Since it was enacted, the U.S. Digital Millennium Copyright Act (DMCA) has
stifled security research, led to the arrest of visiting programmers, shut
down fair use, prohibited the creation of free DVD players for Linux, and
facilitated anti-competitive moves by manufacturers of printer cartridges
and garage door openers, among others. The EFF and others have been pushing
for a reform of the DMCA for some time, and the occasional member of
Congress has tried to bring that about. The DMCA is a law which clearly
Now, there is a new attempt to amend the DMCA in the works; a copy
of the DMCA with the proposed changes highlighted [PDF] is available
for those who are interested. This proposal, however, would have the
effect of making the DMCA significantly worse. Here are a few highlights:
- No longer content with criminalizing copyright infringement, the new
law would make even attempted infringement illegal - with the same
penalties. There would be no need to actually copy anything to
violate the new DMCA.
- The new law authorizes the impounding of "records documenting
the manufacture, sale, or receipt of items involved in such
violation" Such records certainly will include Internet
service provider logs.
- The penalty for copyright infringement will be raised to a maximum of
ten years in prison - twenty for repeat offenses. In the future,
rational criminals will not copy CDs; the potential penalty for simply
stealing them will be lower. The new ten-year penalty will apply to
those committing the heinous crime of recording a live concert as
- The use of wiretapping and similar techniques is authorized for
investigations into criminal copyright infringement or recording of
- Criminal and civil forfeiture powers would be available to law enforcement agencies
dealing with copyright cases.
The addition of forfeiture powers is, perhaps, the scariest part of this
whole proposal. Civil forfeiture has long been a part of the U.S. "drug
war," with the result that many law enforcement actions - often against
innocent people - have been motivated
primarily by the prospect of seizing valuable property. If this law goes
through, any music player, laptop, or server deemed to have somehow
participated in copyright infringement will be subject to seizure by the
police - along with the houses they are found in. Anybody who thinks this
power would not be abused has not been paying much attention.
As of this writing, the proposed legislation has not yet been formally
introduced for consideration, but has been circulated among some members of
the House of Representatives.
A different bill which, according to the
EFF has been introduced is the "PERFORM act." This law can be thought
of as a sort of broadcast flag for the net; it would require those
broadcasting copyrighted material on the net to use DRM-afflicted formats.
No more Vorbis or Theora streams - or even MP3. And, obviously, no way to
tune into such streams using free software.
These bills make it clear that the powers behind the expansion of
"intellectual property rights" are not yet satisfied and want more. This
sort of thing will keep coming, and not just in the U.S. If we value our
freedom, we must be prepared to keep fighting - and to work to push the
pendulum in the other direction.
Comments (12 posted)
[Editor's note: The case of KAM Industries and the JMRI project is an
important one; it is one of the first times where a free software developer
has been directly attacked by a patent holder and held responsible for
royalties for every downloaded copy. If we wish to be able to post
software without risking hundreds of thousands of dollars (or more) in
royalty demands, we must quickly put an end to this sort of thing. We
asked Groklaw founder Pamela Jones to put together a summary of this case
and what we can do about it; the following is her response.
The Right to Create blog has a letter from the attorney, Victoria
K. Hall, who is representing Robert Jacobsen, the man who was sent the
bill for $203.000 for allegedly infringing patents with
his open source model train software. He has struck
first, filing a
lawsuit himself, Jacobsen v. Katzer et al, charging that the patent
was fraudulently obtained and hence is invalid and unenforceable. The
complaint also says the patent is invalid on the grounds of obviousness
and for failure to meet the written description requirement of 35 U.S.C.
So, on one side we find an Open Source developer, and, on the other, a guy
questionable software patents. Of course, as in all litigation, it's
to keep in mind that nothing is proven by a complaint. It's just the opening
salvo, and we haven't yet heard the defendants' side.
Hall is asking the community to look
for prior art. Let me tell you a little bit about the case, from the
materials in the complaint Jacobsen has filed. It may help you to
more effectively find prior art. It will surely motivate you.
The case is 5:2006cv01905, filed in the US District Court for the
Northern District of California, San Francisco Division, for those of you
with Pacer accounts. The plaintiff lives there and works at the Lawrence
Berkeley National Laboratory of the University of California and he also
teaches physics there. He's also a model train hobbyist who has written, with
open source code called JMRI, or Java Model Railroad Interface,
allows you to control how model trains run on a track. He's the primary
developer of the software through the JMRI Project.
Ms. Hall, although located in Maryland, is admitted to practice in
California as well as in Maryland state courts and is a patent attorney
admitted to practice before the USPTO. Interestingly, she worked in the
chemical engineering and software industries for nine years before she
went to law school.
The suit is an action for declaratory judgment that
Katzer's patent, US Patent No. 6,530,329, called the '329 patent, is
"invalid, unenforceable, void and/or not infringed by Plaintiff
Jacobsen". What's a declaratory judgment?
Here's US Code Title 28, Ch
151, § 2201, the Declaratory
Judgment Act. And here is a definition from
Cornell's Legal Information Institute. If someone is threatening to sue
you, but hasn't yet, in certain limited circumstances, you can take the
initiative rather than waiting for the axe to fall, go to court and in
essence say: "This person or this company is threatening to sue me and I
need our respective rights with respect to this dispute settled, so this
cloud over my or my company's head doesn't ruin my business."
The court doesn't have to hear a request for a declaratory judgment. It
has discretion. It's an enabling statute, and your case has to fit into
the confines of the Declaratory Judgment Act, namely you have to have an
actual "controversy" in the constitutional sense. That means it isn't a
hypothetical problem and it isn't moot, meaning, first, that you really
have a realistic and reasonable apprehension of actually being sued, and
second, that the court can settle your problem with a declaratory
If the judge accepts the dispute, he can issue a declaratory
judgment, in which he "declares" what each party's rights are, the idea
being that if, for example, he declares that you aren't infringing your
adversary's patent, then you can't be sued.
Mr. Jacobsen's complaint is also a complaint for "violation of federal
antitrust laws, the Lanham Act, and California Unfair Competition Act
and for libel." The Complaint asks for a decree that the defendants
Katzer and his company "have attempted to monopolize the market for
multi-train control systems software in the United States" in violation
of Section 2 of the Sherman Act.
The named defendants are Matthew Katzer, KAMIND Associates, Inc. d/b/a
KAM Industries, and Kevin Russell. Katzer is a model train hobbyist who
has written software code for controlling model trains and is an expert
in the field. He has several patents, and the complaint states that
Jacobsen believes there are more pending. KAM is Katzer's business,
selling products embodying Katzer's patents.
Here's the surprising twist. The third defendant, Kevin Russell, is their
He works for a firm in Oregon, Chernoff, Vilhauer, McClung & Stenzel. He's
accused of libel, and the court is asked to find
against the defendants, jointly and severally, to the tune of $50,000
plus punitive damages.
Russell filed a a request
under the U.S. Freedom of Information Act,
with the Lawrence
Berkeley National Laboratory, not only accusing Jacobsen of patent
but claiming that the Lab "had sponsored the allegedly infringing JMRI
The DOE turned down the request in December of 2005, but not before
Jacobsen was embarrassed and had to explain the whole "harassment story,"
as he describes it, to his boss and the DOE FOIA liaison. The complaint
it interfered with his work, resulting in a loss of income. The FOIA
request, Jacobsen says,
caused him embarrassment, particularly because he's "a scientist whose
involves the creation of intellectual property."
The complaint continues, saying that Russell knew that the
Lab, which has a contract with the U.S. Department of Energy, which has
nothing to do with the JMRI Project.
The defendants made the allegation, says the complaint, "to effect
Defendants' goal to
embarrass Plaintiff Jacobsen and force him to shut down the JMRI Project
and to pay royalties to Defendant KAM."
According to Jacobson, the basis for claiming that the patent is not valid
is the defendant's history of applying for patents
on what others invent without telling the
patent office about the prior art. Another charge is that Katzer
didn't tell the patent office that some of KAM's products "were in
public use, published, offered for sale or sold more than 1 year before
Defendant Katzer filed the '461 application," which would disqualify
them for patent protection. The patent in question, '329, claims the
benefit of earlier patent applications' filing dates, '461 being the
earliest filed in the chain that '329 issues from.
The complaint lists prior art dating back to the 1986 that it says
Katzer ought to have told the USPTO about, since the complaint alleges
he knew about them. For example, in late March of 2002, the story
continues, the JMRI Project software's client-server capabilities were
described in a posting to a public mailing list, which Katzer is on.
Then in April 14, 2002, the first version of JMRI with the new
capabilities was released for public download and announced on several
mailing lists and on the JMRI website. "Three days later, Defendant
Katzer filed a patent application tailored to claim the capabilities of
the JMRI Project software." Again, the Complaint says, Katzer didn't
tell the patent examiner about the JMRI Project.
Jacobsen says he received a letter from KAM in March of 2005, offering
to license for $19 per program installed on a computer, saying that JMRI
was infringing claim 1 of the '329 patent. Jacobsen says he wrote a
letter back asking exactly how he was infringing, and his answer was a
letter in August, saying that he was infringing claim 1 and that they
were now investigating to see if any other patents were infringed by
JMRI. Oh, and the price to license was now $29. The letter also
demanded $203,000 for the 7,000 copies already distributed. In October
came a bill with finance charges, so the total had risen to more than
$206,000. He's gotten bills roughly every month since.
Jacobsen is about to release a new version of his software, and that's
why he's asking the Court to bring resolution to the matter, because he
believes the defendants will sue him when he releases the new version. He's
asking for redress.
Aside from the declaratory judgments, the antitrust decree, and the
libel damages, the Plaintiff is asking for the following:
- An injunction ordering Defendant Katzer to identify all patents
and patents applications filed in the United States and throughout the
world, to produce to their respective patent offices all material
references discovered through this litigation, and to request
re-examination (or the nearest equivalent proceeding outside the U.S.)
of any patents issuing from the patent applications.
- An award of treble damages for the loss of income and other
property on the antitrust claim.
- A decree that Defendants Katzer and
KAM have engaged in unlawful, unfair and/or fraudulent business
practices in violation of the California Unfair Competition Act,
California Business and Professions Code, and an order enjoining them
from any future such conduct.
- An order finding that Katzer
cybersquatted on the trademarked name, www.decoderpro.com in violation of
the Lanham Act and requiring him to turn the domain name over to
- An order enjoining Defendant Katzer and
Defendant KAM, and all persons and entities under their direction or
control, from engaging in or carrying out any further anti-competitive
or bad faith conduct
- An order referring the matter to the U.S. Attorney's Office for
investigation into antitrust violations, perjury, mail fraud, and
cancellation proceedings against any patents involved in this
litigation, and any related patents.
An order awarding costs and attorney's fees as permitted by law,
including 35 U.S.C. Section 285.
What you can do
Ms. Hall in her letter asks that no one harass the defendants "through
calls, letters, faxes, emails, etc. It does NOT advance the case in Mr.
Jacobsens favor." What does help is to find prior art. Groklaw just
published a basic tutorial on prior art, Prior
Art and Its Uses - a Primer, by a patent attorney, Theodore C.
McCullough. It might help you.
Here is what
Ms. Hall is asking for:
The key date is prior art existing
before June 24, 1998, and more importantly, prior art existing before
June 24, 1997. The prior art that we are looking for is:
patent or printed publication that described the invention. Source can
be from anywhere in the world.
- Evidence of public use, offer for
sale, or sale in the United States. (If its from outside the U.S.,
please make a note and send it so we can follow up.)
- Evidence of
another person inventing the same thing in the U.S. the invention must
not have been suppressed, concealed or abandoned.
- If the evidence
is not the exact invention, then any information (in addition to the
evidence) suggesting that the evidence could be combined with something
else to successfully make the invention.
Here's her contact
information, if you do find prior art. Snail mail is the best, she
says. I can't help but point out
that had the Peer to
Patent Project mentioned in McCullough's article
been in place a few years ago, these patents might well have been
blocked before they issued, and all this woe could have been prevented.
If nothing else, this incident can help us
to understand what patents project like that are designed to address.
So, there you have the information and the tools to get started
searching for prior art. Happy hunting.
Comments (25 posted)
the previous feature on
open content noted, the need for an appropriate license was felt from
the earliest days. Strangely, it was not Richard Stallman who filled
this gap: even though the GNU General Public License dates back
to 1984, it was only in 2000 that the corresponding
Free Documentation License was created. As a result, the honor
for the creation of the first formal non-software open license goes
to David Wiley.
the summer of 1998, Wiley had joined the graduate program in
Instructional Psychology and Technology at Brigham Young University,
where he began doctoral work on “learning objects” -
small-scale, reusable computer-based educational materials designed
to be used in a variety of settings. This was just a couple of
months after the term “open source” had been devised at
the Freeware Summit, and Wiley realized that what was needed was a
kind of open source for instructional content.
contacted people like Richard Stallman and Eric Raymond to ask their
advice, and drew up his first license in July 1998. Wiley decided to
call his approach “open content” - a term which he seems to have
been the first to use consistently. For Stallman, the idea of “open”
as opposed to “free” is anathema, and he also refuses to
refer to works as “content”, so ultimately he wanted
nothing to do with this new “OpenContent
License”, even though he and Wiley had previously worked together in
an attempt to tweak the GNU GPL for content. Raymond, by contrast,
was an important influence on the fledgling open content idea, as the
from the newly-created Opencontent.org site indicates:
advocates adoption of the principles Eric S. Raymond outlines in his
essay “The Cathedral and the Bazaar” for use in the
development of Content. ... The Bazaar model for Content development
will bring these same benefits to online instructional content;
namely the creativity, expertise, and problem-solving power of a
potentially infinite team of instructional designers and subject
matter experts. A development effort of this kind will fill the
Internet with high quality, well-maintained, frequently updated
input was provided by Tim O'Reilly and Andy Oram, making the license
more palatable to publishers so that online versions of printed
books and journals could be distributed for free. The result was the
Open Publication License
(OPL), released in June 1999. Appropriately enough, Raymond's
“Cathedral and the Bazaar” was released under the OPL (as
was his “Brief History of Hackerdom”). A number of other
books, mostly in the field of computing, adopted the license,
Application Development by Havoc Pennington, and Grokking
the GIMP, by Carey Bunks. It was also adopted for Bruce Perens'
Source Series, published by Prentice Hall.
the OPL led to a modest increase in open content being made
available, the license still had some problems. One was that it came
in four versions – OPL, OPL-A, OPL-B and OPL-AB - according to
which, if any, of two optional clauses were included. These dealt
with the thorny issues of “substantively modified works”
and whether the work or derivatives of it could be published in book
form for commercial purposes. The combinations obviously made it
harder to be sure what exactly an OPL license permitted, and meant
that users were forced to refer to the license to find out what their
rights were. What was needed was some legal input to produce a
series of open content licenses that clearly delineated what could
and could not be done with them.
in the second half of the 1990s, a group of lawyers were becoming
increasingly interested in the interrelated issues of copyright,
intellectual property, digital content and the public domain.
Pioneers here include Pamela Samuelson, James Boyle and Yochai
Benkler. But the person who has become most closely associated with
this whole area is undoubtedly Larry
rose to prominence with his book “Code
and other laws of Cyberspace”, which asserted that the
Net's software codes necessarily implied legal codes. From this
early interest in architectures and their growing power to affect
everyday life, Lessig's focus gradually shifted back to the legal
domain, where he sought to counter the threats posed by the music and
film industries to the new creative possibilities opened up by the
first attempt at a solution was the creation of Copyright's
Commons in 1999, “a coalition devoted to promoting the
public availability of literature, art, music, and film.” Its
principal instrument was the use of what it called
which “strips away the exclusivity that a copyright provides
and allows others to use your work as a source or a foundation for
their own creative ideas. The counter-copyright initiative is
analogous to the idea of open source in the software context.”
Copyright's Commons became involved in the Eldred
vs. Ashcroft lawsuit – which tried to block the
extension of US copyright by 20 years - it also pioneered what it
called “openlaw”, where legal arguments were posted
online for open discussion.
was Lessig who argued the Eldred vs. Ashcroft case in court –
and lost, much to his chagrin.
A more positive outcome from this work was the creation of a second,
more ambitious, organization called Creative
Commons, and the drawing up of a series of formal open content
licenses. Like Wiley's Open Publication license, these Creative
Commons licenses allow several options. While this lends them
great flexibility, it also means that there is now a confusing array
of Creative Commons licenses. Indeed, Richard Stallman no longer
supports the Creative Commons project because not all of these
licenses meet his requirements for freedom.
Stallman's concerns, there is no doubt that the Creative Commons
licenses have transformed the open content scene. They offer
creators a range of rigorous licenses that have been drawn up by
lawyers with a deep understanding of the issues of copyright in the
Net age. An important recent court case in the Netherlands has
their legality, at least in that jurisdiction.
original licenses were created for educational materials, and among
the first applications of the Creative Commons licenses were two
major open content projects in the field of what has come to be
called open courseware, both funded by the Hewlett
Foundation. Just as open source avoids re-inventing the wheel by
building on existing code, so open courseware aims to save time,
effort and money by making educational material freely available for
others to re-use, extend and improve.
first such project, Connexions, came
from Rice University. It was the brainchild of Richard Baraniuk,
professor of electrical engineering, who was directly inspired by the
example of open source. Connexions uses a content creation platform
called Rhaptos, which is released under the GNU GPL. The other major
open courseware project came from MIT. One of the people behind the
OpenCourseWare idea –
which arose out of an earlier failed attempt to make money from
selling MIT courses online – was Hal Abelson, who is also one
of the founders of Creative Commons. This joint involvement
simplified the issue of licensing, something that was a major issue
for Rice initially, until it too adopted a Creative Commons license.
does not use an open source platform, but David Wiley has started a
project called eduCommons,
based on Plone, that offers this
facility. Another of his free software projects, called Open
Learning Support, and now part of eduCommons, provides Rice's
Connexions and MIT's OpenCourseWare with online discussion boards.
Baraniuk, for his part, is working on a range of ancillary open
source software, including systems to aid translation, and a rating
system for courses. It is also worth mentioning the free software
course management package Moodle,
which is widely used around the world, and Sakai,
a similar project, funded by the Hewlett Foundation.
both Connexions and OpenCourseWare allow course materials to be
modified, they do not make any provision in their platforms for true
collaborative development. The final article in this short series
will explore how this issue has been addressed by open content projects.
Moody writes about open source and open content at opendotdotdot.
Comments (4 posted)
Page editor: Jonathan Corbet
Inside this week's LWN.net Weekly Edition
- Security: The 2.6.16 security fix flurry; New vulnerabilities in beagle, ethereal, the kernel, PHP, ruby, ...
- Kernel: splice() weekly news; Checkpointing in OpenVZ; The AppArmor debate begins.
- Distributions: The future of Kubuntu; new released for Ubuntu (and cousins), SUSE, Owl, Eagle Linux, Debian From Scratch and more
- Development: Voice over IP with Ekiga,
new versions of Linux-HA, MySQL, PowerDNS Recursor, ESP Ghostscript,
Sussen, Midgard, jackEQ, soniK, PyScript, Dropline GNOME, Kicad, PCB,
Atlas-C++, Thunderbird, Democracy Player, SeaMonkey, HyperMammut.
- Press: VMware Xen and the kernel, Congress works on new digital copyright bill,
Desktop Linux Summit coverage, Sun's McNealy steps down, book programs,
digital audio access protocol, comparison of filesystems, Thunderbird
tricks, LSB 3.1, ODF aims to be ISO.
- Announcements: MySQL conference announcements, Opera 9 Beta released, Qt added to LSB,
PHP at FrOSCon and NLUUG CFP, db4o User Conf, OSCON 2006, LAC Live Streams,
Stallman sells autograph.