Subject: Re: encforceability of Open Source Licences (Re: (OT) - NOT A Major Blow to Copyleft Theory)
From: Rick Moen <>
Date: Mon, 11 Feb 2008 15:59:59 -0800

Quoting (

> Rick, I think your question oversimplifies the issue.

I thank you for taking the time.  This is indeed precisely the sort of 
thing I was imagining you had in mind (and, indeed, I did expect you
would be speaking of a judge selectively invalidating only particular 
licence clauses on one legal theory or another).

> EXAMPLE 1: Rather than declaring an entire license invalid, a court  
> could deem the relevant provisions in an open source "license" to be  
> covenants rather than conditions.  In the Jacobsen v. Katzer case, the  
> judge ruled that the portions of the Artistic License alleged to have  
> been violated were covenants rather than conditions.

More specifically, Judge White cited Effects Associates v. Cohen (from
the 9th Circuit appellate jurisdiction) as creating a scoping
requirement for covenants appropriate to the licences' degree of
permissiveness -- ignoring the fact that the appeals court applied that
scoping standard only to an _unwritten, implied_ copyright licence
(which of course neither release of the Artistic License, for all its
grievous faults, is).  

This is among the reasons pretty much everyone, including Mark
Radcliffe, has concluded that Judge White blundered badly -- but,
indeed, a judge _can_ (physically can) invalidate particular clauses 
of purported contracts, and there's a long history of same.

In my long-ago business law classes, I remember, however, that the aim
of the judge needs to be to enforce the intent he/she finds in the
purported contract.  And I'll bet good money that the 9th Circuit,
if/when it takes the case, will rule that White's belief that Bob
Jacobsen and co. intended to contract away their 17 U.S.C. 106(a) right
of attribution (the removal of author attribution being one of Katzer's
alleged torts) for _nothing_ to be wacked.

> Now, the interesting part about what Alexander was raising recently.   
> 17 USC Section 109(a) provides in part: "Notwithstanding the  
> provisions of section 106(3) [17 USC 106(3)], the owner of a  
> particular copy or phonorecord lawfully made under this title, or any  
> person authorized by such owner, is entitled, without the authority of  
> the copyright owner, to sell or otherwise dispose of the possession of  
> that copy or phonorecord." 

It's already been explained why Terenkov rather outrageously
misrepresented this statutory embodiment of the First-Sale Doctrine as
supposedly permitting arbitrary soft copies, as distinct from being what
it _really_ is, the right to resell the one physical copy that you
bought, and nothing else. 

A judge _could_ (physically could) rule that the Artistic Licence (some
revision) authorises "Katzer to make as many copies of the software as
he desires" with no enforceable obligations -- but (1) only if the judge
was on bad drugs, I would say, and (2) more to the immediate point, not
because of 17 U.S.C. 109(a), since the First-Sale Doctrine just doesn't
say that.  (Well, again, a judge as apparently inept as White _could_
say even that, but I figure that argument would last about five minutes
in front of the 9th Circuit.)

> EXAMPLE 2: In a second vein of thought, if a court finds that an open  
> source license is invalid, that does not necessarily constitute the  
> end of the inquiry.  There may be circumstances in which the licensee  
> would be deemed to have an implied license to use the software.   

You're aware that _usage_ of software is not controlled by copyright law
at all?  Once someone has lawful possession of a creative work,
copyright law has nothing to say about his/her usage (as distinct from
other regulated acts, such as distribution, creation of derivative
works, performance of some sorts of works, and so on).

So, the possession of a licence, expressed or implied, to _use_ software
would seem not relevant to this discussion.

> Alternately, the licensor may be deemed to have waived its rights to  
> sue the licensee for the infringing conduct or the licensor might be  
> equitably estopped from asserting its rights.

I'm certainly familiar with the principle, and some of the practice, of
promissory estoppel, but, again, although a judge can certainly
invalidate purported contract clauses that are, e.g., unconscionable,
he/she is supposed to act to uphold the intent found in the document and
(consistent with the parol evidence rule) the surrounding behaviour of
the parties, right?