Hot Topics in Open Source Licensing Robert J. Scott Managing Partner Scott & Scott, LLP

Presenter Robert J. Scott Scott & Scott, LLP

Topics The Copyleft Paradigm Changes in GPLv3 –Open Source Firmware –Anti-Patent Transactions –Web Interfaces Potential Pitfalls and Case Examples Q & A

The Copyleft Paradigm Software Author Licenses Product Under GPL GPL License Requires Licensee and Other Authors To Maintain Open Distribution Software Author Asserts Copyright In Software Product

The Copyleft Paradigm - Copyright GPL licensing still requires assertion of copyright interest in software It is a violation of U.S. copyright law to copy or distribute a creative work without the author’s permission, which usually comes in the form of a license Remedies for copyright violations include injunctions and actual or statutory damages

The Copyleft Paradigm - GPL GPL conditions lawful use of copyrighted software on the user’s promise not to restrict future use of that software A user’s attempt to restrict the availability or functionality of GPL-licensed software in violation of the terms of the GPL constitutes a breach of the license, making future use unlawful and subjecting the user to copyright liability

The Copyleft Paradigm – Downstream Use Downstream users of GPL-licensed software are generally free to modify and re-distribute that software, even for a fee, as long as they license their software under terms at least as permissive as those of the GPL Most of the major changes reflected in GPLv3 concern relatively recent developments in downstream use that post-date GPLv2

Changes in GPLv3 – Open Source Firmware GPLv3 Section 6 (paraphrased): If you copy and distribute a covered work as firmware in a “User Product,” the ownership and use of which is transferred to the recipient permanently or for a fixed term, you must: –Convey with the “User Product” the corresponding source code for the covered work –Convey the code signatures or installation keys that would allow the recipient to install modified versions of the covered work as firmware in the “User Product”

Changes in GPLv3 – Open Source Firmware (cont.) Anti- “Tivoization” provision “User Product” generally includes only devices intended for personal / household use – not voting machines, medical devices, or other business- or government-oriented products (a concession to avoid conflicts with privacy or voting laws that would require the firmware to be “tamper-resistant”)

Changes in GPLv3 – Anti-Patent Transactions GPLv3 Section 11 (paraphrased): You may not copy and distribute a covered work under any arrangement with a third party software publisher in which: –You would make payment to the third party –You would distribute the covered work to consumers –The third party gives to those consumers a “patent license” that “does not include within the scope of its coverage, prohibits the exercise of, or is conditioned on the non-exercise of one or more of the rights that are specifically granted under [the GPL]” –Unless you entered into that arrangement with that third party prior to the date that GPLv3 was publicly circulated for review and comment

Changes in GPLv3 – Anti- Patent Transactions (cont.) Anti-Microsoft-Novell provision Intended to prevent companies (e.g., Novell) who publish software based on works licensed under the GPL from entering into arrangements with other companies (e.g., Microsoft) who would modify and then try to patent the resulting product, thereby preventing others from making future works based on that code (absent a license to do so)

Changes in GPLv3 – Web Interfaces GPLv3 specifically accommodates linking works GPLv3-licensed works with other works licensed under the Affero GPL, for open-source software delivered over a network (the Affero GPL is generally incompatible with GPLv2) Thus, developers of programs licensed under the Affero GPL can now incorporate libraries or code licensed under GPLv3 without running afoul of any license terms

Potential Pitfalls and Case Examples It is possible that a proprietary executable that dynamically links to GPL software could itself be considered a derivative work, which would have to be licensed under the GPL –In Galoob v. Nintendo, the 9 th Circuit held that a work would have to “incorporate a portion of the copyrighted work in some form” in ordered to be considered derivative –Issue remains to be decisively settled –Proprietary work could be protected to the extent that it is partitioned from a GPL-covered work, so as to form a component of an “aggregate”: GPLv3 Sec. 5: “Inclusion of a covered work in an aggregate does not cause this License to apply to the other parts of the aggregate.”

Potential Pitfalls and Case Examples In September 2006, a German civil court found that D-Link Germany GmbH violated the copyright in the Linux kernel and other GPL-licensed software when it distributed that software as firmware without including the accompanying source code Early precedent that GPL is valid and binding (at least in Germany)

Potential Pitfalls and Case Examples In 2007, the Software Freedom Law Center began filing lawsuits in the S.D.N.Y. for use of GPL- licensed BusyBox code as firmware in appliances that were not distributed with the corresponding source Targets included: –Monsoon Multimedia Inc. (Case 07-CV-8205) –Xterasys (Case 07-CV-10456) –High-Gain Antennas (Case 07-CV-10455) Monsoon and Xterasys settled out of court for release of code and undisclosed payments BusyBox developers

Potential Pitfalls and Case Examples Jacobsen v. Katzer –Decided August 13, 2008, by the U.S. Court of Appeals for the Federal Circuit –Perl Artistic License held to be enforceable –Made it clear that, based on the license’s conditions on the use and copying of the software at issue, the holder of the copyright may pursue a claim for copyright infringement when those conditions are breached –Specifically rejected the notion that the software’s distribution free-of- charge affected the analysis

Open-Source Software Asset Management Principal risks with open-source software are associated with whether the publisher or vendor has the right to distribute the software Increasing number of SAM solutions are being offered to help mitigate the risks: –Turn-key open-source SAM solutions by subscription –Insurance coverage for open-source software deployment As a business productivity tool As an integrated component of a downstream software or hardware product

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