It’s the law: open source doesn't mean no copyright

David M Williams
Sunday, 17 August 2008 20:28

Opinion and Analysis

Actually, here’s where things get really interesting in terms of ramifications for open source. During the course of events it was revealed that not only were KAM aware of the prior art created by Jacobsen but that in fact an employee of KAM had used portions of the JMRI project’s code within KAM’s own invention on which the patent was based.

KAM’s usage of this program code did not include the original author’s names, any reference to JMRI copyright or to a “COPYING” text file, any indication of either SourceForge or JMRI as the original source of the code, nor any description of how the code had been changed from the original versions.

This is important because JMRI requires these things under its license. It is free and open source, but it is specifically licensed under an artistic license which mandates those very items. The text file named “COPYING” sets forth the terms of the artistic license.

Armed with this knowledge, Jacobsen’s argument advanced to claim KAM violated the license terms of his software and this constituted copyright infringement and subsequently irreparable harm. A District Court heard the case on 17th August 2007 but deemed that copyright infringement did not exist, only the lesser matter of violating non-exclusive portions of the implied contract.

The judgment acknowledged the license contained a condition that a prominent notice of attribution exist but considered that this was overridden by the intentionally broad non-exclusive scope of the license. The court claimed copyright infringement did not happen and moreso that a non-exclusive license implicitly promises not to sue for copyright infringement. Consequently the preliminary injunction was denied.

This takes us to the present day. Jacobsen appealed and this was heard by the United States Court of Appeals on August 14th, 2008. The court upheld that the artistic license under which JMRI is released is indeed an enforceable copyright condition.

Do note that while KAM have conceded they did not comply with the conditions of the artistic license no legal judgment has been made to determine whether this actually happened. Indeed, the saga is still ongoing – the court will meet again, proving perhaps the only winners are the lawyers.

Nevertheless, the ramifications are vast. The key point is that open source software developers do have a precedent to claim copyright infringement when the terms of their software licenses are violated rather than just breach of contract.

According to attorney Andy Updegrove this distinction is important: under contract law the remedy is monetary damages which are meaningless when related to software which is given away. However, statutory damages can be awarded for copyright infringement without actually requiring any proof of monetary damages.

Another significant point to note is that rights to use the copyrighted work at all disappear. This includes licenses such as the oft-used GNU public license, or GPL. Consequently, the many manufacturers of commercial products who build upon open source software should be paying attention: there is now a much greater impetus to comply with open source licenses knowing that violations will not only cost them money but also cost them the use of that very open source package.

Perhaps one day the long-running matter between Jacobsen and KAM will be sorted, but for now Jacobsen may have some consolation knowing he has brought about a landmark determination. The judgment of the court has forever entrenched within a published appellate decision the very foundations of the free and open source and creative commons philosophies.