5 Va. J.L. & Tech. 11 (2000), at http://www.vjolt.net
1522-1687 / © 2000 Virginia Journal of Law and Technology Association

VIRGINIA JOURNAL of LAW and TECHNOLOGY

UNIVERSITY OF VIRGINIA

FALL 2000

5 VA. J.L. & TECH. 11

 

Facilitating Collaborative Software Development:

The Enforceability of Mass-Market

Public Software Licenses

 

By Daniel B. Ravicher[1]

 

 

I.          Introduction

II.         Traditional Software Licensing

A.        Software Terminology

B.         The Birth of a Software Mass-Market

C.        The Creation of Intellectual Property Rights in Software

D.        The Distribution of Intellectual Property Rights in Software       

E.         Why Software is Licensed and Not Sold

III.       Mass-Market Software Licenses: Shrinkwrap and Clickwrap

            A.        Current Enforceability of Mass-Market Licenses

            B.         The Twin Uniform Law Proposals: UCC Article 2B and UCITA

            C.        Preemption?

IV.       Mass-Market Public Software Licenses

A.        Free Software and the GNU General Public License

B.         Open Source Software and the Mozilla Public License

V.        Enforceability of Mass-Market Public Software Licenses

A.        The Copyright Act

B.         Contract Arguments

C.        Preemption?

VI.       Conclusion

Appendix A: GNU General Public License

Appendix B: Mozilla Public License

 

 

I.  Introduction

 

1.   Imagine a somewhat technologically capable individual who just downloaded the hippest new investment-decision-making software program that guarantees to beat the Dow by ten percent.  During installation of the program, the following message appears on her computer screen:

 

LICENSE: By operating or retaining a copy of this program, the user hereinafter agrees to abide by all the terms and conditions of the following agreement (that everybody is expected to read but nobody ever does), as well as Robert’s Rules of Order and such other terms and conditions, real, imaginary, subjective, objective or offensive, as the Software Distributor shall deem appropriate or desirable, including the right to perform unreasonable search and seizures of the user’s computer, home, person and pets, whether there is sunshine when she’s gone or if New York is indeed the city that never sleeps, for better or for worse, to death do us part, would you like fries with that, don’t put the cart before the horse even if you do lead it to water and try to force it to drink, in God we trust, unless of course, you are atheist or agnostic, thank you very much and don’t forget to put all of your savings into our inflated stock.

 

Whether or not software mass-market licenses such as this are enforceable is currently a very unsettled issue. 

 

2.   Section II presents a background of the computer software industry and an overview of the intellectual property rights that arise in software to lay a foundation for the discussion of this issue.  Divergent views of the proper model of software development exist.  Some companies believe that all software development should take place within their building and protect the resulting programs with the utmost secrecy.  The most familiar company that follows this closed model of software development is Microsoft.[2]  Other companies believe that software developed across entity lines is superior and, thus, promote a collaborative environment of sharing software developments and advancements.  This model may seem unorthodox, but it actually describes how software originally developed some decades ago.  Modern companies that follow this open model include Netscape and Red Hat.[3] 

 

3.   Section III introduces general mass-market software licenses and discusses the current analysis of their enforceability.  Although most recent courts have held such agreements valid, much legal scholarship and public sentiment undermines the certainty of those holdings.  Many argue that mass-market licenses are invalid because they take advantage of the relative weak bargaining position of the consumer to the software company, are merely contracts of adhesion, and are otherwise procedurally unconscionable.  In addition to the procedural issues, mass-market licenses are also subject to having their terms found substantively unenforceable.  Not only do the terms of these agreements often seem exceedingly broad and restrictive, they may also be found unenforceable due to preemption by federal intellectual property laws.  Any provision of a mass-market license that attempts to extend the rights of intellectual property owners beyond the policy bargain struck by Congress is invalid.  Just as with procedural and substantive enforceability, the preemption of mass-market licenses is unsettled.

 

4.   The dichotomy discussed in section II between the open and closed models of software development presents a classic collective action problem in that companies which tell the world their ideas are subject to free riding by companies which keep their ideas secret.  However, section IV concludes that open model actors should not feel destined for failure in the marketplace, because the law of contracts may provide the perfect solution to this collective action problem.  Through licensing agreements, open model companies can disclose to the whole world their software secrets while at the same time preventing closed model companies from benefiting through incorporation of those ideas in closed model programs.  The two most notable public software licenses are the GNU General Public License promulgated by the Free Software Foundation and the Mozilla Public License written and used by Netscape Communications.

 

5.   Although numerous claims of infringement and threats to seek legal resolution of software copyright issues have been made,[4] no court has yet ruled on the enforceability of public software licenses.  As a result, companies desiring to follow the open model of software development must bear the cost of this legal uncertainty, which, in turn, reduces the ability of these companies to compete in markets occupied by closed model firms.  Section V addresses every conceivable argument against the enforceability of public software licenses.  Based on current relevant doctrine and prevailing public policy interests, public software licenses that adhere to distinct procedural requirements are enforceable.

 

II.  Traditional Software Licensing

 

A.  Software Terminology

 

6.   Before discussing the evolution of software licensing, a brief foray into terminology helps to assure that popular misconceptions do not cloud the points made here.  For starters, computers contain only two elements: hardware and software.[5]  Hardware is every part of a computer that is visible, whether with a blind eye or a microscope.  Software is the set of instructions that control the hardware.  At its core, software is nothing more than 1s and 0s in a sequence of any length that controls the sending of electricity to the hardware, much like a light switch controls the sending of electricity to the light bulb.  To put it all together, think of it as 1 turning the switch on and 0 turning the switch off.  Hardware only responds to sequences of 1s and 0s.[6]  A sequence of 1s and 0s is called object code, which is also referred to as the executable form of the program.[7]

 

7.   However, programmers do not write software in executable form because not even the brightest programmer is smart enough to figure out exactly what combination of 1s and 0s will produce the desired hardware responses for complex and sophisticated applications.  A very important fact relevant to the discussion below is that programmers cannot ascertain from object code the result that is produced by a computer following that code.  This results in a communication problem as to how to get computers to produce desired results since one cannot possibly produce the necessary object code directly.  Much like any other difference of language problems, the solution lies in translation. 

 

8.   In fact, for those desiring to produce object code, the current method involves not one, but two translations.  First, a computer programmer translates her native language, say English, into source code which is written in one of several computer programming languages, such as Basic, Fortran, Pascal, or C++.[8]  Second, the programmer enters the source code into a compiler program that, upon command, translates the source code into object code.[9]  To recap, programmers write source code that compiler programs translate into object code, a sequence of 1s and 0s, which, when executed by the hardware of a computer, produces desired results.  Once written and compiled, the next decision is whether and how to put the software to use.

 

B.  The Birth of a Software Mass-Market

 

9.   Before NASDAQ and millionaire making IPO’s, the computer industry occupied a reclusive corner of mainstream America.  Before the 1980s, computers were large and expensive, thus restricting ownership to the government, universities and a few major corporations.[10]  As a result, software was tailor-made for the specific needs and applications of each owner.[11]  This phenomenon resulted in the production of software that was highly idiosyncratic and lent itself to use by only a limited number of users.

 

10. During this era, programmers openly shared their solutions and advancements with one another.[12]  What can be labeled a quasi-donation to the public domain by software programmers proved economically more efficient than a proprietary regime of secrecy because the cost of achieving programming goals independently, without the aid of others, outweighed any commercial benefits of claiming ownership of potential intellectual property in the software.[13]  The early software market involved the commercial exploitation of software through providing a service of software programming to customers rather than delivering a pre-made product to end-users.[14]

 

11. Software licensing was not an issue in this era.[15]  The programming was typically completed through vertical integration within the entity of the computer owner.[16]  In other words, the computer programmer received compensation by her employer for her development of software.[17]  In return, the employer benefited not from selling the code to other entities, but by using it himself.[18]  In the circumstances where the work was performed through contract, the terms of the agreement resolved any issues as to the ownership of the created software.[19]  Perhaps the largest reason why software licensing was not an issue in this era was that a market for copies of the same software did not yet exist.[20]  The market demanded that experts apply their training to idiosyncratic situations where previously completed solutions would be only tangentially applicable at best.[21]  There simply did not exist thousands of potential customers who demanded the same program.[22]

 

12. Beginning in the 1980s personal computers became increasingly affordable and the number of computers capable of running the same software exploded.[23]  A new market emerged comprised of customers who no longer needed experts to create custom tailored software.[24]  A fork in what was once a unified software market appeared: on the one prong existed the service type market of before with heterogeneous customers, and on the other prong existed a new product type market of homogeneous customers.[25]  The satellite propulsion software for NASA and missile guidance software for the B-2 bomber, for example, fall into the former category, whereas word processing and spreadsheets fall into the latter.  A mass-market for computer software was born.[26]

 

13. Expansion of the mass-market led competitive companies to explore other methods of commercially exploiting software.[27]  The suppliers of software moved away from an open attitude towards computer programming to a more secretive and closed mind-set.  Firms made this move to help protect their market share and reap profits.  By keeping others from knowing or using its programs, a software company could prevent other entities from free riding on the large costs of research and development associated with the creation of software.[28]  This prevention of free riding is the most important benefit of following the closed model of software development.

 

14. However, there must be an economic trade-off to firms that follow the closed model of software development and choose to restrict public use of their ideas.  The cost to companies comes in the form of increased research and development costs because the companies must discover and create solutions through means other than resorting to the computer programming community-at-large.  As a result, a quasi-prisoner’s dilemma results: firms that continue to make their developments available to others are subject to free riding, while other firms that refuse to make their developments available to others are forced to bear the costs of performing all of their own research.

 

15. Deciding whether the open-academic or the closed-secret model of software development is most beneficial to a specific firm or society in general is not a simple question.[29]  Under certain circumstances, either model may be more efficient.[30]  Further, even given the same market circumstances, both models may prove equally efficient and thus competitive with one another.[31]  The proper role for law in this area is to advance the ability of companies, regardless of which model is used to enforce the underlying mechanisms in order to achieve their own development at minimal transaction costs. 

 

16. Before moving on to further introductory discussion, it may be helpful to put real life names together with these concepts.  Microsoft Corporation is a closed model software company that distributes the WindowsNT operating system for networks.  Red Hat is an open model software company that distributes the Linux operating system for networks.  Both are successful companies in the network computer operating system market.[32]  However, Linux poses no competitive threat to Microsoft in the personal computer operating system market.[33]  Further, due to the characteristics of the market, open model software firms are economically prohibited from competing in the personal computer operating system market.[34] 

 

17. Likewise, the Internet operations program market similarly follows one model of software distribution, but with open model firms supplying the great majority of this market.[35]  Every time Internet surfers enter a domain name address into their browser, a software program translates the combination of alphanumeric letters to the actual digital Internet web location.[36]  DNS (Domain Name System), the software program that completes this operation, and Sendmail, the program which routes nearly 80% of all e-mails, are software developed under the open model.[37] 

 

18. As noted above, a more in depth discussion of the public policy implications, resulting from the potential competitive aspects of the two models, appears below.  At bottom, economically feasible reasons exist for firms to follow either model depending on market characteristics.  Having presented concrete examples in an attempt to improve the sense of real world applicability of the topics discussed here, a return to more introductory material is timely.

 

C.  The Creation of Intellectual Property Rights in Software

 

19. Rights in intellectual property in general are based on the idea that individuals who add value to society through invention or creation of new work deserve a reward.  Put in another way, in order to expand the economy, the law should provide incentives for individuals to advance the interests of society, either by making productive use of the intellectual property or by increasing the size of the knowledge in the public domain. 

 

20. This idea is not merely altruistic, it is constitutional.[38]  Intellectual property law provides such an incentive to inventors and artists by granting exclusionary property rights of limited duration in new creations to the inventor or author.[39]  In setting these limitations, a public policy balance must be struck between providing sufficient incentives to create new works and providing the public benefit from those creations.[40]  This balance plays a role in the enforceability analysis applied by courts in judging issues of intellectual property statutory intent and in determining the proper scope and terms of licensing agreements.[41]  The American justice system repeatedly invalidates attempts to expand intellectual property rights beyond congressionally proscribed limits.[42]

 

21. Once ideas are created or expressed, inventors must make decisions as to what forms of intellectual property protection to pursue and to what extent they wish to disclose their ideas to others.  Patents protect inventions that are useful, novel, and nonobvious.[43]  Due to its intangible nature, courts once thought computer software was ineligible for patent protection.[44]  However, a widely accepted recent case held that anything made by man can be the subject of a patent, including software.[45]  As a result, patent applications for software and related developments – including methods of doing business with computers and Internet related processes – began flooding the United States Patent and Trademark Office.[46]  Another consequence of this new type of intellectual property protection for software is that licensing agreements must now deal with the potential underlying patents to the particular software.

 

22. If the inventor desires a patent, she cannot follow a closed model of software development.  This is true because the patent laws require an applicant to publish a detailed specification of the program that enables one of ordinary skill in the art to make and use the program and that describes the best mode known to the programmer for effectuating the program.[47]  The programmer cannot, at the same time, seek patent protection for software and strictly follow the closed model of development because the patent laws require that the world be told what the program is, how it is made, and how to put it to most productive use.[48]  For this reason, actors following a closed model would presumably choose not to pursue patent protection, but rather resort to copyright and trade secret protection of their software.[49]

 

23. Federal law grants copyrights to authors who fix expressions of an idea in a tangible medium.[50]  Unlike the issue of patent eligibility, the Copyright Act explicitly states that software is copyrightable.[51]  A programmer who writes out the design or protocol of a computer program has fixed an expression in a tangible medium and, as such, has a copyright to that expression.  Source code written by the programmer based on the design or protocol is also copyrighted because it likewise is a fixed expression of an idea in a tangible medium.[52]  Once compiled into object code, the same programmer also has a copyright in the object code.  Therefore, the same program can have three copyrights, at least. 

 

24. If this seems odd or unfair as being too large of a grant, think about the writing of a paper involving revisions and translations.  Each revision and translation of the paper is itself copyrighted.  Similarly, each translation of the computer program from human language to source code and from source code to object code is copyrighted.  Thus, software transactions that intend to transfer the complete package of copyrights in the software must grant rights in each copyrighted version of the program.  If the license does not cover all of the copyrights, the licensee is limited to using only that particular manifestation of the software covered by the license.

 

25. To tie all this in, think back to the description of the two models of software development presented above, the open, sharing amongst entities, model and the closed, protecting against free-riders, model.  In comparing the two models and their relative merits from a public policy standpoint, put aside for the moment any argument based on the impact each model may have on the incentive-based bargain underlying intellectual property rights.  This paper argues that, contrary to much academic scholarship and public perception, neither model of software development has a perverse impact on the public policy balance struck by Congress under any of the intellectual property statutes.  Rather, the opportunity for software programmers to choose between the two models, or even form hybrids, allows for efficiencies that neither model can provide by itself.  Next, a discussion of the decisions commonly made by actors following each model concerning the distribution of their intellectual property rights proceeds.

 

D.  The Distribution of Intellectual Property Rights in Software

 

26. Once a patent is issued on software, there is a difference in the choices made by actors under either of the two models with respect to use of the patent.  By definition, a patent tells the public how to achieve the result protected by the patent.  Assuming economic decision-making, actors under both the open and closed models will put the issued patents to their most profitable use through licensing or blocking.  The decision with respect to which option is most profitable for a particular firm will differ according to the underlying model of distribution adhered to by that firm.

 

27. An economically rational open model actor seeks to grant non-exclusive licenses to the full extent of market demand, up to and including the world.[53]  A closed model actor finds it more economical to use its patent to block competitors by filing infringement suits.[54]  Since the patent provides protection of the program for twenty years from date of application, and most software programs are obsolete well before twenty years, the patent acts as a virtual lifetime protector of its underlying intellectual property.[55]  Even so, many closed model actors do not seek patent protection because of the high cost of enforcing patent rights against infringers, the substantial likelihood that the patent will be declared invalid during litigation, and the fact that, commonly, only a reasonable royalty is awarded to the patentee as damages even if the patent is held valid and infringed.

 

28. Unlike patent law, there is no requirement of publication in order to obtain or enforce a copyright.[56]  Therefore, under both the closed and open models, programmers seek and receive copyrights in their software.  The choice each makes with respect to the level of secrecy or disclosure of the copyrighted work differentiates actors under the two models.  A closed model actor keeps secret as many of the copyrights as possible, while an open model actor makes available all of its copyrights to the public.

 

29. Under the closed model, only a minimally necessary amount of intellectual property is disclosed.  Software is most commonly distributed through the sale of computer disks containing only the executable form of the program.  Consumers install and operate the program by running the executable form of the program contained on the CD-ROM or 3.5” floppy disks.  A license to the object code that is contained on the disks accompanies the program.[57]  Licenses are never granted to the source code or any other translation of the program, allowing closed model actors to rest assured that their intellectual property is protected in two ways.  First, all of the closed model actor’s intellectual property is protected under the utmost secrecy leaving only the bare minimum amount of copyrights necessary in the program being released to the public.  Second, from a technology standpoint, competitors find it highly difficult to reverse-engineer the program from only its commercially available object code.[58]

 

30. Under the open model, all of the software copyrights are available to the market.  A company can do this in two ways: abandon the intellectual property rights to the public domain or license each of the copyrights.  Although abandoning the copyright can bring indirect economic gain through notoriety or prestige within the community, most economically prudent open model actors prefer to license their copyrights instead.[59]  This is so because abandoned copyrights can become the basis of a derivative work of another work, which itself becomes copyrighted.[60]  In order to reap economic benefit and protect their copyrights from being hijacked by closed model actors, the open model actor prefers to license all of their copyrights to others.  To prevent the exportation of the programs to the closed model, a term of open model license agreements must disallow derivative works from being licensed under the closed model.[61]

 

31. Think of two actors, each acting under one of the opposing software distribution models: Red Hat follows the open model and Microsoft follows the closed one.  If Red Hat abandons all copyrights in program X to the public domain, Microsoft can write program X+ and receive full copyright protection in all of forms of the software, whether underlying design, source code, or object code.  Microsoft can then license its copyrights under the closed model as described above.  Thus, within literally hours of releasing a program to the public, an uneducated open model actor can find her intent being thwarted.  True, the original program X will always and forever be part of the public domain, but this means very little in a technological age where drastic changes and improvements are made to software on a virtually instantaneous basis. 

 

32. A better way for Red Hat to advance its open model desires would be not to abandon its copyright, but rather to license it with restrictions on what the licensee can do with the copyright.[62]  Red Hat can assure an open model of distribution for its program by requiring all works that incorporates any part or derivative work of the copyright be distributed in an open model manner.  Therefore, to truly advance an open model of software development, the copyright to the software should not be abandoned to the public domain, but rather licensed with promises by the licensees that they will perpetuate the copyright and developments resulting from it only under an open model.

 

E.  Why Software is Licensed and Not Sold

 

33. Why is software licensed as opposed to sold? When I go into a store, I buy the software and consider myself to own it, so you can’t really be telling me that the software developer actually owns the software and is just letting me borrow it, can you?

 

34. Under the agreements that accompany the software, software companies almost universally retain ownership to the intellectual property incorporated by the software and extend a non-exclusive license to the consumer to use the intellectual property - patents, copyrights, trade secrets and trademarks - in accordance with the terms of the agreement.[63]  Through license agreements, software distributors can place greater restrictions and limitations on the use of the intellectual property contained in the software than if the transaction consummates a sale.  Although this distinction between license and sale may seem formalistic, the consequences are potentially severe.  Under the UCC, as well as the federal patent and copyright statutes, sale of a product drastically limits the control individuals can retain over that product.[64]  However, such drastic limitations do not arise if the individual retains ownership and merely licenses the product to end-users.[65]

 

35. Placing tight restrictions on the use of software “purchased” by consumers may seem intuitively unfair, but the public benefits from allowing this to occur.  By being able to limit the rights of customers, firms can offer the software at lower prices.  Presumably, a firm will charge less for a program that can only be operated on Sundays than the same program that can be run any day of the week.  Similarly, a program that cannot be redistributed by the consumer will cost considerably less than the same program that does not prohibit redistribution by the consumer.  Tailoring the grant of rights to fit the demands of various markets through the agreements attached to the purchased software allows software companies to charge lower prices to those markets which desire less rights.  Economically, this ensures a more efficient distribution of the program to all consumers.  To summarize, in software, it is the rights granted by the license, not the program itself, that is the consumed product.

 

36. While many lawyers have agreed with the line of reasoning behind the questions posed above, some judges have gone so far as to disregard the “license” label and find that the transaction was actually a sale, thus exempting the consumer-owner from the restrictions contained in what was claimed to be a license.[66]  Holdings that negate the limitations placed on software purchasers have devastating effects on the ability of firms under either model to tailor software products for various markets.  If software cannot be effectively licensed in a discriminating manner, software firms are left with the decision of which price point to offer the “sale” of their product.  Entities that can afford that price can purchase the software and have all the rights accorded them under the contract and intellectual property laws.  However, many small businesses and individuals will not be able to afford to “buy” the software. 

 

37. For instance, under the first sale doctrine, an owner of a piece of software can transfer her program to whomever and for whatever she desires.  The use of a license prevents this doctrine from applying, which allows computer programming firms to price-discriminate between customer characteristics.  If Microsoft wants to give Windows software to public schools at a cost blow the production cost and the transaction consummates a sale, the first sale doctrine would apply, and the school could resell the programs at a higher price to a corporation, retaining the difference.  This would cause Microsoft to charge all customers one price, either by lowering its price, forcing it to run at a loss, or raising its price, thus making the program unavailable to schools and other meagerly funded organizations.  This result is economically inefficient and would most assuredly be politically unpopular.

 

38. Through the formalistic distinction recognized between a license and a sale, contract law provides a mechanism to effectuate the desired price discrimination discussed above.  Firms under either the open or the closed model of software distribution provide licenses to the market while retaining ownership in the underlying intellectual property.  This allows software distributors to effectuate their business goals.  Although this discussion may seem simplistic and well settled, many courts have not adhered to these market norms in resolving software license validity disputes.  In fact, until four years ago, every court decision on the issue and the vast majority of legal scholarship staunchly opposed enforceability of license agreements in the mass distribution of software.  The next section presents an in-depth discussion of the legal development of software mass-market license enforceability.

 

III.       Mass-Market Software Licenses: Shrinkwrap and Clickwrap

 

39. Software developers desiring to license the intellectual property in their software set forth terms of the proposed agreement in writing.  For programs distributed to a limited number of consumers, the parties carefully draft and negotiate customized license agreements.[67]  However, as the number of licensees rises, the cost of forming idiosyncratic agreements with each customer becomes expensive.[68]  Much like commercial contracting in a multitude of other markets, use of standard form contracts in the software industry produces a reduction in transaction costs.[69]  The term “mass-market licenses” refers to the licensing agreements used with widely distributed software.[70]

 

40. If a consumer purchases a physical copy of the program, the license is typically included in print form either on or within the packaging.  The license gives the consumer the opportunity to review the license and return the software for a full refund if she does not wish to abide by its terms.  Notice of the license and the requirement that the consumer consent to its terms typically appears on the exterior of the software packaging.[71]  This method of mass-market licensing is referred to as “shrink-wrap” licensing.[72] 

 

41. If the consumer downloads a program via an Internet web site or some other digital means, the screen usually displays the license agreement.  Alternatively, the consumer may be prompted to “click” to another screen to review the license agreement.  Upon prompting, the user must point and click on a button labeled “I accept” or “Agree” in order to proceed with use of the program.  This method of mass-market licensing is referred to as “click-wrap” licensing.[73] 

 

42. Although the technological processes involved in effectuating mass-market licenses are well established, there still exists a large risk attached to their use.[74]  The state of the legal enforceability of software mass-market licenses has yet to stabilize.  Just as one authority holds a particular view, opposition soon responds with an increasingly intensive argument for the contrary position.  Since mass-market public software licenses are similar in procedure and substance to other types of mass-market licenses, legal analogies can be drawn.  Therefore, an analysis of the highly unpredictable law with respect to mass-market licenses is necessary before discussing the legal enforceability of public software licenses.

 

A.  Current Enforceability of Mass-Market Licenses

 

43. Before June 1996, no court had held mass-market licenses enforceable.  In actuality, only four cases even touched on the issue of mass-market license enforceability, and of the four, two simply relied on the predecessors.[75]  The first courts to rule held that such agreements were adhesion contracts.[76]  In so holding, the courts focused on the relative bargaining strength of the actors and determined that consumers had no ability to negotiate the terms of the agreement.[77]  Other courts have scrutinized the agreements under UCC and common law principles of contract.  These courts found the licenses unenforceable as a violation of UCC sections 2-207 and 2-209.[78]  Under these cases, the terms of the license must be brought to the consumer’s attention prior to purchase in order to be enforceable.[79] 

 

44. In ProCD v. Zeidenberg, the Seventh Circuit broke with precedent and held that standard form shrinkwrap license agreements are enforceable.[80]  Speaking through Judge Easterbrook, the Seventh Circuit examined applicable copyright law, Article 2 of the U.C.C., and the commercial reality of the mass-market software transactions.[81] The court discussed the commercial justifications for the contract and rejected arguments that the contract was procedurally unconscionable.[82]  The court recognized that the method of contract formation implemented by the software distributor, “may be a method of doing business valuable to buyers and sellers alike.”[83]

 

45. The court noted explicitly that it would not perform substantive contract analysis of the license because neither party claimed that the terms themselves were unenforceable on contract grounds.[84]  The only issue raised on appeal was what terms constituted the license and whether federal law preempted such terms.  In addressing the issue of federal law possibly preempting the contract, the court examined § 301(a) of the Copyright Act.[85]  Following precedent from three other circuits, the court concluded that the rights created by the license were not “equivalent to any of the exclusive rights within the general scope of copyright,” because contract rights do not restrict the options of persons who are strangers to the author.[86]  Therefore, under ProCD, no contractual agreement can be preempted.[87]

 

46. ProCD continues to be a highly controversial decision.[88]  Some commentators claim that the Seventh Circuit’s preemption analysis seriously erred by combining the two prongs of a correct preemption analysis into one.[89]  A more detailed discussion of this debate follows below in Subsection C.  The decision has also been criticized for erroneously concluding that the transaction was a sale of a license to use the software rather than a sale of the software itself.[90]  This argument presupposes that proper application of the UCC declares these transactions to be “sales.”[91]  As a result, the first sale doctrine would apply, and, therefore, limitations placed on the use or further distribution of the software would be invalid.[92]  Further, others argue that the Seventh Circuit erred in its commercial analysis because intellectual property licenses are “notoriously fallible” indicators of the parties’ intent.[93]

 

47. In M.A. Mortenson Co. v. Timberline Software Corp., the Court of Appeals of Washington followed the reasoning in ProCD to uphold a shrinkwrap license.[94]  The defendant claimed the license was unenforceable for several reasons, all based on principles of contract.[95]  First, the court concluded the license was not procedurally unconscionable for three reasons: (1) reasonable minds know that use of software is governed by licenses containing multiple terms; (2) the license was printed in full twice, once on the sealed envelope which contained the disk and a second time on the inside cover of the manual; and (3) notice of the license was displayed on the user’s screen each time the program was used and the consumer was given reasonable opportunity to review and reject the license.[96]  The court held that the defendant manifested assent to the terms of the license by installing and using the program.[97]  Second, the court addressed whether the term, here a limit on consequential damages, was substantively unconscionable.[98]

 

48. One case that did not follow ProCD is Novell, Inc. v. Network Trade Center, Inc.[99]  The United States District Court of Utah held that the transaction, although labeled a license, was actually a sale of goods as defined by the UCC.[100]  Therefore, the first sale doctrine applied, and the defendant had full ownership rights under the copyright statute.[101]  However, Novell is of questionable legal value because the court has since vacated its judgment as requested by the parties.[102]

 

49. Each court that has ruled on the enforceability of the clickwrap form of mass-market licensing has held the license enforceable. In Caspi v. Microsoft Network, the Superior Court of New Jersey, Appellate Division, focused on three factors in determining whether a clickwrap license was enforceable.[103]  These factors were whether the consumer received adequate notice of the license, whether sufficient competition in the market existed to equate the relative bargaining strengths of the transacting parties, and whether the consumer received adequate time to review the license and return the software.[104]  The court held the clickwrap agreement enforceable because allowing a user to freely scroll through various computer screens that presented the terms of the license instead of delivering a hard copy of the license is not procedurally unfair or unconscionable.[105]  Having found the license procedurally enforceable, the court turned to analyze the enforceability of the substantive term itself.[106]

 

50. In Storm Impact, Inc. v. Software of the Month Club, the Northern District of Illinois analyzed the enforceability of the clickwrap license of a shareware program.[107]  Noting a “lack of statutory guidance and topical case law,” the court relied on an expert witness who testified about the public benefits from the use of clickwrap licenses, and held the license procedurally enforceable.[108]  The court also addressed a quasi-abandonment argument proffered by the defendant that the plaintiff impliedly consented to further distribution of its program by publishing its software.[109]  As an issue of first impression, the court held that protecting material placed on the Internet for free distribution through the use of clickwrap licenses does not constitute effective consent to unlimited distribution of the software.[110]  Therefore, the express reservation of distribution rights by the plaintiff was substantively valid and enforceable.[111]  Lastly, the court rejected a fair use defense due to the commercial nature of the defendant’s use.[112]

 

51. In Hotmail Corp. v. Van$ Money Pie, Inc., the Northern District of California granted a preliminary injunction to a plaintiff wishing to enforce a clickwrap license.[113]  As to the issue of procedural unconscionability, the court found that notice of the license existed, and therefore that creation of an account constituted assent.[114]  The court also found that the defendant assented to the terms of the license agreement by use of the plaintiff’s program.[115]  However, since this was just a preliminary injunction ruling, it is not of highly precedential value.

 

52. In summary, most courts ruling on the enforceability of mass-market licenses post ProCD have held them enforceable if they fulfill certain procedural requirements.  In general, for a mass-market software license to be enforceable, the software consumer must be given three things: proper notice of the license before purchase, adequate time to review and decide whether to assent to the license’s terms, and the opportunity to return the software for a full refund if the license is unacceptable.  However, a minority of courts still holds shrinkwrap licenses unenforceable.  Further, many courts have yet to rule on the issue at all.  As a result, the enforceability of mass-market software licenses is still highly uncertain.

 

B.  The Twin Uniform Law Proposals: UCC Article 2B and UCITA

 

53. Desiring to resolve the uncertainty surrounding the enforceability of mass-market licenses, legal professionals worked intensively to draft uniform commercial laws to address and properly resolve the issue.[116]  Although the courts are increasingly likely to find mass-market licenses enforceable, these efforts intended to solidify the enforceability of mass-market licenses.[117]  However, consumer and industry groups, writer and artist organizations, academics and even members of the drafting committees themselves waged considerable resistance against the efforts to codify this trend.[118]  The resistance was so considerable that the proposed Article 2B of the UCC was eventually abandoned.[119]  However, the proponents of Article 2B did not go away.[120]  In order to renew its proposals, the National Conference of Commissioners of Uniform State Laws simply re-titled the draft statute the Uniform Computer Information Transactions Act (“UCITA”).[121]  The only difference between proposed Article 2B and UCITA was the withdrawal of American Law Institute support of the proposal in April of 1999.[122]

 

54. In essence, UCITA does not deviate too far from those courts that have held mass-market licenses enforceable.[123]  UCITA generally upholds the enforceability of mass-market licenses, but requires affirmative manifestation of assent by the licensee, a right to return for refund the software if there is no agreement until after payment, and provided that the form license cannot conflict with expressly negotiated terms.[124]  While UCITA also explicitly recognizes federal preemption as grounds for invalidating a mass-market license provision, it remains silent on the policy debates inherent in the preemption analysis.[125] 

 

55. Therefore, UCITA adds little to the enforceability analysis of mass-market licenses from that above.  Courts following UCITA must still perform a two prong analysis of mass-market licenses: first, inspection of the procedural aspects under the state’s contract laws (based on UCITA) and second, analysis of the substantive provisions under prevailing intellectual property, contract and preemption doctrine. 

 

C.  Preemption?

 

56. Mass-market licenses valid under state law are technically subject to preemption analysis under both § 301(a) of the Copyright Act and the Supremacy Clause.[126]  However, the court in ProCD held, and most experts concede, that mass-market licensing agreements held procedurally and substantively enforceable under the applicable contract law should not be preempted under § 301(a) of the Copyright Act.[127]  Whether mass-market licenses should be subject to Supremacy Clause preemption independent of § 301(a) preemption is a highly debated issue. 

 

57. Remember that one of the most controversial aspects of ProCD was that it completely bypassed a Supremacy Clause preemption analysis.[128]  Some commentators claimed that the Seventh Circuit ignored the Supremacy Clause preemption argument properly raised by the record and litigants.[129]  While § 301(a) preemption only requires one to determine whether the rights being enforced are equivalent to the rights established by the Copyright Act, Supremacy Clause preemption analysis also requires an inquiry into the policy decisions underlying the Copyright Act.[130]  If state enforcement of a mass-market software license agreement “stands as an obstacle to the accomplishment and execution of the full purposes and objectives of Congress” manifested in the Copyright Act, the Supremacy Clause preempts it.[131] 

 

58. Fair use is the Congressional objective most often cited as being prohibited by mass-market software licensing agreements.[132]  The fair use doctrine strikes the Congressionally intended balance between the incentives to create, generated by the copyright owner’s rights in an expressive work, and the public benefit from use of the work.[133]  Some argue that mass-market software license provisions which attempt to circumvent the doctrine of fair use stand as “obstacle[s] to the full purpose[] . . . of Congress” and should be preempted under the Supremacy Clause.[134]  Along this rationale, others argue that individuals should not be allowed to contract around the congressional balance.[135]  At the core, the argument for a separate Supremacy Clause preemption analysis sees mass-market software licensing as a great threat to the purposes of Congress because it purports to bind all who use the software, is pervasive, results from a great inequality in bargaining power, and involves copyright issues which are too complicated for consumers to understand.[136] 

 

59. There is a huge flaw with this core of these Supremacy Clause preemption arguments.  The underlying rationales given for performing a separate Supremacy Clause preemption analysis are exactly the same arguments made for finding the license procedurally or substantively unconscionable under state contract law.[137]  Therefore, these commentators are in effect arguing that defendants in mass-market software license cases can make the same exact arguments twice, once during the contract analysis stage and again during a Supremacy Clause preemption stage.  If the facts of a case are such that the above characteristics are present, the license would be held invalid on contractual grounds and any potential Supremacy Clause preemption analysis would be moot.  Further, it could not have been Congress’ intent to make litigants argue the same issues twice.

 

60. Further, the Ninth Circuit in MAI Sys. Corp. v. Peak Computer, Inc. held that the fair use rights to make copies of software granted under § 117 do not apply to a licensee because she is not, “an owner of a copy,” as is required by the statute.[138]  Since this paper deals with only licenses and not sales or other transfers of ownership in the software program itself, MAI Sys. Corp. renders § 117 moot.[139]  Therefore, there is no threat of preemption under the Supremacy Clause for not allowing a user to exercise rights to make additional copies established under § 117.  Although ProCD refused to resolve whether the agreement in that case was a license or a sale, most courts that have interpreted mass-market licenses have not declared them to constitute transfers of ownership.[140]  However, although fair use granted under § 117 is moot, defendants may still claim a § 107 fair use defense.[141]

 

61. These conclusions aside, assume for the sake of argument that proper analysis of mass-market software licenses does include a separate Supremacy Clause preemption inquiry.  The only practical effect of such a state of law would be to raise the price of software.  If a consumer is willing to waive her fair use right in return for a discount on the price of the software, the law should not prevent her from doing so.  If there existed unequal bargaining power or the license was adhesive, it would be unenforceable under contract law.  Therefore, even assuming that the issue of Supremacy Clause preemption of mass-market software license provisions must be made, it is not only irrelevant in that it will strike no provision which has survived contract analysis, but is also economically wasteful to all parties involved.

 

IV.  Mass-Market Public Software Licenses

 

62. Remember that under the open model of software development, an actor chooses to ensure that her software intellectual property is disseminated as widely as the market demands.  Anyone who wishes to learn from, see, adapt or use her creation is allowed to do so.  Benefits from following an open model include lower costs of development, less societal waste from overlapping development by competitors and an increased sense of community and professionalism amongst software programmers.  The costs of following the open model, and thus corresponding benefits from following the closed model, are free riding by competitors and decreased potential to capture and maintain market share.  Discussion of whether following the open or closed model of software distribution is better for an individual firm or for the public at large occurs below.  For purposes of this section, assume that a firm decides to follow the open model of software licensing for a program and that public policy supports the firm’s decision. 

 

63. Open model software development is accomplished exactly the same way as closed model software development, through the claiming of a copyright to the software along with the use of software licenses to distribute the copyrights.[142]  The difference is that open model actors desire to license the source code to their software, while closed model actors never release their source code under any terms.  Licenses used by open model actors that transfer rights in a software program’s source code are referred to as public software licenses.[143]  There exist two widely used methods of achieving open model software development.  The first method, Free Software, is the oldest and most strict method of open model licensing.[144]  The Free Software method is more than a decade old and claims several popular and widely used programs.[145]  However, corporate America has not embraced Free Software because of its radical reputation and a sense that its advocates are more philanthropists or anarchists than businessmen.[146]  As a result, Open Source public licensing spawned as a broader and more corporate friendly method of achieving open software development.[147]  Free Software and Open Source are similar in all important respects for the purposes of this paper.  Therefore, only relevant distinctions between the two are addressed in analyzing the legal enforceability of public software licenses in general.[148]

 

64. Just as their closed model counterparts, open model actors could conceivably negotiate individual public software licenses for each software transaction.  However, when supplying the mass computer software market, high transaction costs create the desire for a different method of distributing open model software.  Actors under the open model can use shrinkwrap and clickwrap agreements because they were analyzed above purely as procedural devices.  However, the public software licenses discussed below have procedural distinctions from shrinkwrap and clickwrap licenses.  Further, public software licenses also include specific substantive limitations and requirements not yet analyzed. 

 

A.  Free Software and the GNU General Public License

 

65. Free Software has nothing to do with price, but rather refers to user freedom.[149]  Software is free if it allows users to run, modify, redistribute and distribute modified versions of the program.[150]  Whether the user charges a fee for the redistribution of the original program or for the distribution of modified versions of Free Software is irrelevant to the definition.[151]  The principle of Free Software is to ensure that the program is openly available in all of its current and future forms to all those desiring to learn or benefit from it.[152]  A two step procedure called “copyleft”[153] achieves this goal.  As mentioned above, the first step in copylefting a program is to copyright it.[154]  The second step is to distribute the program under a license that prevents the software from being further developed or distributed under the closed model.[155]  The GNU General Public License (“GPL”) (see Appendix A) properly copylefts a program.[156]  Copylefting a program effectively frees the software by assuring that any future software that incorporates or is a modification of the copylefted program is itself required to be copylefted.[157]

 

66. As compared to typical software licenses, the GPL is relatively short, fairly straight forward and extremely user friendly.  The preamble of the GPL states the principles behind Free Software and the intent of the document.  The terms and conditions of the GPL follow the preamble.  At the end of the terms and conditions appear step by step instructions for applying the GPL to new or modified programs.

 

67. The provisions included in the terms and conditions of the GPL are as follows.  Sections 0 through 2 grant to the licensee the rights to copy, distribute and modify the software.  Sections 2, 3 and 6 describe what consideration the licensee must give in return.  Section 2(b) requires the licensee to license all redistributed or modified versions of the program and all works that incorporate any part of the program under the terms of the GPL.  This section achieves the goal of ensuring that all copies or modifications of the program are forever publicly licensed.  This prevents closed model software developers from moving aspects or future versions of publicly licensed programs into a closed model of distribution.  Section 2(c) requires printed or displayed notice of the license be given to users of the program.   Section 3 requires that the licensee make the source code of the program or any derivative work of the program available to third parties.  Finally, section 6 forbids the licensee from altering the rights granted under the license.

 

68. According to section 5, a user assents to the license by modifying or distributing the program or any derivative work of the program.  Termination of the license under section 4 occurs if the user attempts to violate the terms of the license.  Upon termination, all rights under the license automatically cease.  Sections 11 and 12 set forth warranty disclaimers and limitations on liability.  The remaining provisions cover random topics including the effect of conflicting legal conditions arising in the future (section 7), potential international distribution restrictions (section 8), and applicability of future revisions of the GPL (section 9).

 

B.  Open Source Software and the Mozilla Public License

 

69. In early 1998, Netscape Communications Corporation announced that the source code of its highly popular Netscape Communicator software was available for free licensing via the Internet.[158]  This move enabled Netscape to harness the creative power of thousands of programmers on the Internet by incorporating their best enhancements into future versions of Netscape's software.[159]  To help facilitate the open model of software development, Netscape launched a web sight, www.mozilla.org, to allow developers to download the source code, post enhancements, and obtain and share Communicator-related information with Netscape and others in the Internet community.[160] 

 

70. In order to protect the rights and interests of all developers, Netscape released the source code under a mass-market public software license.[161]  Rather than use the GPL, Netscape drafted the Mozilla Public License (“MPL”) (see Appendix B) because it felt that the GPL did not balance the needs of the various developers in a way that was most appropriate for its source code.[162]  Although there are differences between the precise terms of the MPL and the GPL, both licenses are effective mass-market public software licenses because they ensure an open model of software development.[163]

 

71. Soon after the announcement by Netscape that the Communicator source code would become publicly licensed, a group of free software proponents initiated the Open Source movement.[164]  Although the group adopted a new label for commercial reasons, the underlying goal of promoting an open model of software development remained unaltered.[165]  Both Free Software and Open Source concentrate on ensuring the maximum availability of source code to publicly licensed programs.

 

72. The only major difference between Free Software and Open Source is that Free Software does not allow a user to license the object code to modifications of the software under any license other than itself.[166]  In contrast, Open Source licenses allow users to take modifications private by licensing the object code of modified versions of the program with additional restrictions and limitations.  For instance, under Open Source a user could license the object code of a modified version with the additional restriction that no licensee could copy the modified version’s object code.  Under Free Software public licensing, doing this would violate section 3 of the GPL.  Table IV-1 compares the licensing practices discussed here.

 

Table IV-1: Comparison of Licensing Practices

 

License

Can be mixed with non-Free Software

Modifications can be taken private

Can be re-licensed by anyone

Free Software: GPL

No

No

No

Open Source: MPL

Yes

Yes

No

Public Domain

Yes

Yes

Yes

 

73. The MPL is the most widely used public software license that satisfies the Open Source definition while not satisfying the extra limitations of the Free Software definition.[167]  The MPL contains thirteen sections with no preamble.  Definitions are contained in section 1.  Section 2 grants the licensee a worldwide, royalty-free, non-exclusive license to use, reproduce, modify, display, perform, sublicense and distribute the licensed software.  Section 3 grants the licensee the right to distribute modifications of the software only if she (1) makes the source code of the modified version available under the same terms of the license and (2) gives proper notice of the license.  These requirements are similar to those in the GPL.  Other provisions also containing clauses similar to the GPL include: a disclaimer of warranties in section 7; a statement that termination results if the licensee fails to comply with the terms of the license in section 8; a limitation of liability in section 9; and a complete integration clause in section 11.

 

74. Since these provisions are substantively similar to the GPL, the enforceability analysis below does not address their substantive merits independently of the GPL’s provisions.  Section 3.6 contains the major distinction between Open Source and Free Software described above.  Under this sub-section, the licensee may distribute the object code under any license that does not alter the recipient’s rights in any source code as required by the MPL.  This provision ensures that the source code of all future versions of the program are open for all to see while also allowing the user to restrict use of the modified program’s object code. 

 

V.  Enforceability of Mass-Market Public Software Licenses

 

75. The discussion of shrinkwrap and clickwrap software licenses in section III centered on procedural aspects of these modern methods of mass-market software licensing.  The advancement of technology made implementation of these new procedures in the formation of license agreements advantageous to software developers.  The courts addressed whether or not these new procedures were enforceable as purely a procedural issue.  The notice, fair opportunity to review and fair opportunity to return requirements indicate that the substance of the agreements themselves played no part in the analysis performed.  Once a court approved the new method of licensing, the analysis proceeded to independently judge the substantive terms of the agreements.  This two step process allows courts to rely on well-settled precedent to decide the enforceability of substantive license terms.  Once a court holds the procedure of shrinkwrap licensing enforceable, the court then judges the underlying substantive term, for instance a liability limitation or warranty disclaimer, on its own merits as if it were part of any other contract.

 

76. Similar to shrinkwrap and clickwrap licenses, mass-market public software licenses including the GPL and the MPL contain unconventional formation procedures.[168]  However, unlike shrinkwrap and clickwrap licenses, mass-market public software licenses also contain many new substantive provisions that must themselves receive enforceability analysis.[169]  Therefore, a three pronged legal enforceability analysis is required.  First, the actions of the licensors under applicable intellectual property laws are analyzed.  Next, contract arguments for and against enforceability of public software licenses based on common law doctrines, the UCC and the proposed UCITA proceed.  Finally, preemption as grounds for invalidating mass-market public software licenses and the underlying public policy arguments are addressed. The discussion below presents and responds to the universe of arguments for and against finding public software licenses enforceable.  Ultimately, mass-market public software licenses are found to be enforceable methods of achieving an open model of software distribution.

 

A.  The Copyright Act

 

77. Licensees under a public software license agreement can make several arguments under the Copyright Act that the no rights under the mass-market public software license are enforceable.  These arguments include claiming abandonment of the copyright by the licensor, the traditional fair use defense, the fair use defense as expanded by § 117, and the granting of an implied license by the licensor.  However, none of these claims are likely successful. 

 

78. Software licensed under either the GPL or the MPL is not abandoned, because “abandonment of a right must be manifested by some overt act indicating an intention to abandon that right.”[170]  Mass-market public software licenses do not overtly indicate an intent to abandon the underlying copyrights.  Instead, they expressly claim copyrights to the software.  Therefore, a claim that the licensor of a program under the GPL or MPL has abandoned its copyright is unlikely to be successful.

 

79. Fair use stands as a potential defense in any copyright infringement action.  Proper implementation of the four factors indicated in § 107 of the Copyright Act requires intensive factual analysis of each case.[171]  Therefore, it is difficult to predict how each case would be resolved.  Further, § 117 of the Copyright Act extends the basis of fair use with respect to computer programs.[172]  However, as discussed above, since the parties here are transacting for a license and not the transfer of ownership of a copy, MAI Sys. Corp. renders § 117 moot.[173] 

 

80. Finally, courts are not likely to find the grant of an implied license from the actions of a programmer who actively seeks to license her code via mass-market public software licenses.  Section 204 of the Copyright Act expressly requires that the transfer of exclusive rights in copyrights be in writing.[174]  Non-exclusive licenses may be granted orally or implied by conduct.[175]  Therefore, as with fair use, the facts of a specific case would affect the outcome of this determination.  But, it is highly unlikely that an actor desiring to license her code for free through a mass-market public software license would be found to have acted in a way that indicated a desire to grant implied licenses in the same software.

 

B.  Contract Arguments

 

81. The crux of any mass-market public software license enforceability analysis lies in the application of the relevant contract doctrine to the license.  The contract analysis proceeds with two prongs: first, scrutiny of the procedural aspects of the license; and second, review of the substantive terms.  The GPL and MPL are not unenforceable for any procedural reason.  Further, the substantive provisions of the GPL and MPL are enforceable.  Therefore, no prevailing contractual argument undermines the enforceability of mass-market public software licenses.

 

82. ProCD and UCITA require that to be found procedurally acceptable, mass-market licensees must give the consumer three things: proper notice of the license before purchase, adequate time to review and decide whether to assent to the license’s terms, and the opportunity to return the software for a full refund if the license is unacceptable.[176]  Mass-market public software licenses typically, and those discussed here specifically, include provisions that fulfill each of these requirements.  Both the GPL and the MPL require notice of the license be given to the licensee and state that assent to the license results from the licensee performing specific acts.  Further, since neither license contemplates the payment of a fee for the license or that physical copies are the main method of distribution of the software, no opportunity for return and refund is applicable.  Rather, if the potential licensee finds the license terms offensive, they can merely refuse to exercise any of the rights under the license. 

 

83. Although some courts have argued that mass-market software licenses can be procedurally unconscionable due to the relative bargaining power of the parties, the majority view is that the competitive aspects of the computer software industry give consumers sufficient bargaining strength.[177]  Further, one may argue that the mass-market public software licenses are void for lack of consideration since the license is free, in that there is no charge for the license.  However, contracts which require promises in exchange for promises are not void for lack of consideration simply because no money changed hands.[178] 

 

84. Finally, some argue that mass-market public software licenses are unenforceable due to lack of privity between the parties because the licenses purport to restrict subsequent licensees who take a license from a direct, in-between, licensee.[179]  However, the proponent of this argument must not have read the licenses carefully, because § 6 of the GPL specifically states that upon redistribution by a direct licensee, the subsequent licensee must assent to a license from the original licensor.  By manifesting assent to the license, the subsequent licensee forms two agreements, one with the original licensee and one with the original licensor.  Likewise, under § 2 of the MPL, the subsequent licensee forms at least two licenses: one with the “Initial Developer” and one with each “Contributor” licensee.  Therefore, mass-market public software licenses are not unenforceable due to lack of privity.  Perhaps this argument was meant to address an assent issue rising from the distant relationship between the original program developer and a user far down the chain of distribution.  If so, the same reasoning as given above undermining other assent arguments also undermines this argument.  Since there exist no valid arguments to hold mass-market public software licenses procedurally unenforceable, the analysis proceeds to scrutinize the substance of mass-market public software licenses.

 

85. Mass-market public software licenses include many substantive provisions that are typical of non-public mass-market software licenses.  Limitation of liability, warranty waiver, contract integration, and termination based on breach provisions are not new and their enforceability is well settled.[180]  However, mass-market public software licenses do include provisions that are atypical which require analysis.

 

86. To achieve and maintain the open model of software development, the mass-market public software licenses place requirements and restrictions on the rights licensees who develop modified versions of the licensed program have in those modified versions.  These provisions may appear to be unfair or overreaching, however a proper analysis concludes they are not substantively unconscionable.  In essence, each of the provisions, whether the publication of source code requirement or the license of modified works restrictions, only limits what the licensee can do with respect to the original licensed code.  The rights of the licensee in intellectual property derived entirely independent of the licensed software are not encumbered in any way.

 

87. To put it another way, if these substantive terms of mass-market public software licenses are ruled unenforceable, the only practical result would be to diminish the rights of licensees in that they would lose any and all rights under the licenses.  The license restrictions and requirements act as mere constraints on the broader grant.  The fact that the license gives potential licensees the ability to review and reject the terms, further undermines any finding that they are substantively unconscionable.  The GPL makes this explicit in section 5 by saying:

 

You are not required to accept this license, since you have not signed it.  However, nothing else grants you permission to modify or distribute the program or its derivative works.  These actions are prohibited by law if you do not accept this license.

 

89. Therefore, the terms of the mass-market public software licenses, although substantively unconventional, are not substantively unconscionable.

 

C.  Preemption?

 

90. As discussed in Section III.C. above, mass-market software licenses are not subject to preemption under § 301(a) of the Copyright Act.  Further, the above discussion of potential Supremacy Clause preemption resulted in the conclusion that, even if Supremacy Clause preemption is applicable to mass-market software licenses, it would not invalidate a contract otherwise enforceable under appropriate contract law.  Therefore, neither § 301(a) of the Copyright Act nor the Supremacy Clause preempt mass-market public software licenses that are valid under prevailing contract law.

 

91. However, debate does exist with respect to whether a Supremacy Clause preemption analysis is appropriate and whether it might possibly invalidate an otherwise enforceable provision of a mass-market public software license.  To address these arguments, a discussion of a potential Supremacy Clause preemption analysis of the specific mass-market public software licenses presented in this paper is appropriate.  Such an analysis asks whether enforcement of the GPL or MPL mass-market public software license would “stand as an obstacle to the accomplishment and execution of” the intended balance struck by Congress between the incentive to create for copyright owners and the public benefit from use of the work.

 

92. As discussed in Section II above, there are many benefits to society from facilitating an open model of software development; the improvement of competition within the software industry perhaps being the largest one.  Publicly licensed software has the advantage of rapid development produced by the aid of many programmers across entity lines having the license to modify a program’s source code.  As one commentator put it, “[s]oftware that has been developed by thousands of volunteers and is given away is often better than the stuff for sale.”[181]  To make an analogy, in the legal profession issues are settled through the market place of ideas created by the publishing and dissemination of intellectual thought in court opinions and articles of scholarship.  Such is also the case for computer program development, in that society can benefit from experts in the field openly sharing their analysis and conclusions to common software problems.

 

93. More specifically, Marc Andreessen, executive vice president of products for Netscape Communications said that, "[b]y making our source code available to the Internet community, Netscape can expand its client software leadership by integrating the best enhancements from a broad array of developers.”[182]  In drafting the MPL, Netscape attempted to balance the needs of several different constituencies: the Free Software development community, commercial programmers, and Netscape itself.[183]  The intent of the license was to promote a Netscape Communicator development community on the Internet and to release the source code under a license that supports that community, while assuring that Netscape could meet its business goals going forward.[184]  In essence, Netscape believes that following an open model of software development maximizes development of the Netscape program.[185]

 

94. In exchange for these benefits, there are no costs to society from the use of valid mass-market public software licenses.  Computer programmers have more incentive to create, because they can license their programs under either the closed model or the open model, whichever they choose.  If they desire, a computer programmer can release a program under a public software license and adhere to the open model of software development.  Further, mass-market public software licenses place no limits on society’s rights to benefit from the copyrighted software.  Without mass-market public software licenses, software would only be distributed under closed, secretive agreements that result in increased research and development costs and educational lag.  These increased costs in turn slow down the rate of software development resulting in a less efficient distribution of programs to consumers. 

 

95. Holding mass-market public software licenses enforceable ensures that the wealth of information regarding the most cutting-edge of software programming is more readily available to the public.  Not only is publicly licensed software available to the public for reviewing, the public can also freely modify and distribute the software’s source code.  For these reasons, the public policy balancing which occurs under a Supremacy Clause preemption analysis would weigh heavily in favor of finding no preemption of mass-market public software licenses.

 

VI.  Conclusion

 

96. Software is the basis of what has been labeled “the new economy.”  The proper function of law as mandated by the Constitution is to encourage and promote advancement of the sciences and arts, of which software is arguably both.  Originally, software developed through an open and sharing community.  Then, the expanding mass-market of software emerged and perpetuated a closed and secretive model of software development.  Now, successful firms are finding it attractive from a business standpoint to develop software under both models depending on the market characteristics and the firm’s culture.

 

97. However, software companies are being cautious in their distribution of mass-market software because legal uncertainty as to the enforceability of unconventional mass-market software licenses imposes grave risk on their attempts to be innovative in accomplishing business objectives.  For those firms who wish to take bold steps available through the rapid development of modern technology, such as the Internet, this added cost of legal uncertainty surrounding the enforceability of mass-market software licenses causes social waste. 

 

98. Companies following an open model of software development must incorporate into their business plans the potential legal costs associated with enforcement of mass-market public software licenses.  Since these licenses have not been tested in the courts, nor addressed legislatively, these potential legal costs are enormous.  The resulting impact on the public is proportionally negative due to delay in introduction of competitive products into the software market.

 

99. The proper function of law is to facilitate economic advances that provide a net benefit to the public.  The prevailing intellectual property, contract, and preemption laws are each designed to achieve this purpose.  Since mass-market public software licenses conform to these laws and provide a net benefit to the public, their enforceability should be declared certain.

 

 

Appendix A

 

GNU GENERAL PUBLIC LICENSE

 

Version 2, June 1991

Copyright (C) 1989, 1991 Free Software Foundation, Inc.

59 Temple Place - Suite 330, Boston, MA  02111-1307, USA

 

Everyone is permitted to copy and distribute verbatim copies of this license document, but changing it is not allowed.

 

Preamble

 

The licenses for most software are designed to take away your freedom to share and change it.  By contrast, the GNU General Public License is intended to guarantee your freedom to share and change free software--to make sure the software is free for all its users.  This General Public License applies to most of the Free Software Foundation's software and to any other program whose authors commit to using it.  (Some other Free Software Foundation software is covered by the GNU Library General Public License instead.) You can apply it to your programs, too. 

 

When we speak of free software, we are referring to freedom, not price.  Our General Public Licenses are designed to make sure that you have the freedom to distribute copies of free software (and charge for this service if you wish), that you receive source code or can get it if you want it, that you can change the software or use pieces of it in new free programs; and that you know you can do these things. 

 

To protect your rights, we need to make restrictions that forbid anyone to deny you these rights or to ask you to surrender the rights.  These restrictions translate to certain responsibilities for you if you distribute copies of the software, or if you modify it.  For example, if you distribute copies of such a program, whether gratis or for a fee, you must give the recipients all the rights that you have.  You must make sure that they, too, receive or can get the source code.  And you must show them these terms so they know their rights. 

 

We protect your rights with two steps: (1) copyright the software, and (2) offer you this license which gives you legal permission to copy, distribute and/or modify the software. 

 

Also, for each author's protection and ours, we want to make certain that everyone understands that there is no warranty for this free software.  If the software is modified by someone else and passed on, we want its recipients to know that what they have is not the original, so that any problems introduced by others will not reflect on the original authors' reputations. 

 

Finally, any free program is threatened constantly by software patents.  We wish to avoid the danger that redistributors of a free program will individually obtain patent licenses, in effect making the program proprietary.  To prevent this, we have made it clear that any patent must be licensed for everyone's free use or not licensed at all. 

 

The precise terms and conditions for copying, distribution and modification follow. 

 

TERMS AND CONDITIONS FOR COPYING, DISTRIBUTION AND MODIFICATION

 

0.         This License applies to any program or other work which contains a notice placed by the copyright holder saying it may be distributed under the terms of this General Public License.  The "Program", below, refers to any such program or work, and a "work based on the Program" means either the Program or any derivative work under copyright law: that is to say, a work containing the Program or a portion of it, either verbatim or with modifications and/or translated into another language.  (Hereinafter, translation is included without limitation in the term "modification".) Each licensee is addressed as "you". 

 

Activities other than copying, distribution and modification are not covered by this License; they are outside its scope.  The act of running the Program is not restricted, and the output from the Program is covered only if its contents constitute a work based on the Program (independent of having been made by running the Program).  Whether that is true depends on what the Program does. 

 

1.         You may copy and distribute verbatim copies of the Program's source code as you receive it, in any medium, provided that you conspicuously and appropriately publish on each copy an appropriate copyright notice and disclaimer of warranty; keep intact all the notices that refer to this License and to the absence of any warranty; and give any other recipients of the Program a copy of this License along with the Program. 

 

You may charge a fee for the physical act of transferring a copy, and you may at your option offer warranty protection in exchange for a fee. 

 

2.         You may modify your copy or copies of the Program or any portion of it, thus forming a work based on the Program, and copy and distribute such modifications or work under the terms of Section 1 above, provided that you also meet all of these conditions:

 

a)         You must cause the modified files to carry prominent notices stating that you changed the files and the date of any change. 

b)         You must cause any work that you distribute or publish, that in whole or in part contains or is derived from the Program or any part thereof, to be licensed as a whole at no charge to all third parties under the terms of this License. 

c)         If the modified program normally reads commands interactively when run, you must cause it, when started running for such interactive use in the most ordinary way, to print or display an announcement including an appropriate copyright notice and a notice that there is no warranty (or else, saying that you provide a warranty) and that users may redistribute the program under these conditions, and telling the user how to view a copy of this License.  (Exception: if the Program itself is interactive but does not normally print such an announcement, your work based on the Program is not required to print an announcement.)

 

These requirements apply to the modified work as a whole.  If identifiable sections of that work are not derived from the Program, and can be reasonably considered independent and separate works in themselves, then this License, and its terms, do not apply to those sections when you distribute them as separate works.  But when you distribute the same sections as part of a whole which is a work based on the Program, the distribution of the whole must be on the terms of this License, whose permissions for other licensees extend to the entire whole, and thus to each and every part regardless of who wrote it. 

 

Thus, it is not the intent of this section to claim rights or contest your rights to work written entirely by you; rather, the intent is to exercise the right to control the distribution of derivative or collective works based on the Program. 

 

In addition, mere aggregation of another work not based on the Program with the Program (or with a work based on the Program) on a volume of a storage or distribution medium does not bring the other work under the scope of this License. 

 

3.         You may copy and distribute the Program (or a work based on it, under Section 2) in object code or executable form under the terms of Sections 1 and 2 above provided that you also do one of the following:

 

a)         Accompany it with the complete corresponding machine-readable source code, which must be distributed under the terms of Sections 1 and 2 above on a medium customarily used for software interchange; or,

 

b)         Accompany it with a written offer, valid for at least three years, to give any third party, for a charge no more than your cost of physically performing source distribution, a complete machine-readable copy of the corresponding source code, to be distributed under the terms of Sections 1 and 2 above on a medium customarily used for software interchange; or,

 

c)         Accompany it with the information you received as to the offer to distribute corresponding source code.  (This alternative is allowed only for noncommercial distribution and only if you received the program in object code or executable form with such an offer, in accord with Subsection b above.)

 

The source code for a work means the preferred form of the work for making modifications to it.  For an executable work, complete source code means all the source code for all modules it contains, plus any associated interface definition files, plus the scripts used to control compilation and installation of the executable.  However, as a special exception, the source code distributed need not include anything that is normally distributed (in either source or binary form) with the major components (compiler, kernel, and so on) of the operating system on which the executable runs, unless that component itself accompanies the executable. 

 

If distribution of executable or object code is made by offering access to copy from a designated place, then offering equivalent access to copy the source code from the same place counts as distribution of the source code, even though third parties are not compelled to copy the source along with the object code. 

 

4.         You may not copy, modify, sublicense, or distribute the Program except as expressly provided under this License.  Any attempt otherwise to copy, modify, sublicense or distribute the Program is void, and will automatically terminate your rights under this License.  However, parties who have received copies, or rights, from you under this License will not have their licenses terminated so long as such parties remain in full compliance. 

 

5.         You are not required to accept this License, since you have not signed it.  However, nothing else grants you permission to modify or distribute the Program or its derivative works.  These actions are prohibited by law if you do not accept this License.  Therefore, by modifying or distributing the Program (or any work based on the Program), you indicate your acceptance of this License to do so, and all its terms and conditions for copying, distributing or modifying the Program or works based on it. 

 

6.         Each time you redistribute the Program (or any work based on the Program), the recipient automatically receives a license from the original licensor to copy, distribute or modify the Program subject to these terms and conditions.  You may not impose any further restrictions on the recipients' exercise of the rights granted herein.  You are not responsible for enforcing compliance by third parties to this License. 

 

7.         If, as a consequence of a court judgment or allegation of patent infringement or for any other reason (not limited to patent issues), conditions are imposed on you (whether by court order, agreement or otherwise) that contradict the conditions of this License, they do not excuse you from the conditions of this License.  If you cannot distribute so as to satisfy simultaneously your obligations under this License and any other pertinent obligations, then as a consequence you may not distribute the Program at all.  For example, if a patent license would not permit royalty-free redistribution of the Program by all those who receive copies directly or indirectly through you, then the only way you could satisfy both it and this License would be to refrain entirely from distribution of the Program. 

 

If any portion of this section is held invalid or unenforceable under any particular circumstance, the balance of the section is intended to apply and the section as a whole is intended to apply in other circumstances. 

 

It is not the purpose of this section to induce you to infringe any patents or other property right claims or to contest validity of any such claims; this section has the sole purpose of protecting the integrity of the free software distribution system, which is implemented by public license practices.  Many people have made generous contributions to the wide range of software distributed through that system in reliance on consistent application of that system; it is up to the author/donor to decide if he or she is willing to distribute software through any other system and a licensee cannot impose that choice. 

 

This section is intended to make thoroughly clear what is believed to be a consequence of the rest of this License.  

 

8.         If the distribution and/or use of the Program is restricted in certain countries either by patents or by copyrighted interfaces, the original copyright holder who places the Program under this License may add an explicit geographical distribution limitation excluding those countries, so that distribution is permitted only in or among countries not thus excluded.  In such case, this License incorporates the limitation as if written in the body of this License. 

 

9.         The Free Software Foundation may publish revised and/or new versions of the General Public License from time to time.  Such new versions will be similar in spirit to the present version, but may differ in detail to address new problems or concerns. 

 

Each version is given a distinguishing version number.  If the Program specifies a version number of this License which applies to it and "any later version", you have the option of following the terms and conditions either of that version or of any later version published by the Free Software Foundation.  If the Program does not specify a version number of this License, you may choose any version ever published by the Free Software Foundation. 

 

10.       If you wish to incorporate parts of the Program into other free programs whose distribution conditions are different, write to the author to ask for permission.  For software which is copyrighted by the Free Software Foundation, write to the Free Software Foundation; we sometimes make exceptions for this.  Our decision will be guided by the two goals of preserving the free status of all derivatives of our free software and of promoting the sharing and reuse of software generally. 

 

NO WARRANTY

 

11.       BECAUSE THE PROGRAM IS LICENSED FREE OF CHARGE, THERE IS NO WARRANTY FOR THE PROGRAM, TO THE EXTENT PERMITTED BY APPLICABLE LAW.  EXCEPT WHEN OTHERWISE STATED IN WRITING THE COPYRIGHT HOLDERS AND/OR OTHER PARTIES PROVIDE THE PROGRAM "AS IS" WITHOUT WARRANTY OF ANY KIND, EITHER EXPRESSED OR IMPLIED, INCLUDING, BUT NOT LIMITED TO, THE IMPLIED WARRANTIES OF MERCHANTABILITY AND FITNESS FOR A PARTICULAR PURPOSE.  THE ENTIRE RISK AS TO THE QUALITY AND PERFORMANCE OF THE PROGRAM IS WITH YOU.  SHOULD THE PROGRAM PROVE DEFECTIVE, YOU ASSUME THE COST OF ALL NECESSARY SERVICING, REPAIR OR CORRECTION. 

 

12.       IN NO EVENT UNLESS REQUIRED BY APPLICABLE LAW OR AGREED TO IN WRITING WILL ANY COPYRIGHT HOLDER, OR ANY OTHER PARTY WHO MAY MODIFY AND/OR REDISTRIBUTE THE PROGRAM AS PERMITTED ABOVE, BE LIABLE TO YOU FOR DAMAGES, INCLUDING ANY GENERAL, SPECIAL, INCIDENTAL OR CONSEQUENTIAL DAMAGES ARISING OUT OF THE USE OR INABILITY TO USE THE PROGRAM (INCLUDING BUT NOT LIMITED TO LOSS OF DATA OR DATA BEING RENDERED INACCURATE OR LOSSES SUSTAINED BY YOU OR THIRD PARTIES OR A FAILURE OF THE PROGRAM TO OPERATE WITH ANY OTHER PROGRAMS), EVEN IF SUCH HOLDER OR OTHER PARTY HAS BEEN ADVISED OF THE POSSIBILITY OF SUCH DAMAGES. 

 

END OF TERMS AND CONDITIONS

 

How to Apply These Terms to Your New Programs

 

If you develop a new program, and you want it to be of the greatest possible use to the public, the best way to achieve this is to make it free software which everyone can redistribute and change under these terms. 

 

To do so, attach the following notices to the program.  It is safest to attach them to the start of each source file to most effectively convey the exclusion of warranty; and each file should have at least the "copyright" line and a pointer to where the full notice is found. 

 

one line to give the program's name and an idea of what it does.

Copyright (C) yyyy  name of author

 

This program is free software; you can redistribute it and/or modify it under the terms of the GNU General Public License as published by the Free Software Foundation; either version 2 of the License, or (at your option) any later version.

 

This program is distributed in the hope that it will be useful, but WITHOUT ANY WARRANTY; without even the implied warranty of MERCHANTABILITY or FITNESS FOR A PARTICULAR PURPOSE.  See the GNU General Public License for more details.

 

You should have received a copy of the GNU General Public License along with this program; if not, write to the Free Software Foundation, Inc., 59 Temple Place - Suite 330, Boston, MA  02111-1307, USA.

 

Also add information on how to contact you by electronic and paper mail. 

 

If the program is interactive, make it output a short notice like this when it starts in an interactive mode:

 

Gnomovision version 69, Copyright (C) year name of author

Gnomovision comes with ABSOLUTELY NO WARRANTY; for details type `show w'.  This is free software, and you are welcome to redistribute it under certain conditions; type `show c' for details.

 

The hypothetical commands `show w' and `show c' should show the appropriate parts of the General Public License.  Of course, the commands you use may be called something other than `show w' and `show c'; they could even be mouse-clicks or menu items--whatever suits your program. 

 

You should also get your employer (if you work as a programmer) or your school, if any, to sign a "copyright disclaimer" for the program, if necessary.  Here is a sample; alter the names:

 

Yoyodyne, Inc., hereby disclaims all copyright interest in the program ‘Gnomovision' (which makes passes at compilers) written by James Hacker.

 

signature of Ty Coon, 1 April 1989

Ty Coon, President of Vice

 

This General Public License does not permit incorporating your program into proprietary programs.  If your program is a subroutine library, you may consider it more useful to permit linking proprietary applications with the library.  If this is what you want to do, use the GNU Library General Public License instead of this License. 

 

 

Appendix B

 

MOZILLA PUBLIC LICENSE

Version 1.1

 

1.  Definitions.

 

1.0.1.  "Commercial Use" means distribution or otherwise making the Covered Code available to a third party.

 

1.1.  "Contributor" means each entity that creates or contributes to the creation of Modifications.

 

1.2.  "Contributor Version" means the combination of the Original Code, prior Modifications used by a Contributor, and the Modifications made by that particular Contributor.

 

1.3.  "Covered Code" means the Original Code or Modifications or the combination of the Original Code and Modifications, in each case including portions thereof.

 

1.4.  "Electronic Distribution Mechanism" means a mechanism generally accepted in the software development community for the electronic transfer of data.

 

1.5.  "Executable" means Covered Code in any form other than Source Code.

 

1.6.  "Initial Developer" means the individual or entity identified as the Initial Developer in the Source Code notice required by Exhibit A.

 

1.7.  "Larger Work" means a work which combines Covered Code or portions thereof with code not governed by the terms of this License.

 

1.8.  "License" means this document.

 

1.8.1.  "Licensable" means having the right to grant, to the maximum extent possible, whether at the time of the initial grant or subsequently acquired, any and all of the rights conveyed herein.

 

1.9.  "Modifications" means any addition to or deletion from the substance or structure of either the Original Code or any previous Modifications.  When Covered Code is released as a series of files, a Modification is:

 

A.  Any addition to or deletion from the contents of a file containing Original Code or previous Modifications.

 

B.  Any new file that contains any part of the Original Code or previous Modifications.

 

1.10.  "Original Code" means Source Code of computer software code which is described in the Source Code notice required by Exhibit A as Original Code, and which, at the time of its release under this License is not already Covered Code governed by this License.

 

1.10.1.  "Patent Claims" means any patent claim(s), now owned or hereafter acquired, including without limitation,  method, process, and apparatus claims, in any patent Licensable by grantor.

 

1.11.  "Source Code" means the preferred form of the Covered Code for making modifications to it, including all modules it contains, plus any associated interface definition files, scripts used to control compilation and installation of an Executable, or source code differential comparisons against either the Original Code or another well known, available Covered Code of the Contributor's choice.  The Source Code can be in a compressed or archival form, provided the appropriate decompression or de-archiving software is widely available for no charge.

 

1.12.  "You" (or "Your")  means an individual or a legal entity exercising rights under, and complying with all of the terms of, this License or a future version of this License issued under Section 6.1. For legal entities, "You" includes any entity which controls, is controlled by, or is under common control with You.  For purposes of this definition, "control" means (a) the power, direct or indirect, to cause the direction or management of such entity, whether by contract or otherwise, or (b) ownership of more than fifty percent (50%) of the outstanding shares or beneficial ownership of such entity.

 

2.  Source Code License.

 

2.1.  The Initial Developer Grant.

The Initial Developer hereby grants You a world-wide, royalty-free, non-exclusive license, subject to third party intellectual property claims:

 

(a)  under intellectual property rights (other than patent or trademark) Licensable by Initial Developer to use, reproduce, modify, display, perform, sublicense and distribute the Original Code (or portions thereof) with or without Modifications, and/or as part of a Larger Work; and

 

(b) under Patents Claims infringed by the making, using or selling of Original Code, to make, have made, use, practice, sell, and offer for sale, and/or otherwise dispose of the Original Code (or portions thereof).

 

(c) the licenses granted in this Section 2.1(a) and (b) are effective on the date Initial Developer first distributes Original Code under the terms of this License.

 

(d) Notwithstanding Section 2.1(b) above, no patent license is granted: 1) for code that You delete from the Original Code; 2) separate from the Original Code;  or 3) for infringements caused by: i) the modification of the Original Code or ii) the combination of the Original Code with other software or devices.

 

2.2.  Contributor Grant.

Subject to third party intellectual property claims, each Contributor hereby grants You a world-wide, royalty-free, non-exclusive license

 

(a)  under intellectual property rights (other than patent or trademark) Licensable by Contributor, to use, reproduce, modify, display, perform, sublicense and distribute the Modifications created by such Contributor (or portions thereof) either on an unmodified basis, with other Modifications, as Covered Code and/or as part of a Larger Work; and

 

(b) under Patent Claims infringed by the making, using, or selling of  Modifications made by that Contributor either alone and/or in combination with its Contributor Version (or portions of such combination), to make, use, sell, offer for sale, have made, and/or otherwise dispose of: 1) Modifications made by that Contributor (or portions thereof); and 2) the combination of Modifications made by that Contributor with its Contributor Version (or portions of such combination).

 

(c) the licenses granted in Sections 2.2(a) and 2.2(b) are effective on the date Contributor first makes Commercial Use of the Covered Code.

 

(d)    Notwithstanding Section 2.2(b) above, no patent license is granted: 1) for any code that Contributor has deleted from the Contributor Version; 2)  separate from the Contributor Version; 3)  for infringements caused by: i) third party modifications of Contributor Version or ii)  the combination of Modifications made by that Contributor with other software  (except as part of the Contributor Version) or other devices; or 4) under Patent Claims infringed by Covered Code in the absence of Modifications made by that Contributor.

 

3.  Distribution Obligations.

 

3.1.  Application of License.

The Modifications which You create or to which You contribute are governed by the terms of this License, including without limitation Section 2.2.  The Source Code version of Covered Code may be distributed only under the terms of this License or a future version of this License released under Section 6.1, and You must include a copy of this License with every copy of the Source Code You distribute.  You may not offer or impose any terms on any Source Code version that alters or restricts the applicable version of this License or the recipients' rights hereunder.  However, You may include an additional document offering the additional rights described in Section 3.5.

 

3.2.  Availability of Source Code.

Any Modification which You create or to which You contribute must be made available in Source Code form under the terms of this License either on the same media as an Executable version or via an accepted Electronic Distribution Mechanism to anyone to whom you made an Executable version available; and if made available via Electronic Distribution Mechanism, must remain available for at least twelve (12) months after the date it initially became available, or at least six (6) months after a subsequent version of that particular Modification has been made available to such recipients.  You are responsible for ensuring that the Source Code version remains available even if the Electronic Distribution Mechanism is maintained by a third party.

 

3.3.  Description of Modifications.

You must cause all Covered Code to which You contribute to contain a file documenting the changes You made to create that Covered Code and the date of any change.  You must include a prominent statement that the Modification is derived, directly or indirectly, from Original Code provided by the Initial Developer and including the name of the Initial Developer in (a) the Source Code, and (b) in any notice in an Executable version or related documentation in which You describe the origin or ownership of the Covered Code.

 

3.4.  Intellectual Property Matters

 

(a)  Third Party Claims.

If Contributor has knowledge that a license under a third party's intellectual property rights is required to exercise the rights granted by such Contributor under Sections 2.1 or 2.2, Contributor must include a text file with the Source Code distribution titled "LEGAL" which describes the claim and the party making the claim in sufficient detail that a recipient will know whom to contact.  If Contributor obtains such knowledge after the Modification is made available as described in Section 3.2, Contributor shall promptly modify the LEGAL file in all copies Contributor makes available thereafter and shall take other steps (such as notifying appropriate mailing lists or newsgroups) reasonably calculated to inform those who received the Covered Code that new knowledge has been obtained.

 

(b)  Contributor APIs.

If Contributor's Modifications include an application programming interface and Contributor has knowledge of patent licenses which are reasonably necessary to implement that API, Contributor must also include this information in the LEGAL file.

 

(c)  Representations.

Contributor represents that, except as disclosed pursuant to Section 3.4(a) above, Contributor believes that Contributor's Modifications are Contributor's original creation(s) and/or Contributor has sufficient rights to grant the rights conveyed by this License.

 

3.5.  Required Notices.

You must duplicate the notice in Exhibit A in each file of the Source Code.  If it is not possible to put such notice in a particular Source Code file due to its structure, then You must include such notice in a location (such as a relevant directory) where a user would be likely to look for such a notice.  If You created one or more Modification(s) You may add your name as a Contributor to the notice described in Exhibit A.  You must also duplicate this License in any documentation for the Source Code where You describe recipients' rights or ownership rights relating to Covered Code.  You may choose to offer, and to charge a fee for, warranty, support, indemnity or liability obligations to one or more recipients of Covered Code.  However, You may do so only on Your own behalf, and not on behalf of the Initial Developer or any Contributor.  You must make it absolutely clear than any such warranty, support, indemnity or liability obligation is offered by You alone, and You hereby agree to indemnify the Initial Developer and every Contributor for any liability incurred by the Initial Developer or such Contributor as a result of warranty, support, indemnity or liability terms You offer.

 

3.6.  Distribution of Executable Versions.

You may distribute Covered Code in Executable form only if the requirements of Section 3.1-3.5 have been met for that Covered Code, and if You include a notice stating that the Source Code version of the Covered Code is available under the terms of this License, including a description of how and where You have fulfilled the obligations of Section 3.2.  The notice must be conspicuously included in any notice in an Executable version, related documentation or collateral in which You describe recipients' rights relating to the Covered Code.  You may distribute the Executable version of Covered Code or ownership rights under a license of Your choice, which may contain terms different from this License, provided that You are in compliance with the terms of this License and that the license for the Executable version does not attempt to limit or alter the recipient's rights in the Source Code version from the rights set forth in this License.  If You distribute the Executable version under a different license You must make it absolutely clear that any terms which differ from this License are offered by You alone, not by the Initial Developer or any Contributor.  You hereby agree to indemnify the Initial Developer and every Contributor for any liability incurred by the Initial Developer or such Contributor as a result of any such terms You offer.

 

3.7.  Larger Works.

You may create a Larger Work by combining Covered Code with other code not governed by the terms of this License and distribute the Larger Work as a single product.  In such a case, You must make sure the requirements of this License are fulfilled for the Covered Code.

 

4.  Inability to Comply Due to Statute or Regulation.

 

If it is impossible for You to comply with any of the terms of this License with respect to some or all of the Covered Code due to statute, judicial order, or regulation then You must: (a) comply with the terms of this License to the maximum extent possible; and (b) describe the limitations and the code they affect.  Such description must be included in the LEGAL file described in Section 3.4 and must be included with all distributions of the Source Code.  Except to the extent prohibited by statute or regulation, such description must be sufficiently detailed for a recipient of ordinary skill to be able to understand it.

 

5.  Application of this License.

 

This License applies to code to which the Initial Developer has attached the notice in Exhibit A and to related Covered Code.

 

6.  Versions of the License.

 

6.1.  New Versions.

Netscape Communications Corporation ("Netscape") may publish revised and/or new versions of the License from time to time.  Each version will be given a distinguishing version number.

 

6.2.  Effect of New Versions.

Once Covered Code has been published under a particular version of the License, You may always continue to use it under the terms of that version.  You may also choose to use such Covered Code under the terms of any subsequent version of the License published by Netscape.  No one other than Netscape has the right to modify the terms applicable to Covered Code created under this License.

 

6.3.  Derivative Works.

If You create or use a modified version of this License (which you may only do in order to apply it to code which is not already Covered Code governed by this License), You must (a) rename Your license so that the phrases "Mozilla", "MOZILLAPL", "MOZPL", "Netscape", "MPL", "NPL" or any confusingly similar phrase do not appear in your license (except to note that your license differs from this License) and (b) otherwise make it clear that Your version of the license contains terms which differ from the Mozilla Public License and Netscape Public License.  (Filling in the name of the Initial Developer, Original Code or Contributor in the notice described in Exhibit A shall not of themselves be deemed to be modifications of this License.)

 

7.  DISCLAIMER OF WARRANTY.

 

COVERED CODE IS PROVIDED UNDER THIS LICENSE ON AN "AS IS" BASIS, WITHOUT WARRANTY OF ANY KIND, EITHER EXPRESSED OR IMPLIED, INCLUDING, WITHOUT LIMITATION, WARRANTIES THAT THE COVERED CODE IS FREE OF DEFECTS, MERCHANTABLE, FIT FOR A PARTICULAR PURPOSE OR NON-INFRINGING.  THE ENTIRE RISK AS TO THE QUALITY AND PERFORMANCE OF THE COVERED CODE IS WITH YOU.  SHOULD ANY COVERED CODE PROVE DEFECTIVE IN ANY RESPECT, YOU (NOT THE INITIAL DEVELOPER OR ANY OTHER CONTRIBUTOR) ASSUME THE COST OF ANY NECESSARY SERVICING, REPAIR OR CORRECTION.  THIS DISCLAIMER OF WARRANTY CONSTITUTES AN ESSENTIAL PART OF THIS LICENSE.  NO USE OF ANY COVERED CODE IS AUTHORIZED HEREUNDER EXCEPT UNDER THIS DISCLAIMER.

 

8.  TERMINATION.

 

8.1.  This License and the rights granted hereunder will terminate automatically if You fail to comply with terms herein and fail to cure such breach within 30 days of becoming aware of the breach.  All sublicenses to the Covered Code which are properly granted shall survive any termination of this License.  Provisions which, by their nature, must remain in effect beyond the termination of this License shall survive.

 

8.2.  If You initiate litigation by asserting a patent infringement claim (excluding declatory judgment actions) against Initial Developer or a Contributor (the Initial Developer or Contributor against whom You file such action is referred to as "Participant")  alleging that:

 

(a)  such Participant's Contributor Version directly or indirectly infringes any patent, then any and all rights granted by such

Participant to You under Sections 2.1 and/or 2.2 of this License shall, upon 60 days notice from Participant terminate prospectively, unless if within 60 days after receipt of notice You either: (i) agree in writing to pay Participant a mutually agreeable reasonable royalty for Your past and future use of Modifications made by such Participant, or (ii) withdraw Your litigation claim with respect to the Contributor Version against such Participant.  If within 60 days of notice, a reasonable royalty and payment arrangement are not mutually agreed upon in writing by the parties or the litigation claim is not withdrawn, the rights granted by Participant to You under Sections 2.1 and/or 2.2 automatically terminate at the expiration of the 60 day notice period specified above.

 

(b)  any software, hardware, or device, other than such Participant's Contributor Version, directly or indirectly infringes any patent, then any rights granted to You by such Participant under Sections 2.1(b) and 2.2(b) are revoked effective as of the date You first made, used, sold, distributed, or had made, Modifications made by that Participant.

 

8.3.  If You assert a patent infringement claim against Participant alleging that such Participant's Contributor Version directly or indirectly infringes any patent where such claim is resolved (such as by license or settlement) prior to the initiation of patent infringement litigation, then the reasonable value of the licenses granted by such Participant under Sections 2.1 or 2.2 shall be taken into account in determining the amount or value of any payment or license.

 

8.4.  In the event of termination under Sections 8.1 or 8.2 above, all end user license agreements (excluding distributors and resellers) which have been validly granted by You or any distributor hereunder prior to termination shall survive termination.

 

9.  LIMITATION OF LIABILITY.

 

UNDER NO CIRCUMSTANCES AND UNDER NO LEGAL THEORY, WHETHER TORT (INCLUDING NEGLIGENCE), CONTRACT, OR OTHERWISE, SHALL YOU, THE INITIAL DEVELOPER, ANY OTHER CONTRIBUTOR, OR ANY DISTRIBUTOR OF COVERED CODE, OR ANY SUPPLIER OF ANY OF SUCH PARTIES, BE LIABLE TO ANY PERSON FOR ANY INDIRECT, SPECIAL, INCIDENTAL, OR CONSEQUENTIAL DAMAGES OF ANY CHARACTER INCLUDING, WITHOUT LIMITATION, DAMAGES FOR LOSS OF GOODWILL, WORK STOPPAGE, COMPUTER FAILURE OR MALFUNCTION, OR ANY AND ALL OTHER COMMERCIAL DAMAGES OR LOSSES, EVEN IF SUCH PARTY SHALL HAVE BEEN INFORMED OF THE POSSIBILITY OF SUCH DAMAGES.  THIS LIMITATION OF LIABILITY SHALL NOT APPLY TO LIABILITY FOR DEATH OR PERSONAL INJURY RESULTING FROM SUCH PARTY'S NEGLIGENCE TO THE EXTENT APPLICABLE LAW PROHIBITS SUCH LIMITATION.  SOME JURISDICTIONS DO NOT ALLOW THE EXCLUSION OR LIMITATION OF INCIDENTAL OR CONSEQUENTIAL DAMAGES, SO THIS EXCLUSION AND LIMITATION MAY NOT APPLY TO YOU.

 

10.  U.S.  GOVERNMENT END USERS.

 

The Covered Code is a "commercial item," as that term is defined in 48 C.F.R.  2.101 (Oct.  1995), consisting of "commercial computer software" and "commercial computer software documentation," as such terms are used in 48 C.F.R.  12.212 (Sept.  1995).  Consistent with 48 C.F.R.  12.212 and 48 C.F.R.  227.7202-1 through 227.7202-4 (June 1995), all U.S.  Government End Users acquire Covered Code with only those rights set forth herein.

 

11.  MISCELLANEOUS.

 

This License represents the complete agreement concerning subject matter hereof.  If any provision of this License is held to be unenforceable, such provision shall be reformed only to the extent necessary to make it enforceable.  This License shall be governed by California law provisions (except to the extent applicable law, if any, provides otherwise), excluding its conflict-of-law provisions. With respect to disputes in which at least one party is a citizen of, or an entity chartered or registered to do business in the United States of America, any litigation relating to this License shall be subject to the jurisdiction of the Federal Courts of the Northern District of California, with venue lying in Santa Clara County, California, with the losing party responsible for costs, including without limitation, court costs and reasonable attorneys' fees and expenses.  The application of the United Nations Convention on Contracts for the International Sale of Goods is expressly excluded. Any law or regulation which provides that the language of a contract shall be construed against the drafter shall not apply to this License.

 

12.  RESPONSIBILITY FOR CLAIMS.

 

As between Initial Developer and the Contributors, each party is responsible for claims and damages arising, directly or indirectly, out of its utilization of rights under this License and You agree to work with Initial Developer and Contributors to distribute such responsibility on an equitable basis.  Nothing herein is intended or shall be deemed to constitute any admission of liability.

 

13.  MULTIPLE-LICENSED CODE.

 

Initial Developer may designate portions of the Covered Code as "Multiple-Licensed".  "Multiple-Licensed" means that the Initial Developer permits you to utilize portions of the Covered Code under Your choice of the NPL or the alternative licenses, if any, specified by the Initial Developer in the file described in Exhibit A.

 

EXHIBIT A -Mozilla Public License.

 

``The contents of this file are subject to the Mozilla Public License Version 1.1 (the "License"); you may not use this file except in compliance with the License.  You may obtain a copy of the License at http://www.mozilla.org/MPL/

 

Software distributed under the License is distributed on an "AS IS" basis, WITHOUT WARRANTY OF ANY KIND, either express or implied.  See the License for the specific language governing rights and limitations under the License.

 

The Original Code is ______________________________________.

 

The Initial Developer of the Original Code is ________________________.Portions created by ______________________ are Copyright (C) _____________________________.  All Rights Reserved.

 

Contributor(s): ______________________________________.

 

Alternatively, the contents of this file may be used under the terms of the _____ license (the  "[___] License"), in which case the provisions of [______] License are applicable instead of those above.  If you wish to allow use of your version of this file only under the terms of the [____] License and not to allow others to use your version of this file under the MPL, indicate your decision by deleting  the provisions above and replace  them with the notice and other provisions required by the [___] License.  If you do not delete the provisions above, a recipient may use your version of this file under either the MPL or the [___] License."

 

[NOTE: The text of this Exhibit A may differ slightly from the text of the notices in the Source Code files of the Original Code.  You should use the text of this Exhibit A rather than the text found in the Original Code Source Code for Your Modifications.]

 

----------------------------------------------------------------------

 

AMENDMENTS

 

The Netscape Public License Version 1.1 ("NPL") consists of the Mozilla Public License Version 1.1 with the following Amendments, including Exhibit A-Netscape Public License.  Files identified with "Exhibit A-Netscape Public License" are governed by the Netscape Public License Version 1.1.

 

Additional Terms applicable to the Netscape Public License.

I.  Effect.

These additional terms described in this Netscape Public License -- Amendments shall apply to the Mozilla Communicator client code and to all Covered Code under this License.

 

II.  "Netscape's Branded Code" means Covered Code that Netscape distributes and/or permits others to distribute under one or more trademark(s) which are controlled by Netscape but which are not licensed for use under this License.

 

III.  Netscape and logo.

This License does not grant any rights to use the trademarks "Netscape", the "Netscape N and horizon" logo or the "Netscape lighthouse" logo, "Netcenter", "Gecko", "Java" or "JavaScript", "Smart Browsing" even if such marks are included in the Original Code or Modifications.

 

IV.  Inability to Comply Due to Contractual Obligation. Prior to licensing the Original Code under this License, Netscape has licensed third party code for use in Netscape's Branded Code. To the extent that Netscape is limited contractually from making such third party code available under this License, Netscape may choose to reintegrate such code into Covered Code without being required to distribute such code in Source Code form, even if such code would otherwise be considered "Modifications" under this License.

 

V.  Use of Modifications and Covered Code by Initial Developer.

 

V.1.  In General.

The obligations of Section 3 apply to Netscape, except to the extent specified in this Amendment, Section V.2 and V.3.

 

V.2.  Other Products.

Netscape may include Covered Code in products other than the Netscape's Branded Code which are released by Netscape during the two (2) years following the release date of the Original Code, without such additional products becoming subject to the terms of this License, and may license such additional products on different terms from those contained in this License.

 

V.3.  Alternative Licensing.

Netscape may license the Source Code of Netscape's Branded Code, including Modifications incorporated therein, without such Netscape Branded Code becoming subject to the terms of this License, and may license such Netscape Branded Code on different terms from those contained in this License.

 

VI.  Litigation.

Notwithstanding the limitations of Section 11 above, the provisions regarding litigation in Section 11(a), (b) and (c) of the License shall apply to all disputes relating to this License.

 

EXHIBIT A-Netscape Public License.

 

"The contents of this file are subject to the Netscape Public License Version 1.1 (the "License"); you may not use this file except in compliance with the License.  You may obtain a copy of the License at http://www.mozilla.org/NPL/

 

Software distributed under the License is distributed on an "AS IS" basis, WITHOUT WARRANTY OF ANY KIND, either express or implied.  See the License for the specific language governing rights and limitations under the License.

 

The Original Code is Mozilla Communicator client code, released March 31, 1998.

 

The Initial Developer of the Original Code is Netscape Communications Corporation.  Portions created by Netscape are Copyright (C) 1998-1999 Netscape Communications Corporation.  All Rights Reserved.

 

Contributor(s): ______________________________________.

 

Alternatively, the contents of this file may be used under the terms of the _____ license (the "[___] License"), in which case the provisions of [______] License are applicable  instead of those above.  If you wish to allow use of your version of this file only under the terms of the [____] License and not to allow others to use your version of this file under the NPL, indicate your decision by deleting  the provisions above and replace  them with the notice and other provisions required by the [___] License.  If you do not delete the provisions above, a recipient may use your version of this file under either the NPL or the [___] License."



[1] Associate, Brobeck Phleger & Harrison, LLP, New York, New York, www.brobeck.com; J.D. 2000 University of Virginia; U.S. Patent and Trademark Office Reg. No. 47015; B.S.C.E. magna cum laude with University Honors 1997 University of South Florida. Mr. Ravicher's corporate practice focuses on intellectual property and information technology law, including licensing, patent, trademark, copyright and trade secret protection. He represents public companies, rapidly growing private businesses and start-ups with respect to an array of issues involved with intellectual property transactions.

[2] See Bruce Perens, Open Sources: Voices from the Open Source Revolution (1999), available at http://www.oreilly.com/catalog/opensources/book/perens.html (last visited Dec. 22, 2000).

[3] Id.

[4] Declan McCullagh, Mattel Suit Takes GNU Twist, at http://www.wired.com/news/politics/0,1283,35226,00.htm (last visited Dec. 22, 2000); Games Watch, The Guardian (London), Mar. 2, 2000, 2000 WL 15585066 (referring to an e-mail sent by ID Software threatening to sue QwuakeLives for refusing to abide by the GNU General Public License); Posting of John Carmack, at http://www.webdog.org/cgi-bin/finger.pl?id=1&time=20000224183445 (Feb. 24, 2000) (copy on file with author).

[5] See generally Marci A. Hamilton & Ted Sabety, Computer Science Concepts in Copyright Cases: The Path to a Coherent Law, 10 HARV. J.L. & TECH. 239, 266 (1997).

[6] For instance, the sequence 11111 may result in the screen going white while 11110 may result in the screen turning black.

[7] See Object Code – ZDNet Webopedia Definition and Links, at http://www.zdwebopedia.com/%20Programming/object_code.html (last visited Dec. 22, 2000).

[8] These high level computer programming languages incorporate many English words but pretty much none of the grammar.

[9] An observer may note the circularity of this step in that the original compiling program must have been written in object code.  This presumption is taken for granted here.  The true creation of object code production has a history on par with the creation of human kind and is beyond the scope of this piece.  For a more descriptive and accurate representation of the creation of evolution of compiler programs see Object Code Translation Home Page, at http://www.ifi.unizh.ch/richter/people/pilz/oct (last visited Dec. 22, 2000).

[10] See generally Anthony Lawrence Clapes, Softwars: The Legal Battles for Control of the Global Software Industry 243 (Quorum Books 1993).

[11] See Robert W. Gomulkiewicz & Mary L. Williamson, A Brief Defense of Mass Market Software License Agreements, 22 Rutgers Computer & Tech. L.J. 335, 338-39 (1996) (citing DAVID BENDER, Computer Law § 4A.141 (1994)).

[12] Mark Leibovich, The Spreading Grass-Roots Threat to Microsoft, Wash. Post, Dec. 3, 1998, at A1.

[13] Computer Programming: Hackers Rule, THE ECONOMIST, Feb. 20, 1999, at 63.

[14] Id.

[15] See Clapes, supra note 10.

[16] Id.

[17] Id.

[18] Id.

[19] Gomulkiewicz & Williamson, supra note 11.

[20] Id.

[21] Id.

[22] Id.

[23] BILL GATES, The Road Ahead 14-35 (Penguin Books 1995).

[24] Id.

[25] Id.

[26] Id.

[27] Id.

[28] Michael J. Madison, Legal-Ware: Contract and Copyright in the Digital Age, 67 Fordham L. Rev. 1025, 1040-41 (1998).

[29] See discussion infra Part V.C.

[30] The list of highly successful companies which develop software under both models includes Netscape Communications, IBM, Hewlett-Packard, and Intel.  See Lawrence J. Magid, Personal Technology for Consumers, Linux a Work in Progress, L.A. Times, Feb. 15, 1999, at C4.

[31] Approximately one-half of all web servers are run by Apache, an open model program.  Computer Programming, supra note 13.

[32] U.S. v. Microsoft Corp., 84 F. Supp. 2d 9, 23-24 (D.D.C. 1999) (findings of fact 50 and 51); Larry Seltzer, Software Returns to Its Source, PC Mag., Mar. 23, 1999, 1999 WL 6781131.

[33] See Microsoft, 84 F. Supp. 2d at 23-24.

[34] Id.

[35] See Jim Rapoza, Open-Source Fever Spreads, PC Wk., Dec. 13, 1999, at 1 (“Web-based applications such as e-commerce, business-to-business processes, auctioning and enterprise portals are natural fits for open source code”).

[36] For instance, www.business.com translates into 208.47.123.69.

[37] See Seltzer, supra note 32.

[38] U.S. Const. art. I, § 8, cl. 8.

[39] See generally U.S.C. tits. 17, 35.

[40] Id.

[41] See discussion infra Part III.C.

[42] Id.

[43] 35 U.S.C. §§ 101-103 (1999).

[44] See, e.g., Parker v. Flook, 437 U.S. 584 (1978) (holding that a computer program which updates alarm limits through a mathematical calculation was not patentable subject matter under section 101); Gottschalk v. Benson, 409 U.S. 63 (1972) (holding that a computer program which converted binary coded numbers into pure binary numbers was not patentable subject matter under section 101 of the Patent Act); In re Warmerdam, 33 F.3d 1354 (Fed. Cir. 1994) (holding that a computer program which created a specific data structure was not patentable subject matter under § 101).

[45] State St. Bank & Trust Co. v. Signature Fin. Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998), cert. denied, 119 S. Ct. 851 (1999).

[46] See 1995 US Software Patent Statistics, at http://lpf.ai.mit.edu/Patents/1995-patents.html (last visited Dec. 22, 2000).

[47] 35 U.S.C. § 112 (1999).

[48] Id.

[49] This is presumably true, but not accurately descriptive due to the rapid development experienced by contemporaneous computer software firms.  Today, a generation of software development occurs in less than a decade, while patents last twice that long (twenty years from date of application).  Therefore, any disclosed information relating to computer software will be obsolete and of no value to the public upon patent expiration.  In this manner, closed model actors can reap two benefits from applying for patents: strengthened intellectual property protection and de facto sole use of the underlying ideas for the extent of their market life.  For this reason, the presumption of closed model actors choosing not to seek patent protection is not entirely accurate.  However, the presumption holds true in part because closed model actors run the risk of having their patents found invalid before the end of the patent term.

[50] 17 U.S.C. § 102(a) (1999).

[51] 17 U.S.C. § 101 (1999) (the explicit copyright eligibility provision for software became part of the Copyright Act as a result of the 1980 amendments).

[52] Id.

[53] Exclusive licenses will not be used by an open model actor, because to do so would limit (to one) the number of potential developers and improvers of the program.

[54] See Brian L. Longest, Software Patent News, at http://www.softwarepatentnews.com/ (last visited Mar. 24, 2000) (describing Amazon.com’s suit against Barnes & Nobles and Priceline.com’s suit against Microsoft).

[55] 35 U.S.C. § 154 (1999).

[56] 17 U.S.C. § 104(a) (1999).

[57] See ProCD, Inc. v. Zeidenberg, 86 F.3d 1447 (7th Cir. 1996).

[58] See Mark A. Haynes, Commentary: Black Holes of Innovation in the Software Arts, 14 Berkley Tech. L.J. 567, 570 (1999).

[59] See discussion infra Part IV.

[60] Id.

[61] Id.

[62] Id.

[63] See generally ProCD, 86 F.3d at 1449-50; William H. Neukom & Robert W. Gomulkiewicz, Licensing Rights to Computer Software, in TECHNOLOGY LICENSING AND LITIGATION 1993, at 775, 778 (PLI Patents, Copyrights, Trademarks & Literary Property Course, Handbook Series No. 354, 1993).

[64] See Novell, Inc. v. Network Trade Cent., Inc., 25 F. Supp. 2d 1218, 1230 (D. Utah 1997), vacated, 187 F.R.D. 657 (D. Utah 1999).

[65] Id.

[66] Id.

[67] See ProCD, 86 F.3d at 1451.

[68] Id.

[69] Id.

[70] See Brad L. Peterson & Michael E. Bieniek, Software Licensing, in Understanding the Intellectual Property License 1999, at 745, 769 (PLI Patents, Copyrights, Trademarks & Literary Property Course, Handbook Series No. 576, 1999).

[71] Typically the notice is written on the box containing the disk and manual or on the outside of a sealed envelope which contains the disk.

[72] See ProCD, 86 F.3d at 1448.

[73] Some commentators refer to clickwrap agreements as a subset of shrinkwrap, but since the methods of contract formation under each are factually distinct, shrinkwrap, as used here, does not include clickwrap.  Rather, both are subsets of mass-market software licenses.

[74] See ProCD, 86 F.3d at 1452.

[75] Step-Saver Data Sys., Inc. v. Wyse Tech., 939 F.2d 91 (3rd Cir. 1991); Vault Corp. v.  Quaid Software Ltd., 847 F.2d 255 (5th Cir. 1991); Arizona Retail Sys., Inc. v. Software Link, Inc., 831 F. Supp. 759 (D. Ariz. 1993) (following Step-Saver reasoning to invalidate term of shrinkwrap license); Foresight Res. Corp. v. Quaid Software Pfortmiller, 719 F. Supp 1006 (D. Kan. 1989) (stating in dicta that under Vault the enforceability of such agreements is questionable).

[76] Vault, 847 F.2d at 269.

[77] Mark A. Lemley, Intellectual Property and Shrinkwrap Licenses, 68 S. CAL. L. REV. 1239, 1251-52 (1995).

[78] Step-Saver, 939 F.2d at 91; Arizona Retail, 831 F. Supp. at 759.

[79] Darren C Baker, ProCD v. Zeidenberg: Commercial Reality, Flexibility in Contract Formation, and Notions of Manifested Assent in the Arena of Shrinkwrap Licenses, 92 Nw. U. L. Rev. 379, 399 (1997).

[80] ProCD, 86 F.3d at 1449.

[81] Id.

[82] Id. (rejecting arguments based on adhesion and formation at purchase followed by invalid modification).

[83] Id. at 1451 (citing E. ALLAN FARNSWORTH, 1 FARNSWORTH ON CONTRACTS § 4.26 (1990); Restatement (Second) of CONTRACTS § 211 cmt. a (1981)).

[84] Id. at 1449 (“[N]o one argues that the terms of the license at issue here are troublesome . . . .”).

[85] 17 U.S.C. § 301(a) (1999).

[86] Id.; ProCD, 86 F.3d at 1454.

[87] This proposition is widely accepted by legal scholars.  See Melville B. Nimmer & David Nimmer, 1 Nimmer on Copyright § 1.01[B][1][a] (2000).

[88] See Garry L. Founds, Shrinkwrap and Clickwrap Agreements: 2B or not 2B?, 52 Fed. Comm. L.J. 99, 106 (1999); Dennis S. Karjala, Federal Preemption of Shrinkwrap and On- Line Licenses, 22 U. Dayton L. Rev. 511, 521-25 (1997); Nimmer & Nimmer, supra note 87; Neil Weinstock Netanel, Copyright and a Democratic Civil Society, 106 Yale L.J. 283, 383-84 (1996).

[89] See Founds, supra note 88, at 106 (claiming the Seventh Circuit “completely ignored” an alternative basis for upholding the district court).

[90] See Novell, Inc. v. Network Trade Cent., Inc., 25 F. Supp. 2d 1218, 1230 (D. Utah 1997), vacated, 187 F.R.D. 657 (D. Utah 1999).

[91] Id.

[92] Id.

[93] Mark A. Lemley, Beyond Preemption: The Law and Policy of Intellectual Property Licensing, 87 Calif. L. Rev. 111, 169 (1999).

[94] See M.A. Mortenson Co., Inc. v. Timberline Software Corp., 970 P.2d 803, 808-09 (Wash. Ct. App. 1999).

[95] Id.

[96] Id. at 806-08.

[97] Id.

[98] Id. at 812.

[99] See Novell, 25 F. Supp. 2d at 1218.

[100] Id. at 1230.

[101] Id.

[102] See Novell, Inc. v. Network Trade Cent., Inc., 187 F.R.D. 657 (D. Utah 1999). (vacating without expressing opinion as to whether the prior judgment should be vacated with respect to the copyright issue because of changed law or precedent).

[103] Caspi v. Microsoft Network, 732 A.2d 528 (N.J. Super Ct. App. Div. 1999), cert. denied, 743 A.2d 851 (1999).

[104] Id. at 531.

[105] Id. at 532.

[106] Id. at 532-33.  The substantive term, a forum selection clause, was held valid.

[107] See Storm Impact, Inc. v. Software of the Month Club, 13 F. Supp. 2d 782 (N.D. Ill. 1998) (defining shareware according to 37 C.F.R. § 201.26 as “copyrighted software which is distributed for the purposes of testing and review, subject to the condition that payment to the copyright owner is required after a person who has secured a copy decides to use the software”).

[108] Id. at 791.  The defendant proffered that increased distribution of the “free” program would benefit the plaintiff copyright owner.  However, the court noted that this argument has been rejected by the Supreme Court.  Id. at 790 (citing Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539, 565 (1985)).

[109] Id. at 790.

[110] Id. at 791.

[111] Id.

[112] Id. at 790-91.

[113] See Hotmail Corp. v. Van$ Money Pie Inc., 47 U.S.P.Q.2d 1020 (N.D. Cal. 1998).  The plaintiff in this case required users of its online e-mail service to abide by a service agreement.  Violation of the service agreement by the user constituted termination.  Although labeled a “service,” the defendant was actually only using the plaintiff’s software.  This software distribution relationship is unconventional because the software was never installed or operated by the defendant’s own computer.  Rather the plaintiff’s software program, which provided the service, resided on the plaintiff’s server and was accessed through the Internet by the defendant.

[114] Id. at 1025.

[115] Id.

[116] See Founds, supra note 88, at 101-02.

[117] Id.

[118] Id.  See also C. Scott Ananian, Stop UCITA, at http://www.cag.lcs.mit.edu/~cananian/UCITA (last visited Dec. 22, 2000).

[119] See Founds, supra note 88, at 101-02.

[120] Id.

[121] See Unif. Computer Info. Transactions Act, at http://www.law.upenn.edu/bll/ulc/ucita/ucita92900.doc (last visited Dec. 22, 2000).

[122] Compare Unif. Computer Info. Transactions Act, supra note 121, with Unif. Commercial Code art. 2B (draft), at http://www.law.upenn.edu/bll/ulc/ucc2b/2b898.htm (last visited Dec. 22, 2000).

[123] See Unif. Computer Info. Transactions Act, supra note 121.

[124] See Raymond T. Nimmer, Issues in Software Licensing, in Understanding the Intellectual Property License 1999, at 399, 433 (PLI Patents, Copyrights, Trademarks, and Literary Property Course, Handbook Series No. 576, 1999).

[125] See Founds, supra note 88, at 103.

[126] 17 U.S.C. § 301(a) (1999); U.S. Const. art. VI, § 2.

[127] See ProCD, 86 F.3d at 1454; Founds, supra note 88, at 112 (citing for this conclusion the “extra element” of contracts as noted by Judge Easterbrook and the legislative history of § 301, which indicates no power to preempt state contract law).

[128] See Garry L. Founds, Shrinkwrap and Clickwrap Agreements: 2B or not 2B?, 52 Fed. Comm. L.J. 99, 106 (1999); Dennis S. Karjala, Federal Preemption of Shrinkwrap and On- Line Licenses, 22 U. Dayton L. Rev. 511, 521-25 (1997); Nimmer & Nimmer, supra note 87; Neil Weinstock Netanel, Copyright and a Democratic Civil Society, 106 Yale L.J. 283, 383-84 (1996).

[129] See Founds, supra note 128, at 106 (claiming the Seventh Circuit “completely ignored” an alternative basis for upholding the District Court).

[130] Id.

[131] Hines v. Davidowitz, 312 U.S. 52, 67 (1941).

[132] Founds, supra note 88, at 114.

[133] Id.

[134] Id.

[135] See Karjala, supra note 88, at 525.

[136] See Founds, supra note 88, at 116.

[137] See discussion infra Part III.A.

[138] See Mai Sys. Corp. v. Peak Computer, Inc., 991 F.2d 511, 519 n.5 (9th Cir. 1993).

[139] Remember, what is sold is the right to use the software in accordance with the terms of the license, not the software itself.  Much like an apartment lease is only the sale of rights to occupy the apartment under the terms of the agreement, not the transfer of ownership of the property.

[140] See ProCD, 86 F.3d at 1450 (“Whether there are legal differences between ‘contracts’ and ‘licenses’ (which may matter under the copyright doctrine of first sale) is a subject for another day.”); see discussion infra Part III.A.

[141] 17 U.S.C. § 107 (1999).

[142] See GNU General Public License, Preamble, at http://www.gnu.org/copyleft/gpl (last visited Feb. 28, 2000) (attached as appendix A).

[143] See Approved Licenses, at http://www.opensource.org/licenses/ (last visited Dec. 22, 2000).

[144] See GNU General Public License, supra note 142.

[145] Id.

[146] See History of the Open Source Initiative, at http://www.opensource.org/history.html (last visited Dec. 22, 2000) (“We realized it was time to dump the confrontational attitude that has been associated with ‘free software’ in the past and sell the idea strictly on the same pragmatic, business-case grounds that motivated Netscape.”).

[147] Id.

[148] See Why “Free Software” is Better than “Open Source”, at http://www.gnu.org/philosophy/free-software-for-freedom.html (last visited Mar. 8, 2000) (discussing the non-legally relevant distinctions between Free Software and Open Source).

[149] See GNU General Public License, supra note 142.

[150] Id.

[151] Id.  In fact, the Free Software Foundation allows free software users to charge for redistribution and distribution of modified versions if they so desire.

[152] Id.

[153] See What is Copyleft?, at http://www.gnu.org/copyleft/copyleft.html (last visited Feb. 28, 2000).  The term was chosen in attempt to make the point that free software has a purpose opposite to the more common proprietary uses of copyright law.  However, as discussed here, open model actors also make proprietary uses of intellectual property law.  Therefore, labeling someone or something proprietary does nothing to distinguish between the open or closed model of software distribution.  The distinctions presented in Part II are more appropriate.

[154] Id.

[155] Id.

[156] Id.

[157] Id.

[158] Press Release, Netscape Communications Corporation, Netscape Announces Plans to Make Next-Generation Communicator Source Code Available Free on the Net (Jan. 22, 1998), at http://www.netscape.com/newsref/pr/newsrelease558.html.

[159] Id.

[160] Press Release, Netscape Communications Corporation, Netscape Announces Mozilla.org, a Dedicated Team and Web Site Supporting Development of Free Client Source Code (Feb. 23, 1998), at http://home.netscape.com/newsref/pr/newsrelease577.html.

[161] Mozilla and Netscape Public License, at http://www.mozilla.org/MPL (last visited Dec. 22, 2000) (attached as Appendix B).  In actuality, the MPL serves as a template for application to specific programs.  Netscape released Communicator under the Netscape Public License, which comprises the MPL and an addendum making specific alterations to suit the particular program being licensed.

[162] Id.

[163] Id.

[164] See History of the Open Source Initiative, supra note 146.

[165] Id. (stating that spirited debate within the hacker community between “open source” and “free software” is understood by all parties to be a proxy for wider issues about the community’s relationship to the business world”).

[166] See Bruce Perens, Open Sources: Voices from the Open Source Revolution, at http://www.oreilly.com/catalog/opensources/book/perens.html (last visited Dec. 22, 2000).  This aspect of the GPL is considered “viral.”

[167] See Id.

[168] Id.

[169] Id.

[170] Micro Star v. Formgen Inc., 154 F.3d 1107, 1114 (9th Cir. 1997).

[171] 17 U.S.C. § 107 (1999).

[172] 17 U.S.C. § 117 (1999).

[173] The ability of a non-licensee to claim fair use is out of the realm of this paper since only the parties to a mass-market public software license are considered.

[174] 17 U.S.C. 204(a) (1999).

[175] See Micro Star, 154 F.3d at 1113.

[176] See discussion infra Part III.A.

[177] Id.

[178] Restatement (Second) of Contracts § 71 (1981).

[179] See Robert P. Merges, The End of Friction?  Property Rights and Contract in the “Newtonian” World of On-Line Commerce, 12 Berkeley Tech. L.J. 115, 129 (1997).

[180] See generally Unif. Commercial Code; Unif. Computer Info. Transactions Act; Restatement (Second) of CONTRACTS (1981).

[181] Computer Programming: Hackers Rule, supra note 13 (quoting Eric Raymond, Open Source’s “leading intellectual light,” as saying “given enough eyeballs, all bugs are shallow”).

[182] Press Release, Netscape Communications Corporation, Netscape Announces Mozilla.org, a Dedicated Team and Web Site Supporting Development of Free Client Source Code (Feb. 23, 1998), at http://home.netscape.com/newsref/pr/newsrelease577.html.

[183] Mozilla and Netscape Public License, at http://www.mozilla.org/MPL (last visited Dec. 22, 2000).

[184] Id.

[185] Id.