Aggressive Attitude

It was an island of peace in the sea of IP litigation. While companies routinely battle infringement suits in other aspects of IP law, businesses rarely are sued for infringing open source software. This tranquility, however, may be coming to an end. In the past six months, four companies have been accused of infringing the copyrights in open source software.

Verizon Communications, Monsoon Multimedia, High-Gain Antennas and Xterasys Corp. all distributed products containing the open source BusyBox software, but these companies allegedly failed to make their products' source codes freely available to users, as required by the open source license for BusyBox. By failing to comply with the license terms, the companies lost their right to use the BusyBox software. Thus their distributions of the software constituted copyright infringement, according to the complaints in these cases. And these suits are likely just the beginning.

"[The creators of open source software] have demonstrated a new, more aggressive attitude toward enforcement," says Michael Bennett, an IP and technology attorney in the Chicago office of Wildman, Harrold, Allen & Dixon.
Because open source software is widely used in servers, personal computers, PDAs, cell phones and other high-tech devices, almost any business could find itself sued--unless it carefully complies with all applicable open source licenses.

Companies facing open source infringement suits would be in uncharted legal waters. No one knows how the courts will interpret or enforce these licenses. "That's exactly what we will be learning about this year," says Stuart Meyer, an IP attorney in the Silicon Valley office of Fenwick & West.

Policing Compliance
Two main factors attract businesses to open source software: It is usually available for free, and it is easily modified to fit users' needs because its source code is publicly disclosed. However, creators offer the software under licenses that impose certain conditions on users. Any company or individual that uses the software in its products, for instance, must clearly indicate that it is using this software under the relevant open source license. Another typical requirement is that if a user modifies the software, the resulting product is open source software covered by the same open source license. In the past, disagreements about open source software were settled outside the courts because "open source developers want to get along with each other and use each other's software," Meyer says.

Today, however, open source software has spread far beyond its community of supporters to individuals and businesses around the world with no particular interest in the philosophy of the open source movement--they simply want cheap software that works. To ensure that these users live up to the terms of open source licenses, many supporters of open source software feel they must actively police users' compliance with the licenses.

"Our clients want their license wishes respected when people use their software," says Dan Ravicher, legal director of the New York-based Software Freedom Law Center, which prosecuted the four lawsuits on behalf of the creators of BusyBox.


Complex Licenses
The threat of enforcement actions could discourage some companies from using open source software. But that would be an overreaction, according to legal experts. "The lesson is not to avoid open source software, but to really understand the terms of open source licenses," says Jim Thatcher, a software law expert in the Seattle office of Woodcock Washburn.

There are more than 100 different open sources licenses, and Meyer warns that the terms vary wildly. "There are some very real limitations that the licensor may be asking you to make, such as not asserting any patents you may have [in new software] against anyone else," he says.

This restriction on patent rights is found, for instance, in version two of the GNU General Public License (GPL), which covers the majority of open source software, including popular programs like BusyBox and Linux. This version of the GPL provides that if the licensed open source software is combined with user-created code, all of the resulting software is open source and covered by the GPL. So any patented code that is combined with the open source code can be copied and distributed for free. "[These patents] become very difficult to protect, if you can protect them at all," Thatcher says.

Understanding the terms of open source licenses, however, can be a challenge given their complexity. "Some user [could easily] believe it is complying with the GPL, but the [software's] author may believe the user is not in compliance," Thatcher says.

Enforcement Uncertainties
There are also major uncertainties regarding the enforcement of open source licenses. Last August's ruling in Jacobsen v. Katzer highlighted this: A federal district court in California held that violating an open source license did not result in copyright infringement but was merely a breach of contract.

If other courts follow Jacobsen, it would be extremely difficult to enforce open source licenses: Courts routinely grant preliminary and permanent injunctions in cases of infringement but rarely for breaches of contract. "The only law that is currently structured to protect against the theft of open source software is copyright law," says Lawrence Rosen, an open source legal expert in the Ukiah, Calif., office of Rosenlaw & Einschlag. "Otherwise,
companies can ... use it without complying with the license terms."

Ravicher says the judge in Jacobsen simply got the law wrong, but, he adds, this is only to be expected with new forms of licenses. "Several cases in the early '90s found clickwrap agreements to be unenforceable for all sorts of stupid reasons. Then the cases went to appellate courts, and the clickwraps were upheld," he says. It remains to be seen whether the ruling in Jacobsen will suffer a similar fate. The case is now on appeal to the Federal Circuit.

As for the plaintiffs in the BusyBox lawsuits, they've already seen some positive results. Two defendants quickly settled--agreeing, among other things, to pay damages to BusyBox's creators and to comply with the open source license in the future. The remaining two defendants, Verizon and High-Gain Antennas, are engaging in settlement negotiations. "We're pleased with the talks' progress," Ravicher says.

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Steven Seidenberg

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