Jacobsen v. Katzer
|Intellectual property law|
|Sui generis rights|
Jacobsen v. Katzer was a lawsuit between Robert Jacobsen (plaintiff) and Matthew Katzer (defendant), filed March 13, 2006 in the United States District Court for the Northern District of California. The case addressed claims concerning copyright, patent invalidity, cybersquatting, and Digital Millennium Copyright Act issues relating to model train control software, developed by Jacobsen under an open source license.
The District Court first found in a summary judgement that the open source copyright did not support damages for copyright violation. This was reversed by the Circuit Court of Appeals, which held that such copyrights were enforceable. The case was settled out of court on February 16, 2010. This was a contentious case, with litigation encompassing 405 Federal District Court document filings and two appeals to the Circuit Court of Appeals.
The case is of general interest because it has clarified the enforceability of licensing for all parties (open-source software and proprietary software) under United States copyright law. It established that the conditions of the Artistic License are "enforceable copyright conditions".
Jacobsen, a model railroad hobbyist and a programmer, started the Java Model Railroad Interface (JMRI) Project along with other software developers in 2000, on the open-source incubation web-site Sourceforge.net. The goal of the project was to create interfaces that would allow model trains to be controlled on a layout of model train tracks. The software created by JMRI community was distributed without charge on the Internet, subject to the terms of the Artistic License. JMRI also sells custom software directly to modelers and to dealers for resale. JMRI's sales have qualified JMRI for membership as a business in the Model Railroad Industry Association (MRIA).
Katzer is the owner of KAMIND Associates Inc., an Oregon company doing business under the name KAM Industries. KAM produced and sold beginning in 1997 a commercial product for model trains, Train Tools, based on client-server software.
Katzer owns several patents that may apply to the model railroad industry, one of which he alleged the JMRI project may infringe. Jacobsen, however, alleged that Katzer's software utilizes textual files from the JMRI project, in violation of copyright and the DMCA. Katzer subsequently countersued Jacobsen for $6 million for copyright infringement.
In addition to the patent claims, there was also a dispute over web sites. In February 2004, Katzer registered the web domain decoderpro.com; however, DecoderPro is the trademarked name for a JMRI program. Jacobsen succeeded in obtaining the return of the domain name.
The summary judgment deals with a series of submissions presented by Jacobsen (plaintiff) and Katzer (defendant). Responses to initial submissions were filed on November 13. Both plaintiff and defendant further replied to responses on November 19 and 20. Prior to oral arguments on December 4, Judge Jeffrey S. White issued a Notice of Tentative Ruling and Questions, tentatively affirming in part and denying in part Jacobsen's motion for summary judgment and tentatively denying Katzer's motion for summary judgment.
On December 10, 2009, the judge denied Katzer's motion, concluding that Jacobsen could copyright the selection and ordering of the decoder definition files and could show monetary damages for copyright infringement. In the same ruling, he granted in part and denied in part Jacobsen's motion, finding that Katzer did register the decoderpro.com domain name in bad faith, that Katzer is liable for copyright infringement of the decoder definition files and that Katzer's counterclaim for copyright infringement is barred by the doctrine of laches (damaged argument), and ruled that Jacobsen had a license under an "Implied License" doctrine. The judge did not rule on damages for copyright infringement and determined that the questions of Katzer's knowledge or intent in removing copyright notices are triable issues.
The basic elements of the Settlement Agreement include:
- The parties stipulated to entry of an injunction permanently enjoining Katzer from "reproducing, by download or others, JMRI material, modifying JMRI material or distributing JMRI material”.
- The parties released each other from any legal action existing as of the date of the settlement., extending to "all claims based on or related to JMRI Material". This part of the agreement applied also to JMRI, JMRI end users, and JMRI developers until settlement was paid.
- The parties agreed to dismiss the pending Federal Circuit appeal, Jacobsen v Katzer et al., No. 2009-1221.
- Katzer/KAM agreed to pay Jacobsen a settlement fee of $100,000.
- Agreement terminated all Oral and Implied licenses between parties.
- Both parties agreed not to initiate legal proceedings against each other for 10 years, and to refer future disputes to arbitration. This applies only to Jacobsen and Katzer/KAM, not to JMRI, JMRI end users, or JMRI developers.
- The Agreement does not cover any newly issued Katzer IP, or any later JMRI software versions, appearing after the settlement date 
- Full settlement payment was made on March 5, 2010, terminating the Settlement mutual release.
KAM received a copyright infringement notification from Jacobsen on September 11, 2006, and on the same day Jacobsen filed an amended complaint that included a claim for copyright infringement. On the same day KAM removed allegedly infringing materials from KAM's website. In Jacobsen's declaration, in support of a motion for a preliminary injunction, he specifically identified examples of alleged copyright infringement.
In August 2007, the district court denied Jacobsen's request for declaratory judgment, holding that the "defendants' alleged violation of the conditions of the license may have constituted a breach of the nonexclusive license, but does not create liability for copyright infringement." The judge stated that JMRI failed to allege claims that were the proximate cause of a breach of the Artistic License.
In August 2008, the United States Court of Appeals for the Federal Circuit vacated the district court's ruling, holding that the terms of the Artistic License are enforceable copyright conditions, and sent the case back to the district court. The appeals court said, "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," and cited as examples "the GNU/Linux operating system, the Perl programming language, the Apache web server programs, the Firefox web browser, and a collaborative web-based encyclopedia called Wikipedia." Professor Lawrence Lessig called the ruling "a very important victory" that applies to all open source licenses, and many other news organizations commented on the finding.
In January 2009, the District Court again ruled on the preliminary motions, saying that it would hear Jacobsen's copyright claims but denying Jacobsen a preliminary injunction due to a lack of evidence showing any specific and actual harm.
In June 2009, the Software Freedom Law Center filed an amicus brief before the Court of Appeals for the Federal Circuit (CAFC) calling for injunctive relief for open source developers. In the brief, SFLC argues that a Free, Libre, and Open Source Software (FLOSS) developer whose license has been violated should be able to call upon the courts to prevent further infringing distributions. The brief outlines harms to developers, development communities, and project productivity related to open source license violations.
Jacobsen based his case on an assertion of a copyright on behalf of a free software project that is otherwise extremely generous in granting permissions for downstream copying, modifying, and distributing its works. Jacobsen explains that the basis of his copyright claims is that 102 files defining 291 decoders of the 500 decoders available on the market are at issue in this claim. JMRI developers chose the decoders they found most interesting and useful, and then structured the resulting definition files in a unique way, not based upon manufacturer or NMRA approaches, but reflecting the judgment of the JMRI developers as to their preferred arrangement, particularly choosing an arrangement appropriate for integrating these files with the rest of the JMRI software.
Katzer asserted  that after he shipped model train software that used a client/server protocol in July 1997, he filed a patent application within the United States one year statutory period, namely in June 1998, with the United States Patent and Trademark Office, consisting of 53 method claims for client/server control of model trains by computer software.
On April 14, 2002, the JMRI project published a new capability in their code, over 4 years after KAM presented their client/server architecture, which allowed a computer to control the layout of a model railroad via a client/server protocol. On April 17, 2002, Katzer filed a continuation patent application, with a priority date back to 1998, with the patent office claiming those exact capabilities. On March 11, 2003 the patent office granted the patent (the "'329 patent") claiming those exact capabilities. DigiToys Systems also noted WinLok released in 1998 which is not prior art. This information was provided to the file history of the '329 patent, by the two model railroad hobbyists, which is the parent of the pending continuation patent. Manual Patent Examining Procedures 707.05 states "In all continuation and continuation-in-part applications, the parent applications should be reviewed for pertinent prior art." Accordingly, the references cited by the two model railroad hobbyists were before the patent office in the '329 patent.
On March 8, 2005, Katzer sent patent infringement letters and bills to Jacobsen, claiming that the code in the JMRI project infringed his patent, and that more than $200,000 was due for licensing fees of previously distributed versions of the project. Jacobsen filed for a declaratory judgment against Katzer. In it, Jacobsen alleged that the June 1998 patent is invalid due to prior art, that Katzer deliberately failed to provide the patent office with the prior art, and that Katzer's patents had been granted by the patent office in error.
On February 1, 2009, Katzer filed two disclaimers with the U.S. Patent Office, effectively making two of his patents unenforceable in their entirety. The result of the disclaimer was to remove all patent issues from the case.
KAM stated that the disclaimer of the '329 patent was purely based upon economic considerations to avoid the cost of patent litigation
In July, 2001, JMRI began calling one of its subprojects "DecoderPro.". In February, 2004, Katzer purchased the domain decoderpro.com. After this was mentioned on a (non-JMRI) model railroad software mailing list., Jerry Britton (a JMRI user/member) purchased and began using the domain name computerdispatcherpro.com, in apparent violation of Katzer's trademark on Computer Dispatcher. He also threatened to point KAM's computerdispatcherpro.com to a "good porn site". Katzer sued Britton to force him to stop infringing on the computerdispatcherpro.com trademark, and prevent Britton from pointing the domain name to such a site, and Jacobsen asked Katzer to transfer the decoderpro.com domain to him.
A settlement agreement between Britton and Katzer resulted in Britton transferring computerdispatcherpro.com to Katzer, and Katzer in turn transferring decoderpro.com to Britton. The agreement allowed Britton to point the domain to the JMRI decoderpro project site, but also prohibited Britton from transferring the domain name without Katzer's permission.
Jacobsen included a demand for return of decoderpro.com in his lawsuit against Katzer. He also filed an action with the World Intellectual Property Organization (WIPO) against fellow JMRI user Jerry Britton, asking that they settle the matter per the Uniform Domain Name Dispute Resolution Policy (UDNDP); Britton did not respond to the action. On July 26, 2007, WIPO found in favor of Jacobsen, ruling that Katzer's actions were found to be in "bad faith", since "there was essentially a purpose on the part of Katzer to disrupt the business of a competitor by interfering with Complainant's exercise of his trademark rights.". In the December 2009 Summary Judgement decision, the Federal Court concurred that Katzer had illegally cybersquatted on the decoderpro.com domain name.
Digital Millennium Copyright Act claims
In his second amended complaint against Katzer, Jacobsen included a section alleging that Katzer violated section 102 of the Digital Millennium Copyright Act by removing or altered copyright management information.
In response, Katzer filed a motion to dismiss the DMCA claims, stating that "information [that] does not encrypt or control access ... but ... 'functions to inform people who make copyright decisions" did not fall under the DMCA. However, in December 2009, the court ruled that Katzer's removal of the JMRI copyright information was a removal of copyright management information under the DMCA, leaving the question of intent under the DMCA, and damages under the DMCA to be proved at trial.
- "Order of Dismissal, Federal District Court Doc.#404". Trainpriority.com. March 5, 2010. Retrieved 2010-03-16.
- "Appeal from the U.S. District Court for the Northern District of California". Retrieved 2009-10-03.
- "SourceForge.net: JMRI Model Railroad Interface". Retrieved 2008-08-23.
- "Second Amended Complaint for Declaratory Judgment, Violations of Copyright and Federal Trademark Laws, and State Law Breach of Contract against all defendants". Retrieved 2009-10-03.
- "MRIA Reporter Newsletter". Trainpriority.com. May 2005. "May 2005 Reporter Newsletter, JMRI admitted as a new business member"
- "Katzer's answer to Jacobsen's Second Amended Complaint and counterclaim against Robert Jacobsen, Feb 2009". Retrieved 2009-10-22.
- "Jacobsen/JMRI KAM software timeline". Trainpriority.com.
- "Letter to Matt Katzer regarding decoderpro.com, November 2004". Retrieved 20096-10-03.
- "Jacobsen's trademark on DecoderPro, as listed at the website of the United States Patent and Trademark Office". Retrieved 2009-11-19.
- "Jacobsen's Motion for Summary Judgment, October, 2009". Retrieved 2009-10-31.
- "Katzer's Motion for Summary Judgment, October, 2009". Retrieved 2009-10-31.
- "Jacobsen's Posted Motion for Summary Judgment". Retrieved 2009-10-31.
- "KAMIND's and Katzer's Posted Motion for Summary Judgment". Retrieved 2009-10-31.
- "Jacobsen's Posted Response to Katzer's Summary Judgment Submission". Retrieved 2009-11-14.
- "Jacobsen's attorneys supporting documentation for Jacobsen's response to Katzer's Motion for Summary Judgment". Retrieved 2009-11-14.
- "Katzer's Posted Response to Jacobsen's Summary Judgment Submission". Retrieved 2009-11-14.
- "Katzer's attorneys supporting documentation for Katzer's response to Jacobsen's Motion for Summary Judgment".
- "Plaintiff's Reply Memorandum in support of Motion for Summary Judgement". Retrieved 2009-11-27.
- "Declaration of Victoria K. Hall". Retrieved 2009-11-27.
- "Defendant's Matthew Katzer and KAMIND Associates, Inc's reply in support of Defendant's Motion for Summary Judgement". Retrieved 2009-11-27.
- "Judge White's Notice of Tentative Ruling and Questions RE Motions for Summary Judgement". Retrieved 2009-12-03.
- "Judge White's Order Granting in Part and Denying in Part Plaintiff's Motion for Summary Judgement and Denying Defendants Motion for Partial Summary Judgement". Retrieved 2009-12-12.
- "Key dates". Trainpriority.com.
- "Settlement Agreement Federal District Court Doc.#402-1". February 16, 2010. Retrieved 2010-03-03.
- "Injunction, Federal District Court Doc.#403". February 22, 2010. Retrieved 2010-03-03.[dead link]
- "District Court ruling, August 2007". Retrieved 2009-10-03.
- "Amicus Brief Urging Reversal". Retrieved 2009-10-03.
- "Lessig 2.0: "huge and important news: free licenses upheld," August, 2008". Retrieved 2009-10-03.
- "Open Source Code on Firmer Ground After Jacobsen Ruling, August 14, 2008". Retrieved 2009-10-03.
- "Federal Circuit Says Open Source License Conditions are Enforceable as Copyright Condition, August 13, 2008". Retrieved 2009-10-03.
- Markoff, John (2008-08-14). "New York Times: Federal Circuit Says Open Source License Conditions are Enforceable as Copyright Condition, August 13, 2008". The New York Times. Retrieved 2009-10-03.
- "SFLC Files Amicus Brief in Jacobsen v. Katzer". Retrieved 2009-10-03.
- "Answer- Shows 1997 date, Page 6".
- "United States patent number 6,065,406". Retrieved 2009-10-03.
- "United States patent number 6,530,329". Retrieved 2009-10-03.
- "JMRI Infringement".
- "Bill to Jacobsen dated August 18, 2005". Retrieved 2008-10-03.
- "Bill to Jacobsen dated October 15, 2005". Retrieved 2009-10-03.
- "Disclaimer of patent 6,530,329". Retrieved 2009-10-03.
- "WIPO finding on Robert G. Jacobsen v. Jerry R. Britton, July, 2007". Retrieved 2009-10-03.
- Yahoo! Groups
- "Barbara W. Dawson and Matthew A. Katzer v. Jeremy Britton, November, 2004". Retrieved 2009-10-03.
- "Jerry Britton (JMRI user) threatens to point Katzer Domain to a porn site on Oct 26, 2004".
- "Katzer's third motion to dismiss "for failure to state a claim upon which relief can be granted," February, 2008". Retrieved 2009-10-03.