 How's everyone doing? I'm Max Fills. I'm the lead attorney in the open source program's office for Google. And basically, we're writing a book, an open source casebook. So it's open source because it's about open source. But we're also soliciting help from any attorneys or anyone knowledgeable to help us do the research. We've got a lot of interesting topics that I'm going to talk about. But I want to focus this presentation on a chapter that we just finished on whether an open source license, whether the violation of an open source license is contract breach or copyright infringement. Before I get into it, here are all the standard warnings. I am a licensed attorney. I'm not your attorney. This presentation is not legal advice. And anything I'm going to say, they're my views, my opinions, not Google's. So please don't write a blog post about this, saying that this is Google's opinion. OK, so a little bit about my background. I take open source more transactionally. Although the more I interact with it, the more I kind of, just by osmosis, adopt the free software zealotry, I think. So from a transactional background, I have to deal with open source every day. And I have to deal with it with every subsidiary company. So we're buying open source. We're selling it. We're making it. We're modifying it. We're leasing it from people. We're distributing it. And we're distributing it in physical devices. We're distributing it as part of cloud software. So basically, open source touches every single piece of business that Google's engaged in now. And my efforts don't scale anymore. I have attorneys come to me every day saying I have this little open source issue in a contract. Can you please review it? I have this open source issue in an acquisition. Can you please review it? And this is the main problem that I face. I don't care why. Just give me the answer. Just tell me what I need to do. And that's fine. Like at a smaller scale, I can just say, do this, do that, do this, do that. But what I find is it's really weird, but there's just not a lot of legal analysis that goes into open source counseling. There's tooling analysis. There's definitely the idea that you want to do the right thing. And I think doing the right thing, if that's all you do and you have no legal background, that's an excellent way to start doing open source compliance. Just give people the respect they ask for and try to abide as closely as possible with the terms of the license. But that's not good enough for me because I want to actually dig deeper and figure out why things are the case. Not only that, but I say right here, it's OK to disagree about what licenses mean, but we shouldn't be disagreeing on what the case law is. We shouldn't be disagreeing on what the basic facts are. So hopefully with this open source case book, we're going to publish a few chapters and then solicit your help. Richard, I'm looking at you if you want to help out. I just want to have us, and Karen as well, obviously. I just want to have us all have the same discussion basically. So with that said, here are some chapters. This is the one I'm going to be talking about today, whether an open source license is a copyright or a contract. But there's a lot of cool stuff we're going to talk about. Revocability of licenses, implied patent licenses. This is super interesting and annoying and scary for a big corporation. Is a contributor an employee? I'm not going to answer that today. And hopefully I'll never have to answer that. Also, trademarks really don't get addressed. So hopefully at the end of the day, this is going to be presented in case book format. So it's not going to be another open source book telling you what to do, giving you advice. Because I'm really sick of doing that. I used to like it when I started because it gave me a sense of power. But now it's just incredibly exhausting to keep telling people what the truth is. What I want instead is to kind of work together to share the same way to think about the problems. So I want to pose the cases and the questions in a real case book format. OK, so this is what I'm going to go over today. I'm going to go over two cases. Jacobson v. Katzer and MDY Industries versus Blizzard. Versata is super important here, too. But I want to keep this brief because I want to interact with everyone. So if we have time, we'll get to Versata at the end. We're going to be talking about contract damages versus copyright infringement damages. And if that doesn't make your blood start pumping, it should. Because those two things are extremely different. If an open source license is just a contract between the licenseor and the licensee, then breach of that contract, you're only entitled to what's called substitute performance. Basically, you can't get a lot of money. You can't get a really good injunction. It's a really crappy copyright enforcement mechanism. If all you can do is contract remedies. But if you can see copyright remedies, you can get statutory damages and fringers profits. You can have an injunction on everything that's being distributed. So for the current ways that copyrights enforced and open source licenses are enforced, it's really to people's benefit to try to always make a copyright infringement claim. We're going to focus on the difference between conditions and covenants and this idea of nexus to an enumerated right of copyright. The only background I'll give you here is let's focus on three things. The right to make copies, the right to redistribute copies, and the right to make derivative work. So those are the three things we're going to keep in mind when we say enumerated right of copyright. And in a casebook format, I might just stop the presentation and ask for volunteers to talk about it. Because what I really want to do is leaving you understanding what conditions and covenants are. And I want you to start applying all these different tests to open source licenses. So we kind of examine these things a little more critically. So here are the ground rules from Sun Microsystems v. Microsoft. Generally, a copyright owner who grants a non-exclusive license to use copyrighted material waves his right to sue the licensee for copyright infringement. How about that? That's a really weird ground rule and it's not something you'd expect. Right there, it says the moment you gave a license, your ability to have any claims in copyright are killed. Except if a license is limited in scope and the licensee acts outside the scope, then you can bring an action for copyright infringement. So you can think of an open source license as this box. And if it's non-exclusive, which means you reserve the right to give this license to other people, then any activity the person does can't sue them for copyright infringement unless somehow this box is like cabined by specific language and they violated that. But we'll get into that right now. So Jacob Sinvey-Katzer, who's heard of Jacob Sinvey-Katzer? Okay. So that's good, that's a positive step. Let's actually talk about the holding there and see if we can apply it. So there was this, Jacob Sin was a model railroad enthusiast and he made this open source library as part of JMRI, that was the name of his consortium, to control model trains. And he licensed it under the artistic license. So this person, so an employee of a company named Katzer downloads Jacob Sin's files, incorporates that into their product, I think it's like, I think it was called the railroad commander, and then they distribute it without giving credit or without any of the requirements of the artistic license, including upstreaming modifications. The procedural history, super complex, super weird. It ended up in the federal circuit, which a copyright action shouldn't end up in the federal circuit. But this one did because there was a patent issue, federal circuit had subject matter jurisdiction and got a bite at the copyright question. So this is where we get the whole thing right here. Whether a breach of licenses copyright infringement depends on whether the provision breached is a condition of the license or a covenant. Now I've read this multiple times and I had a lot of difficulty figuring out what a covenant was and what a condition is. So let's talk about that. A covenant is a promise. Okay, so a contract is mutual promises, two mutual promises between people. A condition uses the word if as long as, okay. The court says here that the artistic license creates conditions to protect economic rights. So this was a really weird portion because I think a lot of times people just focus on the conditions versus covenants issue and they don't go into how much the court found a fundamental need to connect this to some kind of economic right of copyright. So basically if I say you can use my software and please promise to redistribute it. That's a covenant, okay. If you don't do that, I can only get you for contract breach. I can't really enforce it in an aggressive way against you. However, if I say here's my software and you can make derivative works, you can redistribute it only as long as you do these things, then that's a condition. If I condition the grant of rights, then I can get at you because if you violate that condition, you're outside the scope of the license and then that's a real enforcement hook. But I'm just gonna highlight this because again it's lost. The court didn't just say that it's about conditions like because then every open source license would just be if, if, if, if, if, if, if. Like you could just litter them with conditions and then be secure in the idea that you can enforce copyright remedies. But it kept trying to go through every single element of the artistic license and tying each condition, somehow to a fundamental economic right. Just keep that in the back of your head. All right, so I talked about this. Covenants versus conditions. This comes back in a later case. Is anyone familiar with MDY v. Blizzard? Oh, okay. Anyone else? Okay, just to cut, much less than Jacobson. And this is kind of what's upsetting as an open source lawyer is just, well, that's not upsetting, it's an opportunity. People know one or two cases, they haven't read them in a long time and then that's the end of it. But the idea with an open source casebook is it's constantly updated, always reflecting the most recent law. So MDY versus Blizzard's a really interesting case. Has anyone ever played World of Warcraft? Okay, so more people have played World of Warcraft than know that that's good, that's expected. Apparently it's a real, I used to play Ultima online but I never played World of Warcraft. But I know from MMOs, it's a real pain to level up a beginning character. So MDY makes these bots. I'm sure you've all used these bots or at least some of you have used these bots to just grind the character at the beginning so their level goes up. Blizzard hated this because they thought it was reducing the value of the game. They structured it in a very specific way. They sued MDY for contributory copyright infringement. Now I don't wanna get into the weeds too much but you can only find contributory copyright infringement if the person who did the thing is guilty of direct copyright infringement. So the question is, all right, if you run a robot to grind some World of Warcraft levels and you violate the terms of the EULA, are you committing copyright infringement? It's a weird question. The court was, the court said, absolutely not. No. So here we have the holding from MDY. The potential for infringement exists only when the action of the licensee exceeds the license's scope but then really zoom in on here. In a manner that implicates one of the licenseeer's exclusive rights of copyright. For a licenseeer's violation to be infringement, there has to be this nexus between the condition and one of the licenseeer's exclusive rights. So even if you make the argument that Blizzard didn't sell World of Warcraft but merely licensed it to people, Blizzard has a copyright right to grant people a license to copy the software, to make derivative works of the software but nowhere in any copyright law does it say you can't use bots. So the court found that that failure of that condition meant you couldn't sue players for copyright infringement here. I think I'm okay on time so I'll just add another wrinkle to this before we go into discussion, like open discussion with the audience. So AmeriPrize versus Fasada. It's a very recent case in the Western District of Texas. It's a really cool case but it kind of deals with this at a slightly different angle. So there's this idea in United States federal law called preemption. It says if you have a state law claim and a federal law claim, the federal law claim may preempt the state law claim meaning that federal law trumps state law. So the question there is, is an open source license a contract? Or does it sound in copyright? And you gotta go read Versada because it's a fundamental reading if you're into this sort of thing. But it held that for the purposes of preemption, the GPL was not preempted by copyright. So all that means is that you might be able to sue over the GPL in copyright but you can't just go automatically say that there's only copyright issues at issue in the GPL. And the reason for that kind of lines up with the tests in MDY and the tests in Jacobson. It lines up because it says, okay, first of all, there's preemption if the thing you're talking about is a copyright right. But also they have this thing called like a next element test or a supplemental element test. The court held in Versada, the GPL has something extra, something extra that we don't like because it's this extra thing that's supplementary to copyright that means that we can't just say it's preempted. Okay, so that said, let's talk about this. Let's analyze some common open source licenses with this lens, with this Jacobson test and this MDY test. So first of all, MIT, right here, subject to the following conditions. So the court in Jacobson was really persuaded by using the word conditions. We know immediately that, that is gonna really get them going. What do people think? Is this a covenant or a condition? Does that, yeah, I'm just opening it up. So the above copyright notice and this permission notice shall be included in all copies of the software. Covenant or condition? This is subject to the following. The line above says, subject to the following conditions, which to me suggests it might be a condition. Yes. You know. Yes. Round of applause, wonderful. Oh, let me go back. Yes, so that is, well, that's the exact reasoning that the court in Jacobson would use. They were very persuaded by the word condition. So that's the Jacobson test. Now let's spice it up. The MDY test. Is there an essential nexus between this condition and the licensor, one of the licensor's enumerated rights of copyright? That's a very, yeah, it's a puzzle, you have a puzzled look on your face. It's a weird question. So let me rephrase it. We said the essential rights of copyright boiled down to copying, being able to copy something, redistribute it or make derivative works. Is this condition connected to one of those three things? Wait, did you call on someone? Yeah, sure. Yeah. Wait, wait, wait, wait, wait. I was gonna take it a different direction and say this is, this example shows why MDY is bullshit, which has been my view of MDY, is it took a ridiculously simplistic view of, it completely falls apart under any sort of, any kind of, under many, many licenses, even not counting open source licenses. So to me it's kind of just a wrong decision. Sure. So, let me address that for a second. I love that. The concept that MDY is bullshit, that's extremely helpful because at least we're both talking about MDY being something that we have to look at. And so yeah, I might agree with you, but the pushback I have there is, you say that, I think it really tracks with Jacobson actually, because the essential nexus to one of the enumerated rights of copyright, I'm persuaded, I see the analogy to an economic right like the court Jacobson was talking about. Right, so again, it's all just rhetoric. So, and I pointed this out, yesterday with the Creative Commons licenses is the one commonalities attribution which is not one of the exclusive rights of copyright. And yet, we accept that as a very valid, I also prefer to think of it, not as the economic right, which is what Jacobson did, but it's just fricking consideration. It's nothing more difficult than consideration. So then, when you look at it as consideration versus an economic right, then it's very simple. Yes, there's consideration, tell me who the author is. That's the only thing I'm getting out of this grant is acknowledgement of my authorship. And that's very significant consideration. So then I guess I reject both cases. So, I guess in this it would be a copyright, excuse me, a contract and not a copyright license, senior interpretation, the MIT license. Cause you're talking about, it's copyright license. Wait, wait, wait. Well, certainly I'm, yeah. Here, I'll take, yeah, and then I'll have. I mean, do we want to go down the fact that I also kind of disagree with this whole, this world that there's sort of this concept that there's a license is simply a form of a contract. I don't think a license is a whole different sort of unicorn. It's just a unilateral license. So then that's why, and it's a copyright license. I mean, it's a contract. You get to use my copyright in exchange for you giving me attribution. There is consideration for both parties. I just don't see that. And maybe part of it is I just don't see the point of sort of this copyright versus contract question altogether. I can reject the premise of the talk. Yeah, let me keep going and I'll have some. I'll have some time for questions. Just give me one second. So, yeah, that makes sense. I don't think we should necessarily divide licenses from copyright. I'm just actually presenting the cases, talking about the whole things and saying like, no, don't, don't shut up. Collaborate with me and let's, yeah, let me hear your dissent in a casebook. So we can ask the same question. Let's go to the really interesting things. The anti-tevoization provision in GPLV3. So yes, under Jacobson, this is conditional, right? Because the GPLV3 says you can use this as long as you follow these conditions. But, and Pam, I think I know what you're gonna say here, but I see less of a connection to a right of copyright here. In fact, I see no connection to a right of copyright. So just to conclude, and then we can have a little bit more open discussion. A lot of license obligations can be found to be merely contractual under all the available cases we have on the topic. They don't tie directly to an enumerated right of copyright. They fail the extra element test in Versata for preemption. But I wanna end maybe on a more hopeful note, which is just dovetailing with Bradley's keynote yesterday. So lawsuits are a tactic, right? To advance free software. They're not the end goal. Most of us don't enjoy law and lawsuits. I love lawsuits. I'm obsessed with law and lawsuits. But if we analyze this, then we just gonna have to change our tactics, right? Because if the tactics of free software depend on making copyright infringement allegations and getting huge returns like McCarty is kind of trolling, then that might need to be changed. But if the point is, and I say this at the end, the point is really get community norms and pressure and other alternative regimes besides just copyright infringement lawsuits. Like, if you're not just trying to make millions and millions of dollars, there's a lot of ways to achieve the goals of free software. But at least I wanna situate the tactics we use in actual case law. So that's it. And you can email me at xam.google.com if you wanna participate in the casebook. And I have a couple minutes. So yeah, some questions? Talk about a stand up. Yeah, please. I really like your idea of having an open casebook. It gives me a sense that even though I'm not a lawyer, maybe as a legal geek, I could participate in some way or at the very least learn more about the findings and the understanding. And then of course I really like what Pam did. And it made me think, could this, would this, do you want this to be a collaborative place for us to share that kind of dissent in discussion? Yes, absolutely. More power too. I should say I should have given credit. So Dash over now is my colleague in the Up and Source Programs Office. He's a brilliant attorney. We argue constantly. And that argument has formed the substance of the casebook. The way that's presented, yes, we're gonna invite lawyers but we're also gonna invite just any geeks that wanna contribute. So the format is just gonna be case excerpts and then discussion. Case excerpts and discussion. So there's not gonna be any real conclusions except summarizing the whole things in cases. So everyone's welcome to submit cases that think are relevant for the particular portions. And if you have a dissent, that'll just go into discussion. Cause the point is to have a unified document that kind of trains up everyone's mind. And we want them to see the world the way we have learned to see it over time. Questions, yeah? Yeah, so I get the impression this is gonna be focused very much on US law. Is that right? Ah, great, great. So I just wanted to follow up on that. Now I'm not a lawyer. I'm an occasional litigant with some success. In UK law, there's a thing called the Contracts, Rights of Third Parties Act. Which is kind of interesting. If you read the GPL with that act in mind and you think the GPL is a contract and not just a license, it's possible that end users might have the right to sue for compliance. And nobody, I mean, nobody that I know who has been seriously involved in GPL enforcement is familiar enough as far as I can tell with UK law to even have properly considered whether that's true or not. Yeah, that's a fascinating point. So I, Please do. Okay. I think there would be a privity analysis that'd be a little bit weird. Yeah, so, go ahead. Do you mind if I respond to that point directly? I'm in English. Yeah, sorry? Just a little quickly. Yes. Yeah, no, no, no, no. Yeah, yeah, I appreciate that. Yeah, no, I'm an English lawyer and I think that's a really good point. But I think it's possible to analyze the GPL as purely being a bare license in which case the contract rights of third parties act doesn't apply. And the reasoning behind that is equivalent to the reasoning in a case called Robinuran Classic FM which I don't have enough time to explain to anyone. So if you want to talk to me about it later, I'm happy to have a chat with you. Yeah, so we're going to start with a focus on American law just because we want to get the thing off the ground. But I definitely want to tackle European specific issues like moral rights. So when a US copyright attorney, open source attorney hears moral rights, they just like put their fingers in their ears. This is the last question. But, yeah, please. I think your initiative for this open casebook is really awesome. What about extending that to discussions on the text of the licenses? Because I'm working day and night on open source software and their licensing. And I work a lot with lawyers, which most of the time, even though I'm not lawyers, I have to educate on the topic. I think some reference discussion on casebooks is going to be already something that's going to make their life much, much easier. And my life much easier. Having the same kind of discussion on the common open source licenses, which are scattered around would be a great, great, great thing to do, I think. So let me address that specifically because I disagree with you a little bit. Because I think there's already an abundance of everyone sounding off on what they think an open source license means. Lawyer or not lawyer? I think what we really need, though, is to agree and discuss the cases and to just get the questions flowing so that we can actually see what the state of the law is. So if there were to be a discussion of open source licenses, we'd do it in such a way that they'd be grounded in the particular case and the particular thing. So what I don't want to have is more facts that people start citing to say, this is what it means, this is what it means. I want people to think instead of to provide them conclusions so that they can short-circuit actually thinking about the issues. Thank you.