We just came across this post at the Law & Life: Silicon Valley Blog about a recent update in the Jacobsen v. Katzer case in the federal District Court in San Francisco, a case with connections to Portland, and which has already produced a number of important legal decisions about open source software (OSS). As the author notes, an appeal last year in the case produced a great victory for licensors of OSS, while this most recent Order by District Judge Jeffrey White is a setback for OSS licensors seeking to enjoin copyright infringement because the burden to obtain an injunction for copyright infringement has been elevated.
As Judge White notes in his Order, the United States Supreme Court, in Winter v. Natural Resources Defense Council, recently changed the law governing preliminary injunctions, elevating a plaintiff’s burden. Prior to the ruling in Winter, when Jacobsen was initially seeking to enjoin the defendants from willfully infringing his copyrighted material, his burden was to demonstrate a likelihood of success on the merits of his copyright claim, which would automatically entitle him to a presumption of irreparable harm (thus meeting the previously-accepted elements for an injunction).
Now, according to Winter, plaintiffs like Jacobsen must demonstrate that they are likely to succeed on the merits, likely to suffer irreparable harm, the balance of equities tips in their favor, and that an injunction is in the public interest. Not surprisingly, Jacobsen was unable to meet this burden. The Court denied his injunction request because he failed to plead actual harm. The Court noted that there are many potential harms that a copyright holder may face in the open source field, such as harm to a program creator’s market share or its reputation gained through incubating open source projects. Nevertheless, the Court found that the harms demonstrated by Jacobsen were only “speculative or poential” and not “real, imminent and significant.”
In addition to the elevated pleading standard, there is more concern for OSS licensors in footnote 3 on page 14 of the Order. There the Court found that Jacobsen couldn’t identify what copyrights he actually had over the open source licensed project. The project files were too complicated. Judge White stated:
The Court also finds that Jacobsen has failed to identify with the requisite particularity the extent of his copyright ownership over the disputed underlying material. The [open source community project files] incorporate many manufacturers’ specifications data as well as rights to specific terms whose copyright is owned by Defendants. Even if Jacobsen’s heavy burden to warrant injunctive relief had been met, it is unclear how the Court would fashion an injunction which would be narrowly tailored to enjoin only those allegedly infringing uses of Jacobsen’s copyrighted content.
So footnote 3 can be read as a warning to OSS developers to use clear language in their licenses. This case has already produced a number of important decisions. We’ll of course be following the case for any further developments, and please let us know if you hear of anything.
Tags: jacobsen v. katzer, open source, oss
