Progress Software Corp. v. MySQL AB was a lawsuit in the United States District Court for the District of Massachusetts between Progress Software Corporation and its subsidiary NuSphere Corporation on one side, and MySQL AB, the developer of the MySQL database, on the other. Progress filed the complaint on 2001-06-18. MySQL AB answered and filed a counterclaim against Progress and NuSphere on 2001-07-11.[2] MySQL was distributed under the GNU General Public License (GPL), and part of the dispute was whether Progress had complied with it.
On 2002-02-28 Judge Patti B. Saris granted MySQL AB a preliminary injunction against Progress’s use of the MySQL trademark. She denied an injunction on the GPL claims, finding a factual dispute over whether NuSphere’s Gemini program was a derivative work of MySQL.[1] The parties settled later in 2002. They filed a stipulation of dismissal with prejudice on 2002-11-12, and the case was terminated on 2002-12-17.[2]
Background
The court’s order sets out the dispute only briefly. MySQL AB moved for an injunction to stop Progress and NuSphere “from, among other things, sublicens-ing or distributing the MySQL program and from using the MySQL® mark”.[1] Its claims had two strands:
- Trademark and contract. The parties had an agreement about the MySQL trademark. MySQL AB claimed it was only an interim agreement, which had ended, and that Progress kept using the mark, and a combined mark, without authority.[1]
- GPL. MySQL AB claimed that Progress’s distribution of MySQL with the Gemini program breached the GPL. The question was whether Gemini was “a derivative or an independent and separate work under GPL ¶ 2”.[1]
The ruling
The court applied the usual four-factor test for a preliminary injunction: likelihood of success, irreparable harm, the balance of harms and the public interest.[1]
Trademark: injunction granted. The court found that MySQL AB was likely to succeed on the trademark part of its contract claim. It had shown “(1) that the agreement between the parties was an interim agreement that terminated after August 2000; and (2) that Progress violated Paragraph 6 of that agreement by using the MySQL trademark after the termination and by using an unauthorized combination trademark”.[1] Continued use of the mark would cause irreparable harm as a matter of law. Pending trial, Progress was barred from:[1]
- promoting or selling products and services using the MySQL mark in any form;
- registering or using domain names containing the mark;
- operating websites using any form of the mark.
Progress could still “state that its product operates with the MySQL program”. It had 45 days to comply, and MySQL AB had to post a USD 25,000 bond.[1]
GPL: injunction denied. On the GPL claims, MySQL AB had shown neither a substantial likelihood of success nor irreparable harm. The experts’ affidavits raised a genuine factual dispute about whether Gemini was a derivative work. The judge wrote that “MySQL seems to have the better argument here, but the matter is one of fair dispute”.[1] She was also “not persuaded based on this record that the release of the Gemini source code in July 2001 didn’t cure the breach”.[1]
Even if MySQL AB were likely to succeed, the court found no irreparable harm while the suit was pending. It relied on a sworn statement that all Gemini source code had been disclosed, and on Progress’s stipulation at the hearing “that the end use license for commercial users will be withdrawn”.[1] Because the MySQL-based product line was “a significant portion of NuSphere’s business”, the balance of harms favoured Progress on continued use of the MySQL program under the GPL. The motion was granted in part and denied in part.[1]
Settlement
The case did not reach trial. Discovery disputes continued into October 2002. On 2002-11-12 all parties filed a stipulation of dismissal with prejudice, and on 2002-11-13 MySQL AB’s counsel wrote to the magistrate judge that the parties had “Finalized and reached a settlement”, in the docket’s wording.[2] On 2002-12-17 the court released the USD 25,000 bond to MySQL AB, and the case was terminated.[2] The settlement terms are not in the public docket.
Significance
The order is short and preliminary. The court did not question that the GPL could be enforced, and it treated the derivative-work question under GPL paragraph 2 as a question of fact for trial.[1] It also separated two kinds of permission. The GPL licences the code. Rights to the MySQL trademark came from a separate, time-limited agreement.[1]
Lessons learned
- Assess derivative-work status before distribution. Whether a proprietary component combined with GPL code is a derivative work was a factual dispute in this case, decided on expert evidence.[1] Software publishers and licensees that redistribute GPL code should document how their components interact with it before they ship.
- Source release may limit, not remove, exposure. The release of the Gemini source code and the withdrawal of a commercial end-user licence helped Progress avoid an injunction, but the court did not decide whether the GPL had been breached.[1]
- Trademark rights are separate from code rights. Progress could keep distributing MySQL under the GPL but could not keep using the MySQL mark after the interim agreement ended.[1] An inventory of open-source use should record any trademark or branding agreements separately from the code licences.
- Commercial terms must fit the open-source licence. At the hearing, Progress stipulated that it would withdraw the commercial end-user licence, and the court relied on that stipulation.[1] When a product bundles GPL code, the end-user terms for the bundle should be reviewed against the GPL.