February 27, 2002

GPL probably safe for now; Moglen doesn't testify

Author: JT Smith

- by Adam Kessel -

An observer at the hearing for a temporary injunction against NuSphere says the
judge had pretty much made up her mind before entering the court room. The following is a post to the Free Software Law discussion list, made by Adam Kessel and reprinted here with his permission.

Hi All:

I just returned from the hearing for a preliminary injunction on the
NuSphere/MySQL case. Here are some initial reactions, many of which are not
original to me.

First, the headline: There was nothing to suggest that the GPL itself or
free software is in danger, although the judge is unlikely to rule in
MySQL's favor on this preliminary injunction.

The details: Judge Saris was surprised by the number of people attending the
hearing (around 20 to 30). I suspect she didn't know this was being seen as
the first test case of the GPL in court. She threw both sides off balance
by announcing, before any arguments, that she had more or less made up her
mind.

She said she was inclined to grant the defendant's (MySQL AB) motion for a
preliminary injunction with respect to the trademark issue (enjoining
NuSphere from using MySQL's registered trademark against MySQL's wishes
after their "temporary agreement" broke down) but was not inclined to grant
the preliminary injunction against NuSphere from using the GPL'ed code at
all. There followed about two hours of arguments, and when the Judge
adjourned the hearing it seems she held the same views.

The judge did not want to get into issues of fact beyond their most
minimally necessary. Although her technical knowledge was limited, she
realized that it could take several hours and probably several days to fully
explore the technical side of things, and she wanted to make her decision
today after this hearing, particularly since people had traveled great
distances to attend the hearing (including the two MySQL AB developers from
Sweden).

Like most judges, Judge Saris was hoping this could be settled between the
parties, particularly since the Court is not particularly well equipped to
deal with the more technical issues of 'statically and dynamically
linked code', etc. She urged the parties to use the remainder of their
time in the courtroom to talk, and was trying to set up some mediation with
a professional mediator or magistrate judge. One analysis is that she
will grant one motion but not the other so as not to put either party in too
powerful a position in an out-of-court settlement.

Although the court clearly didn't understand the specifics of open source
(she seemed to think "linking" code was analogous to hyperlinks on the web,
and that a single package was like a single icon you would click on on the
desktop), she did pretty clearly understand what the GPL is about, and
said nothing to suggest she didn't think it would be enforceable. The issue
at hand was whether the facts required immediate injunctive relief. For
preliminary injunctive relief, the Judge looks at:

(1) likelihood of prevailing on the merits
(2) immediate and irreparable injury, loss or damage
(3) balance of harm to moving party vs. harm to non-moving party lies in
moving party favor

It seemed like she might be convinced on (1), but she had trouble seeing how
(2) was the case, so she was not particularly interested in hearing a lot of
argument about whether or not the case would eventually prevail on the
merits. She also was concerned that the injunction from using MySQL code at
all would essentially destroy NuSphere's entire business (despite the fact
that they are a subsidiary of a $300M company), and thus found it hard to
believe that the balance of harms would lie in MySQL AB's favor.

It is thus likely that she will not actually address the terms of the GPL
itself in her decision, which is a good thing, since there was so little
expert testimony about it (Eben Moglen was present but was not given a
chance to testify). Instead, I expect she will focus on the lack of proof
of irreparable harm in a short opinion denying the motion.

The trademark issue was more clear cut. Under copyright law, non-permitted
use of a trademark is presumptively irreparable harm. MySQL AB and NuSphere
had previously had a provisionaly contract granting NuSphere the right to use
MySQL's trademark; however, the court found it convincing that that contract
terminated (1) because it had a horizon date, after which further
arrangements would need to be made, and (2) because NuSphere ceased making
payments to MySQL AB. NuSphere wanted to argue that MySQL AB should be
stopped from the claim because they took 18 months to bring suit about it
(therefore, in NuSphere's view, "acquiescing" to the continuation of the
contract) but MySQL AB was in good faith negotiations for most of that time;
once things did break down and MySQL AB learned that NuSphere had
distributed MySQL along with proprietary software, then they did file suit
fairly promptly.

I'd be happy to answer any questions about the proceedings for those who
couldn't make it.

A couple of thoughts:

(1) NuSphere probably figured they could probably violate the GPL and MySQL
would not have the resources to sue them. This is probably true of most
free software developers who have not assigned their copyrights to the FSF.
After watching this hearing, it seems to me imperative that developers
assign their copyrights to some party that will have the resources to
enforce it (whether the FSF or some other organization). These violations
can only become more common as GPL software becomes more powerful and
widespread, and it is quite expensive to litigate against them.

(2) The GPL termination clause (section 4) is going to cause problems. Does
the person who violates the GPL permanently lose their license until the
licenser re-grants it, even if they bring their use back into compliance with
the GPL? Can they not redownload the GPL'ed software and become a 'fresh'
licensee? What if the original licenser can't be located? Does this mean
there is a "special class" of people in the world who can't distribute GPL
software for the rest of their lives because of some past action that has
been cured? How are courts likely to view this interpretation? Is it good
policy? These issues were quite present because it appears that NuSphere
has substantially cured their prior violation (although there was a dispute
of fact over whether they actually had fully cured it).

That's it for now. The parties were given until August for discovery,
although the judge urged them again to settle before that. It appears that
a preliminary injunction against NuSphere to stop them from using the
trademark (they will probably change the software name to something like
"NuSphere Enhanced for MySQL") will likely give them something on the order
of three months to implement.

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