Notice

Just a reminder, these posts are not legal advice. This site is the personal blog of Mark Radcliffe and the opinions expressed are those of Mark Radcliffe and not those of his clients, DLA Piper or the clients of DLA Piper.

About Me:

Mark Radcliffe

I have been practicing law in Silicon Valley for over thirty years assisting startups and global companies develop and market innovative products and services. I have participated in multiple business cyles in Silicon Valley from hardware to software to internet to cloud. My projects have included developing the dual licensing business model for open source startup, developing the original domain dispute resolution policy for NSI and assisting Sun in open sourcing the Solaris operating system. Recently, I served on the US Japan Innovation and Entrepreneurship Council (one of ten members) to develop a plan to encourage the innovation in Japan and the United States. I have been working with the same attorneys since 1986 although we have merged with other law firms several times. I am now a partner at DLA Piper, a (relatively) new global law firm formed in 2005 from the merger of three law firms. The firm now has 4200 lawyers in 31 countries and 77 cities. My experience in corporate securities (particularly venture capital) and intellectual property enables me to assist companies structure the financing and intellectual property strategy for developing ane exploiting a new product or service. I and my team work with fifty startups at one time as well as Global Fortune 100. I have been fortunate enough to work with companies in software, cloud computing, semiconductor, health care IT and Web 2.0.

On February 10, 2010, the Linux Foundation and the Open Source Initiative co sponsored their first Legal Strategic Planning Session. I am glad to declare it a success. We had a very diverse group both professionally and geographically, with participants from Europe, Japan and the US.  

We started the day with a discussion by Damien Eastwood (formerly of Sun Microsystems, Inc.) about his experience, both legal and practical, in moving Java and Solaris to open source models. We then had a series of presentations on license due diligence from FSF Europe and Hewlett Packard. We also discussed the increasing problem of license compliance through a constantly changing tool chain and the potential to have a consistent industry wide approach to this “Bill of Materials” problem. Heather Meeker provided an overview of the trademark issues arising in open source licensing.

Simon Crosby from Xen provided an overview of cloud technology which is the latest challenge for the FOSS community. Our luncheon speaker was Marten Mickos, who provided a business perspective on the open source model. Rob Tiller provided an overview of opensource.com. We also had a panel discussion of how best to respond to patent claims in a way which will not create problems during the litigation. Karen Copenhaver and I provided an overview of the status of the ALI Principles of the Law of Software Contracts. We finished up with a wine tasting from Pine Ridge arranged by Andrew Aitken of Olliance Group.

Karen Copenhaver deserves special thanks for conceiving of the opportunity and then organizing the first one (always, the toughest!). Given the number of legal issues for the FOSS community, I am sure that we will need to continue this tradition. if you want to learn more about the discussion, Karen Copenhaver and I will be summarizing it in our Black Duck webinar on Tuesday, February 23 http://www.blackducksoftware.com/files/legal-webinar-series.html.

Red Hat has launched “Opensource.com” as the town square for the “open source” community http://opensource.com/should-be/10/1/welcome-conversation-opensourcecom. It provides for a single location to discuss the legal, social and economic consequences of the open source model. This site comes at an inflection point for the FOSS community: FOSS is now ubiquitous and many of the earlier battles for credibility and acceptance are won. Yet, with those victories, the FOSS community finds itself facing new challenges, such as how to deal with managing the numerous modules of open source in many products in a consistent manner (the so called “Bill of Materials” problem) and the continuing problem of dealing with patents http://opensource.com/law/10/2/looking-out-bilski-software-patents-v-foss. And open source is now being viewed as a model for collaboration beyond software http://opensource.com/business/10/2/what-could-politicians-learn-open-source-way. These discussions cut across wide variety of topics and have been spread out across many sites and blogs.  

Opensource.com provides a forum to discuss these topics in one place and the opportunity to collaborate in the best tradition of the FOSS community. However, the site will only be valuable if it is used by the community. Red Hat has done the community a great favor and provided the platform, but now the community needs to step up and participate in the discussion. Let’s get to it!

As expected, the Jacobsen case has now settled.  The settlement was a complete victory for Jacobsen and is great news for the FOSS community.  The Jacobsen case was very significant for the FOSS community because it was the first case in the US about the enforcement of open source software licenses. http://lawandlifesiliconvalley.com/blog/?p=141. This settlement is important because after a significant victory in the Court of Appeals for the Federal Circuit (“CAFC”) which set a very favorable standard for licensors to get “injunctive relief”, the District Court failed to issue an injunction. This failure to grant an injunction was on appeal, but the result was uncertain because the CAFC imposes a high burden on parties challenging such decisions by district courts (the appeal has dismissed as part of the settlement).

The settlement is a vindication for Jacobsen. The settlement has three important elements (the Settlement Agreement can be found at http://www.docstoc.com/docs/25847971/Jacobsen-Settlement):

1.  Payment of $100,000 to Jacobsen over an eighteen month period.

2.  A very broad injunction prohibiting Katzer from reproducing, modifying or distributing “JMRI Materials” as well as prohibiting Katzer from registering certain trademarks and domain names.   JMRI Materials is very broadly defined to include all types of copyrightable materials relating to the original model railroad software, from software code itself to text to arrangements of data. http://www.docstoc.com/docs/25851030/Jacobsen-Permanent-Injunction

3.  A special procedure to resolve disputes about compliance with the settlement agreement through a private procedure using mediation and arbitration.

The lawsuit is dismissed with prejudice (i.e. the case cannot be refiled by either party). This case is an excellent resolution for the FOSS community and the lawyers for Jacobsen should be congratulated for their hard work and success.