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Re: Effect of transfer of copyright on free software licenses?

From: Alexander Terekhov
Subject: Re: Effect of transfer of copyright on free software licenses?
Date: Thu, 23 Jul 2009 19:20:00 +0200

Hyman Rosen wrote:
> Gee, let me see. OK, got it. The court, not the crank.

Stop being utter idiot Hyman.

On 5/20/05, Thomas Bushnell BSG <> wrote:
> "Michael K. Edwards" <> writes:
> > Sorry about that; I skipped a step or two.  Your "unilateral grant of
> > permission" is not in fact a recognized mechanism under law for the
> > conveyance of a non-exclusive copyright license.
> I'm sorry, can you point me to the statute here?  The US statute
> simply prohibits copying without permission.  It says nothing about
> how permission is granted.  Can you point me to a court case which
> said "that grant of permission is not contractual, and therefore no
> permission has been granted"?

You might read the Jacob Maxwell v. Veeck case, in which the defendant
argued exactly that (because by law an exclusive license must be a
written contract).  The court agreed that federal law didn't permit
the finding of an exclusive license under the circumstances, discussed
exactly what a non-exclusive license is, and proceeded to construe and
interpret one under the applicable state contract law.  Honest to
Murgatroyd, "copyright (and patent, etc.) licenses are [terms in]
contracts" is a principle that long predates modern copyright statutes
and you're not going to find any counter-examples.

> We aren't concerned with a browsewrap or shrinkwrap license; all the
> cases you point to are about that.  Those are about licenses which
> attempt to take away rights that a person would have had if they had
> never agreed to the license.  Since the GPL only gives you new rights,
> never taking away any, it's not clear how objections to those kinds of
> licenses would matter.

That argument simply doesn't hold water.  Covenants to offer source
code in this and such a way are not "scope of license", they're return
consideration.  The GPL is a true offer of bilateral contract.  And
yes, I've read lots of unfounded assertions from the FSF and others on
the subject, and this and other arguments have been made with a
reasonable degree of skill on debian-legal, and I see no reason to
repeat them on d-d.

Here's more:

On 2/19/07, linux-os (Dick Johnson) <> wrote:
> FWIW. A license is NOT a contract in the United States, according to
> contract law. A primary requirement of a contract is an agreement. A
> contract cannot, therefore, be forced. Licenses, on the other hand,
> can be forced upon the user of the licensed material.

Wrong.  Acceptance through conduct has been integral to contract law
in common-law countries since the days of writs in Chancery, and is
part of the codification of the difference between contracts "in
personam" and "in rem".  Allow me to recommend Kevin Teeven's "A
History of the Anglo-American Common Law of Contract".  It is settled
law throughout the Western world that non-exclusive licenses of
copyright need not be formalized, or even put in writing.  Licenses
cannot in any sense be forced on anyone; they are simply a defense
against an action for tort, a conditional waiver of the right to sue,
and cannot even be introduced as evidence by a plaintiff.

> A license is a document that states the conditions under which an
> item may be used. A prerequisite of the licensor is that he/she/they
> have a legal right to control the thing being licensed. When a licensed
> item has its license modified by a party, not the original licensor,
> it is quite possible that such attempts to control the item are
> invalid (moot). Lawyers like this because it gives them work since
> the final resolution of such a action can old be determined by a
> court!

Wrong again.  A copyright license is a term in an otherwise valid
written, oral, or implied offer of contract, with certain limitations
of scope and certain conditions and covenants of return performance,
waiving the right to sue for the statutory tort of copyright
infringement.  Read Nimmer on Copyright, or follow the links in this
paragraph (another self-quotation from two years ago,

Same difference, legally.  Non-exclusive license has a longer history
in patent cases than in copyright, and copyright cases frequently
point to patent cases as precedent.  The commonly cited Supreme Court
precedent that a non-exclusive patent license is "a mere waiver of the
right to sue" is a 1927 case (De Forest Radio Telephone v. United
States, ), which in turn cites
Robinson on Patents -- so it was evidently already well established by
then, at least with respect to patents.  Everex Systems v Cadtrak (aka
in re CFLC) 1996, for instance, cites De Forest in concluding that
such a license constitutes significant continuing performance
(settling, as far as I am concerned, the question about whether GPL
release is a "one-shot" act with no continuing performance -- it's
not).  For an example that all this applies to copyright, see Jacob
Maxwell v. Veeck 1997 ( ),
which brings in re CFLC over to the copyright arena.

Please do not bother to trot out Webster's definition or medieval uses
of the word "license", or the theory of unilateral license with regard
to trespass and third-party beneficiaries.  These are concepts
different from "license" as used in the phrase "non-exclusive
copyright license", and just happen to be spelled the same.
- Michael
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I'll quote Jacob Maxwell v. Veeck in full for your convenience.

United States Court of Appeals, 

Eleventh Circuit. 

No. 96-2636. 

JACOB MAXWELL, INCORPORATED, Plaintiff-Counter-Defendant-Appellant,


Michael VEECK, Individually and as General Partner of the Fort Myers
Miracle Baseball Club Partnership, et al., Defendants, 

John Kuhn, Movant, 

Marvin Goldclang, Individually and as General Partner of the Fort Myers
Miracle Baseball Club Partnership, Greater Miami Baseball Club Limited
Partnership, Defendants-Appellees, Cross-Appellants, 

Baseball Company of America, a Florida Limited Partnership, Baseball
Corp. of America, Inc., a New Jersey Corporation,
Defendants-Counter-Claimants-Appellees, Cross-Appellants. 

April 18, 1997. 
Appeal from the United States District Court for the Middle District of
Florida. (No. 93-372-CIV-FTM-24D), Susan C. Bucklew, Judge. 

Before CARNES, Circuit Judge, CAMPBELL [*] and CLARK, Senior Circuit

LEVIN H. CAMPBELL, Senior Circuit Judge: 

This appeal concerns an unhappy dispute between the composer of a song
entitled "Cheer! The Miracle Is Here" and a minor league baseball team,
known as the Miracle, for whose promotion the song was written. After
the parties' relations turned sour, the composer sued the Miracle
claiming that its playing of the song at games had been a breach of
copyright. Rejecting that contention, the district court awarded summary
judgment to the Miracle and ruled that the Miracle had received an oral
nonexclusive license authorizing the use that it made of the copyrighted
song, and that the composer's remedy, if any, lay in a state court
contract action for payment and damages. The composer has appealed, and
the Miracle has cross-appealed from the district court's denial of its
request for attorney's fees. 

We state the facts in the light most favorable to the non-moving party,
Plaintiff-Appellant Jacob-Maxwell, Inc. ("JMI"). 

In the spring of 1993, James Albion, president of JMI, agreed to write a
team song for the Miracle, a minor league baseball team. Albion agreed
to write the song free of charge, to provide the Miracle with the
Digital Audio Tape master, and to grant the Miracle an exclusive
license. In return, Albion asked only that the Miracle pay his
out-of-pocket production costs and that the team credit him as the
author any time the song was played at games or distributed on cassette
tapes. Albion told Michael Veeck, the Miracle's Executive Director, that
his production costs would be somewhere between $800 and $1100. 

Albion wrote and produced the song, incurring production expenses of
$1050, and assigned ownership rights to JMI. He delivered a master tape
(though not the Digital Audio Tape master) to John Kuhn, the Miracle's
Director of Marketing and Promotion, on July 2, 1993, and requested
payment. Kuhn told him he could not issue a check immediately but asked
if he could play the song at the next day's game regardless. Albion

Over the course of the summer, the Miracle played the song many times at
games, never giving Albion the promised authorship credit. Albion was
present at many of these games. Albion repeatedly demanded payment, and
once communicated his expectation that the lyrics and credits would be
handed out to the fans, but did not withdraw his permission to play the
song at games. To the contrary, in July 1993, Albion wrote to Kuhn
urging the Miracle to continue to perform the song publicly. 

On August 9, Albion provided the Miracle with a written invoice. On
August 30, the Miracle tendered Albion a check for $500, telling him the
rest would be handled later. Because the check was not marked "partial
payment," Albion refused to accept it. On September 21, 1993, JMI
formally registered the song with the United States Copyright Office,
and on October 12th JMI's attorney wrote to the Miracle, notifying the
team that its use of the song constituted copyright infringement. The
team last played the song on August 27, 1993. 

JMI sued the owners and operators of the Miracle Baseball Club of Ft.
Myers, Florida, alleging copyright infringement and breach of contract.
The district court granted the defendants' motion for summary judgment
on the copyright claim, holding that Albion had, by his conduct, granted
the Miracle a nonexclusive license to play the song at the times it did.
The court dismissed the pendent state law breach of contract claim
without prejudice. [1]   

On appeal, JMI argues that because the oral agreement had been for an
exclusive license, the district court erred in finding an implied
nonexclusive license. 

The Copyright Act provides, "A transfer of copyright ownership, other
than by operation of law, is not valid unless an instrument of
conveyance, or a note or memorandum of the transfer, is in writing and
signed by the owner of the rights conveyed or such owner's duly
authorized agent." 17 U.S.C. § 204(a). It is undisputed that any
arrangement between the parties for granting an exclusive license to the
Miracle was never written down and that, therefore, no valid transfer to
the team of copyright ownership under the Copyright Act took place. 

In contrast to an exclusive license, a nonexclusive license to use a
copyright " "may be granted orally, or may even be implied from
conduct.' " Effects Associates, Inc. v. Cohen, 908 F.2d 555, 558 (9th
Cir.1990) (quoting 3 M. Nimmer & D. Nimmer, Nimmer on Copyright §
10.03[A], at 10-36 (1989)), cert. denied sub nom. Danforth v. Cohen, 498
U.S. 1103 , 111 S.Ct. 1003, 112 L.Ed.2d 1086 (1991). This is true
because 17 U.S.C. § 101 excludes the assignment of nonexclusive licenses
from the definition of "transfer of copyright ownership." 

The district court, relying on the Ninth Circuit's decision in Effects
Associates, determined that Albion had impliedly granted the Miracle a
nonexclusive license by initially giving permission to play the song at
games and by failing to object despite his knowledge that the team was
continuing to play the song publicly. In Effects Associates, the Ninth
Circuit held that a special effects company had granted a movie producer
an implied nonexclusive license to use the special effects footage it
had created. The court reasoned that because the special effects company
had "created a work at defendant's request and handed it over, intending
that defendant copy and distribute it," it had impliedly granted the
defendant a nonexclusive license. Id. 

Similarly, in this case Albion created the song at the Miracle's request
and handed a master tape over, intending that the Miracle play the song
at its games. But, JMI sees an important distinction between this case
and Effects Associates. There, "no one said anything about who would own
the copyright in the footage," id. at 556, but here the plaintiff orally
indicated an intention to grant to the defendant an exclusive license. 

JMI argues that under Florida contract law, [2] it was error for the
court to infer the creation of a nonexclusive license from the parties'
conduct when they had explicitly agreed, albeit in an unenforceable oral
exchange, to an exclusive license. See Excelsior Insurance Company v.
Pomona Park Bar & Package Store, 369 So.2d 938, 942 (Fla.1979) (holding
that courts may not "rewrite contracts, add meaning that is not present,
or otherwise reach results contrary to the intentions of the parties");
Rigel v. National Casualty Company, 76 So.2d 285, 286 (Fla.1954)
(holding that courts should not add a meaning to clear contract
language); Indian Harbor Citrus, Inc. v. Poppell, 658 So.2d 605, 606
(Fla. 4th Dist.Ct.App.) (holding that custom or usage cannot be used to
contradict an express contract), review denied, 666 So.2d 144
(Fla.1995); Flagship National Bank v. Gray Distribution Systems, Inc.,
485 So.2d 1336, 1340 (Fla. 3d Dist.Ct.App.1986) (holding that when the
express terms of a contract conflict with the practice of the parties,
the express terms of the contract control), review denied, 497 So.2d
1217 (Fla.1986). 

We do not find these cases controlling here. They either involve
situations where parties seek to modify fully enforceable contracts by
reference to the rule of interpretation which holds that an ambiguity in
a contract is to be construed against the drafter or deal with attempts
by a party to modify a clear contract term by reference to the parties'
course of dealings or other extrinsic matters. This case does not
present an analogous situation. Here federal copyright law renders the
parties' oral agreement unenforceable insofar as it provided for the
transfer of an exclusive copyright. In these circumstances, a court has
no choice but to look at alternatives beyond the parties' intended

Like the district court, we conclude that while it may well be that the
parties in their initial negotiations contemplated an exclusive license,
JMI cannot reasonably deny, given its subsequent conduct here, that it
granted to the Miracle the sort of lesser, nonexclusive license to play
the piece during the summer of 1993 that federal law recognizes may
result from a purely oral transaction. 

Albion's approving conduct-his granting of permission to the Miracle on
July 2, 1993 to play his song at the next day's game even though he had
not yet been paid, his attendance without demur at subsequent games at
which the song was played, his letter to Kuhn urging the Miracle to
continue to play the song at games, and his failure to withdraw
permission until October-clearly expressed Albion's permission for the
Miracle to play the song when it did. Implicit in that permission was a
promise not to sue for copyright infringement-a promise that at least
one court has found to be the essence of a nonexclusive license. See In
re CFLC, Inc., 89 F.3d 673, 677 (9th Cir.1996) ("[A] nonexclusive patent
license is, in essence, "a mere waiver of the right to sue' the licensee
for infringement.") (quoting De Forest Radio Telephone & Telegraph Co.
v. United States, 273 U.S. 236, 242 , 47 S.Ct. 366, 368, 71 L.Ed. 625
(1927)). We think it follows that until permission was withdrawn in
October, JMI granted to the Miracle a nonexclusive license to play the
song at games. 

In so saying, we do not suggest that Albion and JMI waived their rights
to be compensated by the Miracle in accordance with their oral
understanding. What they waived was any right to sue for breach of
copyright on account of the playing of the song while the license was in
effect. As discussed in the following section, the Miracle's failure to
provide the agreed quid pro quo could not, on the facts of this case,
invalidate the legal effect of Albion's permission to play. 

JMI argues that even assuming it gave the Miracle an oral, nonexclusive
license to play the song, that right should be treated as having been
cancelled in its entirety by the Miracle's material breach of their oral
understanding when it failed both to reimburse JMI's costs and publicly
to acknowledge Albion at games as the song's creator. But even assuming
arguendo that the Miracle's conduct constituted a material breach of the
parties' oral understanding, this fact alone would not render the
Miracle's playing of the song pursuant to JMI's permission a violation
of JMI's copyright. Such a breach would do no more than entitle JMI to
rescind the agreement and revoke its permission to play the song in the
future, actions it did not take during the relevant period. One party's
breach does not automatically cause recision of a bilateral contract.
See Fosson v. Palace (Waterland), Ltd., 78 F.3d 1448, 1455 (9th
Cir.1996) (recognizing "the rule applied in other circuits that once a
non-breaching party to an express copyright license obtains and
exercises a right of rescission by virtue of a material breach of the
agreement, any further distribution of the copyrighted material would
constitute infringement") (emphasis added); Hyman v. Cohen, 73 So.2d
393, 397 (Fla.1954) (" "A material breach, as where the breach goes to
the whole consideration of the contract, gives to the injured party the
right to rescind the contract or to treat it as a breach of the entire
contract....' ") (quoting 12 Am.Jur. Contracts § 389) (emphasis added);
3 M. Nimmer & D. Nimmer, Nimmer on Copyright § 10.15[A], at 10-125-126
(1996) (" Upon such rescission, the assignment or license is terminated
and the copyright proprietor may hold his former grantee liable as an
infringer for subsequent use of the work.") (emphasis added). 

Since Albion on July 2, 1993 expressly gave his permission to the
Miracle to play his song at the next game, renewed this permission by
letter that same month, and did not thereafter withdraw permission until
some time after the Miracle had last played the song publicly, the
Miracle never played the song without permission and is not liable for
copyright infringement. 

This is not a case where payment of JMI's costs and public recognition
of authorship were made conditions precedent to the granted right to
play. See Restatement (Second) of Contracts § 225 (1981). In such a
case, absent performance of the conditions, the "license" would not have
issued and the Miracle's public performances of the song would have
violated JMI's copyright. See Fantastic Fakes, 661 F.2d at 483; 3 M.
Nimmer & D. Nimmer, Nimmer on Copyright § 10.15[A], at 10-121 (1996). 

But Albion did not make payment and recognition conditions precedent to
the permission he gave to play the song. "A condition is an event, not
certain to occur, which must occur, unless its non-occurrence is
excused, before performance under a contract becomes due." Restatement
(Second) of Contracts § 224 (1981). "Conditions precedent are disfavored
and will not be read into a contract unless required by plain,
unambiguous language." Effects Associates, 908 F.2d at 559 n. 7. On July
2, 1993, JMI, through its president, Albion, expressly granted the
Miracle permission to play the song before payment was tendered or
recognition received. Thereafter, Albion did not withdraw permission
although he attended many games and heard the song played, still without
payment or recognition, on various occasions. Indeed, he wrote to Kuhn
encouraging the Miracle to continue to play the song. Under these
circumstances, we cannot say that JMI's permission to play was
conditioned on prior payment and public recognition. 

While for the above reasons, JMI cannot recover breach of copyright
damages from the Miracle for the latter's playing of the song, this does
not end the matter. 

JMI asserts that the Miracle made and broke its promise to pay JMI's
expenses and to give public recognition and credit to the song's
composer. While payment and recognition were not conditions precedent to
playing the song, the district court recognized that JMI may be entitled
to recover in a state action its damages from the Miracle's failure to
perform these promises. Nothing herein is intended to suggest that the
Miracle's treatment of JMI and Albion was either legally correct or such
as to shield them from liability for their conduct. The only issue
before the district court was JMI's right to recover under federal law
for copyright infringement. 

In its cross-appeal, the Miracle contends that the district court abused
its discretion in declining to award it attorney's fees under 17 U.S.C.
§ 505. That section states, in relevant part, "Except as otherwise
provided by this title, the court may also award a reasonable attorney's
fee to the prevailing party as part of the costs." Under this statute,
attorney's fees are at the court's discretion. Fogerty v. Fantasy, Inc.,
510 U.S. 517, 534 , 114 S.Ct. 1023, 1033, 127 L.Ed.2d 455 (1994). 

The Supreme Court has provided a nonexclusive list of factors which
district courts may take into account when determining whether or not to
award a prevailing party attorney's fees under § 505. "These factors
include "frivolousness, motivation, objective unreasonableness (both in
the factual and in the legal components of the case) and the need in
particular circumstances to advance considerations of compensation and
deterrence.' " Id. (quoting Lieb v. Topstone Industries, Inc., 788 F.2d
151, 156 (3d Cir.1986)). After considering these factors, we are unable
to say that the district court abused its discretion in refusing to
award attorney's fees. 



(GNG is a derecursive recursive derecursion which pwns GNU since it can 
be infinitely looped as GNGNGNGNG...NGNGNG... and can be said backwards 
too, whereas GNU cannot.)

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