Friday, June 18, 2021

Bruce Perens: Inside Open Source’s Historic Victory

About the Author: Bruce Perens, creator of the Open Source Definition, the manifesto of Open Source and the criterion for Open Source software licensing, was an expert witness in the Jacobsen v.
Katzer court case. He tells the story of the legal wrangling that produced a historic victory for Open Source:

Jacobsen v.
Katzer
is closed, after five years. Open Source won, and big. A
manufacturer who attempted to collect royalties from an Open Source
developer has lost two patents. As terms of his settlement with the
developer, the manufacturer is paying $100,000 to the Open Source
developer, has agreed to place himself under a permanent injunction,
and has signed a release of any liability to all members of the Open
Source project. The case was not “sealed” like so many settled
cases, so its documents are available to the public now.

The details are
fascinating. Let’s start with the Open Source developer: Bob
Jacobsen
is a high-energy physicist. He worked on the famous
BaBar
detector
and the array of Linux computers that gathers its data,
and he’s now helping to build a new detector. His colleagues took
the 2008 Nobel
Prize for Physics
, using BaBar to understand why the universe has
so much more matter than anti-matter (or we wouldn’t be here).

One of the things I
enjoy so much about Open Source is the amazing people
you meet, like Jacobsen. There were a few people that smart at Pixar
when I worked there, but there seem to be tons of them in the
Open Source world.

When
he’s not working to determine the whichness of the why, Jacobsen is a
model train hobbyist. And his involvement in that is just as intense
as his professional work. Back in the ’90’s, the digital control of model
railroads was
standardized
. Jacobsen
and his Open Source collaborators built
JMRI,
a set of Java tools for configuring and controlling the trains.

Now,
Open Source software has lots of applications on Wall Street, it’s
used in air-traffic control, and so many cell phones contain it of
late. So, of all the people who might be approached to pay patent
royalties, you might expect that

Bob the train nut
would be low on the list. But most of the big patent holders, it
seems, are smart enough not to bother an Open Source project.

Enter
Matthew Katzer. Hobbies are big business, and Katzer’s company
manufactured software for controlling model trains. He had filed a
patent on software that Jacobsen alleges was not
his invention in 1998, and through a loophole of the patent process,
kept adding “continuations” to his patent application through the
2000’s. Jacobsen alleged that Katzer
had
patented features that he’d seen

discussed on the JMRI project mailing list, but because Katzer’s
application was a continuation of an older patent, he was able to use
the 1998 date of his original patent on the 2002 application, and
claim priority. Katzer also registered a domain name with the name of
Jacobsen’s software, decoderpro.com, which Jacobsen later recovered
through a
WIPO
hearing
.

Katzer
started sending demand
letters
to Jacobsen,
asking
for more than $200,000 in patent royalties
.
What probably made Jacobsen most angry was when Katzer’s lawyer sent
a
Freedom
of Information Act request

to Jacobsen’s employer, the
U.S. Department of Energy
and its Lawrence Berkeley Labs,
accusing
them of sponsoring the model train project, and asking for copies of
all of Jacobsen’s email and Skype communications, and a long list of
other information which one could conclude was meant to embarrass
Jacobsen in front of his employer.

The Department of Energy
eventually denied the FOIA, but only after it had caused Jacobsen a
lot of trouble. Because it was so unlikely that the laboratory would
disclose what was obviously private correspondence, the only reason I
can see for this FOIA would have been to harass Jacobsen through his
employer and to put his job at risk.

At that point, Bob
Jacobsen had enough. Rather than wait to be sued, he decided to sue
Katzer first. But of course little folks like an Open Source
developer working on a scientist’s salary can’t afford to spend much
time in court. Katzer’s company expected to win any case simply
because Jacobsen would not be able to afford to defend himself.

Fortunately,
Jacobsen was able to find help. Not through the Software Freedom Law
Center, which was just being founded in 2005, but through attorney

Victoria
Hall
, who was active in
EFF.

Next Page: $100,000 judgement is handed down

Hall agreed to serve pro bono publico (at no charge, for the public benefit), and asked the court for
a
declaratory
judgment
that the patent
was unenforceable.

Katzer
responded by bringing a SLAPP suit against Jacobsen. SLAPP is a law
that was meant to defend little folks sued by big rich companies, but
is increasingly used in just the other direction. And the judge
upheld this, which meant that Jacobsen would have to pay
Katzer’s lawyer’s fees before the case was even decided. After some
court argument, the unreasonable fees asked were reduced to
$14,486.68 and $16,976.25, for two lawyers used by Katzer, and Bob
Jacobsen paid them.

Most Open Source developers, faced with a court-enforced $30,000+
bill to pay their opponent’s lawyers, would have been forced to give
up. This is a real problem in our legal system – “justice”
usually goes to the party that can afford it. But Jacobsen
persevered.

Early
in 2006, Jacobsen found that Katzer had placed part of Jacobsen’s
JMRI software in Katzer’s own product, and wasn’t
complying with the Open Source license
.
So, while coming after Jacobsen for infringement in making the JMRI
software, Katzer was also using JMRI in his own product and, Jacobsen
alleged, was
claiming it as his own work
.
This, in my opinion, was so seriously taking unfair advantage of the
Open Source developer that Katzer poisoned the perception of his own
case. It just took two appeals for the court to notice. Jacobsen
amended his suit to include
copyright
infringement and trademark violations

(domain cyber-squatting).

Here’s
where the case became a serious threat to all Open Source: Katzer’s
attorney filed a motion to dismiss, claiming that the Open
Source license was tantamount to a dedication to the public domain
,
and that Jacobsen thus didn’t have a right to sue for copyright
infringement or even contract violation. The judge upheld this, which
sent waves through the Open Source world. Were all of our licenses
invalid? Jacobsen appealed.

Part
of the problem in this case was Jacobsen’s choice of Open Source
license, the Artistic License 1.0. It’s
not very good as a legal document. A point I’ve tried to make on the
Open Source Initiative’s
license-approval mailing list is that a license with weak legal
language is useless, even if it says what the programmer involved
wants it to say.

The
Artistic License was
written by Larry Wall, creator of the
Perl
language, way back before Open Source developers had any lawyers who
would help them. Larry’s a nice guy, but he messed up the license
just as
any Open
Source developer who tries to write one on their own, without
competent legal assistance, is liable to do.

OSI, unfortunately, still does not insist
on legal solidity before it will approve

a
license, and a significant number of the licenses it
has
approved, including one or two
it passed last year, are liable to severely damage any Open Source
developer who uses them and ends up in court. Hopefully Bob
Jacobsen’s 5-year ordeal will help to prove this point to developers.

Because
of the weakness of Artistic
1.0,
about
the only license term that Jacobsen had a hope of enforcing in court
was the requirement that the developer be attributed correctly in all
copies of the work.

DMCA,
a law hated by many a technical person, came to Open Source’s
assistance this time. Jacobsen’s attorneys were able to file a
second
amended complaint

alleging that Katzer’s removal of Jacobsen’s attribution and license
terms violated a DMCA requirement that prevents interference with
copyright control information.

Katzer’s
case took a turn for the worse at this point. He had been ordered to
explain why his patent was valid and why Jacobsen infringed it. He
didn’t provide the documents by the court deadline – by which one
might assume that he couldn’t show
that Jacobsen had infringed, or that his patent was valid. By
failing to file convincing documents by the deadline, Katzer was in
violation of the judge’s order, and at risk of having a court
judgment, with penalties, filed against him.

Katzer
filed a disclaimer
of two of his patents

with the U.S. Patent Office the next day as a means of avoiding
having a judgment entered against him. So, he’d lost both patents,
but it turns out that he has at least one other patent with very
similar text, due to an examiner mistake at the patent office. But
having filed a disclaimer on two versions of that patent, his chances
of enforcing the third one should be reduced – and maybe the patent
office will wake up and look at the mischief.

With the patents gone, Katzer asked the
court to declare Jacobsen’s arguments “moot,” arguing that there
was no longer an issue for the court to decide. Jacobsen fought this,
and fortunately, the judge did not grant that motion. But Katzer was
making other wins: five Open Source organizations had presented
written argument in the case and asked to participate in the oral
arguments of the case as amicus curiæ,
“friends of the court.” They
were denied. SFLC eventually got to participate in one of the
appeals.

At
this point, the Federal Circuit Court ruled on the first appeal of
the case. I’ve previously
written
about that
appeal, which ruled that the Open Source license
was
enforceable, and then sent the
case back to the lower court judge. This was the biggest win for Open
Source to come out of the case, as it solidified the legal foundation
of
all Open Source
licenses by setting an important precedent. Only U.S. Federal courts
are
required to rule
according to this finding, but it is likely that other courts in the
U.S. and even other countries will follow it.

Immediately after
the appeal was handed down to the lower court, Jacobsen asked that
court for summary judgment against Katzer. The lower court refused,
and Jacobsen immediately initiated a second appeal.

Bob
Jacobsen liked the
article
I’d written about
his case.
David
McGowan
, the director of
the University of San Diego’s
Center for Intellectual
Property Law and Markets,
had
joined the case to assist Ms. Hall with the appeal, charging nothing
for his services. McGowan knew of me from an
S.F. Mercury
News
roundtable we’d
participated in some years before. He and Jacobsen solicited me to
provide expert-witness testimony for the next stage of the case. I
agreed to do so, contributing my services at no charge, for the good
of the Open Source community.

I was
asked to help the court understand the significance of its ruling to
all of Open Source, why the Open Source developer really was
irreparably
harmed, and why
violators of Open Source licenses should be enjoined – prevented by
court order from further violation. Because of court deadlines it was
necessary for me to submit my testimony about eight months before
there would be a hearing upon it.

In my testimony, I start with a few
paragraphs about who I am (so that the judge will have a reason to
believe me), then I explain the immense importance of attribution in
Open Source, something that I think was not obvious to the judge, how
Jacobsen was damaged through a lack of that attribution, and how the
judge could damage all of Open Source by making the wrong ruling.
After that, I was required as part of my testimony to list all of my
publications, but that turned out to be

impossible. Read
the testimony
.

At
this point, the second appeal came back from the Federal Circuit
Court. That court again ruled in his favor, granting
his motion for summary judgment in a 60-page appellant brief. Here
are my favorite lines from the court’s finding:

Repentant,
Katzer is not.

A fair
reading of the record shows Katzer has engaged in a pattern of

misappropriation
and obfuscation. That pattern establishes a likelihood that he will

continue,
especially since his conduct was intentional.

There was a very
similar line in one of SCO’s cases. It seems to be a pattern that the
party opposing an Open Source developer can be expected to “obfuscate.” With the granting of summary judgment, Katzer had little
chance to prevail in court. We knew that this was the “beginning of
the end” for the case. In order to give the parties a chance to
settle without outside noise in the press contributing to their
acrimony, we didn’t publicize the result of the second appeal – so
most of you are only hearing about it now.

Would my written
testimony influence the court, and would I go on the stand?
Ultimately, no. The judge never had to rule on my testimony.
Attorneys for both sides had it, however, and it would influence any
settlement that they came to by informing them about likely outcomes
should they fail to settle.

And settle they
did, after several months. As terms of the settlement:

  • Katzer is
    forever enjoined from copying, redistributing, or modifying the JMRI
    software, even though the license (now the LGPL) allows everyone
    else in the world to do so.

  • He’s
    enjoined from registering a trademark or domain name for a name used
    by the JMRI project.

  • He’s paying
    Jacobsen $100,000 over 18 months. This doesn’t fully compensate
    Jacobsen for all of his time and expense over 5 years, but it was
    the best he could get.

  • He has
    released all JMRI developers from any liability associated with JMRI
    up to 18 months from now. As a matter of fairness, Jacobsen extended
    the same release to Katzer. That means that neither can sue the
    other for things that have already taken place and will take place
    until then.

  • Both parties
    have agreed to a dispute resolution procedure for all disputes after
    those 18 months, based on mediation and arbitration, loser pays
    winner’s expenses. And he is enjoined from going outside of
    arbitration – for example by trying to pressure Jacobsen’s
    employer or relatives.

  • The
    case is
    not sealed. A
    “seal” means that the details of a settled case are not made
    public, and
    it happens all
    too often.

It was
Jacobsen’s insistence this case remain public so that cases like this
would not be fought over and over again.
It contains good precedents for other cases, and many potential
aggressors will avoid a case against an Open Source developer after
just
reading what went
on this time. The full details of this case go on for hundreds of
pages, you can find them
here.
This was a benefit for me, too. Usually, I’m ordered by the court to
keep quiet about a case forever, as one of the terms of the
settlement. So, this is the first chance that I ever have had to show
my
testimony
to anyone who
wasn’t involved with the case.

Over 5 years, Bob
Jacobsen put in thousands of hours of work on this case. He was
threatened with loss of his employment, and with all of the money and
property that he had. The $100,000 he eventually received doesn’t
compensate him for this. But I’m sure that the feeling of achievement
does.

Jacobsen had
another choice: In the face of Katzer’s demands, he could simply have
folded his tents, shut down the JMRI project, and played with his
trains in private. Katzer’s intent, at least at the start, was
probably to shut down a competitor. Jacobsen would probably have been
left alone if he’d consented to be shut. But instead, he devoted a
substantial part of his life to winning, and put his entire net worth
at risk to do it, so that the Open Source community and other model
railroad enthusiasts would not have to fight this sort of case again.
He hasn’t protected us from all aggressors, just as winning SCO
hasn’t, but he’s added tremendous resources to our legal tool-kit for
next time. For the personal cost he endured to give us that, we
should salute him.

And a
less sincere thank-you to Mr. Katzer. If we’re to have court wins for
Open Source, and thus legal precedents that work in our favor,
somebody has to play the loser.
Hopefully other potential aggressors will take a lesson from his
fate.

ALSO SEE: Bruce Perens: Combining GPL and Proprietary Software

AND: Bruce Perens: How Many Open Source Licenses Do You Need?

Bruce Perens is co-founder of the
Open Source movement in software. Today, he advises
corporations, governments, and law firms on issues concerning Open
Source / Free Software, teaches college, and on occasion serves as an
expert witness. More information on him is at his web site
perens.com

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