SFC Files GPL Enforcement Suit Against Vizio Advancing Novel Legal Theories

Software Freedom Conservancy filed a lawsuit in late October 2021 against Vizio, claiming violation of the GPL and LGPL with respect to its SmartCast TVs. The complaint is here. The complaint is styled first as a claim of breach of contract, and then a claim for declaratory relief.

Lawsuits to enforce GPL are still quite rare, and among them, this one is radically different in its legal structure from those that have come before. In fact, it conflicts with much of the conventional wisdom about enforcement of licenses like GPL, even principles previously enunciated by the Software Freedom Law Center and the Free Software Foundation–who have had their disagreements with Software Freedom Conservancy in the past.

Some of the novel legal arguments include:

  • Breach of Contract and Specific Performance. In the past, almost all community enforcement of GPL has been pled as a claim for copyright infringement. This complaint asks for an order for Vizio to release the source code for the product, which is the main license condition of GPL and LGPL. However, compelling a defendant to comply with a license condition is not a remedy under copyright law. In contract law, any claim for relief other than money damages is a request for specific performance–which is a very rare remedy in contract law.
  • Claim Brought in State Court. As a corollary, almost all claims to enforce GPL in the past have been brought in federal court, which has exclusive jurisdiction over copyright claims in the US. The complaint was filed in Orange County, California. State court lawsuits yield less predictable and consistent outcomes than federal courts–and perhaps more likely to take an unexpected view of novel legal theories.
  • No Author as Plaintiff. The complaint is brought on behalf of SFC as a plaintiff, based on its purchase of Vizio TVs. This is the opposite of past enforcement actions, brought by the copyright owners (and authors) of GPL software. The complaint cites a huge list of GPL code, including the entire Linux kernel, Busybox, coreutils, BASH, and others. None of the authors of these software packages is named as a plaintiff in the suit.
  • Focus on Consumer Electronics. This is no a surprise, but it is worth noting. Consumer electronics have always been the highest risk sector for GPL enforcement. The SFC press release regarding the case emphasizes consumer rights, touching upon allegations of planned obsolescence and the environmental impact of having to replace devices instead of updating them. SFC had previously announced its intention to use its new funding to focus on embedded software and IoT.
  • Declaratory Relief. The request for declaratory relief asks the court, essentially, to declare that the GPL and LGPL are enforceable and have been violated by Vizio. Even if GPL were deemed a contract, it would be a contract between the licensor (i.e. code copyright owner) and the licensee, so SFC appears to be suing based on a theory that it–and everyone–is a third party beneficiary of the contract. This theory is extremely novel. Given the code authors are not parties, this is an end run around the standing requirements for copyright claims.

In sum, the complaint is an effort to re-write the rules of GPL enforcement. While many commentators are hailing it as a boon for free software, it could backfire. Most companies who have adopted GPL software for their products over the last 25 years have done so based on the comfort that enforcement is mostly done informally, and by authors–and that injunctive relief forcing the release of source code has never been ordered as a remedy. This comfort took many years to develop. During the 1990s and 2000s, many companies adopted GPL software with great hesitation, due to fears about the possibility of such remedies. At that time, these fears were mostly fueled by FUD promulgated by anti-GPL companies like Microsoft. But if this new means of enforcement is successful, the fear may re-ignite, and adopters may react by moving away from open source software.

Also, if any member of the public can enforce the GPL, there is a potential for multiple and conflicting lawsuits for each alleged violation–including trolls who do not have the interests of the community at heart, and–as in this case–organizations who do not necessarily have the support of the authors of the software.

At this early stage the result is hard to predict, but it seems unlikely that SFC will be able to succeed on such a great number of novel legal theories. Such a case could be complex, long and expensive. Also, most GPL enforcement claims do not result in substantial litigation, and are settled quickly– often just after the initial complaint. But if not, this lawsuit has the potential of making some very unprecedented law, and substantially disrupting expectations about GPL enforcement.

An update: Vizio moved on November 29, 2021 to remove the case to federal court, alleging preemption. SFC issued an outraged blog post. Neither is remotely surprising.

And I cannot help observing something about this statement from the SFC:

We believe in complete transparency of the copyleft compliance process, and so encourage everyone to read the filings. We’ve even paid the Pacer fees and used the Recap browser plugin, so that all the documents in the case are freely available via the Recap project archives.

According to my calculations, the PACER fees for that document for SFC are somewhere between zero and 80 cents. Here is more about PACER fees and how RECAP (which is very cool) works.

Author: heatherjmeeker

Technology licensing lawyer, drummer, dancer

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