Original URL: http://www.theregister.co.uk/2007/08/24/open_source_railroad/

Model train software spat threatens future of open source

Throws copyrights from the train

By Kevin Fayle

Posted in Law, 24th August 2007 22:35 GMT

Analysis A dispute over some open source software used for model railroads resulted in an important decision last week, involving the scope of open source licenses and the remedies available when they are violated.

The decision has triggered alarm in the open source community, with a prominent open source licensing advocate charging that the court fell asleep at the switch in its legal analysis of the case.

The suit involves Robert Jacobsen, a scientist at the Lawrence Berkeley National Laboratory and a key member of the Java Model Railroad Interface Project, which develops open source model train software. Jacobsen sued Matthew Katzer and his company, Kamind Associates, alleging, among other things, violation of federal copyright law. Kamind is a software company that sells software for running model railroads to enthusiasts.

The facts of the case are as twisted and convoluted as a styrofoam-mountain switchback track, but what Jacobsen argued for the copyright claim, essentially, was that Katzer and Kamind violated copyrights on JMRI Project decoder definition files by reproducing and redistributing versions of the software without including the attribution required by the open source license utilized by the JMRI Project.

On the basis of this claim, Jacobsen moved for a preliminary injunction to prevent the defendants from further distributing the software. A district judge from the US District Court for the Northern District of California denied the motion, however, arguing that Jacobsen's claims fell under the law of contracts, not copyright. Thus, the option of a preliminary injunction was unavailable.

The court held that Jacobsen had implicitly promised not to sue for copyright infringement by distributing the source code under a nonexclusive license. The license was subject to certain conditions - which the defendants may have violated - but any transgression was a breach of contract, not a copyright violation, according to the court.

The only way that Jacobsen could make out a claim for copyright infringement, the judge said, was to demonstrate that the defendants had exceeded the scope of the license and engaged in activities that the license did not purport to allow.

The court then determined that the JMRI Project's license was essentially unlimited in scope: the potential licensees could make copies, distribute copies, modify the software and even include it in commercial distributions. The only conditions were that the licensees had to include all the original copyright notices and associated disclaimers, and could not claim the product as their own.

Even though the defendants violated the conditions, the court said, they had not exceeded the scope of the license, thus there was no copyright violation.

To demonstrate the court's reasoning, imagine a license that allowed the copying of source code, but not its distribution. If someone copies and distributes the software, they have exceeded the scope of the license and would be liable for copyright infringement for the distribution.

If a different license, however, grants a licensee nearly all the rights that the copyright holder possesses under US copyright law - as the license here does - but attaches the condition that the licensee must stand on one leg and bark like a dog every time he makes a copy of the source code, then the licensee violates the conditions of the contract when he copies the source code while merely standing on one leg, but does not exceed the scope since he is engaging in a right that was granted under the license.

To sum up, the court made two important holdings concerning the open source license involved here: 1) it is a contract; and 2) the attribution requirement was a condition of the contract, rather than a restriction on the scope of the license.

The Rub

While this is only a very preliminary holding in a district court case dealing with only one flavor of open source license, it is still very important to the open source community since there is currently a dearth of judicial opinions regarding open source licenses, and this interpretation may very well influence future readings.

Interpreting open source licenses as contracts removes the possibility of injunctive relief preventing license violators from further copying, modifying and/or distributing source code. Such a remedy is available for copyright violations, but not contract breaches.

For broken contracts, the remedy is damages - whatever it would take to put the plaintiff in the position he would have been in had the contract been fully performed. Since this is usually money, many providers of open source software would get the shaft, since they don't expect any remuneration for the copying of the software.

The possibility does exist that the court in this case will eventually determine that Jacobsen is entitled to specific performance of the defendants' obligations under the license. In other words, the court could order the defendants to insert the attribution into the license that they distribute with their products. Courts generally shy away from this solution, however, though the court may determine that it is an equitable remedy here.

This might represent the best possible outcome, since it would allow open source licensors to enforce the terms of their licenses, while at the same time eliminating the possibility that open source distributors could shut down useful derivative projects through injunctions by claiming a copyright violation as a result of a breach of the license's conditions.

Despite the possibility of specific performance, Mark Radcliffe - a senior partner at DLA Piper, General Counsel of the Open Source Initiative, head of the "Users" committee reviewing the GPLv3 draft, and general Silicon Valley heavy-hitter - calls the judge's decision "simply wrong" in a posting to his blog, "Law and Life: Silicon Valley".

Radcliffe argues that "[t]he use of the term 'condition' in the Artistic License should mean that the terms imposed are restrictions on the scope of the license," and points to language in an earlier decision in a suit between Sun and Microsoft over the Java license stating that restrictions on scope often carry language such as "subject to" or "conditioned upon."

The decision, if upheld, will take away a vital remedy from open source licensors, according to Radcliffe. He recommends that the open source community get behind Jacobsen in a push to have the decision reconsidered.

But not all experts agree. Evan Brown, a technology and intellectual property attorney with Hinshaw & Culbertson LLP in Chicago, and author of the cyberlaw blog, InternetCases.com, thinks that the judge properly distinguished between copyright and contract law here. "Even people who practice copyright law and software licensing lose sight of that distinction," Brown says. "I don't really see the error in the court's reasoning."

Brown does say that it's too early in the case to determine whether or not the judge has crafted entirely good law, because the case is still in its early stages and there is currently a shortage of judicially determined facts.

But with the experts in disagreement over the basic law governing the suit, and courts around the country possibly looking to the holdings for future guidance, this lawsuit over little railroads could turn into a major trainwreck for open source licenses, whichever way it turns out. ®