Subject: RE: OpenSales -- DRAFT developers agreement
From: "Lawrence E. Rosen" <lrosen@rosenlaw.com>
Date: Thu, 31 Aug 2000 17:02:50 -0700

The case law is pretty clear.  Under the federal Copyright Act, only the
legal or beneficial owner of an exclusive right under a copyright at the
time of the alleged infringement has standing to sue for infringement.  See
Copyright Act, 17 U.S.C.  501(b). Further, an exclusive licensee may only
sue for infringement of the particular rights within the scope of its
exclusive license. (A beneficial owner is one who assigns the title to his
work in exchange for the right to receive royalties from the copyright's
exploitation.)

> I was remembering a clause I'd through was part of the Mozilla PL, it
> was actually part of the original "OpenMerchant Community Source
> License".  Though we adopted the GPL, there were some interesting and
> IMO rather good aspects to this license.
>
>     1.6     Licensees Rights to Enforce.  You may have the right to
>     enforce the obligations of Other Licensees under the License, and
>     the Original Developer hereby grants You that right as part of the
>     License, subject to the limitation that the Original Developer may
>     not be made a party to any suit brought by You in that regard and
>     that Your right to enforce this License will not include any
>     circumstance where the Original Developer is a necessary or
>     indispensable party or is otherwise required to be a party to an
>     action or other proceeding.

Simply because a license says that doesn't mean the court will allow the
licensee to have standing to sue under the copyright.

> The relevant language appears to be 17 USC 501(b):
>
>     (b) The legal or beneficial owner of an exclusive right under a
>     copyright is entitled, subject to the requirements of section 411,
>     to institute an action for any infringement of that particular right
>     committed while he or she is the owner of it. The court may require
>     such owner to serve written notice of the action with a copy of the
>     complaint upon any person shown, by the records of the Copyright
>     Office or otherwise, to have or claim an interest in the copyright,
>     and shall require that such notice be served upon any person whose
>     interest is likely to be affected by a decision in the case. The
>     court may require the joinder, and shall permit the intervention, of
>     any person having or claiming an interest in the copyright.

I read the second and third sentences to mean only that, for example, if the
beneficial owner sues, the court may require joinder of the legal owner, or
of anyone else owning an exclusive right under the copyright.  The rule for
intervention is:

     "Upon timely application anyone shall be permitted to intervene
     in an action: (1) when a statute of the United States confers
     an unconditional right to intervene; or (2) when the applicant
     claims an interest relating to the property or transaction which
     is the subject of the action and the applicant is so situated that
     the disposition of the action may as a practical matter impair or
     impede the applicant's ability to protect that interest, unless the
     applicant's interest is adequately represented by existing parties."

F.R.C.P. 24(a).

> > If a contributor grants you a license to his Contributed Code under the
> > GPL, then you have the right to use that code as part of a derivative
> > work including your own code, as long as your Larger Work is also
> > licensed under the GPL.  Why isn't that sufficient?
>
> This is a crux question:  is the GPL in and of itself sufficient
> protection to both contributors and code maintainers, including in the
> instance of a corporate code maintainer, or isn't it:
>
>     To be sufficient, or not to be sufficient.  That is the GPL
>     question.

I, too, await the wisdom of others on this point.

/Larry Rosen