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Against the Grain

Volume 21 | Issue 1 Article 33

February 2009 Legally Speaking -- The of Part II: Jacobsen v. Katzer Bryan M. Carson Western Kentucky University, [email protected]

Follow this and additional works at: https://docs.lib.purdue.edu/atg Part of the and Science

Recommended Citation Carson, Bryan M. (2009) "Legally Speaking -- The Legality of Open Source Part II: Jacobsen v. Katzer," Against the Grain: Vol. 21: Iss. 1, Article 33. DOI: https://doi.org/10.7771/2380-176X.2516

This document has been made available through Purdue e-Pubs, a of the Purdue University . Please contact [email protected] for additional information. LEGAL ISSUES

Section Editors: Bruce Strauch (The Citadel) Bryan M. Carson, J.D., M.I.L.S. (Western Kentucky University) Jack Montgomery (Western Kentucky University) Legally Speaking — The Legality of Open Source Software Part II: Jacobsen v. Katzer by Bryan M. Carson, J.D., M.I.L.S. (Associate Professor, Coordinator of Reference and Instructional Services, Associated Faculty — Library Media Education Program, Western Kentucky University Libraries, 1906 College Heights Blvd. #11067, Bowling Green, Kentucky 42101-1067; Phone: 270-745-5007; Fax: 270-745-2275)

he development of the “Copyleft” and work. In other words, have they inadvertently ened wrong or injury as well as to prevent open source movement has thrown placed their work in the ? In future violations.”3 This can take the form Tcopyright for a loop. There have August 2008, we received an to this of a temporary restraining order (TRO), a been some questions about the legality of open question from the of Appeals for the preliminary injunction, or a permanent in- source products, including those that use the Federal Circuit. junction. A TRO is “a temporary order of GNU General Public . However, two a court to keep conditions as they are (like recent cases have affirmed the legality of the The Origins of Jacobsen v. Katzer not taking a child out of the county or not open source movement. In part I, I discussed This case concerned software for model selling marital ) until there can be a the case of Wallace v. IBM,1 a 2006 case in train hobbyists. Robert Jacobsen is a software hearing in which both parties are present.”4 which the 7th Circuit Court of Appeals found designer in California. He created software Once both parties are present, the court may that the GNU General Public License was to program chips for model trains, which was issue a preliminary injunction. After final not a violation of antitrust law. However, that distributed under the Artistic license. Jacob- disposition of the case, the may then did not completely settle the and sen’s license specifically indicated that future order a permanent injunction.5 In question. This month’s column will “downstream” modifications must themselves property cases, injunctions usually take the discuss the 2008 case of Jacobsen be subject to the same Artistic license form of prohibiting the infringing party from v. Katzer,2 which was (unusually) terms as the original. However, KAM continuing their infringement. Because a decided by the Court of Appeals for Industries modified the software and preliminary injunction is issued before final the Federal Circuit. began to sell it commercially disposition, must weigh carefully the Jacobsen v. Katzer sought to under the exclusive costs and benefits of using this remedy. Courts determine whether a copyright of copyright. Because the typically use the following test for whether to holder can have his/her cake and software involved the issue a preliminary injunction: programming of chips eat it too. The key issue of this case (1) Whether the will probably which ran trains, was whether authors who use the succeed on the merits; alternative system are still covered KAM also obtained a utility for (2) Whether irreparable harm to the by copyright, or whether they have plaintiff would result if the injunction really given up all rights to their the mechanical por- tion of their prod- is not granted; uct. (3) The balance of harms between the Jacobsen filed plaintiff and defendant if the injunction a in Federal is allowed; and Something to Think About court in the Northern (4) Whether the injunction will have an from page 58 District of California for violation of copyright impact on the public interest.6 and breach of . He also sought a While preliminary injunctions are heav- back seats paying attention to only their declaratory that KAM’s patent was ily used in cases, they or games where we were full of questions as invalid. In addition, the plaintiff requested are not appropriate for breach of contract youth. Can it be that the growing a preliminary injunction to stop KAM from claims. The appropriate remedy for breaching in this world has stricken us with a non-com- distributing their software. While agreeing a contract is payment of monetary . municative group of young adults? I fear that that Jacobsen had a valid claim under contract There is no presumption of irreparable harm relying on computers, , and a myriad of law, the District Court ruled that the language in contract law. Thus, the district court’s games has led us to a more non-reactive group of the Artistic license was so broad as to be decision precluding Jacobsen’s copyright of people who will have a lot of trouble manag- unenforceable under copyright law. This was claim meant that he was not entitled to obtain ing others and communicating a professional a major blow for Jacobsen because of the rules a preliminary injunction. passion and ethic to their patrons in whatever regarding preliminary injunctions. they choose to work. I wonder if this Why This Court? isn’t an area that needs our special attention? Standards for Preliminary One of the most unusual features of the I am trying to volunteer some hours to com- Injunctions Jacobsen case was the court that heard the municate with new professionals. How about An injunction is an equitable court order appeal. The Court of Appeals for the Federal you? Is it worth our efforts, even at confer- that commands a party “to do or to abstain Circuit was created in 1982 when Congress ences, to communicate our “joie de vivre” to from doing a particular action. The purpose merged the Court of Customs and Patent Ap- others? ... is to preclude the occurrence of a threat- continued on page 60

Against the Grain / February 2009 59 tribute the materials “provided that” the This in turn provides individuals, busi- Legally Speaking user follows the restrictive terms of the nesses, universities and governments that from page 59 Artistic license. A copyright holder can use these types of licences to distribute and grant the right to make certain modifica- acquire code and content with a greater degree peals with the appellate division of the U.S. tions, yet retain his right to prevent other of confidence in their legality.17 Court of Claims. This nationwide appellate modifications. Indeed, such a goal is court has over cases involving exactly the purpose of adding conditions international , , , and to a license grant. The Artistic license, Endnotes appeals of some administrative agencies, as like many other common copyright well as claims of monetary damage against the , requires that any copies that 1. Wallace v. International Ma- Federal government. However, the appellate chines Corporation; Red Hat, Inc.; and are distributed contain the copyright Novell, Inc., 467 F.3d 1104; 2006 U.S. App. jurisdiction of the court is also limited to only notices and the COPYING file. ... It is LEXIS 27699; 80 U.S.P.Q.2D (BNA) 1956; 7 those specific types of cases. Since copyright outside the scope of the Artistic license 2006-2 Trade Cas. (CCH) P75,480 (2006). is not one of the areas of law that are specifi- to modify and distribute the copyrighted 2. Robert Jacobsen v. Matthew Katzer and cally assigned to the Federal Circuit, the only materials without copyright notices and Kamind Associates, Inc. (doing business copyright cases they hear are ones which arise a tracking of modifications from the as KAM Industries), 535 F.3d 1373; 2008 under patent or law. Otherwise, the original computer files. If a downloader U.S. App. LEXIS 17161; 87 U.S.P.Q.2D court does not have proper appellate jurisdic- does not assent to these conditions stated (BNA) 1836; Copy. L. Rep. (CCH) P29,620 tion and can’t hear the case.8 in the COPYING file, he is instructed (2008). The only reason why the Court of Appeals to “make other arrangements with the 3. Denlow, Morton. The for a for the Federal Circuit was able to hear the Copyright Holder.” Katzer/Kamind preliminary injunction: Time for a new standard. 22-3 The Review of Litiga- Jacobsen case was because of his declaratory did not make any such “other arrange- tion 495, 498-499 (2003). Available at judgment action to declare KAM’s patent in- ments.” http://www.ilnd.uscourts.gov.libsrv.wku. valid. As a result, the case arose under patent The court therefore ruled that the Artistic edu/JUDGE/DENLOW/md_pim2.pdf (last law, and the Federal Circuit ruled that it had license constitutes a condition of the grant of visited November 22, 2008). See also, Leu- jurisdiction to hear the case. While somewhat rights. “Copyright holders who engage in open bsdorf, John. The standard for preliminary controversial, the Federal Circuit’s ruling is source licensing have the right to control the injunctions.91-3 Harvard Law Review 525 (January 1978). based on both and the original modification and distribution of copyrighted enabling the court.9 material.”14 This is not a mere contract term; 4. Law.com Dictionary. “Restraining order.” this language is part and parcel of the condi- Incisive Media. Available at http://diction- The Ruling of the Court ary.law.com (last visited November 22, tions for licensing use of the material. As with any other type of intellectual 2008). The precedential value of this opinion is property, copyright may be licensed. This can 5. Law.com Dictionary. “Injunction.” See that a creator who uses an open source license be done through exclusive or nonexclusive also, Law.com Dictionary. “Injunctive does not give up his or her rights to the mate- licenses. When a copyright owner grants a relief.” rial. Katzer had argued that Jacobsen had nonexclusive license, he or she waives the abil- 6. Denlow at 497-498. donated his work to the public domain when ity to sue for . After all, 7. United States Court of Appeals for the he gave it away without charging. However, the user is covered by a license. Under those Federal Circuit. “About the Court.” Avail- the court agreed with Jacobsen that he had circumstances, it makes sense that the correct able at http://www.cafc.uscourts.gov/about. in fact granted a conditional license, just as remedy would be a contract infringement case html (last visited November 22, 2008). any copyright holder may do. Any use that for breaching the agreement. But if the use is 8. Holmes v. Vornado, 122 S. Ct. 1889 is beyond the conditions listed in the license pursuant to a license that is limited in scope, (2002). See also, Dabney, James W. (such as selling the work for profit) is outside Holmes v. Vornado: A restatement of the and if the user acts outside the scope of the the scope of the granted rights. Therefore, us- “arising under” jurisdiction of Federal license, the copyright owner can in fact sue ing an open source license does not invalidate courts. Available at http://library.findlaw. for copyright infringement.10 So the important the underlying copyright, and not abiding com/2002/Nov/11/132405.html#_ftn2 (last question is whether the Artistic license is a con- visited November 22, 2008). by the stated terms will constitute copyright dition of the license, or merely a covenant (a infringement. 9. The court based this ruling on 28 U.S.C. term of a contract). As mentioned above, pre- §1338(a) and 28 U.S.C. § 1295(a)(1). See liminary injunctions are available for copyright The Court of Appeals for the Federal Cir- also, Holmes v. Vornado. cuit is an unusual place for a major copyright cases but not for breach of contract claims. 10. Jacobsen at 1380. decision. However, because there was a patent The court began its analysis by reviewing claim involved, the court had proper jurisdic- 11. Jacobsen at 1381. the plain words of the Artistic license: “The tion to hear the case. Those who support the 12. id. intent of this document is to state the condi- copyleft and open source movement can take 13. Jacobsen at 1381-1382. tions under which a Package may be copied.”11 heart that this strongly-worded decision. In 14. Jacobsen at 1381. (Emphasis added by court.) The opinion also the first scholarly article to analyze this recent noted other ways in which the terminology 15 15. Fitzgerald, Brian F. and Olwan, Rami. case, law professor Brian Fitzgerald and his (2008). The legality of free and open source of the Artistic license is in accordance with co-author Rami Olwan sum up the situation conditional language: “The Artistic license software licences: The case of Jacobsen v. as follows: Katzer. In Perry, Mark and Fitzgerald, also uses the traditional language of condi- Brian F., Eds., Knowledge Policy for the tions by noting that the rights to copy, modify, This is a landmark decision because it confirms that free and open source . Toronto: Irwin Law (last and distribute are granted ‘provided that’ the 16 visited February 2, 2009); available at http:// conditions are met. Under California contract software copyright licences [sic] eprints.qut.edu.au/15148/1/15148.pdf. and by analogy open content licences law, ‘provided that’ typically denotes a condi- 16. Because the authors are Australian tion.”12 The plain language on the face of the that are similar in style to the Artistic and the article is published by a Canadian document therefore appears to state conditions. licence are: publisher, they use the “British” spelling of “Copyright licenses are designed to support the 1) copyright licences; the word “licence.” right to exclude; money damages alone do not 2) which impose licence con- 17. Fitzgerald and Olwan at 10-11. support or enforce that right.”13 The opinion ditions which if not satisfied goes on to state: can found an action in and the In this case, a user who downloads the grant of remedies for copyright JMRI copyrighted materials is autho- infringement; and rized to make modifications and to dis- 3) are legally enforceable.

60 Against the Grain / February 2009