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Re: Commercial Invocation

From: Alexander Terekhov
Subject: Re: Commercial Invocation
Date: Mon, 28 Jan 2008 15:18:32 +0100

New brief in Jacobsen case. (see also 192 and 198)


Plaintiff has waived his Copyright Rights

Plaintiff asks this Court not to rule on the issue of copyright
infringement for numerous irrelevant and nonsensical reasons. First,
Plaintiff alleges that Defendants "appear to admit they commenced"
copyright infringement. Opposition at 3, 12. Defendants are at a loss
why this "appears" to be the case in Plaintiff's eyes. Defendants do
not admit to any copyright infringement. Second, Plaintiff opines,
without support, that this Court "may lack jurisdiction" to decide
whether Plaintiff's claim correctly sounds in copyright. Defendants
can think of no reason why this Court would lack jurisdiction to hear
Plaintiff's claim. And, in fact, this Court has already found, the
failure to credit the JMRI project with the copyright on the decoder
definition files, does not give rise to copyright infringement. Order
Granting Defendants' Motion to Dismiss, Etc. [Dkt.# 158] at 9-11.
Finally, Plaintiff argues that extrinsic evidence is needed to resolve
this issue (however, Plaintiff has attached both the Artistic License
and the GPL License to his Opposition). Defendants assert that
Plaintiff has waived his copyright rights as a matter of law. This
Court's previous finding that Plaintiff has waived his copyright
rights serves to bar Plaintiff's Digital Millennium Copyright Act
Claim. While decisions on preliminary injunctions are not binding and
do not constitute the "law of the case," this Court's findings and
conclusions are sound and should be reaffirmed here. Golden State
Transit Corp. v. City of Los Angeles, 754 F.2d 830, 832 n.3 (9th Cir.
1985), rev'd on other grounds, 475 U.S. 608, 89 L. Ed. 2d 616, 106 S.
Ct. 1395 (1986).

This Court has previously found that (1) the license governing the
Decoder Definition files is unlimited in scope and (2) that a breach
of any term of the license, while possibly creating a breach of
contract cause of action, does not create liability for copyright
where it otherwise would not exist. Order Granting Defendants' Motion
to Dismiss, Etc. [Dkt.# 158] at 11. This finding is sound.

As an initial matter, copyright law, as it is presently written, does
not recognize a cause of action for non-economic attribution rights.
Gilliam v. American Broadcasting Cos., 538 F.2d 14, 24 (2nd Cir. 1976)
("American copyright law, as presently written, does not recognize
moral rights or provide a cause of action for their violation, since
the law seeks to vindicate the economic, rather than the personal
rights of authors."). Failure to credit the JMRI project with the
copyright on the Decoder Definition files, does not give rise to
copyright infringement. Graham v. James, 144 F.3d 229, 236 (2nd Cir.
1998). ("According to Nimmer, 'the general prevailing view in this
country under copyright law has been that an author who seeks or
licenses her work does not have an inherent right to be credited as
author of the work. In line with that general rule, it has been held
not to infringe an author's copyright for one who is licensed to
reproduce the work to omit the author's name.' 3 Nimmer on Copyright,
§ 8D.03[A][1], at 8D-32."). Copyright law does not contain the relief
Plaintiff seeks.

It is important to note that Plaintiff has mischaracterized the burden
of persuasion in this matter by characterizing Defendants' position as
a "defense." See Opposition at 1, 13. Possession of a license by an
accused infringer has traditionally been characterized as a matter of
affirmative defense. See, e.g. Nimmer on Copyright § 13.01. However,
in cases involving this "defense of license," the issue is always
whether a license exists to protect the accused infringer. See, e.g.
CMS Software Design Sys., Inc. v. Info Designs, Inc., 785 F.2d 1246,
1247 (5th Cir. 1986). Since in such cases the evidence of a license is
readily available to the alleged licensee, it makes sense to put the
burden of coming forward with the license on the licensee. See Bourne
v. Walt Disney Co., 68 F.3d 621, 631 (2nd Cir. 1995) (citing United
States v. Larracuente, 952 F.2d 672, 674 (2nd Cir. 1992)). Here,
however, there is no dispute as to the existence of the Artistic
License. This Court has found that the Decoder Definition Files are
subject to the Artistic License. Order Granting Defendants' Motion to
Dismiss Etc. [Dkt.# 158] at 9-10. Plaintiff attempts to complicate
matters by asserting that the Decoder Definition files are now covered
by a different license, the GPL. Opposition at 12. As discussed above,
however, the Artistic License is the only relevant license because
that was the license in effect when the allegedly infringing activity
occurred. In any event, the existence of a license is not contested by
either party.

Where the existence of the license is not questioned, the issue
becomes the scope of the license. In cases where only the scope of the
license is at issue, Plaintiff, as the copyright owner, bears the
burden of proving that Defendants' allegedly infringing acts were not
authorized under the license. Bourne 68 F.3d at 631; S.O.S. Inc. v.
Payday, Inc., 886 F.2d 1081, 1085 (9th Cir. 1989); Netbula, LLC, v.
Bindview Dev. Corp., 516 F.Supp.2d 1137, 1151 (N.D. Cal. 2007).

Notwithstanding Plaintiff's confused, rambling and not particularly
lucid discussion of unilateral contracts, bilateral contracts, implied
licenses and "bare" licenses in his Opposition papers, the issue at
hand is fairly simple. The issue is whether Defendants took pursuant
to a license. 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 only sue for breach of contract. Sun
Microsystems, Inc. v. Microsoft Corp., 188 F.3d 1115, 1121-1122 (9th
Cir. 1999) (citing Graham v. James, 144 F.3d 229, 236 (2nd Cir.
1998)). However, if a license is limited in scope, and the licensee
acts outside the scope of the license, the licensor can bring an
action for copyright infringement. Id.

This Court has previously found that the license is unambiguously
unlimited in scope. Order Granting Defendants' Motion to Dismiss, Etc.
[Dkt.# 158] at 11. A court may interpret a copyright license as a
matter of law when the language of the license is unambiguous. Allman
v. Capricorn Records, 42 Fed. Appx. 82, 84 (9th Cir. 2002). A person
exceeds the scope of a license if that person exceeds the specific
purpose for which the permission was granted. Gilliam v. American
Broadcasting Cos., 538 F.2d 14, 20-21 (2nd Cir. 1976) (emphasis
added). Courts have recognized scope limitations in licenses involving
materials subject to time and media-based constraints. See, e.g. id.;
Jarvis v. K2 Inc., 486 F.3d 526, 539 (9th Cir. 2007) (photographic
images could not be used after a certain time period pursuant to the
contract language); Bartsch v. Metro-Goldwyn-Mayer, Inc., 391 F.2d 150
(2nd Cir. 1968) cert. denied, 393 U.S. 826, 21 L. Ed. 2d 96, 89 S. Ct.
86 (1968) (motion picture rights to a musical play also entitled
telecasting of the play); G. Ricordi & Co. v. Paramount Pictures Inc.,
189 F.2d 469 (2d Cir.), cert. denied, 342 U.S. 849, 96 L. Ed. 641, 72
S. Ct. 77 (1951) (rights to make a movie expired when the term of the
copyright exclusive right in the play expired); Greenfield v. Twin
Vision Graphics, Inc., 268 F.Supp.2d 358, 382-384 (D. N.J. 2003) (use
of copyrighted photographs after expiration of license constituted

Here, however, Plaintiff has not retained any underlying copyright to
the Decoder Definition files and at no time or under any circumstance
do the exclusive copyright rights revert back to Plaintiff. See
Exhibit A to Opposition; Amended Complaint at ¶¶ 2, 249-254.
Therefore, this Court correctly found that the license is unlimited in
scope. Where, as here, a copyright holder does not retain any
copyright rights to the work, Courts have held that:

It is elementary that a lawful owner of a copyright is incapable of
infringing a copyright interest that is owned by him. Hence, an
exclusive licensee of any of the rights comprised in the copyright,
though it is capable of breaching the contractual obligations imposed
on it by the license, cannot be liable for infringing the copyright
rights conveyed to it.

United States Naval Institute v. Charter Communications, Inc., 936
F.2d 692, 695 (2nd Cir. 1991). In United States Naval Institute, the
Naval Institute alleged that the defendant had issued paperback
editions of the Hunt for Red October before the agreed upon date. Id.
The contract between the Naval Institute and defendant was executed on
September 14, 1984 and one of the terms prohibited the defendant from
publishing the paperback edition prior to October 1985. Id at 692. The
Court held that the exclusive license began on September 14, 1984 and
that any premature publishing by the defendant took place after that
date and was, consequently, a breach of a covenant but not copyright
infringement. Id. at 695. Similarly, here, Plaintiff conveyed all of
his copyright rights into the public domain. Then, subsequent to the
transfer of all rights, Plaintiff's Artistic License attempts to put
restrictions on the distribution of derivative works of the Decoder
Definition files. While these restrictions are contractual obligations
imposed by the license, they do not limit or affect the unconditional
conveyance of Plaintiff's copyright rights. See id.; see also
Considine v. Penguin, U.S.A., 24 U.S.P.Q.2D (BNA) U.S. Dist. LEXIS
10570 (S.D. N.Y. 1992) (holding that a phrase limiting a publisher's
use of first serial rights is a covenant and not a condition on the
granting of an exclusive license since the license was previously
granted unconditionally). Since Plaintiff did not retain any
underlying copyright, Plaintiff has waived his right to sue in
copyright and can therefore not make out a claim for a DMCA violation.
Plaintiff's DMCA claim should be dismissed without leave to amend.


And regarding later added contract claim:


Plaintiff's breach of contract action fails to state a claim

In his breach of contract claim, the plaintiff seeks "rescission, and
disgorgement of the value he conferred on Defendants, plus interest
and cost." While it is conceivable that plaintiff has the right to
nominal damages under Cal Civ Code § 3360, the plaintiff has not
pleaded such a claim and seeks disgorgement damages not permissible
under California law for breach of contract. Under California law, the
proper measure of damages for breach of contract is one that will
compensate the party not in breach "for all the detriment proximately
caused thereby, or which, in the ordinary course of things, would be
likely to result therefrom." Cal Civ Code § 3300. Accordingly, it is
essential that a causal connection between the breach and the damages
sought exists. 1 Witkin, Summary 10th (2005) Contracts, § 870, p. 956.
Here, the plaintiff has failed to plead the requisite casual
connection between the breach and his claim for disgorgement and has
not pleaded any detriment for which compensation is due. Although the
plaintiff has plead a general unspecified "harm," the plaintiff has
not linked, and cannot link, that harm to the value, if any, conferred
to the defendants. Because the plaintiff has not pleaded nominal
damages, or damages recoverable under California law, the plaintiff's
breach of contract claim should be dismissed.



"Because of their informal and diffuse nature, open source groups are
vulnerable to theft of their intellectual property. That theft, in the
form of copyright infringement, happened in this case, and Jacobsen
sought a preliminary injunction to enjoin Katzer and KAMIND's


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