Open Source Licensing
Intro to IP – Prof Merges
3.5.09
Newsflash!!
Newsflash!
• Reed Elsevier, Inc. v.
Muchnick, U.S., No. 08-103,
3/2/09 – cert granted
Muchnick cert question:
The petition for a writ of certiorari
is granted limited to the
following question: Does 17
U.S.C. §411(a) restrict the
subject matter jurisdiction of the
federal courts over copyright
infringement actions?
Tasini Class Action Settlement
• N.Y. Times v. Tasini, 533 U.S. 483 (2001)
• Held: Electronic and CD-ROM databases do not
constitute revisions of periodicals, and therefore
publishers need to get permission from
individual authors before licensing articles to
such databases.
201 (c) Contributions to Collective Works. —
Copyright in each separate contribution to a
collective work is distinct from copyright in the
collective work as a whole, and vests initially in the
author of the contribution. In the absence of an
express transfer of the copyright or of any rights
under it, the owner of copyright in the collective
work is presumed to have acquired only the
privilege of reproducing and distributing the
contribution as part of that particular collective
work, any revision of that collective work, and any
later collective work in the same series.
Practical Impact
• Tasini v. NY Times:
• “The Authors and Publishers may enter into
an agreement allowing continued
reproduction of the Authors’ works; they,
and if necessary the courts and Congress,
may draw on numerous models for
distributing copyrighted works and
remunerating authors for their distribution.”
Sec. 411(a)
“[N]o action for infringement
of the copyright in any United
States work shall be instituted
until registration of the
copyright claim has been
made in accordance with this
title.”
Jacobsen v. Katzer
Katzer filed his first patent application on June
24, 1998. Although well aware of other's
work, Katzer intentionally did not tell the
Patent Office that the "invention" he was
claiming had already been done by…others.
There's no doubt that Katzer knew of these.
Katzer described them in his talk at the 1997
NMRA convention, and in his 1st, 2nd and
3rd talks at the 1998 convention. If he had
produced this information to the patent
examiner, as he was required to do by law,
these patents would never have been
granted, and everybody would have been
saved a lot of trouble.
Robert Jacobsen
• Java Model Railway Interface
• http://jmri.sourceforge.net/
• DecoderPro is the creation of a large number of volunteers,
model railroaders like yourself who've each contributed to
making DecoderPro a great resource for all of us. You can help
too, even if you're not a computer programmer; click here for
suggestions on how help.
Open Source Initiative
http://jmri.sourceforge.net/
After the '329 patent issued, Katzer and Russell sent
letters that demanded $19, and later $29 in
royalties per downloaded copy of JMRI. . . . Bob
Jacobsen received bills for in excess of $200,000 on
a roughly monthly basis from August 2005 to
January 2006. (There's a separate correspondence
page that has the all the letters)
The Artistic License
Preamble
The intent of this document is to state the conditions
under which a Package may be copied, such that
the Copyright Holder maintains some semblance
of artistic control over the development of the
package, while giving the users of the package the
right to use and distribute the Package in a moreor-less customary fashion, plus the right to make
reasonable modifications.
• 3. You may otherwise modify your copy of this Package in
any way, provided that you insert a prominent notice in
each changed file stating how and when you changed that
file, and provided that you do at least ONE of the
following:
• a) place your modifications in the Public Domain or
otherwise make them Freely Available, such as by posting
said modifications to Usenet or an equivalent medium, or
placing the modifications on a major archive site such as
ftp.uu.net, or by allowing the Copyright Holder to include
your modifications in the Standard Version of the Package.
• b) use the modified Package only within your corporation
or organization.
District Court holding
The scope of the nonexclusive license is, therefore,
intentionally broad. The condition that the user
insert a prominent notice of attribution does not
limit the scope of the license. Rather, Defendants'
alleged violation of the conditions of the license
may have constituted a breach of the
nonexclusive license, but does not create liability
for copyright infringement where it would not
otherwise exist. – 535 F.3d at 1376
Some basic points
• Violation of any right in 17 USC 106 is
infringement
• A license protects the licensee from
infringement suit – but only within the scope
of the license
Example: selective license under
106
• Right to make copies
• But not derivative works
• Exceed license, face (1) breach of contract
and/or (2) infringement suit
535 F.3d at 1376
• One of Katzer/Kamind's predecessors or
employees is alleged to have downloaded the
decoder definition files from DecoderPro and
used portions of these files as part of the
Decoder Commander software . . .
Katzer’s violations of contract
• [T]he Decoder Commander software did not
include (1) the author' names, (2) JMRI copyright
notices, (3) references to the COPYING file, (4) an
identification of SourceForge or JMRI as the
original source of the definition files, and (5) a
description of how the files or computer code had
been changed from the original source code.
The District Court found that Jacobsen had a
cause of action only for breach of contract,
rather than an action for copyright
infringement based on a breach of the
conditions of the Artistic License. Because a
breach of contract creates no presumption of
irreparable harm, the District Court denied
the motion for a preliminary injunction.
By requiring that users copy and restate the license
and attribution information, a copyright holder can
ensure that recipients of the redistributed
computer code know the identity of the owner as
well as the scope of the license granted by the
original owner. The Artistic License in this case also
requires that changes to the computer code be
tracked so that downstream users know what part
of the computer code is the original code created
by the copyright holder and what part has been
newly added or altered by another collaborator. –
535 F.2d at 1379
The heart of the argument on appeal concerns
whether the terms of the Artistic License are
conditions of, or merely covenants to, the
copyright license. Generally, a “copyright owner
who grants a nonexclusive license to use his
copyrighted material waives his right to sue the
licensee for copyright infringement” and can sue
only for breach of contract. Sun Microsystems, Inc.,
v. Microsoft Corp., 188 F.3d 1115, 1121 (9th
Cir.1999) . . . – 535 F.3d at 1380
If, however, a license is limited in
scope and the licensee acts
outside the scope, the licensor
can bring an action for copyright
infringement. See S.O.S., Inc. v.
Payday, Inc., 886 F.2d 1081, 1087
(9th Cir.1989); Nimmer on
Copyright, § 1015[A] (1999).
535 F.3d at 1381
“The intent of this document is to state the
conditions under which a Package may be
copied.” (Emphasis added.) The Artistic
License also uses the traditional language of
conditions by noting that the rights to copy,
modify, and distribute are granted “provided
that ” the conditions are met. Under California
contract law, “provided that” typically denotes
a condition. See, e.g., Diepenbrock v. Luiz, 159
Cal. 716, 115 P. 743 (1911)
Covenant v. Condition
• Graham v. James, 144 F.3d, 229, 236‐37 (2d
Cir. 1998).
• Sun Microsystems v. Microsoft, 188 F.2d
1115, 1122 (9th Cir. 1999).
Covenant v. Condition
• A condition is a contract term that must be
performed by Party A if Party B is to have the
obligation to perform
• Failure to perform by A leads to various rights
for B, often including the right to suspend
performance and sue for breach immediately
“Mere covenant”
• A promise that must be fulfilled; but if it is
not, this does not by itself permit
termination/suspension of performance by
the other party
• Real estate closing: (1) Cashier’s check for
payment; (2) notice of filing in Recorder’s
office . . .
“Key words” for conditions
• If _____, then _________
• “Provided that”
• Condition the grant of the rights on certain
actions by the grantee/licensee
Lawrence Rosen, Bad Facts Make Good Law: The
Jacobsen Case and Open Source 5 (2008),
available at www.rosenlaw.com (“I know the
people who wrote the Artistic License, and those
who wrote the GPL, and those who wrote many
other open source licenses. For most of us, we
lucked out on the Jacobsen case. Many of us
license authors didn’t know the legal difference
between a “covenant” and a “condition” when
our licenses were written (and many attorneys
still don’t).”