Thanos K. Tsingos Attorney At Law Enforceability of F/OSS licensing terms: A critical review of the global Case - Law Thanos K. Tsingos Attorney At Law

A. Computer Software Licensing The Software License [acts as a promise from the software publisher not to sue the end user for engaging in activities that would normally be considered as covered by exclusive rights belonging to the software publisher] Types of the Software License: Proprietary software licensing [Conventional License] Free/Open Source Software licensing [FSF, OSI]

A.1. Proprietary software License A license to use one or more copies of software Ownership of those copies remains with the software publisher [all rights reserved] License of the Object Code, not the Source Code [proprietary] Scope of the License: [an extensive list of prohibited activities eg. reverse engineering, simultaneous use of the software by multiple users, publication of benchmarks or performance tests] Copyright Infringement: [acting outside the scope of the License]

A.2. F/OSS Licenses A license to use one or more copies of software Ownership of those copies remains with the software publisher [“some rights”? Reserved] - carries no legal significance, denotes a discontent with copyright laws ] License of the Source Code primarily [Free/Open Source Licensing] Scope of the License: [Allows more and greater uses of the software as source code e.g. copying, modification, distribution etc but it sets forth certain conditions, under which such acts legitimately take place] Copyright Infringement: [acting outside the scope of the License]

A.2. Types of F/OSS Licenses A.2.1. Classification based on their certification: Free Software Licenses [software to be used as “Free” - FSF Definition, e.g. GNU GPL] Open Source Software Licenses [software that qualifies as “Open Source” – OSI Definition. All Free Software Licenses are OSI-certified but not all Open Source Licenses may qualify as Free Software Licenses.

A.2. Types of F/OSS Licenses A.2.1. Classification based on the strength of copy-left clause: No Copy-left: “Academic/ Permissive/ “BSD-Style” licenses [Recipients may release modified versions under more restrictive terms (including both proprietary and copy-left terms), e.g. the Free BSD, the University of California, Apache License] Weak Copy-left: [Licenses may include the original unmodified code in a greater work without being required to license the entirety of the new work under the open source license, e.g. Mozzila Public License (MPL), the Eclipse Public License (EPL), the Artistic License] Strong Copy-left: Reciprocal – Conditional Licenses [any resulting copies or adaptations are also licensed under the same copy-left licensing scheme, e.g. GNU GPL v.1, v.2, v.3]

B. Enforceability of F/OSS Licensing Terms Case Law [cumulative study] B.1. Divergent Approaches [Differentiated Legal Traditions] B.1.1. US Law (Common Law approach) License/Contract Debate If a F/OSS License is a “License”, the dispute is governed by US Federal Copyright Law. If a F/OSS License is a “Contract”, the dispute is governed by the relevant State Contract Law.]

B.1.1. US Case – law [Common Law Approach] If a FOSS License is a contract, it has to meet the “contract formation conditions”: Offer Acceptance consideration [lacks in F/OSS Licenses] meeting of minds [lacks in F/OSS Licenses] For the FOSS License to qualify as “Licenses” the following have to be met: General Rule: In non- exclusive Licenses, a copyright owner waives his right to sue the licensee for “copyright infringement" and can sue only for “breach of contract” Exception: If the license is limited in scope and the licensee acts outside the scope, the licensor can bring an action for copyright infringement A License is limited in scope if the provision allegedly violated serves as a condition of the License (or both as a covenant and a condition) and not merely as an independent contractual covenant To characterize the provision as a condition or mere covenant a proper interpretation is needed

B.1.1. US Case – law [Common Law Approach] Robert Jacobsen v. Matthew Katzer et al: Issues Concerned: Is the Artistic License a “Contract” or a “License”? Are the attribution, reference and description requirements of the Artistic License [author names, copyright notices, references to the COPYING file, the identification of the original source of the definition files, description of how the files or computer code had been changed from the original source code] “ Conditions” of a License or “mere contractual Covenants?”

B.1.1. US Case – law [Common Law Approach] Court of Appeals “linguistic” interpretation: “…The Artistic License states on its face that the document creates conditions: "The intent of this document is to state the conditions under which a Package may be copied." (Emphasis added.) The Artistic License also uses the traditional language of conditions by noting that the rights to copy, modify, and distribute are granted "provided that" the conditions are met. Under California contract law, "provided that" typically denotes a condition…”

B.1.1. US Case – law [Common Law Approach] Court of Appeals “teleological” interpretation: The License serves as a means to achieve the goal of an open source project The terms of the Artistic License “…were both clear and necessary to accomplish the objectives of the open source licensing collaboration” In FOSS Licensing licensor retains the exclusive rights under copyright FOSS is a legitimate economic goal So, the requirements of the Artistic License are “Conditions”, which limit the scope of the license

B.1.2. European Legal Framework [“Continental” Approach] Basic Legal Framework: Council Directive 93/13/EEC on unfair terms in consumer contracts Directive 2000/31/EC of the European Parliament and of the Council (E- Commerce Directive) European and National contract laws Understandings: F/OSS licenses as “contracts” incorporating the copyright licensing terms F/OSS licensing terms may be considered as general terms and conditions. The validity of those terms is essential for any kind of contract (both B2B and B2C) The underlying legal relationship between the parties concerned (B2B) or (B2C) plays an important role to specific provisions The licensing terms should be specifically incorporated into the contract.

B.1.2. European Legal Framework [“Continental” Approach] German law: The German Civil Code (305-310) incorporated the Community rules of general terms and conditions to any contract irrespective of the qualification of the party invoking these terms. German Case - law (GPL v.2): Harald Welte v. S[itecom] Deutschland GmbH (2004) Harald Welte v. Fortinet (2005) Harald Welte v. D-Link (2006) Harald Welte v. Skype Technologies SA (2007) French Case – law (GPL v.2): Educaffix28 v. CNRS (2007) Société EDU 4 v. AFPA (2009) Iliad (pending)

B.1.2. European Legal Framework [“Continental” Approach] Common Findings Body of German Case law: The license conditions of the GPL are general terms and conditions of sale that are to be checked according to par. 305 ff. of German Civil Code By putting a program under the GPL an offer is made to a determinable or definite circle of people and that this offer is accepted by users [of the software] through an act that requires consent under copyright law The copyright holder enters into this legal relationship without receiving an actual declaration of acceptance according to Section 151 of the German Civil Code Since the conditions of the license granted by the GPL are easily available on the Internet, they are without a doubt incorporated into a contractual relationship Sections 2,3 and 4 of the GPL are valid as general conditions (fairness test) Even assuming that no contract has legally come into force, or such contract is void for some reason, the use of the software will be per se illegal absent the relevant license French Case – law: Educaffix28 v. CNRS (implicit reference to GPL as a contract) Société EDU 4 v. AFPA (implicit reference to GPL as a contract)

B.1.2. European Legal Framework [“Continental” Approach] Specific Findings German Case law: The incorporation of the GPL in English language is held valid, if the contract in question has been concluded between business persons (B2B) [Harald Welte v. Sitecom, 2004] The principle of exhaustion of the right to distribute presupposes that software is put into circulation by sale with the consent of the author. In case of free software, to comply with the terms of the GPL [Harald Welte v. D-Link, 2006] An only approximate conformance to the GNU GPL is not sufficient. Violations of license details lead to the loss of rights for the license holder [Harald Welte v. Skype, 2007]

B.1.2. European Legal Framework [“Continental” Approach] Specific Findings French Case law: Implicit acknowledgement of the software in question as “derivative” work within the meaning of Section 2 GPL [Educaffix28 v. CNRS , 2007] Implicit acknowledgment of the “attribution and reference requirements” of the GPL [Société EDU 4 v. AFPA, 2009]

B.2. Common Approaches Global Case Law B.2.1. As to the Copyright Architecture: F/OSS Licenses do not entail a waiver of exclusive exploitation right on the part of the copyright holder Software distributed under such licenses is not ceded to the public domain F/OSS Licenses incorporate a broad permission of uses, in which licensees legitimately engage, if they consistently abide by the respective terms of the License (Scope of the License) Copyright infringement occurs if licensees act beyond the scope of a F/OSS license [US Case-Law: Planetary Motion, Inc. v. Techplosion, Inc. (2001), Daniel Wallace v. Free Software Foundation, Inc (2005), Daniel Wallace v. International Business Machines Inc et al (2006), Robert Jacobsen v. Matthew Katzer and Kamind Associates, Inc (2008) German Case – Law: Harald Welte v. S[itecom] (2004), Harald Welte v. D-Link (2006)].

B.2. Common Approaches Global Case Law B.2.1. As to the legitimacy of the goals of F/OSS Projects: Software development in favor of the F/OSS community is a concept understandable and protectable by the law itself. The strength of the GPL and other open source licenses lies precisely in their moral force [US Case-Law: Daniel Wallace v. Free Software Foundation, Inc (2005), Daniel Wallace v. International Business Machines Inc et al (2006), Robert Jacobsen v. Matthew Katzer and Kamind Associates, Inc (2008) German Case – Law: Harald Welte v. S[itecom] (2004)]

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