Let the Games Begin! — SFLC Files First Ever Lawsuit Alleging Violation of the GPL in the US

It was announced earlier today that the Software Freedom Law Center (SFLC) has filed a lawsuit on behalf of two of its clients alleging copyright infringement based on a violation of version 2 of the GNU General Public License (GPL). This lawsuit is significant in that it represents the first lawsuit ever filed in the U.S. based directly on a violation of the GPL.

The complaint was filed in the U.S. District Court for the Southern District of New York against Monsoon Multimedia, Inc. on behalf of Erik Andersen and Rob Landley. Messrs. Andersen and Landley are two of the principal developers of BusyBox, a popular set of open source utilities commonly used in embedded systems and often referred to as “The Swiss Army Knife of Embedded Linux.” Monsoon Multimedia is a provider of, among other things, digital video and multimedia products and technology. It should come as no surprise that Monsoon’s products include quite a bit of embedded software.

The complaint itself alleges that Monsoon has violated the GPL by distributing elements of the BusyBox software as part of Monsoon’s own products without ensuring that each downstream recipient of the products is provided with access to the source code of the BusyBox software. In this regard, the case alleges a fairly straight-forward GPL violation relying on the core “copyleft” requirements of the GPL — namely, that anyone distributing software licensed under the GPL must make a copy of the source code to that software available to recipients of the software. The SFLC claims that Monsoon Multimedia’s own web site publicly acknowledges that Monsoon’s products contain elements of the BusyBox software, but that Monsoon has not provided any recipients of those products with access to the underlying BusyBox source code, as is required by the GPL. The complaint requests that damages and litigation costs be awarded to the plaintiffs and seeks an injunction against Monsoon Multimedia.

While lawsuits have previously been brought in Germany and other countries successfully enforcing the GPL (and even obtaining injunctions against violators of the GPL), this is the first such lawsuit to be filed in a court in the U.S. That said, it is worth noting that this case is still in its very early stages, and we will have to wait for additional facts to emerge as Monsoon responds to the complaint and additional filings are made in the case. At this point it really remains to be seen whether the case will ultimately progress to the point where it results in any binding legal precedent regarding the GPL or whether it will settle out of court. This is, however, likely not the last we have heard from this case. Stay tuned. . .

[For those interested in the details, the lawsuit is titled Erik Andersen and Rob Landley v. Monsoon Multimedia Inc., case number 07-CV-8205 and will be heard by Senior District Judge John E. Sprizzo of the United States District Court for the Southern District of New York.]

Advertisements

7 Responses

  1. First US Court case on GPL – will your security vendor give you access to the open source code it uses?

    Jason Haislmaier is an attorney who has a good blog called Thinking Open. Jason has a good article up called let the games begin …, noting that the first law suit ever filed in the US based upon a violation

  2. The original licensors of GPL’d BusyBox software have no standing to sue for material breach of the GPL license.

    The SFLC complaint drafted against Monsoon Media claims in part:

    “8. Under the License, Plaintiffs grant certain permissions to other parties to copy, modify and redistribute BusyBox so long as those parties satisfy certain conditions. In particular, Section 2(b) of the License, addressing each licensee, states:

    You must cause any work that you distribute or publish, that in whole or in part contains or is derived from the Program or any part thereof, to be licensed as a whole at no charge to all third parties under the terms of this License.”

    A careful review of the GPL license reveals that the intended beneficiaries are “all third parties” [sec. 2(b)] – not the original licensor(s). The complaint asks rescission of the license based on copies of the source code not being made available to potential recipients (“all third parties”).

    In the Monsoon case, in order to claim rescission of the GPL the original licensors are basing their standing to do so on the basis of an injury to “all third parties” such that they do not receive source code. The licensors in their own persons have suffered no “injury in fact” in order to confer standing to sue for breach of contract and rescission. Only the (unidentified) injured third party beneficiaries may sue for the failure to make source code available.

    “Standing” means that a plaintiff has a personal stake in the outcome of a dispute sufficient to obtain judicial resolution of that controversy. The concept focuses on whether the litigant is the proper party to fight the lawsuit, and requires the plaintiff to be injured or have been threatened with injury. In other words, no party is entitled to argue an action unless he himself is adversely affected by it. BLACK’S LAW DICTIONARY, 1413 (7th ed. 1999).

  3. […] relatively broad and gives me a license to cover a number of different areas — and with the recent legal activity around open source licensing, there is no shortage of areas to cover. I am still developing the […]

  4. One of biggest myths concerning the GPL was founded by the Free Software Foundation’s insistence that the “GPL is a license not a contract” or it’s a “conditional license”. Perhaps they are confused concerning the difference between a copyright license’ “permitted scope of use restriction” and a contractual covenant but all copyright license are drafted as contracts.

    The Supreme Court in referring to patents, opined in 1927:

    “No formal granting of a license is necessary in order to give it effect. Any language used by the owner of the patent or any conduct on his part exhibited to another, from which that other may properly infer that the owner consents to his use of the patent in making or using it, or selling it, upon which the other acts, constitutes a license, and a defense to an action for a tort. Whether
    this constitutes a gratuitous license, or one for a reasonable compensation, must, of course, depend upon the circumstances; but the relation between the parties thereafter in respect of any suit brought must be held to be contractual, and not an unlawful invasion of the rights of the owner.”; DE FOREST RADIO TEL. & TEL. CO. v. UNITED STATES, 273 U.S. 236 (1927)
    This principle was held to apply to a copyright license by the Ninth
    Circuit in 1996 (quoting the Second Circuit):

    “Generally, a ‘copyright owner who grants a nonexclusive license to use his copyrighted material waives his right to sue the licensee for copyright infringement’ and can sue only for breach of contract.” Id. at 1121 (quoting Graham v. James, 144 F.3d 229, 236 (2d Cir. 1998) (citing Peer Int’l Corp. v. Pausa Records, Inc., 909 F.2d 1332, 1338-39 (9th Cir. 1990)).”; Sun Microsystems, Inc. v. Microsoft Corp.,. 188 F.3d 1115 (9th Cir. 1996)

    The Eleventh Circuit is in accord with this principle:

    “Implicit in that permission was a promise not to sue for copyright infringement–a promise that at least one court has found to be the essence of a nonexclusive license. See In re CFLC, Inc., 89 F.3d 673, 677 (9th Cir.1996) (“[A]nonexclusive patent license is, in essence, “a mere waiver of the right to sue’ the licensee for infringement.”) (quoting De Forest Radio Telephone & Telegraph Co. v. United States, 273 U.S. 236, 242, 47 S.Ct. 366, 368, 71 L.Ed. 625 (1927)). “; Jacob Maxwell Inc., v. Veeck, 110 F.3d 749
    (11th Cir. 1997).
    The Federal Circuit reaffirmed this holding in 2001:

    “A license is governed by the laws of contract. See McCoy v. Mitsuboshi Cutlery, Inc., 67 F.3d 917, 920, 36 USPQ2d 1289, 1291 (Fed. Cir. 1995) (“Whether express or implied, a license is a contract governed by ordinary principles of state contract law.”).; JAZZ PHOTO, ET AL. v ITC , 264 F.3d 1094 (Fed. Cir. 2001).

    The highly respected Judge Richard Posner of the Seventh Circuit Court of Appeals ruled in 2003:
    “If a breach of contract (and a copyright license is just a type of contract). . .”; In re Aimster, 334 F.3d 643 (7th Cir. 2003).
    This licensing principle — that all intellectual property licenses are a type of contract — was explained to Richard Stallman by Professor Micheal Davis in 1999. See:

    http://lists.essential.org/upd-discuss/msg00131.html

    For the past eighty years intellectual property licenses have been drafted as contracts under prevailing federal case law. The SFLC or the Free Software Foundation have never cited a single legal authority holding an intellectual proerty license to be anything other than a contract.
    Urban legends often suffer a slow, lingering death.

  5. […] Just Like That, The Games End — First Ever GPL Lawsuit Dismissed Just as quickly as it began, the Software Freedom Law Center (SFLC) has announced today that an agreement has been reached to […]

  6. […] are the second and third GPL enforcement lawsuits respectively ever filed here in the U.S. The first such lawsuit, filed against Monsoon Multimedia in September of this year, was quickly settled out of court on […]

Leave a Reply

Fill in your details below or click an icon to log in:

WordPress.com Logo

You are commenting using your WordPress.com account. Log Out / Change )

Twitter picture

You are commenting using your Twitter account. Log Out / Change )

Facebook photo

You are commenting using your Facebook account. Log Out / Change )

Google+ photo

You are commenting using your Google+ account. Log Out / Change )

Connecting to %s

%d bloggers like this: