Legal issues continue to critical to the successful development and use of open source. And these issues are becoming more important with the increase in open source litigation http://lawandlifesiliconvalley.com/blog/?p=134. To assist the community to understand these issues, Black Duck Software has organized a series of webinars on legal topics. http://www.blackducksoftware.com/files/legal-webinar-series.html. Black Duck has selected Karen Copenhaver of Choate Hall & Stewart and I will be providing the seminars. Karen is the former General Counsel of Black Duck Software and counsel to the Linux Foundation, among others open source companies. She is one of the most thoughtful open source lawyers that I know and has been a leader on many legal issues for the community, such as the Jacobsen amicus brief and the ALI ABA proposals. We have the scheduled the following topics:
- Introduction to Open Source Software Licenses– Wednesday, January 28th, 11:30am ET
- Understanding the Top 10 Open Source Licenses- Wednesday, February 11th, 2pm ET
- Developing in a Hybrid Open Source-Proprietary World - March
- Best Practices in Managing Open Source - April
- Open Source Due Diligence in M&A and Financing - May
- Insights and Lessons from Open Source Case Law - June
And the price is right: free! We hope that you can join us.
The District Court in San Francisco in the Jacobsen v Katzner case denied Jacobsen a preliminary injunction (as well as clarifying the scope of some of the claims) in its decision issued yesterday (See the decision here: http://jmri.sourceforge.net/k/docket/284.pdf). This decision is very disappointing for the open source community. The decision by the Court of Appeals for the Federal Circuit (”CAFC”) last year was a great victory for open source licensors. http://lawandlifesiliconvalley.com/blog/?p=64
The District Court drew on a very recent Supreme Court decision which required a higher standard of proof of damages for the grant of a preliminary injunction: Jacobsen must prove that he is “likely to succeed on the merits, that he is likely to suffer irreparable harm in the absence of preliminary relief, that the balance of equities tips in his favor and that an injunction is in the public interest”. The Court then noted that Jacobsen had made no showing that he had actually suffered any of these potential harms and that Jacobsen had “failed to proffer any evidence of any specific and actual harm suffered as a result of the alleged copyright infringement and he has failed to demonstrate that there is any continuing or ongoing conduct that indicates future harm is imminent.” The important details of the Court’s concerns are found in footnote 3 which should be read carefully by lawyers and licensing professionals. Without reviewing the actual evidence presented, it is difficult to assess the Court’s decision. However, it is clear that the standard for injunctive relief is higher than it has been in the past.
Another important part of the decision is the dismissal of the breach of contract claim for failure to state a cause of action. This type of dismissal is unusual because the Federal courts have a relatively low standard for pleading. The Court noted that as currently drafted the alleged damages do not arise from the breach of the Artistic License. In addition, the Court notes that, as drafted, the breach of contract claim overlaps with the copyright infringement claim and is preempted by copyright law. The Court granted leave to amend and this claim is likely to revised to meet these requirements.
The Court did permit Jacobsen’s claim under the Digital Millenium Copyright Act to proceed forward for the deletion of “Copyright Management Information.” Copyright Management Information includes:
“(1) The title and other information identifying the work, including the information set forth on a notice of copyright.
(2) The name of, and other identifying information about, the author of a work.
(3) The name of, and other identifying information about, the copyright owner of the work, including the information set forth in a notice of copyright.
(4) With the exception of public performances of works by radio and television broadcast stations, the name of, and other identifying information about, a performer whose performance is fixed in a work other than an audiovisual work.”
These claims may be particularly useful for open source licensors because of the importance of attribution to many software developers. This decision is disappointing and we will need to continue to moniter the case.
On August 13, the Court of Appeals for the Federal Circuit (CAFC) issued its decision in the Jacobsen v. Katzer case.
http://www.cafc.uscourts.gov/opinions/08-1001.pdf
This case was the first real test of the remedies for breach of open source licenses in US courts (for more background, see http://lawandlifesiliconvalley.blogspot.com/2007/08/new-open-source-legal-decision-jacobsen.html). Unfortunately, the District Court decision was wrong and wrong in a way that could have been a disaster for open source community. The District Court found that the requirements in the Artistic License for notice were merely a contractual covenant rather than a condition on the scope of the license (the courts sometimes use the word “restriction” on the scope of the license and “condition” at other times, but they have the same meaning). Consequently, under the District Court’s analysis, Katzer’s actions were not copyright infringement. Thus, Jacobsen was limited to the traditional remedy for breach of contract, monetary damages, rather than the copyright remedy of injunctive relief (injunctive relief means that the court will order Katzer to comply with the terms of the contract).
The CAFC reversed the District Court’s decision and its reasoning is very helpful for the open source community. The court found that the limitations in the Artistic License were “conditions” on the scope of the license and, thus, Katzer was liable for copyright infringement (as well as breach of contract). The CAFC noted that the Artistic License imposed its obligations through the use of the words “provided that” which is generally viewed as imposing a condition. Although the reasoning is limited to the Artistic License and the interpretation of each open source license will depend on the wording of its provisions, this decision is a welcome change to the District Court decision. The case has been remanded for the District Court to determine if the other criteria for injunctive relief have been met, but the CAFC’s decision strongly suggests that they have been met.
The open source community should thank the lawyers who worked hard and on a pro bono basis (i.e. free) to achieve this victory. Any such list is bound to be incomplete and I apologize in advance for anyone that I have missed, but I think that the major contributors were: Victoria Hall (Jacobsen’s counsel), Chris Ridder and Anthony Falzone (Creative Commons counsel, authors of the amici brief), Karen Copenhaver (Choate Hall, counsel for the Linux Foundation who assisted on the Creative Commons amici brief), Allison Randal and Roberta Cairney (counsel for Perl Foundation who assisted on the Creative Commons amici brief), Larry Rosen (Rosenlaw & Einschlag, who assisted on the Creative Commons amici brief), Scott Peterson (HP, member of OSI’s Legal Advisory Council who assisted on the Creative Commons amici brief), David Gross (DLA Piper, counsel for OSI who assisted on the Creative Commons amici brief) and Steve Chiari (DLA Piper, counsel for OSI who assisted on the Creative Commons amici brief).
One of the frustrations of lawyers serving the open source industry is that they have few cases which interpret open source licenses. As Eben Moglen has pointed out, such cases are few because licensees need the license be in effect to avoid copyright infringement. However, with the increasing use of open source software, many lawyers believe that issues such as the scope of the license are likely to come before courts. The first example of these disputes arose in a decision published on August 17, 2007 in San Francisco regarding the Artistic License. Unfortunately, this case was wrongly decided and if allowed to stand may deprive open source licensors of the ability to get a court order (an injunction) to stop violation of the terms of their license, an important remedy for breach of such licenses.
Although you would expect that the first of these cases would focus on one of the wide range of commercial software being made available under open source licenses and probably deal with the most widely used license, the GPL. You would be wrong. The first case involves model railroad software and the rarely used Artistic License. The facts of the case are complicated, but can be gleaned from the pleadings at
http://jmri.sourceforge.net/k/docket/index.html (the decision is available there too). The plaintiff alleged a number of causes of action, but the most important was the alleged breach of the Artistic License (and copyright infringement for acting beyond the scope of the license) due to the removal of all of the original copyright notices to the original authors and the substitution of Katzen’s company’s name.
The decision makes two important points: (1) the Artistic License is a contract and (2) the failure to include the copyright notices was not a “restriction” on the scope of the license. The first point is important because the Free Software Foundation and some lawyers have taken the position that open source licenses are not contracts. They have good reasons for wishing to avoid some contract formalities, but this position has complicated discussions about the enforceability and remedies for open source licenses. This decision does not settle the issue for the GPL because it does not apply to the GPL and it is only a District Court decision, (lawyers really prefer to have an appellate decision, such as from the Ninth Circuit or the Supreme Court) but it does suggest how courts would approach the issue.
The second point is very important because it deals with remedies. Generally, the remedy for contract violations under US law is damages, not “injunctive relief” (which means that the court order a party to cease their violation). On the other hand, copyright infringement generally includes a presumption that injunctive relief is appropriate. Thus, the question of whether the violation of a license is a contract violiation or copyright infringement (it can be both) is very important, because licensors would prefer to obtain an injunction prohibiting the breach of the license. The question turns on a nuanced legal issue of whether the term in the license is a “restriction on the scope” of the license or a covenant. In the first case, the failure to comply with the provision means that the licensee is outside the scope of the license and thus is a copyright infringer (as well as liable for breach of the contract). On the other hand, if the term is merely a covenant, then the failure to comply with it is a breach of contract. The most celebrated case dealing with this issue involved the Java license between Sun and Microsoft in which the court found that the obligation on Microsoft to meet the Java compatability tests was a covenant, not a restriction on the scope of the license and the court denied Sun an injunction on those grounds (Sun got an injunction for unfair competition).
However, in this case, the court found that the condition to include a proper notice was not a restriction on the scope of the license and, thus, Katzen was not liable for copyright infringement. The court then denied the injunction. The court did not provide an analysis of why it reached this conclusion. I believe that this decision is simply wrong. The use of the term “condition” in the Artistic License should mean that the terms imposed are restrictions on the scope of the license. In fact, the judge in the Sun case even noted that restrictions are provisions which use language such as “subject to” or “conditional”. This decision, if upheld, will remove an important (and expected) remedy from open source licensors. Just to be clear, the decision at present deals only with the Artistic License and the provisions dealing with this issue in other licenses may be interpreted differently. However, the decision is unfortunate and I recommend that the open source community support Jacobsen in having this decision reconsidered. Thanks to Roberta Cairney for bringing this decision to my attention; she has been in the forefront of many important copyright issues.