Jacobsen v. Katzer Continues

Last August the Federal Circuit held in Jacobsen v. Katzer that the Artistic License, a type of open source license, could be enforced via injunction, as a form of copyright license.  Free and open source advocates mostly cheered; the holding is consistent with the idea that open source licenses should be enforceable via injunction so that the development community can be managed and forking of the code avoided.

The Federal Circuit was not ruling on the merits of the underlying claim by Jacobsen, on behalf of the Java Model Railroad Interface, or JMRI, against Katzer.  The district court had rejected Jacobsen’s motion for a preliminary injunction, ruling that the license could be enforced only as a contract, and the Court of Appeals held that the district court erred.

So the parties went back to the district court, Jacobsen again moved for a preliminary injunction, and a week ago (January 5), the district court again denied the motion.  Jacobsen had preserved his claim for breach of contract, so the court ruled on both the contract claim as well as on the copyright claim.  As to the contract claim, this time the court ruled that Jacobsen had not produced evidence of harm caused by Katzer’s breach, and that the contract claim was preempted in any case by Section 301 of the Copyright Act.  But the court gave Jacobsen leave to amend the claim.  As to the copyright claim, again the court found that Jacobsen had not sufficiently alleged irreparable harm stemming from Katzer’s failure to comply with the terms of the license.

I had a few other things to say about this the other day at the Law and Computers Section of the AALS Annual Meeting.  Rebecca Tushnet has posted a helpful summary of my remarks on open source licenses as well as those of my co-panelists.  The bottom line:  The district court seemed to be skeptical of the open source concept during the first go-round, and it seemed to be skeptical of the concept in the more recent proceeding.  At the least, the lesson here is that the Federal Circuit’s opinion is helpful and important, but the Federal Circuit’s holding isn’t an incantation that wins cases all by itself.  Jacobsen v. Katzer doesn’t substitute for the importance of traditional lawyering in IP cases.  If you’re an IP owner and you want to win, put clear evidence of injury into the record.

The case continues.

Update (1/23):  A podcast of the AALS Law and Computers Section meeting is now available, here.