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  How astounding that the world should take such an interest in a case about an outdated licence for model railways.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.

3 Responses to “Jacobsen v Katzer – A View Of The Antipodes”

  1. 1 Susan Price 17 August 2008 at 1:24 pm

    Here’s a link to a two-minute video by a lawyer who thinks the appellate court was basically correct:


  2. 2 Nada Alnajafi 9 October 2008 at 6:37 am

    I agree with your observations regarding the Jacobsen v. Katzer case, but I would like to add one more observation of my own. This case not only effects open source licensors, but it also effects all holders of moral rights in the US.
    The Court in this case gives a copyright holder an economic right to control attribution and modification of its open source software through limiting the scope of the license grant. In response to Katzer’s “fixation” on there being an economic interest at stake, the Court recognizes that requiring users who modify or distribute the copyrighted material retain the reference to the original source files directs downstream users to Jacobsen’s website. By going to Jacobsen’s website, downstream users will know about the collaborative effort to improve and expand the projects and possibly join in that effort. Therefore, the attribution and modification conditions directly serve to drive traffic to the open source incubation page and to inform downstream users of the project, which is a significant economic goal of the copyright holder that the law will enforce. The Court further held that copyright holders who engage in open source licensing have the right to control the modification and distribution of copyrighted material. This is a very significant move for the Court as the rights of attribution (the right to be recognized for your work) and integrity (the right to not have your work modified without prior consent) are moral rights. The Court diverted Katzer’s argument that copyright infringement claims only applied to economic rights by finding economic rights in moral rights. While moral rights are personal rights that can only be held by the author, copyrights are economic rights that can be held by an employer, transferred, assigned, licensed, or even waived.
    In the United States, moral rights are governed by the Visual Artists Rights Act of 1990 (“VARA”) and only granted to visual artists. Since software is not a per se visual work of art under VARA, then a software program author is not yet a visual artist under VARA. Not only does the Court’s holding here broaden VARA, but it also has the potential to open the door for other visual artists to potentially claim economic damages for a moral rights violation.
    In addition to the new VARA issues this case will trigger, an open source licensor/copyright holder is now able to benefit from the presumption of irreparable harm by a showing of copyright OR moral rights infringement. While this presumption was reserved only for victims of copyright infringement, the rule has now broadened as well. It will important to watch how other courts react to the holding of this case to see how California law develops in this area, but I wanted to point out that this can potentially effect moral rights in the U.S. as well.

  1. 1 יהונתן קלינגר | אנחנו לא הצתנו את הסכסוך | זה אלה שרוצים שליטה בשם שלהם ‏ :: Intellect or Insanity‏ Trackback on 17 August 2008 at 12:11 am

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