Jacobsen v. Katzer involves a dispute over rights in software code distributed pursuant to the open source Artistic License. Last year the case yielded one of the very few judicial rulings dealing with open source software. As we wrote at the time, the U.S. Court of Appeals for the Federal Circuit rejected the argument that open source licenses are enforceable only in a breach of contract action. In a broadly worded opinion that endorsed the open source approach to licensing, the court held that open source license restrictions are enforceable under U.S. copyright law, thereby making the federal courts, and the potent remedies under the Copyright Act, available to open source licensors.
The case was remanded to the district court for further proceedings, and has now yielded another ruling favorable to the plaintiffs on a number of critical points, including eligibility of software code that is distributed for free for copyright infringement damages. Jacobsen v. Katzer, No. C 06-01905 (N.D. Cal. Dec. 10, 2009) .
To recap, the plaintiff in Jacobsen v. Katzer is Robert Jacobsen, the “leading member” of the Java Model Railroad Interface (JMRI) Project, an open source project for model railroad enthusiasts. As explained in greater depth in the Federal Circuit ruling, the members of the JMRI project collectively created the DecoderPro application to control the chips that run model trains. The application allows a model train enthusiast to control the action of the model trains by inputting the relevant variables to the decoder equipment that interfaces with the trains. The files that comprise the application are freely downloadable and accompanied by documentation that includes the Artistic License, along with copyright attribution information.
The defendant Matthew Katzer is the proprieter of Kamind Associates, a firm that develops and distributes commercial model railroad software. Jacobsen, as copyright owner of the JRMI code, brought suit alleging that Katzer and his company copied certain DecoderPro files and distributed them as part of their proprietary product without complying with the terms of the Artistic License that require, among other things, that any further distribution of the licensed code include the JRMI copyright attribution information that accompanied the original distribution.
Katzer et al admitted the copying, but on remand moved for summary judgment, arguing alternatively that the files did not have the requisite originality to merit copyright protection, and that Jacobsen could not show any compensable copyright damages.
Katzer’s originality argument was based on the theory that the DecoderPro files in question consisted simply of variables that were copied by the JMRI project members from the reference manuals distributed by the various model train manufacturers. The declarations submitted by project participants in response to Katzer’s motion detailed how the creation of the files involved selection and arrangement of the variables contained in the manufacturers’ reference manuals, and consumed significant hours of work.
The court somewhat summarily rejected the argument that the DecoderPro files did not have sufficient originality to quality for copyright protection, finding that the selection and choices detailed in the declaration (see, e.g., Declaration of Robin Becker) satisfied the “low threshold for demonstrating originality,” at least at the summary judgment stage. (Note: the litigation documents are available on the JRMI project Web site).
The court also rejected the argument that Jacobsen could not show any actual copyright damages (having conceded that there was a dispute of fact as to irreparable harm for purposes of determining entitlement to prospective relief). Again, Katzer argued that because open source software is distributed free of charge, that no damages can be shown if it is copied without authorization. The court again referenced the declarations of contributors to the JRMI project in concluding that while “it is undisputed that Plaintiff distributed the copied work on the Internet at no cost, there is also evidence in the record attributing a monetary value for the actual work performed by the contributors to the JMRI project.” Their declarations were sufficient, the court concluded, to establish the existence of a disputed issue of fact and defeat Katzer’s motion for summary judgment.
Jacobsen’s complaint also included a claim under the Digital Millennium Copyright Act, contending that by making copies of the DecoderPro files without including the copyright attribution information, Katzer violated DMCA 1202(b), which prohibits the removal or alteration of “copyright management information.” Jacobsen sought summary judgment on that claim on the ground that Katzer had admitted copying and distributing the DecoderPro files without including the copyright notices and license information that had been included with the original distribution. The court referenced the cases that have interpreted 1202(b) as being limited to copyright management information “performed by the technological measures of automated systems,” IQ Group, Ltd., v. Wiesner Pub., LLC, 409 F.Supp.2d 587, 598 (D. N.J. 2006). The court found that Jacobsen had sufficiently alleged a violation of DMCA 1202(b) in contending that a software script had been used to automate the addition of copyright notices and license information and the uploading of files to the Internet to make them available for distribution:
Based on the allegations in the complaint, the Court finds that there has been some
technological process employed to protect the author’s name, a title, a reference to the license and where to find the license, a copyright notice, and the copyright owner of Plaintiff’s work. Further, there is no dispute that Defendants employed a tool to translate the JMRI files to a format for their own use without copying this attribution information. Therefore, these elements of the DMCA claim are established in Plaintiff’s favor.
Other elements of the DMCA 1202(b) claim are disputed and therefore remain to be established at trial, the court found, such as Katzer’s knowledge and intent.
Finally, the court ruled favorably to Jacobsen on an affirmative copyright claim asserted by Katzer, and again in favor of Jacobsen on a cybersquatting claim based on Katzer’s registration of the <decoderpro.com> domain name, which appears to have already been transferred to the Jacobsen’s control.
A trial date has been set for March 2010.