When Worlds Collide: Ten Notable Open-Source Legal Battles

The open-source world is bigger than ever, growing by leaps and bounds daily, seemingly unfettered by obstacles to development that hamper just about every other creative field. In fact, the only force more powerful in the sphere of software development these days may be the one that we all live under: 21st-century capitalism.

Though free software tries to be exactly what the moniker purports, issues of ownership and originality that we take for granted in, say, the media sphere, must be examined thoroughly nearly every time there’s a dollar to made or a patent to be claimed.

Below, then courtroom battles that today define and shape the open-source creator’s world and ultimately everyone’s technology.

1.Progress Software Corp. v. MySQL AB

When is open source no longer open source? MySQL, in filing this grievance back in 2001, sought to define the limits of influence and inspiration in ever-evolving open source programs. MySQL argued that code inspired by open-source works should also be considered open source.

Known as the first court case regarding the Gnu Public License, Progress Software Corporation v. MySQL AB had roots in an agreement between the two firms for Progress to market MySQL software, itself a product of the GPL.

While Progress sued on bases of breach of contract, unfair competition and the like, MySQL filed a counterclaim of several counts, including trademark infringement.

Since the formation of the GPL way back in 1989, open source software must be released under the GPL. At first, Progess sold MySQL software piggybacked with its own Gemini software and did not release source code for the software. According to the GPL, any proprietary work that uses open source must also be released under the GPL.

In 2002, a Massachusetts state court granted a preliminary injunction calling for a cease-and-desist order on Progress distributing MySQL or from using the MySQL trademark. With court documents was included an affidavit by Columbia University Law School’s Eben Moglen; Moglen wears a second hat as Free Software Foundation lawyer, a position he uses to make lofty declarations calling free software “the death of copyright.”

The GPL’s "three primary conditions" as defined by Moglen in the affidavit – that redistribution must itself occur under GPL and only GPL; that redistribution must include source code; and that redistribution must include a copy of the GPL – have since often been used as rallying cry and legal argument.

Ultimately, probably thanks to Progress and subsidiary distributor NuSphere’s publication of the Gemini source code (“in what can only be seen as an act of retreat,” stated one legal analyst), Judge Patti Saris granted MySQL AB’s motion under its trademark claim, but denied MySQL’s claims regarding breach of the GPL. Though some open sourcers saw the outcome of this case as a negative, most were cheered by the fact that Saris’ judgment as validating the GPL as a binding licensing agreement, as well as the refusal of Progress Software to challenge the GPL itself in the case.

2. Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd.

In 2005, open source legal battles hit the big time with a case that got to the U.S. Supreme Court.  In MGM v. Grokster, the most everyday use of open source – namely file-sharing – took what some figure is a death blow to the Shareazas and Lime Wires of the world when the Court ruled against Grokster in a 9-0 decision.

The most interesting aspect of the MGM v. Grokster case is not so much its affect on open-source program development, distribution, copyright and such, but rather legal restrictions now placed on the marketing of file-sharing websites.

In the ruling opinion written by David Souter, the court seriously took Grokster to task, stating in part that “The record is replete with evidence that when [peer-to-peer networks] began to distribute their free software, each of them clearly voiced the objective that recipients use the software to download copyrighted works and took active steps to encourage infringement.”

You may have noticed, however, that file-sharing software has not yet been exterminated – heck, this writer is downloading “Rocky Balboa” and an episode of “Torchwood” thanks to Lime Wire while typing in these very words.

So why isn’t the ruling from the highest court of the land effecting those millions of file-share program users downloading trillions of bytes of data, some of which is surely copyrighted material? Put simply, in the words of Shareaza programmer Jonathan Nilson  said in light of the ruling, “We’re not trying to make revenue, so it’s hard to try to sue us."

Basically, if MGM v. Grokster is to be called “revolutionary,” it will be most so in terms of advertising. The danger Shareaza et al is crossing the now somewhat defined line into inducing users to pirate copyrighted work.

3. SCO Group versus IBM

You want to talk big? Imagine a court case involving the single largest corporate influence on personal computing (IBM), what some have called the greatest software ever written (Unix), and the seminal, single most important development in open source (Linux), all for the cool sum of (what else?) one billion dollars.

Though courtroom action in this matter will begin in February 2007, legal action was first taken in 2003, with SCO Group filing the billion-dollar baby against IBM for stealing proprietary code from Unix operating system for use in Linux.

SCO had bought the licensing rights to Unix operating system and its source code in 1995; by dint of this purchase, SCO today claims all Unix rights and ownership; all claims against any parties relating to any right, property or asset included in the Unix business; all Unix source code; and all Unix contracts, copyrights and licenses.
After filing the initial lawsuit in March 2003, SCO made headlines and created nervousness with a well-publicized letter sent to 1,500 corporations detailing the company’s legal quarrel with IBM “We believe that Linux is, in material part, an unauthorized derivative of Unix.”

In September came SCO Group CEO Darl McBride’s “The SCO Group’s Open Letter to the Open Source Community.” Difficult to ignore, too, is the interesting effect SCO Group’s initial allegations against IBM had on the bottom line. The numbers show that after the declaration of war, SCO stock went through the roof, peaking at $22.29 per share in October 2003; the stock had been going for as little as $.73 per share eleven months earlier. Today, it’s back down to $1.16 or so.

Legally speaking, SCO Group has requested two delays to begin proceedings and gotten them. One legal order has gone against SCO, though. In June 2006, federal magistrate judge Brooke Wells’ “Order Granting in Part IBM’s Motion to Limit SCO’s Claims” eliminated 187 of SCO’s claims against IBM.

The court found the stricken claims vague, with judge Wells hilariously commenting “Certainly if an individual was stopped and accused of shoplifting after walking out of Neiman Marcus, they would expect to be eventually told what they allegedly stole. It would be absurd for an officer to tell the accused that ‘you know what you stole I’m not telling’…” SCO originally put forth 294 claims against IBM.

Since 2003, McBride has often championed his issue, going so far as to state that he’d personally been attacked by “cyberterrorists.”

Red Hat, meanwhile, has brought a suit against SCO while SCO is trying to sue Novell, AutoZone and Daimler Chrysler over open-source issue. Though the odds seem long against SCO, McBride and co. may just come out looking like Goliath slayers: a fair sight better than today’s reputation, which has the New York Times calling McBride “the figurative devil.”

4.&5.FormGen Inc. v. Micro Star, and Micro Star v. FormGen Inc.

Issues in online gaming, as we might say in the industry media, are often tightly bundled with those of open source. And following closely behind are legal issues regarding proprietary rights.

Anyone who was gaming in the 1990s well knows the name Duke Nukem. Duke Nukem 3D broke open the market for first-person shooter games and online gaming in general. Popularity of the game – aside from its action-action-action! style, of course – is often credited to the Build Editor program that came with the game, making it easy for players to create their own maps in which Duke could run around wiping out aliens.

Though Duke Nukem 3-D producer FormGen reportedly encouraged plays to share new map files with other users, the company naturally provided a licensing agreement which disallowed the selling of such files.

Enterprising firm Micro Star collected some 300 such files scattered across the internet and attempted to sell the lot on the “Nuke It” CD-ROM. FormGen sued, charging that Micro Star was infringing copyright by selling derivate works.

The ruling on this case in district court was a mixed bag for the litigants.

The levels were judged not to be derivative work. Micro Star, however, was forbidden from using screenshots of the Duke Nukem game on the CD-ROM, as those images were decided to be property of FormGen, and not a case of “fair use.” Appeals were made from both parties, but this opinion was never overruled.

In the aftermath, Micro Star produced several more CDs’ worth of Duke Nukem material still available today.

This case was later used as precedent in the high-profile case A&M Records, Inc. v. Napster, Inc. and even in Pickett v. Prince regarding derivative use of the ankh-like glyph the pop star was employing as a name.

As for poor Ol’ Duke himself, despite his heroics in saving our Earth from otherworldly baddies, the hero was never resurrected in the long-promised Duke Nukem Forever, an ignoble winner of Wired Magazine’s Vaporware Lifetime Achievement Award in 2003.

6.&7.KSR International Co. v. Teleflex, Inc., et al. and
Eolas Technologies Inc. and the Regents of the University of California v. Microsoft Corporation

What does a Canadian design for a gas pedal got to do with open source? Quite a bit, when it’s up to the U.S. Supreme Court to redefine patent law and the entire notion of what is “obvious” and therefore does not constitute a patentable new technology. Since open-source and free-software development is based on continually adding to extant technology, the question is crucial, should the programming community which to avoid a slew of lawsuits every time a new line of code is added.

The court case from the automotive industry that has caused such a stir in really any field where R&D work is done is KSR International Co. v. Teleflex, Inc. et al., which heard oral arguments in late November 2005. The question presented before the Supreme Court in this battle is “whether a claimed invention can be ‘obvious,’ and therefore unpatentable under 35 U.S.C. 103(a), without proof of some ‘teaching, suggestion, or motivation’ to modify or combine the prior art in the manner claimed.” The referenced precedent 35 U.S.C. 103(a) is entitled “Conditions for patentability; non-obvious subject matter” and subsection (a) reads in part, “A patent may not be obtained … if the differences between the subject matter as a whole would have been obvious at the time the invention was made…”

In a 2002 court case Telefex sued KSR International Co., arguing that KSR’s combination of two older pieces of technology was infringement due to Telefex’ patent on one of the parts.  Telefex appealed the 2003 Michigan district court’s decision and Federal Circuit Court overturned the previous decision, bringing the two firms to the Supreme Court for the ultimate decision.
Incidentally, should anyone in the software industry need further proof of the importance of this case, at least one source contends that among those “champion[ing the] effort to make patents harder to obtain” is Microsoft. Microsoft is reportedly currently supporting the KSR effort along with other biggies like Cisco, Fortune Brands Inc. and Hallmark Cards.
Microsoft will be helping legally define creative rights in another high-profile on-going case as well.

Call Eolas Technologies “the mouse that roared.” Back in 1999, Eolas took Microsoft to court, claiming the big company had violated the Eolas technology named “Distributed hypermedia method for automatically invoking external application providing interaction and display of embedded objects within a hypermedia document.” In terms of income, this case could be quite a financial coup for Eolas, as the technology involved had Eolas calling for a cease-and-desist order on Windows 95, Windows 98 and Internet Explorer. Though the case began in 1999, the long due process in this one grinds on and on.

The University of California, which owns the patent on the technology licensed to Eolas in 1994, joined Eolas in its legal efforts. In October 2003, a federal court ruled in favor of Eolas,  ordering Microsoft to pay $521 million for copyright infringement. Naturally, there were more appeals and legal manuveurings.
In 2003, a reexamination of the patent was initiated for the benefit of the court, and the U.S. Patent and Trademark Office reaffirmed University of California’s rights of ownership. The last decision to be made in what was entitled Eolas Technologies Inc. and the Regents of the University of California v. Microsoft Corporation came from the U.S. Court of Appeals for the Federal Circuit in July of this year. Microsoft had required reassignment of a certain circuit court judge, a motion which was denied.

The Court of Appeals overturned that decision, and a new judge to preside over the ongoing battle is to be assigned.
Surely, this case explains some of the reasoning behind Microsoft’s urging the Supreme Court to assist their new northerly friends KSR. The KSR case and this one should, after epic legal wrangles, finally define questions of open sourcers’ rights in creation.

At least until the next case.

8.&9.The Software Freedom Law Center versus Blackboard Inc. and
Blackboard Inc. v. Desire2Learn Inc.

Here’s a couple for the 2007 docket. The Software Freedom Law Center announced on November 30th its request to the US Patent and Trademark Office to reexamine a patent  owned by course-management systems provider Blackboard.

Blackboard is currently in use at a number of universities, including University of South Carolina  and Duke.
The Software Freedom Law Center is backed by open source interests Sakai Foundation, ATutor and Moodle and comes as a response to a move made by Blackboard earlier in the year.
On July 26, Blackboard announced to press that it had “been issued a U.S. patent for technology used for internet-based education support systems and methods,” a technology that “underpins Blackboard’s e-Learning software applications.” On the same day, the company filed a complaint with a U.S. District Court in Texas with the intention of suing Desire2Learn for patent infringement.

Afterward, the usual ritualistic legal actions were taken in the case, with Desire2Learn filing a counterclaim, Blackboard attorneys filing a motion to dismiss the counterclaim, and the like. In early December, though, Desire2Learn made a couple of important moves. First up was the company’s request for an Inter Partes reexamination of the Blackboard patent. Then came a Motion for a Stay of Proceedings, which would suspend hearings in the light of the request for patent reexamination brought against Blackboard Inc. by the SFLC, for which Desire2Learn should thank its lucky and legal stars.
(Incidentally, for those interesting in following the legal course, Desire2Learn is providing good coverage of the proceedings at their blog on the matter here.)

Though Desire2Learn programs are not free software, the three open-source e-learning software providers requesting that the SFLC make legal moves are concerned about the effect the lawsuit may have, arguing that Blackboard’s patent is frivolous. Sakai Foundation board chairman Joseph Hardin stated that his group “knows that this is a bad patent, and it’s hurting our community and we’re taking steps to remedy that.” Eben Moglen, SFLC executive director of SFLC and Columbia University professor, stated that "In a free society, there is no room for a monopoly on any part of the educational process." Whichever way these battles go, two things are certain: Guidelines on what constitutes a “frivolous” patent should be more concrete, and that Blackboard Inc. will have few friends in open source.

10. Harald Welte versus Fortinet

Proving that cyberspace is indeed an international domain, a 2005 court case in Germany involving a British firm grabbed attention worldwide with a debate over use of the General Public License code.
Harald Welte made the headlines by getting an injunction in German court against Fortinet under terms that the company was violating GPL in-compliant use of free software.

In Welte’s own words, “Fortinet is shipping a series of Firewall products running on Linux without complying to the GPL.” The GPL Violations Project first discovered the alleged violation, furthering claiming that Fortinet used “GPL software in certain products and then used cryptographic techniques to hide that [use].”

Set in April, the injunction forbids Fortinet from further distributing its products until they are in compliance with the GPL. Interestingly enough, this would seem to be a victory for those who believe in the open-source guidelines set therein, but some disagree emphatically.

Red Monk analyst James Governor  saw the dark side of the seeming victory be stating in VNUNet that the injunction “will make Microsoft very happy as it adds to fears over the GPL being unworkable.” All is not lost, though, according to Governor, for "If Fortinet has to cease trading that’s a good result for the GPL.

As for the court case the GPL should be tested in the courts around the world."

That case may soon be coming. Fortinet representatives have stated that the German injunction would have no effect on sales of product in America. Indeed, though Fortinet has been working on settling with Welte, the company is still open for business.