Jacobsen v Katzer And Kamind Associates, Inc - The Trainwreck Decision That Threatened To Derail Open Source Software

Although all Open Source Software ("OSS") licences

guarantee certain fundamental freedoms to licensees, there is a

vast amount of variation between them. When reviewing the terms

of any particular licence, one consideration is whether it will

constitute a bare licence or a contractual licence. The

distinction is important for three main reasons. First, the

terms of a contractual licence may be enforced against both

licensor and licensee. In contrast, under a bare licence, the

licensee cannot bring a claim against the licensor. Second,

when interpreting a contract, a court may imply or disallow

terms in certain circumstances to give effect to the presumed

intentions of the parties or public policy. Third, if a licence

is a contract then it is possible that the remedy of specific

performance might be granted by a court in the event that its

terms are broken. For an OSS licence such as the GNU General

Public License ("GPL"), specific performance of the

obligation to disclose source code would be an extremely

powerful remedy for the licensor.

Court judgments which look at OSS licences in detail remain

extremely rare and there is a complete absence of case-law for

England & Wales. When they do arise, they pique the

interest of the whole Open Source community. The recent US case

of Jacobsen v Katzer and Kamind Associates,

Inc [Case No. C 06-01905 JSW] was also set in the

glamorous world of the model railway hobbyist and so almost

guaranteed to attract widespread attention. The District Court

for the Northern District of California had to consider whether

it would award an interim injunction to prevent continuing

breaches of an OSS licence pending trial and, in the course of

doing so, the court examined whether the licensor was correct

to bring a claim for copyright infringement or whether his

claim ought to be for breach of contract. Finding that the

claim should be for breach of contract, the District Court

denied the request for an interim injunction and issued a

judgment that threw the OSS community into turmoil.

Going loco - the District Court's

decision1

Bob Jacobsen, a professor of physics at UC Berkeley, is a

keen model train hobbyist who manages and contributes code to

an open source project developing software for controlling

model trains. The software is licensed under the OSS Artistic

License.2 Professor Jacobsen alleged that Matthew

Katzer and Kamind Associates Inc. had infringed his copyright

by using his software outside the scope of the licence.

In August 2007, Professor Jacobsen's application for an

interim injunction was heard by the District Court for the

Northern District of California. The Judge...