What was likely the most contentious court case in the history of model railroading wound down to an anticlimactic conclusion on Feb. 18, when the patent infringement case of Jacobsen v. Katzer was settled out of court.
However, the case did include a landmark decision for open-source software when in 2008 a panel of judges for the U.S. Circuit Court of Appeals ruled that copyrights can be enforced under open-source licenses. It boiled down to the question of whether the author of software distributed under an open-source license (in this case, the Artistic License 1.0) was entitled to damages when a third party used said software in a commercial product without permission, attribution or compensation to the original author.
Under terms of the settlement, Matthew Katzer, the owner of a model train vendor called Kamind, must pay US$100,000 to Robert Jacobsen, a software developer and member of the Java Model Railroad Interface Project. Katzer must also refrain from any further legal action.
Andrew Updegrove, a partner at the Boston technology law firm of Gesmer Updegrove LLP, as well as a legal counsel to the Linux Foundation, wrote in an e-mail to SD Times that the 2008 decision gives validity to open-source licenses and the developers who own the copyright to open code.
“The rulings in the case establish several important [Free and Open Source Software] license terms and remedies for the first time in the U.S.: the right to prevent a developer’s copyright and authorship acknowledgements from being removed from their code, and the right to collect damages if the terms of a FOSS license are violated,” said Updegrove. “Absent the ability to collect damages, as a practical matter there would be little to prevent commercial software vendors from incorporating FOSS software into their proprietary products in violation of FOSS license terms.
“These important rulings will stand as precedents in the federal courts in question, and as influential guidance to other courts throughout the country. Until now, these legal issues had never been tested in a U.S. court.”
Mark Webbink, visiting professor at the New York Law School, said that it was Jacobsen’s choice of license that opened him up to many legal attacks from Katzer, which began in 2004. “From the standpoint of quality of an open-source license, it’s just awful,” he said. “The court looked at it and said it still conveys the intent of the author of the code and therefore needs to be enforced.
“I think the biggest issue here is, first, are courts going to enforce open-source license with respect to copyright? The answer is yes. Second, can a plaintiff in that case seek monetary damages when they have likely been giving the software away for free? The answer to that is still yes. The federal circuit sent it back to trial court for consideration of damages. While they were doing that, the parties settled.”
The open train
The Jacobsen case revolved around open-source Java software used to control model railroads. In 2000, Jacobsen, a high energy physicist and model railroad enthusiast, built the Java Model Railroad Interface, which allowed engineers to control their setups from a computer rather than a junction box or proprietary signal-switching device.
Katzer, who also was working on model railroad control software, threw the first litigation gauntlet at the JMRI project in 2004, when he claimed the software infringed upon his software patents. The circumstances of the issuance of those patents were contentious and sparked a complex spiral of back-and-forth lawsuits between Jacobsen and Katzer, who continued to litigate and amend claims for the next four years.
It was Jacobsen’s initial choice of license—the Artistic License 1.0—that opened him up to litigation, said Bruce Perens, who was an expert witness in the case. Perens is a cofounder of the Open Source Initiative and more recently creator of BusyBox, another open-source project with a litigious history.
“The Artistic License was written by Larry Wall, creator of the Perl language, way back before open-source developers had any lawyers who would help them,” he wrote in a blog entry after the case was resolved. “Larry’s a nice guy, but he messed up the license just as any open-source developer who tries to write one on their own, without competent legal assistance, is liable to do.
“[The Open Source Initiative], unfortunately, still does not insist on legal solidity before it will approve a license, and a significant number of the licenses it has approved, including one or two it passed last year, are liable to severely damage any open-source developer who uses them and ends up in court. Hopefully Bob Jacobsen’s five-year ordeal will help to prove this point to developers.”
Because of his choice in license, Jacobsen was only able to show that Katzer had violated the attribution clause of the Artistic License 1.0. In the more common GPL litigation seen in the courts in recent years, it is the redistribution clause that is often cited as the source of infringement; copyright claims take a backseat to the GPL’s strict redistribution requirements, which have caused dozens of settlements out of court from companies accused of breaching the license.
In 2008, federal circuit judges finally agreed with Jacobsen’s claim that Katzer had violated the attribution clause of the Artistic License 1.0. In the end, a federal appeals court judge found that the Digital Millennium Copyright Act protected Jacobsen’s copyright on the JMRI code.