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Published: 2008-03-26

Court Evaluates Meaning of "Derivative Work" in an Open Source License

The first court case involving the Gnu Public License (GPL) has been filed in Federal Court in Massachusetts, and all lawyers who counsel clients on open source matters should be aware of its existence, even though the case itself has so far provided little substantive help with open source interpretation issues. The case, Progress Software Corp. v. MySQL AB, Civil Action No. 01-11031 PBS, was filed on June 15, 2001. The plaintiff, Progress, is a U.S. software company that signed an interim agreement with a small Swedish software company, MySQL, to nonexclusively market the MySQL software product. The MySQL software had been originally released by MySQL years earlier under the GPL.

Progress alleged breach of contract, tortious interference with third-party contracts and relationships, unfair competition and several similar business-related torts. Progress also sought declaratory judgment as to its trademark rights and other rights relating to its sale and distribution of the MySQL software. MySQL filed a counterclaim alleging, among other causes of action, trademark infringement, breach of the interim agreement between the parties and breach of the GPL. The interim agreement provided, among other things, that the MySQL software would be released under the GPL. This provision conforms to the language of the GPL itself, which specifies that anyone receiving software under the GPL who then releases it must release it under the GPL.

In an early release, Progress distributed the MySQL software with additional proprietary software (Gemini) but did not include the source code for the Gemini software on its distribution medium. However, Progress did include the Gemini source code in a later release. MySQL alleged that the proprietary Gemini software was derivative of the MySQL software because it linked to the MySQL software. This is a key point because the author of the GPL has stated that linking to GPL’d software turns the linked software into a derivative work and that all derivative works of GPL’d software must also be released under the GPL. Thus, GPL’d software "infects" proprietary software with which it is linked. The result is that the GPL either bars inclusion of GPL’d code in programs that are to be kept as proprietary or forces new programs linking to GPL’d software to be released under the GPL.

On February 28, 2002, the court granted a preliminary injunction enjoining Progress from, among other things, sublicensing or distributing the MySQL program and from using the MySQL trademark. Progress Software Corp. v. MySQL AB, 195 F. Supp. 2d 328, 329 (D. Mass.). The court declined to rule on a request for summary judgment of the breach of contract under the GPL, stating:

MySQL has not demonstrated a substantial likelihood of success on the merits or irreparable harm. Affidavits submitted by the parties’ experts raise a factual dispute concerning whether the Gemini program is a derivative or an independent and separate work under GPL, [paragraph] 2. After hearing, MySQL seems to have the better argument here, but the matter is one of fair dispute. Moreover, I am not persuaded that the release of the Gemini source code in July 2001 didn’t cure the breach.

Thus, the court recognized the important issue that will need to be resolved in a case interpreting the GPL: whether a program linked to GPL’d software can be considered a derivative work of that software. The court also raised the question of whether subsequent shipping of source code can cure a breach of the GPL without permission to continue shipment from either the author or subsequent distributor of the software.

An interesting side note is an affidavit submitted by MySQL of Professor Eben Moglen of Columbia University Law School, who is the lawyer for the Free Software Foundation, the group that originated the GPL license. This affidavit contains some insights into the author’s intent in drafting the GPL. In particular, Professor Moglen lists "three primary conditions" of the GPL, stating that if a company receives software under the GPL and then distributes it:

1) Redistribution must itself occur under GPL and only GPL, with no additional license conditions.

2) Redistribution must include "source code," the human-readable form of computer programs that allows programmers to understand and modify computer programs for themselves, as opposed to "object code," which is the "machine language" version of computer programs that is very difficult for programmers to understand or modify.

3) Redistribution must include a copy of the GPL, so that users are aware of their rights to use, copy, modify and distribute, and so that anyone engaged in redistribution is also aware of the conditions under which redistribution is permitted.

These statements will be useful in future cases where GPL interpretation is at issue.

Professor Moglen further stated that the Free Software Foundation’s position is that failure to comply with the GPL terminates distribution rights of the person failing to comply until the copyright holder takes affirmative action to reinstate the rights. Note that this position requires an affirmative act by the copyright holder to reinstate the right to distribute, not an act of the person who distributed the software to the breaching party. In her order granting partial summary judgment, the judge in the Progress Software litigation seemed to imply that a breach of the GPL by failure to include source code possibly could be "cured" by shipping source code in later versions. This view contradicts that of Professor Moglen.

Professor Moglen’s affidavit also reiterates that the GPL is based on copyright law but reminds us that the GPL requires the author of software to unilaterally give up certain copyright rights. He suggests that the GPL actually subtracts from the usual exclusive rights of the author under copyright law, through the granting of unilateral permissions. Under the GPL, all persons observing its terms are unilaterally permitted all rights to use, copy and modify the software. Users who only use the software themselves or who modify the software only for their own use have no obligations under the GPL. Only persons who distribute have reciprocal obligations under the GPL. These include the obligation to release under the GPL, to include a copy of the GPL and to preserve notices relating to the GPL. Thus, the author of the software gives up his rights to control the actions of people who receive the software and do not distribute it, and these people have a unilateral right to use, copy and modify the software. Once software is released under the GPL, the releasing party cannot get it back or halt its use or modification without distribution.

The Progress Software v. MySQL litigation is not over yet. Although the court refused to grant summary judgment on the issues involving the GPL, it is still possible that the GPL breach of contract issue may play a part in the final decision. If this occurs, practitioners may finally have guidance as to the validity of the GPL under contract law and whether linking software results in a derivative work.