Here is a short article on Intel’s recent run-in with a company accusing one of Intel’s open source projects — and its downstream users — of patent infringement.
The Free Software Foundation announced on June 1, 2021 that it would no longer require and assignment of rights from contributors to GCC (GNU C Compiler) project. Instead, it will require a DCO (Developer Certificate of Origin), following the practice lead by the Linux Foundation for the kernel.
This move brings the GCC project into line with community practice, and it’s a welcome development. Over the years, various contributors had refused to agree to the FSF’s contribution assignment agreement, a document that is unusual in both substance and form. As to substance, while assignments for contributions were more common a couple of decades ago, today they are quite rare; most open source projects today either use license in=out (with or without a DCO), or a CLA with a non-exclusive license grant. As to form, the FSF’s assignment contains some truly unique language about patents* that patent licensing lawyers find perplexing, causing companies to balk at making contributions to FSF projects simply because they can’t parse the terms.
Given the widespread rejection by open source communities of CLAs, the FSF’s outlier stance on its contribution terms over the years has been surprising. Its premise that “Our ability to enforce the license on packages like GCC or GNU Emacs begins with a copyright assignment” was never exactly correct. It’s the kind of statement that looks good on paper, but doesn’t make so much sense in practice. It is true that only a copyright owner or exclusive licensee can enforce a copyright. See HyperQuest, Inc. v. N’Site Sols., Inc., 632 F.3d 377, 382 (7th Cir. 2011). But that’s because a court does not want to be asked by a plaintiff to enforce a copyright, when other parties, who are not before the court, have the right to grant licenses to the defendant and inoculate the defendant from the claim.
The FSF’s assignment document, like most (of the few) that are still used in open source contributions, grants a broad license back to the assignor. (“Thus, we grant back to contributors a license to use their work as they see fit. This means they are free to modify, share, and sublicense their own work under terms of their choice.”) So, the assignment does not solve the court’s problem. In effect, an assignment with a broad license back is less like an assignment, and more like a non-exclusive license (or like joint ownership, a structure universally detested by practicing IP lawyers, because it will often cause a court to refuse to hear the infringement claim).
In practice, owning most of the code is enough to bring a claim. Most open source enforcement takes place notwithstanding that one entity does not own every line of code in the code base. Assignments in CLAs, therefore, are not a best practice, because they are both discouraging to contributors, and not necessary to engage in enforcement.
This move should pave the way for more contributors to feel comfortable contributing to GCC.
*Note: The exact text of the FSF assignment document is not readily available online, though I have seen it before in my practice. If I find it, I will update this post and quote the odd patent language.
Congratulations to the Audacity development team and Muse Group. In two significant developments, Audacity version 3 was released in March 2021 – its first major update in many years – and Muse Group announced that it has acquired the Audacity project and will take it forward as a free and open source project.
Audacity is a free and open source digital audio editing and recording application. Started by Dominic Mazzoni and Roger Dannenberg, it has clocked over 200 million downloads during its lifetime, and has been translated into dozens of languages. Eric Raymond once wrote of Audacity: “The central virtue of this program is that it has a superbly transparent and natural user interface, one that erects as few barriers between the user and the sound file as possible.” High praise, indeed.
Muse Group already runs the popular open source MuseScore notation software project and distributes the Tonebridge guitar effects app, as well as offering the Ultimate Guitar Tabs service – tools known to working musicians everywhere.
Here is more about the announcement from the Audacity site.
On a personal note, I had the pleasure to assist the Audacity team in this matter. Audacity has long been one of my open source favorite projects, one with an impressive technical quality and community. I am glad to see it get the resources and support it needs to continue to thrive and grow.
The US District Court for the Western District of Pennsylvania issued an injunction, on March 11, 2021, in PYROTECHNICS MANAGEMENT, INC. v. XFX PYROTECHNICS LLC and FIRETEK regarding the copyright protection of “command codes” in a fireworks system.
Pyrotechnics Management filed suit July 24, 2019, alleging copyright infringement, tortious interference with prospective contractual relations, and unfair competition. fireTEK filed a motion to dismiss on October 15, 2019, and the motion was denied on October 15, 2019. Then, Pyrotechnics filed for an injunction.
Pyrotechnics makes and sells digital pyrotechnics firing systems used to create complex fireworks displays, under the brand name “FireOne.” Those products incorporate the command and control protocols.
The FireOne field modules use the protocol to communicate with a FireOne control panel. FireTEK is a competitor of Pyrotechnics in the distribution and sale of digital pyrotechnics firing systems. FireTEK admitted at the hearing that it had created its router by reverse engineering FireOne’s control panel.
FireTEK is owned by Laurian Antoci, from Romania, and had been selling firing systems successfully for some time. YouTube videos like this one are available describing its system, and they are kind of fun to watch even if you aren’t a pyrotechnics enthusiast. (Random note: This video shows how to sync a fireworks show to music with Audacity and a few other tools. Cool stuff.) The court commented that a Youtube video demonstrated a fireTEK Router
controlling a FireOne field module using the FireOne protocols. But that wasn’t at issue — fireTEK admitted copying the protocols.
The case concerned whether the command codes were copyrightable expression, and if so, whether a defense, such as fair use, merger, scene a faire would make the infringement claims unlikely to succeed. These defenses are all common in cases involving copyright claims for material at the edge of the law’s protection.
The Court’s Injunction
To win an injunction under US copyright law, Pyrotechnics had to show a likelihood of success on the substance of its copyright claim, as well as meet certain other criteria that would justify the court awarding injunctive relief.
The court stated that “an expression of alpha-numeric characters that are original with Plaintiff and that do not flow from considerations that are external to the author’s creativity” and were created “not according to hardware standards, mechanical specifications, software standards, computer design standards, industry programming practices, or market factors.”
The court said, “Moreover, Pyrotechnics created the copyrighted command codes with attention to unique expressions that were not used by others
and were not intuitively obvious choices. External factors did not dictate the design of the FireOne Protocol such that it is lacking in originality…The precise alphanumeric expression selected by Pyrotechnics—the method by which it
chose to represent a digital 1 or a digital 0 within its system—also is uncommon, original, and intentional.”
The court was not convinced by a scene-a-faire argument, such as the one that succeeded at trial in 2016 in Cisco Systems v. Arista, a case that the EFF called copyright abuse of standard software protocols. (The jury verdict was appealed, and eventually vacated pursuant after a settlement following remand by the Federal Circuit.) So in other words, the result here is even worse copyright maximalism than in that case. The court in this case relied on the 2018 Federal Circuit decision in Oracle America v. Google for the proposition that “nothing prevented the Defendants from writing their own code to achieve the same result” and therefore a merger defense did not apply. Also, based on Oracle, it rejected a a fair use defense based on interoperability.
This judgment reflects a troubling trend of recent cases undermining fair use and similar defenses. Copyright was never meant to protect things like digital command codes. We are losing, by a death of a thousand cuts, the peace of mind that Lotus v Borland and Computer Associates once afforded innovators. And this loss is, to a great extent, being throttled by the CAFC — a court whose special subject matter jurisdiction was created to address patents, not copyrights. A few years ago it was conventional wisdom that appending a patent claim to a copyright claim was a “best practice” for plaintiffs, in order to engage in forum shopping on appeal, to the CAFC. Now, it seems, it may no longer be necessary, as we see a district court is following the CAFC’s apparent view that copyright protects just about everything.
What is a Command Code?
Now, you may wonder what these highly protectable bits of expression might be, as a result of which, all of those amateur pyrotechnicians cannot use their cool FireTEK controllers. Pyrotechnics filed a copyright registration for the Protocol (TX 8-738-709), styled “FireOne Firing System Abridged Command Format Version 1.0.”
A publicly available document from the case, Document 94-14 Filed 08/24/20, describes the command codes as having the format of a 12-byte number, with certain bytes set to indicate they are on or off.
One of the elements the court pointed to as expressive was that the Mark was used as a one and the Space as a zero. Which is basically…a binary code? So essentially, these so-called copyrightable elements are 12 bytes of data, with the bytes set as on or off in order to control the function of the firing system. That this would be a copyrightable work is dubious. It’s a little hard to believe that such a thing was ever registered by the Copyright Office, and one suspects that the material registered by the copyright office was not the firing codes, but the documentation describing them.
Then the World Changed
Most infringement claims that result in an injunction do not go to trial, because at that point, the defendant is unlikely to avoid a judgment as to the infringement claim, or the disruption to its business is already so severe that the claim is not worth fighting. So, it is common for cases to end or settle in the plaintiff’s favor after an injunction issues. In other words, even though the merits of the infringement claim have not yet been fully heard by the court, the case is probably over.
But as you may have read, the Supreme Court issued an opinion this week in Oracle America v. Google — just after the Pyrotechnics case was published, about the boundaries of copyright protection for the structure and sequence of APIs. It’s unclear at this point whether the Pyrotechnics court’s reliance on the now overturned Oracle decision by the CAFC will result in further process, such as an appeal. At least it represents a re-balancing of the relative merits of the case.
An interesting case was handed down by the Federal Circuit on February 25, 2021, discussing some software licensing issues seldom mentioned in case law. Bitmanagement Software GMBH v. United States was a dispute that involved the use of certain proprietary software, BS Contract Geo, a 3D visualization product.
The facts surrounding the license of the software are complex, but laid out in detail in the opinion. The owner of the software, Bitmanagement, and the user of the software, the US Navy, never entered into a direct or express software license. The contracting process, which took place via a reseller called Planet 9, stalled, when it was determined that the Navy’s system needs were incompatible with Bitmanagement’s software management keys. In the end, the Navy paid for some copies, but engaged in “massive free copying” (see concurring opinion, p.27) of the software with no express license to do so.
Central to the court’s finding, the parties had agreed that as a condition to the license, the Navy would use Flexera’s license-tracking software FlexWrap to monitor the number of simultaneous users of the software. It noted that the Claims Court found that Bitmanagement agreed to the licensing scheme “because Flexera would limit the number of simultaneous users of BS Contact Geo, regardless of how many copies were installed on Navy computers.” (p. 20) But the Navy did not use the FlexWrap tool as agreed. The court held that use of this management software was a condition of the license, even though the license was not in writing. The court said, “This is one of those rare circumstances where the record as a whole reflects that the only feasible explanation for Bitmanagement allowing mass copying of its software, free of charge, was the use of Flexera at the time of copying.” (p.21)
The case contains interesting statements about implied licenses to software. Implied patent licenses are a big unsettled issue in open source licensing, but the court’s statements on implied licensing in this case are not readily transferable to that context, which typically involves an express copyright license with no express patent license (such as in the BSD license or GPLv2).
The court in this case cited the settled rule that “the existence of an express contract precludes the existence of an implied-in-fact contract dealing with the same subject matter,” (citing Seh Ahn Lee v. United States, 895 F.3d 1363, 1370 (Fed. Cir. 2018) (quoting Bank of Guam v. United States, 578 F.3d 1318, 1329 (Fed. Cir. 2009)) but said that in this case, there was no express license between the copyright owner and the user, due to the license having been negotiated via a reseller. It cited Peter v. United States, 6 Cl. Ct. 768, 780 (1984) for this proposition: (“The rule that the existence of an express contract preempts an implied contract has full effect only when the parties to both contracts are the same.”).
The case also underscores that a copyright owner’s claim for use that exceeds the scope of a license and violates its conditions can be a copyright claim rather than a contract claim. The court said “the Navy’s failure to comply with the Flexera condition of the license renders the Navy’s copying outside the scope of that license. Such unauthorized copying is copyright infringement.” Interestingly, the court cited the seminal US case on open source licensing, Jacobsen v. Katzer, 535 F.3d 1373, 1380 (Fed. Cir. 2008), to support this conclusion.
The procedural posture of this case were unusual; it was an appeal of a case in the Court of Federal Claims, a specialty court for lawsuits regarding, among other things, federal procurement disputes — whereas most software license disputes come from state or federal trial courts, and are therefore less likely to be appealed to the Federal Circuit. And its facts are unusual; most software licenses are written rather than merely implied, and where they are not written, their conditions would typically be very difficult to distinguish from their covenants. But it is always good to see a well-reasoned case about these issues.
I appeared recently on a podcast by Flagsmith, an open source feature flag and remote config solution, and hosted by Ben Rometsch. We discussed the licensing and business models emerging today for commercial open source developers.
In June 2019, the US House of Representatives Committee on the Judiciary initiated a bipartisan investigation into competition in digital markets, spearheaded by the Subcommittee on Antitrust, Commercial and Administrative Law. In its investigation, the Subcommittee examined the business practices of Amazon, Apple, Facebook, and Google. After over a year of investigation, subcommittee issued a report last week criticizing various business practices, and noting that “each platform now serves as a gatekeeper over a key channel of distribution.”
Among many other details, the report mentions issues surrounding the dominant market position of Amazon Web Services (starting on page 315). It observed, “The COVID-19 pandemic has underscored the centrality of cloud computing to the functioning of an increasing swath of businesses—highlighting how cloud services have come to resemble critical infrastructure.” (page 321).
Notably, on page 327, the report mentions the recent tension between commercial open source businesses and AWS. “Amazon’s practice of offering managed service versions of open-source software has prompted open-source software companies to make defensive changes, such as closing off advanced features and changing their open-source license to be less permissive…. Amazon’s conduct has also reduced the availability of features in open-source software. Confluent, Redis Labs, and CochroachDB, along with several other open-source software vendors, have made similar license and business model changes, reducing the level of access to their software.”