Documentos de Académico
Documentos de Profesional
Documentos de Cultura
KATZER 1373
Cite as 535 F.3d 1373 (Fed. Cir. 2008)
of the ‘‘duty to assist’’. (JA 41). Howev- greater in number, outweigh later exami-
er, a breach of the ‘‘duty to assist’’ alone nations and that the adjudicator therefore
does not constitute CUE. Cook v. Principi, ought to have granted him disability.
318 F.3d 1334, 1341 (Fed.Cir.2002). We Without such a rule it again seems that
cannot conclude that more is required by Willsey is asking us to re-weigh the evi-
the first prong of the Russell test. dence, something we are not free to do.
We also cannot conclude that the deci-
sion of the RO contained an ‘‘undebatable’’ Conclusion
error. The RO made its decision on the The Court recognizes the very real diffi-
basis of PTSD being ‘‘not found on exam’’ culties facing Mr. Willsey in seeking both
by the VA examiner. (JA 41). The RO at recognition and treatment for PTSD. We
the least knew of the other medical rec- recognize as well that the VA’s case pro-
ords. For us to hold that the decision of cessing at issue here was arguably less
the RO in this case was based on an than perfect in all of the various steps of
‘‘undebatable’’ error, we would have to its evaluation and treatment of Mr. Will-
hold that no reasonable adjudicator could
sey’s condition. None of these miscues,
weigh the evidence in the way that the
however, rise to the level of a clear, unmis-
adjudicator did. This legal determination
takable error. Therefore, the decision of
would, on the record before us, be un-
the Veterans Court denying an earlier ef-
founded. A reasonable adjudicator could,
fective date to Willsey is affirmed.
after reviewing the reports from the VA
examiner and Willsey’s other records, de- Affirmed
termine that greater weight should be giv-
en to the VA examiner’s report, particu-
larly because that report was conducted
especially for the purpose of determining
,
service connection and was the last in
time. Even were we to disagree with the
adjudicator’s decision, we would not be
free to re-weigh the evidence to conclude
Robert JACOBSEN, Plaintiff–
that this decision, even if it were at least
Appellant,
arguably not the best one, was so unrea-
sonable as to result in an undebatable v.
error. Matthew KATZER and Kamind Associ-
Finally, the record and the law as they ates, Inc. (doing business as KAM In-
existed at the time of the determination do dustries), Defendants–Appellees.
not compel a finding of CUE in the 1983
No. 2008–1001.
determination. Willsey seems to contend
that, because he had two prior diagnoses United States Court of Appeals,
of PTSD, the adjudicator was required to Federal Circuit.
find that he was disabled and there was
service connection in his case. But, Will- Aug. 13, 2008.
sey was also later diagnosed as not having Background: Copyright holder filed ac-
PTSD by a VA examiner, after the two tion against competitor alleging infringe-
earlier examinations. Willsey does not ment of copyright to computer program-
point to any rule or regulation that states ming code and also sought declaratory
that earlier examinations, if they are judgment that patent issued to defendant
1374 535 FEDERAL REPORTER, 3d SERIES
software license and competitor copied, 12. Copyrights and Intellectual Property
modified, and distributed portions of soft- O36
ware as part of other software in violation Copyright law does not automatically
of open source license. protect the rights of authors to credit for
copyrighted materials.
8. Copyrights and Intellectual Property
O48 13. Copyrights and Intellectual Property
Generally, a copyright owner who O48
grants a nonexclusive license to use his A copyright holder can grant the right
copyrighted material waives his right to to make certain modifications, yet retain
sue the licensee for copyright infringement his right to prevent other modifications.
and can sue only for breach of contract;
however, if a license is limited in scope and
the licensee acts outside the scope, the
licensor can bring an action for copyright
infringement. Victoria K. Hall, Law Office of Victoria
K. Hall, of Bethesda, MD, argued for
9. Contracts O218 plaintiff-appellant.
Under California contract law, the R. Scott Jerger, Field Jerger LLP, of
phrase, ‘‘provided that,’’ typically denotes a Portland, OR, argued for defendants-ap-
condition. pellees.
10. Copyrights and Intellectual Property Anthony T. Falzone, Stanford Law
O36 School, Center for Internet and Society, of
Copyright holders who engage in open Stanford, CA, for amici curiae Creative
source computer software licensing have Commons Corporation, et al. With him on
the right to control the modification and the brief was Christopher K. Ridder.
distribution of copyrighted material; the
choice to exact consideration in the form of Before MICHEL, Chief Judge, PROST,
compliance with the open source require- Circuit Judge, and HOCHBERG,* District
ments of disclosure and explanation of Judge.
changes, rather than as a dollar-denom-
HOCHBERG, District Judge.
inated fee, is entitled to no less legal rec-
ognition under the Copyright Act. We consider here the ability of a copy-
right holder to dedicate certain work to
11. Copyrights and Intellectual Property free public use and yet enforce an ‘‘open
O10.4 source’’ copyright license to control the
The choice to exact consideration in future distribution and modification of that
the form of compliance with the computer work. Appellant Robert Jacobsen (‘‘Ja-
software open source requirements of dis- cobsen’’) appeals from an order denying a
closure and explanation of changes, rather motion for preliminary injunction. Jacob-
than as a dollar-denominated fee, is enti- sen v. Katzer, No. 06–CV–01905 JSW, 2007
tled to no less legal recognition under the WL 2358628 (N.D.Cal. Aug. 17, 2007). Ja-
Copyright Act. cobsen holds a copyright to computer pro-
* The Honorable Faith S. Hochberg, District District of New Jersey, sitting by designation.
Judge, United States District Court for the
1376 535 FEDERAL REPORTER, 3d SERIES
various computer file names of Decoder- der the patent laws. See 28 U.S.C.
Pro files without providing a reference to § 2201(a); Golan v. Pingel Enter., 310
the original JMRI files or information on F.3d 1360, 1367 (Fed.Cir.2002) (explaining
where to get the Standard Version.1 that ‘‘[i]n the context of a complaint seek-
Jacobsen moved for a preliminary in- ing a declaration of noninfringement, the
junction, arguing that the violation of the action threatened by the declaratory de-
terms of the Artistic License constituted fendant TTT would be an action for patent
copyright infringement and that, under infringement,’’ and ‘‘[s]uch an action clear-
Ninth Circuit law, irreparable harm could ly arises under the patent laws’’). Thus
be presumed in a copyright infringement the district court’s jurisdiction was based,
case. The District Court reviewed the at least in part, on 28 U.S.C. § 1338(a) as
Artistic License and determined that ‘‘De- it relates to the patent laws, and we have
fendants’ alleged violation of the conditions appellate jurisdiction under 28 U.S.C.
of the license may have constituted a § 1292(c)(1). See 28 U.S.C. § 1338(a)
breach of the nonexclusive license, but (‘‘The district courts shall have original
does not create liability for copyright in- jurisdiction of any civil action arising un-
fringement where it would not otherwise der any Act of Congress relating to pat-
exist.’’ Id. at *7. The District Court found ents, plant variety protection, copyrights
that Jacobsen had a cause of action only and trademarks.’’); id. at § 1295(a)(1)
for breach of contract, rather than an ac- (The Federal Circuit shall have exclusive
tion for copyright infringement based on a jurisdiction ‘‘of an appeal from a final deci-
breach of the conditions of the Artistic sion of a district court of the United
License. Because a breach of contract States’’ if (1) ‘‘the jurisdiction of that court
creates no presumption of irreparable was based, in whole or in part, on section
harm, the District Court denied the motion 1338 of this title’’ and (2) the case is not ‘‘a
for a preliminary injunction. case involving a claim arising under any
[1] Jacobsen appeals the finding that Act of Congress relating to copyrights,
he does not have a cause of action for exclusive rights in mask works, or trade-
copyright infringement. Although an ap- marks and no other claims under section
peal concerning copyright law and not pat- 1338(a).’’); id. at § 1292(c)(1) (Federal Cir-
ent law is rare in our Circuit, here we cuit shall have jurisdiction over appeals
indeed possess appellate jurisdiction. In from interlocutory orders of the district
the district court, Jacobsen’s operative courts refusing injunctions ‘‘in any case
complaint against Katzer/Kamind included over which the court would have jurisdic-
not only his claim for copyright infringe- tion of an appeal under section 1295’’).
ment, but also claims seeking a declaratory
judgment that a patent issued to Katzer is II.
not infringed by Jacobsen and is invalid. [2–4] This Court looks to the interpre-
Therefore the complaint arose in part un- tive law of the regional circuit for issues
1. Katzer/Kamind represents that all potential- behavior could not recur. Jacobsen, 2007 WL
ly infringing activities using any of the disput- 2358628 at *5. We agree that this matter is
ed material have been voluntarily ceased. not moot. See also Adarand Constructors, Inc.
The district court held that it could not find as v. Slater, 528 U.S. 216, 222, 120 S.Ct. 722,
a matter of law that Katzer/Kamind’s volun- 145 L.Ed.2d 650 (2000) (‘‘Voluntary cessation
tary termination of allegedly wrongful activity of challenged conduct moots a case TTT only if
renders the motion for preliminary injunction it is absolutely clear that the allegedly wrong-
moot because it could not find as a matter of ful behavior could not reasonably be expected
law that it is absolutely clear that the alleged to recur.’’ (emphasis in original)).
1378 535 FEDERAL REPORTER, 3d SERIES
not exclusively assigned to the Federal harm is presumed; or (2) a fair chance of
Circuit. Hutchins v. Zoll Med. Corp., 492 success on the merits and a clear disparity
F.3d 1377, 1383 (Fed.Cir.2007). Under in the relative hardships that tips sharply
Ninth Circuit law, an order granting or in his favor.
denying a preliminary injunction will be
reversed only if the district court relied on A.
an erroneous legal premise or abused its Public licenses, often referred to as
discretion. Wright v. Rushen, 642 F.2d ‘‘open source’’ licenses, are used by artists,
1129, 1132 (9th Cir.1981). A district
authors, educators, software developers,
court’s order denying a preliminary injunc-
and scientists who wish to create collabo-
tion is reversible for factual error only
rative projects and to dedicate certain
when the district court rests its conclu-
works to the public. Several types of pub-
sions on clearly erroneous findings of fact.
lic licenses have been designed to provide
Sports Form, Inc. v. United Press Int’l,
Inc., 686 F.2d 750, 753 (9th Cir.1982). creators of copyrighted materials a means
to protect and control their copyrights.
[5] In determining whether to issue a Creative Commons, one of the amici curi-
preliminary injunction, the Ninth Circuit ae, provides free copyright licenses to al-
requires demonstration of (1) a combina- low parties to dedicate their works to the
tion of probability of success on the merits
public or to license certain uses of their
and the possibility of irreparable harm; or
works while keeping some rights reserved.
(2) serious questions going to the merits
where the balance of hardships tips sharp- Open source licensing has become a
ly in the moving party’s favor. Perfect 10, widely used method of creative collabora-
Inc. v. Amazon.com, Inc., 487 F.3d 701, tion that serves to advance the arts and
713–14 (9th Cir.2007); Dep’t of Parks & sciences in a manner and at a pace that
Recreation v. Bazaar Del Mundo, Inc., few could have imagined just a few dec-
448 F.3d 1118, 1123 (9th Cir.2006). In ades ago. For example, the Massachu-
cases involving copyright claims, where a setts Institute of Technology (‘‘MIT’’) uses
copyright holder has shown likelihood of a Creative Commons public license for an
success on the merits of a copyright in- OpenCourseWare project that licenses all
fringement claim, the Ninth Circuit has 1800 MIT courses. Other public licenses
held that irreparable harm is presumed. support the GNU/Linux operating system,
LGS Architects, Inc. v. Concordia Homes the Perl programming language, the
of Nev., 434 F.3d 1150, 1155–56 (9th Cir. Apache web server programs, the Firefox
2006). But see MGM Studios, Inc. v. web browser, and a collaborative web-
Grokster, Ltd., 518 F.Supp.2d 1197, 1212 based encyclopedia called Wikipedia.
(C.D.Cal.2007) (noting that ‘‘the longstand- Creative Commons notes that, by some
ing rule that irreparable harm can be a
estimates, there are close to 100,000,000
presumed after a showing of likelihood of
works licensed under various Creative
success for purposes of a copyright prelim-
Commons licenses. The Wikimedia Foun-
inary injunction motion may itself have to
dation, another of the amici curiae, esti-
be reevaluated in light of eBay [Inc. v.
mates that the Wikipedia website has more
MercExchange, L.L.C., 547 U.S. 388, 126
S.Ct. 1837, 164 L.Ed.2d 641 (2006)]’’). than 75,000 active contributors working on
Thus, for a preliminary injunction to issue, some 9,000,000 articles in more than 250
Jacobsen must either show (1) a likelihood languages.
of success on the merits of his copyright Open Source software projects invite
infringement claim from which irreparable computer programmers from around the
JACOBSEN v. KATZER 1379
Cite as 535 F.3d 1373 (Fed. Cir. 2008)
world to view software code and make open source projects. Improvement to a
changes and improvements to it. Through product can come rapidly and free of
such collaboration, software programs can charge from an expert not even known to
often be written and debugged faster and the copyright holder. The Eleventh Cir-
at lower cost than if the copyright holder cuit has recognized the economic motives
were required to do all of the work inde- inherent in public licenses, even where
pendently. In exchange and in consider- profit is not immediate. See Planetary
ation for this collaborative work, the copy- Motion, Inc. v. Techsplosion, Inc., 261
right holder permits users to copy, modify F.3d 1188, 1200 (11th Cir.2001) (Program
and distribute the software code subject to creator ‘‘derived value from the distribu-
conditions that serve to protect down- tion [under a public license] because he
stream users and to keep the code accessi- was able to improve his Software based on
ble.2 By requiring that users copy and suggestions sent by end-usersTTTT It is
restate the license and attribution informa-
logical that as the Software improved,
tion, a copyright holder can ensure that
more end-users used his Software, thereby
recipients of the redistributed computer
increasing [the programmer’s] recognition
code know the identity of the owner as
in his profession and the likelihood that
well as the scope of the license granted by
the Software would be improved even fur-
the original owner. The Artistic License
ther.’’).
in this case also requires that changes to
the computer code be tracked so that
B.
downstream users know what part of the
computer code is the original code created [6, 7] The parties do not dispute that
by the copyright holder and what part has Jacobsen is the holder of a copyright for
been newly added or altered by another certain materials distributed through his
collaborator. website.3 Katzer/Kamind also admits that
Traditionally, copyright owners sold portions of the DecoderPro software were
their copyrighted material in exchange for copied, modified, and distributed as part of
money. The lack of money changing the Decoder Commander software. Ac-
hands in open source licensing should not cordingly, Jacobsen has made out a prima
be presumed to mean that there is no facie case of copyright infringement. Kat-
economic consideration, however. There zer/Kamind argues that they cannot be
are substantial benefits, including econom- liable for copyright infringement because
ic benefits, to the creation and distribution they had a license to use the material.
of copyrighted works under public licenses Thus, the Court must evaluate whether the
that range far beyond traditional license use by Katzer/Kamind was outside the
royalties. For example, program creators scope of the license. See LGS Architects,
may generate market share for their pro- 434 F.3d at 1156. The copyrighted materi-
grams by providing certain components als in this case are downloadable by any
free of charge. Similarly, a programmer user and are labeled to include a copyright
or company may increase its national or notification and a COPYING file that in-
international reputation by incubating cludes the text of the Artistic License.
2. For example, the GNU General Public Li- 3. Jacobsen’s copyright registration creates the
cense, which is used for the Linux operating presumption of a valid copyright. See, e.g.,
system, prohibits downstream users from Triad Sys. Corp. v. SE Exp. Co., 64 F.3d 1330,
charging for a license to the software. See 1335 (9th Cir.1995).
Wallace v. IBM Corp., 467 F.3d 1104, 1105–06
(7th Cir.2006).
1380 535 FEDERAL REPORTER, 3d SERIES
The Artistic License grants users the right licensor can bring an action for copyright
to copy, modify, and distribute the soft- infringement. See S.O.S., Inc. v. Payday,
ware: Inc., 886 F.2d 1081, 1087 (9th Cir.1989);
provided that [the user] insert a promi- Nimmer on Copyright, § 1015[A] (1999).
nent notice in each changed file stating Thus, if the terms of the Artistic License
how and when [the user] changed that allegedly violated are both covenants and
file, and provided that [the user] do at conditions, they may serve to limit the
least ONE of the following: scope of the license and are governed by
a) place [the user’s] modifications in the copyright law. If they are merely cove-
Public Domain or otherwise make them nants, by contrast, they are governed by
Freely Available, such as by posting said
contract law. See Graham, 144 F.3d at
modifications to Usenet or an equivalent
236–37 (whether breach of license is ac-
medium, or placing the modifications on
tionable as copyright infringement or
a major archive site such as ftp.uu.net,
breach of contract turns on whether provi-
or by allowing the Copyright Holder to
sion breached is condition of the license, or
include [the user’s] modifications in the
mere covenant); Sun Microsystems, 188
Standard Version of the Package.
F.3d at 1121 (following Graham; indepen-
b) use the modified Package only within
dent covenant does not limit scope of copy-
[the user’s] corporation or organization.
right license). The District Court did not
c) rename any non-standard executables
expressly state whether the limitations in
so the names do not conflict with the
the Artistic License are independent cove-
standard executables, which must also
nants or, rather, conditions to the scope;
be provided, and provide a separate
manual page for each nonstandard exe- its analysis, however, clearly treated the
cutable that clearly documents how it license limitations as contractual covenants
differs from the Standard Version, or rather than conditions of the copyright
d) make other distribution arrange- license.4
ments with the Copyright Holder. Jacobsen argues that the terms of the
[8] The heart of the argument on ap- Artistic License define the scope of the
peal concerns whether the terms of the license and that any use outside of these
Artistic License are conditions of, or mere- restrictions is copyright infringement.
ly covenants to, the copyright license. Katzer/Kamind argues that these terms do
Generally, a ‘‘copyright owner who grants not limit the scope of the license and are
a nonexclusive license to use his copyright- merely covenants providing contractual
ed material waives his right to sue the terms for the use of the materials, and that
licensee for copyright infringement’’ and his violation of them is neither compensa-
can sue only for breach of contract. Sun ble in damages nor subject to injunctive
Microsystems, Inc., v. Microsoft Corp., 188 relief. Katzer/Kamind’s argument is
F.3d 1115, 1121 (9th Cir.1999); Graham v. premised upon the assumption that Jacob-
James, 144 F.3d 229, 236 (2d Cir.1998). If, sen’s copyright gave him no economic
however, a license is limited in scope and rights because he made his computer code
the licensee acts outside the scope, the available to the public at no charge. From
4. The District Court held that ‘‘Defendants’ tract.’’ Jacobsen, 2007 WL 2358628 at *7.
alleged violation of the conditions of the li- Thus, despite the use of the word ‘‘condi-
cense may have constituted a breach of the tions,’’ the District Court treated the terms of
nonexclusive license TTT [and] the Court finds the Artistic License as contractual covenants
that Plaintiff’s claim properly sounds in con- which did not limit the scope of the license.
JACOBSEN v. KATZER 1381
Cite as 535 F.3d 1373 (Fed. Cir. 2008)
ages alone do not support or enforce that does not assent to these conditions stated
right. The choice to exact consideration in in the COPYING file, he is instructed to
the form of compliance with the open ‘‘make other arrangements with the Copy-
source requirements of disclosure and ex- right Holder.’’ Katzer/Kamind did not
planation of changes, rather than as a dol- make any such ‘‘other arrangements.’’
lar-denominated fee, is entitled to no less The clear language of the Artistic License
legal recognition. Indeed, because a calcu- creates conditions to protect the economic
lation of damages is inherently speculative, rights at issue in the granting of a public
these types of license restrictions might license. These conditions govern the
well be rendered meaningless absent the rights to modify and distribute the com-
ability to enforce through injunctive relief. puter programs and files included in the
[12, 13] In this case, a user who down- downloadable software package. The at-
loads the JMRI copyrighted materials is tribution and modification transparency re-
authorized to make modifications and to quirements directly serve to drive traffic
distribute the materials ‘‘provided that’’ to the open source incubation page and to
the user follows the restrictive terms of inform downstream users of the project,
the Artistic License. A copyright holder which is a significant economic goal of the
can grant the right to make certain modifi- copyright holder that the law will enforce.
cations, yet retain his right to prevent Through this controlled spread of informa-
other modifications. Indeed, such a goal is tion, the copyright holder gains creative
exactly the purpose of adding conditions to collaborators to the open source project;
a license grant.5 The Artistic License, like by requiring that changes made by down-
many other common copyright licenses, re- stream users be visible to the copyright
quires that any copies that are distributed holder and others, the copyright holder
contain the copyright notices and the learns about the uses for his software and
COPYING file. See, e.g., 3–10 Nimmer on gains others’ knowledge that can be used
Copyright § 10.15 (‘‘An express (or possi- to advance future software releases.
bly an implied) condition that a licensee
must affix a proper copyright notice to all IV.
copies of the work that he causes to be For the aforementioned reasons, we va-
published will render a publication devoid cate and remand. While Katzer/Kamind
of such notice without authority from the appears to have conceded that they did not
licensor and therefore, an infringing act.’’). comply with the aforedescribed conditions
It is outside the scope of the Artistic of the Artistic License, the District Court
License to modify and distribute the copy- did not make factual findings on the likeli-
righted materials without copyright notices hood of success on the merits in proving
and a tracking of modifications from the that Katzer/Kamind violated the conditions
original computer files. If a down loader of the Artistic License. Having deter-
5. Open source licensing restrictions are easily thors.’’); Graham, 144 F.3d at 236. Whether
distinguished from mere ‘‘author attribution’’ such rights are protected by a specific license
cases. Copyright law does not automatically grant depends on the language of the license.
protect the rights of authors to credit for See County of Ventura v. Blackburn, 362 F.2d
copyrighted materials. See Gilliam, 538 F.2d 515, 520 (9th Cir.1966) (copyright infringe-
at 20–21 (‘‘American copyright law, as pres- ment found where the county removed copy-
ently written, does not recognize moral rights right notices from maps licensed to it where
or provide a cause of action for their viola- the license granted the county ‘‘the right to
tion, since the law seeks to vindicate the eco- obtain duplicate tracings’’ from photographic
nomic, rather than the personal rights of au- negatives that contained copyright notices).
JACOBSEN v. KATZER 1383
Cite as 535 F.3d 1373 (Fed. Cir. 2008)
mined that the terms of the Artistic Li- The judgment of the District Court is
cense are enforceable copyright conditions, vacated and the case is remanded for fur-
we remand to enable the District Court to ther proceedings consistent with this opin-
determine whether Jacobsen has demon- ion.
strated (1) a likelihood of success on the VACATED and REMANDED
merits and either a presumption of irrepa-
rable harm or a demonstration of irrepara-
ble harm; or (2) a fair chance of success
on the merits and a clear disparity in the ,
relative hardships and tipping in his favor.6
6. At oral argument, the parties admitted that tary damages under a contract theory.
there might be no way to calculate any mone-