(OT) - Major Blow to Copyleft Theory

Alexander Terekhov alexander.terekhov at gmail.com
Thu Jan 24 09:19:46 UTC 2008

On Jan 22, 2008 12:34 PM, Alexander Terekhov
<alexander.terekhov at gmail.com> wrote:
> On Aug 27, 2007 5:38 PM, Lawrence Rosen <lrosen at rosenlaw.com> wrote:
> [...]
> > The Jacobsen v. Katzen case is not a blow to anything other than perhaps (in
> > a limited way) the current plaintiff. The parties even admit that the
> > software at issue isn't used by either of them any more; in that sense the
> > case is moot. That matter should, in my opinion, be left to be resolved in
> > district court on its own facts on the remaining causes of action rather
> > than be blown up into a dramatic appeal in the Federal Circuit about
> > "copyleft" or whether open source licenses are licenses or contracts. Its
> > facts don't justify such drama.
> Well well well.
> U.S. Court of Appeals for the Federal Circuit
> 2008-1001
> Exciting "license to the world must be a bare license" case.
> http://jmri.sourceforge.net/k/docket/cafc-pi-1/AppellantsBrief.pdf
> I also notice OSI involvement as
> http://jmri.sourceforge.net/k/docket/cafc-pi-1/ccc_brf.pdf

The authors of the Amicus Brief are repackaging the old Eben
Moglen theory "a license is not a contract" when they
complain about the District Court ruling:

"It reasoned that "the scope of the [Artistic License] is .
. . intentionally broad" and from this concluded that
"[t]he condition that the user insert a prominent notice of
attribution does not limit the scope of the license."
(A11). The District Court reached this conclusion by
misreading both the applicable case law and the Artistic

SURPRISE !!!!! Curiously, the Amicus authors cite to the very
Federal Circuit case that dooms their arguments. In Storage
Technology Corp. v. Custom Hardware Eng'g & Consulting, Inc., 421
F.3d 1307 (Fed. Cir. 2005) the Court clearly stated:

"In light of their facts, those cases thus stand for the
entirely unremarkable principle that "uses" that violate a
license agreement constitute copyright infringement only
when those uses would infringe in the absence of any
license agreement at all."; Storage Technology (supra).

There is no exclusive right enumerated in 17 USC sec. 106
involving "notice of attribution". Only the
following exclusive rights are stated:

(1) to reproduce the copyrighted work in copies or
(2) to prepare derivative works based upon the copyrighted
(3) to distribute copies or phonorecords of the copyrighted
work to the public by sale or other transfer of ownership,
or by rental, lease, or lending;
(4) in the case of literary, musical, dramatic, and
choreographic works, pantomimes, and motion pictures and
other audiovisual works, to perform the copyrighted work
(5) in the case of literary, musical, dramatic, and
choreographic works, pantomimes, and pictorial, graphic, or
sculptural works, including the individual images of a
motion picture or other audiovisual work, to display the
copyrighted work publicly; and
(6) in the case of sound recordings, to perform the
copyrighted work publicly by means of a digital audio

Hence even in the complete *absence* of a license, no
copyright infringement is possible concerning attribution.


US unrecognised Berne moral rights aside, that is.

Katzer and Kamind Associates,. Inc. argued:


C. Plaintiff has waived his ability to sue under the Copyright Act

Count 8 of the amended complaint alleges that defendants, "without
permission or consent, has [sic] made copies, distributed copies to
the public, or created derivative works in violation of the exclusive
rights." Amended Complaint, ¶ 100. However, as explained in the
amended complaint, the copyrighted decoder definition files are
subject to an open source software license that allows licensees to
make copies, distribute and create derivative works of the software
provided the licensees give the JMRI Project credit. Amended
Complaint, ¶ 2, 41.

The Ninth Circuit has held that open source licensors such as
Jacobsen waive their right to sue for copyright infringement and can
only sue for breach of contract. Sun Microsystems, Inc. v. Microsoft
Corp., 188 F.3d 1115, 1121 (9th Cir. 1999). In Sun Microsystems, Sun
and Microsoft entered into a computer software licensing arrangement
involving Java, a computer programming language developed by Sun. Id.
at 1117. Sun granted Microsoft broad rights to use the language
provided that Microsoft make available only products that are
compatible with Sun standards. Id. at 1118. Sun filed suit against
Microsoft for copyright infringement alleging that Microsoft had
exceeded the scope of the license by creating enhanced versions of
Java that were fully operational only on Microsoft systems. Id. The
Ninth Circuit held that, before Sun could avail itself of the
benefits of copyright law, it must "definitively establish that the
rights it claims were violated are copyright, not contractual
rights." Id. at 1122. This determination, according to the Ninth
Circuit, hinges on the scope of the license agreement. Id. at 1121.
"Generally, a copyright owner who grants a nonexclusive license to
use his copyrighted material waives his right to sue the licensee for
copyright infringement and can only sue for breach of contract." Id.
(citing Graham v. James, 144 F.3d 229, 236 (2nd Cir. 1998)). In other
words, to bring a copyright infringement claim, Jacobsen must
establish that the defendants have violated at least one of the
exclusive rights granted to copyright holders under 17 U.S.C. § 106,
and not a right conferred by the license or contract. Sun
Microsystems at 1122; see also A&M Records, Inc. v. Napster, Inc.,
239 F.3d 1004, 1013 (9th Cir. 2001). Section 106 of the Copyright
Act grants a copyright holder the exclusive right to reproduce,
prepare derivative works of, distribute, display, and perform the
copyrighted material. 17 U.S.C. § 106.

Jacobsen admits in the amended complaint that the open source
software license that governs the decoder definition files allows the
general public to reproduce, prepare derivative works of, and
distribute the decoder definition files. Amended Complaint, ¶ 2, 41.
The restrictions placed on the distribution of the decoder definition
files in the open source license require the licensee to, inter alia,
give "appropriate credit" to JMRI. Id. The amended complaint alleges
that the defendants "infringed the copyright" by failing to give
credit to the JMRI Project when they allegedly distributed the decoder
definition files. Amended Complaint, ¶ 41. However, "giving credit to
the JMRI project" is not a right protected by section 106 of the
Copyright Act. Any such "right" is a right created by the open source
license that governs the JMRI decoder definition files. Assuming for
the sake of argument that this right has been violated, Jacobsen has,
at best, a breach of license agreement claim against the licensee,
not a copyright infringement claim. By granting a nonexclusive open
source license to the general public to use, reproduce and distribute,
Jacobsen has waived his right to sue anyone for copyright infringement.


Well, most recently, Jacobsen raised the claim under DMCA
anticircumvention statute regarding "copyright management information"
(CMI) asserting that

"Plaintiff here uses an automated procedure for adding CMI to his
works. SAC ¶¶ 267, 480. Thus, because he uses the same type of
automated methods to add CMI, that information falls within the
meaning of the statute under the McClatchey Court's reading of the IQ
Group decision."


That's in reply to Katzer and Kamind Associates,. Inc. arguing that

3. Plaintiff's Digital Millennium Copyright Act Count fails to state a claim

Plaintiff's amended complaint alleges that the information contained
in the Decoder Definition Files constituted "copyright management
information" within the meaning of the Digital Millennium Copyright
Act (DMCA) and that by removing this information and making copies of
the Decoder Definition Files, defendants violated 17 U.S.C. § 1202(b),
the statute that protects the integrity of copyright management

As a threshold matter, the information Plaintiff alleges constitutes
"copyright management information" under Section 1202 is not
"copyright management information" as a matter of law. The information
alleged to be "copyright management information" in the Decoder
Definition files 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." Amended Complaint, ¶ 479. Despite being in existence
for nine years, there are only three reported cases dealing with
Section 1202(b) of the DMCA.1 At first blush, Plaintiff's information
appears to be covered by the DMCA as "copyright management
information." Under the DMCA, the term "copyright management
information" is defined, inter alia, as "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). However, the District Court for the District of
New Jersey has held that a company's logos and hyperlinks (directly
analogous to the "copyright management information" cited in
Plaintiff's amended complaint such as the author's name, etc.) do not
fall within the definition of "copyright management information"
because this information "does not function as a component of an
automated copyright protection or management system." IQ Group v.
Wiesner Publ'g, Inc., 409 F.Supp.2d. 587, 597 (D. N.J. 2006) ("IQ
Group"). The Court held that:

To come within § 1202, the information removed must function as a
component of an automated copyright protection or management system.
IQ has not alleged that the logo or the hyperlink were intended to
serve such a function. Rather, to the extent that they functioned to
protect copyright at all, they functioned to inform people who would
make copyright management decisions. There is no evidence that IQ
intended that an automated system would use the logo or hyperlink to
manage copyrights, nor that the logo or hyperlink performed such a
function, nor that Weisner's actions otherwise impeded or circumvented
the effective functioning of an automated copyright protection system.

Id. The Court reached this conclusion by reviewing the legislative
history and purpose of the DMCA and concluded that the statute is
intended only to protect "technological measures" which either
"effectively control access to a work or effectively protects the
right of a copyright owner." Id. An example of such technological
measures would be the encryption on digital music or video to prevent
copying. Mere information that does not control access or reproduction
of work is covered by the Copyright Act, not the DMCA. Id. Plaintiff's
information contained in the Decoder Definition Files, i.e. the
author's name, a title, a reference to the license, a copyright notice
and the copyright owner, is mere information similar to the logo at
issue in IQ Group. This information does not encrypt or control access
to the work, but rather "functions to inform people who make copyright
decisions." See id. As mere information that is not a technological
measure, the information contained in the Decoder Definition Files is
not "copyright management information."

After reviewing the legislative history and scholarly articles on the
matter, the District Court for the Central District of California
Western Division expressly adopted this "narrowing interpretation" of
copyright management information under the DMCA in IQ Group. Textile
Secrets Int'l, Inc. v. Ya-Ya Brand, Inc., 2007 U.S. Dist. LEXIS 83339
*45 (C.D. Cal. 2007). Since the information contained in Plaintiff's
Decoder Definition Files is not copyright management information as a
matter of law, Court Five of Plaintiff's Amended Complaint should be
dismissed without leave to amend.
Plaintiff's DMCA claim, however, suffers from a more fundamental
defect. A sine qua non to liability under Section 1202 is that
Defendants must have "knowingly (or having reasonable grounds to know)
induced, enabled, facilitated or concealed a copyright infringement."
17 U.S.C. §§ 1202(a), (b). Despite the stated mental element, the
requirement as to infringement is based on an objective standard,
since, as the leading commentator puts it, any other construction
leads to results that are "bizarre and pointless." Nimmer on
Copyright, 3-12A, Section 12A.10[2], page 137 (2007).

In this case, Defendants have not and could not infringe Plaintiff's
exclusive copyright rights, as Plaintiff has waived his copyright
rights by granting the public a nonexclusive license to use,
distribute and copy the Decoder Definition Files. See Defendant's
Response to Plaintiff's Motion for Preliminary Injunction, page 5
[Dkt.# ]. This nonexclusive license is unlimited in scope and allows
the user to distribute the software with very limited restrictions.
Id. As this Court has already found, Plaintiff's nonexclusive license
acts as a waiver of Plaintiff's copyright rights and Plaintiff does
not have a claim against Defendants for copyright infringement. Order
Granting Defendants' Motion to Dismiss, Granting in Part and Denying
in Part Defendants' Motion to Strike, and Denying Plaintiff's Motion
for Preliminary Injunction at 9-11 [Dkt.158]. Since Plaintiff's have
waived all copyright rights they had to the Decoder Definition Files,
Defendants, cannot as a matter of law, "induce, enable, facilitate, or
conceal" an infringement of Plaintiff's exclusive copyright rights
under the DMCA. Therefore, Count Five of Plaintiff's Amended Complaint
should be dismissed on both bases without leave to amend.






"Because of their informal and diffuse nature, open source groups are
vulnerable to theft of their intellectual property. That theft, in the
form of copyright infringement, happened in this case, and Jacobsen
sought a preliminary injunction to enjoin Katzer and KAMIND's


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