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Dechert 111208.Indd 132ND YEAR NO. 221 www.callaw.com WEDNESDAY, NOVEMBER 12, 2008 An incisivemedia publication Practice Center Law and Management ‘Jacobsen’ Gives Legs to Open Source Software Ruling allows copyright holders to take action against infringement By Jill F. Kopeikin and Sabir Ibrahim In the Aug. 13 opinion in Jacobsen v. Katzer, 2008-1001, 2008 WL 3395772, the Federal Circuit U.S. Court of Appeals ruled that violation of an open source license con- stitutes copyright in- Intellectual fringement rather than Property a breach of contract. In so holding, the Feder- al Circuit rejected the notion that the free and unlimited nature of open source software licenses mandates that provisions of these licenses be construed as covenants, the violation of which would con- stitute breach of contract, rather than condi- tions that give rise to a claim of infringement. Specifically, the court held: PHOTOSPIN “Copyright holders who engage in open source licensing have the right to control the dollar-denominated fee, is entitled to no less granted might result in the Jacobsen ruling modification and distribution of copyrighted legal recognition.” being overturned or modified. material. … The choice to extract consid- The Federal Circuit’s holding in Jacobsen Even absent modification by subsequent eration in the form of compliance with the opens the door for open source copyright review, the impact of the Jacobsen ruling open source requirements of disclosure and holders to seek injunctive relief for violation remains somewhat uncertain. The Federal explanation of changes, rather than as a of the open source license. Circuit does not normally rule on copyright Although the language of the decision is issues; a procedural oddity brought the Ja- ■ Jill F. Kopeikin is a partner in Dechert’s clear, the scope and precedential impact of cobsen case before the court. Furthermore, intellectual property group in Silicon Valley, Jacobsen remain uncertain. Although there the Federal Circuit’s ruling was based in where she handles complex software and trade secret matters, among other things. have been no official reports of any proceed- part on the text of the license at issue (fo- Sabir Ibrahim is a Dechert associate with ings having been commenced, some have cusing on the language “provided that,” a background and degree in computer speculated that a petition for certiorari could which is typically regarded as imposing a science. be filed with the U.S. Supreme Court that if condition) and the meaning of its key terms under California law. However, at the very b) use the modified package “only within [the com/2100-7344_3-5101680.html ). This year, least, the decision extends a level of rec- user’s own] corporation or organization”; or Sun Microsystems acquired MySQL AB, ognition to open source software that may c) “rename any non-standard executables so makers of open source database management influence subsequent rulings on the issue. the names do not conflict with standard ex- system MySQL, for $1 billion (See http:// ‘JACOBSEN’ HIGHLIGHTS IMPORTANCE ecutables, which must also be provided, and news.cnet.com/8301-10784_3-9851644-7. OF OPEN SOURCE provide a separate manual page for each non- html ). Additionally, several open source soft- Not surprisingly, the open source commu- standard executable that clearly documents ware projects have quickly evolved into com- nity has hailed the Jacsobsen opinion as a how it differs from the Standard Version.” The panies with substantial resources and market major victory. Originally considered a niche license also required that the user identify the presence in their own right. Mozilla Founda- genre confined to hobbyists and enthusiasts, original authors and include the copyright no- tion (proprietor of the Firefox Web browser) open source software has taken on critical tices. The defendants developed a competing, incorporated in 2005 and for 2006 reported significance in light of its role in the emer- proprietary software product that incorporat- revenues in excess of $65 million. Automattic gence of the Internet as a ubiquitous tool of ed portions of the plaintiff’s source code but Inc. — creator of the online blogging plat- communication. Because any programmer did not comply with the Artistic License. form Wordpress.com, which is reported to may contribute to an open source software The usage of open source software has attract 63 million unique monthly visitors — project, the products of such collaborations become widespread in the development of acquired three venture-funded startups in the are often perceived as being more stable and proprietary software, and many software past year and reportedly has recently spurned secure than their closed source counterparts, vendors offering open source applications a $200 million acquisition offer. Open source since bugs and vulnerabilities are more read- have introduced new licensing models de- software vendors are thus larger and have ily diagnosed and patched. Consequently, signed to generate revenue from this trend. deeper pockets than ever before. open source products are used extensively in Popular open source licenses such as the Coupled with these recent business devel- contexts such as online communication where GNU General Public License and the Ar- opments in the software sector, the Jacob- reliability and security are prime concerns. tistic License typically require third parties sen decision is widely expected to inspire Indeed, the Jacobsen court recognized open who wish to distribute a modified version of open source copyright holders to pursue source licensing as a driving force behind an open source application to distribute the litigation more aggressively. Indeed, the modern technological innovation and hint- source code along with the product, i.e., any possibility of injunctive relief as a remedy ed that its ruling was aimed at ensuring the software application containing open source for infringement of open source licenses model’s continued growth and viability. The components must itself be dedicated to the may spark a litigation trend akin to the pat- court referred to open source licensing as a public. However, to enhance reception by ent infringement claims of recent years. “method of creative collaboration that serves commercial users, a growing number of open Whereas most software copyright infringe- to advance the arts and sciences in a manner source software vendors are engaging in du- ment suits previously involved claims that and at a pace that few could have imagined al-licensing; a practice by which the vendor an arms-length license agreement between just a few decades ago,” and referenced the licenses an otherwise open source software two parties had been breached, the Jacob- Apache Web server, the Firefox Web browser application under a traditional fee-based li- sen decision introduces the possibility that and the Linux operating system as illustra- cense that frees the licensee from many of a software vendor may be subject to an tions of important open source products. the requirements of the standard open source injunction imposed on behalf of an entity PROPRIETARY SOFTWARE VENDORS license. The growing prevalence of this busi- with which it had previously had no direct TAKE NOTE ness model underscores the importance of the dealings. In light of the threat of an injunc- Jacobsen’s factual background mirrors a Jacobsen decision, as such software vendors tion potentially barring the use or distribu- scenario that many proprietary software ven- now have a potential stick to go along with tion of closed source software products that dors are likely to be confronted with as open the carrot of a licensing deal that allows the violate open source agreements, many pro- source software continues to grow in promi- licensee to use an open source software prod- prietary software vendors who have not pre- nence. Jacobsen managed the Java Model uct without having to comply with an open viously perceived litigation based on open Railroad Interface project (JMRI), a nonprofit source license. source issues as a significant threat to their group that created an open source application LITIGATION BY OPEN SOURCE VENDORS business model may consider implement- allowing users to program the decoder chips NOW MORE LIKELY ing more rigorous due diligence procedures used to control model trains. Both the appli- Historically, open source copyright holders with respect to their own software products cation and its underlying source code were were individuals or small organizations like or those of potential acquisition targets. made publicly available for download and JMRI with limited resources or motivation to use. Jacobsen’s application was governed by pursue legal action. However, a number of re- Practice Center articles inform readers on the Artistic License, which allowed the soft- cent, high-profile acquisitions have vastly ex- developments in substantive law, practice is- ware to be used and modified by the public panded the resources of open source projects. sues or law firm management. Contact Shee- free of charge provided that the user describe For example, in 2003, Novell acquired SuSE, la Kamath with submissions or questions at any modifications to the source code and a) a popular distribution of the Linux operating [email protected] or www. make the modified versions freely available; system, for $210 million (See http://news.cnet. callaw.com/submissions. Reprinted with permission from the November 12, 2008 edition of The Recorder. © 2008 ALM Properties, Inc. All rights reserved. Further duplication without permission is prohibited. For information, call 749.5410 or [email protected]. ALM is now Incisive Media, www.incisivemedia.com.
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