A computer program used to guide model trains around a track factored into a recent ruling by the U.S. Circuit Court of Appeals in Washington, D.C.

The decision in Robert Jacobsen v. Matthew Katzer and KAM Industries stated that the developer of an application, adapted by some to program computer chips that control model trains, can sue for copyright infringement, even though the application is free.

Although the decision comes from another circuit, several intellectual property and business law attorneys in Milwaukee said it’s a reminder of the things companies should keep in mind when dealing with “open source” software. The ruling helps answer the question of how much legal recourse developers of that software have to protect their product once it’s released and modified. In addition, it outlined the potential consequences for companies who don’t adhere to the licensing agreements.

“I think people say, it’s open source, so it’s free and I can do whatever I want,” said attorney Adam L. Brookman of Boyle Fredrickson S.C. “But this case makes clear there really are potential repercussions.”

License to Fulfill

Brookman said the decision reminds his clients and other companies in Wisconsin using open source software to make sure they are abiding by their respective licensing agreements.

Fellow IP attorney Sarah Maxson Hatch Brindley of Quarles & Brady LLP agreed that the ruling serves as a reminder to users of free software, but that it is not unprecedented.

“Basically, it upholds existing law,” said Brindley. “Had the court reached the opposite result, that Jacobsen’s license did not contain enforceable copyright conditions, there would be more concern about ramifications in Wisconsin.”

But the decision does open the door for open source developers to seek not only attribution for their original work, but possible monetary compensation if their programs are misappropriated.

In the case of Jacobsen, who manages an open source software group, he claimed an application he created was infringed. He sought an injunction against KAM Industries, which makes a competing product, but a lower court denied Jacobsen’s motion.

The Federal Circuit Court of Appeals vacated that ruling and returned the case to the district court.

Writing for the court, Judge Faith Hochberg stated, “Traditionally, copyright owners sold their copyrighted material in exchange for money. The lack of money changing hands in open source licensing should not be presumed to mean that there is no economic consideration, however.”

Brindley noted that while open source software is “free” in terms of exchanging ideas, there is still a “price” attached to the software.

“The fact that a software program is freely available does not negate the copyrights in that program,” said Brindley. “Any terms and conditions tied to the use of the software must be respected or copyright infringement can occur.”

Business attorney Rebecca Lynn Grassl Bradley said the main issue decided by the ruling is whether copyright law or contract law applies to cases of open source software.

“The court said that use outside of a license grant is not a contractual breach, but rather a copyright infringement violation,” said Bradley of Whyte Hirschboeck Dud-ek S.C.
Attorneys noted that it is often easier to recover monetary damages in a copyright infringement suit. Prior to the federal court ruling, the U.S. District Court in San Francisco had said that Jacobsen could sue for breach of contract, but not copyright infringement.

Strong Case

None of the attorneys interviewed knew of any other case law or pending litigation in Wisconsin regarding open source software, but they also did not expect the federal ruling to be overturned.

“The case validates the open source license model, which is to ensure that the incentive to create or continue the software is maintained,” said Bradley. “It’s a pretty solid ruling and I don’t see any ground to justify a reversal of it.”

Bradley said she does not expect an explosion in open source litigation in Wisconsin, since most licensing agreements for free software are designed to avoid costly court battles.
But Brookman said as the trend continues to make more software available through open source, developers may take legal action to protect their products.

“Now that there is at least the suggestion that there are damages available, developers may push it more than they have in the past,” said Brookman. “Most of the people who make open source software are not large companies, so if they see the opportunity to get some money, I think there will be added cases.”

Portions of this story come from the Associated Press.