US court groks free content licensing

The US Court of Appeals for the Federal Circuit handed down an interesting and significant decision on Wednesday, which could have a number of valuable implications for the validity of free content licences.

The case, Jacobsen v Katzer, was about software for interfacing with model trains. Robert Jacobsen is the leader of the Java Model Railroad Interface project (JMRI), which releases its work under the Artistic License 1.0; Matthew Katzer (and his company Kamind Associates) produce commercial model train software products. It was alleged that either Katzer or another employee of Kamind took parts of the JMRI code and incorporated it into its own software, without identifying the original authors of the code, including the original copyright notices, identifying the JMRI project as the source of the code, or indicating how it had modified the original JMRI code.

Jacobsen sought an interlocutory injunction, arguing that since Katzer and Kamind had breached the Artistic License, their use of the JMRI code constituted copyright infringement. However, the District Court considered that Jacobsen only had a cause of action for breach of contract, not for copyright infringement, and because of this Jacobsen could not satisfy the irreparable harm test (in the case of copyright infringement, irreparable harm is presumed in the 9th Circuit), and was not entitled to an injunction.

Jacobsen's appeal to the Court of Appeals was against this preliminary finding. An assortment of free content bodies (including Creative Commons and the Wikimedia Foundation) appeared as amici curiae in the case, submitting an interesting brief containing a number of arguments that the Court of Appeals seemed to agree with.

The legal issue at stake in the appeal concerned the difference between conditions of a contract and ordinary promises (covenants, in US parlance). If a term in a contract is a condition, then the promisee has a right to terminate the contract. In the context of a copyright licence, if someone using the licensed material breaches a condition of the licence, they are then open to a copyright infringement action (unless they have some other legal basis for using the material). Contract law will still hold someone responsible for breaching a contractual promise, but the remedies are different, and as was the issue here, it's much harder to get an interlocutory injunction.

Whether or not a term is a condition is a matter of construction, and depends on the intention of the parties. In answering the question of whether the relevant terms were conditions, the Court of Appeals made a number of important observations which are applicable to free content licences generally.

The first observation was that, just because with free content licensing there is no money changing hands, it is not the case that there can be no economic consideration involved. The Court recognised several other forms of economic benefit which free content licensors derive from licensing their works:

"There are substantial benefits, including economic benefits, to the creation and distribution of copyrighted works under public licenses that range far beyond traditional license royalties. For example, program creators may generate market share for their programs by providing certain components free of charge. Similarly, a programmer or company may increase its national or international reputation by incubating open source projects."

This is a really significant observation for the court to make, because there are some major ideological barriers that seemed to get in the way of the District Court on this point. Even though free content licencing is all about authors dealing with their economic rights under copyright, free content is all too often viewed as non-economic. Just because free content doesn't fit in with the traditional royalties-based system, it does not mean that there are not real economic motives involved.

The second observation was made in the context of the general rule (applicable in that jurisdiction) that an author who grants a non-exclusive licence effectively waives their right to sue for copyright infringement. If the relevant terms were conditions, then they would be capable of serving as limitations on the scope of the licence, which would negate this rule. The Court said that:

"[t]he choice to exact consideration in the form of compliance with the open source requirements of disclosure and explanation of changes, rather than as a dollar-denominated fee, is entitled to no less legal recognition."

Again, this seems to be an important point in terms of getting over psychological hurdles. The District Court was clearly hung up on the terms in the Artistic License allowing users to freely distribute and modify licensed material; it focused on the breadth of the freedoms granted. In doing so it overlooked that while the License did grant broad freedoms, it clearly circumscribed them. The Court of Appeals understood what the District Court did not: that releasing material under a free licence is not the same as giving it away.

The heart of the decision was of course about the particular wording in the Artistic License. The use of the phrase "provided that" in the Artistic License was significant, because such wording usually indicates a condition under Californian contract law. Further, the requirement that any copies distributed be accompanied by the original copyright notice - a relatively common term - also typically indicates a condition.

In the end, the Court of Appeals decided that the relevant terms were conditions, and that Jacobsen had a copyright infringement action open to him. Since the District Court didn't assess Jacobsen's prospects of success on the merits, the Court of Appeals remanded the injunction application back to them for their consideration. Given that Katzer and Kamind apparently conceded that they did not comply with the Artistic License, Jacobsen would seem a good chance to get his injunction, and later to succeed at the merits stage.

Though much turned on the particular wording here, the reasoning behind the assessment of the terms can easily be applied to other free content licences, as can the recognition of the economic motives involved in free content licencing, motives which though non-traditional, are both legitimate and worthy of protection by the law. Independent of any value as a binding precedent, this case is a magnificent example of a court really appreciating the vibe of free content.

A test for copyleft?

Another free-content related lawsuit has been filed in the last few days; this time the first United States case based on infringement of the GNU General Public License, filed in a New York state court last week.

The plaintiffs are the developers of the BusyBox project, a collection of small versions of Linux utilities bundled into a single executable, designed for use as firmware or in embedded systems. They allege that the defendant, Monsoon Multimedia, included BusyBox, or a modified version of it, as part of the firmware on some of their hardware products, and did not offer the source code to the firmware as required by the copyleft provisions of the GPL. The plaintiffs, through their lawyers the Software Freedom Law Center, claim that Monsoon infringed their copyright as a result, and seek injunctions to prevent Monsoon from continuing to distribute the firmware, as well as damages.

The case will be significant (should it make it to trial) not only because it directly concerns the GPL, one of the more widely used free content licences, but also because it revolves around what is, in my opinion at least, the key part of any good free content licence: the requirement that derivatives be released under the same licence (the same essential concept is referred to as either "strong copyleft" or "share-alike"). The case may be the first test of whether such requirements are actually effective at compelling creators of derivative works to release those works under the same terms.

DLA Piper senior partner Mark Radcliffe also raises the very good point that the case will also revolve around exactly how the GPL is characterised - whether it is a copyright licence or a mere contract - which may have implications as to what remedies are open to people releasing their work under the GPL.

However, the case may not even make it to court, with Monsoon apparently looking to settle and make the source code for the firmware available, according to breaking reports.

You can see a copy of the BusyBox statement of claim here (PDF format).

Flickr user sues Virgin

I blogged a couple of months ago about the controversy surrounding an advertising campaign for Virgin Mobile Australia, which featured photographs taken from photo-sharing website Flickr. The photos were licensed under Creative Commons licences, but apparently the advertising company didn't ask permission from the photographers, and nor did they obtain model releases from the subjects of the photographs.

There's been plenty of speculation about what legal avenues might be open to both the Flickr photographers and their subjects, but it looks like we'll soon get some answers, as the family of one of the people pictured in the advertising campaign has sued both the Australian and United States arms of Virgin Mobile in a Texas court.

The suit was instigated by the family of Flickr user Alison Chang, who was photographed by fellow Flickr user and Chang's youth counsellor Justin Wong. That photograph was used in one of the Virgin advertisements, as can be seen in this photograph, accompanied by the caption "DUMP YOUR PEN FRIEND".

At this stage the suit seems to be based on actions in libel and invasion of privacy, based on news reports (I'm currently trying to find the actual court documents without much luck - does anyone know where Texas court documents are available online?). Virgin Mobile in the US has apparently sought to be removed as a party as it claims that it had nothing to do with the advertisements. Virgin Mobile Australia says that it fully complied with the Creative Commons licence (CC-BY-2.0) that the image was licenced under.

As another twist, the suit names a third defendant in Creative Commons; exactly what cause of action is claimed to lie against them at this stage is not clear.

This case is interesting because of the intersection of multiple types of intellectual property rights, along with other related rights. There are a whole range of rights which are potentially involved just in this fairly trivial case of one person taking a photo of another person, only one type of which - the economic rights of copyright - are dealt with by free content licences such as the Creative Commons licences. Should this case ultimately reach a decision (it may well face some jurisdictional problems) it is likely to have significant implications for the free content movement.

(Free) culture clash

I am not a lawyer. This is not legal advice.

There's a story doing the rounds in the blogosphere at the moment about the latest advertising campaign for Virgin Mobile Australia, put together by Virgin and a couple of advertising firms. The story is to do with the campaign's use of images, mostly Creative Commons licenced ones, sourced from the photo sharing website Flickr. The campaign started making waves when it appeared in June, catching the eye of Flickr users late in the month, and being carried by The Australian newspaper today in their IT section. It's all about a very hot topic in free culture circles at the moment: the interaction between different types of intellectual property rights in relation to free content.

The story began when Flickr user Brenton Cleeland posted a photo of a bus stop billboard showing one of the ads, featuring a picture of Flickr user Alison Chang with the caption "DUMP YOUR PEN FRIEND". This is the original image of Chang, uploaded by Justin Wong, and released under a CC-BY 2.0 licence. It's hard to see, but the fine print on the billboard gives the photo's URL on Flickr.

The campaign uses many more photos just like this one. The captions that are shown alongside the images are significant. Take this one for example, in which a photo of some people chatting in a lift is superimposed with the caption "PEOPLE WHO TALK IN LIFTS HAVE BAD BREATH". A Flickr user captured two of the billboards here, see what you make of those captions.

This is where it gets interesting. While this photo and the others appearing in the advertising campaign seem to have been used in accordance with the terms of the licence, it's an open question whether the use has infringed any other rights. According to The Australian, Virgin (and the advertising companies) didn't ask permission from the photographers or the subjects before using the photos. But does this mean anything?

The Creative Commons licences, like other free content licences, relate only to the economic rights that the creator of a work has (the rights that are generally referred to as "copyright"). But intellectual property law covers other rights too. Possibly relevant here are moral rights, a group of rights which, generally speaking, remain with the creator of a work (even if the economic rights are transferred to someone else). These are essentially the right to be attributed as the creator of the work, and the right to the integrity of the work.

Australia now has a pretty much Berne Convention type implementation of moral rights. At least in the Australian implementation, the moral right of attribution is satisfied if the creator is identified in the way that the creator has specified; given that the CC-BY licence sets out a method for attribution, which providing the URL to the photo may satisfy, the uses here may be ok in this respect. A different question is the moral right of integrity of the work; there hasn't really been any case law in Australia on what constitutes derogatory treatment of the work, so it would be interesting to see how a court might approach the use of these photos in this advertising campaign, particularly given the captions that have been put alongside the photos.

So there are questions with respect to the rights of the creators, but what about the rights of the subjects in the photos? This is probably the more pressing question, since it is the subjects who are really copping it in this ad campaign, what with those suggestive captions. Many jurisdictions recognise personality rights, which can protect subjects in this type of situation; in Australia, like in other common law countries, this is done in a particular type of way through passing off, traditionally a tort but which in Australia is fairly robustly protected in trade practices legislation, which allows both for civil suits and intervention by the ACCC.

Andrew Nemeth, a (no-longer practising) solicitor from New South Wales, gives a pretty good rundown of the legal issues around photography in Australia, and even touches on the Virgin issue. But, as he notes, while the trade practices legislation would certainly seem to apply in this type of situation, the kicker is jurisdiction:

"The story would typically end there, except for one thing — these particular images were not taken in Australia and neither photographers nor subjects were Australian citizens. Which unfortunately places them beyond the jurisdictional reach of the TPA or any other Australian law prohibiting unauthorised use of a person's image. If the photographs were taken here, then the subject would have a case. If they were taken overseas of an Australian citizen, again the subject would have a legitimate complaint. But foreign person + foreign photographer + foreign location?…

Nyet.

Clearly the Virgin Mobile people did their homework. You apparently can use unauthorised images of people to sell products, just make sure they're foreigners photographed overseas! Well done guys, very slick."

The wording of the latest version of the Creative Commons licences - which contain something of an acknowledgment that moral rights exist and users of freely licenced content should make sure that they respect them - has attracted plenty of discussion on the Wikimedia mailing lists of late. The interaction between freely licenced content (which deals exclusively with the economic rights of copyright), other areas of intellectual property law, and even other fields of law that relate to how intellectual property can be used (like personality rights) is bound to be the source of many interesting legal questions in the years ahead, as free licencing becomes more and more prominent. Not to forget the social implications; Creative Commons is copping flak from some quarters for not educating their users enough about just what the implications of licencing works under the CC licences are. There are some Flickr users who are now justifiably concerned about just what they've got themselves into by sharing their photos online under free licences.

It remains to be seen what legal responses there will be to Virgin's campaign, but there's no doubting that situations like this are just the tip of the iceberg for the proverbial free culture ship in the IP law sea.