Open-Source Licensing Suffers Setback in Court

By Peter Galli  |  Posted 2007-08-28 Print this article Print

The San Francisco District Court weighs whether open-source licenses are contracts.

Open-source software and the licenses that govern it suffered a serious setback in a San Francisco District Court earlier this month, following a preliminary decision that could effectively deprive open source licensors from being able to get a court injunction to stop the violation of the terms of their license going forward. The case revolves around a lawsuit filed by open source developer Robert Jacobsen, a physics professor at the University of California, against Kamind Associates of Oregon and Matthew Katzer, its principal.
At issue was model train software code that Jacobsen and some other open source developers wrote, called the Java Model Railroad Interface, or JMRI, which is licensed under the Open Source Initiative approved Artistic License.
Jacobsen sued Kamind Associates and Katzer for violating copyright, trademark and breach of contract for misuse of the JMRI code, which he alleged the defendants were using in its commercial model train software products without providing the attribution required under the Artistic License. Jacobsen asked the United States District Court in San Francisco to make a declaratory judgment and approve an injunction against Kamind Associates to prevent the company from selling products developed using the JMRI software without complying with the requirements of the Artistic License. Click here to read more about the two licenses Microsoft has submitted to the OSI for approval. "While Jacobsen alleged a number of causes of action for the lawsuit, the relevant one is the alleged breach of the Artistic License due to the fact that the defendants replaced Jacobsens name in the copyright notices in the original program with their own names," Mark Radcliffe, the co-chair of the Technology Practice at global law firm DLA Piper and the General Counsel for the Open Source Initiative, told eWEEK. Jacobsen also asked the court for an injunction to force the defendants to comply with the terms of the Artistic License because, by violating the notice, the defendants had exceeded the scope of the license and were liable for copyright infringement. But in its decision, which was released on August 17, the court found that the requirement to include a proper notice of authorship was only a contract violation, not a restriction on the scope of the license, and thus not copyright infringement. So, the court denied the request for an injunction. The full, 11-page judgment, can be found, in PDF form, here. The court also ruled that the claim by Jacobsen was for contract breach and not copyright infringement. These rulings are truly significant for the open-source community, Radcliffe said, noting that the Free Software Foundation and other lawyers have taken the position that open-source licenses are not contracts. Click here to read more about the first new open-source license approved by the OSI in some time. "The question of whether the violation of a license is a contract violation or copyright infringement (it can be both) is very important, because of the remedies typically allowed under violation of a contract versus the violation of a license," he said. Page 2: Open-Source Licensing Suffers Setback in Court

Peter Galli has been a financial/technology reporter for 12 years at leading publications in South Africa, the UK and the US. He has been Investment Editor of South Africa's Business Day Newspaper, the sister publication of the Financial Times of London.

He was also Group Financial Communications Manager for First National Bank, the second largest banking group in South Africa before moving on to become Executive News Editor of Business Report, the largest daily financial newspaper in South Africa, owned by the global Independent Newspapers group.

He was responsible for a national reporting team of 20 based in four bureaus. He also edited and contributed to its weekly technology page, and launched a financial and technology radio service supplying daily news bulletins to the national broadcaster, the South African Broadcasting Corporation, which were then distributed to some 50 radio stations across the country.

He was then transferred to San Francisco as Business Report's U.S. Correspondent to cover Silicon Valley, trade and finance between the US, Europe and emerging markets like South Africa. After serving that role for more than two years, he joined eWeek as a Senior Editor, covering software platforms in August 2000.

He has comprehensively covered Microsoft and its Windows and .Net platforms, as well as the many legal challenges it has faced. He has also focused on Sun Microsystems and its Solaris operating environment, Java and Unix offerings. He covers developments in the open source community, particularly around the Linux kernel and the effects it will have on the enterprise.

He has written extensively about new products for the Linux and Unix platforms, the development of open standards and critically looked at the potential Linux has to offer an alternative operating system and platform to Windows, .Net and Unix-based solutions like Solaris.

His interviews with senior industry executives include Microsoft CEO Steve Ballmer, Linus Torvalds, the original developer of the Linux operating system, Sun CEO Scot McNealy, and Bill Zeitler, a senior vice president at IBM.

For numerous examples of his writing you can search under his name at the eWEEK Website at


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