\usepackage{enumerate}

\chapter{Running Software And Verbatim Copying}

GPL\@.  In this chapter, we consider the first two sections: GPL \S\S

0--2.  These are the straightforward sections of the GPL that define the

simplest rights that the user receives.

%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%

\chapter{Derivative Works: Statute and Case Law}

We digress for this chapter from our discussion of GPL's exact text to

consider the matter of derivative works --- a concept that we must

understand fully before considering \SS 2--3 of GPL\@.  GPL, and Free

Software licensing in general, relies critically on the concept of

``derivative work'' since software that is ``independent,'' (i.e., not

``derivative'') of free software need not abide by the terms of the

applicable Free Software license.  As much is required by \S 106 of the

Copyright Act, 17 U.S.C. \S 106 (2002), and admitted by Free Software

licenses, such as the GPL, which (as we have seen) states in \S 0 that ``a

'work based on the Program' means either the Program or any derivative

work under copyright law.'' It is being a derivative work of Free Software

that triggers the necessity to comply with the terms of the Free Software

license under which the original work is distributed. Therefore, one is

left to ask, just what is a ``derivative work?'' The answer to that

question differs depending on which court is being asked.

The analysis in this chapter sets forth the differing definitions of

derivative work by Circuit. The broadest and most established definition

of derivative work for software is the abstraction, filtration, and

comparison test (``the AFC test'') as created and developed by the Second

Circuit. Some Circuits, including the Ninth Circuit and the First Circuit,

have either adopted narrower versions of the AFC test or have expressly

rejected the AFC test in favor of a narrower standard. Further, several

other Circuits have yet to adopt any definition of derivative work for

software.

As an introductory matter, it is important to note that literal copying of

a significant portion of source code is not always sufficient to establish

that a second work is a derivative work of an original

program. Conversely, a second work can be a derivative work of an original

program even though absolutely no copying of the literal source code of

the original program has been made. This is the case because copyright

protection does not always extend to all portions of a program’s code,

while, at the same time, it can extend beyond the literal code of a

program to its non-literal aspects, such as its architecture, structure,

sequence, organization, operational modules, and computer-user interface.

\section{The Copyright Act}

The copyright act is of little, if any, help in determining the definition

of a derivative work of software. However, the applicable provisions do

provide some, albeit quite cursory, guidance. Section 101 of the Copyright

Act sets forth the following definitions:

A ``computer program'' is a set of statements or instructions to be used

directly or indirectly in a computer in order to bring about a certain

result.

A ``derivative work'' is a work based upon one or more preexisting works,

such as a translation, musical arrangement, dramatization,

fictionalization, motion picture version, sound recording, art

reproduction, abridgment, condensation, or any other form in which a work

may be recast, transformed, or adapted. A work consisting of editorial

revisions, annotations, elaborations, or other modifications which, as a

whole, represent an original work of authorship, is a ``derivative work''.

These are the only provisions in the Copyright Act relevant to the

determination of what constitutes a derivative work of a computer

program. Another provision of the Copyright Act that is also relevant to

the definition of derivative work is \S 102(b), which reads as follows:

\begin{quotation}

In no case does copyright protection for an original work of authorship

extend to any idea, procedure, process, system, method of operation,

concept, principle, or discovery, regardless of the form in which it is

described, explained, illustrated, or embodied in such work.

\end{quotation}

Therefore, before a court can ask whether one program is a derivative work

of another program, it must be careful not to extend copyright protection

to any ideas, procedures, processes, systems, methods of operation,

concepts, principles, or discoveries contained in the original program. It

is the implementation of this requirement to ``strip out'' unprotectable

elements that serves as the most frequent issue over which courts

disagree.

\section{Abstraction, Filtration, Comparison Test}

As mentioned above, the AFC test for determining whether a computer

program is a derivative work of an earlier program was created by the

Second Circuit and has since been adopted in the Fifth, Tenth, and

Eleventh Circuits. Computer Associates Intl., Inc. v. Altai, Inc., 982

F.2d 693 (2nd Cir. 1992); Engineering Dynamics, Inc. v. Structural

Software, Inc., 26 F.3d 1335 (5th Cir. 1994); Kepner-Tregoe,

Inc. v. Leadership Software, Inc., 12 F.3d 527 (5th Cir. 1994); Gates

Rubber Co. v. Bando Chem. Indust., Ltd., 9 F.3d 823 (10th Cir. 1993);

Mitel, Inc. v. Iqtel, Inc., 124 F.3d 1366 (10th Cir. 1997); 5 Bateman

v. Mnemonics,Inc., 79 F.3d 1532 (11th Cir. 1996); and, Mitek Holdings,

Inc. v. Arce Engineering Co., Inc., 89 F.3d 1548 (11th Cir. 1996).

Under the AFC test, a court first abstracts from the original program its

constituent structural parts. Then, the court filters from those

structural parts all unprotectable portions, including incorporated ideas,

expression that is necessarily incidental to those ideas, and elements

that are taken from the public domain. Finally, the court compares any and

all remaining kernels of creative expression to the structure of the

second program to determine whether the software programs at issue are

substantially similar so as to warrant a finding that one is the

derivative work of the other.

Often, the courts that apply the AFC test will perform a quick initial

comparison between the entirety of the two programs at issue in order to

help determine whether one is a derivative work of the other. Such an

holistic comparison, although not a substitute for the full application of

the AFC test, sometimes reveals a pattern of copying that is not otherwise

obvious from the application of the AFC test when, as discussed below,

only certain components of the original program are compared to the second

program. If such a pattern is revealed by the quick initial comparison,

the court is more likely to conclude that the second work is indeed a

derivative of the original.

\subsection{Abstraction}

The first step courts perform under the AFC test is separation of the

work’s ideas from its expression. In a process akin to reverse

engineering, the courts dissect the original program to isolate each level

of abstraction contained within it. Courts have stated that the

abstractions step is particularly well suited for computer programs

because it breaks down software in a way that mirrors the way it is

typically created. However, the Courts have also indicated that this step

of the AFC test requires substantial guidance from experts, because it is

extremely fact and situation specific.

By way of example, one set of abstraction levels is, in descending order

of generality, as follows: the main purpose, system architecture, abstract

data types, algorithms and data structures, source code, and object

code. As this set of abstraction levels shows, during the abstraction step

of the AFC test, the literal elements of the computer program, namely the

source and object code, are defined as particular levels of

abstraction. Further, the source and object code elements of a program are

not the only elements capable of forming the basis for a finding that a

second work is a derivative of the program. In some cases, in order to

avoid a length factual inquiry by the court, the owner of the copyright in

the original work will submit its own list of what it believes to be the

protected elements of the original program. In those situations, the court

will forgo performing its own abstraction, and proceed to second step of

the AFC test.

\subsection{Filtration}

The most difficult and controversial part of the AFC test is the second

step, which entails the filtration of protectable expression contained in

the original program from any unprotectable elements nestled therein. In

determining which elements of a program are unprotectable, courts employ a

myriad of rules and procedures to sift from a program all the portions

that are not eligible for copyright protection.

First, as set forth in \S 102(b) of the Copyright Act, any and all ideas

embodied in program are to be denied copyright protection. However,

implementing this rule is not as easy as it first appears. The courts

readily recognize the intrinsic difficulty in distinguishing between ideas

and expression and that, given the varying nature of computer programs,

doing so will be done on an ad hoc basis. The first step of the AFC test,

the abstraction, exists precisely to assist in this endeavor by helping

the court separate out all the individual elements of the program so that

they can be independently analyzed for their expressive nature.

A second rule applied by the courts in performing the filtration step of

the AFC test is the doctrine of merger, which denies copyright protection

to expression necessarily incidental to the idea being expressed. The

reasoning behind this doctrine is that when there is only one way to

express an idea, the idea and the expression merge, meaning that the

expression cannot receive copyright protection due to the bar on copyright

protection extending to ideas. In applying this doctrine, a court will ask

whether the program's use of particular code or structure is necessary for

the efficient implementation of a certain function or process. If so, then

that particular code or structure is not protected by copyright and, as a

result, it is filtered away from the remaining protectable expression.

A third rule applied by the courts in performing the filtration step of

the AFC test is the doctrine of scenes a faire, which denies copyright

protection to elements of a computer program that are dictated by external

factors. Such external factors can include:

\begin{enumerate}

 \renewcommand{\theenumi}{\alph{enumi}}

 \renewcommand{\labelenumi}{\textup{(\theenumi)}}

\item the mechanical

specifications of the computer on which a particular program is intended

to operate;

\item compatibility requirements of other programs with which a

program is designed to operate in conjunction;

\item computer manufacturers'

design standards;

\item demands of the industry being serviced; and

widely accepted programming practices within the computer industry.

\end{enumerate}

Any code or structure of a program that was shaped predominantly in

response to these factors is filtered out and not protected by

copyright. Lastly, elements of a computer program are also to be filtered

out if they were taken from the public domain or fail to have sufficient

originality to merit copyright protection.

Portions of the source or object code of a computer program are rarely

filtered out as unprotectable elements. However, some distinct parts of

source and object code have been found unprotectable. For example,

constant s, the invariable integers comprising part of formulas used to

perform calculations in a program, are unprotectable. Further, although

common errors found in two programs can provide strong evidence of

copying, they are not afforded any copyright protection over and above the

protection given to the expression containing them.

\subsection{Comparison}

The third and final step of the AFC test entails a comparison of the

original program's remaining protectable expression to a second

program. The issue will be whether any of the protected expression is

copied in the second program and, if so, what relative importance the

copied portion has with respect to the original program overall. The

ultimate inquiry is whether there is ``substantial'' similarity between

the protected elements of the original program and the potentially

derivative work. The courts admit that this process is primarily

qualitative rather than quantitative and is performed on a case-by-case

basis. In essence, the comparison is an ad hoc determination of whether

the protectable elements of the original program that are contained in the

second work are significant or important parts of the original program. If

so, then the second work is a derivative work of the first. If, however,

the amount of protectable elements copied in the second work are so small

as to be de minimis, then the second work is not a derivative work of the

original.

\section{Analytic Dissection Test}

The Ninth Circuit has adopted the analytic dissection test to determine

whether one program is a derivative work of another. Apple Computer,

Inc. v. Microsoft Corp., 35 F.3d 1435 (9th Cir. 1994). The analytic

dissection test first considers whether there are substantial similarities

in both the ideas and expressions of the two works at issue. Once the

similar features are identified, analytic dissection is used to determine

whether any of those similar features are protected by copyright. This

step is the same as the filtration step in the AFC test. After identifying

the copyrightable similar features of the works, the court then decides

whether those features are entitled to ``broad'' or ``thin''

protection. ``Thin'' protection is given to non-copyrightable facts or

ideas that are combined in a way that affords copyright protection only

from their alignment and presentation, while ``broad'' protection is given

to copyrightable expression itself. Depending on the degree of protection

afforded, the court then sets the appropriate standard for a subjective

comparison of the works to determine whether, as a whole, they are

sufficiently similar to support a finding that one is a derivative work of

the other. ``Thin'' protection requires the second work be virtually

identical in order to be held a derivative work of an original, while

``broad'' protection requires only a ``substantial similarity.''

\section{No Protection for ``Methods of Operation''}

The First Circuit expressly rejected the AFC test and, instead, takes a

much narrower view of the meaning of derivative work for software. The

First Circuit holds that ``method of operation,'' as used in \S 102(b) of

the Copyright Act, refers to the means by which users operate

computers. Lotus Development Corp. v. Borland Int’l., Inc., 49 F.3d 807

(1st Cir. 1995). More specifically, the court held that a menu command

hierarchy for a computer program was uncopyrightable because it did not

merely explain and present the program’s functional capabilities to the

user, but also served as a method by which the program was operated and

controlled. As a result, under the First Circuit’s test, literal copying

of a menu command hierarchy, or any other ``method of operation,'' can not

form the basis for a determination that one work is a derivative of

another. It is also reasonable to expect that the First Circuit will read

the unprotectable elements set forth in \S 102(b) broadly, and, as such,

promulgate a definition of derivative work that is much narrower than that

which exists under the AFC test.

\section{No Test Yet Adopted}

Several circuits, including most notably the Fourth and Seventh, have yet

to declare their definition of derivative work and whether or not the AFC,

Analytic Dissection, or some other test best fits their interpretation of

copyright law. Therefore, uncertainty exists with respect to determining

the extent to which a software program is a derivative work of another in

those circuits. However, one may presume that they would give deference to

the AFC test since it is by far the majority rule amongst those circuits

that have a standard for defining a software derivative work.

\section{Cases Applying Software Derivative Work Analysis}

In the preeminent case regarding the definition of a derivative work for

software, Computer Associates v. Altai, the plaintiff alleged that the its

program, Adapter, which was used to handle the differences in operating

system calls and services, was infringed by the defendant's competitive

program, Oscar.  About 30 percent of Oscar was literally the same code as

that in Adapter.  After the suit began, the defendant rewrote those

portions of Oscar that contained Adapter code in order to produce a new

version of Oscar that was functionally competitive with Adapter, without

have any literal copies of its code.  Feeling slighted still, the

plaintiff alleged that even the second version of Oscar, despite having no

literally copied code, also infringed its copyrights.  In addressing that

question, the Second Circuit promulgated the AFC test.

In abstracting the various levels of the program, the court noted a

similarity between the two programs' parameter lists and macros.  However,

following the filtration step of the AFC test, only a handful of the lists

and macros were protectable under copyright law because they were either

in the public domain or required by functional demands on the

program. With respect to the handful of parameter lists and macros that

did qualify for copyright protection, after performing the comparison step

of the AFC test, it was reasonable for the district court to conclude that

they did not warrant a finding of infringement given their relative minor

contribution to the program as a whole.  Likewise, the similarity between

the organizational charts of the two programs was not substantial enough

to support a finding of infringement because they were too simple and

obvious to contain any original expression.

Perhaps not surprisingly, there have been few cases involving a highly

detailed software derivative work analysis.  Most often, cases involve

clearer basis for decision, including frequent bad faith on the part of

the defendant or over aggressiveness on the part of the plaintiff.

However, no cases involving free software licensing have ever gone to

court.  As free software becomes an ever increasingly important part of

the economy, it remains to be seen whether or not battle lines will be

drawn over whether particular programs infringe the rights of free

software developers or whether the entire community, including industry,

adopts norms avoiding such risk.

%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%

\chapter{Modified Source and Binary Distribution}

In this chapter, we discuss the two core sections that define the rights

and obligations for those who modify, improve, and/or redistribute GPL'd

software.  These sections, \SS 2--3, define the central core rights and

requirements of GPL\@.

%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%%

\chapter{The Implied Patent Grant in GPL}

We digress again briefly from our section-by-section consideration of GPL

to consider the interaction between the terms of GPL and patent law.  The

GPL, despite being silent with respect to patents, actually confers on its

licensees more rights to a licensor's patents than those licenses that

purport to address the issue.  This is the case because patent law, under

the doctrine of implied license, gives to each distribute of a patented

article a license from the distributor to practice any patent claims owned

or held by the distributor that cover the distributed article.  The

implied license also extends to any patent claims owned or held by the

distributor that cover ``reasonably contemplated uses'' of the patented

article.  To quote the Federal Circuit Court of Appeals, the highest court

for patent cases other than the Supreme Court:

\begin{quotation}

Generally, when a seller sells a product without restriction, it in

effect promises the purchaser that in exchange for the price paid, it will

not interfere with the purchaser's full enjoyment of the product

purchased. The buyer has an implied license under any patents of the

seller that dominate the product or any uses of the product to which the

parties might reasonably contemplate the product will be put.

\end{quotation}

Hewlett-Packard Co. v. Repeat-O-Type Stencil Mfg. Corp., Inc., 123 F.3d

1445 (Fed. Cir. 1997).

Of course, free software is licensed, not sold, and there are indeed

restrictions placed on the licensee, but those differences are not likely

to prevent the application of the implied license doctrine to free

software, because software licensed under the GPL grants the licensee the

right to make, use, and sell the software, each of which are exclusive

rights of a patent holder.  Therefore, although the GPL does not expressly

grant the licensee the right to do those things under any patents the

licensor may have that cover the software or its reasonably contemplated

uses, by licensing the software under the GPL, the distributor impliedly

licenses those patents to the GPL licensee with respect to the GPL

licensed software.

An interesting issue regarding this implied patent license of GPL'd

software is what would be considered ``uses of the [software] to which the

parties might reasonably contemplate the product will be put.''  A clever

advocate may argue that the implied license granted by GPL is larger in

scope than the express license in other free software licenses with

express patent grants, in that, the patent license clause of many of those

licenses are specifically limited to the patent claims covered by the code

as licensed by the patentee.

To the contrary, GPL's implied patent license grants the GPL licensee a

patent license to do much more than just that because the GPL licensee,

under the doctrine of implied patent license, is free to practice any

patent claims held by the licensor that cover ``reasonably contemplated

uses'' of the GPL'd code, which may very well include creation and

distribution of derivative works since the GPL's terms, under which the

patented code is distributed, expressly permits such activity.

Further supporting this result is the Federal Circuit's pronouncement that

the recipient of a patented article has, not only an implied license to

make, use, and sell the article, but also an implied patent license to

repair the article to enable it to function properly.  Bottom Line Mgmt.,

Inc. v. Pan Man, Inc., 228 F.3d 1352 (Fed. Cir. 2000).  Additionally, the

Federal Circuit extended that rule to include any future recipients of the

patented article, not just the direct recipient from the distributor.

This theory comports well with the idea of free software, whereby software

is distributed amongst many entities within the community for the purpose

of constant evolution and improvement.  In this way, the law of implied

patent license used by the GPL ensures that the community mutually

benefits from the licensing of patents to any single community member.

Note that simply because GPL'd software has an implied patent license does

not mean that any patents held by a distributor of GPL'd code become

worthless.  To the contrary, the patents are still valid and enforceable

against either:

\begin{enumerate}

 \renewcommand{\theenumi}{\alph{enumi}}

 \renewcommand{\labelenumi}{\textup{(\theenumi)}}

\item any software other than that licensed under the GPL by the patent

  holder, and

\item any party that does not comply with the GPL

with respect to the licensed software.

\end{enumerate}

\newcommand{\compB}{$\mathcal{B}$}

\newcommand{\compA}{$\mathcal{A}$}

For example, if Company \compA has a patent on advanced web browsing, but

also licenses a web browsing software program under the GPL, then it

cannot assert the patent against any party that takes a license to its

program under the GPL.  However, if a party uses that program without

complying with the GPL, then Company \compA can assert, not just copyright

infringement claims against the non-GPL-compliant party, but also

infringement of the patent, because the implied patent license only

extends to use of the software in accordance with the GPL.  Further, if

Company \compB distributes a competitive advanced web browsing program,

Company \compA is free to assert its patent against any user or

distributor of that product.  It is irrelevant whether Company \compB's

program is distributed under the GPL, as Company \compB can not grant

implied licenses to Company \compA's patent.

This result also reassures companies that they need not fear loosing their

proprietary value in patents to competitors through the GPL implied patent

license, as only those competitors who adopt and comply with the GPL's

terms can benefit from the implied patent license.  To continue the

example above, Company \compB does not receive a free ride on Company

\compA's patent, as Company \compB has not licensed-in and then

redistributed Company A's advanced web browser under the GPL.  If Company

\compB does do that, however, Company \compA still has not lost

competitive advantage against Company \compB, as Company \compB must then,

when it re-distributes Company \compA's program, grant an implied license

to any of its patents that cover the program.  Further, if Company \compB

relicenses an improved version of Company A's program, it must do so under

the GPL, meaning that any patents it holds that cover the improved version

are impliedly licensed to any licensee.  As such, the only way Company

\compB can benefit from Company \compA's implied patent license, is if it,

itself, distributes Company \compA's software program and grants an

implied patent license to any of its patents that cover that program.

letters. Apparently, there was once a case where the disclaimer language

the parties. Therefore, to make such language ``conspicuous'', people

started placing it in bold or capitalizing the entire text. It now seems

Some have argued the GPL is unenforceable in some jurisdictions because

its disclaimer of warranties is impermissibly broad.  However, \S 11

contains a jurisdictional savings provision, which states that it is to be

interpreted only as broadly as allowed by applicable law.  Such a

provision ensures that both it, and the entire GPL, is enforceable in any

jurisdiction, regardless of any particular law regarding the

permissibility of certain warranty disclaimers.

permits the sale of warranty as an additional service, which \S 11 affirms.

cannot be disclaimed. Therefore, usually agreements will have both a

warranty disclaimer and a limitation of liability, as we have in \S 12. \S

11 thus gets rid of all implied warranties that can legally be

disavowed. \S 12, in turn, limits the liability of the actor for any

Again, some have argued the GPL is unenforceable in some jurisdictions

because its limitation of liability is impermissibly broad.  However, \S

12, just like its sister, \S 11, contains a jurisdictional savings

provision, which states that it is to be interpreted only as broadly as

allowed by applicable law.  As stated above, such a provision ensures that

both \S 12, and the entire GPL, is enforceable in any jurisdiction,

regardless of any particular law regarding the permissibility of limiting

liability.

So ends the terms and conditions of the GNU General Public License.

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