Intellectual Property, Computer Software and the Open Source Movement
CRS Report for Congress
Computer Software and the
Open Source Movement
March 11, 2004
John R. Thomas
Resources, Science, and Industry Division
Congressional Research Service ˜ The Library of Congress
Intellectual Property, Computer Software and the Open
The term “open source” refers to a computer program that is distributed along
with a license, or contract, that requires users of the program to comply with
specified conditions. Among these stipulations are that the source code be
distributed along with the software, and that others be allowed to modify the source
code as they desire. In contrast, the source code of “closed source” software is
proprietary, not publicly distributed and subject to alteration only by the software
Some concerns have arisen concerning the relationship between open source
software and intellectual property rights, including copyrights, patents and trade
secrets. Although a particular computer program may be designated as open source,
it remains possible that an owner of intellectual property may enforce its rights
against open source software developers and users. Some commentators have also
expressed concern that open source licenses may overreach, converting proprietary
programs into open source software even if only a portion of that program was
derived from an open source original. Others have suggested that open source
licenses may not be legally enforceable, which would allow users to obtain and assert
intellectual property rights pertaining to software that was initially distributed as open
Striking a balance between promoting innovation, on one hand, and
accommodating the demands of software developers and users, on the other, forms
an important component of contemporary software policy. The possibility of
intellectual property rights, and their attendant license fees and royalties, may provide
a significant incentive for firms to innovate and to distribute software. However,
some proponents of open source software believe that these incentives are
unnecessary, and further hope to maintain a non-proprietary environment of software
distribution and development.
Should Congress have an interest in this area, several options present
themselves. No action need be taken if the current relationship between open source
software and intellectual property is deemed satisfactory, particularly as software
publishers become increasingly aware of intellectual property and as judicial
precedents may make the legal situation clearer. Congress might also assist
individuals in identifying intellectual property that pertains to software that has been
identified as open source; speak to the enforceability of open source licenses; and,
as a possible more far-reaching legal reform, allow proprietary software publishers
a grace period for removing portions of program code that derived from an open
Introduction to the Open Source Movement.............................2
Open Source Software Licenses...................................4
Introduction to Intellectual Property...................................6
Intellectual Property Policy......................................6
Potential Conflicts Between Open Source Software and Intellectual Property..10
The Alleged “Viral” Nature of Open Source Software................11
Third Party Infringement Claims.................................13
Validity of Open Source Licenses ................................15
Possible Legislative Issues and Approaches............................17
Intellectual Property, Computer Software
and the Open Source Movement
Perhaps the most dramatic development in the contemporary computer industry
is the “open source” software movement. The term “open source” refers to a
computer program whose “source code” is made available to the public for
modification or improvement as individual users desire.1 In contrast, the source code
of “closed source” software is proprietary, not publicly distributed and subject to
alteration only by the software manufacturer.
The rise of open source software has generated considerable discussion in recent
years. Proponents of open source software contend that the open source system
preserves the freedom of computer users and provides a superior development
methodology as compared to the usual proprietary model.2 Other commentators have
expressed concerns regarding the security of open source software and whether it will
operate in a compatible fashion with other programs.3
Intellectual property rights, including copyrights, patents and trade secrets,
present another possible set of concerns with respect to open source software.
Although a particular computer program may be designated as open source, it
remains possible that an owner of intellectual property may enforce its rights against
open source software developers and users.4 In addition, open source software is
ordinarily accompanied by a license that requires users to maintain the program as
open source.5 Some commentators have expressed concern that these licenses may
overreach, converting proprietary programs into open source software even if only
1 “Source code” is a set of programming instructions that is typically written in a “high-
level” language, such as C or Pascal, that resembles the English language. After a
programmer drafts the source code, it is compiled into a machine language that consists
entirely of numbers and can be recognized by a computer. Proprietary software is
distributed only with the machine code, that allows the computer to function, but cannot be
altered by the user. For more on this technology, see infra notes 9-12; CRS Report
RL31627, Computer Software and Open Source Issues: A Primer, by Jeffrey W. Seifert.
2 Shawn W. Potter, “Opening Up to Open Source,” 6 Richmond Journal of Law and
Technology (2000), 24.
3 David S. Evans & Bernard J. Reddy, “Government Preferences for Promoting Open-Source
Software: A Solution in Search of a Problem,” 9 Michigan Telecommunications &
Technology Law Review (2003), 313.
4 James A. Harvey & Todd S. McClelland, “SCO v. IBM: The Open Source Benefits and
Risks Are Real,” 20 Computer & Internet Lawyer (Sept. 2003), no. 9 at 1.
5 Natasha T. Horne, “Open Source Software Licensing: Using Copyright Law to Encourage
Free Use,” 17 Georgia State University Law Review (2001), 863.
a portion of that program was derived from an open source original.6 Others have
suggested that open source licenses may not be legally enforceable, which would
allow users to obtain and assert intellectual property rights pertaining to software that
was initially distributed as open source.7
This report considers the impact of intellectual property rights upon open source
software. This report commences with an introduction to the open source movement
in the software industry. Next, it briefly reviews the intellectual property laws,
including copyrights, patents and trade secrets. After identifying issues of interface
between open source software and the intellectual property laws, this report
concludes with a discussion of possible legislative issues and approaches.
Introduction to the Open Source Movement
An understanding of the fundamentals of modern computer software technology
will assist in an understanding of the open source movement. Software programmers
typically write software programs using a high level computer language such as
Basic, C++, or Java. By using the words, symbols and numbers that make up these
high-level computer languages, the programmer tells the computer what to do. For
instance, the command “ADD (X, Y)” instructs the computer to add the value of the
variable X to the variable Y. A computer program written in this high level language
is said to be in “source code” form.8
Computers are incapable of reading the high-level instructions of source code,
however. Rather, the computer responds to binary inputs — either a “0" or a “1" —
that correspond to an open or closed electrical switch. The number “01001101"
might tell a computer to add two numbers and save the result, for example. Thus,
after writing the program in source code, the programmer ordinarily uses a compiler
program to translate or “compile” the source code into the corresponding 1s and 0s
that the computer can read. Source code that has been compiled into this series of
Today, most computer programs are distributed in object code form. This
distribution system is often referred to as the “proprietary software” model. When
a consumer purchases a copy of, for example, WordPerfect software, that program
comes on a CD-ROM into which the object code 1s and 0s have been encoded. One
of the reasons that software developers distribute only the object code, and not the
6 Christian H. Nadan, “Open Source Licensing: Virus or Virtue?,” 10 Texas Intellectual
Property Law Journal (2002), 349.
7 Dennis M. Kennedy, “A Primer on Open Source Licensing Legal Issues: Copyright,
Copyleft and the Future,” 20 St. Louis University Public Law Review (2001), 345.
8 Daniel Lin et al., “Source Code Versus Object Code: Patent Implications for the Open
Source Community,” 18 Santa Clara Computer and High Technology Law Journal (2002),
source code, is convenience. Software in object code format is ready for the
computer to use.10
This technique also protects the source code from disclosure. Because skilled
programmers can easily read source code, a competitor could review this text in order
to find out how a program works. As a result, if software were distributed in source
code form, rival firms could readily take and reuse parts of the program in competing
products. As this report discusses below,11 this appropriation of the original
programmer’s work may violate intellectual property laws. However, such violations
may be difficult both to discover and stop. Distributing software in object code form
is a more cost-efficient and effective means of preventing this infringement.12
Some computer users have expressed dissatisfaction with the proprietary
software model. End users of proprietary software must ordinarily rely upon the
software publisher to fix mistakes in the code and develop additional features. As
free software advocate Richard Stallman has explained, the proprietary software
model “keeps users helpless and divided: the inner workings are secret.”13 Stallman
further opines that computer users “should be free to modify programs to fit their
needs, and free to share software, because helping other people is the basis of
soci et y. ” 14
A loosely organized open source software community has resulted from this
reaction to proprietary software development.15 In contrast to proprietary software,
the source code of “open source” software is available to the public.16 Computer
users are therefore able to examine the human-readable instructions that the
programmer wrote to create the software. A number of well-known programs are
“open source,” including a widely used Internet server program, Apache; a popular
Internet programming language, Perl; the program that routes more than 80 percent
of all Internet email messages worldwide, Sendmail; the program that is the basis for
the domain name system, Bind; and the fastest growing operating system in the
world, Linux.17 Due to the open source status of these programs, members of the
public may consult their source code as desired.
10 Nadan, supra note 6.
11 See infra notes 31-62 and accompanying text.
12 See Patrick K. Bobko, “Linux and General Public Licenses: Can Copyright Keep ‘Open
Source’ Software Free?,” 28 American Intellectual Property Law Association Quarterly
Journal (2000), 81.
13 Richard Stallman, The GNU Project, at http://www.fsf.org/gnu/thegnuproject.html.
15 R. Polk Wagner, “Information Wants to Be Free: Intellectual Property and the
Mythologies of Control,” 103 Columbia Law Review (2003), 995.
16 Klaus M. Schmidt & Monika Schnitzer, “Public Subsidies for Open Source? Some
Economic Policy Issues,” 16 Harvard Journal of Law and Technology (2003), 473.
17 Jason B. Wacha, “Open Source, Free Software, and the General Public License,” 20
Computer and Internet Lawyer no.3 (March 2003), 20.
Open Source Software Licenses
It is important to note that the term “open source” implies more than merely
distribution of source code along with the object code. In such circumstances, the
publisher could continue to assert its intellectual property rights in the software,
thereby limiting the ability of others to modify the program or redistribute it. Even
though disclosed to the public, the source code would remain under the control of the
As a result, publishers of open source software ordinarily do more than simply
provide copies of both the source code and the object code when they distribute
software by means of a license. A license is a contract through which the publisher
allows recipients to use and modify the software, subject to certain conditions
specified in the license. For example, the license might require that anyone who
redistributes the software also make the source code of that software publicly
available. Contracts that provide users with a sufficient set of privileges to access
and modify the software’s source code are deemed to be “open source licenses.”
The practice of preserving the rights of software users through a set of license
provisions is sometimes called “copylefting.” This term is a play on words on the
term “copyright.”19 Under this system, the copyright holder licenses the recipient of
a copy of the software. The license permits the redistribution of further copies of the
software — including software containing modifications — under the condition that
those copies are subject to the same license. This legal framework ensures that
derivatives of the licensed work remain open. If the licensee fails to distribute
derivative works under the same license, then he may face legal consequences. In
particular, the licensor could terminate the license, leaving the licensee without
permission to copy, distribute, or modify the software. 20
Although no official definition specifies which software licenses qualify as open
source licenses, an organization called the “Open Source Initiative,” or OSI, has
promulgated a widely followed set of standards.21 OSI describes itself as a “non-
profit corporation dedicated to managing and promoting the Open Source
18 Joseph Scott Miller, “Allchin’s Folly: Exploding Some Myths About Open Source
Software,” 20 Cardozo Arts and Entertainment Law Journal (2002), 491.
19 See Free Software Foundation, “What is Copyleft?,” available at
http://www. gnu.org/licenses/licenses.html #WhatIsCopyleft
20 Kennedy, supra note 7.
21 See Open Source Initiative, Introductory Statement (2004), available at
Definition”22 through a certification program that it administers.23 To satisfy the
Open Source Definition, the license must satisfy certain conditions, including:
2. The publisher must allow modification and redistribution of the code (with or
without modifications by the licensee).
products, or limit its use with other free software.
A number of different groups have promulgated a variety of open source
licenses that OSI has certified as compliant with the Open Source Definition. Among
these is the General Public License, or GPL.25 As compared to the Open Source
Definition, the GPL imposes additional restrictions upon software publishers. As a
result, a license may fulfill the conditions of the Open Source Definition but not
qualify as a GPL. According to its sponsor, the Free Software Foundation, the GPL
guarantees computer users the following “four freedoms”:
The freedom to run the program, for any purpose.
The freedom to study how the program works, and adapt it to your needs.
The freedom to redistribute copies so you can help your neighbor.
The freedom to improve the program, and release your improvements to the26
public, so that the whole community benefits.
It is important to note that, in this context, the term “freedom” does not mean
that the software has to be sold at no charge. Rather, it refers to permissible user
activities, and in particular the principle that software should be openly available in
all of its current and future forms to all those desiring to learn or benefit from it.27
The chief distinction between the Open Source Definition and the GPL is that
the Open Source Definition effectively allows users to appropriate privately any
22 See Open Source Initiative, The Open Source Definition, Version 1.9 (2004), available
23 See Open Source Initiative, OSI Certification Mark and Program (2004), available at
http://www.opensource.org/ doc s/certification_mark.php.
24 The Open Source Definition, supra note 22.
25 See Terry J. Ilardi, “Mass Licensing,” 747 Practising Law Institute Patents & High
Technology Licensing (2003), 187.
26 The Free Software Foundation, “The Free Software Definition” (2004), available at
ht t p : / / www.gnu.or g/ phi l o sophy/ f r ee-sw.ht ml .
modifications that they make.28 For example, under the Open Source Definition, a
user could refuse to disclose publicly the source code of any programs that include
the user’s modifications. The licensee could also claim intellectual property rights
in any modifications they introduced into the software.29 Of course, in such cases,
the licensee’s software would not qualify as open source. In contrast, the GPL
requires that the source code be kept open to the public, even if the recipient of the
software made changes. Also, under the GPL, the licensee cannot restrict the ability
of others to build upon any modifications that the licensee made.30
For example, a computer programmer may use software under a license that
minimally complies with the Open Source Definition. Suppose further that the
programmer modifies the software, and then licenses the object code of the modified
version with the additional restriction that no licensee could copy the modified
version’s object code. This practice is acceptable under the Open Source Definition.
This practice would not comply with the Free Software Foundation’s GPL, however.
Introduction to Intellectual Property
As we have seen, both proprietary and open source software publishers rely
upon the intellectual property laws to sustain their chosen development model. More
specifically, the term “intellectual property laws” identifies a number of doctrines,
including copyrights, patents and trade secrets, that provide innovators with
proprietary interests in their intangible creations.31 Copyright provides authors with
exclusive rights in their writings, visual works and other works of authorship; patents
relate to products, processes and other useful inventions; while trade secret law32
concerns secret information that is of commercial value. After briefly identifying
the principal policy justifications for the copyright, patent and trade secret law, this
report summarizes the basic workings of these legal disciplines.
Intellectual Property Policy
By providing individuals with exclusive rights to their inventive products and
processes, the intellectual property laws allows authors and inventors to secure the
economic benefits of their discoveries. Absent the a system of intellectual property,
competitors might readily be able to appropriate the benefits of an innovator’s
research and development efforts. Aware of these potential “free riders,” firms might
28 Daniel B. Ravicher, “Facilitating Collaborative Software Development: The
Enforceability of Mass-Market Public Software Licenses,” 5 Virginia Journal of Law and
Technology (2000), 11.
29 Kennedy, supra note 7.
30 David McGowan, “Legal Implications of Open-Source Software,” 2001 University of
Illinois Law Review (2001), 241.
31 Roger E. Schechter & John R. Thomas, Intellectual Property: The Law of Copyrights,
Patents and Trademarks (2003), 1-2.
32 Gordon U. Sanford, III, “An Intellectual Property Roadmap: The Business Lawyer’s Role
in the Realm of Intellectual Property,” 19 Mississippi College Law Review (1998), 177.
devote few, if any resources towards innovation. Copyrights, patents and trade
secrets solve this market failure problem by providing economic incentives for
individuals and institutions to engage in research and development.33
Intellectual property rights may also facilitate market mechanisms by creating
discrete, well-defined property interests that are readily subject to commercial
exchanges.34 Absent patent rights, for example, an inventor may have no tangible
asset to sell or license. In addition, an inventor might otherwise be unable to police
the conduct of a contracting party. Any technology or know-how that has been
disclosed to a prospective buyer might be appropriated without compensation to the
inventor. The availability of patent protection decreases the ability of contracting
parties to engage in opportunistic behavior. By lowering such transaction costs, the
patent system may make technology-based transactions more feasible.35
Some commentators have identified natural rights as an additional rationale for
the intellectual property laws, and in particular the copyright law. Under this view,
individuals enjoy a natural right of property in the works they have created through
their own labors.36 Intellectual property law may also encourage marketplace
behavior that is both ethical and efficient. As a matter of fairness and justice, this
view holds, one individual should not be allowed to profit from another’s labor and
goodwill.37 In economic terms, intellectual property laws may also stimulate socially
desirable activities that create wealth, including innovation, and discourage costly
acts that merely redistribute existing wealth, such as industrial espionage.38
The intellectual property system has long been subject to criticism, however.
Some observers believe that intellectual property rights encourage industry
concentration and create barriers to market entry.39 Others have suggested that
intellectual property rights can actually slow the pace of innovation in some
circumstances, as competitors are discouraged from pursuing certain research
pathways due to existing proprietary interests.40 And in an era where digital
33 Simone Rose, “Patent ‘Monopolyphobia’: A Means of Extinguishing the Fountainhead?,”
34 Jonathan Eaton & Samuel J. Kortum, “Trade in Ideas: Patenting and Productivity in the
OECD,” 40 Journal of International Economics (1996), 251.
35 Robert P. Merges, “Intellectual Property and the Costs of Commercial Exchange: A
Review Essay,” 93 Michigan Law Review (1995), 1570.
36 Wendy J. Gordon, “A Property Right in Self Expression: Equality and Individuality in the
Natural Law of Intellectual Property,” 102 Yale Law Journal (1993), 1533.
37 See Justin Hughes, “The Philosophy of Intellectual Property,” 77 Georgetown Law
Journal (1988), 287.
38 David D. Friedman, et all, “Some Economics of Trade Secret Law,” 5 Journal of
Economic Perspectives (1991), 61.
39 John R. Thomas, “Collusion and Collective Action in the Patent System: A Proposal for
Patent Bounties,” University of Illinois Law Review (2001), 305.
40 Mark A. Haynes, “Commentary: Black Holes of Innovation in the Software Arts,” 14
information can be immediately disseminated across the globe, the notion that an
innovation can be an object of possession has been challenged.41
When analyzing these contending views, it is important to note the lack of
rigorous analytical methods available for determining the effect of the intellectual
property rights upon the U.S. economy as a whole. The relationship between
innovation and intellectual property rights remains poorly understood. Concerned
observers simply do not know what market impacts would result from changing the
patent term from its current 20-year period, for example.42 Consequently, current
economic and policy tools do not allow us to calibrate the intellectual property
system precisely in order to produce an optimal level of investment in innovation.
Under the federal Copyright Act of 1976, copyright may extend to any original
work of authorship, including computer software programs.43 Copyright protection
arises automatically, without the need of the proprietor to take any formal steps.
However, authors who register their works with the U.S. Copyright Office,44 and then
place a notice of copyright on copies of their works,45 are afforded certain advantages
when enforcing their copyrights.
Copyright confers a number of exclusive rights to the author or, in some
circumstances, to the employer of the author.46 Most notable is that the copyright
proprietor has the exclusive right to make copies of the protected work and to
distribute it to the public.47 Each copyright ordinarily enjoys a term of the life of the
author plus 70 years.48
As with the other intellectual property rights, copyrights do not enforce
themselves. Copyright proprietors bear responsibility for monitoring its competitors
to determine whether they are using the protected work or not. Copyright owners
who wish to compel others to observe their intellectual property rights must usually
commence litigation in the courts.
Berkeley Technology Law Journal (1999), 567.
41 John Perry Barlow, “The Economy of Ideas,” Wired 2.03 (March 1994).
42 See F. Scott Kieff, “Property Rights and Property Rules for Commercializing Inventions,”
43 The 1976 Copyright Act, as amended, is codified at 17 U.S.C. § 101 (2000) et seq.
44 17 U.S.C. §§ 408 - 412 (2000).
45 17 U.S.C. § § 401 - 406 (2000).
46 17 U.S.C. § 201 (2000).
47 17 U.S.C. § 106 (2000).
48 17 U.S.C. § 302(a) (2000).
As with patents and trade secrets, copyrights may be sold or licensed to others.49
An intellectual property license is a grant of permission to use the owner’s
proprietary interest. It does not convey ownership rights in the intellectual property,
which remain with the licensor. A license is necessary if, without one, the licensee
would be liable for infringement if it made use of the subject matter that is protected
by an intellectual property right.
In contrast to copyright, patent rights do not arise automatically. Under the
Patent Act of 1952, inventors must prepare and submit applications to the U.S. Patent
and Trademark Office (“USPTO”) if they wish to obtain patent protection.50 USPTO
officials known as examiners then assess whether the application merits the award
of a patent.51
In deciding whether to approve a patent application, a USPTO examiner will
consider whether the submitted application fully discloses and distinctly claims the
invention.52 In addition, the application must disclose the “best mode,” or preferred
way, that the applicant knows to practice the invention.53 The examiner will also
determine whether the invention itself fulfills certain substantive standards set by the
patent statute. To be patentable, an invention must be useful, novel and nonobvious.
The requirement of usefulness, or utility, is satisfied if the invention is operable and
provides a tangible benefit.54 To be judged novel, the invention must not be fully
anticipated by a prior patent, publication or other knowledge within the public
domain.55 A nonobvious invention must not have been readily within the ordinary
skills of a competent artisan at the time the invention was made.56
If the USPTO allows the patent to be issued, the patent proprietor obtains the
right to exclude others from making, using, selling, offering to sell or importing into
the United States the patented invention.57 The maximum term of patent protection
is ordinarily set at 20 years from the date the application is filed.58 The patent
49 17 U.S.C. § 201(d) (2000).
50 The 1952 Patent Act, as amended, is codified in 35 U.S.C. § 1 (2000) et seq.
51 35 U.S.C. § 131 (2000).
52 35 U.S.C. § 112 (2000).
54 35 U.S.C. § 101. (2000).
55 35 U.S.C. § 102 (2000).
56 35 U.S.C. § 103 (2000).
57 35 U.S.C. § 271(a) (2000).
58 35 U.S.C. § 154(a)(2) (2000). Although patent term is based upon the filing date, the
patentee gains no enforceable legal rights until the USPTO allows the application to issue
as a granted patent. A number of Patent Act provisions may modify the basic 20-year term,
considering examination delays at the USPTO and delays in obtaining marketing approval
applicant gains no enforceable rights until such time as the application is approved
for issuance as a granted patent, however. Once the patent expires, others may
employ the patented invention without compensation to the patentee.
The common law of trade secrets protects valuable, commercially useful
information that is the subject of reasonable measures to preserve its secrecy.59
Maintaining trade secret status ordinarily requires the trade secret proprietor to
restrict access to the confidential information, require employees to promise not to
disclose the information, or take other precautions that are prudent under the
circumstances. Computer software may be the subject of trade secret protection so
long as these requirements are met.
Unlike a copyright or patent, a trade secret is not limited in duration to a fixed
number of years. Instead, a trade secret endures so long as the protected information
remains commercially valuable and is maintained as a secret.60 If the trade secret
holder ceases to take measures to maintain the confidentiality of the protected
information, or if the information becomes widely available to the public, then the
trade secret is extinguished.
A trade secret is misappropriated when it has been obtained through the abuse
of a confidential relationship or improper means of acquisition.61 Typical cases of
trade secret misappropriation involve trespass, bribery and theft, as well as breaches
of a duty of confidence committed by former employees or commercial partners.
Unlike the Patent Act, trade secret law does not provide a cause of action against an
individual who independently developed or reverse engineered the subject matter of
the trade secret.62
Potential Conflicts Between Open Source Software
and Intellectual Property
Conflicts potentially arise between open source standards and intellectual63
property rights. Some observers have expressed concerns that if open source
software is incorporated into an otherwise proprietary program, then the terms of the
open source license will apply to the entire program and defeat intellectual property
for the patented invention from other federal agencies.
59 American Law Institute, Restatement of Unfair Competition Third § 39 (1995).
60 See United States v. Dubilier Condenser Corp., 289 U.S. 178, 186, 53 S.Ct. 554, 77 L.Ed.
61 Restatement of Unfair Competition, supra note 59, at § 43.
62 Ibid § 39 cmt. c.
63 Stephen M. McJohn, “The Paradoxes of Free Software,” 9 George Mason Law Review
rights that would otherwise exist. It is also possible that a party not bound by the
terms of an open source license may raise claims of intellectual property infringement
based upon the use of software that others believe to be open source. Finally,
questions have arisen regarding the validity and enforceability of open source
licenses. This report next reviews these issues.
The Alleged “Viral” Nature of Open Source Software
Certain open source licenses have sometimes been described as “viral” in
character.64 Some individual open source licenses require that the terms of that
license apply automatically to each copy of the software, as well as to any modified
versions.65 Some observers have expressed concerns regarding situations where a
programmer, perhaps unknowingly, incorporates some open source program code
into a larger software package. In these circumstances, the open source portion of the
software could “contaminate” the entire program. As a result, even though the
publisher intended that the program be proprietary, it may be instead be distributed
as the open source license stipulates.66 In this way, the open source software
component would trump any intellectual property rights that the publisher hoped to
Whether a particular open source software is potentially “viral” or not depends
upon the individual terms of the accompanying open source license. Some
commentators have stated that the Free Software Foundation’s GPL is one example
of a potentially “viral” license.67 Under the GPL, anyone who uses or modifies the
software must, upon further distributing that software or a modification of that
software, make the source code fully available to the public, free of any proprietary
interest.68 This limitation prevents the software written and distributed under the
GPL from being subject to intellectual property rights. As a result, the GPL
maintains the “open” nature of the open source code by allowing users to modify and
redistribute the software, but requiring that such modifications be made available to
anyone under the terms of the GPL.
Notably, under certain conditions the GPL allows users to incorporate open
source-derived computer programs into proprietary software packages without
subjecting the entire package to the GPL.69 According to the Free Software
Foundation, in order to avoid the imposition of the GPL upon the entire program,
64 Nadan, supra note 6.
65 Robert W. Gomulkiewicz, “How Copyleft Uses License Rights to Succeed in the Open
Source Software Revolution and the Implications for Article 2B,” 36 Houston Law
Review (1999), 179.
66 Nadan, supra note 6.
67 Thomas M. Pitegoff, “Open Source, Open World: New Possibilities for Software in
Business,” 11 Business Law Today (Sept.-Oct. 2001), 52.
68 See supra notes 25-27 and accompanying text.
69 See Free Software Foundation, Frequently Asked Questions about the GNU GPL,
available at http://www.gnu.org/licenses/gpl-faq.html#GPLInProprietarySystem.
software publishers “must make sure that the free and non-free programs
communicate at arms length, that they are not combined in a way that would make
them effectively a single program.”70
The Free Software Foundation offers as an example the combination of an editor
program and a shell program.71 To expand upon this illustration, suppose that an
editor program executes textual commands typed by the user. A shell, or user
interface program, might provide a graphical, menu-driven interface so that the user
doesn’t have to memorize the text commands. The editor could be a proprietary
program. The shell might have been developed for individuals who did not wish to
learn the text commands, and distributed under the GPL. As the editor can work
independently of the shell in this example, the proprietary nature of the editor would
be maintained even though the shell was subject to the GPL.72
The functional separation of proprietary and open source software provides one
avenue for avoiding the broad application of an open source license to an entire
software product. Some observers believe, however, that conformity with this
exception imposes substantial compliance burdens. For example, attorneys James
A. Harvey and Todd S. McClelland state:
It is therefore a good practice to advise clients with respect to procedures
designed to segregate software that can be licensed as proprietary from that
which must be distributed under an open source license. Developing and
maintaining procedures to implement these administrative tasks can be very73
difficult in complex development environments.
Views differ on the supposed “viral” nature of some open source licenses.
Representatives of proprietary software firms have expressed concerns that “open
source is an intellectual-property destroyer,”74 and have reportedly referred to open
source software as a “cancer” and “un-American.”75 Others believe that, in order for
open source software to remain open to the public, all programs derived from an open
source original should be treated as open source as well.76 And, as noted above,
some open source licenses take an intermediate position.77 Although these licenses
require that the original software that is distributed with the license remain open
source, they allow modifications and upgrades to that code to be “taken private” and
be treated as proprietary software.
72 Seifert, supra note 1.
73 Harvey & McClelland, supra note 4.
74 Miller, supra note 18.
75 Jonathon Krim, “Open-Source Fight Flares at the Pentagon; Microsoft Lobbies Hard
Against Free Software,” Washington Post (May 23, 2002), E1.
76 Ravicher, supra note 28.
77 See supra notes 28-30 and accompanying text.
Third Party Infringement Claims
Some open source licenses, such as the General Public License (GPL),
effectively prevent individuals from asserting intellectual property rights in open
source software.78 This restriction only applies to individuals who have consented
to these licenses, however.79 Parties not subject to that license are therefore not
necessarily prevented from enforcing their intellectual property rights against
individuals who use the software. As a result, even though one individual has
distributed software that it has designated as open source, another entity may possibly
assert that the software infringes an intellectual property right. Such assertions lead
to potential conflicts between the intellectual property rights owner and individuals
who believe that the software is open to the public.
For example, suppose that a computer scientist, Alpha, invents a new method
of sorting data useful for computer programs. Alpha then files a patent application
at the USPTO claiming the method. Later, a programmer named Beta independently
writes a software program that uses the same data sorting method that Alpha had
claimed in his pending application. Unaware of Alpha’s patent application, Beta
distributes his own software to the public under the GPL. If the USPTO approves of
Alpha’s application, Alpha could assert claims of patent infringement against anyone
using Beta’s software. These users would be subject to legal liability, even though
the software was believed to be open source, and even though no one had knowledge
of the patent infringement.80
This scenario is possible not only for open source software, but also for
proprietary software. A software publishing firm may also discover that their
products infringe a patent or other intellectual property. However, commercial
enterprises may stand in a better position to consider the intellectual property
ramifications of their published software than the more diffuse open source
community. Such enterprises often perform audits or establish procedures to avoid
the use of other’s software in their own products.81 Members of the more loosely
organized open source community may have less capability to engage in these sorts
At least one member of the open source community has addressed possible
patent issues with respect to open source software. Red Hat, Inc., a well-known
distributor of the open source operating system program called Linux, has presented
a “patent promise.” Red Hat’s promise states in part:
Subject to any qualifications or limitations stated herein, to the extent any party
exercises a Patent Right with respect to Open Source/Free Software which reads
78 Ira V. Heffan, “Copyleft: Licensing Collaborative Works in the Digital Age,” 49 Stanford
Law Review (1997), 1487.
79 Harvey & McClelland, supra note 4.
on any claim of any patent held by Red Hat, Red Hat agrees to refrain from82
enforcing the infringed patent against such party for such exercise . . . .
This statement appears to immunize users of open source software from claims
of patent infringement by Red Hat, subject to certain qualifications. Red Hat’s
promise expressly does not cover patents owned by anyone else, however. As a
result, users of open source software theoretically face the possibility of infringement
claims by anyone holding a pertinent patent.
The ongoing litigation between the SCO Group and IBM Corporation offers a
notable example of third party infringement claims. SCO is the current owner of the
source code, as well as certain intellectual property rights, associated with a computer
program known as UNIX.83 UNIX, a widely used operating system program,
coordinates use of the computer’s resources (such as its disk drive or a printer) during
the computer’s operation.84 Publishers of certain versions of UNIX have declared85
their programs to be open source software.
On March 6, 2003, SCO filed a lawsuit against IBM, in part asserting that IBM
had misappropriated SCO’s trade secrets.86 More specifically, SCO contends that
IBM accessed its proprietary information when it licensed the UNIX software code
from SCO and its predecessors.87 SCO further asserts that IBM then introduced this
proprietary UNIX code into its own operating system, AIX, and later into its Linux-
based products.88 IBM has denied these charges and, in turn, has asserted that SCO89
products infringe IBM copyrights and patents. As of early 2004, two other open
source software vendors, Novell and Red Hat, had also become party to that litigation90
or to related lawsuits.
In addition to commencing infringement litigation against IBM, SCO has
reportedly sent 1,500 letters to other firms. These letters are said to explain that the
recipient’s use of Linux could expose them to liability, and also to extend an offer of
82 Red Hat, Inc., Statement of Position and Our Promise on Software Patents,
83 The term “UNIX” is a trademark registered to the Open Group.
84 See Lucent Laboratories, The Creation of the UNIX Operating System (available at
85 See Joel West, “How open is open enough? Melding proprietary and open source
platform strategies,” 32 Research Policy no. 7 (July 2003), 1259.
86 Harvey & McClelland, supra note 4.
88 Reuters News, SCO Advances Suit Against IBM (June 29, 2003).
89 Robert McMillan, “SCO infringed copyright, IBM alleges in new claim,” Computer world
(Sept. 26, 2003).
90 ComputerWire News, “SCO Hits Novell with IP Slander Action: (Jan. 21, 2004).
a license.91 The requested fee is reportedly about $700 for each computer using the
Linux code.92 This demand has in turn animated some observers, such as the
Electronic Frontier Foundation, to organize protests against SCO.93 As well, a
consortium of technology companies, including IBM and Intel, have contributed
substantial amounts of money towards the “Linux Legal Defense Fund.”94
Contributors intend that these sums be used to defray the legal expenses of open
source software users who face charges of intellectual property infringement.95
As of the publication date of this report, the lawsuit between SCO and IBM
continues in the U.S. District Court for the District of Utah in Salt Lake City. The
outcome of this litigation may significantly impact users of Linux and other open
source software. It also illustrates the potential tension between intellectual property
rights and the open source community. Regardless of the outcome of this particular
case, the SCO-IBM dispute demonstrates the possibility of future intellectual
property infringement claims against open source software, commenced by
individuals who claim not to be subject to the license under which the software was
Validity of Open Source Licenses
No court has yet ruled on the enforceability of open source software licenses.96
Some observers have suggested that these agreements may be invalid, however.97
These commentators point to the doctrine of federal preemption, which invalidates
state laws that are inconsistent with federal laws.98 Under this view, open source
software licenses — which are enforced through the mechanisms of state contract
laws — conflict with the federal copyright statute, and are therefore invalid.99
The rule of federal preemption derives from the Supremacy Clause of the U.S.
Constitution. That provision states that the “Constitution and the laws of the United
States...shall be the supreme law of the land . . .anything in the constitutions or laws
91 David Bank, “Lawsuit Over Copyrights Is Part of Effort to Collect License Fees for
Software,” The Wall Street Journal (Nov. 19, 2003).
93 See Electronic Frontier Foundation, “Linux Users Unite: Stop SCO!,” (2004), available
94 Dean Takahashi, “Aid group to defend Linux suits: Software Backers’ Aim is $10
Million,” San Jose Mercury News (Jan. 13, 2004), 1.
95 Keith Regan, “IBM, Intel Back Linux Legal Defense Fund,” E-Commerce Times (Jan. 22,
96 See Ravicher, supra note 28.
97 See McGowan, supra note 30.
98 Paul Heald, “Federal Intellectual Property Law and the Economics of Preemption,” 76
Iowa Law Review (1991), 959.
99 William M. Bulkeley, “Linux Lawsuit Could Undercut Other ‘Freeware’,” The Wall Street
Journal (Aug. 14, 2003), B1.
of any State to the contrary notwithstanding.”100 In resolving cases under the
Supremacy Clause, courts typically determine whether enforcement of a state law
would either directly conflict with federal law or frustrate federal purposes.101 In
addition, section 301 of the Copyright Act expressly exempts state laws “that are
equivalent to any of the exclusive rights within the general scope of copyright” and
that apply to “the types of works protected by the Copyright Act.”102
The ongoing litigation between SCO and IBM may offer a court the opportunity
to decide whether the open source license known as the General Public License, or
GPL, is preempted by the federal copyright law.103 In that litigation, IBM has in part
argued that SCO cannot enforce whatever intellectual property rights SCO owns in
Linux due to the terms of the GPL. According to IBM, SCO distributed Linux
software under the GPL for many years. IBM observes that the GPL stipulates that
software distributed under the GPL must be made available for copying by others.
As a result, IBM has asserted that SCO cannot now demand payment for use of any
intellectual property SCO might own in Linux.104
In turn, SCO has in part asserted that the GPL is invalid. As part of its
argument, SCO has reportedly pointed to section 117 of the Copyright Act.105 That
statute provides that “it is not [a copyright] infringement for the owner of a copy of
a computer program to make or authorize the making of another copy or adaptation
of that computer program provided . . . that such new copy or adaptation is for
archival purposes only . . . .”106 Stated differently, the Copyright Act permits users
to make a backup copy of their software without fear of infringement liability.
The GPL places limitations upon the ability of users to make copies of GPL-
licensed software, however. In particular, the GPL requires that individuals receiving
copies of the software also receive copies of the GPL, and that persons making copies
of the software be able to access the program’s source code.107 The GPL then states
that “[a]ny attempt otherwise to copy, modify, sublicense or distribute the Program
is void, and will automatically terminate your rights under this License.”108 SCO has
100 U.S. Constitution, Article VI.
101 Heald, supra note 98.
102 17 U.S.C. § 301 (2000).
103 For an introduction to the litigation between SCO and IBM, see supra notes 83-95. The
GPL is discussed supra at notes 25-27.
104 Bulkeley, supra note 99.
105 17 U.S.C. § 117 (2000); see supra notes 43-49 and accompanying text.
106 17 U.S.C. § 117 (2000).
107 GNU General Public License, Version 2 (June 1991), available at
taken the position that because the GPL conflicts with the Copyright Act, the GPL
is preempted and therefore unenforceable.109
Notably, SCO and IBM have presented a number of other arguments to the
court. The court may not need to address this issue to resolve their dispute.110 This
aspect of the SCO-IBM litigation has nonetheless raised concerns in the open source
software community. As explained by journalist William M. Bulkeley:
If SCO’s argument ultimately wins, free-software advocates worry it would
create considerable uncertainty about the legal status of many industry products.
Although most believe the industry could adapt, companies that use GPL-
licensed software might be confronted by surprise copyright claims from
software developers. In addition, creation of new programs might be slowed by111
Other observers believe that the possibility of a court striking down the GPL is small.
For example, lawyer James Boyle, a member of the faculty of the Duke University
Law School, has reportedly described the federal preemption argument as “simply
ludicrous.”112 Eben Moglen, a law professor at Columbia University, believes that
the federal preemption argument is overly broad. In Moglen’s view, this position
would effectively invalidate all software licenses, even those for which people pay,113
and even for proprietary software. Moglen believes it unlikely that a court would
wish to dispute this longstanding industry practice.114
Possible Legislative Issues and Approaches
Given the wide recognition that intellectual property and the open source
movement are of growing importance in the U.S. computer industry,115 the
relationship between these fields is the subject of increasing attention. The
policymakers of the 108th Congress have addressed the open source movement with
respect to cybersecurity and other contexts. Should Congress choose to address this
area directly, a variety of approaches are available. If the current interface between
intellectual property rights and the open source movement is considered satisfactory,
then no action need be taken. Indeed, growing awareness that intellectual property
and open source software licenses can sometimes conflict may lead to more
109 Bulkeley, supra note 99.
112 Evan P. Schultz, “A Brewing Legal Battle Imperils Linux and Other Public-License
Software,” 26 Legal Times IP Magazine no. 41 (Oct. 13, 2003), 14.
115 Mathias Strasser, “A New Paradigm in Intellectual Property Law? The Case Against
Open Sources,” Stanford Technology Law Review (2001), 4.
sophisticated treatment of intellectual property by members of the open source
community, as well as continued refinement of the governing law in the courts.
Another approach is to provide governmental assistance to the open source
movement in identifying intellectual properties that might bear upon a particular open
source software product. For example, the U.S. Patent and Trademark Office could,
upon request by a recognized open source software publisher or organization,
conduct a search of pending patent applications and issued patents in order to
determine whether these patents might bear upon a particular open source software
program. This capability would allow members of the open source community to
become more fully informed of intellectual property rights. It should be noted,
however, that a number of patent research firms already exist that could conduct such
a search for a fee, at least with respect to issued patents and published patent
More far-reaching legal reforms are also possible. For example, one recognized
source of legal uncertainty for the software industry concerns the enforceability of
open source licenses.117 A legislative statement concerning the status of these
licenses in terms of the federal preemption doctrine might allow software firms to
make decisions concerning research, investment, and other commercial activities
with more confidence.
The allegedly viral nature of open source software presents another source of
concern. One possible legislative response is to allow a proprietary software
publisher that discovers its product contains an open source component a fixed
period of time to eliminate the open source component. If the publisher removes the
open source component within the stipulated grace period, then the software would
Any possible legal reform would be well-advised to recognize that the U.S.
software industry is increasingly characterized both by rapid innovation and by a
distinct community of knowledgeable users who wish to “opt out” of the intellectual
property system. The possibility of intellectual property rights, and their attendant
license fees and royalties, may provide a significant incentive for firms to innovate
and to distribute software. On the other hand, some computer users believe that these
incentives are unnecessary, and further hope to maintain a non-proprietary
environment of software distribution and development.118 These two trends have
sometimes led to conflicts between exclusive intellectual property rights and open
source software. Striking a balance between promoting innovation, on one hand, and
accommodating the demands of software developers and users, on the other, forms
an important component of contemporary software policy.
116 Steve D. Beyer, “Searching — The Art Behind An Opinion,” 667 Practising Law
Institute Patents, Copyrights, Trademarks and Literary Property Course Handbook
Series (Nov. 1, 2001), 45.
117 See supra notes 96-114 and accompanying text.
118 See Andrea Bonaccorsi & Cristina Rossi, “Why Open Source software can succeed,” 32
Research Policy no. 7 (July 2003), 1243.