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Re: JMRI case -- Implementation of the Federal Circuit's Opinion

From: Alexander Terekhov
Subject: Re: JMRI case -- Implementation of the Federal Circuit's Opinion
Date: Fri, 09 Jan 2009 18:37:58 +0100

amicus_curious wrote:


> It seems curious to me why you would cite this case.  As far as I can tell,
> RT Computer Graphics sued the Post Office on the basis that their copyright
> was violated due to the Post Office's failure to attribute the source of the
> graphic used on some stamp to the original author.  The finding was that the
> Post Office had not violated the copyright since the requirement to
> attribute was not a "condition precedent" which is the issue in the JMRI
> case, too.

I also like this part:

In addition, prior to the filing of the infringement suit, RT Graphics
never took affirmative steps to terminate the license which it had
granted. This court agrees with other courts which have previously held
that such a measure is necessary on the part of the copyright holder. In
Graham v. James, the Court of Appeals for the Second Circuit stated that
"[e]ven assuming [the publisher] materially breached the licensing
agreement and that [the programmer] was entitled to rescission, such
rescission did not occur automatically without some affirmative steps on
[the programmer's] part." 144 F.3d at 237-38. In Maxwell, the Court of
Appeals for the Eleventh Circuit expressed a similar view: 

[E]ven assuming arguendo that the Miracle's conduct constituted a
material breach of the parties' oral understanding, this fact alone
would not render the Miracle's playing of the song pursuant to
[Albion's] permission a violation of [Albion's] copyright. Such a breach
would do no more than entitle [Albion] to rescind the agreement and
revoke [his] permission to play the song in the future, actions [he] did
not take during the relevant period. 

Like the programmer in Graham v. James and the songwriter in Maxwell, RT
Graphics never formally withdrew previously-given permission which
allowed the alleged infringer to use the copyrighted material. See also
Fosson v. Palace (Waterland), Ltd., 78 F.3d 1448, 1455 (9th Cir. 1996)
(even assuming that movie producer materially breached licensing
agreement to use composer's song in film, composer never attempted to
exercise any right of rescission and summary judgment of noninfringement
of copyright was proper); Cities Serv. Helex, Inc. v. United States, 543
F.2d 1306, 1313 (Ct. Cl. 1976) ("A material breach does not
automatically and ipso facto end a contract. It merely gives the injured
party the right to end the agreement; . . . ."). 

Now, back in February 2008 "David A. Temeles, Jr." <>
("represents businesses on intellectual property, corporate and tax
issues.  In addition to managing his own firm, Dave has practiced with
two of AmLaw's top 100 law firms. He has litigated matters in state and
federal courts resulting in settlements and judgments in excess of
$30,000,000 and has negotiated numerous multi-million dollar business
transfers and technology licenses. Whether your business is in startup,
growth or transfer mode, Dave can provide valuable guidance in
maximizing your potential and avoiding catastrophic pitfalls.") opined:

Sorry guys, another email that was meant for the list but ended up going
through private email... I have put the disclaimer in lower case as John
suggested and incorporated John's reply [noted as: JOHN COWAN Further
Replies] for your edification.


The following discussion is not legal advice nor necessarily an
expression of the author's personal position on the matters discussed.

Please seek the advice of counsel regarding your specific situation.   
Seemingly insignificant facts could dramatically alter the applicability
of the issues discussed to your specific case. scripsit:

> (Even if the court finds that Katzer's license to  
> continue using the software is terminated, what would prevent Katzer  
> from obtaining another license to the software?  Afterall, anyone  
> having obtained the software under the Artistic License could license  
> it to him.)

That seems extreme.  Surely if a copyright license is terminated with
respect to someone by reason of breach of covenant, *every* such license
with identical terms is terminated.  The license comes from the original
licensor, remember (or a contributor with respect to his contributions),
not from a mere verbatim-copy distributor.

Otherwise, we'd have to say that there is no such thing as revocation
of a public license at all.  *Do* you mean to say that?

DAT RESPONDS: It is not inconceivable to me that a court would hold that
certain public licenses that fail to provide for a termination right
cannot be revoked.  Nevertheless, I think you would agree that even if 
a court theoretically determined that my license to a copy of Vista was
terminated, I could go to Best Buy or CompUSA and buy another copy.  
The fact that my license to one copy is terminated would not render 
invalid my license to all subsequent copies that I lawfully acquire.  
What is the basis for arguing that the situation is any different with 
respect to open source software?

JOWN COWAN Further Responds:
OSS licenses exist for a different purpose from proprietary ones.  In
the former, the license exists primarily to defend the copyright, 
whereas in the latter, the copyright is maintained primarily to defend 
the license (by allowing violators to be sued for copyright violation 
instead of, or in addition to, breach of the license).

What is more, a proprietary license is unquestionably a bilateral
contract, whereas OSS licenses are often bare licenses.  If you are 
willing to create a new bilateral contract with me after the first one 
is breached, that's one thing: but if I enter upon your land pursuant 
to a bare license (a notice board, say, saying HUNTING AND FISHING 
PERMITTED) and you then decide to revoke my license and eject me even 
though I am hunting and/or fishing, do you suppose I can take advantage 
of the notice board again and re-enter your land?  I doubt it.

(In civil-law countries, my entering the land pursuant to the notice
board creates a "facio ut facias" contract, so the position is 

DAT Further Responds:
I'll address the whole bare license v. contract issue another day (need
to get to work!).  If the Artistic License is a bare license as you
suggest, the remedy the licensor would seek is not a termination of the 
license, but an injunction prohibiting the licensee from committing 
future acts in violation of the license (and likely seeking monetary 
damages or specific performance related to the past violations).

Returning to my original hypothetical, however, it implicitly assumes
that the bare license argument is out the window.  It treats the 
Artistic License as a contract just like the judge in Jacobsen v. 
Katzer.  If the license is terminated, what would prohibit the former 
licensee from lawfully acquire another license to the software?  Where 
in the Artistic License does it say that past infringers are prohibited 
from obtaining a license?  The answer is nowhere.  Why?  Because the 
Artistic License assumes that an injunction remedy is available - the 
point of an injunction being to secure compliance with the terms of the 
license, not the termination of the licensee's right to use the software
in compliance with the license.  Upon what grounds do you think a judge 
would even have the authority to prospectively bar the licensee's 
future lawful use of the license?  The hunting hypo you mention
is slightly off target in that the landowner likely would not grant the
hunter a new right to enter upon his lands to hunt - yet the licensor
under the Artistic License is inviting everyone in the world to use his
software - without exception for past infringers... scripsit:

> In essence, the OWNER of a particular copy of software is entitled
> to transfer that copy regardless of what the licensor or the license
> agreement.

Quite so. scripsit:

> Let's assume that the court finds that the Artistic License authorizes
> Katzer to make as many copies of the software as he desires.  In fact,
> let's assume that the court finds that the license authorizes Katzer's
> modification of the software and his creation of as many copies
> of the modified version as he desires.  (Arguably, the attribtion
> and change notice requirements are directed to the distribution of
> modified copies or the use of modified copies, rather than the act of
> modifying the software itself).  Let's also assume that the court finds
> that Katzer is the owner of the modified copies.  If this is the case,
> then Section 109(a) arguably permits Katzer to distribute the modified
> copies without the permission of Jacobsen as the copyright holder.

On that rather complex chain of assumptions, then yes: which is another
way of saying "if the license is broken, it's broken".

DAT Responds: I do not think that the chain of assumptions is all that
unrealistic - please see my recent reply to Russ Nelson's comments. scripsit:

> Equitable estoppel  
> "applies both in law and in equity to deny a party the right to plead  
> or prove an otherwise important fact--here, the act of  
> infringement--because of something he has done or omitted to do."  
> Broadcast Music, Inc. v. Hearst/ABC Viacom Entertainment Services, 746  
> F. Supp. 320, 329 (S.D.N.Y. 1990) (Keenan, J.)).

It's awfully shaky ground, though.  We've had it come up before in
dealing with the hypo "What happens if a GPLv2 licensor revokes the 
license?" All past conduct seems clearly safe on general principles, 
and equally all future acts of copying, distributing, modifying are 
forbidden. The gray area where e.e. may or may not operate is in what 
happens to people who are currently in compliance as to their "in-
flight" copies and modifications.

DAT Responds: I do not necessarily agree that EE is on shaky ground or
that it would apply solely to past acts/grants.

BTW, the disclaimer usual on this list is "I am not a lawyer [or: I am
a lawyer but not *your* lawyer]; this is not legal advice."

DAT Responds: I appreciate the tip, but I am very cautious about meeting
ethical requirements and I want to mitigate, to the extent possible, the
risk that someone would take my post out of context and try to use it
against me and my client in litigation.

JOHN COWAN Further Responds:
I understand why you are trying to be safe, but the effect of CAPITALS
is that you are SHOUTING at the people you are trying to talk with.
This is a deeply ingrained synaesthetic reflex for people on Internet
mailing lists.  If you *must* include such a disclaimer, at least write
it in conventional upper and lower case.

DAT Further Responds:
Duly noted and adopted.


(GNG is a derecursive recursive derecursion which pwns GNU since it can 
be infinitely looped as GNGNGNGNG...NGNGNG... and can be said backwards 
too, whereas GNU cannot.)

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