[Top][All Lists]

[Date Prev][Date Next][Thread Prev][Thread Next][Date Index][Thread Index]

Re: JMRI case -- Implementation of the Federal Circuit's Opinion

From: Alexander Terekhov
Subject: Re: JMRI case -- Implementation of the Federal Circuit's Opinion
Date: Thu, 08 Jan 2009 16:43:58 +0100

Mark Radcliffe ("I earned a B.S. in Chemistry magna cum laude from the
University of Michigan and a J.D. from Harvard Law School. I have been
practicing law in Silicon Valley for over 25 years and am now a senior
partner at DLA Piper. DLA Piper is a new global law firm formed in 2005
from the merger of three law firms. The firm now has 3600 lawyers in 25
countries and 65 cities. My practice is a mix of corporate securities
and intellectual property. I work with many startups as well as large
global companies. I have had the opportunity to work with companies in
many industries, ranging from semiconductor to digital media to open
source. I am the General Counsel, pro bono, of the Open Source
Initiative and I ran the "Users" committee reviewing the GPLv3 draft.")

Jacobsen: District Court Denies Preliminary Injunction 06/01/09

The District Court in San Francisco in the Jacobsen v Katzner case
denied Jacobsen a preliminary injunction (as well as clarifying the
scope of some of the claims) in its decision issued yesterday (See the
decision here: This
decision is very disappointing for the open source community.  The
decision by the Court of Appeals for the Federal Circuit (”CAFC”) last
year was a great victory for open source licensors. 

The District Court drew on a very recent Supreme Court decision which
required a higher standard of proof of damages for the grant of a
preliminary injunction: Jacobsen must prove that he is “likely to
succeed on the merits, that he is likely to suffer irreparable harm in
the absence of preliminary relief, that the balance of equities tips in
his favor and that an injunction is in the public interest”.  The Court
then noted that Jacobsen had made no showing that he had actually
suffered any of these potential harms and that Jacobsen had “failed to
proffer any evidence of any specific and actual harm suffered as a
result of the alleged copyright infringement and he has failed to
demonstrate that there is any continuing or ongoing conduct that
indicates future harm is imminent.”  The important details of the
Court’s concerns are found in footnote 3 [3 Although Jacobsen makes
legal arguments regarding the alleged harm he may suffer, for instance
delays and inefficiency in development and time lost in the open source
development cycle, he has failed to put forward any evidence of such
harms. Jacobsen has failed to proffer evidence of harm suffered or any
evidence of a real or immediate threat of imminent harm in the future.
The Court also finds that Jacobsen has failed to identify with the
requisite particularity the extent of his copyright ownership over the
disputed underlying material. The JMRI Project Decoder Definition Files
incorporate many manufacturers’ specifications data as well as rights to
specific terms whose copyright is owned by Defendants. Even if
Jacobsen’s heavy burden to warrant injunctive relief had been met, it is
unclear how the Court would fashion an injunction which would be
narrowly tailored to enjoin only those allegedly infringing uses of
Jacobsen’s copyrighted content.] which should be read carefully by
lawyers and licensing professionals.  Without reviewing the actual
evidence presented, it is difficult to assess the Court’s decision.
However, it is clear that the standard for injunctive relief is higher
than it has been in the past.

Another important part of the decision is the dismissal of the breach of
contract claim for failure to state a cause of action. This type of
dismissal is unusual because the Federal courts have a relatively low
standard for pleading.  The Court noted that as currently drafted the
alleged damages do not arise from the breach of the Artistic License. In
addition, the Court notes that, as drafted, the breach of contract claim
overlaps with the copyright infringement claim and is preempted by
copyright law.  The Court granted leave to amend and this claim is
likely to revised to meet these requirements.

The Court did permit Jacobsen’s claim under the Digital Millenium
Copyright Act to proceed forward for the deletion of “Copyright
Management Information.”  Copyright Management Information includes:

“(1) The title and other information identifying the work, including the
information set forth on a notice of copyright.

(2) The name of, and other identifying information about, the author of
a work.

(3) The name of, and other identifying information about, the copyright
owner of the work, including the information set forth in a notice of

(4) With the exception of public performances of works by radio and
television broadcast stations, the name of, and other identifying
information about, a performer whose performance is fixed in a work
other than an audiovisual work.”

These claims may be particularly useful for open source licensors
because of the importance of attribution to many software developers. 
This decision is disappointing and we will need to continue to moniter
the case. 


Post tags: injunctive relief, jacobsen

Now, let's recall what two other practicing IP lawyers said back in
August regrading the CAFC decision:


This is not legal advice... 

As an attorney spending a great deal of time on software related IP 
licensing and litigation matters, I find the CAFC decision in the 
Jacobsen case to be troubling. While I am sympathetic to the court's 
apparent desire to validate the concept of open source licensing and 
its alternative forms of consideration, I do not believe that the 
court's ruling justifies a euphoric response by the open source 

First, the CAFC's decision is a clear repudiation of the "bare 
license" theory long espoused by Mr. Moglen and his followers. The 
CAFC's decision reflects the fact that open source licenses, like any 
other form of software licenses, are contracts. I agree with this 
aspect of the decision as it is well supported by precedent at all 
levels. Neither Mr. Moglen, nor any of his followers have cited legal 
precedent in support of the bare license theory. The CAFC's decision 
should serve as clear notice that the bare license theory is nothing 
more than Moglen's wishful thinking. The necessary implication of this 
finding by the court is that open source licenses must be interpreted 
in the context of applicable state law, and to an extent, the common 
law of the Federal Circuit in which the open source agreement is 
interpreted. (This is directly in conflict with the CAFC's willful 
failure to follow state law and Ninth Circuit precedent regarding the 
interpretation of restrictions as conditions precedent). 

Second, the CAFC's opinion creates a great deal of uncertainty for 
software licensing (whether proprietary or open source). Let's take 
the GPLv3 as an example. As most peoople are aware, there are a 
variety of disagreements over exactly what is required of a licensee 
to comply with various provisions of the GPL. Section 2 of the GPL 
appears to "condition" the rights granted under the license on the 
licensee's compliance with the "conditions" stated in the license. 
Under the CAFC's decision in Jacobsen, it stands to reason that a 
licensee that fails to fully satisfy the "conditions" stated in the 
GPLv3 would infringe the licensor's copyrights rather than merely 
breaching the license. Thus, even if the licensee unintentionally 
violated the terms of the GPLv3 because the meaning of the terms are 
not clear, the licensee would be liabile for infringement. 

Why does this matter? State courts, the federal circuit courts of 
appeal and the US Supreme Court have all uniformly and routinely 
interpreted license restrictions as covenants rather than conditions 
precedent. In other words, the courts presume that the restrictions 
are covenants rather than conditions precedent unless the agreement 
clearly defines the restrictions as conditions. the CAFC's decision 
wholly ignores this long held principle of law. 

Most licenses, open source or proprietary, contain provisions whose 
meanings are open to viable debate. In the past, parties to a 
software license have largely understood that a licensee that breaches 
a license agreement's terms is liable to the licensor for damages 
decided under contract law. Proprietary licenses typically include 
provisions which define or otherwise limit the scope of damages that 
may be recovered in the event of a breach. On the other hand, a party 
that is liable for infringement of a copyright is subject to 
injunctive relief and damages equal to the owner's actual damages 
(plus the infringer's profits not covered by the owner's actual 
damages) OR statutory damages of up to $150,000 per incidence of 
infringement. Any contractually agreed limitations on damages would 
be irrelevant in the infringement setting. 

The CAFC's Jacobsen decision unwittingly attempts to radically change 
the risks of licensing software. The CAFC states that any failure to 
comply with a license provision that the license even generally calls 
a "condition" is an infringement rather than a breach. Thus, any 
licensee that violates the "conditions" of a license, even if 
unintentional, is subject to infringement damages. If the CAFC's 
decision stands and is generally followed in the Circuits and state 
courts, (which it should not be), every license from this point 
forward will need to clearly state which, if any, restrictions are 
"conditions precedent" and which restrictions are merely covenants 
(all other restrictions). Moreover, the provisions that are 
conditions precedent will need to be defined with a high degree of 
care to minimize a licensee's risk of unintentionally infringing the 
copyrights as a result of miinterpreting the provisions. 

Another side note - many licesne agreement issues are brought in state 
courts. Section 301(a) of the Copyright Act, however, preempts any 
state court from hearing or deciding any cause of action which is 
equivalent to a copyright claim. If the CAFC's position is indeed the 
law of the land, then any cause of action relating to a breach of a 
provision in a license agreement that merely mentions the word 
"condition" (or some synonym thereof), or that could conceivably be 
interpreted as a condition precedent, will need to be decided by a 
federal court. Otherwise, the parties run the risk of going through a 
full trial in state court only to find that the state court has no 
jurisdiction to even hear the matter in the first place because the 
breach in fact constitutes an infringement. 

Ultimately, the only people that will benefit from this decision are 
attorneys. All open source licenses will need to be modified if the 
decision stands .... 


>> If the CAFC's position is indeed the law of the land, then 
>> any cause of action relating to a breach of a provision in a license 
>> agreement that merely mentions the word "condition" (or some synonym 
>> thereof), or that could conceivably be interpreted as a condition 
>> precedent, will need to be decided by a federal court. Otherwise, 
>> the parties run the risk of going through a full trial in state 
>> court only to find that the state court has no jurisdiction to even 
>> hear the matter in the first place because the breach in fact 
>> constitutes an infringement. 
>That is a technical matter that I have no opinion on. 

[Marc Whipple] I am a lawyer, but this is not legal advice. Always 
consult an attorney licensed in your jurisdiction and familiar with the 
relevant law before making legal decisions. 

I think you probably mean, "I do not consider myself able to offer an 
informed opinion on this point," but the way it was phrased sounds a 
little dismissive. If you didn't mean it that way, accept my apology if 
I've over-read your statement. 

That being said, calling this a "technical matter" is oversimplification 
to a rather radical degree. As an attorney who often walks the line 
between questions of Federal and State jurisdiction it was one of my 
first concerns when I read a summary of the decision this morning. The 
utter pre-emption of matters even remotely concerned with the Copyright 
Act means that this is a question of the utmost importance to anyone who 
has anything to do with such licenses. I haven't read the full decision 
yet, and so won't comment on whether the assertion the OP makes is 
accurate, but if it is, he is right to be concerned. Among other things 
it would mean that the enforcement of OS licenses just got, at the bare 
minimum, a lot more expensive. 



(GNG is a derecursive recursive derecursion which pwns GNU since it can 
be infinitely looped as GNGNGNGNG...NGNGNG... and can be said backwards 
too, whereas GNU cannot.)

reply via email to

[Prev in Thread] Current Thread [Next in Thread]