8/13. The U.S. Court of Appeals (FedCir) issued its opinion [16 pages in PDF] in Jacobsen v. Katzer, a copyright case involving the ability of a copyright holder to dedicate certain work to free public use and yet enforce an open source copyright license to control the future distribution and modification of that work.

The District Court denied the copyright holder's motion for a preliminary injunction against a copier who did not comply with the terms of an open source license. The Court of Appeals vacated and remanded the judgment of the District Court.

Laurence Lessig, the founder of the Creative Commons, which filed an amicus brief [PDF], wrote in his web site that "this is huge".

The Court of Appeals reasoned that the open source license in this case allowed anyone to download and use the copyrighted software, for free, but subject to certain conditions, such as restating the license and providing attribution. The key aspect of this opinion is the Court's conclusion that these are conditions, rather than covenants. That is, by violating these conditions, the copier no longer had a license to copy, and was therefore engaging in copyright infringement. And, with infringement, injunctive relief is available. If the Court had concluded that the terms were covenants, the copier would have still had a license, not engaged in infringement, but only violated covenants, for which the cause of action would be breach of contract, and the remedy would be damages, but not injunctive relief.

Background. Robert Jacobsen, the plaintiff below, and appellant in this proceeding, holds a copyright to computer programming code -- software for model trains. He makes that code available for public download from a web site without a financial fee pursuant to the Artistic License, an open source license. He is also the manager of the Java Model Railroad Interface (JMRI), an open source software group.

Matthew Katzer and Kamind Associates, Inc., the defendants below, and appellees in this proceeding, develop competing commercial software products for model trains.

They downloaded code from Jacobsen's web site and incorporated it into software without adhering to the terms of the Artistic License.

Jacobsen filed a complaint in U.S. District Court (NDCal) against Katzer and Kamind alleging copyright infringement.

Jacobsen also sought a declaratory judgment of non-infringement and invalidity of a Katzer patent. Hence, the Federal Circuit, rather than the 9th Circuit, has appellate jurisdiction in this case, even though no patent issue is involved in this appeal. However, the Federal Circuit applied the copyright law of the 9th Circuit.

Jacobsen moved for a preliminary injunction. The defendants argue that there is no copyright infringement because they had a license to use the material.

The District Court denied the motion, holding that the open source Artistic License created an intentionally broad nonexclusive license which was unlimited in scope and thus did not create liability for copyright infringement.

See also, hyperlinks to District Court pleadings in Jacobsen's JMRI web site.

Court of Appeals: Nature of Open Source Licenses. The Court of Appeals vacated the judgment of the District Court. First, the Court of Appeals explained open source licensing.

It wrote that "Public licenses, often referred to as ``open source´´ licenses, are used by artists, authors, educators, software developers, and scientists who wish to create collaborative projects and to dedicate certain works to the public."

"Open source licensing has become a widely used method of creative collaboration that serves to advance the arts and sciences", wrote the Court of Appeals.

"Open Source software projects invite computer programmers from around the world to view software code and make changes and improvements to it. Through such collaboration, software programs can often be written and debugged faster and at lower cost than if the copyright holder were required to do all of the work independently. In exchange and in consideration for this collaborative work, the copyright holder permits users to copy, modify and distribute the software code subject to conditions that serve to protect downstream users and to keep the code accessible." (Footnote omitted.)

"By requiring that users copy and restate the license and attribution information, a copyright holder can ensure that recipients of the redistributed computer code know the identity of the owner as well as the scope of the license granted by the original owner. The Artistic License in this case also requires that changes to the computer code be tracked so that downstream users know what part of the computer code is the original code created by the copyright holder and what part has been newly added or altered by another collaborator."

The Court continued that "Traditionally, copyright owners sold their copyrighted material in exchange for money. The lack of money changing hands in open source licensing should not be presumed to mean that there is no economic consideration, however. There are substantial benefits, including economic benefits, to the creation and distribution of copyrighted works under public licenses that range far beyond traditional license royalties. For example, program creators may generate market share for their programs by providing certain components free of charge. Similarly, a programmer or company may increase its national or international reputation by incubating open source projects. Improvement to a product can come rapidly and free of charge from an expert not even known to the copyright holder."

Court of Appeals: Analysis of Infringement Claim. The Court of Appeals then addressed whether the defendants' copying constituted copyright infringement. It concluded that it did.

It wrote that "The heart of the argument on appeal concerns whether the terms of the Artistic License are conditions of, or merely covenants to, the copyright license." That is, a copyright owner who grants a nonexclusive license to use his copyrighted material waives his right to sue the licensee for infringement, and can sue only for breach of contract. "If, however, a license is limited in scope and the licensee acts outside the scope, the licensor can bring an action for copyright infringement."

It reasoned that since the Artistic License states expressly that it creates "conditions", and it "uses the traditional language of conditions", its terms are conditions, not covenants.

The Court continued that "The conditions set forth in the Artistic License are vital to enable the copyright holder to retain the ability to benefit from the work of downstream users. By requiring that users who modify or distribute the copyrighted material retain the reference to the original source files, downstream users are directed to Jacobsen's website."

It wrote that "Copyright holders who engage in open source licensing have the right to control the modification and distribution of copyrighted material."

The Court of Appeals added that "The choice to exact consideration in the form of compliance with the open source requirements of disclosure and explanation of changes, rather than as a dollar-denominated fee, is entitled to no less legal recognition. Indeed, because a calculation of damages is inherently speculative, these types of license restrictions might well be rendered meaningless absent the ability to enforce through injunctive relief."

It concluded, "The clear language of the Artistic License creates conditions to protect the economic rights at issue in the granting of a public license. These conditions govern the rights to modify and distribute the computer programs and files included in the downloadable software package. The attribution and modification transparency requirements directly serve to drive traffic to the open source incubation page and to inform downstream users of the project, which is a significant economic goal of the copyright holder that the law will enforce. Through this controlled spread of information, the copyright holder gains creative collaborators to the open source project; by requiring that changes made by downstream users be visible to the copyright holder and others, the copyright holder learns about the uses for his software and gains others' knowledge that can be used to advance future software releases."

This case is Robert Jacobsen v. Matthew Katzer, et al., U.S. Court of Appeals for the Federal Circuit, App. Ct. No. 2008-1001, an appeal from the U.S. District Court for the Northern District of California, D. C. No. 06-CV-1905, Judge Jeffrey White presiding.

Judge Faith Hochberg, U.S. District Court (DNJ), sitting by designation, wrote the opinion of the Court of Appeals, in which Judges Michel and Prost joined.

8/12. The U.S. Court of Appeals (2ndCir) issued its opinion [12 pages in PDF] in Sealed Plaintiff v. Sealed Defendants, a case regarding when a plaintiff may file a complaint using a pseudonym.

The District Court dismissed the pseudonymous complaint. The Court of Appeals vacated the judgment of the District Court, and remanded.

The plaintiff filed a complaint in the U.S. District Court (NDNY) against unnamed municipal and state officials alleging violation of her civil and constitutional rights in connection with alleged physical and sexual assault. However, the holding in this case may affect pseudonymous litigation in other areas of law, including technology related areas of law.

For example, prospective plaintiffs may seek pseudonymity in challenges to search, seizure and surveillance practices of the Department of Justice (DOJ) and other law enforcement and intelligence agencies under Title 18, Title 50, and/or inherent Presidential authority. Prospective plaintiffs may also seek pseudonymity in challenges to the practices of content industries under the DMCA.

The Court of Appeals held that "when determining whether a plaintiff may be allowed to maintain an action under a pseudonym, the plaintiff's interest in anonymity must be balanced against both the public interest in disclosure and any prejudice to the defendant."

The Court of Appeals then provided a list of ten "non-exhaustive" factors to be considered by the District Court. The District Court should consider:

1. whether the litigation involves matters that are highly sensitive and of a personal nature.
2. whether identification poses a risk of retaliatory physical or mental harm to the party seeking to proceed anonymously or even more critically, to innocent non-parties.
3. "whether identification presents other harms and the likely severity of those harms".
4. "whether the plaintiff is particularly vulnerable to the possible harms of disclosure".
5. "whether the suit is challenging the actions of the government or that of private parties".
6. "whether the defendant is prejudiced by allowing the plaintiff to press his claims anonymously, whether the nature of that prejudice (if any) differs at any particular stage of the litigation, and whether any prejudice can be mitigated by the district court".
7. "whether the plaintiff's identity has thus far been kept confidential".
8. "whether the public's interest in the litigation is furthered by requiring the plaintiff to disclose his identity".
9. whether, because of the purely legal nature of the issues presented or otherwise, there is an atypically weak public interest in knowing the litigants' identities.
10. "whether there are any alternative mechanisms for protecting the confidentiality of the plaintiff".

There is a related issue, not addressed in this opinion, of use of litigation against unnamed defendants, in which the plaintiffs use subpoenas to compel internet service providers to disclose the identities of anonymous users. This tactic may be used for many purposes, some of which are worthy, while others are not.

For example, it may be used to suppress constitutionally protected online anonymous speech, to pursue libel actions against anonymous online defamators, to suppress online anonymous fair use publication involving plaintiffs' copyrighted works, or to pursue copyright or trademark infringement actions against anonymous online infringers and counterfeiters.

Also, in some cases, anonymous filing of complaints is mixed with attempts to pierce the anonymity of online speakers. See, related story in this issue titled "Doe Plaintiffs File Second Amended Complaint in AutoAdmit Case".

The present case is Sealed Plaintiff v. Sealed Defendant #1, et al., U.S. Court of Appeals for the 2nd Circuit, App. Ct. No. 06-1590-cv, an appeal from the U.S. District Court for the Northern District of New York, Judge Norman Mordue presiding. Judge Jose Cabranes wrote the opinion of the Court of Appeals, in which Judges Miner and McLaughlin joined.

The House will not meet. It will return from its August recess on September 8.

The Senate will not meet. It will return from its August recess on September 8. It will hold momentary pro forma sessions until then to prevent President Bush from making recess appointments.

The Supreme Court will return on September 29, 2008. See, October Term 2008 calendar.

10:00 AM - 4:00 PM. The U.S.-China Economic and Security Review Commission will hold a public meeting to work on its 2008 Annual Report to Congress. See, notice in the Federal Register, July 29, 2008, Vol. 73, No. 146, at Pages 43978-43979. Location: Conference Room 333, Hall of the States, 444 North Capitol St., NW.

6:00 PM. Extended end of settlement period for the Federal Communications Commission's (FCC) Auction 85, regarding LPTV and TV Translator Digital Companion Channels. See, Public Notice [PDF] of extension of settlement period, and notice in the Federal Register, August 7, 2008, Vol. 73, No. 153, at Page 46005.

Deadline to file Petitions to Participate and the accompanying $150 filing fee with the Copyright Royalty Judges regarding its proceeding to determine the Phase I distribution of 2004 and 2005 royalties collected under the cable statutory license. See, notice in the Federal Register, July 15, 2008, Vol. 73, No. 136, at Pages 40623-40624.

Deadline to file a Petition to Participate and the accompanying $150 filing fee with the Copyright Royalty Judges in connection with its proceeding to determine the Phase I distribution of 2004 and 2005 royalties collected under the cable statutory license. See, notice in the Federal Register, July 15, 2008, Vol. 73, No. 136, at Pages 40623-40624.

The Senate will meet at 10:00 AM in pro forma session only.

Deadline to submit comments to the National Institute of Standards and Technology's (NIST) Computer Security Division (CSD) regarding its SP 800-41 Rev. 1 [43 pages in PDF] titled "Guidelines on Firewalls and Firewall Policy".

EXTENDED TO AUGUST 28. Deadline to submit initial comments to the Copyright Office in response to its notice of proposed rulemaking regarding the scope and application of the Section 115 compulsory license to make and distribute phonorecords of a musical work by means of digital phonorecord deliveries. See, original notice in the Federal Register, July 16, 2008, Vol. 73, No. 137, at Pages 40802-40813. See also, extension notice in the Federal Register, August 13, 2008, Vol. 73, No. 157, at Pages 47113-47114.

Deadline to submit comments to the Bureau of Industry and Security (BIS) in response to its Notice of Inquiry (NOI) regarding recommendations made by the Deemed Export Advisory Committee (DEAC) with respect to BIS's deemed export licensing policy. The BIS seeks comments on, among other things, whether the scope of technologies on the Commerce Control List (CCL) that are subject to deemed export licensing requirements should be narrowed, and if so, which technologies should be subject to deemed export licensing requirements. See, notice in the Federal Register, May 19, 2008, Vol. 73, No. 97, at Pages 28795-28797.

Deadline to submit comments to the Federal Bureau of Investigation (FBI) in response to it notice of proposed rulemaking (NPRM) regarding fees for providing fingerprint based and name based Criminal History Record Information (CHRI) checks and other identification services for noncriminal justice purposes including employment and licensing. See, notice in the Federal Register, June 19, 2008, Vol. 73, No. 119, at Pages 34905-34913.

Deadline to submit comments to the U.S. Patent and Trademark Office (USPTO) in response to its notice of proposed rulemaking (NPRM) regarding revisions to its rules of practice to adjust the transmittal and search fees for international applications filed under the Patent Cooperation Treaty (PCT). See, notice in the Federal Register, June 18, 2008, Vol. 73, No. 118, at Pages 34672-34676.

Deadline to submit comments to the Department of Justice's (DOJ) Civil Rights Division (CRD) in response to its notice of proposed rulemaking (NPRM) regarding accessibility standards under the Americans with Disabilities Act of 1990. One topic addressed by this NPRM is regulation of state and local government agencies' communications with individuals with disabilities with the assistance of broadband video interpreting services (VIS). VIS allows an individual who is deaf or hard of hearing to view and sign to a video interpreter, who is at another location, who can see and sign to the individual through a camera. See, notice in the Federal Register, June 17, 2008, Vol. 73, No. 117, at Pages 34465-34508.

CANCELLED. 1:00 - 5:00 PM. The Department of Health and Human Services' (DHHS) American Health Information Community Consumer Empowerment Workgroup will meet. See, notice in the Federal Register, July 29, 2008, Vol. 73, No. 146, at Page 43937. Location: Room 1114, Switzer Building, 330 C St., SW.

No events listed.

1:00 - 5:00 PM. The Department of Health and Human Services' (DHHS) American Health Information Community's (AHIC) Confidentiality, Privacy, & Security Workgroup may meet. See, notice in the Federal Register, July 29, 2008, Vol. 73, No. 146, at Page 43937. AHIC meetings are often noticed, but cancelled. Location: Room 1114, Switzer Building, 330 C St., SW.

8/5. Two anonymous plaintiffs, identified as Doe I and Doe II, filed their second amended complaint [20 pages in PDF] in U.S. District Court (DConn) against Matthew C. Ryan and others alleging online publicity, infliction of emotional distress, defamation and copyright infringement, in connection with postings on the AutoAdmit web site, which focuses on discussions of admissions to posh colleges and law schools.

The complaint alleges that the plaintiffs are female law students at Yale Law School who have been the subject of numerous postings in the AutoAdmit web site. The items quoted in the complaint are in the nature of student trash talk about women who gain admission to top schools.

The complaint alleges copyright infringement (based upon publication of photographs), appropriation of name or likeness, unreasonable publicity, publicity that places another in a false light before the public, intentional infliction of emotional distress, negligent infliction of emotional distress, and libel.

All of these claims are state law claims, except copyright infringement. The large number of anonymous defendants suggests that complete diversity of citizenship will not exist. Thus, the copyright claim may be asserted for the purpose of manufacturing federal question jurisdiction.

The two plaintiffs filed their original complaint [17 pages in PDF] on June 8, 2007, naming as defendants Anthony Ciolli, administrator of the AutoAdmit web site, and numerous anonymous speakers. Ciolli is not named as a defendant in the just filed second amended complaint.

That case is Doe I and Doe II v. Matthew C. Ryan, et al., U.S. District Court for the District of Connecticut, D.C. No. 307CV00909 CFD.

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