Among those who follow open source software issues, the case Jacobsen v. Katzer, et al., No. 2008-1001, 2008 WL 3395772 (Fed. Cir. Aug. 13, 2008), has long been of particular interest since it first popped up on the radar screen a couple of years ago because it is a rare case of open source license terms actually being litigated. Recently, a settlement was reached in the case, which, when considered with the prior court decisions in the litigation, represents a significant victory for open source licensors.
At issue were the applicable license terms for the use of certain open source code that was useful for model train controllers. The license raised issues under California state contract law and federal copyright law. The user, Katzer and his company, Kamind Associates, was being held accountable by the plaintiff on behalf of the Java Model Railroad Interface (JMRI) Project, which originally released the open source code at issue. Katzer either overlooked the underlying license terms or had not read them closely enough. Parsing through the license terms, the circuit court found that a proviso contained in the Artistic License — which had been adopted by the plaintiff for the software — created a threshold condition to use of the software under the license (thus, giving rise to a copyright-infringement claim) rather than being a mere covenant on the scope of the license rights (which if violated would have resulted only in a breach of contract claim). In later proceedings, the U.S. District Court for the Northern District of California in December 2009 granted significant parts of the plaintiff’s motion for summary judgment and denied the defendant’s motion for partial summary judgment.
Under the terms of the settlement reached February 16, 2010, Katzer is enjoined from using or copying any of the JMRI code or other materials, is prohibited from using certain trademarks and domain names that conflict with the rights of the JRMI Project, and must pay plaintiffs the sum of $100,000 over a period of 18 months.
The takeaway: open source license terms matter and are ignored by users at their peril.
Link to Settlement Agreement: http://www.docstoc.com/docs/25847971/Jacobsen-Settlement