The Decision All Of Open Source Has Been Waiting For

As has been widely publicized in the industry, legal and even mainstream media, on August 13, 2008 the U.S. Court of Appeals for the Federal Circuit (CAFC) issued its decision in the closely-watched case of Jacobsen v. Katzer. In its decision, the CAFC confirmed one of the core legal assumptions upon which the entire open source world is based — namely that open source licenses are legally enforceable as licenses under U.S. copyright law. Perhaps more importantly, the CAFC’s decision also validated the ability of open source licensors to seek injunctive relief under copyright law to stop violations of open source licenses, in addition to merely being able to seek monetary damages in compensation for those violations. While the decision itself totals only 12 pages, it has potentially far-reaching implications for both users and distributors of free and open source software (and has instantly become required reading for anyone with interest or involvement in open source software licensing or compliance issues).

District Court Case

Interestingly, the Jacobsen case was originally filed as a patent infringement case in the U.S. District Court for the Northern District of California. In the case, Matthew Katzer (through his company Kamind Associates Inc. d/b/a KAM Industries) alleged that the DecoderPro model railroad software developed and distributed by Robert Jacobsen infringed U.S. Patent No. 6,530,329 (for a “model train control system”) owned by Katzer. Jacobsen responded to these allegations by, among other things, seeking to invalidate the Katzer patent on the basis of fraud. In particular, Jacobsen asserted that significant portions of the software covered by Katzer’s patent, and marketed by Katzer under the name “Decoder Commander,” were in fact comprised of code taken from Jacobsen’s own DecoderPro software. Jacobsen also brought a counterclaim against Katzer asserting copyright infringement on the basis of Katzer’s unauthorized use of the portions of DecoderPro in Decoder Commander.

The DecoderPro software is distributed by Jacobsen under the Artistic License, a well-known open source license. Jacobsen’s counterclaim alleged that Katzer distributed the portions of DecoderPro included in Decoder Commander in violation of the Artistic License by failing to comply with the attribution provisions of the license. In particular, the Artistic License requires that all original copyright notices and disclaimers on the software received under the license be preserved in any distribution of software and that any changes made by the licensee be distinguished from the software originally received under the license. Jacobsen asserted Katzer’s failure to adhere to these provisions of the Artistic License constituted an infringement of Jacobsen’s copyright in DecoderPro, reasoning that the use of DecoderPro outside of the scope of the applicable license constituted copyright infringement.

On this basis, Jacobsen moved for a preliminary injunction to enjoin Katzer from infringing the copyright in DecoderPro. However, in a decision issued on August 17, 2007 the district court surprised many by denying Jacobsen’s motion.

Conditions vs. Covenants

It is well-settled that the grant of a license to copyrighted material effectively constitutes a waiver of the licensor’s right to sue for copyright infringement, so long as the licensee complies with the conditions placed on the scope of that license. If a licensee does not remain within the scope created by those conditions, it thus follows that the licensee is infringing the copyright of the licensor and that the licensor may seek an injunction against the licensee to stop the infringing activity. A condition on the scope of a license is, however, treated differently from a separate covenant placed on the license. Rather than giving rise to the right to seek an injunction for copyright infringement, the violation of a separate covenant is treated more akin to a breach of contract and thus gives rise only to a right to seek monetary damages for that breach.

The district court in Jacobsen found that the Artistic License has a very broad scope, placing very few actual conditions on a licensee’s right to copy, distribute, and create derivative works of software provided under the license. The court found that even the use by Katzer of portions of DecoderPro in Decoder Commander did not exceed the scope of these conditions. Separate and apart from these conditions, the court found that the attribution provisions of the Artistic License instead constitute a separate covenant between the parties to the license. As a result, Katzer’s use of portions of DecoderPro without providing the required attribution to Jacobsen constituted only a violation of a separate covenant to the license and not a violation of a condition of the license itself. Thus, though Jacobsen may be subject to monetary damages for breach of these covenants, the court found that his actions did not constitute copyright infringement. As a result, the court held that it had no basis upon which to issue an injunction for copyright infringement.

Appeal to the CAFC

The decision of the district court in Jacobsen surprised many in the open source community who had long assumed that a failure to comply with the terms of an open source license such as the Artistic License would constitute a violation of the conditions on the scope of the license and thus give rise to a claim for copyright infringement and the right of the licensor to seek an injunction to stop the infringement. The decision caused concern that the court had effectively foreclosed the option of an injunction as a remedy for the violation of an open source license, leaving aggrieved open source licensors with only the far less attractive (and often far more difficult to obtain) remedy of monetary damages. The decision of the CAFC in the appeal of the district court’s finding, however, serves to calm many of these concerns.

Stating that “Copyright holders who engage in open source licensing have the right to control the modification and distribution of [their] copyrighted material,” the CAFC found that the “clear language” of the Artistic License creates conditions, and not covenants, to protect the rights of the licensor at issue under the license. These conditions, the court noted, include not only the provisions regarding the copying, distribution, and modification of the software subject to the license but also the relevant attribution provisions. In justifying its conclusion, the CAFC noted that the conditions on distribution, modification, and attribution in the Artistic License serve to create significant and direct economic benefit to the licensor under the Artistic License. The conditions are thus necessary to accomplish the objectives of the licensor and therefore must be enforced. Interpreting the provisions of the Artistic License otherwise would, according to the decision of the CAFC, render them “meaningless” by foreclosing the ability to enforce those provisions through injunctive relief.

The CAFC thus vacated the decision of the district court and remanded the case back to the district court for further consideration in accordance with the decision of the CAFC.

The Impact

While Jacobsen is focused on the language of the Artistic License, the decision of the CAFC is broadly worded and seemingly also applicable to the language of many other popular open source licenses, such as the widely used GNU General Public License (GPL) and GNU Lesser General Public License (LGPL). As a result, the decision should be viewed as a ringing endorsement of the validity of not just the Artistic License but of open source licenses in general. In addition, the decision opens the door for open source licensors under all open source licenses to seek injunctive relief for copyright infringement as a remedy for license violations.

It is also significant to note that a finding of copyright infringement gives rise not just to the option of injunctive relief, but to additional remedies as well. Under U.S. copyright law, copyright holders may in many cases also seek statutory damages (without the need to prove actual monetary damages) in the case that the infringement involves a registered copyright. Likewise, registered copyright holders can also make a claim for the recovery of attorney’s fees for copyright infringement. Depending on how Jacobsen is interpreted in future contexts, the case thus has the potential to provide open source licensors with strong additional powers to enforce their rights.

For companies that have already taken steps to comply with the open source licenses to which they are subject, the CAFC’s decision in Jacobsen should not have a significant impact. However, Jacobsen has the potential to significantly increase the risk of noncompliance with open source licenses. For those companies that have elected not to comply with open source licenses or, as is the case with many companies, have chosen to remain unaware of the open source software licenses to which they may be subject, Jacobsen should be all the incentive that is necessary to adopt and implement a sound open source license compliance program.


Cert denied on In re Seagate

A quick update on a previous post regarding In re Seagate Technology LLC. In Seagate, the Court of Appeals for the Federal Circuit CAFC expressly overturned prior precedent and raised the standard for determining whether a patent infringement is willful from one requiring an “affirmative duty to exercise due care to determine whether or not [one] is infringing” if one is merely on “actual notice of another’s patent rights” to a far higher standard requiring “objective recklessness.” In doing so, the CAFC effectively raised the bar for a finding of willful patent infringement to a substantially higher level than the previous standard of mere negligence, thus making it more difficult for a patent holder to prove a claim for willful infringement.

While the decision on willful infringement in the Seagate case was significant (some even called it “seismic“), the Seagate case itself had been appealed to the U.S. Supreme Court, leaving the door open to a potential reversal or modification of the decision. However, on February 25th, the U.S. Supreme Court denied a petition to review the Seagate case (including the decision on willful infringement). While not carrying the same weight as an actual decision by the Supreme Court, the denial affectively serves to establish the standard of “objective recklessness” as the law of the land.

Many have gone so far as to say that this decision now removes the affirmative obligation that a patent infringement defendant have obtained an opinion from competent legal counsel before initiating possibly infringing activity. Whether this actually proves to be the legacy of Seagate still remains to be seen. However, at minimum, the decision by the Supreme Court cements Seagate as yet another step in the further judicial reform of patent laws here in the U.S.

For more information on the case, see Convolve Inc. v. Seagate Technology LLC (U.S., No. 07-656, review denied 2/25/08) .

So, Just How Patentable is Software Anyway?

It appears that the Court of Appeals for the Federal Circuit (CAFC) — the court having exclusive jurisdiction over appeals in patent infringement cases here in the U.S. — is going to consider this very question in the near future. Last week the CAFC agreed to grant a relatively rare en banc review for the In Re Bilski case. The court has also scheduled the case on the fast track, with oral arguments scheduled for early May.

Briefly, Bilski deals with an appeal of a rejection by the Board of Patent Appeals and Interferences (BPAI) within the U.S. Patent Office of a patent application directed at a software-implemented business method for “managing risk at a reduced cost.” The BPAI based its rejection in large part on the fact that the claims of the application are not tied to any physical structure. In particular, the BPAI found that the application did not recite a “physical transformation, or any electrical, chemical, or mechanical act,” not even an “implicit transformation of electrical signals from one state to another.” Even though the claimed method may be “useful” in a business sense, the BPAI determined that a method that does not provide any transformation of matter, and that “has not been implemented in some specific way,” is not considered practically useful in a patentability sense. The BPAI thus ruled that the method claimed in Bilski’s application was not patentable subject matter under Section 101 of the Patent Act (dealing with what subject matter is patentable under U.S. law).

The Order in the CAFC appeal of the BPAI decision is included below and also available online. In addition to issues specific to the case, the questions to be considered by the court in the Bilski appeal go to the heart of the patentability of computer software and software-implemented business methods. In particular, question no. 5 asks the parties in the case to submit briefs to the court addressing whether it is appropriate to reconsider the State Street Bank & Trust Co. case (the case credited with first opening the door to the patentability of business methods) and the later AT&T v. Excel Communications case (which also helped shape the current rules regarding the patentability of business methods). The Order even goes so far as to open the question of whether these cases should be “overruled in any respect.”

I understand that at least one judge on the CAFC has already strongly implied that we can look for some significant discussion and refinements of the legal requirements regarding the patentability of computer software patents under Section 101 to come from Bilski. Interestingly, he and others have also recently noted on the record that the U.S. Supreme Court is likely to take up Section 101 at some point in the near future. Likely not by coincidence, the CAFC’s decision to take the Bilski appeal en banc now sets up a direct path for this to actually happen — assuming that the CAFC’s decision in the case is itself ultimately appealed to the Supreme Court.

Whether you are a friend or foe of patent reform, Bilski is definitely one to watch. While Congress remains mired in its own efforts to amend U.S. patent laws, the wheels of patent reform nonetheless continue to turn as the courts continue their activist stance toward the reconsideration (and potential reform) of patent laws here in the U.S.


NOTE: This order is nonprecedential.
United States Court of Appeals for the Federal Circuit
(Serial No. 08/833,892)

Appeal from the United States Patent and Trademark Office, Board of Patent Appeals and Interferences.


This case was argued before a panel of this court on October 1, 2007. Thereafter, a poll of the judges in regular active service was conducted to determine whether the appeal should be heard en banc.

Upon consideration thereof, IT IS ORDERED THAT:

The court by its own action grants a hearing en banc. The parties are requested to file supplemental briefs that should address the following questions:

(1) Whether claim 1 of the 08/833,892 patent application claims patent-eligible subject matter under 35 U.S.C. § 101?

(2) What standard should govern in determining whether a process is patent-eligible subject matter under section 101?

(3) Whether the claimed subject matter is not patent-eligible because it constitutes an abstract idea or mental process; when does a claim that
contains both mental and physical steps create patent-eligible subject matter?

(4) Whether a method or process must result in a physical transformation of an article or be tied to a machine to be patent-eligible subject matter under section 101?

(5) Whether it is appropriate to reconsider State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998), and AT&T Corp. v. Excel Communications, Inc., 172 F.3d 1352 (Fed. Cir. 1999), in this case and, if so, whether those cases should be overruled in any respect?

This appeal will be heard en banc on the basis of the original briefs and supplemental briefs addressing, inter alia, the issues set forth above. An original and thirty copies of all briefs shall be filed, and two copies served on opposing counsel. The parties shall file simultaneous supplemental briefs which are due in the court within 20 days from the date of filing of this order, i.e., on March 6, 2008. No further briefing will be entertained. Supplemental briefs shall adhere to the type-volume limitations for principal briefs set forth in Federal Rule of Appellate Procedure 32 and Federal Circuit Rule 32.

Any amicus briefs will be due 30 days thereafter. Any such briefs may be filed without leave of court but otherwise must comply with Federal Rule of Appellate Procedure 29 and Federal Circuit Rule 29. Oral argument will be held on Thursday, May 8 at 2:00 p.m. in Courtroom 201.


February 15, 2008 /s/ Jan Horbaly
Date Jan Horbaly
cc: David C. Hanson, Esq.
Stephen Walsh, Esq.

And Just Like That, The Games End — First Ever GPL Lawsuit Dismissed

Just as quickly as it began, the Software Freedom Law Center (SFLC) has announced today that an agreement has been reached to dismiss the lawsuit filed by Erik Andersen and Rob Landley, two of the principal developers of the popular BusyBox set of open source utilities, against Monsoon Multimedia, Inc. alleging a violation of version 2 of the GNU General Public License (GPL). In the agreement to dismiss the lawsuit, the SFLC is reporting that Monsoon Multimedia has agreed to appoint an “Open Source Compliance Officer” within its organization “to monitor and ensure GPL compliance, to publish the source code for the version of BusyBox it previously distributed on its web site, and to undertake substantial efforts to notify previous recipients of BusyBox from Monsoon Multimedia of their rights to the software under the GPL.” The SFLC reports that the settlement also includes an “undisclosed amount” of financial consideration paid by Monsoon Multimedia to the plaintiffs.

The settlement is certainly a benefit for the parties involved in that it helps them move forward from what could have been a costly and prolonged litigation. However, while the BusyBox lawsuit will remain significant as first lawsuit ever filed in the U.S. based directly on a violation of the GPL, the settlement itself appears to have done little to advance the law surrounding the enforceability and interpretation of the GPL and open source licenses in general. Indeed, based on the research I did for my presentation on “Open Source License Enforcement Actions” at the Open Source Business Conference (OSBC) earlier this year, the terms of the settlement appear to be very standard and to closely track those sought by the Free Software Foundation (FSF) and other enforcers of the GPL in past out of court settlements. As a result, those of us in the open source legal community who had hoped that the BusyBox lawsuit might begin the process of establishing the type of binding legal precedent regarding the enforceability and legal interpretation of the GPL here in the U.S. that has begun to occur in Germany and other countries are once again left empty handed. Stay tuned, however, as this is likely not the last lawsuit we will see here in the U.S. to enforce the terms of the GPL.

Free (as in free beer) Free and Open Source Licensing Webinar follow-up

Thank you to those of you who attended this morning’s free (as in free beer) free and open source licensing webinar. As a number of you have requested a copy of the slides, I have posted a copy here. The audio from the webinar was recorded as well and should be posted shortly (feel free to contact me if it is not).

[UPDATE: Matt Asay has the audio for the webinar and instructions on how to get it on his blog]

We hit on a number of interesting topics during the webinar. Not the least of these was the recent interim decision in the Jacobsen v. Katzner case and the issues open source licensors and courts will continue to face regarding the interpretation of open source licenses and the language used in those licenses. Of course, we also hit on GPLv3 and the current happenings around open source software and software patents. We had a great Q&A after the webinar (which was also recorded). As is usually the case when I do a presentation like this one, I ended up coming away from the Q&A feeling like I had benefited as much as the audience.

Special thanks to Matt Asay for creating the opportunity for this webinar and helping to make it happen. Even though neither Matt nor his company Alfresco sponsored the webinar, it was through Matt’s suggestion, and with assistance from him and members of his team at Alfresco, that the webinar happened. Thanks again Matt.

There was at least one suggestion during the Q&A, and several following the webinar, for future webinar topics. If there are legal issues around open source licensing that you would like to see covered in future presentations, please let me know (either through a comment to this site or via email). And, stay tuned for information on upcoming webinars and presentations. With all that is going on legally in open source at present I will likely be speaking again soon.


Seagate and the Economics of Patent Infringement

Earlier this week, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued its decision in In re Seagate Technology, LLC. The decision has been well-covered by the legal press and with good reason. As one commentator stated, Seagate represents a “seismic” shift in the law on the issue of willful patent infringement. Indeed, Seagate appears to have the potential to significantly re-balance the economics of patent infringement cases here in the U.S.

Prior to Seagate, courts relied on a negligence-based standard articulated in the Underwater Devices Inc. v. Morrison-Knudsen Co. case to determine whether patent infringement was willful. Under this standard, one having “actual notice of another’s patent rights” had “an affirmative duty to exercise due care to determine whether or not it is infringing.” Seagate expressly overturns this standard and holds that proof of willful infringement instead requires a higher showing of “objective recklessness.” In doing so, Seagate raises the bar for a finding of willful infringement to a level substantially higher than that of mere negligence, thus making it more difficult for a patent holder to prove a claim for willful infringement.

Under U.S. patent law a finding of willful (and not merely innocent) infringement allows a claim for treble (3x) damages to be made against the alleged infringer. By raising the bar for a finding of willfulness, Seagate appears to significantly narrow the range of situations in which a patent holder can now credibly threaten (much less expect to win) a claim for increased damages based on willful infringement. This likely means more situations in which patent holders will be able to (at best) expect to obtain only actual damages if they bring a case to enforce their patent(s) against an alleged infringer. Considering that according to a 2004 report titled “Empirical Statistics on Willful Patent Infringement” by now CAFC judge Kimberly Moore, over 90% of patent cases involve allegations of willful infringement and claims for treble damages, it seems reasonable to assume that this change will figure significantly into the economics behind the decision to bring many future patent cases.

While much is made about the high costs of defending a patent case, the upfront “investment” necessary to bring a patent case is not insignificant. Seagate in essence lowers the potential return on that investment by making it more difficult to obtain treble damages. Particularly when viewed in light of other recent patent decisions such as eBay Inc v. MercExchange, L.L.C. (which denies a patent holder the ability to automatically obtain an injunction in the case of a finding of patent infringement – injunctions and damages being the primary remedies available in patent cases) and KSR v. Teleflex (which has been widely viewed as making it easier for infringement allegations to be challenged on the grounds that the patented invention at issue is too obvious to deserve patent protection), Seagate would appear to have the potential to motivate patent holders to reconsider bringing costly patent infringement cases and instead encourage them to negotiate less costly settlements or licensing arrangements (or perhaps take no action at all). After all, why would a reasonable (and value-maximizing) patent holder bring a patent case if the potential return does not justify the overall investment necessary to reach that return?

Whether this actually proves to be the legacy of Seagate remains to be seen. And, it will be very interesting to watch the extent to which Seagate and these other recent cases have an actual impact on the willingness of patent holders to threaten and bring patent cases in this country. Regardless, I would expect that foes of the continued rise in power of patents and patent holders and those who have ranted about the need for patent reform are likely to welcome Seagate as yet another step in the weakening of that power and toward the further reform of patent laws here in the U.S.


Changes in the Enforceability of Online Licenses and Contracts

As many of you know, my law practice deals in large part with contracts involving technology and intellectual property. Not surprisingly given the day and age in which we live, a number of these contracts are in the form of so called “click-through” or “click-to-assent” contracts in which a would-be licensee (in the case of software) or user (in the case of a service) is presented with a set of contractual terms on their computer and required to “click” a button displayed on their screen before being able to download, access, install or use the software or service in question. While it has long been established (and even longer taken for granted by those in the technology industry) that contracts are not legally unenforceable simply because they are implemented to using a click-through format rather than a more traditional signature format (or even more traditional wax seal format), the law continues to evolve around the boundaries within which these contracts are in fact enforceable.

One area of particular activity has involved notice. Contract law generally requires that a contracting party be given some level of notice of the terms of the contract before they can be bound by those terms. It is at least in part for this reason that when a party initially signs a contract, the contract typically includes a copy of all language included in the contract — whether in the body of the contract or in an exhibit, schedule or other attached document. Of course, some contracts are structured to reference separate terms not actually attached to the contract (e.g., conditions, policies, etc.) and purport to make those terms a legally binding part of the contract. In my practice, I have seen it become quite common for click-through contracts to be drafted in this manner, with the references to additional terms made via a link to a separate web page containing those terms.

A related issue for click-through contracts drafted in this way involves the level of notice required to modify the contract (including the linked-to terms). Many click-through contracts purport to allow modification without an actual “click” by other party to the contract — for example, simply by continuing to use the software or services in question after a modification has been posted to the web page liked to by the original contract. This situation has raised a number of questions regarding the extent to which changes to the linked-to terms are themselves actually binding upon the licensee/subscriber under the original contract, despite what the terms of the original contract may purport. The 9th Circuit Court of Appeals (which covers California, Washington and Oregon) recently opined on this question in the somewhat oddly titled case Douglas v. U.S. District Court for the Central District of California. In its decision, the 9th Circuit indicated that a proposed modification of the terms of a services contract, which was posted to a company’s web site, was not enforceable against an existing customer who was not provided with notice of the modification. In particular, the court said that the parties to a contract have “no obligation to check the terms [on the web site] on a periodic basis to learn whether they have been changed by the other side” and indicated that requiring the parties to do so would be tantamount to allowing one party to a contract to change the terms of the deal without the consent of the other party to that change.

The opinion of the 9th Circuit is not binding legal precedent in all areas (including my home state of Colorado). And, while it is too early to tell whether the other Circuits will move to follow the 9th Circuit, this case is of note for any company that employs click-through contracts to license their software or provide access to their services for at least two reasons. First, it underscores the fact that the law surrounding the enforceability of click-through contracts is still evolving and can vary (sometimes significantly) from jurisdiction to jurisdiction and state to state. Contracts often specify a chosen jurisdiction or state law under which the contact is to be interpreted, and this decision once again emphasizes the importance of paying careful consideration to this language in any click-through contract. Second, and more substantively, this case appears to place the burden squarely on the vendor/provider to provide reasonable notice of any changes to a click-through contracts (or any of the terms referenced by that contract), rather than on the customer to actively monitor the vendor’s web site for any such changes. This case (and any others that follow in its wake) provide important guidance to any company attempting to implement a modification to its existing click-through contracts, particularly if those contracts are structured in the same manner as the contract in this case. Of course, given that this is likely not the last we will hear on this issue, this case also provides strong justification for the periodic review and update of online contracts and contracting practices to ensure continued compliance as the law in this area continues to evolve. Stay tuned.
For those interested, you can read the case, ruling here: Douglas v. U.S. District Court for the Central District of California.