but I'm pretty sure that a license can exist independent of a contract, even though it rarely does outside of a FOSS context. I'm not aware of any "licenses" of non-FOSS software that aren't both a contract and a license. In some contexts, a breach of the license portion of the contract will allow for a lawsuit for a breach of contract and an infringement of copyright claim. The litigators in my firm do this all the time. That's one reason a bare license is so difficult for attorneys, even technology attorneys, to get their arms around.
Note that some folks in Europe have strong feelings that licenses don't exist as a legal concept (outside the real estate context). See the commentary to the German court's holding on the GPL under another part of the blog.
> Behind the title page, right after the copyright notices,
> there is a phrase that states, "Whoever picks up this book
> may make a single copy of it, but only one."
And if the author witnesses you making your single copy of
his book and files an infringement action under sec. 504
against you will you plead guilty? Pay the damages?
I doubt it. You will point to the phrase right after the
copyright notice and say "Judge I copied with permission.
See the notice right after the copyright?"
The Judge will then ask the author, "Is this true?"
To which the author will respond, "No sir I have no idea who
put that notice after the copyright in my book."
What say you now Mr. Infringer?
Gumout,
There are issues of proof in all litigation situations. Your example turned my example into a question of proof rather than a question of whether a copyright holder can grant a right within its exclusive rights to a third party without a contract.
What you have asked is a subtle change from the point I was trying to make: that you can have a "license" (or whatever non-contractual name you want to call it) without having a contract.
This subtle shift happens a fair amount, mostly with non-lawyers. Those who have not had the difference between proof of a factual proposition and the underlying legal principle drilled into them in law school (civil procedure, criminal procedure and evidence classes) often aren't as quick to identify the difference. As a result, gumout, I don't ascribe your comment as an intent to mislead. They are entirely different questions, however.
To answer your question directly, if the copyright holder denies that it was him who granted the right, then you have a proof question about whether he in fact was the person who granted the right. That might be an interesting question to debate on an evidence law blog, but it is relatively uninteresting on an open source blog.
If, however, the copyright holder admits that it was him, then you have the grant of a "license" without a contract. And that was the point of my prior post.
Paul,
This is a famous citation that is Hornbook American law.
You might wish to Google this citation for expansion
on it's application in American contract law.
'In general a waiver of any legal right at the request of
another party is a sufficient consideration for a promise.'
(Parsons on Contracts, 444.);
Court of Appeals of New York, (1891) 124 NY 538, 27 NE 256.
Copyright is an exclusive right. A copyright author *must*
waive an exclusive legal right in order to authorize the
use of his work. That's the very definition of "permission"
in the law --- the waiver of a legal right.
Automatically under American contract law the elements of
"promise" and "consideration" are satisfied when the owner
of copyright "authorizes" (grants permisssion) even if only
unilaterally. Obviously another person has hypothetically
"accepted" this "promise and consideration" or we wouldn't
be having a discussion about the subject.
The law of contracts is very, very extensive. The
Restatement (Second) of Contracts, a concise summary,
contains 385 sections alone.
The standard classifications are express and implied
contracts; bilateral and unilateral contracts; executory and
executed contracts; valid, void, voidable, and unenforceable
contracts; and quasi-contracts. To try to fit these
classifications into simplified standard elements of
agreement, consideration, legal capacity, lawful subject
matter, and genuine consent is nearly impossible. These
classifications seem to have almost infinite variations in
contract interpretation case law. This leads us astray from
our topic of GPL preemption.
The whole point is the GPL is a nonexclusive license. All
non-exclusive copyright license are contracts. Why? Because
the federal courts have so ruled. They are examined *first*
for "breach of contract" to address the specific terms and
conditions of the license, before a determination can be
made as to whether an infringement action is warranted
(scope exceeded). See Nimmer on Copyright, S 1015[A](1999).
"Generally, a 'copyright owner who grants a nonexclusive
license to use his copyrighted material waives his right to
sue the licensee for copyright infringement' and can sue
only for breach of contract." Id. at 1121 (quoting Graham v.
James, 144 F.3d 229, 236 (2d Cir. 1998) (citing Peer Int'l
Corp. v. Pausa Records, Inc., 909 F.2d 1332, 1338-39 (9th
Cir. 1990)).
The existence of a nonexclusive license *automatically*
raises common law (contract) issues. This brings the GPL
foursquare within the province of state enforcement and
therefore within the scope of section 301.
The Free Software Foundation wishes to escape examination
of the GPL under section 301 by claiming it's not subject to
commom law enforcement. That is just simply not true...
unless your can defy well-established federal case law.
"The whole point is the GPL is a nonexclusive license."
Not to be a numb skull, but what makes it a nonexclusive license? (I ask since I assume these terms have legal as opposed to everyday meanings.)
Can you give an example of an exclusive license and a nonexclusive license other than the GPL?
In the normal case where a person writes a book and sells north american first publishing rights to entity a and european first publishing rights to entity b and a has a third party printer print the books, but b has in house printing, is this an example of an exclusive contract?
A Nony Mouse
I think gumout makes an interesting point but misses the mark slightly. The cited dictum from ProCD is probably a correct statement of the copyright preemption doctrine. But I don't see how it invalidates section 2.b of the GPL. gumout is incorrect that I can stumble across a copy of a GPL'd program and suddenly be bound by the GPL. On the contrary, I would only be bound by it once I invoked one of the exclusive rights like copying, distributing, or modifying. And, of course, once I have done that, I have entered into a contract of sorts (gumout is right about that part IMHO). But this contract is still between the copyright owner(s) and the hapless CD finder. No ProCD/preemption problem here. The GPL simply does not attempt to apply to the whole world.
I think people, even laywers, get thrown by the relatively novel legal phenomenon of self-executing contracts, such as those seen in ProCD.
TO: At 2:52 PM, osslawgeek
The GPL *does* apply to the whole world. It's a general
"public" offer to anyone having the legal capacity to
contract. Accept it by distributing a modified work
and live by the license terms it (the GPL) says.
From the GPL:
"2 b) You must cause any work that you distribute or
publish, that in whole or in part contains or is derived
from the Program or any part thereof, to be licensed as a
whole at no charge to all third parties under the terms of
this License."
See the "all third parties"? That's the whole world.
In contract law "all third parties" are all parties *not*
in privity with the contracting parties... "strangers" to
the contract and its binding terms.
The GPL license controls a derivative work that obviously
comes "... within the subject matter of copyright as
specified by sections 102 and 103..." and the license
purports to apply to all "third parties"... the whole world.
From the GPL:
"Thus, it is not the intent of this section to claim rights
or contest your rights to work written entirely by you;
rather, the intent is to exercise the right to control the
distribution of derivative or collective works based on the
Program."
There is *no* exclusive right to distribute a *derivative
work* enumerated anywhere in the Copyright Act. That was
left to the agreement of the authorizing author and the
modifying author as a contractual matter. Therefore,
the GPL is attempting to create new copyright law. The
Free Software Foundation even has a name for this new
creation it's called "copyleft".
Congress forbid creating new copyright controls by way of
contract law that apply to "all third parties" with
section 301 of the Copyright Act. The principle announced
in section 301 by Congress is known as "public policy" or
"national objective".
In ProCD, supra, Judge Easterbrook opined:
"Like the Supreme Court in Wolens, we think it prudent to
refrain from adopting a rule that anything with the label
contract is necessarily outside the preemption clause: the
variations and possibilities are too numerous to foresee.
National Car Rental likewise recognizes the possibility that
some applications of the law of contract could interfere
with the attainment of national objectives and therefore
come within the domain of Section 301(a)."
Paul,
Here is a case that demonstrates the food fight that is
occurring among the federal circuits over contracts and
preemption. Lots of good case law references and analysis.
Worth a read.
SEYED E. KABEHIE v. FARID ZOLAND (2002)
caselaw.findlaw.com/data2/californiastatecases/B148827.PDF
I'm still not convinced that all licenses are contracts.
I'll use sticks and my book example to explain. Copyright ownership is ownership of a right. It's a right to exclude others from doing certain things. That right has a number of different facets: the right to prevent the creation of derivative works and the right to prevent copying are two of those rights, among others.
Think of those multiple rights as sticks.
When the author authorizes the person who picks the book up to make a single copy, that author has provided a twig (which is a smaller stick, but still a stick) to the picker-upper along with the book. That twig gives the right to make a copy. The picker-upper has that one twig, but no other.
The author didn't have to have a contract in order to give away the twig. The picker-upper doesn't have to agree to anything to use the twig he got. He doesn't have to be agree not to do anything else with the book, because the author has all the other sticks and has a right of copyright infringement in the event that the picker-upper does anything other than make a single copy.
You don't need a contract to effectuate the rights granted and the limitations of those rights.
Even if the picker-upper affirmatively rejects any agreement with the author, even if the author and picker-upper enter a subsequent agreement expressly voiding any contract rights between the parties, the rights of both parties still work. The picker-upper can use that one twig and no other, because the author never gave the picker-upper any other sticks.
The problem with licenses always being contracts are that at times these relationships don't look like contracts from a pure contract perspective. No offer, no acceptance, no evidence of actual assent, and in the case of the GPL, direct evidence of the author's intent not to create a contract. There are times when, as in the GPL, the requisite formality to comply with electronic signature and records acts are not followed.
An analysis of the GPL and the way it is distributed suggest that making the GPL a contract is fraught with difficulty, from a contract perspective.
I have come to this personal conclusion after a lot of intellectual struggles about contracts vs. licenses. It doesn't mean I'm right, but it is hard for me to come to any different conclusion.
First, in response to gumout, there is long-standing precedent in contract law where an offer is open to "the whole world." For example, with shinkwrapped software, the box is sitting there on the shelf in the store, making that offer to the whole world. Even more so for online software sales. This does not invalidate the offer. There is nothing new about that aspect of the GPL. Don't be misled by the title of the license. Just becuase it's "public" does not mean that it truly affects everyone legally. As to the language about "all third parties," so what? As you point out, this simply means persons not a party to the contract. So the licensee has to offer the same terms to all persons not party to the contract. That does not pose any problems. I still don't see how the aspects of the GPL we've been discussing differ from those in ProCD. Like the phone directory in ProCD, there's this copyrighted software that is out there for anyone to obtain. There's an open offer "to the whole world" which imposes certain obligations on the licensee, some of which pertain to third parties.
Second, to Paul's stick analogy. The one problem I see with arguing for a "naked license" is that such a license would be revocable at will, unless coupled with an interest. The author could take his little stick back at any time, unless there has been something resembling consideration. But then you're back to a contract argument. It's a real conundrum that remains an open question until a court addresses it directly. Any takers for an equitable estoppel argument against revocability?
osslawgeek and I had a somewhat accidental email exchange outside the blog.
My answer to his question about revocability at will after use of the right is "I do believe that one who used a right in reliance on a 'naked' license would have a valid defense against a copyright holder in an infringement action."
His response was:
"And I think you're right; it would be a valid defense
in most cases. But why can't a licensor revoke the
license prior to suit? This would be effective in a
real property license where I let you come on my
property. If I then revoke permission, you would have
no valid defense if you came on my property at that
point."
My response was:
"I think you're right that it could be revoked. Pretty rare occurrence, however."
Now that I think about it, it would be notice of revocation prior to use, not prior to suit. However, my guess is that's what osslawgeek meant. Let me know if I'm wrong about that, osslawgeek.
Now everyone is up to date.
This case is a good read on revocability issues in
copyright. It must be read fully and in context.
WALTHAL, ET AL. v COREY RUSK, ET AL. 172 F3d 481
(7th Cir. 1999)
http://caselaw.lp.findlaw.com/cgi-bin/getcase.pl?court=7th&n
avby=case&no=981659
"Laws which subsist at the time and place of the making of a
contract, and where it is to be performed, enter into and
form a part of it, as fully as if they had been expressly
referred to or incorporated in its terms.", supra, quoting
the Supreme Court.
Also I know 'Nimmer on Copyright' says that a gratuitous
nonexclusive copyright license is revocable at will.
A "naked" or "bare" license is a "gratuitous" license.
"(a nonexclusive or bare license is “a covenant by the
patent owner not to sue the licensee for making, using, or
selling the patented invention”); Spindelfabrik
Suessen-Schurr Stahlecker & Grill GmbH v. Schubert & Salzer
Maschinenfabrik Aktiengesellschaft, 829 F.3d 1075, 1081
(Fed. Cir. 1987) (a bare license agreement “is in essence
nothing more than a promise by the licensor not to sue the
licensee”)." -- Jordan Spencer Jacobs v. Nintendo of America,
Inc., No. 03-1297 (May 28, 2004) (Fed. Cir.).
I am unaware of a cite to a definition of a "bare" license
in an exact copyright context.
TO: osslawgeek
> So the licensee has to offer the same terms to all persons
> not a party to the contract. That does not pose any
> problems.
The licensee cannot offer the same terms. Its now a
derivative work in which two distinct copyrights exist ---
the authorizing author (licensor) and the modifying author
whose is the licensee.
There is a widespread belief among FOSS and GPL advocates
that there is a concept called "downstream licensing". The
mechanism of "downstream licensing" is where a copyright
owner (licensor) authorizes a licensee (contracting party)
to further authorize (third parties) to distribute the
original author's work in a potentially endless stream of
authorizing.
Section 106 of the Copyright Act says:
"Subject to sections 107 through 120, the owner of copyright
under this title has the exclusive rights to do and to
authorize any of the following:..."
Section 101 of the Copyright Act says:
"A ''transfer of copyright ownership'' is an assignment,
mortgage, exclusive license, or any other conveyance,
alienation, or hypothecation of a copyright or of any of the
exclusive rights comprised in a copyright, whether or not it
is limited in time or place of effect, but not including a
nonexclusive license."
Summarizing these sections, the Copyright Act can be
interpreted to say "Only the *OWNER* of copyright has the
*EXCLUSIVE* right to do and to *AUTHORIZE* the *EXCLUSIVE*
rights that come with *OWNERSHIP* and *OWNERSHIP* cannot be
transferred with a *NONEXCLUSIVE* license.
Unless you are the owner of a copyright you *cannot*
authorize anything concerning that work --- after all
its an exclusive right.
Even the owner of copyright cannot authorize another party
to further "authorize" his original exclusive rights... if
he could then the right "... to authorize" wouldn't be
exclusive to the owner would it?
You *must* be in contractual privity with the owner of a
copyright in order to be authorized to do anything with that
owner's copyrighted work.
Even the bankruptcy courts have ruled that a nonexclusive
license cannot be transferred as an "executory contract"
without the copyright owner's consent, although this holding
(bankruptcy context) is subject to some dispute.
gumout,
I actually think that I'm beginning to understand what you are saying. Let me make sure by trying to repeat it to you.
The GPL provides limitations on what can be done with a derivative work of copyrighted software. Because the right to distribute and copy a derivative work is not an "exclusive right" granted under the Copyright Act, it is therefore preempted by the Copyright Act.
Is that what you're saying?
Paul,
That is correct. The GPL creates a "new" copyright law
regulating the evolution of derivative works. Richard
Stallman calls this new copyright regulation "copyleft".
The fact that the GPL's use is voluntary is irrelevant to preemption analysis. If osslawgeek's reasoning were correct then no contract could *ever* be preempted, since all contracts are voluntary agreements by the very definition of "mutual agreeement".
You don't have to use the GPL in which case it doesn't affect you. Presumably some do want the GPL to be controlling since 70 per cent of modified open source code is re-distributed under the GPL. For those thousands who do use and abide by its terms, the GPL *is* a controlling law called "copyleft".
If the courts ruled the GPL was enforcable then there
would be a new copyright regulation born in all U.S. jurisdictions. That was exactly the intent of Richard Stallman and if called to testify in open court, that is what he would declare... that he had set out to
create a new right called "copyleft".
gumout,
I think that I'm finally beginning to understand what you're saying.
Let me ask the following questions, and give some examples, to see where this leads us. For the purposes of these questions, feel free to pick whether this is done by a license only or by a license provision in a contract.
Is it legally OK for an author (i.e., a copyright holder) to grant only part of his/her exclusive rights to another?
Is it legally OK for an author to otherwise condition his/her grant of all or a portion of an exclusive right to another? In other words, it's not a limit on the exclusive right; it's another condition.
Examples:
You (the licensee) can make only one copy of the work.
You can make unlimited copies for use internally within your organization but not distribute to any third parties.
You can make unlimited copies for use internally, with all you subsidiaries, and with all your independent suppliers, but not to anyone else.
You can make a certain number of copies, but you can only use the software for your internal operations and not for the benefit of third parties. (Note that "use" is not one of the exclusive rights granted under the Copyright Act.)
You can modify and distribute the source, but your modifications must add substantial additional functionality.
You must pay me if you distribute my software.
You must pay me if you distribute a derivative work of my software.
You can modify and distribute the source, but your modifications must add substantial additional functionality, and you can only distribute to hotel operators located in Washington, Oregon and California.
You can copy but you can't reverse engineer.
Let me know which of these also are preempted by the Copyright Act.
Paul,
As to the "bundle of rights" question the answer is yes for
a nonexclusive private two party license. The scope of the
grant can be just about any term or condition the author
wishes.
Note: We speak of "terms" and "conditions" in a copyright
license. Term has the meaning of "term" in a contract.
The word "conditions" is historical and refers to
"conditions precedent"... some condition that must be
satisfied *before* a grant of rights is effective. Failure
to meet a "condition precedent" stated in a contract gives
rise to an infringement violation under section 504 because
you never got permission in the first place. Conditions
precedent are disfavored in the law.
See: Cohen v. Paramount Pictures Corp., 845 F.2d 851, 854-55
(9th Cir. 1988).
For exclusive license I would refer you to:
Gardner v. Nike Inc. 279 F.3d 774 (9th Cir. 2002)
http://caselaw.findlaw.com/data2/circs/9th/0056404P.pdf
Copyright preemption questions are raised almost
automatically when you leave the realm of "private party
contracts" and start dealing with third parties in some
manner.
In private party contracts preemption is a federal circuit
dependant crapshoot on the "extra element test".
Here's a summary of this mess:
SEYED E. KABEHIE v. FARID ZOLAND (2002)
caselaw.findlaw.com/data2/californiastatecases/B148827.PDF
I detest it, but at the present time it seems the courts
are prepared to rule that you can contractually waive your
"fair use" rights in a private contract.
PS:
Note that in the beginning, I was a zealous open source
advocate. As a physicist I view intellectual freedom as the
linchpin of science. In the last year after SCO, I have been
researching copyright law in historical and contextual
detail. I spent more time trying find a way to validate the
GPL than I ever did preempting it. I don't like the
preemption situation, but intellectual honesty forces me
accept the law as it is. I still pay my membership dues to
the Free Software Foundation because I use their software
--- this in spite of the fact that I think they are legally
totally confused. They are blinded by Stallman's dogma.
He's a great programmer but a really lousy lawyer.
gumout,
So, from our above discussion, it's not the nature of the restriction that, in your opinion, creates the preemption issue. Instead, it's the concept that there is a legal difference between a "private party license" and a "public party license" or at least "non-private party license."
Let me know if you have any case authority for the difference between a "private party license" and a "public party license." I've never heard of such a thing.
BTW, I used "condition" not as a condition precedent or a condition subsequent. I used it in an ordinary, non-legal way, which in the context that I used it means: a qualification of a right granted, requiring the recipient of the right to do something or refrain from doing something. (I think this paragraph is beside the point, however.)
Paul,
All open source license that control evolving derivative
works contain a provision to bind any future party, who
chooses to join in the evolution of that derivative work,
to the terms of that license.
These contracts *require* an agreement to "delegate a duty"
of "assignment of rights" on all future parties to the
contract. This scheme is called a "grant back" provision.
(These grant back provisions are undoubtedly a "misuse of
copyright" in my analysis.)
Because these contracts are designed to be offered to all
future parties I call them "recursive contracts". In goes a
new author's name as a potential licensee and Presto! out
pops a new contract with the author's name added as a new
co-licensor.
There is *no limit* to the number of authors who may join
their name in this scheme. I ask you rhetorically is this a
"simple two party contract" as mentioned in ProCD?
Here's an important point to note. ProCD was the most
*favorable* decision to date *for* open source advocates
attempting to author these license. The majority of federal
courts think ProCD was wrongly decided.
"Prevailing federal authority is against the Greens on this
point of federal law. First, although the court in ProCD
did state that “a simple two-party contract is not
‘equivalent to any of the exclusive rights within the
general scope of copyright,’” the court was addressing the
enforcement of shrinkwrap licenses purporting to govern the
use of computer software... In ProCD
itself, the court found it “prudent to refrain from adopting
a rule that anything with the label ‘contract’ is
necessarily outside the preemption clause: the variations
and possibilities are too numerous to foresee.” Id. at
1455. Accordingly, although this case has been taken by
some to hold that any contract supplies the necessary “extra
element,” we agree with the courts that have rejected the
view that ProCD stands for the universal proposition “that
no breach of contract action would ever be barred by § 301
[of the Copyright Act].” See, e.g., Ballas v. Tedesco, 41
F. Supp. 2d 531, 536-37 n.14 (D.N.J. 1999). Further, to the
extent ProCD suggests that no state contract claim is
preempted, that decision has met with harsh criticism. As
one leading commentator on copyright has noted, ProCD relied
on three other cases, each involving contract rights
significantly broader than the simple promise not to
reproduce.1 Accordingly, “none supports the broad
conclusion that the Seventh Circuit ascribes to them.” 1
Nimmer on Copyright § 1.01[B][1][a], at 1-20. Thus,
“pre-emption should continue to strike down claims that,
though denominated ‘contract,’ nonetheless complain directly
about the reproduction of expressive materials.” Id. at
1-22." --- Green v. Hendrickson Publishers, Inc.,; Indiana
Supreme Court (2002).
“pre-emption should continue to strike down claims that,
though denominated ‘contract,’ nonetheless complain directly
about the reproduction of expressive materials.”
Nimmer on Copyright § 1.01[B][1][a]... that's not gumout
theorizing... that's Nimmer.
I meant "private contract" in the sense that no third
parties were affected through assignment or delegation.
For those unfamiliar with copyright authority the following
is an excerpt from the description online at the LexisNexis
Bookstore concerning the famous published legal reference
"Nimmer on Copyright".
http://bookstore.lexis.com/bookstore/catalog?action=product&
prod_id=10441&cat_id=T&pcat_id=15&pub_id=1
[begin quote]
Melville B. Nimmer, author 1963-85; David Nimmer, revision
author 1986 to present
"Cited in more court opinions than any other treatise on the
subject of U.S. copyright law, Nimmer on Copyright provides
comprehensive insights into copyright protection in the
digital age as well as exhaustive discussions of traditional
issues. This definitive work on copyright law is a rich
resource for the expert, as well as the practitioner just
beginning to explore the arena.
Nimmer on Copyright has been cited in over 2000 federal
court opinions, including landmark U.S. Supreme Court cases
like Tasini and Eldred AND we are unable to keep up with
all the law journal articles, newspaper articles, magazine
articles, court briefs, memos, copyright committee reports,
U.S. Copyright Office reports, U.S. Congress reports, books,
treatises, dissertations, E-mails, white papers,
testimonies, and speeches mentioning Nimmer on Copyright."
[end quote]
Here is Professor Nimmer's description of open source
"shrink wrap" licensing schemes":
"[A]t times a breach of contract cause of action can serve
as a subterfuge to control nothing other than the
reproduction, adaptation, public distribution, etc. of works
within the subject matter of copyright. That situation
typically unfolds when the "contract" at issue consists of a
"shrinkwrap license" to which the copyright owner demands
adhesion as a condition to licensing its materials. To the
extent that such a contract is determined to be binding
under state law, then that law may be attempting to
vindicate rights indistinguishable from those accorded by
the Copyright Act. Under that scenario, the subject contract
cause of action should be deemed pre-empted."
1 Melville B. Nimmer & David Nimmer, Nimmer on Copyright
1.01[B] at 1-19.
gumout said:
'Congress forbid creating new copyright controls by way of
contract law that apply to "all third parties"'
Are you sure the copyright controls apply to "all third parties"? - I don't see the controls applying to them at all. The controls only apply to those who choose to distribute. Does this not move those who so choose out of the third parties realm?
'There is a widespread belief among FOSS and GPL advocates
that there is a concept called "downstream licensing". The
mechanism of "downstream licensing" is where a copyright
owner (licensor) authorizes a licensee (contracting party)
to further authorize (third parties) to distribute the
original author's work in a potentially endless stream of
authorizing.'
Can you give some examples of how derivative works are licensed in the usual ways? For instance, if A writes a book, B translates to another language, C writes a play based on B's work, D writes a screen lay based on C's work, E films a movie based on D's work, and finally F makes action figures based on E's work. Who does F have to contract with?
"If the courts ruled the GPL was enforcable then there
would be a new copyright regulation born in all U.S. jurisdictions. That was exactly the intent of Richard Stallman and if called to testify in open court, that is what he would declare... that he had set out to create a new right called "copyleft".
I am not sure why you think this is so. To me, the GPL uses existing copyright law/regulation to achieve the desires of the authors of the works. I don't see where any new copyright regulation comes in to the matter.
Again, I don't see how this is new law, just an interesting use of existing law.
There are other options open to someone wishing to make a derivative work. One is - rights clearances. Just go an negotiate licenses with all copyright holder's whose work you wish to use in your work.
I am not sure I fully get your line of reasoning, but if you are right, how is the GPL situation different from all code libraires that are licensed for use in your programs. Must they all contain only code owned by the person you buy the library from? Or can the library seller buy the rights to include another person's code in the library which the library seller then licenses you to use in your programs?
A Nony Mouse
Post a Comment
<< Home