Jacobsen v. Katzer Validates Open Source Licenses
Decided just the other day, the Court in Jacobsen v. Katzer, 535 F.3d 1373 (Fed. Cir. 2008) tested an open source copyright license for the first time and validated its legitimacy.
Overview
Jacobsen v. Katzer started in the United States District Court for the Northern District of California where when the copyright holder and Plaintiff filed an action against the Defendant for alleged infringement of computer programming code the Plaintiff had written, and for summary judgment that Plaintiff's programming code did not violate patents Defendant had received after the code had been written.i
The crux of the dilemma in Jacobsen v. Katzer was whether open source licenses like the GNU General Public License (the “GPL”) and the Artistic License give away so much that they destroy an author's copyright protection.ii, iii The Federal Circuit Court held that they do not. The case is interesting both because there are so few cases about open source licensing and because if it had gone the other way it would have invalidated much that open source licenses exist to accomplish. It is also of note that the case was essentially a copyright case created in part from patent law and decided in part using contract law.
Facts
The dispute at the center of Jacobsen involved a set of computer software tools used for controlling model railroad systems, called the Java Model Railroad Interface (“JMRI”) .iv JMRI is written and maintained by a group of developers, who hold the copyrights to the source code and who offer the software for free under the GPL 2.0 (though it is important to note that the dispute here centered around a version of the JMRI that was offered under the Artistic License, rather than under the GPL). Matt Katzer (“Katzer”) was issued a patent for a “Model train control system,” which published on December 7th, 2004. Shortly after the patent issued Katzer sent one of the JMRI developers, Robert Jacobsen (“Jacobsen”), bills demanding in excess of $200,000 in royalties.v
After he received the bills, Jacobsen commenced an action against Katzer in the Northern District of California.vi Jacobsen's complaint sought (among other things) a preliminary injunction to block Katzer from infringing the copyrighted JMRI material.
District Court Decision and Reasoning
A plaintiff is entitled to a preliminary injunction when it can demonstrate either: (1) probable success on the merits and the possibility of irreparable injury, or (2) the existence of serious questions going to the merits and a balance of hardships sharply in plaintiff's favor.vii Under federal copyright law, a plaintiff who demonstrates a likelihood of success on the merits of a copyright claim is entitled to a presumption of irreparable harm.viii The District Court denied Jacobsen's motion for a preliminary injunction, holding that the broad scope of the rights afforded by the GPL's language created a non-exclusive license to use, distribute and copy the JMRI application. In effect, the Court held that Katzer could not have breached Jacobsen's copyright because he already had a license to use the material. Consequently, the Court reasoned, any infringement on Katzer's part amounted to breach of an existing license contract and not to a copyright violation.ix Since the proper claim, the Court reasoned, was a claim for breach of contract and not for copyright infringement, Jacobsen had not met the burden of showing either probable success on the merits or the existence of serious questions going to the merits. the Court denied Jacobsen's motion for preliminary injunction and Jacobsen appealed to the United States Court of Appeals for the Federal Circuit.
Court of Appeals Decision
The question facing the Court of Appeals was whether a copyright holder can dedicate certain work to free public use and still enforce a copyright license to control the future distribution and modification of that work. Katzer argued that since Jacobsen did not use his copyright to reserve any economic rights for himself Jacobsen was essentially trying to enforce moral rights over his work , which were outside the bounds of copyright protection.x Without economic protection, Katzer argued, Jacobsen had effectively created a non-exclusive license and any limiting language constituted limitations in contract and not limitations in the scope of the copyright license. Jacobsen argued that the limitations provided for in the GPL constituted limitations in the scope of the copyright license, and that each individual in compliance with these limitations created an exclusive license to use and distribute Jacobsen's copyrighted work, while anyone not in compliance would have no license and would be infringing on the copyright.
The Court of Appeals reiterated that a copyright owner has the right to control the modification and distribution of his copyrighted material and that licenses are designed to support that right, regardless of the existence of money damages. the Court focused on the language of the GPL that grants rights “provided that” the user complies with the limitations. The “provided that” language typically denotes a condition under California contract law and here the Court found that the limitations in the GPL were conditions to the grant of the license. the Court also held it was inconsequential whether those conditions reserved economic or non-economic rights for the copyright holder. the Court determined that the conditions created a limited copyright license and that Katzer's actions were outside the scope of that license. Having determined that the terms of the license were enforceable copyright conditions, the Court vacated the District Court's decision and remanded so that the District Court could determine whether Jacobsen demonstrated the necessary elements to support a preliminary injunction.
Conclusion
In the end the Courts decided that open source licenses do not give away so much that they constitute a blanket license for anyone to use the author's work. the Courts determined that the open source terms grant a non-exclusive license to each individual user of the author's works, and that if that user runs afoul of the limiting language of the license then he or she has not merely breached a contract with the author, but rather has violated the author's copyright. Jacobsen constitutes a huge win for the open source community, essentially validating exactly what the community is trying to accomplish with open source licenses and offering the maximum protection to authors who choose to publish their works under those licenses.
i Jacobsen v. Katzer, 535 F.3d 1373 (Fed. Cir. 2008).
ii More information about the GPL can be found here: http://www.gnu.org/copyleft/gpl.html .
iii Information on the Artistic License can be found here: http://www.opensource.org/licenses/artistic-license.php.
iv The homepage for the JMRI project can be found at: http://jmri.sourceforge.net .
v United States Patent 6827023, abstract: “A system which operates a digitally controlled model railroad transmitting a first command from a first client program to a resident external controlling interface through a first communications transport. A second command is transmitted from a second client program to the resident external controlling interface through a second communications transport. The first command and the second command are received by the resident external controlling interface which queues the first and second commands. The resident external controlling interface sends third and fourth commands representative of the first and second commands, respectively, to a digital command station for execution on the dig(e.d.itally controlled model railroad.”
vi Jacobsen's complaint can be found here: http://jmri.sourceforge.net/k/docket/1.pdf .
vii Jacobsen v. Katzer, 2007 WL 2358628 (N.D.Cal. 2007) (citing GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1204-05 (9th Cir. 2000)).
viii Id. (citing Sun Microsystems, Inc. v. Microsoft Corp., 188 F.3d 1115, 119 (9th Cir. 1999)).
ix the Court focused on language in the GPL that explicitly grants members of the public the right to use, modify and distribute the material in any way, and found that the limiting language of the GPL (the Court cited only the GPL's requirement that the user insert a notice of attribution) constituted mere covenants to be included in the license contract, rather than prerequisites to the license itself.
x Moral rights exist separate from economic rights and normally include the right of attribution, the right to have work published anonymously, and the right to the integrity of the work (the right to protect the work from being distorted or destroyed). In many countries in Europe an author retains moral rights over his work even if he has sold the particular piece of work to someone else. As an example, if an artist in a moral rights country sells a painting, that artist can force the buyer and all subsequent owners to attribute the work to him or to not attribute the work to him as he desires. The original artist may also block subsequent owners from altering or destroying the painting. Moral rights are not generally recognized in the United States, except in the case of certain works of visual art under limited circumstances (see the Visual Rights Act of 1990 and subsequent interpreting decisions).
