# Re: RES: What makes software copyrightable anyway?

On 5/14/05, Raul Miller <moth.debian@gmail.com> wrote:
> On 5/14/05, Michael K. Edwards <m.k.edwards@gmail.com> wrote:
> > You would be referring to your excerpt from Sun v. Microsoft, I
> > suppose -- a case to which I had previously drawn your attention, and
> > whose import your myopic quotation (go back and look; I believe that's
> > a fair word to use) got completely backward.  Specifically, you
> > selected a fragment of the circuit court's summary of the district
> > court's decision -- which the circuit court demonstrated to be
> > incorrect, vacated, and remanded to the court of fact to try again.
> > When I quoted the relevant two paragraphs of the appeals court's
> > decision in reply, you copied the first sentence and said "Exactly",
> > completely ignoring the substance of the quoted paragraphs.
>
> From my point of view, I was dismissing them as tangential or
> irrelevant to the point I was making.

You really think that it's tangential or irrelevant that the one time
that you used a quotation from an appeals court to bolster your case,
you were actually quoting the error that the district court had made,
leading to the reversal of its decision?

> In that specific case, the appeals court was not claiming that the
> district court had drawn a conclusion which by its nature must
> be incorrect.  The appeals court was asserting that the district

That's false.  The appeals court asserted that the district court had
failed to follow the prescribed procedure, which is to analyze the
validity and scope of the claimed license, and unless it can be shown
that the license did not apply (e. g., was terminated for material
breach or authorized copying but not derivation), to deny all claims
under copyright law.  And therefore the district court's judgment was
wrong.  Period.

> > I'm not really trying to slam you here, which would be rather
> > inappropriate given that I am choking on crow just at the moment.
> > Rather, I am pointing out a specific case where you seem to have
> > failed to follow the legal argument.  My assumption is that you are
> > capable of so doing but have read highly selectively under fire.
>
> My impression here is that you're overgeneralizing.  I'll
> try to be more specific about some of the generalizations
> I think you've made which I think are incorrect, but first
> I'm going to make a general statements myself.  This
> needn't always true in all cases, but it's true enough that
> I think it's worth considering:
>
> The more text you need to quote from a court decision to
> make a point, the more specific the context is, to that case.

That is by no means necessarily true; there is a very clear
distinction in US law between points of fact and points of law, and
points of law are by definition not specific to the circumstances of
the case under review.  And in any case, I don't believe I've needed
to quote more than two paragraphs from any cited opinion in order to
apply it to the present discussion.

[snip]
> Likewise, a small body of existing case law grounded in
> the law of contracts (fair exchange) does not mean that
> the law of  torts (fair morals) is irrelevant.

Almost every case I have cited has involved both tort -- i. e., the
statutory tort of copyright infringement -- and contract law.  There
is a giant body of case law, from which I am quite confident you will
continue to be unable to extract any appellate decision from the last
century (and precious few decisions at district court level) which
does not follow the routine sequence of analysis I have described, and
which you can watch being followed in each appellate case cited as
evidence of where the boundary lies.

> In this case, the court itself had the opportunity to assert
> that the law of contracts must always apply in copyright
> cases.  They didn't make that claim.  Instead, they were
> careful to state that that claim needn't be true for the
> general case.  They were careful to allow that it might
> even be true in this case.  They limited themselves to
> asserting that the district court hadn't described their
> reasoning in this case.

You just aren't reading that correctly.  The appeals court spelled out
how and why the contract analysis must be performed in order to decide
whether the defendant's conduct fell within the scope of a valid
license -- invariably a term in a contract, written or implied -- and
vacated the district court's decision for failing to perform that
analysis.

> > All right, let me be more precise.  Have you cited any case law in
> > this entire discourse which I didn't cite to you first -- that is,
> > have you added any case to the set of precedents under discussion?
>
> No, not in any of the threads this past week.
>
> > And have you cited any case law which anyone other than yourself
> > believes to actually support you on a point where we disagree?
>
> That's a red herring -- specifically it's an an attempt to use the
> bandwagon fallacy.

Oh, it doesn't _prove_ anything -- but it might just be a cue to you
that your arguments aren't holding water in more eyes than just mine.
(Heaven knows that I don't take the absence of people in a given forum
who agree with me as proof of anything.  :-)

> Mind you, it's entirely possible that I've made mistakes -- I do make
> mistake, all too often.  And, if people [including yourself] point out
> to me that I've made a mistake I do respect that.  But only to the
> degree that I understand their point.  And, even there, I might not
> agree with their point.  But that's doesn't seem to be what you're

I am asking you to seriously consider whether, if you weren't arguing
publicly with someone as annoying as you find me, you might have
realized by now that the real live law doesn't fit your preconceptions
as instilled by the FSF.

> > It is very hard for me to believe that you are reading these
> > precedents with the intention of understanding the legal reasoning
> > they contain.  Allow me to challenge you to read and correctly
> > understand the implications of this single paragraph from Sun v.
> > Microsoft -- the one decision we have both cited.
>
> I think you're trying to set us up for another false dilemma, but
> I'll give it a shot.
>
> > [7] Whether this is a copyright or a contract case turns on
> > whether the compatibility provisions help define the scope of
> > the license. Generally, a "copyright owner who grants a non-
> > right to sue the licensee for copyright infringement " and can
> > sue only for breach of contract. Graham v. James , 144 F.3d
> > 229, 236 (2d Cir. 1998) (citing Peer Int'l Corp. v. Pansa
> > Records, Inc., 909 F.2d 1332, 1338-39 (9th Cir. 1990)). If,
> > however, a license is limited in scope and the licensee acts
> > outside the scope, the licensor can bring an action for copy-
> > right infringement. See S.O.S., Inc. v. Payday, Inc., 886 F.2d
> > 1081, 1087 (9th Cir. 1989); Nimmer on Copyright , S 1015[A]
> > (1999).
> >
> > Do you understand from this paragraph that a license is always a term
> > in a contract, and that, given a valid license covering the scope of a
> > licensee's conduct, the only legal theory under which the licensor can
> > successfully sue is breach of contract?
>
> That's not what it says.  Here's the basic structure I see:
> "Generally, ...If, however, ..."
>
> Basically, it's saying that if someone has been granted permission
> to do something they can't be sued unless they're acting outside
> the scope of that grant of permission.

No, it says that there's two relevant kinds of suits -- breach of
contract and copyright infringement -- and that the latter recourse is
not available to someone who has granted a license of sufficient
scope, even if the licensee is in breach of return obligations under

> I don't see how this is in any way surprising, or how you get from
> there to "a license is always a term in a contract".

<quote>
use his copyrighted material waives his right to sue the licensee for
copyright infringement " and can sue only for breach of contract.
</quote>

What do you suppose "can sue only for breach of contract" means?  It
means that that non-exclusive license is part of a contract!  This is
so basic to the history of copyright that few modern precedents need
to say it explicitly.  Here's a case that gets pretty close, though --
citations from Effects Associates v. Cohen (9th Circuit, 1990):

<quote>
granted orally, or may even be implied from conduct." 3 M. Nimmer & D.
Nimmer, Nimmer
on Copyright <section> 10.03[A], at 10-36 (1989). Cohen relies on the latter
proposition; he insists that, although Effects never gave him a written or oral
footage in "The Stuff."
...

[4] The district court agreed with Cohen, and we agree with the
district court: Oddo
controls here. ...  Accordingly, we conclude that Effects impliedly
granted nonexclusive
licenses to Cohen and his production company to incorporate the
special effects footage
into "The Stuff" and to New World Entertainment to distribute the film. [FN7]

FN7. Plaintiff argues that an implied license is an equitable remedy, akin to
estoppel, for which Cohen does not qualify because he hasn't paid in full the
agreed-to price for the footage. We reject this argument. Plaintiff cites no
authority for the proposition that an implied license is equitable in
nature; it
seems to us to be a creature of law, much like any other
implied-in-fact contract.
See, e.g., Landsberg v. Scrabble Crossword Game Players, Inc., 802
F.2d 1193, 1199
(9th Cir.1986).  ...
</quote>

And before you go telling me that the GPL is in writing and therefore
_any_likelihood_whatsoever_ that any court in the US or any other
jurisdiction would treat the GPL as anything other than an offer of
contract.  I've got bad news for you and the FSF:  there is not now,
nor has there ever been, any basis for belief that copyright law
contemplates the creation of licenses by a mechanism other than
contract.

> >  Do you understand what it means for a license to be "limited in
> > scope" and how this can result  in a cause of action for copyright
> > infringement even in the presence of a valid license for other
> > conduct?
>
> Sure -- in this context, "scope" refers to an range of actions.
> Specifically, the actions which are allowed in the context in
> question.

Correct.  A range of actions that the licensee is permitted to take,
so long as the license is valid.  "Scope" does _not_ refer to the
return obligations assumed by the licensee as part of the same
contract.  To obtain satisfaction from a licensee who isn't abiding by
those obligations, the licensor must sue for breach of contract, not

> > Are you at least willing to take seriously my assertion that this is
> > absolutely critical to understanding the legal significance of the
> > GPL?
>
> There's some things that you've said here which I do not take
> seriously.  There's other things you've said here which I do
> take seriously.  Since, in this context, the word "this" could
> legitimately refer to either, my answer is: no and yes.

So strip away the cruft and tell me:  what do you take seriously here?

> > Will you acknowledge that, if it is an ironclad point of law in
> > every relevant jurisdiction that licenses are terms in contracts, you
> > (and everyone who uses and contributes to Free software) ought not to
> > be hoodwinked by the FSF's oft-repeated but false claim that the GPL
> > is a creature of copyright law?
>
> That's a pretty big if, and one I do not take seriously.  However, if
> somehow you did show that it was true then I would agree that it
> was true.

So what do I have to do for you to show that it is true?  Citations
from case law and major law references such as Nimmer and Corbin don't
seem to be doing the job.  Is there any authority you would
acknowledge other than a public retraction from Eben Moglen?  Do I
have to file an amicus curiae brief in the Wallace v. FSF court?  Do I
have to file my own case for declarative relief and then appeal my own
court success all the way to the U. S. Supreme Court?

> > > Complex question.  [But I have, in fact, spent a fair amount of time
> > > studying the laws in question, and precedents.]
> >
> > Studying them with the aim of understanding their methods of analysis
> > and their implications for future cases, or of finding some
> > microscopic loophole through which to shove the absurd conclusions in
> > the FSF FAQ?  This is not a rhetorical question; this is a serious
> > invitation to you to consider whether you might have been misled on
> > some simple, basic issues such as whether the GPL must be construed
> > under the rules of contract law (and for that matter, whether that's
> > exactly what happened in Progress Software v. MySQL).
>
> This is getting pretty repetitious on the question of whether or not I'm
> capable of understanding what I read, so I'm just going to focus on
> Progress Software v.MySQL.
>
> As I understand it, we have a preliminary injunction in that case, and
> the parties settled out of court.  Since the rules for preliminary injunctions
> are different from the rules used to resolve trials, you need to be very
> careful when trying to understand the meaning of the precedent.

In the name of all that's holy, the preliminary injunction was on
TRADEMARK GROUNDS.  The case for preliminary injunction on
GPL/copyright grounds was fully considered and DENIED.

> Also, as with any case, the precedent is specific to that trial.  The
> court is not obliged to consider evidence and arguments which
> were not presented at that time.

The argument for "automatic termination", and the argument that the
GPL is a "grant of license under copyright law" rather than an [offer
of] contract, were presented, considered, and tossed in the

> It's entirely possible that I've overlooked something important about that
> case which means that I'm wrong about understanding of the specific
> condition in which that case exists   But that preliminary injunction would
> still be only a preliminary injunction and that case would still be only
> that case.

Yeah, and questions of fact must be considered de novo at each trial,
so it is in fact impossible to obtain a binding "precedent" with
regard to construction of the GPL's terms.  But if you want to be
honest about how that court ruled, you're going to have to face the
fact that Judge Saris did not use the standard of preliminary
injunction that would have applied if she were working under a

> And, I doubt very much that the judge presented concluding remarks
> stating "the only legal theory under which any licensor can
> successfully sue is breach of contract".

She presides over a court of fact, and making that sort of statement
isn't her job.  Nor is that a true statement.  The only legal theory
under which any licensor can successfully sue, when the licensee's
conduct falls within the scope of a valid license, is breach of
contract -- in any court which recognizes the precedents cited in Sun
v. Microsoft, or their jurisdictionally appropriate equivalent.

> > > From my point of view, most of our differences have to do with
> > > quantification issues.  (Or, if you prefer, existential issues --
> > > basically, distinctions between "some cases" and "all cases".)
> > >
> > > Need I remind you of your assertion that collective works and
> > > derivative works must be considered disjoint sets?
> >
> > An assertion which I have demonstrated to be correct under both
> > 17 USC and the Berne Convention; which others have exhibited as
> > correct in continental Europe and in Brazil; and which is consistent
> > with an overwhelming corpus of US case law in which a defendant
> > who is licensed to create one, and instead creates the other, is
> > found to have "exceeded the scope of license" and thus to have
>
> An assertion which you yourself seem to have contradicted.
>
> If derivative works and collective works are disjoint, you could not
> have a work which is both -- there would be no such thing as a
> derivative of a collective work.

You are saying that if x \in C and C \intersection D = \null then d(x)
\intersection C = \null.  Do you see the error here?

> At this point, my best guess is that you don't understand what
> "disjoint" means.  My apologies if you do, but allow me to
> go over this point:
>
> If set A is disjoint from set B then you can't have any elements
> which appear in both sets.  In this context, the existence of a
> work which is a derivative of a collective work shows that
> derivative works are not disjoint from collective works.

No, it shows that the operation of "taking a derivative [work]"
doesn't preserve the property "is-a-collective-work".

> Or are you claiming that if I make a derivative of a collective
> work (let's say that the collective work is the 2005 print edition
> of the encyclopaedia britannica, so we have a concrete
> example) that it always ceases to be a collective work?

If you are creating a derivative work of a collective work (by
applying the process of adaptation, translation, etc. to the whole)
then the result is [technically] not a collective work -- it's a
derivative work of the pre-existing collective work.  On the other
hand, if you are creating derivative works of the component entries
and then freshly "selecting and arranging" them, then the result is a
collective work.

In practice, you could reach pretty much the same text by, say,
translating individually and then collecting, or translating the
collection -- but what matters is that in either case, the same
license is needed with respect to the same copyrights held by the same
people, namely, the right to publish translated articles within a
similarly selected and arranged collection.  The holder of the
"collective work" copyright on the collection can't authorize the
translation of the individual articles without having been granted
Nor can the copyright holders on the articles band together and
authorize a collection of translated articles that infringes the
"selection and arrangement" copyright of the original collection.

> For that matter, would you claim that the 2005 print edition of
> the encyclopaedia britannica is not a derivative of the 2004
> print edition?

I would claim precisely that.  I would claim that the 2005 edition is
a collective work, containing a different selection of articles from
the 2004 edition.  The reason that only the copyright holders on the
2004 Brittanica-as-a-collective-work can authorize the 2005 edition is
that it copies most of, and therefore infringes on, the
selection-and-arrangement creative expression in the 2004 edition.

> If you agree that these cases can legitimately be recognized
> as derivatives, how do you rationalize your claim that derivative
> works and collective works are disjoint sets?

See above.  A collective work is the product of selection and
arrangement.  A derivative work is the product of translation,
adaptation, revision, etc.  I am perfectly happy to play this game
with you about whether the phrase "disjoint sets" is an overstatement
when it comes to revising an encyclopedia, but you and I both know
that it's a sideshow to distract attention from the fact that Quagga +
NetSNMP + libssl is a collective work, not a derivative work.

> > Or is there something else you wished to remind me about, where that
> > assertion is concerned?
>
> No, let's just work through these specific issues.
>
> We seem to be having problems with basic logic, but perhaps it's
> really problems with what the words mean.
>
> And, my apologies if the problems we're having here are in any
> way the result of my conduct in this argument.

I'm not sure quite what to do with that; but I am treating your
disagreement as, by and large, sincere.

Cheers,
- Michael