In the latest instalment in the Jacobsen v. Katzer saga, the District Court for the Northern District of California found that open source files for a model train software application were eligible for copyright protection. Even though the copyright owner provided the code free of charge, the court allowed the copyright owner's damages claim to proceed because there was evidence attributing monetary value to the work performed by the software developers.
In this case, the plaintiff Jacobsen was the lead member of the Java Model Railroad Interface open source project (JMRI). That organization had developed a software application called Decoder Pro for model trains enthusiasts. Jacobsen owns the copyright over certain Decoder Pro files, and made the files available for the public to download free of charge, under a so-called "Artistic License" (a form of open source license). The license permits users to copy, modify or distribute the licensed content provided that they restate the attribution information found in the software, repeat all copyright notices, and document any modifications made to the files.
Jacobsen sued the defendants for copyright infringement, alleging that that they had downloaded his files, included portions of the files in their competing software program, and failed to comply with the terms of the artistic license.
The US Federal Circuit Court of Appeals ruled that failing to comply with the terms and conditions of an artistic license could attract liability for copyright infringement. The appeals court remanded the case back to the district court to consider whether there was infringement on the facts of the case.
The district court has since denied the defendants' motion for partial summary judgment and granted the plaintiff's summary judgment motion in part. In its decision, the court made important rulings on three main issues:
- Whether Jacobsen's work enjoys copyright protection. In their motion for partial summary judgment, the defendants argued that Jacobsen's work was not sufficiently original to be copyrightable. However, the district court held that copyright was capable of subsisting in the text files. It observed that there was "undisputed evidence in the record indicating that Plaintiff and the other members of the JMRI group invested a sufficient amount of creativity in the selection, ordering and arrangement of the data collected in the subject copied files" and that "these selections and choices about arrangement reflect the minimal amount of creativity required to satisfy the low threshold for demonstrating originality." It therefore denied the defendants' summary judgment on that issue. Finding that Jacobsen had a valid copyright and that the defendants had copied his files, the court granted Jacobsen summary judgment on his copyright infringement claim (on the liability issue).
- Whether copyright damages are available. The defendants contended that Jacobsen's copyright claim should be dismissed because he had not suffered damages, as he had distributed the works via the Internet for free. In denying the defendants' motion, the court stated that copyright owners are entitled to recover compensatory damages for infringement and there was "evidence in the record attributing a monetary value for the actual work performed by the contributors to the JMRI project."
- Whether the defendants' removal of attribution information constitutes a violation of the Digital Millennium Copyright Act (DMCA). Jacobsen alleged that the defendants had violated a section of the DMCA, which protects the integrity of copyright management information. Specifically, he contended that the "author's name, a title, a reference to the license and where to find the license, a copyright notice, and the copyright owner" constituted "copyright management information" within the meaning of the DMCA. He argued that, by removing the attribution information from his files and making copies of them, the defendants violated the DMCA. The court found that Jacobsen had satisfied all of the elements of DMCA claim, except there remained a question about the defendants' intent and knowledge. As that raised a triable issue, the court only granted Jacobsen's motion for summary judgment in part on the DMCA claim.
McCarthy Tétrault Notes:
This decision confirms the enforceability and effectiveness of open source licensing in the form of artistic licenses.
The case is also noteworthy in that a member of the open source community sought to leverage the DMCA to protect his licensing model and moral right of paternity (right to be identified as author) inherent in open source licensing. While there are certain circles within the open source community that oppose the DMCA, this case suggests that there are potential synergies between open source license enforcement and the availability of rights management information protection in the DMCA.
It is interesting to ponder how the rights management part of the case would have been decided in Canada. Since Canada has not enacted legislation to implement the WIPO Copyright Treaty (WCT), as the US and many of our other trading partners have, Canada has no laws that explicitly protect rights management information. Jacobsen would have had to argue that the deletion of the attribution information infringed his moral right of paternity under the Copyright Act.
That might have gotten him some relief, but it would have been limited to information that identified him as author, not to all of the other information recognized by the WCT as rights management information. Under Article 12 of the WCT, protection is mandated for "information which identifies the work, the author of the work, the owner of any right in the work, or information about the terms and conditions of use of the work, and any numbers or codes that represent such information, when any of these items of information is attached to a copy of a work or appears in connection with the communication of a work to the public."
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