A post about SqueakL
Andrew Greenberg
werdna at mucow.com
Wed Sep 14 17:23:56 UTC 2005
A number of questions were raised concerning the grant of license
rights under open source licenses, and whether or not they can be
revoked or amended at will. This is deeply complicated under
Copyright law, because the licenses in question give express rights
to make derivative works, and with that comes additional issues.
Even the purest cases are complicated, far more complicated are the
actual licenses in play -- even simple MIT.
First: all a license is, is a covenant not to sue for infringement of
exclusive rights. A contract including a license may have other
provisions, and the longevity of the license may depend upon other
provisions, but at the end of the day, the LICENSE is an abstract
thing, different from any writing or contract or other abstract thing
related to licenses: a conditional or unconditional covenant not to
sue. All the rest is just plain ole' contract - applying state law
in the US.
The license, however, under US law has two federal components: (i) if
the license is an exclusive license, it is not enforceable unless
signed by the parties; (ii) the grant of rights is a grant of some
slice of the rights set in Section 106 of the Copyright Act,
including essentially the right to reproduce, to distribute and make
derivative works.
Open source licenses are rarely exclusive, but the grant of a right
to make a derivative work has an interesting consequence. A *NEW*
copyright is created in the derivative work (which is the whole thing
including the changes), and unless a contract provides otherwise, the
*NEW* copyright will be owned by the deriver (or the commissioning
agent if a work made for hire), not the owner!
Now, lets take some licenses in pure contexts:
1) Phone call: "Hey jim, great game last night. By the way, you
can reproduce and distribute CODER as you please -- you told me you
just wanted to mess around with it. No problem, just like I tell
anybody else, go ahead."
Not an exclusive license, so it doesn't have to be in writing. Not
a right to make derivative works, so not complicated. An oral
license is enforceable, although there are risks associated with the
use, since ultimately a jury will decide whether the conversation
took place. But if the jury believes the conversation, the legal
effect is the grant of a license.
2) Phone call: "Hey jim, I hate what you did yesterday.
Everything is off on your reproducing and distributing CODER. Stop
it or I will sue. I will follow up in a writing and demand letter
from my lawyer."
Licenses under law are revocable at will, absent certain exceptions.
Although state law governs that question, and it may vary state to
state. The fact that there was no reasonable appreciation by the
grantor that Jim would rely on perpetual rights, and change his
position as a result (he just wanted to "mess around") is a strong
indication that the license is probably revocable.
Probably not necessary to revoke in writing, but you face proof
problems unless the jury believes the revocation occurred. Some
states require revocations of offers to be in writing, and others
require it in writing when the license was in writing.
Assume it were otherwise. That Jim reasonably relied upon the
assumption the license would be perpetual, hired a few people and
bought machines to use CODER. Further assume that the grantor could
be expected to know that Jim's conduct were reasonable. In most
states, these facts could be grounds for equitable estoppel that
would preclude revocation of the license. Other grounds to make an
otherwise revocable license irrevocable include the transfer of
valuable consideration or an interest in the work for the license.
Again, state law governs and I wouldn't presume that the result in
one state would be the same as another, let alone from nationality to
nationality. Signed writings can make a license irrevocable in some
cases.
Note that revocation of a license is sometimes legally different from
its termination. A license once revoked, is the legal effect of
dissolving the license. ANY USE THEREAFTER is infringment, period --
and because of the knowledge of license and revocation -- willful to
boot. A license may be terminated under various circumstances set
forth in an agreement, which may require conditions to be satisfied.
It is possible in some termination cases that a declaration by a
court as to its termination is required before an infringement occurs.
Finally, assume that the license was broader, permitting not only
reproduction and distribution, but also derivation. Assume I create
a derivatie work: FORKEDCODER. Your termination or revocation was
effective AFTER FORKEDCODER was written. What is the effect of the
termination of the license to CODER? Quite possibly none at all.
possibly the death of the fork. this is a generally cutting edge
area of the law, and we won't know until courts have decided.
The long and short of this, is that these questions are AMAZINGLY
fact and jurisdiction dependent. It would be ridiculous for a non-
lawyer to presume, without specific advice of counsel who has
analyzed the particular facts, they knew the answer one way or the
other.
End result: It is risky in the extreme, to presume without sound
advice that a license is irrevocable -- either as grantor or grantee.
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