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Interview on Open Source Software Licensing with Attorney Philip Albert

Philip Albert is a partner at the San Francisco office of Townsend Townsend & Crew. His practice emphasizes patent prosecution for software, digital signal and image processing, electronic commerce technology, and cryptography. His current practice includes advising clients on legal issues arising from use of the Internet. Prior to beginning his law career, he spent several years as an electrical engineer. He was president and founder of Galt Engineering, Inc., a company that produced semi-custom software and turnkey computer systems for accounting tasks and large bank operations. Prior to that, he was a design engineer for the Jet Propulsion Laboratory at NASA.

1. What is Free and Open Source Software?

Generally, the name describes software that is licensed with fewer restrictions than proprietary licensing models, such as "per copy", "per use" object code only licenses. The term "free software" often refers to software that is licensed under the General Public License ("the GPL"). "Free" does not refer to cost, as the GPL does not preclude charging for distribution of licensed software, but rather it refers to the lack of constraints on using the software. However, to prevent intermediates from imposing their own constraints, the GPL includes provisions precluding the addition of constraints.

The term "open source" often refers to free software as well as software licensed under other licenses generally considered to be open source licenses. Open source licenses might include provisions regarding limits on constraints, attribution requirements, no-warranty notices and other important provisions. Open source software often has fewer constraints on intermediate parties, but possibly more constraints on downstream parties (because an intermediate party might be free to add constraints to the software as they distribute it).

The question of whether or not a particular license is to be considered an open source license has been widely debated. The Open Source Initiative formulated a set of tests that they propose as a definition of an open source license.

2. Linux is perhaps the most widely known example of open source software. What are some others that people may not be aware of?

The Apple Macintosh's underlying operating system is open source software. Other examples include the Apache Web Server programs used by many of the web servers running today. The GNU operating system, including its many programming tools, development environments and programs, is also free software.

3. Typically, open source software user does not sign a license agreement and the software does not have implied consent via shrinkwrap or clickwrap notices, so how can an open source software user be subject to the license?

Software is copyrightable, so most uses, copying, modification and distribution of copyrighted software requires some license from the copyright holder, otherwise the user/copier/etc. would be a copyright infringer, unless a defense such as "fair use" applies. A license agreement might grant a license in exchange for licensee consideration, in which case assent of the licensee would be required to form a binding agreement. However, if a license does not impose any new obligations but simply releases obligations imposed by copyright law, a putative licensee would have no reason to reject the license.

4. What are the main legal issues that can arise with free and open source software licensing?

The first issue is who the copyright holder is and the second issue is what license I might have to use, copy, modify or distribute the software. Then, the next issue might be what is allowed under the licenses I might have. Where the copyright holder is known and amenable to additional non-exclusive licenses under different terms, such licenses might be negotiated. For example, where a company wants to incorporate particular software into their product and distribute that product on a proprietary basis (e.g., per-copy licensing, a prohibition on reverse engineering, etc.), the company might sign a license agreement with the copyright holder that grants the company more rights to be proprietary than under the available open source license.

When a company decides to release its own software under an open source license, there are issues of which license to use, and whether to create a new license.

Large companies also need to have some process for tracking and evaluating open source licenses that might apply to software their employees are using. Since much open source software can be obtained at no cost, tracking software licenses in a purchasing department will miss most open source software.

5. Can you give some examples of actual issues you've worked on that deal with free and open source software?

We've advised a number of clients on the scope of various open source licenses when they looked to see whether they would have a license to do what they contemplated doing with this software. A common license is the GPL, and we've reviewed what the client is doing in comparison with what's allowed under the GPL, and then advised them how to comply with the license, and what's available to them under the license.

Other advice we've given related to negotiating proprietary licenses from open source authors to obtain a license that is different from the standard license.

6. When closed source and open source software are combined, is the resulting combination deemed open source or closed source?

When talking about licensing free and open source software, there's a paradigm shift required. It's not a matter of labeling the code open or closed. We need to go back to copyright principles. If I take someone else's program and modify it such that it's a derivative work, then in order to distribute or make copies of that derivative work, I still need permission.

If clients want to keep their added code separate, such that they can have a proprietary license, than they need to ensure they are not creating a derivative work of the open source software unless they have a license that allows proprietary redistribution. Essentially, we would advise a client not to make modifications to a copyright holder's software unless the client is able to comply with the copyright holder's license requirements. We often advise clients on what activities count as a derivative works.

7. Is open source software in the public domain?

No. Public domain works are works in which nobody can assert copyright rights. With open source software, the authors, employers or assignees retain the copyright and have the right to sue for copyright infringement, just as with software licensed under proprietary licenses.

8. Many companies with large investments in software development are entering the arena of free and open source software. How has this arrival of large corporate interests affected the development of open source software?

It gets taken more seriously because the stakes are larger. When you talk about larger development, more care needs to be put into making sure that the issues are resolved ahead of time.

9. Do you foresee an increase in litigation as open source becomes ever more prevalent?

More copyright litigation can definitely be expected.

10. What are some of the "big cases" that have defined and are defining boundaries in the free software and open source software areas?

The SCO v. IBM lawsuit is a monumental case, so it gets considerable coverage, but that case is only tangentially related to free and open source software licensing issues.

One case where actual terms of the GPL were at issue is the MySQL v. Progress Software case, in which mySQL released software under the GPL. Progress Software allegedly distributed the plaintiff's software without source code and while redistribution is permitted under the GPL, the source code must be provided as well. Ultimately, the parties settled. Unfortunately, there's not a lot of case law in this area because so many of these commercial issues get worked out prior to trial.

11. What are the issues for companies that use open source software?

Companies need to identify what open source software they are using and whether they are in compliance with all the licenses. If a large company buys open source software to run their desktops in-house, and they do not sell that product, there is probably not a danger of violating the license. Often, however, companies are at risk if they incorporate open source software tools into a product they end up selling. Companies will need some mechanisms and procedures in place to keep track of what free and open source software is being used. To keep abreast of compliance issues, in-house counsel should look to the company's program managers and engineers and ask what they included in any given software product.

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