Otros ejemplos

As discussed above, the conclusion drawn in Section 4.2.1.2. (Sale of FOSS) is that FOSS licensing may constitute sale of (free and/or open source) software for the purpose of copyright exhaustion. However, the concept of sale as such may not be sufficient to trigger exhaustion of patent rights in software. When it comes to the US patent exhaustion doctrine, the sale must also be unconditional, i.e. not impose

restrictions on resale of the patented article, in order to trigger exhaustion.588 The requirement of unconditional sale under the US patent exhaustion doctrine is similar to the requirement of absence of restrictions on alienation of the copy in order to constitute sale of software under the US copyright exhaustion doctrine. Whether FOSS licensing entails restrictions on transfer of a copy of a FOSS program or may be considered as an unconditional sale, is already shortly discussed above in copyright context. However, further analysis is required for the purpose of evaluating exhaustion of patent rights in a copy of a FOSS program. As affirmed by the US District Court for the Northern District of California, the GPL permits distribution of software only if the distributor satisfies several specific conditions, such as including a copy of the GPL along with the distributed program.589 Also the permissive BSD license states that "redistribution and use in source and binary forms, with or without modification, are permitted provided

that the following conditions are met." Further, the MIT license provides that

"permission is hereby granted… subject to the following conditions". Despite that the FOSS licenses subject to this study include conditions on copying, modification and/or distribution of software, each of the licenses permit sale, including other redistribution and/or licensing, of software provided that the license conditions are met. As discussed in Section 4.1.2 (Patent Exhaustion in the US), conditional sale is understood to mean

sale imposing restrictions on resale of the patented product.590 Despite the conditions on modification and distribution of GPL-licensed software included in the GPLv2§§1-2, it is expressly mentioned in the GPLv2 that the said license is designed to make sure

588 _{Quanta v. LGE at 2116 and 2122.}

589 _{XimpleWare v. Versata Order Granting-In-Part Defendants' Motions to Dismiss. No. 5:13-cv-05161-} SI-PSG (N.D. Cal. Nov 25, 2014) at 11.

that the licensee has the freedom to distribute copies of free software, and to charge for such distribution.591 Further, additional restrictions, including any attempt to restrict transfer of software, are expressly prohibited under the GPLv2§4. Accordingly, the GPL license does not restrict the right to transfer software. Therefore, it may be argued that FOSS licensor contributing and/or redistributing software under the terms of the GPLv2 provides the software with licensees based on an unconditional sale from patent perspective. Former FSF Counsel has noted, in connection with an analysis on implied patent license under the GPLv2, that the elements of implied license found in Hewlett- Packard v. Repeat-O-Type592, i.e. "seller" "sells" "without restriction" are also present in licensing of software under the GPLv2, thus arguably allowing an unconditional sale of a copy of the GPLv2 licensed program, triggering exhaustion of patent rights in the said copy.593

Further, CAFC has held that the requirements regarding attribution and transparency of modifications create conditions for protecting the economic rights in the FOSS license, and are thus enforceable conditions under the US Copyright Act. The court also reminded that under Californian law, the words "provided that" usually denote a condition. The court distinguished independent contractual covenants from conditions of a copyright license, holding that mere covenants do not limit the scope of the license, whereas breach of conditions may result in copyright infringement.594 _{Further, while}

FOSS licensing may not be deemed unconditional copyright license under the above analysis, it must be borne in mind that, in essence, those restrictions are conditions on

grant of the express copyright license. However, if emphasis is put on the fact that the

reward of the patent holder rests on the consideration received by the FOSS licensor based on FOSS licensee's compliance with the license terms (i.e. copyright conditions), such as attribution and code contributions, then the relation between exhaustion of patents and the license conditions is closer, and may compel the conclusion that FOSS

591 _{Preamble of the GPLv2.}

592 _{Hewlett-Packard Co. v. Repeat-O-Type Stencil Manufacturing Corp., 123 F.3d 1445 (Fed. Cir. 1997),}

cert. denied, 523 U.S. 1022 (1988). (Hewlett-Packard v. Repeat-O-Type)

593 _{Ravicher 2005.}

license conditions are conditions for not only the copyright grant, but specific reward, and bargained for consideration for the consummation of rights in the respective patents embodied by the FOSS program in general. However, if the license conditions of the FOSS licenses subject to this study are met, there are no (additional) conditions imposing restrictions on resale of the copy of the FOSS program from patent perspective. Namely, the instrument governing first sale of the patented article may include general obligations such as the obligation to pay the sales price of the patented article as a condition for transfer of ownership in the sold article as well as restrictions

on resale of the patented article. If such general obligations are met, they do not render

the sale conditional, i.e. restrict resale of the patented article and preclude exhaustion of patent rights in sold articles. As discussed in Section 3.1.2 (Acceptance of License vs. Conclusion of Contract), consideration is one element of a valid contract under the US laws. Without such element, an (ordinary) contract concerning (first) sale of a patented article would not be valid in the US, while consideration alone does not render the sale conditional. Perhaps the same analogy could be drawn also in context of FOSS: compliance with copyright conditions of the FOSS license forms the bargained for consideration between the FOSS licensor and the FOSS licensee(s): If the copyright conditions are met, release of a copy of a FOSS program under a FOSS license may amount to an unconditional sale from the perspective of patent exhaustion, and may thus trigger exhaustion of patent rights embodied by the sold copy of the FOSS program. This could apply irrespective of whether the patent holder is a contributor or a mere distributor of FOSS: in both cases it benefits from the downstream licensees' compliance with the license terms of the respective FOSS license.

Finally, it is worth reminding that SCOTUS held in Quanta v. LGE that since the respective license agreement concerning sale of patented products did not impose restrictions on resale, the sale was unconditional despite that a separate master agreement did require the buyer to give notice to its customers that the seller's license does not extend to customer's own combinations. However, the Master Agreement expressly provided that breach of the Master Agreement would not amount to breach of

the License Agreement.595 Therefore, the contractual structure governing the sale may have an essential impact on whether or not the patent exhaustion doctrine actually applies to sale of FOSS in each given case.596 This should, however, not change the above analysis of patent exhaustion in FOSS context, because if the copyright conditions are met, the FOSS licensee is free to resell the copy of the FOSS program.