Groklaw, via Slashdot, reports:

You know how in almost every FUD article about the GPL, they always say that the GPL has never been tested in a US court?

That isn’t actually true. There have been cases where it played a role and the judges took it seriously even if they didn’t directly rule on it. Now there is a case in Michigan, which just settled, where the GPL not only stood its ground, it came off victorious, and this time it was very much a part of the case. I had a chance to interview the attorney that represented the GPL side, Eric Grimm.

The case involved software written in part by Drew Technologies, Inc., to which others contributed, in reliance upon the GPL. DrewTech, an engineering firm in Michigan, develops custom vehicle communications solutions for the automobile industry. DrewTech released the software at issue on SourceForge, under the
GNU General Public License (”GPL”).

I never thought I’d find cars fascinating. But this case changed my mind. It’s a struggle over ownership of software written and released under the GPL but later claimed as a copyrighted work by a publisher of standards for the automotive industry, the Society of Automotive Engineers. But on a deeper level, it addresses a new issue. With cars now being computerized, can manufacturers assert copyright and trade secret rights over software? Over standards? Before you answer, did you know that there is proposed legislation, the Motor Vehicle Owner’s Right to Repair Act?

You can read it and about it here on the Automotive Aftermarket Industry Association’s web site. Their overview:

The Issue: Modern cars and light trucks contain advanced technology that monitors or controls virtually every function of the vehicle including: brakes, steering, air bags, fuel delivery, ignition, lubrication, theft prevention, emission controls and in some cases, tire pressure. Car owners and independent shops must have full access to the information and tools necessary to accurately diagnose, repair, or re-program these systems. This information and equipment is necessary to ensure vehicle safety, performance, and environmental compliance. Vehicle manufacturers are making access to such vital information increasingly difficult and costly to obtain for the independent aftermarket and its customers.

Impact on Consumers and the Aftermarket: Without access to critical information and tools, motorists are forced to patronize new car dealerships, which may not be convenient, accessible or otherwise desirable to the car owner. Moreover, the lack of competition and consumer choice will inevitably lead to higher repair prices. Failure to perform necessary maintenance for any reason will result in unsafe and high-polluting vehicles populating the nation’s highways.

Action Needed: The Motor Vehicle Owners Right to Repair Act prevents vehicle manufacturers and others from unfairly restricting access to the information and tools necessary to accurately diagnose, repair, re-program or install automotive replacement parts.

drop. Here’s an editorial on the bill by Automotive Week. DrewTech in one legal document filed in the case put it this way:

“The development of standards (to which everyone must comply) is left to two standards-setting bodies — the ISO and the Society of Automotive Engineers. However, the government regulations promulgated by the EPA specifically make reference to published technical reference documents developed by the SAE and by ISO.

“In other words, in order to know what the rules are, so they can comply with EPA and CARB regulations, manufacturers, tool-makers, parts-makers, and anyone else that deals with emissions controls, must have access to the technical manuals — the drafting of which the EPA and the CARB have delegated to ISO and to the SAE.

“In this sense (because the public and regulated businesses all have the right to know what the rules are, in order to comply with them), the SAE-published technical standard for on-board motor vehicle diagnostic equipment, for emissions controls, is exactly like the building codes at issue in Veeck v. Southern Bldg. Code Cong., Int’l, 293 F.3d 791, 795-97, 802 (5 th Cir. 2002) (en banc) (’”[T]he law,” whether articulated in judicial opinions or legislative acts or [municipal] ordinances, is . . . not amenable to copyright.’ . . . ‘When those [model] codes are enacted into law . . . they become to that extent “the law” . . . and may be reproduced or distributed as “the law” of those jurisdictions.’), cert. denied, No. 02-355 (U.S. June 27, 2003). In order to comply with the requirements of Part 86, of Title 40 of the Code of Federal Regulations, one has to know and comply with the contents of specified SAE “OBD” (on-board dagnostic) standards, which are made (by reference) an actual part of the governmental regulations. E.g. 40 C.F.R. § 86.1806-5(h) (’The OBD system shall provide for standardized access and conform with the following Society of Automotive Engineers (SAE) standards and/or the following International Standards Organization (ISO) standards. The following documents are incorporated by reference.’).

“Since one cannot comply with the law — 40 C.F.R. Part 86 — without reference to the SAE standards incorporated by reference therein, we think it is especially helpful to ask (hypothetically) whether the SAE (or anyone) ever could or should be permitted to attempt to submit the SAE OBD technical reference document to the Patent & Trademark Office, as an application for a patent on a ‘Method to Comply With 40 C.F.R. Part 86,’ and thereby seek to obtain (or obtain) a government-backed monopoly to charge patent royalties to any
person who might, for the next 20 years, attempt to build any OBD-compatible equipment, or otherwise seek to comply with the EPA- and CARB-mandated requirements of law.

“Although this is a copyright case (meaning that – in contrast to a patent’s 20-year monopoly on specific kinds of novel and useful ideas – any of the ideas embodied in the SAE’s document cannot be monopolized via copyright), we think this thought-exercise is quite helpful. Should anybody (the SAE or anyone else) be permitted to charge royalties for selective access to key information that is necessary and essential to comply with the law?”

> case, on one side, you had a company whose employees helped to write the software (three of them, all in a SAE task force at the time) but on DrewTech’s premises, using their equipment and on company time, with company permission, on the understanding that it would be released under a FOSS license, and it was, under the GPL. On the other side, you had the SAE, the standards body which publishes the standards, which essentially tried to claim copyright on the software and intended to charge DrewTech thousands per year to use the very software DrewTech employees had written and released under the GPL.

The case is Drew Technologies, Inc. v. Society of
Automotive Engineers, Inc., et al., Civil Action No. 03-CV-74535-NGE-PJK
(E.D. Mi. filed Oct. 10, 2003). SAE laid claim to ownership of — wait for it — “ideas, procedures, processes, methods of operation, concepts, principles or discoveries” in SAE’s published technical standards.

The terms of the settlement
1 included SAE paying DrewTech $75,000 (half of which DrewTech contributed back to SAE as a charitable contribution), and SAE stipulated to the following:

” . . . the Society of Automotive Engineers, Inc. [’SAE’] hereby stipulates and agrees that to the extent that computer software only implements any idea(s), procedure(s), process(es), system(s), methods(s) of operation, concept(s), principles(s), discovery or discoveries that is or are described, explained, illustrated, or embodied in any SAE technical standards (including standards set forth in Technical Report J1699-3), then no copyright claim exists to the extent of such implementation of standards in software code, and SAE shall not assert a copyright claim on that basis, and will dismiss its claim of infringement against Drew Technologies, Inc.”

Grimm has represented some clients in previous high-profile cases, particularly domain name cases, including representing Hans Rekestad, the publisher of ClassicVolvo.com, in a dispute with Ford Motor Company, securing a very interesting jurisdiction ruling against actor Kevin Spacey in a California federal court, and also assisting the Electronic Frontier Foundation on a variety of pro bono projects.

You can find all the court filings on Pacer.
I enjoyed reading them very, very much, and I know you will too. I’ve put a selection of them at the end of the interview,
2, for those without Pacer accounts, and if you only have time to read one, I suggest reading the Rule 56(b) and (d) Motion and Supporting Memorandum,3 as it is the clearest in giving you the big picture. I think it also helps one to understand why SCO is relying on contracts, and not primarily copyright law.

Also, it mentions Groklaw. All your hard work transcribing Eben Moglen’s speech at Harvard was not for nothing. It appears on page 11 of the memorandum in support. This is the second time that I know of that Groklaw has been mentioned in a legal document. Groklaw member cymraeg
just sent me a scan of a page in a textbook, “The
Complete Guide to Linux System Administration”, by Nicholas Wells, now being used at his technical college, that also references Groklaw on page 7 of the chapter, A Brief History. What a feeling *that* is.

Grimm tells me that the final “terms sheet” that resolved the dispute was actually prepared using the OpenOffice word processor, and was printed using CUPS, running on top of SuSE Linux 9.1, at Grimm’s law firm in Michigan. “It is fair to say that the GPL prevailed in ways both obvious and subtle in this settlement,” says Grimm.

As I say, I had an opportunity to ask Grimm a few questions. Here are his answers:

*************************

PJ: What was the dispute specifically about, Eric?

Eric Grimm: The dispute arose a few months after DrewTech released the software on
SourceForge. The SAE claimed that the software was an unauthorized
“derivative work” of an in-progress technical standard of the SAE, called
J1699-3. According to the SAE, the software belonged exclusively to the
SAE, and not to DrewTech.

PJ: Why?

Eric: The SAE viewed the software as a profit
opportunity, and wanted to charge “subscription” fees to all users of the
software. DrewTech responded with a DMCA “takedown notice,” accusing the
SAE of contributory infringement by failing to “take down” copies of the
software that were published on an SAE Website. When the SAE failed to
respond to the DMCA “takedown notice,” DrewTech filed suit, alleging (among
other things) violations of the GPL, violations of the DMCA, copyright
infringement and contributory infringement. The SAE counterclaimed, seeking
a declaratory judgment (i.e., a declaration from the Court that the SAE and
not DrewTech owned the software), and accusing DrewTech of state-law
conversion of the SAE’s “intellectual property.”

Much like Judge Kimball in the SCO v. IBM case, when
the DrewTech case came before U.S District Judge Nancy Edmunds (who has a reputation
in Michigan for stellar legal acumen), the Judge was not inclined to issue a
substantive ruling right out of the box.

Instead, Judge Edmunds instructed the parties to take more discovery, and to
come back to her with the summary judgment arguments that DrewTech had
filed — but after some formal discovery had been conducted. We asked Judge Edmunds to reconsider, and to grant summary judgment on an expedited basis, but she declined to do so. She was adamant. She told us to take discovery, and made it clear that she really meant it. Thus, the only
real ruling that has been made in the case is a discovery ruling by
Magistrate Judge Paul Komives, permitting DrewTech to take the deposition of
a third-party witness. The briefs addressing the issues are available to
the public.

PJ: What are the terms of the settlement and what does it mean for the GPL?

Eric: In the settlement, the SAE agrees to drop its claims (and therefore to give
up any contention that it owns the software). This paves the way for the
software to remain permanently open under the terms of the GPL. The SAE has
also agreed to pay DrewTech a substantial sum of money (half of which
DrewTech is contributing back to the SAE as a charitable donation). And,
finally, on a going-forward basis, the SAE has stipulated and agreed to obey
the long-recognized “idea-expression” doctrine, recognized in copyright law,
and not to claim ownership of software that merely implements “ideas,
procedures, processes, methods of operation, concepts, principles, or
discoveries,” that may be described, explained, illustrated, or embodied, in
any SAE published technical standards.

What this means, as a practical matter, is that computer software — such as
the software contained in the engine of every motor vehicle in the United
States, or the software that is used in handheld “scan tool” devices to
communicate with on-board vehicle computers — which software happens to
implement an SAE published technical standard — should not trigger a
“derivative work” claim by the SAE, purporting to assert the right to charge
arbitrary copyright royalties for every single copy of such computer
software.

PJ: So this was a victory for the GPL?

Eric: Yes. I’d say SAE surrendered to the GPL.
The general terms of settlement have been
made a matter of public record (Doc. Ent. 39), in the form of a terms sheet, signed by both sides and submitted by
DrewTech to the Court, although final dismissal papers have not yet been
submitted.

PJ: How did the settlement come about, and what about the methods, ideas, procedures angle?

Eric: If you remember, Judge Kimball denied IBM’s summary
judgment motions but said that the motion could be re-presented after
discovery was completed. Judge Edmunds took essentially the same approach
in the DrewTech case, and declined to rule in our favor until after
discovery was completed.

Discovery in the DrewTech case was in progress when the parties got
together, and with the help of a neutral mediator, resolved their
differences.

As far as the idea/expression dichotomy is concerned, copyright law is quite
clear that ideas, methods, concepts, etc., cannot be copyrighted. Copyright
only protects original works of expression that are fixed in a tangible
medium — in other words, copyright protects certain specified aspects of
the particular expression embodied in a work, but not any ideas or methods
that happen to be described in the work.

The origin of the doctrine is in a Supreme Court decision from the 1870s –
Baker v. Selden, 101 U.S. 99 (1879). In that case, an author published a
book (called “Selden’s Condensed Ledger, or Book-Keeping Simplified”), that
described a particular method of accounting to be used in businesses. Some
businesses implemented that particular approach to accounting, without
purchasing copies of the book or paying royalties. Author sued for
copyright infringement. Supreme Court rejected the claim, because the ideas
embodied in the work were considered to be outside the scope of copyright. [PJ Editor note: The case is here. There is an article about this case on Groklaw, and one on “What Can’t You Copyright?” that might be of interest.]

The doctrine is now enshrined in 17 U.S.C. 102(b). The relevant section
says:

(b) 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.

PJ: Why did you donate back half of what you won under the settlement?

Eric: The reason for donation of half back is because the purpose of the
lawsuit
always has been to benefit and improve the SAE. It may have been
necessary
to drag them kicking and screaming up the learning curve, but my
client has
done so precisely because the organization needed the benefit of the
learning experience.

The whole point is that DrewTech has been very generous to the SAE by
donating 1/2 of the money back as a charitable contribution, to
symbolize
the educational benefit conferred on the organization (in particular,
organization staff — as distinct from the Membership, who mostly tend
to
“get” the GPL) through the mechanism of the lawsuit as a whole.

Sunday, March 20 2005 @ 10:10 AM EST