New scares loom over open source license lawsuits

Within the short "tradition" of open source lawsuits, users have typically needed to worry their heads only about breach of contract concerns. But last summer, in a case called Jacobsen v. Katzer, the US Court of Appeals for the Federal Circuit opened up copyright claims as a new route for people looking for financial damages.

Open source developer Robert Jacobsen sued Matthew Katzer and Kamind Associates, producers of commercial software used with model trains, alleging that Katzer and his company violated copyrights around the Java Model Railroad Interface (JMRI), an open source software project licensed under what's called the Artistic License.

In a separate action, the open source group known as The Free Software Foundation (FSF) has now filed suit against Cisco, charging that Cisco is infringing various copyrights licensed under two other types of licenses: the General Public License and Lesser General Public License.

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Some have hailed last August's ruling in Jacobsen v. Katzer as a victory in terms of protecting the intellectual property rights of open source developers. On the other hand, with new legal precedent now set, users of open source -- including both corporate and commercial developers incorporating open source code into their software -- now need to exercise extra caution to avoid getting hauled into court, according to Jonathan Moskin and Howard Wettan, two attorneys at White & Case LLP.

Although leaving some questions still unanswered, last summer's court decision "held that breach of an open-source license does not merely permit a breach of contract claim, but that violating the 'conditions' to the intellectual property license creates a cause of action for copyright infringement -- with associated [financial] remedies," the two lawyers wrote, in a recent article in The Intellectual Property Strategist, a legal newsletter.

During an interview with Betanews, Moskin contended that after the article with Wettan was published, he was accused by one tech publication of "being some sort of a shill" for Microsoft. "But nothing was further from my mind," Betanews was told. Moskin said that instead, he'd simply wanted to warn users and their own lawyers about some new legal risks stemming from open source code.

White & Case LLP, the firm where Moskin works, has represented Microsoft in anti-trust actions before the European Union. The tech publication that made the accusation against Moskin has since apologized, according to Moskin.

"I'd just like to put out a call to developers that they need to be more careful in how they compile code," he told Betanews.

Specifically, the US Copyright Act provides for statutory damages of between $750 and $150,000 "for willful misconduct" per infringed work, Moskin and Wettan wrote in their article.

"An additional consequence of the Federal Circuit's opinion is that, by pursuing copyright claims, an open source licensor may now be able to sue downstream licensees for copyright infringement."

During the interview with Betanews, Moskin offered the example of a bank hiring a software developer to write a piece of billing software for use by its customers.

"Let's say the developer downloads a piece of open source software. The bank thinks its code is proprietary, but it actually incorporates open source. Other businesses [using the billing software] might then also be liable for copyright infringement," Moskin illustrated.

After last summer's ruling in Jacobsen v. Katzer, the case was remanded back to District Court in California. As part of a decision issued by the District Court in January, Jacobsen was denied a preliminary injunction against Katzer due to a lack of evidence showing actual harm "suffered or immiment" due to any copyright infringement. Yet that ruling does not prevent the District Court from issuing an injunction after hearing the merits of the case, according to court documents.

Meanwhile, in its case against Cisco, the FSF is demanding not just actual or statutory damages, but also the return of any profits made by Cisco due to Cisco's alleged copyright violations.

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