Jacobsen v. Katzer – Open Source infringment

In August, the Court of Appeals for the Federal Circuit issued a ruling (Jacobsen v. Katzer) that has been widely discussed as acknowledging the rights of developers of open source software. This opinion, while not necessarily binding in Minnesota, is helpful in illustrating important issues that relate not only to open-source software licensing and development but to general contracts that apply to everyone.

The dispute involved an open-source developer and a company that used the open-source code as a part of their own software. Despite a license that required that the open-source developer be credited and copyright information retained in subsequent use of the code, the defendant stripped out this information. The issue was whether failing to provide this information caused the subsequent software to be an infringement of the plaintiff’s copyright, or whether it was simply a breach of contract – the difference meaning considerably different remedies.

The opinion contained an extensive discussion on the importance of “conditions” verses “covenants” in copyright agreements. The court found that the language found in the agreement requiring that copyright information for the open-source developers be provided in subsequent iterations of the code was not simply a promise (covenant) to do something, but rather it was a conditional requirement for the license. The court also noted that while copyright law only protects economic interests (rather than moral rights), the requirement of attribution and copyright notification in open-source licenses is in fact related to the economic interest of promoting the open-source community and in promoting the services of many of its participants.

While this opinion is useful to illustrate many important principles, it must be kept in mind that it does not provide a blanket cause of action for infringement merely because software contains open-source code. What it does do is to show the importance of controlling the origination of code and providing appropriate attribution. Additionally, while not as clear in the opinion, businesses licensing software or other intellectual property should pay attention to the specific language and terms of the agreement, as it can be paramount in controlling whether the agreement is controlled under copyright law verses contracts.

Copyright Basics

Every once and a while it is good to go back to basics.

What is a copyright?
A copyright is a set of rights (often referred to as a “bundle of rights”) afforded to the owner of original works. Under federal law these rights include the right to reproduce the work, prepare derivatives of the original, and the right to perform the work publicly. By controlling these rights the owner may receive income from licenses in the form of royalties or directly from the sale of these rights.

How do I get a copyright?
Under current U.S. law all that is required to get a copyright is that the original work be “fixed” in a “tangible form.” For example, if you are a writer, once the words appear on the page (or on computer disk) you have a copyright. There are no registration requirements to obtain the copyright, however, in order to enforce the copyright the work must be registered with the Copyright Office at the Library of Congress. Additionally, the work must have been registered in order to seek statutory damages or attorney’s fees in the event that you are forced to litigate to protect your rights. If you choose to register your work you must first determine what Copyright Office classification fits into, fill out the appropriate form and submit copies to the Library of Congress along with a registration fee of twenty dollars.

What do they mean by “original?”
In the United States a work must be “original” in order to be protected by federal copyright. This originality does not simply mean that the work be new, but rather that the work has a “modicum” of creativity and not be merely the result of the “sweat of the brow.” While the degree of creativity needed is debated, the central premise remains: compilation of data is not sufficient to create a copyright without some additional efforts. For example, the leading case on the subject held that merely compiling information for a phonebook does not give someone the right to a copyright in the compilation of the phone numbers.

How long does a copyright last?
Under the Sonny Bono Copyright Extension Act which was enacted last year, the term of a copyright authored by an individual is the life of the author plus seventy years. In cases involving joint works, work for hire, anonymous or pseudonymous works, the copyright exists for whichever expires first; 95 years from the works first publication, or 120 years from the year of the work’s creation. This only applies to works created after January 1, 1978.

What about the © symbol?
While it is not required under current U.S. copyright law, having ©, “copr,” or “copyright” located on the work is a fairly good idea since it gives the viewer notice that you are claiming your copyright. The notice should also contain the year of the creation of the work and the name of the copyright holder. For example the copyright notice for this document is “© 2008 Kenneth L. Kunkle” In rare situations involving creation of works by citizens of some South American countries, the phrase “All Rights Reserved” must also be placed on the work. For the copyright on a sound recording (i.e. record, C.D., or tape) the proper symbol is (P) with the name and the year listed in the same way as with the © symbol. However, the (P) symbol only applies to the sound recording and not the underlying work or any cover art or liner materials.

Poor Man’s Copyright

A frequent comment I hear when talking with musicians is that they think mailing a copy of their music to themselves will work just like a copyright registration, but cheaper. This is sometimes known as a “Poor Man’s copyright.” While this might (and I use the term loosely” be helpful from an evidence standpoint, it doesn’t really help with who created it and it will likely run into all kinds of evidentiary problems. Writers are much better off going ahead and filling out the copyright application. By filing a registration you set yourself up to collect attorney’s fees and potentially higher damages if you have to file a lawsuit. By the way, in order to even get into a court on a claim of copyright infringement you have to file a registration, but if you wait to long to register you may lose out on some forms of damages.

The better advice is to always put together a song writer split agreement – i.e. write what contribution (or percentage) of each song each person contributed. In a band setting it is good to have all members sign off, even if they did not contribute.

It is much easier to do things right the first time then to get into a fight over it later.

Morals Clause

What does a “morals clause do?


The basic idea is simple – if you are in the public eye and you do something stupid and doing that stupid thing makes the purpose of the contract frustrated, then the other party can say I’m canceling the deal. For example, lets say the Queen of England enters into a contract with a department store to endorse its new clothing line “Queen.” She might have a clause in her deal that says something like

    Queen agrees to conduct herself with due regard to public conventions and morals, and agrees that she will not do or commit any act or thing that will tend to degrade her in society or bring her into public hatred, contempt, scorn or ridicule, or that will tend to shock, insult or offend the community or ridicule public morals or decency.

She then gets arrested for soliciting men in a downtown Minneapolis hotel. The Department store has an interest in protecting its image and can cancel the deal by invoking the morals clause. A few real life examples include: Kate Moss – Chanel – photographed allegedly snorting cocaine – Michael Nade (“All My Children”) – ABC – cocaine arrest Sidney Ponson – Baltimore Orioles – third arrest for alcohol-related violations But wait, if you think this is a concern just for those big name types, think again, these clauses can pop up all kinds of places, from local TV weathermen, to mechanical contractors.

Reverse Morals

So is turn about fair play? Some folks think so and are putting “reverse morals clauses” into their deals so that if the company is tainted by scandal, they endorser can get out of the deal. Same concept applied to other types of arrangements such as naming rights, think Enron, but the same applies to smaller deals as well.

Non-compete is based on customers, not location.

While worker non-competes have are generally construed against the employer, the standard of enforceability in the sale of a business in more liberally interpreted in favor of the party seeking to enforce, as it is focused on whether the restriction is reasonable to protect the goodwill of the business that was sold.

When selling his optometry business, Jay Peterson agreed not to “participate, compete or be engaged in the business of optical goods . . . within a five-mile radius of . . .” the location of his former business. After a dispute arose concerning the terms of the sale, Peterson opened a new practice ten miles away, which would have been fine except for the fact that he then took out advertising in the newspaper located in his old town encouraging clients to come and see him at the new location. In February, the Minnesota Appellate court ruled that the Peterson could be prevented from placing those advertisements even though the business itself was outside of the designated geographic area. Interestingly, the court noted that while they felt a limited restriction was appropriate, it should not be seen as placing a general ban on advertising that may have incidental exposure to the geographic area. In relevant part the court noted –

. . .the Court will not restrain publications with large circulation areas that happen to enter the five mile area (e.g. Minneapolis Star and Tribune). We agree with the district court’s reasoning. Advertising in the Yellow Pages and the Internet, which have large circulation areas that only incidentally enter the restricted geographic areas, therefore, would not be prohibited by the non-compete agreement. Rather, the prohibition is limited to advertisements “specifically targeted” at persons in the restricted geographic areas.

Sealock v. Petersen, No. A06-2479 (Minn. App. 2/5/2008) (Minn. App., 2008).

This case provides a nice illustration of how you should look at the intent of the agreement to not solicit customers, rather than trying to circumvent the intent based on the literal geography of the agreement. However, in this age of mass circulation, this decision highlights a distinction that the court is willing to make between specifically targeted marketing efforts and marketing nets cast by much broader means.

Minimum Contacts in A Virtual World

This article was orignally printed in Minnesota Bench & Bar (February 1998)

Each month thousands of American businesses create new Internet sites in order to market and distribute products and services nationally or internationally. The ease of using the Internet for global marketing has struck down many of the previous financial and legal hurdles that companies were required to clear. Consequently, many businesses are rushing forward without considering the possibilities that they may be subjected to the jurisdiction of distant states or nations, and courts increasingly are finding that web pages create the minimum contacts necessary to exercise personal jurisdiction over distant defendants. Thus, the challenge for attorneys is to help businesses use this vibrant medium without being subjected to the jurisdiction of foreign states and countries.

The rest of this article can be found at kunklelaw.net

The Human Side of the Deal

It was recently speculated that the settlement of a $60 million dollar royalty lawsuit against EMI by the Apple Corp. was partially driven by a desire of Paul McCartney to begin having Beatles music available for downloads, which in turn was also a factor in the exit of Beatle’s executive Neil Aspinall who, according to reports, had largely opposed allowing the Beatles catalog to go online. [See]

This just goes to show that business may be business, but it also has a very human aspect. Business decisions are made by people, who make decisions for business purposes — but in the end, decisions are often driven by factors outside the business. In this case the divorce and lack of antenuptual agreements by Paul McCartney may, as is speculated, been a factor the ouster of a top executive, driving the settlement of a multimillion dollar lawsuit, and a future milestone in digital distribution.

Fart Dolls and Opinions

While you would think the first posting of a new blog would take the high road and post on something impressive in order to flex a little muscle, I can’t resist making this the first post.

In what is one of the more amusing topics for a case that I’ve seen lately, the U.S. 7th Circuit Court of Appeals recently issued an opinion in a copyright case involving “fart Dolls.” The dolls name you ask? – “Pull my Finger Fred.” An interesting opinion, however I suspect the judge enjoyed the opportunity to be a little juvenile – I mean how often is he going to have the opportunity to use some version of the word “fart” over 40 times in a single opinion, or my favorite “silent but deadly.” Let’s face it, this is a rare opportunity for you as a judge and I’m frankly a little disappointed he didn’t take it further. As an attorneythe thing I find fascinating is that not only are hundreds of thousands of these dolls being sold, the attorneys were at one point awarded over 500k in fees!!!