Re: CAFC 2008-1001 -- "license to the world must be a bare license" case

[Alexander Terekhov]

ROFL!

http://jmri.sourceforge.net/k/docket/cafc-pi-1/ccc_brf.pdf

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TABLE OF CONTENTS
Page
CERTIFICATE OF INTEREST 
....................................................................... i
TABLE OF 
CONTENTS..................................................................................
 ii
TABLE OF AUTHORITIES 
............................................................................ iii
I. STATEMENT OF 
INTEREST...................................................................... 1
II. 
INTRODUCTION........................................................................................
 6
III. 
BACKGROUND.........................................................................................
 7
IV. 
ARGUMENT..............................................................................................
 11
A. Public Licenses Leverage Copyright Law To Promote
Innovation.....................................................................................
 11
B. Infringement Remedies Are An Essential Component Of
Public Licensing 
........................................................................... 15
C. The District Court Erred In Concluding That Katzer’s And
KAMIND’s Breaches Of The Artistic License Do Not Create
Copyright Infringement Liability 
................................................. 17
1. The District Court Misapprehended The Case Law It
Applied 
............................................................................... 
19
2. The District Court Misapprehended The Artistic
License 
............................................................................... 
22
D. The Unique Nature Of Public Licenses Should Inform Their
Interpretation 
................................................................................
 27
V. 
CONCLUSION...........................................................................................
 30
iii
TABLE OF AUTHORITIES
Page(s)
Cases:
Abend v. MCA, Inc.,
863 F.2d 1465 (9th Cir. 1988) 
................................................................ 20
Cohen v. Paramount Pictures Corp.,
845 F.2d 851 (9th Cir. 1988) 
.................................................................. 28
Costello Publ. Co. v. Rotelle,
670 F.2d 1035 (D.C. Cir. 
1981).............................................................. 24
County of Ventura v. Blackburn,
362 F.2d 515 (9th Cir. 1966) 
.................................................................. 21
eBay Inc. v. MercExchange, L.L.C.,
126 S. Ct. 1837 (U.S. 
2006).................................................................... 11
Effects Associates v. Cohen,
908 F.2d 555 (9th Cir. 1990) 
.................................................................. 25, 27
Fantastic Fakes, Inc. v. Pickwick Int’l, Inc.,
661 F.2d 479 (5th Cir. 1981) 
.......................................................... 25, 26, 27
Fogerty v. Fantasy, Inc.,
510 U.S. 517 
(1994)................................................................................
 11
Fox Film Corp. v. Doyal,
286 U.S. 123 
(1932)................................................................................
 11
Gilliam v. American Broadcasting Companies, Inc.,
538 F.2d 14 (2d Cir. 1976) 
..................................................................... passim
Goldstein v. California,
412 U.S. 546 
(1973)................................................................................
 27
Graham v. James,
144 F.3d 229 (2d Cir. 1998) ................................................. 
23, 24, 25, 26, 27
LGS Architects, Inc. v. Concordia Homes,
434 F.3d 1150 (9th Cir. 2006) .............................................. 
12, 18, 24, 26, 27
Mallinckrodt, Inc. v. Medipart, Inc.,
976 F.2d 700 (Fed. Cir. 1992) 
................................................................ 27
iv
Mazer v. Stein,
347 U.S. 201 
(1954)................................................................................
 27
McRoberts Software, Inc. v. Media 100, Inc.,
329 F.3d 557 (7th Cir. 2003) 
.................................................................. 24
Nicon, Inc. v. United States,
331 F.3d 878 (Fed. Cir. 2003) 
................................................................ 29
S.M. Wilson & Co. v. Smith Intern, Inc.,
587 F.2d 1363 (9th Cir. 1978) 
................................................................ 29
S.O.S. v. Payday,
886 F.2d 1081 (9th Cir. 1989) 
................................................... 19, 26, 27, 28
SCO Group, Inc. v. Novell, Inc.,
2007 U.S. Dist. LEXIS 58854 (D. Utah, August 10, 2007) ................... 24
Sony Corp. of America v. Universal City Studios, Inc.,
464 U.S. 417 
(1984)................................................................................
 11
Storage Technology Corp. v. Custom Hardware Eng’g & Consulting, Inc.,
421 F.3d 1307 (Fed. Cir. 2005) 
.............................................................. 19
Sun Microsystems, Inc. v. Microsoft Corp.,
188 F.3d 1115 (9th Cir. 1999) 
........................................................... passim
Sun Microsystems, Inc. v. Microsoft Corp.,
81 F. Supp. 2d 1026 (N.D. Cal. 
2000).................................................... 25
Triad Systems Corp. v. Southeastern Exp. Co.,
64 F.3d 1330 (9th Cir. 1995) 
.................................................................. 17
United States v. Van Leeuwen,
397 U.S. 249 
(1970)................................................................................
 29
WGN Continental Broadcasting Co. v. United Video, Inc.,
693 F.2d 622 (7th Cir. 1982) 
.................................................................. 22
v
Statutes:
17 U.S.C. § 106 
.................................................................................................
 11
17 U.S.C. § 501 
.................................................................................................
 11
17 U.S.C. §§ 
501-513........................................................................................
 11
17 U.S.C. §§ 
502-513........................................................................................
 17
35 U.S.C. § 
504(c).............................................................................................
 16
Other Authorities:
Nimmer on Copyright,
§ 10.15(A) 
...............................................................................................
 12
Berne Convention Implementation Act,
Pub. L. No. 100-568, 102 Stat. 2853-2861 (1988) 
................................. 16
Farnsworth on Contracts,
§ 
12.8.......................................................................................................
 16
1
I. STATEMENT OF INTEREST
The District Court’s decision that the asserted violations of the Artistic
License at issue in this case sound in contract, not copyright, was erroneous. 
If the
decision were applied broadly, it could disrupt the settled expectations of 
literally
millions of copyright holders who have depended upon the copyright system to
secure the right to enforce public licenses. Amici are organizations that 
support and
rely on public licensing; each has a strong interest in ensuring not only the 
stability
of public licensing, but also the preservation of copyright remedies for the
violation of public licenses.
Creative Commons is a non-profit corporation that provides free copyright
licenses to artists, authors, educators and scientists. These licenses enable 
creators
and innovators to mark their creative work with the freedoms they intend that
creative work to carry. Thus, while the default terms of copyright secure the 
full
range of “exclusive rights” granted by the Copyright Act (“All Rights 
Reserved”),
Creative Commons licenses give copyright holders the easy ability to dedicate
some exclusive rights to the public (i.e., “Some Rights Reserved.”) Creative
Commons licenses are now available in more than forty jurisdictions around the
world. By some estimates, close to 100,000,000 works have been licensed under
Creative Commons licenses by artists such as David Byrne, Gilberto Gil and the
Beastie Boys, filmmakers including Academy Award Winner, Davis Guggenheim,
2
and educators such as MIT’s OpenCourseWare project, which has now licensed all
1,800 MIT courses under a Creative Commons license.
The Linux Foundation is a nonprofit consortium dedicated to fostering the
development and adoption of the GNU/Linux operating system and to sustaining
the transparency, freedom of choice and technical superiority made possible by
open, collaborative development environments. Founded in 2007 by the merger of
the Open Source Development Labs and the Free Standards Group, the Linux
Foundation sponsors the work of Linux creator Linus Torvalds and is supported by
leading Linux, free software and open source companies and developers from
around the world. Linux is distributed under version 2.0 of the Free Software
Foundation’s “GNU General Public License” (“GPL”). Thus the Linux Foundation
has a strong interest in the proper development of the law relating to public
licenses such as the GPL and joins this brief to urge reversal of the District 
Court’s
ruling below.
The Open Source Initiative (“OSI”) is a California public benefit corporation
dedicated to ensuring a consistent application of the term “Open Source” for
software licenses. OSI is the developer and the steward of the Open Source
Definition (“OSD”), and is the recognized body for reviewing and approving
licenses that conform to the OSD and can be considered “Open Source.” OSI was
founded in 1998 as an educational and advocacy organization focused on
3
protecting the use of the term “Open Source.” OSI established principles for
defining which type of licenses can be considered to be “Open Source” as well as
advocating the use of Open Source software. OSI maintains a registry of software
licenses that meet the OSD criteria and can be considered “Open Source” and
supports international initiatives related to Open Source. All of the major open
source programs are licensed under OSI approved licenses including the Linux
kernel (version 2 of the GNU General Public License), the FireFox browser
(Mozilla Public License) and the OpenSolaris operating system (Common
Development and Distribution License). OSI has approved approximately 50
licenses as consistent with the OSD, including the version of the Artistic 
License
that was used in connection with the software at issue in this case. OSI has a 
vested
interest in ensuring that judicial interpretation of Open Source licenses is 
consistent
with the purpose and intent of such licenses. OSI joins in this Amicus Brief to 
the
extent that Amici argue that the conditions set forth in the Artistic License 
give rise
to a claim of Copyright infringement and the remedy of injunctive relief.
The Software Freedom Law Center is a not-for-profit legal services
organization that provides legal representation and other law-related services 
to
protect and advance Free and Open Source Software distributed under public
licenses whose terms give recipients freedom to copy, modify and redistribute 
the
software. SFLC provides pro bono legal services to non-profit Free and Open
4
Source Software developers and projects and also helps the general public better
understand the legal aspects of Free and Open Source Software. SFLC, along with
the Free Software Foundation, was the primary drafter of version 3 of the GNU
General Public License. The GPL is the most widely used “free software” license
as well as the most widely used public license in any medium. It is the license 
used
by most major components of the GNU and GNU/Linux operating systems and
tens of thousands of other computer programs used on tens of millions of
computers around the world.
Yet Another Society, dba The Perl Foundation, is a Michigan non-profit
corporation dedicated to the advancement of the Perl programming language
through open discussion, collaboration, and development projects. The Perl
Foundation coordinates the efforts of numerous grassroots Perl-based groups, and
makes grants to developers involved in Perl-related projects. The Perl 
Foundation
has an interest in the current appeal as the custodian of the Artistic License. 
Since
1987, numerous versions of Perl software packages and Perl-related projects have
been, and continue to be, released under the Artistic License version 1.0;1 the
1
Version 1.0 of the Artistic License is one of the earliest examples of a public
(or open source) license. Version 1.0 was superseded by version 2.0 in 2006, 
which
differs in several significant ways from version 1.0.
5
license used by Appellant Robert Jacobsen in connection with the DecoderPro
software that is the basis of many of the controversies in this case.
Wikimedia Foundation, Inc. (WMF) is a non-profit organization founded in
2003. Its mission is to develop and maintain open content projects and to 
provide
the full contents of those projects to the public free of charge. One project
published by WMF is the general encyclopedia Wikipedia. Wikipedia is written
collaboratively by volunteers from around the world. Since its creation in 2001,
Wikipedia has grown into one of the largest reference Web sites. There are more
than 75,000 active contributors working on some 9,000,000 articles in more than
250 languages. Every day, visitors from around the world make tens of thousands
of edits and create thousands of new articles to enhance the knowledge held by
Wikipedia. All of the text in Wikipedia, as well as most of the images and other
content, is licensed pursuant to the GNU Free Documentation License (GFDL), a
public license. Contributions remain the property of their creators, while the 
GFDL
license ensures the content is freely distributable and reproducible. Wikipedia
articles are licensed on terms favorable to the public, and WMF depends on the
conditions and limitations of the GFDL to ensure that copyright remedies are
available to authors who insist that these favorable terms be enforced.
6
II. INTRODUCTION
The District Court’s holding that the violations of the Artistic License
alleged by Professor Jacobsen sound in contract, not copyright (A9-11), was
erroneous. Although the Artistic License uses language not common to other
public licenses, if the District Court’s decision were applied broadly, it could
disrupt settled expectations on which literally millions of individuals, 
including
award winning producers, firms such as IBM, educational institutions such as MIT
and Harvard, and even governments have built businesses, educational 
initiatives,
artistic collaborations and public service projects. It appears the District 
Court may
not have understood the potential reach of its decision; nor was it fully 
briefed as to
the possible consequences for the millions of software products and creative 
works
that have been licensed on terms favorable to the public and to innovation.
All public licenses are offered on the assumption that the restrictions they
contain limit the scope of the permission granted and that failure to comply 
with
these restrictions subjects the licensee to copyright liability, at least if the
licensee’s actions require the benefit of any of the permissions provided by the
license. The conditions thus impose affirmative obligations only upon someone
who seeks to use the licensed work in a way that triggers the underlying 
copyright.
Appellees Katzer and KAMIND did not abide by the conditions and limitations of
the Artistic License; they are therefore liable for copyright infringement.
7
III. BACKGROUND
Appellant Robert Jacobsen is a physicist and professor at the University of
California at Berkeley. (A36). He is also the leader of the Java Model Railroad
Interface (“JMRI”) software project. (Id.) That group created software called
DecoderPro, which is used by model railroad enthusiasts to program decoder chips
in model trains; the decoder chips can be programmed to control the trains’ 
lights,
sounds and speed. (A45-46; A118). In order to program these chips, a decoder
definition file is used. (A114). DecoderPro is made available free of charge 
under
the Artistic License. (A36; A355-356).
The Artistic License permits the unpaid copying, modification and
distribution of the DecoderPro software files, but only on specified conditions.
(A370). The first paragraph of the Artistic License states the “intent of this
document is to state the conditions under which a Package may be copied.” (Id.)
Among other conditions, the Artistic License permits users to modify the
DecoderPro Package “provided that [the user] insert a prominent notice in each
changed file stating how and when [the user] changed that file” and “provided
that” the user (in pertinent part) either (a) make such modifications freely
available, (b) use the modified software Package only within [the user’s]
organization, (c) include copies of all standard executable files, or (d) make 
other
arrangements with the copyright holder. (A370) (Artistic License ¶ 3).
8
The Artistic License likewise permits users to distribute the DecoderPro
software Package “provided that” the user (in pertinent part) either (a) 
distribute a
Standard Version of the executables and library files, (b) “accompany the
distribution with the machine-readable source of the Package with your
modifications,” (c) include copies of certain original executable files, along 
with
instructions on where to get the Standard Version, or (d) make other 
arrangements
with the copyright holder. (A370) (Artistic License ¶ 4).
Accordingly, insofar as a user who has not made other, specific
arrangements with the copyright owner wishes to create or distribute a modified
version of the standard DecoderPro software package outside his or her 
corporation
or organization, the user must either make the modifications freely available or
include copies of all executable files in the licensor's “standard” original 
form. (Id.)
(Artistic License ¶ 3). Each original file contains a copyright notice and 
author
information. (A118). The standard executable files provide prominent access to 
the
Artistic License through a “Help” menu. The Artistic License also requires for
those files that have been modified a description of how they were changed
(including whether a copyright notice was removed), see Id. (Artistic License ¶ 
3),
and that when distributed instructions be provided regarding where to obtain the
Standard Version. (Id.) (Artistic License ¶ 4).
9
Appellee Matthew Katzer is the CEO of KAMIND Associates, Inc., a
company that produces competing model railroad software, including a product
called Decoder Commander. (A115-16). Jacobsen alleges that Katzer and
KAMIND modified the JMRI files in violation of the Artistic License, (A56-58),
specifically, by copying the Decoder Definition Files from JMRI's DecoderPro
software and stripping out the copyright notice and license information, thereby
modifying the Package pursuant to Paragraph 3 of the License. (A47).
All of the Decoder Definition Files distributed with DecoderPro contain a
copyright notice and author information. (A119). By way of example, the decoder
definition file QSI_Electric.xml contains the following header information:
<?xml version="1.0"?>
<!DOCTYPE decoder-config SYSTEM "decoder-config.dtd">
<!-- Copyright (C) JMRI 2005 All rights reserved -->
<!-- See the COPYING file for more information on licensing and appropriate
use -->
<!-- $Id: QSI_Electric.xml,v 1.1 2005/06/17 03:03:33 innkeeper Exp $ -->
<decoder-config>
<version author="Howard G. Penny" version="1" lastUpdated="20050616"/>
<!-- version 1 - modified for QSI CV.PI.SI format - Howard -->
<decoder>
<family name="QSI Electric" mfg="QSIndustries" lowVersionID="3"
highVersionID="6">
<model model="BLI GG-1" lowVersionID="3" highVersionID="6"
productID="200"/>
</family>
10
(A188). The "COPYING" file referenced in the notice and disclaimer is in the
same directory as the decoder files; it contains the Artistic License.
Katzer and KAMIND admitted that they copied the Decoder Definition Files
from the DecoderPro software. (A328). They also admitted that they stripped out
the “JMRI credit information” and “comment fields.” (A330). The information
removed from each copied file includes references to the copyright owner, 
author,
copyright date and information about the Artistic License. (A188; A205).
Therefore, Katzer and KAMIND violated the Artistic License, by not including
standard versions of the executable files, not explaining where to get the 
Standard
Version, and not indicating how the decoder definition files were changed.
Based on these alleged violations of the Artistic License, Jacobsen sued
Katzer and KAMIND for copyright infringement, and sought a preliminary
injunction on that claim. The District Court denied Jacobsen’s preliminary
injunction motion on the ground that “Defendants’ alleged violation of the
conditions of the license may have constituted a breach of the [Artistic 
License],
but does not create liability for copyright infringement.” (A9-A11). Thus, the
Court did not address the question of whether Katzer and KAMIND violated the
terms of the Artistic License. (Id.) Rather, the Court held that even if Katzer 
and
KAMIND had done so, that would amount only to a breach of contract, not
copyright infringement.
11
On appeal, Jacobsen contends the District Court erred as a matter of law in
denying his motion for preliminary injunction. Amici agree, and submit this 
brief
to clarify the details of the Artistic License, and to explain how the District 
Court’s
opinion might affect public licensing, a critical engine of innovation.
IV. ARGUMENT
A. Public Licenses Leverage Copyright Law To Promote Innovation
The ultimate goal of copyright law is to stimulate the creation of new works.
See, e.g., Fogerty v. Fantasy, Inc., 510 U.S. 517 (1994); Sony Corp. of America 
v.
Universal City Studios, Inc., 464 U.S. 417 (1984). In order to create 
incentives for
the creation of new works, copyright law grants authors certain exclusive rights
over their creations. See id. For example, the Copyright Act provides that
reproduction, distribution and the preparation of derivative works are the 
exclusive
rights of the copyright owner. See 17 U.S.C. § 106. Accordingly, a copyright
permits the owner to exclude others from exercising these rights. See eBay Inc. 
v.
MercExchange, L.L.C., 126 S. Ct. 1837, 1840 (U.S. 2006) (“[l]ike a patent owner,
a copyright holder possesses ‘the right to exclude others from using his
property.’”) (quoting Fox Film Corp. v. Doyal, 286 U.S. 123, 127 (1932)). The
Copyright Act provides that anyone who violates any of the copyright owner’s
exclusive rights infringes the copyright (see 17 U.S.C. § 501) and subjects
infringers to an array of penalties. See 17 U.S.C. §§ 501-13.
12
A copyright owner is not required to grant permission to exercise all
exclusive rights, or even the full extent of one exclusive right. Rather, the
Copyright Act leaves it to the copyright owner to decide whether to permit 
others
to exercise any exclusive rights and what limitations will apply to the 
exercise of
those rights. See, e.g., LGS Architects, Inc. v. Concordia Homes, 434 F.3d 1150,
1156 (9th Cir. 2006).
Limiting the scope of permission is critical to making beneficial use of
property. For example, a landowner who could not exclude others from entering
his or her property would not be able to fully use and enjoy it – trespassers 
could
overrun the land. Thus, the landowner may choose to permit entry at certain 
times
or upon the satisfaction of certain conditions. If an entrant disregards these
conditions, and acts outside the scope of the landowner’s permission, the 
entrant
remains a trespasser. So too in copyright law. When a copyright owner grants
permission for others to exercise exclusive rights, but only on certain 
conditions,
one who disregards these conditions remains liable for infringement. See Nimmer
on Copyright, § 10.15(A). Accordingly, the right to exclude is about much more
than the ability to exchange a copyrighted work for money; it includes the 
ability
to prevent the work being used at all, or to place limits for a variety of 
purposes on
permissions granted. In short, the right to exclude secures to the copyright 
owner
the essential character of the property right that copyright law grants.
13
Traditional copyright licenses grant exclusive rights in exchange for money
or other remuneration. Public licensors leverage the exclusive rights that 
copyright
confers for public good, for example to secure freedom to derivative authors and
users, or to enhance innovation. The conditions and limitations in public 
licenses
are designed to increase the freedom of downstream authors and users without
imposing the typical copyright clearance burdens. One common condition of
public licenses is a requirement that prior to any distribution of the work (or 
a
derivative version of the work), copyright notices and license provisions 
included
in the original version must be copied and included in the distribution.
The Artistic License requires, as a condition that must be fulfilled for the
license to be effective, that original executable code (which contains copyright
notices), together with instructions on where to obtain the complete original
version of the code (which contains copyright notices), must be included in all
distributions, and that each modified file must include a “prominent notice” 
stating
how and when it was changed. (A370) (Artistic License ¶¶ 3-4). Copyright notice
and license preservation provisions of this type are critical to ensuring that
downstream recipients of redistributed code (or other content) know who the
owner is and the scope of the license granted by the owner of the original work.
Public licenses have enabled an abundance of innovation and the free and
widespread availability of high quality software. They have also enabled great
14
numbers of geographically separated authors to create complex software,
unencumbered by the intricate copyright consent issues (and related expenses) 
that
exist under traditional licensing schemes.
Examples of popular software licensed under public licenses include the
GNU/Linux operating system licensed under the GNU General Public License, that
by some accounts represents nearly 13% of the overall server market,2 Apache, a
web server software package licensed under the Apache License with a nearly 50%
share of the web server market,3 and Perl, “the most popular web programming
language due to its text manipulation capabilities and rapid development cycle”4
which is licensed under the version of the Artistic License at issue in this 
case, and
under other public licenses. It has been estimated that open source software
products accounted for a 13% share of the $92.7 billion software market in 2006,
and that they will account for a 27% share in 2011.5
2
See Linux-Watch, May 29, 2007, available at http://www.linuxwatch.
com/news/NS5369154346.html
3
See Netcraft, November 2007 Web Server Survey, available at
http://news.netcraft.com/archives/web_server_survey.html
4
See The Perl Directory: About Perl, available at
http://www.perl.org/about.html.
5
See Peter Galli, “Open Source Is the Big Disruptor,” available at
http://www.eweek.com/article2/0,1895,2186932,00.asp.
15
Enabling many authors to make creative modifications to software without
the encumbrances inherent in traditional copyright licensing schemes is
fundamental to free software and open source software and has provided
tremendous value to society. But this benefit is not limited to software. 
Millions of
creative works, including websites, photographs and audiovisual works are
licensed under public licenses, which allow downstream users the right to use 
the
copyrighted work in pre-specified ways.
B. Infringement Remedies Are An Essential Component Of
Public Licensing
While public licenses are generous in their permissions, the rights and
remedies of copyright law remain critically important to their enforcement. By
retaining the right to sue for copyright infringement (and the right to invoke 
the
accompanying presumptions and statutory remedies), the public licensor enjoys an
effective enforcement mechanism against those who would take the benefits of the
creative work, while seeking to evade the obligations the public license 
demands.
Public licensors draft licenses that ensure the availability of copyright
remedies, in order to minimize the risks posed by potentially inadequate 
contract
enforcement mechanisms. The rules for the formation and interpretation of
contracts differ from state to state and even more significantly from country to
country. Copyrights, by contrast, exist independent of any contractual 
framework,
16
and are less susceptible to jurisdictional variation, especially given 
widespread
adoption of the Berne Convention. See, e.g. Berne Convention Implementation
Act, Pub. L. No. 100-568, 102 Stat. 2853-2861 (1988). Copyright law interprets
licenses to protect the rights of authors, and assumes that authors retain any 
rights
not expressly transferred. See id.
Copyright remedies are often more appropriate in the context of public
licensing. The typical remedy for a contractual breach is a damages award, see
Farnsworth on Contracts § 12.8 at 189. A damages award may fail to address harm
suffered by the many public license authors who do not receive any compensation
for their software other than the benefit of the public license restrictions. 
For them,
the copyright system offers damages without proof of actual financial loss, see 
35
U.S.C. § 504(c). Copyright remedies are designed to support the right to 
exclude;
money damages alone do not and cannot support or enforce that right. While
injunctive relief may be available on a contract claim, see Farnsworth on 
Contracts
§ 12.5, it is significantly easier to obtain on a copyright claim, especially 
on a
preliminary basis, because a copyright holder enjoys a presumption of 
irreparable
harm upon showing a likelihood of success on the merits. See Sun Microsystems,
Inc. v. Microsoft Corp., 188 F.3d 1115, 1119 (9th Cir. 1999). In addition to
injunctive relief, the Copyright Act provides a carefully calibrated array of 
rights
17
and remedies that are designed to work together to provide incentives to create 
new
works. See 17 U.S.C. §§ 502-513.
Copyright law does not discriminate in favor of some business models and
against others. Those who choose to license their work under conditions designed
to increase innovation should not be penalized with inadequate protection and
diminished enforcement rights. Rather, they should retain the full array of 
remedies
that other licensors retain.
C. The District Court Erred In Concluding That Katzer’s
And KAMIND’s Breaches Of The Artistic License Do Not
Create Copyright Infringement Liability
Appellant Jacobsen alleges that he has a valid copyright in the DecoderPro
computer program, and that Katzer and KAMIND copied, modified and distributed
portions of that software. (A56-58). Jacobsen’s copyright registration creates 
the
presumption of a valid copyright. See, e.g. Triad Systems Corp. v. Southeastern
Exp. Co., 64 F.3d 1330, 1335 (9th Cir. 1995). Katzer and KAMIND concede they
copied, modified and distributed portions of the DecoderPro software. (A328-
A331). Accordingly, Jacobsen has made out a prima facie case of infringement
sufficient to support a preliminary injunction. See Triad Systems, 64 F.3d at 
1335.
Although Katzer and KAMIND argue they cannot be liable for infringement
because they were licensed to use the DecoderPro software under the Artistic
License, the license does not necessarily immunize them from infringement
18
liability. As the District Court recognized, a licensee who acts outside the 
scope of
permission granted by the copyright holder remains liable for copyright
infringement. See LGS Architects, Inc. v. Concordia Homes, 434 F.3d 1150, 1156
(9th Cir. 2006); Sun, 188 F.3d at 1121.
The Artistic License permits the copying, modification and distribution of
the DecoderPro software “provided that” the original executables (containing
copyright notices and license information) are included, a prominent notice of
changes is given, and instructions are provided regarding how to obtain the 
original
“Standard Version.” (A370) (Artistic License ¶¶ 3-4). It leaves no doubt these
restrictions are conditions of the license. It says so explicitly. See id. 
(“[t]he intent
of this document is to state the conditions under which a Package may be 
copied”).
In denying Jacobsen’s motion for preliminary injunction, the District Court
did not reach the question of whether Katzer and KAMIND complied with these
conditions. Instead, the Court concluded that even if Katzer and KAMIND had
violated them, that would give rise to liability only for breach of contract, 
not
copyright infringement. 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 License.
19
1. The District Court Misapprehended The Case Law It
Applied
In reaching its conclusion that Katzer and KAMIND did not exceed the
scope of the Artistic License, the District Court appeared to rely on both 
S.O.S. v.
Payday, 886 F.2d 1081 (9th Cir. 1989), and Gilliam v. American Broadcasting
Companies, Inc., 538 F.2d 14 (2d Cir. 1976). (A10). Neither case supports the
Court’s decision that the Artistic License precludes Jacobsen’s infringement 
claim.
In S.O.S., the copyright holder did not convey any exclusive rights to the
defendant. See S.O.S., 886 F.2d at 1088. Rather, the copyright holder authorized
the defendant only to “use” the computer program at issue. See id. In addition 
to
using the program, the defendant copied it. See id. The Court held that in 
doing so,
the defendant exceeded the scope of the license because that license permitted 
the
defendant to use, but not copy, the program. See id. at 1088-89. Accordingly,
S.O.S. holds that a licensee not authorized to make any copies exceeds the 
scope of
a license by making copies. That case does not suggest, much less hold, that a
license authorizing copying only on certain conditions cannot be limited in 
scope.6
6 In Storage Technology Corp. v. Custom Hardware Eng’g & Consulting,
Inc., 421 F.3d 1307 (Fed. Cir. 2005), this Court encountered the flip side of 
the
S.O.S. license. The license at issue in Storage Technology permitted the 
licensee to
copy the software at issue, but restricted use of that software once copied. The
Court concluded that using the software in a manner prohibited by the license 
did
not give rise to infringement liability because mere “use” of a copyrighted 
item is
“not forbidden by copyright law.” Id. at 1316. Here, Katzer and KAMIND are
20
Gilliam highlights this distinction and further undermines the District
Court’s conclusion. In that case, the copyright owners did convey exclusive 
rights
to the defendant. Specifically, ABC was licensed to air episodes of the Monty
Python Show. See Gilliam, 538 F.2d at 17-18. But that permission was expressly
limited in that it required ABC to air the episodes in their entirety, except 
insofar
as they had to be cut for commercials or to comply with FCC regulations. See id.
Also, the copyright owners retained the right to approve editorial changes by 
virtue
of their original agreement with the BBC, from which ABC had obtained rights
through Time-Warner films. See id. at 17-18, 21. Upon learning that ABC planned
to air a version of the show that excluded significant portions of the show, the
copyright holder sued ABC for copyright infringement and sought to enjoin the
broadcast of the truncated version. See id. at 18.
The District Court denied the copyright holder’s motion for a preliminary
injunction. The Second Circuit reversed, observing that “the ability of the
copyright holder to control his work remains paramount in our copyright law.”
Gilliam, 538 F.3d at 21; accord Abend v. MCA, Inc., 863 F.2d 1465 (9th Cir. 
1988)
(citing Gilliam). The court held that the “unauthorized editing of the 
underlying
accused of duplicating, modifying and distributing the DecoderPro software, all 
of
which are forbidden by copyright law. See id. (recognizing that violations of
license agreement are actionable as copyright infringement when the violations
would constitute infringement absent a license).
21
work, if proven, would constitute an infringement of the copyright in that work
similar to any other use of a work that exceeded the license granted by the
proprietor of the copyright.” Gilliam, 538 F.3d at 21. Thus, Gilliam holds that 
a
licensee who edits a copyrighted work in a manner contrary to the terms of the
license acts outside the scope of the license and infringes the copyright.
That is precisely the issue here. The Artistic License required Katzer and
KAMIND, as conditions of modifying and distributing their edited version of the
JMRI Package, to retain the original executable files in their distribution, to
provide instructions on where to obtain the complete original Package, and to
provide a prominent notice in each modified file stating how and when it was
changed. (A370) (Artistic License ¶¶ 3-4). Katzer and KAMIND did none of these
things. They simply modified the decoder definition files to remove copyright
notice and author information, then distributed the software with no 
indications of
its origins. As in Gilliam, they lacked permission to copy, modify or distribute
JMRI’s copyrighted work in this fashion, because the license expressly 
prohibited
it.
The fact that a copyright notice and author information were deleted does
not undermine Jacobsen’s right to sue for infringement. In County of Ventura v.
Blackburn, 362 F.2d 515, 520 (9th Cir. 1966), the Ninth Circuit upheld a 
finding of
copyright infringement where the County omitted copyright notices from maps
22
licensed to it by Blackburn. The license at issue granted the county “the right 
to
obtain duplicate tracings” from photographic negatives that contained copyright
notices. Thus, even where there was no license provision explicitly requiring 
the
inclusion of the copyright notices, the court held that removing them was beyond
the scope of the license and therefore constituted copyright infringement. See 
also
WGN Continental Broadcasting Co. v. United Video, Inc., 693 F.2d 622, 625 (7th
Cir. 1982) (citing Gilliam; unauthorized deletion of teletext from broadcast 
signal
rendered rebroadcaster liable for copyright infringement “under familiar
principles”).
Here, although the Artistic License permitted modification of the files, the
scope of that permission was limited. Defendants acted outside the scope of the
permission granted by the license, so cannot rely on it to protect them from
Jacobsen’s claim for copyright infringement.
2. The District Court Misapprehended The Artistic
License
The District Court interpreted the Artistic License to permit a user to
“modify the [program] in any way,” without restriction. (A10). On the contrary,
Katzer and KAMIND only had a limited right to copy, modify or distribute the
program. The trial court’s blanket dismissal of the Artistic License’s 
limitations as
23
mere “notice of attribution” misses both the significance of these conditions, 
and
the purpose of the Artistic License.
Under the Artistic License, the JMRI Project demands no monetary
compensation for the subsequent use of its work – even if that subsequent use is
commercial. The JMRI Project also permits any user to copy, modify or distribute
the files in its package in the interest of encouraging innovation and 
improvement.
The limitations placed on this permission are seemingly modest, but they are
critically important to the licensor’s ability to identify the source of its 
files, and
how they may have been modified, to downstream users.
Although the District Court did not say so, the apparent assumption
underlying its holding is that these limitations are merely independent 
covenants of
the Artistic License that do not restrict its scope. See Graham v. James, 144 
F.3d
229, 236-237 (2d Cir. 1998) (whether breach of license is actionable as 
copyright
infringement or breach of contract turns on whether provision breached is
condition of the license, or mere covenant); Sun, 188 F.3d at 1121 (following
Graham; independent covenant does not limit scope of copyright license); (A10-
A11) (citing Sun). That assumption contradicts both the clear terms of the 
Artistic
License, and the Court’s own interpretation of it.
The Artistic License says that the restrictions it imposes are “conditions” and
the District Court acknowledged these requirements are, in fact, conditions. 
(A10)
24
(Artistic License is “subject to various conditions”); (A11) (Jacobsen alleged
“violation of the conditions of the license”) This in itself demonstrates that 
these
requirements limit the scope of the Artistic License, and make violation 
actionable
as copyright infringement. See Graham, 144 F.3d at 237 (“failure to satisfy a
condition of the license” creates infringement liability); Costello Publ. Co. v.
Rotelle, 670 F.2d 1035, 1044 (D.C. Cir. 1981); accord LGS, 434 F.3d at 1157.
The specific conditions imposed by the Artistic License clearly and
expressly limit the grant of exclusive rights. Under the Artistic License, the 
user is
permitted to duplicate, modify and distribute the DecoderPro software “provided
that” the specified “conditions” of the Artistic License are followed. This 
makes it
clear that the exclusive rights of duplication, modification and distribution 
are
granted only insofar as the conditions are fulfilled. See Sun, 188 F.3d at 1122
(copyright owner retains infringement claim against licensee where owner
establishes rights violated are copyrights, not mere contract rights); SCO 
Group,
Inc. v. Novell, Inc., 2007 U.S. Dist. LEXIS 58854 (D. Utah, August 10, 2007)
(license providing right to distribute software “provided, however, that” the
software was bundled properly and not directly competitive to licensor’s 
software
created condition the breach of which was actionable as infringement); see also
McRoberts Software, Inc. v. Media 100, Inc., 329 F.3d 557, 562 (7th Cir. 2003)
(license permitting McRoberts to distribute software “when integrated with Media
25
100 hardware” created a limitation on license scope such that distribution for
Windows-compatible hardware was copyright infringement).
Indeed, the language at issue here is readily distinguishable from that in
cases concerned with breaches of mere covenants, not conditions. In Sun, the
requirements at issue were not identified as “conditions” and they appeared
separately from the license provisions granting exclusive rights. See Sun
Microsystems, Inc. v. Microsoft Corp., 81 F.Supp.2d 1026, 1032 (N.D. Cal. 2000)
(on remand). Here, the notice and disclaimer requirements are identified 
expressly
as “conditions” and they are included as part of the grant of exclusive rights.
Graham v. James involved an oral agreement to pay royalties, but the parties 
“did
not clearly delineate [the] conditions and covenants” of their agreement. See
Graham, 144 F.3d at 237. The Artistic License expressly states that it is 
imposing
certain “conditions” that define the scope of the license and when introducing 
each
condition uses the unambiguous language “provided that.” Effects Associates v.
Cohen, 908 F.2d 555, 556, 559 n.7 (9th Cir. 1990), likewise involved an oral
promise to pay royalties, but the language used did not specify that the royalty
obligation was a condition to the license. See id. In sharp contrast, in this 
case the
conditions are stated in unambiguous language. In Fantastic Fakes, Inc. v.
Pickwick Int’l, Inc., 661 F.2d 479 (5th Cir. 1981), the license permitted the 
licensor
to duplicate and distribute the sound recordings at issue “subject to and in
26
accordance with” four provisions that imposed obligations on both the licensor 
and
licensee, one of which required the licensor to affix a copyright notice to the 
sound
recording he distributed. See id. at 481-82. In applying Georgia state law to
interpret the contract, the Court held that the provisions were covenants 
because
they imposed obligations on both the licensor and licensee, and did not use
language that unambiguously created conditions. See id. at 484. Here, the
restrictions at issue impose obligations only on the licensor and are 
“conditions” by
their clear and express terms.7 Finally, none of these cases finding breaches of
mere covenants involve public licenses. All concern royalty-bearing commercial
7 In Sun, Graham and Fantastic Fakes the court looked to state law to
interpret the contracts at issue insofar as they were ambiguous. See Sun, 188 
F.3d
at 1122-23; Graham, 144 F.3d at 237 (looking to New York law where parties “did
not clearly delineate” the conditions of the license); Fantastic Fakes, 661 
F.2d at
484 (applying Georgia law where license term did “not contain any express words
of condition”). Here, there is no ambiguity and no need to resort to state law 
to
interpret the Artistic License. See LGS, 434 F.3d at 1156-57 (concluding license
restriction at issue limited scope of license on its face without resort to 
state law);
S.O.S., 886 F.2d at 1088-89 (same); Gilliam, 538 F.2d at 21 (same). In any 
event, a
copyright license must always “be construed in accordance with the purposes
underlying federal copyright law.” S.O.S., 886 F.2d. at 1088 (holding state law
canon of contract construction requiring contracts to be construed against 
drafter
inapplicable in copyright context). “Chief among these purposes is the 
protection
of the author’s rights.” Id. Where, as here, license terms impose clear and
unambiguous conditions that limit the scope of the license, federal policy 
demands
these terms be given their full force and effect.
27
licenses negotiated at arm’s length. See Sun, 188 F.3d at 1118; Graham, 144 F.3d
at 233-34; Effects Assoc., 908 F.2d at 556; Fantastic Fakes, 661 F.2d at 481-82.
D. The Unique Nature Of Public Licenses Should Inform
Their Interpretation
The Copyright Act creates exclusive rights for the copyright holder in order
to create economic incentives to create new works. See Goldstein v. California,
412 U.S. 546, 555 (1973); Mazer v. Stein, 347 U.S. 201, 219 (1954). The choice 
of
how best to exploit those rights, and maximize the incentive created, is left 
up to
the copyright holder. See, e.g., Gilliam, 538 F.2d at 21 (“the ability of the
copyright holder to control his work remains paramount in our copyright law”). 
In
granting permission, a copyright owner may place any number of limits on the
scope of the permission extended. See, e.g., LGS Architects, 434 F.3d at 1156; 
cf.
Mallinckrodt, Inc. v. Medipart, Inc., 976 F.2d 700, 703 (Fed. Cir. 1992) (right 
to
exclude based on patent grant “may be waived in whole or in part”). Thus, it is 
for
the copyright holder to decide if any exclusive rights will be licensed, and if 
so, to
what extent.
Protecting the copyright owner’s licensing decision is essential. See Gilliam,
538 F.2d at 23; S.O.S., 886 F.2d at 1088. If license terms are interpreted so 
that
copyright owners lose rights and remedies they intended to keep, then licensing
becomes riskier, and copyright owners may grant fewer licenses, or simply 
refrain
28
from licensing. It is for this reason that a copyright license “must be 
construed in
accordance with the purposes underlying federal copyright law.” S.O.S., 886 
F.2d.
at 1088 (citing Cohen v. Paramount Pictures Corp., 845 F.2d 851, 854 (9th Cir.
1988)). This concern is significantly more acute in the public licensing 
context;
many public licensors forego likely private gain in exchange for a public good –
further innovation around the work being licensed. The unique concerns that 
public
licensing presents should inform the interpretation of public licenses. The
conditions imposed by the Artistic License are not burdensome, but they are
critical. Where conditions are carefully drawn to restrict the scope of the 
license,
they should be given full effect.
It would be enormously beneficial to public licensing for this Court to state
clearly a rule regarding the importance of interpreting public licenses in a 
manner
consistent with their unique nature and federal copyright policy. See, e.g., 
S.O.S.,
886 F.2d. at 1088. Amici suggest that any public license be presumptively
interpreted as a copyright license with limitations on its scope. Complying 
with the
license would guarantee that the licensee would not be subject to a copyright
infringement action. Stepping outside that permission would subject the putative
licensee to the full range of copyright remedies.
Although amici believe that a statement from this Court regarding the proper
interpretation of public licenses would be helpful, they do not suggest that any
29
particular interpretation based on the unique facts of this case should apply 
broadly
to other cases involving public licenses. In cases that involve unique or 
unusual
facts, courts appropriately narrow and limit their holdings to apply only to 
those
cases that present the same unique factual situation. See, e.g., United States 
v. Van
Leeuwen, 397 U.S. 249, 253 (1970) (decision limited based on unique facts
presented, expressly declining to state a broad legal rule); Nicon, Inc. v. 
United
States, 331 F.3d 878, 888 (Fed. Cir. 2003) (narrowing application of finding 
that a
formula for calculation of contract damages could apply to the unique factual
situation); S.M. Wilson & Co. v. Smith Intern, Inc., 587 F.2d 1363, 1375-76 (9th
Cir. 1978) (decision denying statutory damages was based on the particular
provisions of the contract at issue, and should not be broadly construed to 
suggest
that such statutory damages were never available). Amici submit that because of
the unique aspects of the case, this Appeal does not offer a sufficient basis 
for a
broadly applicable ruling on which particular restrictions contained in public
licenses operate to limit their scope or create conditions rather than 
covenants.
They request that any decision issued by the Court be expressly limited to the 
facts
of this case, and that the decision specify that it is not applicable to public 
licenses
generally.
The success of public licensing is testimony to the flexible benefits of the
copyright system. Though the framers of copyright law may not have had public
30
[see pdf]
------

regards,
alexander.

--
"Plaintiffs’ copyrights are unique and valuable property whose market
value is impossible to assess"

                             -- SOFTWARE FREEDOM LAW CENTER, INC.