1. Open Source Licensing Intro to IP – Prof Merges 3.5.09

2. Newsflash!!

3. Newsflash! Reed Elsevier, Inc. v. Muchnick, U.S., No. 08-103, 3/2/09 – cert granted

4. Muchnick cert question: The petition for a writ of certiorari is granted limited to the following question: Does 17 U.S.C. §411(a) restrict the subject matter jurisdiction of the federal courts over copyright infringement actions?

5. Tasini Class Action Settlement N.Y. Times v. Tasini, 533 U.S. 483 (2001) Held: Electronic and CD-ROM databases do not constitute revisions of periodicals, and therefore publishers need to get permission from individual authors before licensing articles to such databases.

6. 201 (c) Contributions to Collective Works. — Copyright in each separate contribution to a collective work is distinct from copyright in the collective work as a whole, and vests initially in the author of the contribution. In the absence of an express transfer of the copyright or of any rights under it, the owner of copyright in the collective work is presumed to have acquired only the privilege of reproducing and distributing the contribution as part of that particular collective work, any revision of that collective work, and any later collective work in the same series.

7. Practical Impact Tasini v. NY Times: “The Authors and Publishers may enter into an agreement allowing continued reproduction of the Authors’ works; they, and if necessary the courts and Congress, may draw on numerous models for distributing copyrighted works and remunerating authors for their distribution.”

8. Sec. 411(a) “[N]o action for infringement of the copyright in any United States work shall be instituted until registration of the copyright claim has been made in accordance with this title.”

9. Jacobsen v. Katzer

16. Katzer filed his first patent application on June 24, 1998. Although well aware of other's work, Katzer intentionally did not tell the Patent Office that the "invention" he was claiming had already been done by…others. There's no doubt that Katzer knew of these. Katzer described them in his talk at the 1997 NMRA convention, and in his 1st, 2nd and 3rd talks at the 1998 convention. If he had produced this information to the patent examiner, as he was required to do by law, these patents would never have been granted, and everybody would have been saved a lot of trouble.first patent application19971st2nd 3rd

18. Robert Jacobsen

19. Java Model Railway Interface http://jmri.sourceforge.net/ DecoderPro is the creation of a large number of volunteers, model railroaders like yourself who've each contributed to making DecoderPro a great resource for all of us. You can help too, even if you're not a computer programmer; click here for suggestions on how help.volunteersclick here for suggestions on how help

20. Open Source Initiative

21. http://jmri.sourceforge.net/ After the '329 patent issued, Katzer and Russell sent letters that demanded $19, and later $29 in royalties per downloaded copy of JMRI.... Bob Jacobsen received bills for in excess of $200,000 on a roughly monthly basis from August 2005 to January 2006. (There's a separate correspondence page that has the all the letters)demanded $19$29 in royaltiesbills for in excess of $200,000correspondence page

24. The Artistic License Preamble The intent of this document is to state the conditions under which a Package may be copied, such that the Copyright Holder maintains some semblance of artistic control over the development of the package, while giving the users of the package the right to use and distribute the Package in a more- or-less customary fashion, plus the right to make reasonable modifications.

25. 3. You may otherwise modify your copy of this Package in any way, provided that you insert a prominent notice in each changed file stating how and when you changed that file, and provided that you do at least ONE of the following: a) place your modifications in the Public Domain or otherwise make them Freely Available, such as by posting said modifications to Usenet or an equivalent medium, or placing the modifications on a major archive site such as ftp.uu.net, or by allowing the Copyright Holder to include your modifications in the Standard Version of the Package. b) use the modified Package only within your corporation or organization.

26. District Court holding The scope of the nonexclusive license is, therefore, intentionally broad. The condition that the user insert a prominent notice of attribution does not limit the scope of the license. Rather, Defendants' alleged violation of the conditions of the license may have constituted a breach of the nonexclusive license, but does not create liability for copyright infringement where it would not otherwise exist. – 535 F.3d at 1376

27. Some basic points Violation of any right in 17 USC 106 is infringement A license protects the licensee from infringement suit – but only within the scope of the license

28. Example: selective license under 106 Right to make copies But not derivative works Exceed license, face (1) breach of contract and/or (2) infringement suit

29. 535 F.3d at 1376 One of Katzer/Kamind's predecessors or employees is alleged to have downloaded the decoder definition files from DecoderPro and used portions of these files as part of the Decoder Commander software...

30. Katzer’s violations of contract [T]he Decoder Commander software did not include (1) the author' names, (2) JMRI copyright notices, (3) references to the COPYING file, (4) an identification of SourceForge or JMRI as the original source of the definition files, and (5) a description of how the files or computer code had been changed from the original source code.

31. The District Court found that Jacobsen had a cause of action only for breach of contract, rather than an action for copyright infringement based on a breach of the conditions of the Artistic License. Because a breach of contract creates no presumption of irreparable harm, the District Court denied the motion for a preliminary injunction.

32. 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. – 535 F.2d at 1379

33. 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. 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 sue only for breach of contract. Sun Microsystems, Inc., v. Microsoft Corp., 188 F.3d 1115, 1121 (9th Cir.1999)... – 535 F.3d at 1380

34. If, however, a license is limited in scope and the licensee acts outside the scope, the licensor can bring an action for copyright infringement. See S.O.S., Inc. v. Payday, Inc., 886 F.2d 1081, 1087 (9th Cir.1989); Nimmer on Copyright, § 1015[A] (1999).

35. 535 F.3d at 1381 “The intent of this document is to state the conditions under which a Package may be copied.” (Emphasis added.) The Artistic License also uses the traditional language of conditions by noting that the rights to copy, modify, and distribute are granted “provided that ” the conditions are met. Under California contract law, “provided that” typically denotes a condition. See, e.g., Diepenbrock v. Luiz, 159 Cal. 716, 115 P. 743 (1911)

36. Covenant v. Condition Graham v. James, 144 F.3d, 229, 236‐37 (2d Cir. 1998). Sun Microsystems v. Microsoft, 188 F.2d 1115, 1122 (9th Cir. 1999).

37. A condition is a contract term that must be performed by Party A if Party B is to have the obligation to perform Failure to perform by A leads to various rights for B, often including the right to suspend performance and sue for breach immediately Covenant v. Condition

38. “Mere covenant” A promise that must be fulfilled; but if it is not, this does not by itself permit termination/suspension of performance by the other party Real estate closing: (1) Cashier’s check for payment; (2) notice of filing in Recorder’s office...

39. “Key words” for conditions If _____, then _________ “Provided that” Condition the grant of the rights on certain actions by the grantee/licensee

40. Lawrence Rosen, Bad Facts Make Good Law: The Jacobsen Case and Open Source 5 (2008), available at www.rosenlaw.com (“I know the people who wrote the Artistic License, and those who wrote the GPL, and those who wrote many other open source licenses. For most of us, we lucked out on the Jacobsen case. Many of us license authors didn’t know the legal difference between a “covenant” and a “condition” when our licenses were written (and many attorneys still don’t).”