Archive for August, 2008

Jacobsen v Katzer – A View Of The Antipodes

(… from the Podes)

Brendan Scott, August 2008

Two days ago I posted a single paragraph on the Jacobsen v Katzer case in the US, accompanied by a link to the Groklaw article.   Within hours people were hitting that page from the search engines (searching specifically for Jacobsen, Katzer or some combination).  It’s not like I said anything of substance about the case that I should receive traffic – especially since I’m not a US lawyer (disclaimer – I’m not a US lawyer and I know absolutely nothing about US law).  The IP news services I track are also alight with the Jacobsen v Katzer case.  How astounding that the world should take such an interest in a case about an outdated licence for model railways.

The Jacobsen v Katzer case is fifteen pages of double spaced typing.  The reasons for judgement are clearly and logically stated in a methodical way.  It is so refreshing to see this in a case (not so refreshing is the absence of paragraph numbering).  The judgement came to the (not entirely surprising) conclusion that conditions in a licence should be treated as conditions.  That is to say, they limit the scope of the licence, so that if you do not comply with them you are breaching copyright.  The judgement in the District Court at first instance effectively held that the manner in which the terms were expressed did not limit the scope of what was permitted under the licence.  Rather, they tagged on (contractual) obligations to a broad licence.

The reason this is relevant is because (under US law) there is a much more favourable treatment of entitlement to a preliminary injunction* in the event of a breach of copyright if the copyright holder can show they are likely to be able to establish infringement.  If the limitations are only contractual in nature getting a preliminary injunction is much more difficult.

Some Comments on the Judgement

The decision of the court is welcome but not unexpected.  In this posting I wanted to make some observations on the reasoning of the court.

  1. it refers to the Artistic license as a “public license” eg: “He makes that code available for public download from a website without a financial fee pursuant to the Artistic License, an “open source” or public license.” (at page 1);
  2. JMRI is described as an “open source software group”
  3. it seems to endorse the use of COPYING files to set out a binding licence (see:
    1. page 3, “The downloadable files contain copyright notices and refer the user to a “COPYING” file, which clearly sets forth the terms of the Artistic License.
    2. page 8, “The copyrighted materials in this case are downloadable by any user and are labeled to include a copyright notification and a COPYING file that includes the text of the Artistic License.”
    3. page 12, “If a downloader does not assent to these conditions stated in the COPYING file, he is instructed to “make other arrangements with the Copyright Holder.
  4. The last of these references, in page 12, suggests that there is a relationship involving “assent” on the part of the licensee.  This does not seem to be justified on the words of the Artistic licence, but there are lawyers who argue that FLOSS licences are contracts and this seems to support that  (I don’t think FLOSS licences are contracts, at least not in the general case).
  5. it lumps FLOSS licences into the same basket as non FLOSS licences (such as Creative Commons).  While probably of no consequence in this particular case, in the general case that could be very bad given that many “public” licences are incompatible with freedom;
  6. it endorses the economic value of FLOSS licences: at 6, “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.
  7. it has a paragraph dedicated to an exposition of some of the characteristics of FLOSS (page 7 beginning “Open Source software projects invite computer programmers….”).  This paragraph will be useful to quote in the future in other cases;
  8. it exhibits some ideological confusion, referring to both “the GNU/Linux operating system” and “the Linux operating system” on the same page (page 7);
  9. it has a somewhat paranoiac focus on economic effects of the licence.   Apparently, this is a result of some earlier cases in the US and probably not relevant here (AU), but may be helpful in local cases nevertheless.  More on the focus on economics below.
  10. makes the (I think obvious) observation (at 12) that “Copyright holders who engage in open source licensing have the right to control the modification and distribution of copyrighted material.
  11. makes the (somewhat schizophrenic, given that the purpose of the licence is to in-, not ex-, clude) observation (at 12) that “Copyright licenses are designed to support the right to exclude; money damages alone do not support or enforce that right. The choice to exact consideration in the form of compliance with the open source requirements of disclosure and explanation of changes, rather than as a dollar-denominated fee, is entitled to no less legal recognition. Indeed, because a calculation of damages is inherently speculative, these types of license restrictions might well be rendered meaningless absent the ability to enforce through injunctive relief.

The notable thing about the judgement is its fixation on there being an economic interest which is being protected.   This was because introduced by reference to an argument raised by Katzer based on a previous case:

Katzer/Kamind’s argument is premised upon the assumption that Jacobsen’s copyright gave him no economic rights because he made his computer code available to the public at no charge. From this assumption, Katzer/Kamind argues that copyright law does not recognize a cause of action for non-economic rights, relying on Gilliam** v. ABC, 538 F.2d 14, 20-21 (2d 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.”). (at 10)

Moreover, the principle itself is not repudiated outright, but, rather, accepted and the Aristic licence is then fit within this economic rights structure.   I doubt that this economic rights issue would be relevant under Australian law.  Courts in this country have been reluctant to read additional concepts into the Australian legislation.   Rather, if the Copyright Act says that a person has a right (eg to prevent reproduction) they can choose to exercise that right as they wish.  I would be surprised, for example, if a licence which merely required attribution were not enforceable here (we have an explicit right of attribution in the legislation nowadays, but I mean even if it had not been added).  The original defence at first instance would be unlikely to get a run in an Australian court.

Referring to California Law for Principles of Interpretation is Odd

The case refers to some contractual interpretation principles from California law (at 11).  While it is entirely understandable that the Appeals Court, reviewing a case on appeal from the United States District Court for the Northern District of California, looked at Californian principles in this case I think this is a tendency which courts should be warned off.  The whole point of FLOSS licences is to create as broad a community as possible for the relevant software product (something recognised by the judgement).  To look at a specific jurisdiction’s rules of interpretation to interpret a licence is somewhat artificial.  What if New York law (let alone Australian or South African law) rules of contractual interpretation gave a different result?  Moreover, a licence is not only intended to apply throughout the world, but also to be as accessible to an individual programmer as it is to a company with a team of lawyers.  Courts should be looking more to the natural meaning of the language, and (if possible) the actual use in practice rather than rules of contractual interpretation and the assumptions that they carry with them as baggage (in particular that the terms have been the subject of either legal advice or negotiation).  Rules of interpretation probably can’t be avoided, but a preference should be given to those which are more generically applicable.

[Addition 16/8: Please note: I’m not saying that it would be unusual to look at (eg) California law if this was a contract between (eg) two people one of which is in California.  The issue is that the document is determining the relationships between a whole heap of people, only one of which is the original author.  If I in Australia made some modifications to the code and gave it to a third person in (eg) South Africa – why should Californian rules of construction apply (imagine the fourth person then gives the modifications to a fifth in CA)? Indeed if I write my own code in Australia and license it under Artistic Licence v 1, why should whether I use the words “provided that” or “condition”, which have special consequences under Californian law be relevant?

In short – Why should I, as a licensor, be expected to anticipate variations in local laws when writing or adopting my licence?  And conversely, why should I, as licensee, be expected to understand variations in local laws (eg the local law of the licensor) when working out my obligations?

This is not a criticism of the approach taken in the case, but rather pointing out an issue that the law will (I think) need to evolve on.  Perhaps not well expressed either.  This might be worthy of a separate blog post.]


all incorrect spelling of licence is [sic]

* That is an injunction to deal with the rights and obligations of the parties between an early part of the legal process and the time of the actual final hearing.

** Yes, THAT Gilliam.

Jacobsen v Katzer in the US Court of Appeals

Came in overnight – a case in the US on the enforceability of open source.

We consider here the ability of a copyright holder to dedicate certain work to free public use and yet enforce an ‘open source’ copyright license to control the future distribution and modification of that work….”

More details on Groklaw.

The Updated OSP and Free Software Interoperability

Brendan Scott, August 08 – see further information at this post

Knock me down with a feather – apparently the OSP covers the GPL.

In order for specifications covered by the OSP to be implemented in the free software ecosystem, and therefore for such specifications to be claimed to be interoperable with free software, a number of requirements must be met.  One of those requirements is that free software implementations of the specifications must be permitted.   The FAQ for the OSP has recently been updated to address some aspects of free software implementations.  Apparently the new wording is as follows:

Q: I am a developer/distributor/user of software that is licensed under the GPL, does the Open Specification Promise apply to me?

A: Absolutely, yes. The OSP applies to developers, distributors, and users of Covered Implementations without regard to the development model that created such implementations, or the type of copyright licenses under which they are distributed, or the business model of distributors/implementers. The OSP provides the assurance that Microsoft will not assert its Necessary Claims against anyone who make, use, sell, offer for sale, import, or distribute any Covered Implementation under any type of development or distribution model, including the GPL. As stated in the OSP, the only time Microsoft can withdraw its promise against a specific person or company for a specific Covered Specification is if that person or company brings (or voluntarily participates in) a patent infringement lawsuit against Microsoft regarding Microsoft’s implementation of the same Covered Specification. This type of “suspension” clause is common industry practice.

Any statement from the authors of the OSP to the effect that it covers GPL implementations is a good thing.   Indeed, I called for something much like this in February  (actually, I asked for the addition of “A: yes” in the GPL question, but they’ve opted for “A: Absolutely, yes” instead).  However, given the history of this issue it is best to receive it with at least some caution.  Over an extended period during the passage of DIS 29500 through ISO the shepherds of DIS 29500 were repeatedly invited to make a statement about the OSP’s coverage of GPL implementations.   They repeatedly declined to do so, including an express statement of GPL ignorance in the OSP FAQ.   As recently as a month or so ago the Australian arm was bravely reiterating the ignorance line.

Now, apparently, it has always been exceedingly clear that the OSP covers GPL implementations.   Had this been conceded twelve, or even six months ago it would have saved a lot of people a lot of heartache.

Or would it?

It is certainly good to see this concession to the GPL in the FAQ as well as other indications that the OSP may become free software compatible.  We should ask whether this alone is sufficient or whether more would be required before covered specifications can be considered to be interoperable with free software.

One of the reasons that the GPL ignorance line was trotted out for so long might have been concern over the the SFLC’s criticism of the OSP.  To put it in simple terms, the OSP does not travel with the code.  So writing a (eg) GPL* implementation of an OSP covered specification in the expectation that the code may be re-used for other things (which is a cornerstone of interactions in the free software community) creates a problem.  That code becomes encumbered by a patent mine which arms itself when the code is (non-conformingly) reused.  At best, even with this addition to the FAQ, the OSP still fails to respect the freedom of free software implementations (whether GPL or otherwise) of covered specifications.**  It is unclear, for example, what effect the “no surrender of others’ freedom” clauses of the relevant GPLs would be in the event of a successful patent action against a non-conforming implementation.

Aside: Given the clauses in GPLv3 relating to patents and discriminatory patent licences (and the fact that many GPL v2 licences permit “GPL v 2 or later” licensing) it is an interesting question as to whether this endorsement of the use of the GPL will have broader impacts on the patents related to the covered specifications.

Who’s Really to Blame?

In one sense this is a problem created by a defective patent law, rather than the terms chosen by any one company.  In that sense, it would not be appropriate to criticise any particular company for granting a patent licence in terms similar to those used by other industry participants (at least, that is, if the other industry participants had expended the same amount of effort to threaten the open source ecosystem with patent liability).


* The GPL is used here only for convenience, the effect seems to be independent of the particular licence.

** There is a blog post by Richard Wilder (the link I was first given for this article has 2008/7/25 in the link, but the same article appears to be served for links with this replaced by x/y/z where x > 1000, and y and z < 100)  described by Sam Ramji as a “clarification of the OSP” which discusses partially conforming implementations.  It is not clear what the status of this post is in varying or affecting the interpretation of the OSP, but let’s assume it is a binding statement.  I am not sure I fully understand the context, but the focus of the post seems to be on implementations which are a subset of the full specification covered by the OSP.  While it mentions non conformance due to bugs it seems to indicate that if the bug-affected parts are therefore non-conforming then they will not be covered by the OSP (although the OSP coverage of the conforming part of the implementation will not be affected).  If this reading is correct, then presumably the same logic would apply to non-conforming parts which are due to a modification of code made in the exercise of a person’s freedoms.

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