JMRI Defense: Keeping an Open-Source Project Alive

JMRI is an open-source project for developers to write software for model railroads. It has achieved wide-spread acceptance, with more than a hundred people writing parts, and users on every continent except Antarctica (and we're working on that one!)

As an open-source project, JMRI software is distributed free of charge. Our licensing terms require that nobody charge for the software itself, and that those who do redistribute it must abide by certain restrictions: Give credit to JMRI, don't take credit for themselves, etc. It's not hard for anyone to understand and live up to those - except one person.

For the last three years JMRI has been under attack by Matt Katzer and his attorney Kevin Russell. They have been using various coercive tactics, some of which we believe are illegal, in an attempt to put a stop to JMRI's work or to extract money from JMRI.

Katzer, through his attorney Russell, obtained a patent on model railroad technology that other people had developed years before. Using a "continuation" application, they applied for a patent that covered JMRI after JMRI had openly published its code. Because Katzer and Russell didn't provide the prior art to the Patent Office, the patent was promptly issued.

After the patent issued, Katzer and Russell first demanded $19, and later $29 in royalties per downloaded copy of JMRI. We believed that the patent was invalid because of prior art, and if they had provided the prior art in their possession to the patent examiner, that it would not have been granted in the first place. Russell sent Bob Jacobsen, one of the JMRI developers, bills for more than $200,000 on a roughly monthly basis from August 2005 to January 2006.

When that harassment wasn't enough to stop the project, Katzer and Russell contacted Bob's employer in an attempt to intimidate him.

In March 2006, we couldn't allow this to go on, and filed a "Declaratory Judgment" action in Federal Court to get a legal determination on our rights.

While we sought to hold Katzer and Russell responsible for certain of their actions, such as contacting Bob's employer re the patents, the Court sided with Katzer and Russell and ruled that they cannot be held responsible for them. Those are no longer present in the complaint.

On the other hand, we've found compelling evidence that Katzer took JMRI decoder definition files and included them in his products, thereby thereby claiming them as his own, in violation of the JMRI license. We've therefore added copyright claims to the case by filing an amended complaint and asked for a preliminary injunction to stop Katzer's misuse of our work. In a motion to dismiss, Katzer has argued that we can't use our copyrights to hold him responsible for his violations of the JMRI open-source license. We replied to show that open-source licenses are valid and enforceable. The Court ruled that Katzer was right, and that we were not likely to succeed on the merits of our copyright claim. We disagree emphatically with this, for multiple reasons, and are appealing the ruling. Our first brief, presenting our side of the issue, has been filed.

Katzer also improperly registered one of our trademarks, DecoderPro, as the domain name "decoderpro.com". The World Intellectual Property Organization (WIPO) has ordered it returned to us, and wrote an entire section of the order on "Katzer's bad faith". We think it's important to have the Court order Katzer not to repeat this type of misbehavior against JMRI or anybody else, but the Court originally told us to remove the corresponding cybersquatting section. After a series of motions, the Court has allowed us to include it in our Second Amended Complaint, which is currently moving forward.

These pages provide more detail on what's happened so far and how we're defending against Katzer's actions. The navigation bar at the left will take you to specific types of information.

If this is your first encounter with us and our struggle to defend our Open Source project, you might want to learn more by either reading our longer history to date, or see the "Articles by Others" page to see what people not connected to JMRI are saying about this.

If you'd like to read all the legal filings, we've got them all available on a separate page.

If you're outraged by this situation, there are several things you can do to help:

• Contribute to help pay for legal expenses. JMRI gets no commercial revenue, and patent litigation has costs for court fees, stenographers, etc.
• Help with prior art. We know about lots of examples of "prior art" which can be used to invalidate these patents. We'd appreciate help finding more. More importantly, we'd like help writing all of these up; it's a big task to turn technical documentation into legal writing that can convince a non-technical judge or jury. There's another page with info on how to help with this.

If you'd like to get email when we update these pages, please subscribe to the jmri-legal-announce mailing list at SourceForge.net. This will carry short announcements occasionally as news happens. There won't be a lot of traffic. It's not a list for discussion and strategizing; for various reasons, we can't do that on a public list.