Open source movement gets big boost from copyright laws and DMCA in Jacobsen v Katzer

It is sometimes believed that the open source movement and copyright are incompatible. In fact, the open source community relies on effective copyright protection to support its licensing model.

A case in point is Jacobsen v Katzer. In a landmark decision last year, 535 F.3d 1373  (Fed. Cir. 2008), the US Federal Circuit Court of Appeals (CAFC) decided that failure to comply with the conditions terms of the Artistic License could lead to copyright infringement. The CAFC remanded the case back to the district court to consider whether there was infringement on the facts of the case.

Last week, the district court granted summary judgment to Jacobsen making several important rulings.

The court held that copyright was capable of subsisting in the Decoder Definition Text Files developed as part of the Java Railroad Interface (JMRI) open source project. The court found that there was “undisputed evidence in the record indicating that Plaintiffs 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. See, e.g., KeyPublications, 945 F.2d at 513.”

The court also held that even though this was an open source project, that Jacobsen was entitled to recover compensatory damages in the amount of actual damages suffered or the disgorgement of profits by the infringer attributable to the infringement. The amount still needs to be determined.

Perhaps the most interesting ruling in the case was the use of the DMCA by a member of the open source community to protect the licensing model and authors’ moral right of paternity (right to be identified as author) inherent in open source licensing. Jacobsen had alleged that the information contained in the JMRI Project Decoder Definition Files constituted “copyright management information” within the meaning of the DMCA. He argued that by removing the information and making copies of the files, the defendants violated 17 U.S.C. § 1202(b), which protects the integrity of copyright management information.

The court agreed with Jacobsen ruling that they violated the DMCA by downloading the files and removing the names of the authors and copyright holder, title, reference to the license, where to find the license and the copyright notices, and by renaming the files and using his their own copyright notice and naming themselves as author and copyright owner.

According to the court:

“Under the statute, the term copyright management information (“CMI”) means “any of the following information conveyed in connection with copies … of a work …, including digital form,” including “the name of, and other identifying information about the author of the work, … the copyright owner of the work, … [and other] information identifying the work.” 17 U.S.C. § 1202(c). In IQ Group v. Wiesner Publishing, Inc., the court, at the summary judgment stage, determined after a lengthy review of the legislative history of the DMCA that the statute should be construed to protect CMI performed by the technological measures of automated systems. 409 F. Supp. 2d 587, 597 (D. N.J. 2006). In McClatchey v. The Associated Press, because the plaintiff had used a computer software program to print her title, name and copyright notice on copies of her photograph, the district court determined that this technological process came within the term CMI as defined in section 1202(c). 2007 WL 776103, *5 (W.D. Pa. March 9, 2007).

The information Plaintiff contends consists of copyright management information in his complaint is the “author’s name, a title, a reference to the license and where to find the license, a copyright notice, and the copyright owner.” (Second Amended Complaint, ¶ 479.) Plaintiff also alleges that he used a software script to automate adding copyright notices and information regarding the license and uploaded the files on the Internet through, an open source incubator website. (Id., ¶¶ 267-68, 480.) Plaintiff contends that Defendants downloaded the files and removed the names of the authors and copyright holder, title, reference to license, where to find the license and the copyright notices, and instead, renamed the files and referred to their own copyright notice and named themselves as author and copyright owner. (Id., ¶¶ 271-76; 289-291.)

Based on the allegations in the complaint, the Court finds that there has been some technological process employed to protect the author’s name, a title, a reference to the license and where to find the license, a copyright notice, and the copyright owner of Plaintiff’s work. Further, there is no dispute that Defendants employed a tool to translate the JMRI files to a format for their own use without copying this attribution information. Therefore, these elements of the DMCA claim  are established in Plaintiff’s favor. However, as Plaintiff concedes, there remain disputed and therefore triable issues of fact regarding Defendants’ knowledge and intent. Accordingly, the Court GRANTS IN PART AND DENIES IN PART Plaintiff’s motion for summary judgment as to the DMCA claim.”

The case is a victory for the open source community. It also shows how copyright laws including the US DMCA can be used by rights holders to protect their works and licensing models in that country, whether open source or proprietary models.

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 all 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 information at issue infringed his moral right of paternity under the Copyright Act.

That might have gotten him some relief, but it would have limited to information that identified him as author, not all of the other information that the WCT requires. 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”.

Perhaps, it is time for the open source community to support legislation that implements the WCT so that Canadian contributors to open source projects will have equal protection in Canada as their US, EU and international counterparts have in their countries.

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3 thoughts on “Open source movement gets big boost from copyright laws and DMCA in Jacobsen v Katzer”

  1. Darryl Moore says:

    Barry. Two things you do not mention.

    1) Open Source, and the GPL in particular, were created in response to bad and excessive copyright laws. It was, in Stallman’s words “A hack on the copyright system, it turns the concept of copyright upside down,” Therefore if we had no copyright, we would have no need for open source in the first place, so it is a bit of a mistake to suggest that open source is better of with stronger copyright laws.

    2) While you say the issue of RMI was better dealt with under the DMCA, you side stepped the more important and broader question of whether our existing laws would have provided the plantiff with a fair result. If the defendant can already be easily convicted of copyright infringement, with fair compensation to the rights holder, what does it matter the the DMCA would have addressed one smaller aspect better?

    The issue with the DMCA is not how well it addresses legitimate grievances from legitimate rights holders. I’m sure it does that quite well, even if it is redundant. The issue with the DMCA is how readily it can be abused to violate others fair use and free speech rights. Sadly it has proven itself to be quite effective at this as well.

  2. Thank you for the comment.

    1) Open Source has many different models, many of which depend extensively on copyright. the copyright system provides the flexibility to enable authors to give works away for free or to restrict their use.

    2) Copyright would not have provided any remedy for the removal of the RMI, except for the very limited protection mentioned in my post.

    3) I do not agree with your assessment about the DMCA. These criticisms have been greatly inflated by anti-copyright advocates. The early tests of the scope of the DMCA clarified their scope to legitimate interests of rights holders.

  3. Darryl Moore says:

    1) I am not disagreeing here. Yes open source licences require copyright law so that they are enforceable. The point I was making is why they exist in the first place. As a response to excessive copyright laws. BTW, a ‘copyright system’ does not aid an author in anyway to “give works away for free”. Only the latter part of your statement is true. They “restrict their use”

    2) You again miss my point which is: If adequate compensation could be gained through existing copyright law, then why do we need a law for the protection of RMI?

    3) We’ll have to agree to disagree on this one, but I’m sure I know a lot of Linux developers, a Russian security expert, and a hacker magazine publisher who would strongly disagree with this statement. There are a few companies also that might be making various backup and video juke box software if not for the DMCA. Perhaps it is the definition of “legitimate interests” upon which we truly disagree.

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