Open-Source Licensing Suffers Setback in Court

By Peter Galli  |  Posted 2007-08-28

Open-Source Licensing Suffers Setback in Court

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.

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The remedy for contract violations under U.S. law is generally monetary damages, not injunctive relief where the court orders a party to stop the violation. Open source licensors would prefer to obtain an injunction prohibiting the breach of the license, he said.

But the news is not all bad as the case is far from over. This motion was just for a preliminary injunction and to strike certain claims from the complaint.

"Next will come discovery, and maybe more motions, with questions asked in writing and orally to get to the facts. After getting new facts, the court may reconsider the conclusion. Next will come a trial and the judge may decide that, based on the additional fact finding, he was wrong initially," Radcliffe said.

But the case is a "watershed" for the open-source community as it marks the first time a US court has ruled on a request for an injunction to protect an open-source license.

"Virtually all open source licensors assume that a court would grant injunctive relief for a breach of the terms of an open-source license rather than restricting the licensor to contract remedies of damages," said Radcliffe, who has also blogged about the case.

In addition, by denying the plaintiff an injunction, the court has set "a dangerous precedent for enforcement of open-source licenses, because an injunction is frequently the only practical remedy for licensors since open-source software is provided for free and damages are very difficult to determine," he said.

Microsoft says it is not bound by the GPLv3. Click here to read more.

The fact that the defendants replaced Jacobsens name in the copyright notices in the original program with their own names, strikes at the core open source principle of giving credit to authors. "This is the little engine that could derail the expectations of many open source authors," Radcliffe said.

He also voiced the frustration felt by many lawyers serving the open source industry due to the fact that there are currently few legal rulings in place that interpret open-source licenses.

That situation is complicated by the increasing use of open-source software and the belief by many lawyers that issues like the scope of the open-source license will inevitably find their way to the courts. "The decision is a preliminary one and the case will continue. We hope that the court will change its holding," he said.

"This case is one of the first examples of these disputes and, unfortunately, in my opinion, this case was wrongly decided. If this ruling is allowed to stand it could deprive open source licensors of the ability to get a court order, an injunction, to stop violation of the terms of their license, one of the most important remedies for breach of such licenses," Radcliffe said.

The next step involves the parties submitting a joint case management conference statement to the court by no later than September 7, ahead of a case management conference on September 14 to set the timing for the rest of the case. "Nothing substantive is likely to be decided at this conference," Ratcliffe said.

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