Jacobsen v. Katzer: Apppeals Court Rules That The Terms In Artistic License Are Indeed Enforceable Copyright Conditions

TOPIC: open-source software, creative commons license

An apparent victory for Open-Source Software and Creative Commons licenses.

The United States Court of Appeals for the Federal Circuit has vacated a District Court decision in the case of Robert Jacobsen v. Matthew Katzer and Kamind Associates, Inc. (dba KAM Industries) and eventually sent the case back to the District Court (Northern District of California) for further proceedings.

The Appeals Court summarized the case quite simply:

We consider here the ability of a copyright holder to dedicate certain work to free public use and yet enforce an "open source" copyright license to control the future distribution and modification of that work.

Indeed. So what's the problem? Jacobsen originally sued for copyright infringement and moved for a preliminary injunction when Katzer/Kamind used his code without following the conditions Jacobsen provided in the public license. The District Court apparently ruled that the open-source Artistic License was overly broad and did not create any liability for copyright infringement, only perhaps a breach of the nonexclusive license.

I'm only vaguely aware of some of the issues surrounding the open-source software movement, but I've benefitted from the movement in several ways (e.g. my current personal printer driver is open-source software and works much better than the driver supplied by the printer's manufacturer) and I've encountered related issues (e.g. working on b logs such as this and developing wiki sites for various class-related work). The Appeals Court ruling is actually quite informative/educational in terms of some of the reasoning behind, necessity, benefits, and incredible propagation of Creative Commons public licenses.

Open Source software projects invite computer programmers from around the world to view software code and make changes and improvements to it. Through such collaboration, software programs can often be written and debugged faster and at lower cost than if the copyright holder were required to do all of the work independently. In exchange and in consideration for this collaborative work, the copyright holder permits users to copy, modify and distribute the software code subject to conditions that serve to protect downstream users and to keep the code accessible.2 By requiring that users copy and restate the license and attribution information, a copyright holder can ensure that recipients of the redistributed computer code know the identity of the owner as well as the scope of the license granted by the original owner. The Artistic License in this case also requires that changes to the computer code be tracked so that downstream users know what part of the computer code is the original code created by the copyright holder and what part has been newly added or altered by another collaborator.

Traditionally, copyright owners sold their copyrighted material in exchange for money. The lack of money changing hands in open source licensing should not be presumed to mean that there is no economic consideration, however. There are substantial benefits, including economic benefits, to the creation and distribution of copyrighted works under public licenses that range far beyond traditional license royalties. For example, program creators may generate market share for their programs by providing certain components free of charge. Similarly, a programmer or company may increase its national or international reputation by incubating open source projects. Improvement to a product can come rapidly and free of charge from an expert not even known to the copyright holder. The Eleventh Circuit has recognized the economic motives inherent in public licenses, even where profit is not immediate. See Planetary Motion, Inc. v. Techsplosion, Inc., 261 F.3d 1188, 1200 (11th Cir. 2001) (Program creator "derived value from the distribution [under a public license] because he was able to improve his Software based on suggestions sent by end-users. . . . It is logical that as the Software improved, more end-users used his Software, thereby increasing [the programmer=s] recognition in his profession and the likelihood that the Software would be improved even further.").

Jacobsen originally sued because Katzer/Kamind used his code but didn't include the required attributions/notices. Katzer has argued that Katzer/Kamind cannot be liable for copyright infringement because Katzer/Kamind had a license to use the material. The District Court originally agreed, basically concluding that one cannot be liable for copyright infringement for something one has been granted a license to use.

The Appeals Court ultimately disagreed, however, noting that "The heart of the argument on appeal concerns whether the terms of the Artistic License are conditions of, or merely covenants to, the copyright license," [pg 9] and going on to explain:

… The District Court did not expressly state whether the limitations in the Artistic License are independent covenants or, rather, conditions to the scope; its analysis, however, clearly treated the license limitations as contractual covenants rather than conditions of the copyright license.

Jacobsen argues that the terms of the Artistic License define the scope of the license and that any use outside of these restrictions is copyright infringement. Katzer/Kamind argues that these terms do not limit the scope of the license and are merely covenants providing contractual terms for the use of the materials, and that his violation of them is neither compensable in damages nor subject to injunctive relief. Katzer/Kamind's argument is premised upon the assumption that Jacobsen's copyright gave him no economic rights because he made his computer code available to the public at no charge. From this assumption, Katzer/Kamind argues that copyright law does not recognize a cause of action for non-economic rights, relying on Gilliam v. ABC, 538 F.2d 14, 20-21 (2d Cir. 1976) ("American copyright law, as presently written, does not recognize moral rights or provide a cause of action for their violation, since the law seeks to vindicate the economic, rather than the personal rights of authors.").

The Appeals Court points out, however, that "The conditions set forth in the Artistic License are vital to enable the copyright holder to retain the ability to benefit from the work of downstream users," [pg 11] going on to point out that:

By requiring that users who modify or distribute the copyrighted material retain the reference to the original source files, downstream users are directed to Jacobsen's website. Thus, downstream users know about the collaborative effort to improve and expand the SourceForge project once they learn of the "upstream" project from a "downstream" distribution, and they may join in that effort.

The District Court interpreted the Artistic License to permit a user to "modify the material in any way" and did not find that any of the "provided that" limitations in the Artistic License served to limit this grant. The District Court"s interpretation of the conditions of the Artistic License does not credit the explicit restrictions in the license that govern a downloader's right to modify and distribute the copyrighted work. The copyright holder here expressly stated the terms upon which the right to modify and distribute the material depended and invited direct contact if a downloader wished to negotiate other terms. These restrictions were both clear and necessary to accomplish the objectives of the open source licensing collaboration, including economic benefit. Moreover, the District Court did not address the other restrictions of the license, such as the requirement that all modification from the original be clearly shown with a new name and a separate page for any such modification that shows how it differs from the original.

The Appeals Court concludes that

The clear language of the Artistic License creates conditions to protect the economic rights at issue in the granting of a public license. These conditions govern the rights to modify and distribute the computer programs and files included in the downloadable software package. The attribution and modification transparency requirements directly serve to drive traffic to the open source incubation page and to inform downstream users of the project, which is a significant economic goal of the copyright holder that the law will enforce.

and in the end determine that "the terms of the Artistic License are enforceable copyright conditions."

John Markoff has a nice summary article in The New York Times, titled Ruling Is a Victory for Supporters of Free Software.

A more informative summary is available at GPL JMRI Beats Patent Troll Matt Katzer in Court.

ADDENDUM (OMG!): apparently this case has a very interesting history not even whispered about in much of the news coverage of the Appeals case, with Katzer apparently copying Jacobsen's code THEN obtaining a patent on some model railroad technology that included the Java Model Railroad Interface (JMRI) work already done by Jacobsen's group, THEN Katzer attempting to charge Jacobsen's group for the right to offer downloads … Katzer apparently went so far to even cybersquat — Jacobsen's group writes that "Katzer also improperly registered one of our trademarks, DecoderPro, as the domain name "decoderpro.com". The World Intellectual Property Organization (WIPO) has ordered it returned to us, and wrote an entire section of the order on "Katzer's bad faith"." (see http://jmri.sourceforge.net/k/index.html). It appears that Katzer is much more than he appears. It will be ironic if such duplicity on his part eventually leads to solid case support for the affirmation of the open-source licenses.


GPL JMRI Beats Patent Troll Matt Katzer in Court (8/15/2008). Slated, accessed 8/15/2008 at web address http://slated.org/jmri_beats_katzer_troll.

Jacobsen, Robert G. Website at the Department of Physics, University of California (Berkeley), accessed 8/15/2008 at web address http://physics.berkeley.edu/index.php?option=com_dept_management&act=people&Itemid=312&limitstart=0&task=view&id=363.

Jacobsen v. Katzer. (8/13/2008). Ruling from the United States Court of Appeals for the Federal Circuit, accessed 8/15/2008 in pdf form at http://www.cafc.uscourts.gov/opinions/08-1001.pdf.

Java Model Railroad Interface (JMRI) website (accessed 8/15/2008) at http://jmri.sourceforge.net/.

KAMIND Associates, Inc. website, accessed 8/15/2008 at http://www.kamind.net/.

Markoff, John (8/13/2008). Ruling Is a Victory for Supporters of Free Software. New York Times (online). Accessed 8/14/2008 at web address http://www.nytimes.com/2008/08/14/technology/14commons.html.

Open-source pact subject to copyrights law - US court. (8/15/2008). Reuters, accessed 8/15/2008 at web address http://www.stuff.co.nz/stuff/4657006a28.html.

Shiels, Maggie (8/14/2008). Legal milestone for open source. BBC News (online), accessed 8/15/2008 at web address http://news.bbc.co.uk/2/hi/technology/7561943.stm.

Welcome to KAM Industries. Website (accessed 8/15/2008) for "The Conductor" software and related information at web address http://www.trainpriority.com/.


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