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We may now be living in a golden age of software copyright jurisprudence. Perhaps not in eventual outcomes – the Supreme Court’s decision in Google v. Oracle left many observers underwhelmed and many questions frustratingly unanswered – but in the richness of the number of disputes currently being raised that could help elide some of the trickier unanswered questions in the law.

To this end, the Does v. Github litigation (aka the “Copilot case”) might be on the leading edge of teasing out some really interesting issues that have long been lingering under, or are brand new to, the application of copyright to the “art” of software programming. On 4 May 2023 we had the first hearing in that case, which might show the direction that that case is heading and where newer or unexplored issues might develop in that case.

The hearing itself was a classic civil procedure dispute, where the defendants (Github, Microsoft, and various OpenAI entities) asked the court to toss out on procedural grounds most, if not all, of the claims made by the Plaintiffs – four programmer who have posted their code on Github under various open source licenses.

Requesting a court to toss out claims – or an entire case – early in the proceedings is a fairly common tactic in federal litigation as the result of two cases from the U.S. Supreme Court from the late-2000s now sometimes collectively referred to as “Twiqbal.” What has evolved in response to those cases – and the prevalence of defendants requesting dismissal under them – is a bit of a do-si-do where the judge finds some of the grounds for dismissal meritorious, but gives the plaintiff some latitude to clean up or better outline some or all of their claims so that they may survive. It very much appears that that is going to happen in the Copilot case – although plaintiffs also may be dropping some of the original claims, which were about a wide a net to cast as possible under federal and state law with one notable exception – no claim of direct or indirect copyright infringement has been lodged.

Other issues the hearing touched on, which could be of substantial interest and which may get teased out more detail if and when this litigation progresses are the following:

· The Sony/Betamax case – the 1980s case that found fair use for “time shifting” using VCRs – might still yet have some continued vitality. It appears that there may be a debate over whether, and to what extent, Generative AI tools like Copilot engage in substantial non-infringing use of the content they are trained upon, even if there are certain uses that nevertheless infringe. During hearing, certain numbers were thrown around (for example, that Copilot may have, in 1% of the prompts made to it, reproduced copyrightable content); the extent to which these numbers are borne out, and are sufficient to invoke Sony/Betamax fair use, will be interesting to watch.

· Section 1202b of the U.S. Copyright Act (17 USC § 1202(b)) (part of the controversial Digital Millennium Copyright Act – the DMCA) precludes the removal, without permission of a copyright holder, of so-called “CMI” – copyright management information. Is it possible to violate this part of the copyright statute even if you are not using – or are using in a way that doesn’t require the copyright holder’s permission – any copyrightable material to which that CMI is attached? Given that there is, as yet, no claim being made of copyright infringement, this may be a crucial question to sustain federal claims – and federal remedies, which in the case of CMI, can be more substantial than any copyright infringement claim – as statutory damages are assessed based on “act of circumvention” not “with respect to any one work”.

· Is there a separate state law claim for breach of contract available even if there may be also a claim available for copyright infringement (or, for that matter, a claim for removal of CMI)? This is an issue that’s currently being requested to be reviewed by the U.S. Supreme Court under the doctrine of “copyright pre-emption” – which holds that you may not pursue via state law claims an action that is really no more than a federal copyright infringement action. The extent two which this issue applies in open source licensing is a long-standing debate, which I addressed in my recent book chapter on open source licensing and copyrights.

· What sort of activities that Copilot (or other Generative AI tools) does can establish a license violation? Most of the press on the matter has focused on the output of the Copilot tool – the code suggestions that Copilot provides in response to a user prompt – but can a claim also be made that the mere act of training the tool is itself a license violation? That claim would seem to be inconsistent with Software Freedom One: “The freedom to study how the program works” – does that freedom come with conditions? At one point, a lawyer for the Plaintiffs – said to be an active member of the open source community – said that at least the Affero GPL might impose license compliance obligations merely by the act of training. If validated, this theory might substantially impact how companies deal with code under this license in the future.

And finally, although not argued at this stage of the lawsuit, there remains the underlying – and frustratingly substantially unresolved – issue of how does one separate copyrightable expression from uncopyrightable ideas or functionality in the area of software. This was the subject of an extensive, and thoughtful analysis of the trial court in the Google v. Oracle dispute, but that decision was eventually overturned and the litigation from that point forward revolved around the thornier (and substantially fact-dependent) question of fair use.

Will this case rise, and converge, to address some of the more interesting and thorny issues in software, open source and the law? That remains to be seen – but the case is one worth following.

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Back in the days of my early education (and probably most people of my generation who went through the U.S. education system), English teachers used to love to have students create sentence diagrams. This pedagogical exercise was designed to help students identify the major parts of speech (subject, verb, object) in an English-language sentence, as well as the other ancillary words used in composing that sentence. The point of the exercise was to identify where certain words were incorrectly or confusingly used in a sentence. After learning how to do a sentence diagram, most students (except maybe those who went on to become English teachers) forgot the whole thing.

For the legal draftsperson, understanding parts of speech can actually be a useful exercise, as it can elucidate issues in the way a particular legal document may be incomplete. An excellent example of how that issue works out in actual, legal, practice, it the debate around the BSD license (or at least, the -0, -1, -2, -3 & -4 clause variants) and the scope of the grants in that license. Several years ago, there was a vigorous debate, which actually made it into the legal academic literature, about whether the grammar of the BSD 1-4 clause licenses conferred a patent license to the recipient. One set of authors, primarily relying upon statements from the license authors/stewards, argued they do not; another author, relying at least in part upon the actual grammar in the license – and in particular the verbs used – argued they do.

During the time that this debate was most vigorous, I did a short presentation including a grammatical analysis of a group of OSI-approved non-copyleft (also known as “permissive”) licenses: BSD, MIT, Apache 2.0, UPL and BSD+Patent (full disclosure: I authored BSD+Patent and shepherded it through the OSI approval process). The point of the analysis was to show which licenses used which verbs from U.S. copyright and patent law (which outline the exclusive rights under copyright and patent, and thus those rights that a copyright or patent holder may confer via a license). Some licenses use but a few of these verbs; the absence of a verb might allow a licensor to later argue the rights that that verb encompasses were not granted. And there's at least one license, apparently a BSD-variant, which has chosen and omitted different verbs, for reasons which are not entirely clear. Of additional interest to the legal grammatician are the objects of the verbs in these licenses, which are also outlined in the presentation.

In an international context, it can be even more interesting. Different jurisdictions use different verbs, which may (or may not) correlate with one another, and some of those verbs may not be used in licenses primarily drafted with U.S. law in mind. I have prepared a separate set of charts outlining how those verbs are used internationally (one of these charts will be included in a book chapter I wrote for a book coming out later in 2022).

Another factor which potentially comes into play – at least in the U.S. – is whether the use of certain verbs without the recitation of all statutory or treaty verbs nevertheless should be interpreted as implying a license to the exercise the rights in the unrecited verbs. Implied patent licensing has been a subject of analysis for both the MIT and GPLv2 licenses.

Whether these questions will ever be the subject of a live legal dispute, and if so, how it will be resolved, remains to be seen. Nevertheless, it has certainly become a practice in more recently-developed FOSS licenses to include a full list of operative verbs to reduce the risks that the licensor will argue later that certain rights were reserved or not conferred by omission. Perhaps the best way to curtail such arguments is to make sure the license involved is as grammatically robust as possible.

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Updated: Apr 15, 2022

If you’ve spent any amount of time in the world of Free & Open Source Software (FOSS) – or the world of “free and open source” anything – you likely have encountered a degree of alarm or downright hostility to patents in general, and “software patents” in particular. For more than 20 years, patents have been characterized as creating a significant threat to the continued development of software in a free, open, and collaborative way. Much has been said about the threat of patent holders without significant businesses other than collecting patent royalties or litigation settlements – and there is a small cottage industry dedicated to creating graphical images to be associated with these entities.

Over the past 20 years, there have been a number of different mechanisms deployed to mitigate some of the patent risks against FOSS: better FOSS license drafting, “patent pledges,” recognition of rules of good community citizenship, and other smaller impediments. But there has always been a glaring hole that these mechanisms are not able to plug. As I have detailed to several different FOSS audiences, there are existing mechanisms to plug this hole – direct challenges to problematic patents themselves. I have talked about these mechanisms, how they work, and how to think strategically about using them.

With that background, one of the first real tests of an unmitigated patent threat against a FOSS project was the lawsuit filed in 2019 against the GNOME Foundation. I had hoped, given the early statements of both the GNOME Foundation (“Agreeing to [a license] would leave this patent live, and allow this to be used as a weapon against countless others”; “we will fight your suit, and we will have your patent invalidated”) and Unified Patents, that is exactly how the patent asserted against GNOME would be handled. Over $150,000.00 was raised (and continues to be raised!) from thousands of FOSS community members for this anticipated fight, and the pledges that were made that the asserted patent would be fought, and eventually invalidated. Alas, that was not to be – at least not by those entities. Instead, on behalf of our client Defease Patents LLC, this firm filed a reexamination proceeding in October 2020 in the U.S. Patent & Trademark Office specifically challenging the validity of the patent (“Rothschild ‘086”) asserted against GNOME (among others – over 20 patent lawsuits had been filed in various federal courts asserting the Rothschild ‘086 patent).

The administrative proceeding we filed against the Rothschild ‘086 patent has now reached its conclusion. Every claim of that patent has been cancelled; the image above is the official certificate, issued on behalf of the Commissioner of Patents, cancelling all claims. The Rothschild ‘086 patent is no more; it has ceased to be; it is an ex-patent. As was promised (by others), the patent is now no longer live, it may no longer may be used as a weapon against countless others, it has been invalidated. This is a patent that had been the subject of numerous lawsuits all over the United States; from now on, it now no longer will.

If patents are indeed a continuing threat to FOSS, then talking down patents isn’t going to be enough. “When You have to shoot – shoot. Don’t talk.”

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