Burden of Proof

Burden of Proof

Consider first what would happen in a typical licensing dispute under copyright law for a bare license. (Refer to the comparison of bare licenses and contracts in Chapter 2.) A plaintiff will allege that the defendant is a copyright infringer and thus may not exercise any of the exclusive rights of the copyright owner.

1. The plaintiff will have to prove he or she is indeed the copyright owner. Only the copyright owner (or, in the United States, an exclusive li-censee) has standing to sue to enforce the copyright.

2. The plaintiff has the initial burden of demonstrating that the defendant has undertaken one or more of the copyright owner's exclusive rights under the copyright law (e.g., made copies, created derivative works, or distributed). The defendant, as always, can defend him- or herself on this issue (i.e., not everything is a derivative work simply because a plaintiff calls it that; see the discussion of derivative works analysis later in this chapter).

3. The defendant can assert the license as a defense to infringement. In essence, the defendant can admit to making the copy or creating the derivative work, but assert that the license authorizes this action. (If the defendant admits to the infringing acts but denies the existence of the license, of course, the defendant is an infringer.)

4. The plaintiff may then prove that the defendant breached a condition of the license, thus rendering it terminated or revoked . The conditions of the license will be interpreted by the court under local law standards as appropriate for bare licenses.

5. The plaintiff bears the burden of justifying injunctive relief and proving damages.

Notice that in a copyright dispute over a bare license, the plaintiff will almost certainly be the copyright owner. If a li-censee were foolish enough to sue to enforce the terms and conditions of the license, the licensor can simply revoke the bare license, thus ending the dispute. Remember that a bare license in the absence of an interest is revocable.

It may be that bare licenses will be interpreted by the courts under contract law principles, even in the absence of the contract formalities of offer, acceptance, and consideration. After all, major software companies around the world distribute open source software as part of their products; those open source licenses may be technically and economically impossible to revoke. Furthermore, in commercial dealings of any significance worthy of being turned into litigation, there are almost certainly other aspects of offer, acceptance, and consideration that can be invoked by creative lawyers as proof that a contract was formed .

There are some important differences to this scenario if this becomes a contract dispute, where the license has been offered and accepted, and consideration has been paid. Now not only does the licensor have standing to be a plaintiff regardless of whether he or she owns the copyrights and patents, but also the licensee has standing to be a plaintiff to enforce the terms of the license and to prevent it from being revoked. The statutory and case law of contracts (at least in the United States) would guide the court to interpret the license and to determine whether there was breach of contract and, if so, what damages or injunctive relief should be granted.

The remedies of copyright and patent law are fairly broad-brush. The defendant is either an infringer or not, and must either obey the terms of the license or see it revoked. Damages are to be awarded as specified in the relevant copyright or patent statute .

Contract remedies can be more nuanced, however, and they may become very effective for open source license disputes. For example, one of the more interesting remedies available for contracts ”but not for bare licenses ”is "specific perform-ance," by which the party breaching the contract may be ordered by the court to perform. Specific performance is not a remedy for a dispute over a bare license.

At the end of the day, the parties to an infringement dispute in court will often finally resolve it by drafting their own settlement agreement that allows the intellectual property to be used. Even if there was no contractual license initially, that settlement agreement will be a contract and license that is enforceable in court.

How much cheaper it would be to draft a good open source license up front, get the parties to agree to it as a contract, and proceed upon those agreed terms.