Jacobsen v. Katzer

Description

Case summary

NOTE: This summary needs to be updated for the Feb. 2010 decision by the Federal Circuit

CC ASPECT: A model train hobbyist who had developed open source software for controlling the movement of multiple trains on a track brought suit against a man and company that used this open source software in the creation of their own competing proprietary software. The proprietary software did not contain any of the information required by the Artistic license under which the open source software was released. The District Court held that the Artistic license was a contract between the parties and remedies for breach of this contract could only sound in contract law, not as copyright infringement. This holding was appealed to the US Court of Appeals for the Federal Circuit. Creative Commons participated in the submission of an amicus brief, asking the Court of Appeals to reverse the District Court. The Court of Appeals found that the breach of a public license could sound in copyright infringement and remanded the case to the District Court. BACKGROUND ON OTHER ISSUES The case had other issues at the district court level, including a request for a preliminary injunction against the proprietary software makers to prevent them from accusing the plaintiff of patent infringement over patents the plaintiff claimed were invalid for reason of fraud on the patent office. PARTIES: Plaintiff: Robert Jacobsen Defendants: Matthew Katzer, KAM Industries, Kevin Russell Amici Curiae: Creative Commons, The Linux Foundation, The Open Source Initiative, Software Freedom Law Center, The Perl Foundation, and Wikimedia Foundation COURTS: CC Related Issue United States Court of Appeals for the Federal Circuit Judges Michel, Prost and Faith S. Hochberg All Matters of the Case United States District Court for the Northern District of California San Francisco Division Judge Jeffery White DATES: Complaint filed 13 March 2006 First District Court Order granting and denying various motions 17 August 2007 Defendants Second Motion to Dismiss 21 December 2007 Amici Curiae brief submitted 28 December 2007 Defendants file Disclaimer in Patent 1 February 2008 Court of Appeals Decision 13 August 2008 Second District Court Order granting and denying various motions 5 January 2009 Next scheduled in District Court for 9:00AM 30 October 2009 CLAIMS: (Plead in Plaintiff’s Complaint and Plaintiff’s Amended Complaint) CC Related Claims • Copyright Infringement o Plaintiff argued Defendant used Plaintiff’s software and stripped it of its Artistic license information, thereby modifying the software and violating the license. o Plaintiff asked for statutory damages and attorneys’ fees. o Defendant argued Plaintiff was not eligible for statutory damages or attorneys fees because the software was not registered with the US Copyright Office until after the alleged infringement occurred. o Amici Curiae argued that violation of the Artistic license must be copyright infringement and not a contractual issue because a many people have chosen to use public licenses with the understanding that a violation of the license results in copyright infringement.  Used an analogy between property with trespassing by an invited guest and copyright infringement by a public license user. • Breach of Contract o Defendants argued there can be no breach of contract claim because there are no damages caused by breaching the Artistic License. • Violation of the Digital Millennium Copyright Act (DMCA) o Plaintiff argued the license identification metadata in the software files constituted copyright management information under the DMCA and that Defendants violated the DMCA when they removed this information. o Defendants argued that a New Jersey court held that similar information in the form of a company’s logo did not constitute copyright management information so this metadata does not count under the DMCA. Remainder of Claims • Unenforceability of several patents o Plaintiff claimed that frauduantly obtained a number of patents on model railroad software by intentionally not disclosing prior art in applications submitted to the USPTO. • Non-infringement of patents o Plaintiff asked the court for a declaratory judgment stating that Plaintiff was not infringing Defendant’s patents because the patents were invalid. • Anti-Trust Violation of Sherman Act o Plaintiff claimed Defendant violated the Sherman Act; (a Federal Statute that limits monopolies) by attempting to harass and frighten their competitors out of business. • Unfair Competition o Plaintiff claimed Defendant engaged in unfair competition (in violation of California State Law) by attempting to monopolize the market through the use of invalid patents to harass competitors out of business. • Cybersquatting o Plaintiff claimed Defendant was cybersquatting on a trademark associated with Plaintiff’s open source project by registering the trademark as a domain name and then transferring that domain name with a prohibition of further transfer. • Libel o Plaintiff claimed Defendant falsely accused Plaintiff of patent infringement and sent letters requesting information to Plaintiff’s employer and the US Department of Energy. • Unjust Enrichment ISSUES ADDRESSED BY COURT: CC Issue Court of Appeals Ruling • Copyright Infringement o The court looked at “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.” o Court vacated the District Courts denial of the preliminary injunction for copyright infringement. o The court held that the lack of monetary exchange in open source licensed projects does not mean there are no benefits for the copyright holder. o The court held that the terms in the license are conditions under which the license is granted not covenants that are part of a contract. o The court held that the Artistic License is enforceable under copyright infringement. District Court’s 17 August 2007 Ruling (Prior to Court of Appeals) • Copyright Infringement o Court denied preliminary injunction for copyright infringement.  The court held that the matter was a contractual issue and not copyright infringement because the software was licensed under an open source license.  The court held that a promise not to sue for copyright infringement is implicit in the open source license. o Court dismissed the claim for attorneys’ fees and statutory damages because the Plaintiff did not register the software with the US Copyright Office until after the infringement occurred. District Court’s 5 January 2009 Ruling (After remanded by Court of Appeals) • Copyright Infringement o Court denied plaintiff’s motion for preliminary injunction because the plaintiff did not meet the required burden of showing a specific and actual harm suffered as the result of the copyright infringement. Remainder of Issues District Court’s 17 August 2007 Ruling • Unfair Competition o Court dismissed the claim for unfair competition. Unfair competition requires the Plaintiff to have lost money or property, but the Plaintiff did not have any expectation of receiving money or property for his software programs because they were given away for free on the internet. o Claim is preempted by Federal Copyright Law.  The US Copyright Act specifically says it overrides all formerly existing common law and State statutes relating to copyright. 17 U.S.C. § 301. • Unjust Enrichment o Court dismissed the claim for unjust enrichment. Unjust enrichment requires that both parties expect compensation for the services rendered. Benefits received from using open source software cannot be unjust because open source software is distributed freely. o There is no separate cause of action for unjust enrichment in California. o Claim is preempted by Federal Copyright Law. • Cybersquatting o Court dismissed the claim for cybersquatting as moot. Plaintiff submitted documentation showing that WIPO had transferred the domain name to Plaintiff. District Court’s 5 January 2009 Ruling (After Court of Appeals Remand) [This order was a response to a motion by the plaintiff for preliminary injunction against the defendant and a motion by defendant to dismiss a number of the plaintiff’s claims. Therefore, most of the rulings in this order are only whether or not an issue can stay in the case.] • Unenforceability of Patents o Court dismissed the claims regarding the unenforceability of patents for mootness because the defendant had already filed a Disclaimer in Patent. • Breach of Contract o Court dismissed the breach of contract claim for failure to state a specific harm; the plaintiff was unable to show any damages stemming from breach of the Artistic license. o Court dismissed the breach of contract claim also on grounds of federal preemption because the matters from which the claim arose are covered by the US Copyright Act and therefore cannot be litigated under state law claims. • DMCA Violation o Court held that the claim for violation of the DMCA could stand, because it appeared from the pleadings that the information required by the Artistic license could qualify as copyright management information under the DMCA. • Attorney Fees o Court refused to strike plaintiff’s claim for attorneys’ fees because at this point it was not clear that plaintiff’s work was not infringed after the plaintiff registered his work. HOLDING: Violations of open source and public licenses are not enforceable through copyright infringement claims, not just as breaches of contract.