Underexposed

Programmers behind Busybox, a collection of utilities governed by the General Public License (GPL), have settled a second lawsuit that argued a company violated the widely used free and open-source license.

This time the company that settled is Xterasys, which makes networking products, said the Software Freedom Law Center, which represented the Busybox coders.

"As a result of the settlement, Xterasys has agreed to cease all binary distribution of BusyBox until SFLC confirms it has published complete corresponding source code on its Web site. Once SFLC verifies that the complete source code is available, Xterasys' full rights to distribute BusyBox under the GPL will be reinstated," the center said on Monday. In addition, Xterasys agreed to appoint an open-source compliance officer, notify those who may have received the Busybox software from Xterasys of their GPL-granted rights, and pay the Busybox programers an undisclosed amount, SFLC said.

The Busybox programmers had sued Xterasys and High-Gain Antennas in November, not long after suing Monsoon Multimedia and not long before suing Verizon Communications. The moves collectively show that at least some are willing to be more legally assertive about GPL enforcement than in the past.

Monsoon settled its GPL lawsuit in October.

Programmers behind the BusyBox collection of open-source utilities have settled a September lawsuit that contended Monsoon Multimedia's use of the software violated the General Public License (GPL).

Under the terms of the settlement, Monsoon may ship its Hava digital TV products using the BusyBox software without objection from BusyBox, according to a joint announcement Tuesday from Monsoon and the Software Freedom Law Center, which represents BusyBox.

In addition, Monsoon has agreed to appoint an open-source compliance officer to monitor the issue, to publish on its Web site the source code for the version of BusyBox it uses, to undertake "substantial efforts to notify previous recipients of BusyBox from Monsoon Multimedia of their rights to the software under the GPL, and to pay an undisclosed amount of money to BusyBox.

The Monsoon-BusyBox suit signaled a new assertiveness on the part of open-source programmers, who until now have generally shown little desire to take license compliance matters to court.

"We are happy to put this behind us and move forward," said Graham Radstone, Monsoon Multimedia chairman and chief operating officer, in a statement.

"We are confident that Monsoon Multimedia will be upstanding members of the open-source community, and we wish them the absolute best of luck with their business," added Erik Andersen, a BusyBox developer named as a plaintiff in the lawsuit.

A month ago, Network Appliance sued Sun Microsystems, alleging the server and software company's ZFS file system infringes seven NetApp patents. Sun on Thursday fired back with a suit that claims NetApp violates 12 of Sun's.

Sun's suit also argues that NetApp's patents are invalid and that it doesn't infringe them anyway. And it requests an injunction prohibiting the company from selling any products that infringe Sun's patents.

Patent suits are often expensive and acrimonious proceedings, and they're particularly unpleasant when fought among Silicon Valley rivals who often share mutual customers and sometimes even are business partners. The Sun-NetApp case is particularly interesting in that it's being fought in the blogosphere as well as U.S. District Court's Eastern Texas district: Sun Chief Executive Jonathan Schwartz and NetApp founder Dave Hitz have been taking potshots at each other and expressing disappointment at the rival's needlessly litigious behavior as the case proceeded.

For a reporter such as myself who's heard "no comment" in response to countless queries about legal actions, these blogs add significant flavor to otherwise dry court proceedings. But being vocal about legal actions also can backfire, as in the case of The SCO Group's CEO, Darl McBride, whose very public accusations went over poorly with judges overseeing his case.

Sun legal counsel Mike Dillon on Thursday added his take for the countersuit, painting NetApp as a company that can't deal with the shift to open-source software. "But, it's clear that NetApp views the open source world much differently than Sun. We've made the transition--they can't contemplate it," Dillon said.

Hitz, meanwhile, posted his own response to the suit, publishing a note he sent to NetApp employees that assures them they still have jobs and assuring customers they still can buy NetApp products.

"Even for the RIM/Blackberry case, which is the closest I can think of to a big company being shut down, it took years and years to get to that point, and was still averted in the end. I think it's safe to say the odds of Sun fulfilling their threat are near zero," Hitz said.

One thing Hitz said he finds "frustrating is the way Jonathan wraps himself in the open-source flag. We aren't against open source, and we aren't even against non-commercial use of ZFS. The number one rule of open source is that you should only give away stuff that belongs to you. That is what this suit is about, and everything else is just fluff."

A day after Sun Microsystems Chief Executive Jonathan Schwartz said his company will sue to have Network Appliances' file-server products removed from the market, NetApp's founder Dave Hitz brushed off the threat and took issue with Schwartz's open-source reasoning.

"This sounds like Sun's broad threats when they sued Azul, but in the end, Sun didn't put Azul out of business or even stop them from shipping products. I'm quite confident that two years from now--or however long it takes this suit to reach court--NetApp will be doing just fine," Hitz said in a blog posting Thursday.

In a September lawsuit, NetApp accused Sun of infringing seven patents. Specifically, NetApp believes Sun's ZFS file system infringes on patents related to NetApp's rival WAFL software. Sun has released ZFS as open-source software, and Apple is among those using it.

According to Schwartz, NetApp wants Sun to "retract (ZFS) from the free software community," but he said that's impossible. Hitz sees things differently.

"Jonathan seems to be arguing that once something has been put into open source, it is beyond the law," Hitz said. "Jonathan's claim that 'you cannot unfree what is free' sets a very dangerous precedent. It says that you can steal anything, as long as you open source it afterwards. That can't be right!...One of the most important rules of open source is that you must only give away things that belong to you."

Updated at 2:31 p.m. PDT: Sun Microsystems plans to countersue Network Appliance later this week, Chief Executive Jonathan Schwartz said Wednesday, a suit that will include a request to remove the company's products from the market.

Schwartz said on his blog that he has "no interest whatever in suing them" and therefore "reached out" to Chief Executive Dan Warmenhoven. But, he said, NetApp's demands--that Sun "retract" its ZFS file system from open-source community and restrict its use to computing and not storage devices--can't be met.

Consequently, "Later this week, we're going to use our defensive portfolio to respond to Network Appliance, filing a comprehensive reciprocal suit. As a part of this suit, we are requesting a permanent injunction to remove all of their filer products from the marketplace, and are examining the original NFS license--on which Network Appliance was started," Schwartz said.

NetApp wasn't immediately available for comment. But don't be surprised if there is some: founder Dave Hitz has been outspoken about the lawsuit on his blog.

Sun spokeswoman Dana Lengkeek said Sun has a Friday deadline to respond to NetApp's suit, which accused Sun of violating seven patents.

Since ZFS is part of Sun's open-source Solaris work, there are open-source ramifications to the case. And Schwartz is trying to use the connection to curry favor with the vocal and increasingly influential collaborative programming movement.

"We will be going after sizable monetary damages. And I am committing that Sun will donate half of those proceeds to the leading institutions promoting free software and patent reform," Schwartz said, pointing specifically to the Software Freedom Law Center and the Peer to Patent Project. "Whatever's left over will fuel a venture fund fostering innovation in the free software community."

Open-source software may be copied, modified and redistributed freely. One company interested in ZFS is Apple, which is including ZFS as an option in Leopard, the Mac OS X 10.5 update due Friday.

Apple need not worry about NetApp, Schwartz said.

"Apple is including ZFS in their upcoming Leopard OS X release. This is happening without any payment to Sun," Schwartz said. "Under the license, we've waived all rights to sue them for any of the patents or copyright associated with ZFS. We've let Apple know we will use our patent portfolio to protect them and the Mac ZFS community from NetApp--with or without a commercial relationship to Sun."

Suddenly all those discussions about the discordant ways of open-source software and patent law have become a lot less abstract.

Companies called IP Innovation and Technology Licensing Corporation sued Red Hat and Novell on Tuesday, claiming the top Linux sellers' software products infringe U.S. patent 5,072,412, "User interface with multiple workspaces for sharing display system objects," and two identically named patents. The suit (PDF), in the U.S. District Court in Eastern Texas, seeks damages and a permanent injunction prohibiting any further infringement.

Red Hat spokeswoman Leigh Day said Friday only that the company is aware of the suit and "will review the situation." Novell spokesman Bruce Lowry said the company is assessing the suit and that "it's too early to tell, tactically, whether it makes sense for us and Red Hat to join forces."

But as with another recent case, the Software Freedom Law Center's copyright infringement suit against Monsoon Multimedia, which takes the offensive in enforcing free and open-source programming interests, the ripples will likely travel well beyond this particular case.

"Although I and many attorneys in the open-source industry have long been concerned about patent challenges to open-source companies, this case appears to be the first by patent trolls against an open-source licensor," said Mark Radcliffe, a DLA Piper intellectual property attorney who has long been involved in open-source legal matters, on his blog. IP Innovation is a subsidiary of Acacia Technologies, according to a company filing with the Securities and Exchange Commission.

Acacia has licensed patents to a wide variety of companies, including Dell, Hewlett-Packard, Intel, Samsung, Exxon, J.C. Penney, the Walt Disney Co., Wendy's, Revlon, Orbitz, General Electric and 3M, according to the company. It had revenue of $46.8 million from the third quarter of 2006 through the second quarter of 2007.

Buying a license to a patent is often the quickest way to make such lawsuits go away, and companies often do so because it can be cheaper than a multimillion-dollar, drawn-out suit that occupies many employees' hours. But licensing a patent isn't such a simple matter when it comes to open-source software.

For example, a company that distributes a program such as the Linux kernel under the General Public License (GPL) isn't permitted to do so if it doesn't grant all recipients of the software the rights it has.

And in general, the patent system is somewhat at odds with open-source software in general. The former grants a limited-term monopoly to an inventor, but the latter involves unencumbered sharing of technology.

One obvious aggressor is Microsoft. Chief Executive Steve Ballmer declared in May that Linux and other open-source projects infringe 235 Microsoft patents. And according to a BetaNews transcript of another speech this week in England, Ballmer said more recently, "People (who) use Red Hat, at least with respect to our intellectual property, in a sense have an obligation to eventually to compensate us."

Red Hat offers a warranty in which it promises to replace any code found to infringe others' intellectual property, and both it and Novell offer customers legal protections. They have deeper pockets than most open-source companies, but they are by no means the only distributors of Linux-based products.

Groklaw, a site that monitors open-source legal actions and helped bring the new suit to light, predicted the suit would be a fitting sequel to The SCO Group's long-running but faltering Linux-related cases against IBM, Novell and others. "I think SCO II has arrived," said Groklaw founder Pamela Jones in a posting Thursday evening.

Jones pounced on two Microsoft connections, both also on Acacia's Web site: Brad Brunell joined the company this month as senior vice president after 16 years at Microsoft, including general manager of intellectual property licensing, and Jonathan Taub, who joined in July as vice president after leaving Microsoft as director of strategic alliances for the company's mobile and embedded devices division.

Eastman Kodak has sued Panasonic, claiming the Japanese company infringed four patents relating to digital cameras.

The suit, filed July 25 in U.S. Federal Court in the Eastern District of Texas, targets Panasonic, its Japanese parent company, Matsushita Electric Industrial (MEI), and two Matsushita subsidiaries, Victor Company of Japan (JVC) and JVC Americas.

"Kodak has attempted to resolve the matter with MEI for a number of years. The discussions between the companies have not led to a suitable license agreement, so we have decided to file a complaint in order to protect the investment in technology that we make on behalf of our shareholders, and to protect the interests of other licensees," Kodak said in a statement.

The defendant so far isn't offering its version of events. "Matsushita Electric is aware of the suit but declines to comment," spokesman Jim Reilly said.

Kodak accused Matsushita of infringiung patents No. 5,016,107, "Electronic Still Camera Utilizing Image Compression and Digital Storage" from 1991; No. 5,164,831, "Electronic Still Camera Providing Multi-format Storage of Full and Reduced Resolution Images" from 1992; No. 5,493,335, "Single Sensor Color Camera With User-Selectable Image Record Size" from 1996; and No. 6,292,218, "Electronic Camera for Initiating Capture of Still Images while Previewing Motion Images" from 2001.