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.

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: 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. 

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. 


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