Hudson Fork and Trademark Dispute

The Register has reported that Oracle is claiming rights in the Hudson trademark, and that those developers forking the project, which is a software build and monitoring solution developed by Sun Microsystems, have no right to use the name. 

This points up yet again the complex issues surrounging trademarks in open soruce projects.  The Register article claims that Oracle does not own the mark, which it calls “nonexistent,” but in fact that seems less than clear; in the US, trademark rights arise from use rather than registration, and thus the lack of a registration does not necessarily mean no ownership. 

The fork happened recently.  “Hudson users had moved big parts of the project off of the Java.net servers owned by Oracle. The mailing list archive and the live mailing list had gone to Google Groups and Nabble while source code had moved to GitHub.”

This follows on the heels of the Open Office parting of ways in Septmber,  previously reported in this blog.

Attachmate Purchases Novell

Novell announced last week that it will be acquired by Attachmate for $2.2 billion.  Novell has been on the auction block for a while and had been entertaining bids by multiple parties, including financial investors and a rumored look by VMWare.  A previous offer share offer was Elliott Management, and investment firm that was one of Novell’s largest shareholders.  The acquisition by Attachmate is a strategic one; Attachmate operates an existing business in the terminal emulation, fraud detection software business.  Here is Novell’s 8K filing on the merger.  Novell announced that it would continue to be the owner of its copyrights to Unix following the merger.  The rights were the subject of a lawsuit with the SCO Group over who owned those rights, which was decided in Novell’s favor earlier in 2010.

Of more interest to the open source world is the fact that Novell will separately sell 882 patents to CPTN Holdings, a technology consortium led by Microsoft and other unnamed members, for $450 million.  Initial speculation was that Microsoft’s consortium might succeed to core Novell SuSe Linux patents, patents associated with Mono (the Novell-led open source runtime for deploying .Net apps on Linux), or Moonlight, the open source runtime for Silverlight apps.  Microsoft has not volunteered details.  Whether the transaction bodes a patent threat to Linux depends on exactly what patents an involved and what they cover.  However, at least one source reports that “A quick look through the U.S. Patent Office database finds 461 patents that listed Novell under the assignee name.” — suggesting that all of Novell’s issued patents were sold, plus many applications in process (which presumably would account for the significant excess). 

However, it may be difficult for a purchaser to use those patents to pursue distributors of Linux.  Novell was a founding member of the Open Invention Network (see here for a statement from Novell motivated by Novell’s last deal with Microsoft), which would have made its patents subject to OIN’s patent policies.   OIN is essentially a patent commons for Linux; members agree to enter into cross-licenses of their patents to cover Linux, as defined broadly by OIN.    OIN’s current license agreement generally provides that any patent licenses survive a change of control — which is to be expected for such a license.  (Novell, however, probably agreed to an earlier version.)

Also, I am curious about the fate of the Novell patent pledge.

 Novell will use its patent portfolio to protect itself against claims made against the Linux kernel or open source programs included in Novell’s offerings, as dictated by the actions of others….In the event of a patent claim against a Novell open source product, Novell would respond using the same measures generally used to defend proprietary software products accused of patent infringement. Among other things, Novell would seek to address the claim by identifying prior art that could invalidate the patent; demonstrating that the product does not infringe the patent; redesigning the product to avoid infringement; or pursuing a license with the patent owner.

Does this pledge now inure to Attachmate, or can Attachmate withdraw it?  Now that the ownership of the patents and company have diverged, are the patents no longer in Novell’s patent portfolio?  The pledge does not call out patent counterclaims specifically, but that is the usual way of using a patent portfolio to defend oneself.  If Attachmate breaches the pledge, is there a remedy?  Can users of SuSe Linux rely on the pledge, even if they did not buy anything from Novell?  Does the pledge encumber the rights of CPTN, as a license would, or does it evaporate with the transfer, as a covenant might?  Inquiring minds want to know.

 


Study Finds GPL Code in iPhone Apps

A study released by OpenLogic examined 450 Google Android and Apple App Store apps and concluded that 88% of Android apps and 41% of Apple iOS apps included open source components.  This was not surprising, but it was more interesting that the study found that there was GPL code in 8% of Apple applications — notwithstanding prior kerfuffles about whether the GPL is incompatible with Apple’s app store terms.  (For the latest regarding LVC video player, see this post.)  The study only examined free apps, rather than apps licensed for a fee.

English High Court Rules that “Making Available” Occurs at the Server

On November 17 2010, the English High Court ruled in Football Dataco Limited, et al  v Sportradar GmbH et al that the act of making material available to the public by online transmission occurs where the transmission takes place, and not where it is received, for the purposes of copyright.

 

Plaintiffs alleged copyright infringement of their live streams of data (such as goals scored, goalscorers, penalties, yellow and red cards and substitutions) for soccer matches in a package called “Football Live.”    The defendants were in the business of assembling similar data from public sources. The defendants’ data was stored on web servers in Germany and Austria but could be accessed via links from other locations, including the UK.

 

Defendants argued that there was no jurisdiction for the English Court because no acts of infringement occurred in the UK.  The Court held that Sportradar had not done any act of reproduction (in respect of copyright) or extraction (in respect of database rights) in the UK.

 

Database rights are governed by Article 7(2)(b) of the Database Directive:  “Any form of making available to the public all or a substantial part of the contents of a database by the distribution of copies by renting, by on-line or other forms of transmission.”  [emphasis added]  The court stated that the question of where the act of “making available” occurred under this Directive was related to where “making available” occurred for the purpose of s.20 Copyright Designs and Patents Act 1988.  The court analogized to the precedent of where a “broadcast” occurred under the Directive on Satellite Broadcasting and Cable Re-transmission for broadcasts originating within the EU; under that directive, the act of broadcast occurs where the signals are introduced under the control of the person making the broadcast into an uninterrupted chain of communication (which is referred to as “emission theory”).

 

The court stated, “[T]he act of making available to the public by online transmission is committed …only where the transmission takes place. It is true that the placing of data on a server in one state can make the data available to the public of another state but that does not mean that the party who has made the data available has committed the act of making available by transmission in the State of reception.”

 

This decision tangentially effects the interpretation of copyleft obligations of open source licenses.  The effect turns on the extent to which copyleft obligations are triggered by “making available” software as opposed to “distribution” of software.  It has long been a source of controversy in open source licensing whether “distribution” in a license like GPLv2 includes “making available” — the former being primarily a US legal concept and the latter common in Europe and the UK.  There is not settled law on whether SAAS use of software constitutes“making available” — though it would usually not constitute distribution in the US.  Those who make code available, but do not distribute it (such as via a SAAS product) have historically had some concerns over whether they could inadvertently trip copyleft obligations if code were accessed in Europe and the UK.  Now, at least in the UK, there seems to be some comfort on the issue.



Belgian court Enforces CC BY-NC-ND License

A Belgian court (the Tribunal of 1stinstance of Nivelles) has issued and order enforcing the CC BY-NC-ND license.   A musical group posted music under a CC BY-NC-ND on the website www.dogmazic.net (a well-known French open content portal).  A theater adapted the music to create an advertisement.  The advertisement was broadcast on the radio with no attribution.  The music was modified in order to create the advertisement.

The band sued for breach of contract or, in the alternative, copyright infringement.  The court held that even though the use of the music benefited a non-profit organisation, it was a commercial use prohibited by the licence.  The theatre argued that it was confused because the main page of the website was licensed under a more permissive licence. The Court observed that, as a professional organization in the cultural sector, the theatre had a duty to understand and abide by licensing conditions, noting also that a good faith mistake is not valid in Belgium as a defense to copyright infringement.

The band claimed damages of 10,380€, but the court decided to grant 4,500€, i.e. 1500€ for each attribute of the license that was violated (attribution, no-commercial use, no derivatives).

The court stated that “the band’s behaviour is somehow paradoxical in that, on the one hand, it promotes a non-commercial ideology, but on the other hand, it claims an indemnity based on a commercial tariff that is much higher than the tariffs of the Belgian Collecting Society SABAM”.

Thanks to Philippe Laurent for the basis this entry.  Any errors in the summary or translation are mine.

Linux Foundation Releases Self-Assessment Checklist

The Linux Foundation has published a “Self-AssessmentChecklist” for businesses using open source software.  The document is available here (but requires entering personal information to initiate the download).  It covers issues such as due diligence review, audits, training, and compliance staffing.  The checklist uses no scoring mechanism; it is meant to spark discussion and candid self-assessment within an organization.  It is intended to be used in conjunction with the Linux Foundation’s training materials described at http://www.linuxfoundation.org/programs/legal/compliance/training-and-education.  The checklist is licensed under the CC by 3.0 license.

Nagios Announces End of Trademark Dispute

Nagios, a maker of open source IT insfrastructure monitoring tools, announced the resolution of an ongoing trademark dispute with German company NETWAYS, based on unauthorized trademark and domain name registration and use.  Ethan Galstad – founder of Nagios – believes that community pressure proved key to Mr. Hein and NETWAYS finally transferring ownership of the trademark domains to Nagios.”  Perhaps the German trademark suit described last week in this blog had something to do with it, too.
A timeline of the violations, created by Nagios, appears here.  According to Nagios, dispute centered on the use of the name “Netways Nagios Konferenz” for a conference promoted by NETWAYS, regisration of the domain names nagiosforge and nagioswiki, and a registration of the Nagios trademark in Germany by NETWAYS.
Although the intersection of open source licensing and trademark use can be complex, this is not a particularly complex case nor is it particular to open source.  The kind of domain name and trademark squatting described in Nagios’ timeline is not uncommon — particularly for international resellers and value-added resellers.  It is also particularly troublesome in countries with first-to-file trademark systems, where it can be difficult to challenge trademark registrations if the distributor files before the developer.  The use of Nagios in a conference name is a more complex matter for a trademark infringement claim than would be, for instance, the use of the name on a product.  Classic trademark infringement turns on passing off one’s products as those of another, which requires the mark to be used in commerce to indicate the source or origin of a product.  But the use of the trademark in a conference name can imply sponsorship by the owner of the mark, which is also an basis for trademark claims in the US.