Does a court ruling raise the risks of open source?

A federal court decision protecting open source code is good for developers, but could open the floodgates of litigation

The model train business isn't exactly the font of software innovation. But a lawsuit over the rights to a hobbyist's code could be a huge boost for developers of open source programs. It could also make some businesses think again about using open source software.

As with many lawsuits, the net result of Jacobsen v. Katzer, as the case is formally called, is a mixed bag. The landmark ruling has the potential to provide needed protection against unauthorized use for the authors of open source software. It could also have a chilling effect, discouraging buyers who fear that the very same protections could push them into an ugly legal thicket.

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Moreover, a ruling that could put money into the pockets of wronged developers also means that lawyers, who have remarkably stayed out of disputes around open source software, now have an incentive to become involved. "By opening the door to the increased likelihood of monetary recovery, it changes the dynamic," says Jonathan Moskin, an intellectual property specialist with the New York law firm of White & Case. "And lawyers being lawyers, I'd expect to see more litigation,"

The litigation train
The story begins in 2006, when Robert G. Jacobsen, a physics professor at the University of California, Berkeley, who was running the Java Model Railroad Interface (JMRI) project, filed suit against Matthew A. Katzer, a Portland, Ore., businessman who owns Kam Industries.

Jacobsen claimed that Katzer had used a portion of the JMRI in a commercial software program and was redistributing the program without the credit required as part of the artistic open source license it was distributed under.

The case has bounced between federal District Court and the Court of Appeals for the Federal Circuit (CAFC), arguably the most important court short of the U.S. Supreme Court for intellectual property matters, says Lawrence Rosen, a Ukiah, Calif.,  attorney who has done quite a bit of work in support of open source.

The facts in the case are somewhat muddled. And it didn't help matters that JMRI was distributed under the first version of the Artistic License, "a document of which one could generously say that the non-lawyers who drafted it years ago took artistic license with legal style and method," Rosen said in a post about the case.

The law being, well, the law, a key part of the case rests on a distinction that most of us wouldn't appreciate: the difference between the principles of contract law and copyright law. "The Jacobsen decision finally settled that open source licensors can enforce their licenses effectively in U.S. courts. Defendants can't avoid copyright law by relying on contract law principles that are inapplicable in the open source and open content world," says Rosen.

Stanford's Lawrence Lessig, probably the most influential attorney who has supported open source, explained it further: "In non-technical terms, the Court has held that free licenses such as the Creative Commons licenses set conditions on the use of copyrighted work. When you violate the condition, the license disappears, meaning you're simply a copyright infringer. This is the theory of the GPL and all CC licenses. Put precisely, whether or not they are also contracts, they are copyright licenses which expire if you fail to abide by the terms of the license."

Suing for a copyright violation not only opens the door to significant damage awards based on lost profits, it also allows for the recovery of legal fees, a big plus for developers who rarely have their own lawyers or the deep pockets needed to pay for a complex legal action.

A double-edged sword?
To be fair, Jonathan Moskin appears to be in the minority in expressing fears that Jacobsen may signal a new era of open source infringement cases. Most of the commentary on the Jacobsen case has positioned it as a major victory for developers. Moskin doesn't dispute that, but in a article last week on law.com and an interview with me, he raised a number of concerns that are worth considering.

(Moskin's firm has represented Microsoft in anti-trust litigation before the European Union. Does it make him biased against open source? Based on our conversation, I don't think so.)

He argues that because Jacobsen "confirmed that a licensee can be liable for copyright infringement for violating the conditions of an open source license, the original copyright owner may now have standing to sue all downstream licensees for copyright infringement."

He continues, saying: "Thus, the effect of Jacobsen is twofold; it enables a set of potentially onerous monetary remedies for failures to comply with even modest license terms, and it subjects a potentially larger community of intellectual property users to liability."

The logic of that position is clear. It could make firms wary of using open source software because they fear that someone in the food chain has violated a copyright, and they too could be subject to an expensive suit. As I said, that's a minority opinion, and some of his critics imply that he is attempting to damage open source because of his alleged pro-Microsoft bias.

I suspect Moskin is wrong, and that the net effect of Jacobsen will be positive. He may well have a point, though, when he argues that the floodgates of litigation may now be open. Interestingly, there have been very few, if any, important cases around the terms of open source licenses. We'll see if that changes.

Coincidentally, I think, a few days after the Jacobsen decision, The Free Software Foundation filed suit alleging that Cisco is infringing various copyrights licensed under the GPL and Lesser General Public License, and has demanded, in addition to its actual or statutory damages, that Cisco be made to return any profits derived from the infringement.

We'll see how that one turns out. But in the meantime, you may want to add the legal blogs to your required reading list.

I welcome your comments, tips and suggestions. Reach me at bill.snyder@sbcglobal.net.

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