Jacobsen v. Katzer
Encyclopedia
Jacobsen v. Katzer was a lawsuit between Robert Jacobsen (plaintiff
) and Matthew Katzer (defendant
), filed March 13, 2006 in the United States District Court for the Northern District of California
. The case addressed claims concerning copyright
, patent invalidity
, cybersquatting
, and Digital Millennium Copyright Act
issues relating to model train control software, developed by Jacobsen under an open source license.
The District Court first found in a summary judgement that the open source copyright did not support damages for copyright violation. This was reversed by the Circuit Court of Appeals, which held that such copyrights were enforceable. The case was settled out of court on February 16, 2010. This was a contentious case, with litigation encompassing 405 Federal District Court document filings and two appeals to the Circuit Court of Appeals.
The case is of general interest because it has clarified the enforceability of licensing for all parties (open-source software
and proprietary software
) under United States copyright law
and established the breach of license claim for copyrights of $0 .
incubation web-site Sourceforge.net
. The goal of the project was to create interfaces that would allow model trains to be controlled on a layout of model train tracks. The software created by JMRI community was distributed without charge on the Internet, subject to the terms of the Artistic License
. JMRI also sells custom software directly to modelers and to dealers for resale. JMRI's sales have qualified JMRI for membership as a business in the Model Railroad Industry Association (MRIA).
Katzer is the owner of KAMIND Associates Inc., an Oregon company doing business under the name KAM Industries. KAM produced and sold beginning in 1997 a commercial product for model trains, Train Tools, based on client-server software.
Katzer owns several patents that may apply to the model railroad industry, one of which he alleged the JMRI project may infringe. Jacobsen, however, alleged that Katzer's software utilizes textual files from the JMRI project, in violation of copyright and the DMCA. Katzer subsequently countersued Jacobsen for $6 million for copyright infringement.
In addition to the patent claims, there was also a dispute over web sites. In February 2004, Katzer registered the web domain decoderpro.com; however, DecoderPro is the trademarked name for a JMRI program. Jacobsen succeeded in obtaining the return of the domain name.
and the district court ruled on their motions in December 2009.
deals with a series of submissions presented by Jacobsen (plaintiff) and Katzer (defendant). Responses to initial submissions were filed on November 13.
Both plaintiff and defendant further replied to responses on November 19 and 20. Prior to oral arguments on December 4, Judge Jeffrey S. White issued a Notice of Tentative Ruling and Questions, tentatively affirming in part and denying in part Jacobsen's motion for summary judgment and tentatively denying Katzer's motion for summary judgment.
On December 10, 2009, the judge denied Katzer's motion, concluding that Jacobsen could copyright the selection and ordering of the decoder definition files and could show monetary damages for copyright infringement. In the same ruling, he granted in part and denied in part Jacobsen's motion, finding that Katzer did register the decoderpro.com domain name in bad faith, that Katzer is liable for copyright infringement of the decoder definition files and that Katzer's counterclaim for copyright infringement is barred by the doctrine of laches
(damaged argument), and ruled that Jacobsen had a license under an "Implied License" doctrine. The judge did not rule on damages for copyright infringement and determined that the questions of Katzer's knowledge or intent in removing copyright notices are triable issues.
The basic elements of the Settlement Agreement include:
In August 2007, the district court denied Jacobsen's request for declaratory judgment, holding that the "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." The judge stated that JMRI failed to allege claims that were the proximate cause of a breach of the Artistic License.
In August 2008, the United States Court of Appeals for the Federal Circuit
vacated the district court's ruling, holding that the terms of the Artistic License
are enforceable copyright conditions, and sent the case back to the district court. The appeals court said, "Open source licensing has become a widely used method of creative collaboration that serves to advance the arts and sciences in a manner and at a pace that few could have imagined just a few decades ago," and cited as examples "the GNU/Linux operating system, the Perl programming language, the Apache web server programs, the Firefox web browser, and a collaborative web-based encyclopedia called Wikipedia." Professor Lawrence Lessig
called the ruling "a very important victory" that applies to all open source licenses, and many other news organizations commented on the finding.
In January 2009, the District Court again ruled on the preliminary motions, saying that it would hear Jacobsen's copyright claims but denying Jacobsen a preliminary injunction due to a lack of evidence showing any specific and actual harm.
In June 2009, the Software Freedom Law Center
filed an amicus brief before the Court of Appeals for the Federal Circuit (CAFC) calling for injunctive relief for open source developers. In the brief, SFLC argues that a Free, Libre, and Open Source Software
(FLOSS) developer whose license has been violated should be able to call upon the courts to prevent further infringing distributions. The brief outlines harms to developers, development communities, and project productivity related to open source license violations.
Jacobsen based his case on an assertion of a copyright on behalf of a free software project that is otherwise extremely generous in granting permissions for downstream copying, modifying, and distributing its works. Jacobsen explains that the basis of his copyright claims is that 102 files defining 291 decoders of the 500 decoders available on the market are at issue in this claim. JMRI developers chose the decoders they found most interesting and useful, and then structured the resulting definition files in a unique way, not based upon manufacturer or NMRA approaches, but reflecting the judgment of the JMRI developers as to their preferred arrangement, particularly choosing an arrangement appropriate for integrating these files with the rest of the JMRI software.
in July 1997, he filed a patent application
within the United States one year statutory period, namely in June 1998, with the United States Patent and Trademark Office
, consisting of 53 method claims
for client/server control of model trains by computer software.
On April 14, 2002, the JMRI project published a new capability in their code, over 4 years after KAM presented their client/server architecture, which allowed a computer to control the layout of a model railroad via a client/server protocol. On April 17, 2002, Katzer filed a continuation patent application, with a priority date back to 1998, with the patent office claiming those exact capabilities. On March 11, 2003 the patent office granted the patent (the "'329 patent") claiming those exact capabilities. DigiToys Systems also noted WinLok released in 1998 which is not prior art. This information was provided to the file history of the '329 patent, by the two model railroad hobbyists, which is the parent of the pending continuation patent. Manual Patent Examining Procedures 707.05 states "In all continuation and continuation-in-part applications, the parent applications should be reviewed for pertinent prior art." Accordingly, the references cited by the two model railroad hobbyists were before the patent office in the '329 patent.
On March 8, 2005, Katzer sent patent infringement letters and bills to Jacobsen, claiming that the code in the JMRI project infringed his patent, and that more than $200,000 was due for licensing fees of previously distributed versions of the project. Jacobsen filed for a declaratory judgment
against Katzer. In it, Jacobsen alleged that the June 1998 patent is invalid due to prior art
, that Katzer deliberately failed to provide the patent office with the prior art, and that Katzer's patents had been granted by the patent office in error.
On February 1, 2009, Katzer filed two disclaimers with the U.S. Patent Office, effectively making two of his patents unenforceable in their entirety. The result of the disclaimer was to remove all patent issues from the case.
KAM stated that the disclaimer of the '329 patent was purely based upon economic considerations to avoid the cost of patent litigation
A settlement agreement between Britton and Katzer resulted in Britton transferring computerdispatcherpro.com to Katzer, and Katzer in turn transferring decoderpro.com to Britton. The agreement allowed Britton to point the domain to the JMRI decoderpro project site, but also prohibited Britton from transferring the domain name without Katzer's permission.
Jacobsen included a demand for return of decoderpro.com in his lawsuit against Katzer. He also filed an action with the World Intellectual Property Organization
(WIPO) against fellow JMRI user Jerry Britton, asking that they settle the matter per the Uniform Domain Name Dispute Resolution Policy (UDNDP); Britton did not respond to the action. On July 26, 2007, WIPO found in favor of Jacobsen, ruling that Katzer's actions were found to be in "bad faith", since "there was essentially a purpose on the part of Katzer to disrupt the business of a competitor by interfering with Complainant's exercise of his trademark rights.". In the December 2009 Summary Judgement decision, the Federal Court concurred that Katzer had illegally cybersquatted on the decoderpro.com domain name.
by removing or altered copyright management information.
In response, Katzer filed a motion to dismiss the DMCA claims, stating that "information [that] does not encrypt or control access ... but ... 'functions to inform people who make copyright decisions" did not fall under the DMCA. However, in December 2009, the court ruled that Katzer's removal of the JMRI copyright information was a removal of copyright management information under the DMCA, leaving the question of intent under the DMCA, and damages under the DMCA to be proved at trial.
Plaintiff
A plaintiff , also known as a claimant or complainant, is the term used in some jurisdictions for the party who initiates a lawsuit before a court...
) and Matthew Katzer (defendant
Defendant
A defendant or defender is any party who is required to answer the complaint of a plaintiff or pursuer in a civil lawsuit before a court, or any party who has been formally charged or accused of violating a criminal statute...
), filed March 13, 2006 in the United States District Court for the Northern District of California
United States District Court for the Northern District of California
The United States District Court for the Northern District of California is the federal United States district court whose jurisdiction comprises following counties of California: Alameda, Contra Costa, Del Norte, Humboldt, Lake, Marin, Mendocino, Monterey, Napa, San Benito, San Francisco, San...
. The case addressed claims concerning copyright
Copyright
Copyright is a legal concept, enacted by most governments, giving the creator of an original work exclusive rights to it, usually for a limited time...
, patent invalidity
Patent
A patent is a form of intellectual property. It consists of a set of exclusive rights granted by a sovereign state to an inventor or their assignee for a limited period of time in exchange for the public disclosure of an invention....
, cybersquatting
Cybersquatting
Cybersquatting , according to the United States federal law known as the Anticybersquatting Consumer Protection Act, is registering, trafficking in, or using a domain name with bad faith intent to profit from the goodwill of a trademark belonging to someone else...
, and Digital Millennium Copyright Act
Digital Millennium Copyright Act
The Digital Millennium Copyright Act is a United States copyright law that implements two 1996 treaties of the World Intellectual Property Organization . It criminalizes production and dissemination of technology, devices, or services intended to circumvent measures that control access to...
issues relating to model train control software, developed by Jacobsen under an open source license.
The District Court first found in a summary judgement that the open source copyright did not support damages for copyright violation. This was reversed by the Circuit Court of Appeals, which held that such copyrights were enforceable. The case was settled out of court on February 16, 2010. This was a contentious case, with litigation encompassing 405 Federal District Court document filings and two appeals to the Circuit Court of Appeals.
The case is of general interest because it has clarified the enforceability of licensing for all parties (open-source software
Open-source software
Open-source software is computer software that is available in source code form: the source code and certain other rights normally reserved for copyright holders are provided under a software license that permits users to study, change, improve and at times also to distribute the software.Open...
and proprietary software
Proprietary software
Proprietary software is computer software licensed under exclusive legal right of the copyright holder. The licensee is given the right to use the software under certain conditions, while restricted from other uses, such as modification, further distribution, or reverse engineering.Complementary...
) under United States copyright law
United States copyright law
The copyright law of the United States governs the legally enforceable rights of creative and artistic works under the laws of the United States.Copyright law in the United States is part of federal law, and is authorized by the U.S. Constitution...
and established the breach of license claim for copyrights of $0 .
Background
Jacobsen, a model railroad hobbyist and a programmer, started the Java Model Railroad Interface (JMRI) Project along with other software developers in 2000, on the open-sourceOpen source
The term open source describes practices in production and development that promote access to the end product's source materials. Some consider open source a philosophy, others consider it a pragmatic methodology...
incubation web-site Sourceforge.net
SourceForge.net
SourceForge is a web-based source code repository. It acts as a centralized location for software developers to control and manage open source software development. The website runs a version of SourceForge Enterprise Edition, forked from the last open-source version available...
. The goal of the project was to create interfaces that would allow model trains to be controlled on a layout of model train tracks. The software created by JMRI community was distributed without charge on the Internet, subject to the terms of the Artistic License
Artistic License
The Artistic License refers most commonly to the original Artistic License , a software license used for certain free and open source software packages, most notably the standard Perl implementation and most CPAN modules, which are dual-licensed under the Artistic License and the GNU General Public...
. JMRI also sells custom software directly to modelers and to dealers for resale. JMRI's sales have qualified JMRI for membership as a business in the Model Railroad Industry Association (MRIA).
Katzer is the owner of KAMIND Associates Inc., an Oregon company doing business under the name KAM Industries. KAM produced and sold beginning in 1997 a commercial product for model trains, Train Tools, based on client-server software.
Katzer owns several patents that may apply to the model railroad industry, one of which he alleged the JMRI project may infringe. Jacobsen, however, alleged that Katzer's software utilizes textual files from the JMRI project, in violation of copyright and the DMCA. Katzer subsequently countersued Jacobsen for $6 million for copyright infringement.
In addition to the patent claims, there was also a dispute over web sites. In February 2004, Katzer registered the web domain decoderpro.com; however, DecoderPro is the trademarked name for a JMRI program. Jacobsen succeeded in obtaining the return of the domain name.
Initial actions
Both Jacobsen and Katzer moved for summary judgmentSummary judgment
In law, a summary judgment is a determination made by a court without a full trial. Such a judgment may be issued as to the merits of an entire case, or of specific issues in that case....
and the district court ruled on their motions in December 2009.
Summary judgment
The summary judgmentSummary judgment
In law, a summary judgment is a determination made by a court without a full trial. Such a judgment may be issued as to the merits of an entire case, or of specific issues in that case....
deals with a series of submissions presented by Jacobsen (plaintiff) and Katzer (defendant). Responses to initial submissions were filed on November 13.
Both plaintiff and defendant further replied to responses on November 19 and 20. Prior to oral arguments on December 4, Judge Jeffrey S. White issued a Notice of Tentative Ruling and Questions, tentatively affirming in part and denying in part Jacobsen's motion for summary judgment and tentatively denying Katzer's motion for summary judgment.
On December 10, 2009, the judge denied Katzer's motion, concluding that Jacobsen could copyright the selection and ordering of the decoder definition files and could show monetary damages for copyright infringement. In the same ruling, he granted in part and denied in part Jacobsen's motion, finding that Katzer did register the decoderpro.com domain name in bad faith, that Katzer is liable for copyright infringement of the decoder definition files and that Katzer's counterclaim for copyright infringement is barred by the doctrine of laches
Laches (equity)
Laches is an "unreasonable delay pursuing a right or claim...in a way that prejudices the [opposing] party" When asserted in litigation, it is an equitable defense, or doctrine...
(damaged argument), and ruled that Jacobsen had a license under an "Implied License" doctrine. The judge did not rule on damages for copyright infringement and determined that the questions of Katzer's knowledge or intent in removing copyright notices are triable issues.
Settlement
The parties reached settlement on February 16, 2010, and the settlement fee fully paid on March 5, 2010.The basic elements of the Settlement Agreement include:
- The parties stipulated to entry of an injunction permanently enjoining Katzer from "reproducing, by download or others, JMRI material, modifying JMRI material or distributing JMRI material”.
- The parties released each other from any legal action existing as of the date of the settlement., extending to "all claims based on or related to JMRI Material". This part of the agreement applied also to JMRI, JMRI end users, and JMRI developers until settlement was paid.
- The parties agreed to dismiss the pending Federal Circuit appeal, Jacobsen v Katzer et al., No. 2009-1221.
- Katzer/KAM agreed to pay Jacobson a settlement fee of $100,000.
- Agreement terminated all Oral and Implied licenses between parties.
- Both parties agreed not to initiate legal proceedings against each other for 10 years, and to refer future disputes to arbitration. This applies only to Jacobsen and Katzer/KAM, not to JMRI, JMRI end users, or JMRI developers.
- The Agreement does not cover any newly issued Katzer IP, or any later JMRI software versions, appearing after the settlement date
Copyright claims
KAM received a copyright infringement notification from Jacobsen on September 11, 2006, and on the same day Jacobsen filed an amended complaint that included a claim for copyright infringement. On the same day KAM removed allegedly infringing materials from KAM's website. In Jacobsen's declaration, in support of a motion for a preliminary injunction, he specifically identified examples of alleged copyright infringement.In August 2007, the district court denied Jacobsen's request for declaratory judgment, holding that the "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." The judge stated that JMRI failed to allege claims that were the proximate cause of a breach of the Artistic License.
In August 2008, the United States Court of Appeals for the Federal Circuit
United States Court of Appeals for the Federal Circuit
-Vacancies and pending nominations:-List of former judges:-Chief judges:Notwithstanding the foregoing, when the court was initially created, Congress had to resolve which chief judge of the predecessor courts would become the first chief judge...
vacated the district court's ruling, holding that the terms of the Artistic License
Artistic License
The Artistic License refers most commonly to the original Artistic License , a software license used for certain free and open source software packages, most notably the standard Perl implementation and most CPAN modules, which are dual-licensed under the Artistic License and the GNU General Public...
are enforceable copyright conditions, and sent the case back to the district court. The appeals court said, "Open source licensing has become a widely used method of creative collaboration that serves to advance the arts and sciences in a manner and at a pace that few could have imagined just a few decades ago," and cited as examples "the GNU/Linux operating system, the Perl programming language, the Apache web server programs, the Firefox web browser, and a collaborative web-based encyclopedia called Wikipedia." Professor Lawrence Lessig
Lawrence Lessig
Lawrence "Larry" Lessig is an American academic and political activist. He is best known as a proponent of reduced legal restrictions on copyright, trademark, and radio frequency spectrum, particularly in technology applications, and he has called for state-based activism to promote substantive...
called the ruling "a very important victory" that applies to all open source licenses, and many other news organizations commented on the finding.
In January 2009, the District Court again ruled on the preliminary motions, saying that it would hear Jacobsen's copyright claims but denying Jacobsen a preliminary injunction due to a lack of evidence showing any specific and actual harm.
In June 2009, the Software Freedom Law Center
Software Freedom Law Center
The Software Freedom Law Center is an organization that provides pro bono legal representation and related services to not-for-profit developers of free software/open source software. It was launched in February 2005 with Eben Moglen as Chairman. Initial funding of US$4 million was pledged by...
filed an amicus brief before the Court of Appeals for the Federal Circuit (CAFC) calling for injunctive relief for open source developers. In the brief, SFLC argues that a Free, Libre, and Open Source Software
Free and open source software
Free and open-source software or free/libre/open-source software is software that is liberally licensed to grant users the right to use, study, change, and improve its design through the availability of its source code...
(FLOSS) developer whose license has been violated should be able to call upon the courts to prevent further infringing distributions. The brief outlines harms to developers, development communities, and project productivity related to open source license violations.
Jacobsen based his case on an assertion of a copyright on behalf of a free software project that is otherwise extremely generous in granting permissions for downstream copying, modifying, and distributing its works. Jacobsen explains that the basis of his copyright claims is that 102 files defining 291 decoders of the 500 decoders available on the market are at issue in this claim. JMRI developers chose the decoders they found most interesting and useful, and then structured the resulting definition files in a unique way, not based upon manufacturer or NMRA approaches, but reflecting the judgment of the JMRI developers as to their preferred arrangement, particularly choosing an arrangement appropriate for integrating these files with the rest of the JMRI software.
Patent claims
Katzer asserted that after he shipped model train software that used a client/server protocolClient-server protocol
In computing, a client-server protocol is a protocol in which there is a single server which listens for connections, usually on a specific port , and one or more clients which connect to it....
in July 1997, he filed a patent application
Patent application
A patent application is a request pending at a patent office for the grant of a patent for the invention described and claimed by that application. An application consists of a description of the invention , together with official forms and correspondence relating to the application...
within the United States one year statutory period, namely in June 1998, with the United States Patent and Trademark Office
United States Patent and Trademark Office
The United States Patent and Trademark Office is an agency in the United States Department of Commerce that issues patents to inventors and businesses for their inventions, and trademark registration for product and intellectual property identification.The USPTO is based in Alexandria, Virginia,...
, consisting of 53 method claims
Method (patent)
In United States patent law, a method, also called "process", is one of the four principal categories of things that may be patented. The other three are a machine, an article of manufacture , and a composition of matter....
for client/server control of model trains by computer software.
On April 14, 2002, the JMRI project published a new capability in their code, over 4 years after KAM presented their client/server architecture, which allowed a computer to control the layout of a model railroad via a client/server protocol. On April 17, 2002, Katzer filed a continuation patent application, with a priority date back to 1998, with the patent office claiming those exact capabilities. On March 11, 2003 the patent office granted the patent (the "'329 patent") claiming those exact capabilities. DigiToys Systems also noted WinLok released in 1998 which is not prior art. This information was provided to the file history of the '329 patent, by the two model railroad hobbyists, which is the parent of the pending continuation patent. Manual Patent Examining Procedures 707.05 states "In all continuation and continuation-in-part applications, the parent applications should be reviewed for pertinent prior art." Accordingly, the references cited by the two model railroad hobbyists were before the patent office in the '329 patent.
On March 8, 2005, Katzer sent patent infringement letters and bills to Jacobsen, claiming that the code in the JMRI project infringed his patent, and that more than $200,000 was due for licensing fees of previously distributed versions of the project. Jacobsen filed for a declaratory judgment
Declaratory judgment
A declaratory judgment is a judgment of a court in a civil case which declares the rights, duties, or obligations of one or more parties in a dispute. A declaratory judgment is legally binding, but it does not order any action by a party. In this way, the declaratory judgment is like an action to...
against Katzer. In it, Jacobsen alleged that the June 1998 patent is invalid due to prior art
Prior art
Prior art , in most systems of patent law, constitutes all information that has been made available to the public in any form before a given date that might be relevant to a patent's claims of originality...
, that Katzer deliberately failed to provide the patent office with the prior art, and that Katzer's patents had been granted by the patent office in error.
On February 1, 2009, Katzer filed two disclaimers with the U.S. Patent Office, effectively making two of his patents unenforceable in their entirety. The result of the disclaimer was to remove all patent issues from the case.
KAM stated that the disclaimer of the '329 patent was purely based upon economic considerations to avoid the cost of patent litigation
Cybersquatting claims
In July, 2001, JMRI began calling one of its subprojects "DecoderPro.". In February, 2004, Katzer purchased the domain decoderpro.com. After this was mentioned on a (non-JMRI) model railroad software mailing list., Jerry Britton (a JMRI user/member) purchased and began using the domain name computerdispatcherpro.com, in apparent violation of Katzer's trademark on Computer Dispatcher. He also threatened to point KAM's computerdispatcherpro.com to a "good porn site". Katzer sued Britton to force him to stop infringing on the computerdispatcherpro.com trademark, and prevent Britton from pointing the domain name to such a site, and Jacobsen asked Katzer to transfer the decoderpro.com domain to him.A settlement agreement between Britton and Katzer resulted in Britton transferring computerdispatcherpro.com to Katzer, and Katzer in turn transferring decoderpro.com to Britton. The agreement allowed Britton to point the domain to the JMRI decoderpro project site, but also prohibited Britton from transferring the domain name without Katzer's permission.
Jacobsen included a demand for return of decoderpro.com in his lawsuit against Katzer. He also filed an action with the World Intellectual Property Organization
World Intellectual Property Organization
The World Intellectual Property Organization is one of the 17 specialized agencies of the United Nations. WIPO was created in 1967 "to encourage creative activity, to promote the protection of intellectual property throughout the world"....
(WIPO) against fellow JMRI user Jerry Britton, asking that they settle the matter per the Uniform Domain Name Dispute Resolution Policy (UDNDP); Britton did not respond to the action. On July 26, 2007, WIPO found in favor of Jacobsen, ruling that Katzer's actions were found to be in "bad faith", since "there was essentially a purpose on the part of Katzer to disrupt the business of a competitor by interfering with Complainant's exercise of his trademark rights.". In the December 2009 Summary Judgement decision, the Federal Court concurred that Katzer had illegally cybersquatted on the decoderpro.com domain name.
Digital Millennium Copyright Act claims
In his second amended complaint against Katzer, Jacobsen included a section alleging that Katzer violated section 102 of the Digital Millennium Copyright ActDigital Millennium Copyright Act
The Digital Millennium Copyright Act is a United States copyright law that implements two 1996 treaties of the World Intellectual Property Organization . It criminalizes production and dissemination of technology, devices, or services intended to circumvent measures that control access to...
by removing or altered copyright management information.
In response, Katzer filed a motion to dismiss the DMCA claims, stating that "information [that] does not encrypt or control access ... but ... 'functions to inform people who make copyright decisions" did not fall under the DMCA. However, in December 2009, the court ruled that Katzer's removal of the JMRI copyright information was a removal of copyright management information under the DMCA, leaving the question of intent under the DMCA, and damages under the DMCA to be proved at trial.