JMRI Defense: Our Story So Far

This page describes our efforts to protect our Open Source project from attacks by a patent holder. He makes arguments in federal court to justify his actions, and if he prevails, he will strike right at the heart of the Open Source community. We are one of the first projects to have to defend against bogus patent claims and protect its copyrighted software and license. We certainly won't be the last. Here's our story.

Introduction

JMRI is open-source software for model-railroaders. There's a separate page that describes the history of the project, and gives further links. "DecoderPro®" and "PanelPro™" are built on JMRI, and are popular tools for programming locomotives and operating layouts. DecoderPro has been around for several years.

Matt Katzer owns KAM Industries, a company that tries to sell model railroad software. He's never contributed anything to the JMRI effort. But that hasn't stopped him from taking JMRI intellectual property.

Matt Katzer and his company KAMIND Associates, Inc. are attacking the rights of open source groups to enforce their copyrights and licenses. If they prevail, the rights of open source groups like JMRI will be significantly weakened, if not lost. We are breaking ground for open source groups in federal court and establishing legal rights for open source groups and their members. We need your help and donations to succeed in this legal fight.

In the next sections we discuss Katzer's cybersquatting, enforcement of bogus patents, copyright infringement and our fight in federal court.

Cybersquatting and the decoderpro.com domain name

In October of 2004, we noticed that Katzer had registered decoderpro.com as a domain name in February of 2004. When asked about it, Katzer said he was considering whether he would be able to take the open source code and turn it into a licensed product so it could be distributed . Katzer also said he had the name because

If I decide that to released (sic) a licensed version of an open source development effort, what better place to have it then the name of the development effort?

We registered the DecoderPro® name as a federal trademark. This was expensive, so we sought donations through our JMRI web site on SourceForge. Bob Jacobsen, one of the JMRI developers and the person who maintains the JMRI web site, wrote to Matt Katzer asking for the return of the domain name, but never received a reply. Jerry Britton, a JMRI user, offered to trade another domain name for it. Instead, Matt Katzer sued him. That suit was eventually settled by having them swap domains, so that Jerry ended up with decoderpro.com -- and a lot of restrictions that Katzer imposed on him. For one, Jerry couldn't transfer decoderpro.com to anyone else, including JMRI. If he did, Jerry would have to pay $20,000 plus attorney's fees. (Note that Katzer did not impose similar transfer restrictions on himself for the domain name he got out of the deal.) Katzer also demanded that Jerry not talk about this agreement, on pain of a $20,000 penalty. We learned of this settlement from public records in the Oregon federal court, because Katzer's attorney Kevin Russell didn't file the agreement under seal as he was supposed to.

Bogus Patents

Beginning in 1998, Katzer applied for multiple patents on technology developed by other people. The US Patent Office granted them, in part because Katzer failed to tell the patent examiner what he knew about existing products and inventors.

Katzer filed his first patent application on June 24, 1998. Although well aware of other's work, Katzer intentionally did not tell the Patent Office that the "invention" he was claiming had already been done by, among others,

• Juergen Freiwald's TrainController (Railroad&Co)
• John Kabat's LocoNet VxD
• Hans-Rudi Tanner's WinLok (although he did mention DigiToys, Hans-Rudi's company, Katzer didn't tell the examiner the name of WinLok or produce it for the examiner)
• Strad Bushby's model railroad, using Digitrax LocoNet to connect multiple computers

and others. There's no doubt that Katzer knew of these. Katzer described them in his talk at the 1997 NMRA convention, and in his 1st, 2nd and 3rd talks at the 1998 convention. If he had produced this information to the patent examiner, as he was required to do by law, these patents would never have been granted, and everybody would have been saved a lot of trouble.

After the first patents were granted, Katzer filed a lawsuit against Hans-Rudi Tanner and another suit against Juergen Freiwald for patent infringement, and sent cease and desist letters to many of their of dealers. Juergen and Hans-Rudi both wrote Katzer in October 2002, explaining that lots of "prior art" existed to demonstrate that Katzer's patent was invalid, and that since Katzer knew about those pre-existing programs, he'd violated his duty to tell the patent examiner the information when he filed his patent application. Shortly thereafter, Katzer dropped the suits.

Katzer didn't shy away from using his patents to push hobbyists around. On September 8, 2004, Glenn Butcher wrote to the loconet_info mailing list:

Mr Kratzer(sic) and I have had a short exchange of emails on the topic of his patents. As a result, I have chosen to remove my loconetd and railroadd servers and client apps from my website. Mr Kratzer(sic) forwarded a FAQ on his technology licensing that contained a list of questions to aid in determining whether others' efforts could be infringing on his patents; some are specific but in my opinion others appear to be general enough to cover most of the software development activity discussed on this list. As I don't have the resources to consult a patent attorney in this matter, I've taken a conservative approach to protecting myself.
I find it disappointing to have to do this, especially to protect the rights to exclusively use what, in my opinion, appear to be simple extensions of what I used to teach in undergraduate computer science. However, I don't think it's worth fighting when that time could be spent building my layout, money could be spent on the brass D&RGW K-37 I so dearly covet...

This also resulted in a large amount of criticism of Katzer's actions, with a number of people announcing that they would no longer consider his products. (As we have stated before, we are dead set against any harassment or boycotting actions, and believe that model railroaders should be able to buy whatever products they want.)

Meanwhile, in March and April 2002, JMRI developers were working on "client/server" capabilities for LocoNet. Client/server communications for model or prototype railroads are not novel; there are lots of examples available, dating back for years. The client/server capability was a straightforward implementation using Sun Microsystem's Java RMI software tools (the similarity to the JMRI acronym is coincidental, though confusing). Using these, a remote computer running a JMRI product (e.g. DecoderPro, PanelPro, etc) could operate the layout by connecting to a local server computer that was directly connected to the layout. People discussed this update in March 2002 on a public email list while it was being developed. On April 14, 2002, the client/server update was announced as part of a JMRI test release. As always, the source code was available to the public on the web.

Three days later, on April 17, 2002, Katzer fired off a patent application intended to cover this, and claimed a filing date of June 1998. He could do this -- US patent law allows for "continuation applications". If you have a pending application, you can file another one that "gains the benefit" of the earlier application. From a legal perspective, Katzer could make his applications look as if he'd invented the JMRI capability in 1998!

By misleading the Patent Office, Katzer was able to obtain a patent on this capability by the start of 2003. Specifically, he has a patent on any system that uses

1. A method of operating a digitally controlled model railroad comprising the steps of:
(a) transmitting a first command from a first program to an interface;
(b) transmitting a second command from a second program to said interface; and
(c) sending third and fourth commands from said interface representative of said first and second commands, respectively, to a digital command station.

(Claim 1 of US patent 6,530,329, aka "the '329 patent")

Enforcing Patents Against JMRI and Bob Jacobsen

After the '329 patent issued, Katzer and Russell sent letters that demanded $19, and later $29 in royalties per downloaded copy of JMRI. We believe that the patent was invalid because of prior art, and if they had provided the prior art in their possession to the patent examiner in the first place, the patent would never have been granted. It didn't stop them. Bob Jacobsen received bills for in excess of $200,000 on a roughly monthly basis from August 2005 to January 2006. (There's a separate correspondence page that has the all the letters)

When that harassment wasn't enough to stop JMRI, Katzer and Russell contacted Bob's employer in an attempt to intimidate him. Bob is a physics professor who works part time for the University of California at Berkeley, and part time at the Lawrence Berkeley National Laboratory (LBL, run by the US Department of Energy). LBL is run by a Nobel-prize-winning physicist, and has thousands of scientists doing basic and applied forefront research. Russell sent a Freedom of Information Act request to LBL, asserting that the Laboratory "had duties for the JMRI project", and that KAM's patents were "being infringed by the JMRI project sponsored by the LAB". The request went on to ask for Bob's private emails, along with a number of other types of information designed to embarrass Bob in front of his employer.

The Department of Energy eventually decided that the request was without merit, but only after it had caused a lot of trouble.

In the meantime, Russell continued to send fraudulent invoices for more than $200,000.

Jacobsen asks for a Declaratory Judgment

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.

The complaint lists acts of unfair competition, libel, patent fraud and misrepresentation, etc, and asks that the Court issue injunctions to prevent Russell and Katzer from continuing them.

Anti-SLAPP motions

In mid-May 2006, Katzer and Russell filed several motions to dismiss parts of the complaint. In particular, Katzer filed a motion to dismiss the libel claims under the California anti-SLAPP law, and Russell filed motions to dismiss claims under the anti-SLAPP law and for the procedural reasons of lack of personal jurisdiction and failure to state a claim.

The California anti-SLAPP law is intended to protect people who make comments about issues of public interest, or as part of official government proceedings. It was not originally intended to protect corporate wrong-doers, though it's being used that way more and more. It's particularly dangerous for JMRI, because it automatically requires that, if a suit is struck down due to the anti-SLAPP law, the defendants (in this case Matt Katzer, KAM and/or Kevin Russell) get their legal costs reimbursed by the plaintiff (Bob Jacobsen).

In their motions and associated declarations, they make some pretty unbelievable claims. For example, Katzer in his declaration refers to the Department of Energy's "apparent sponsorship of the java model railroad interface (sic) (JMRI) project". He then argues that his "reasonable" belief was based on:

• Two papers (which he misrepresents) where the National Science Foundation (not the Department of Energy or LBL) has provided money for a college to use model trains in teaching real-time programming and communications.
• "Notice of the formation of JMRI on DOE or other official letterhead" that he said he "believed" he saw on the JMRIusers discussion group in January or February 2004. Setting aside that JMRI had existed for years before the date he here claimed it was "formed", both Yahoo and Internet Archive show no indication of such "notice" ever existed. The statement is a complete fabrication.
• Bob Jacobsen's emails and posting which Katzer misrepresented as "documents promoting JMRI", "including a request for funding".

Katzer then claims that:

"It was not the purpose of the FOIA request to embarrass Jacobsen with his employer, as alleged in the complaint. At the time of sending the FOIA request, I had no knowledge of Jacobsen's employment status, either with the DOE or any other employer. At the time of sending the FOIA request, I assumed that Jacobsen worked for the University of California at Berkeley based on a representation Jacobsen made to a model train internet newsgroup in 2001."

Note that the third sentence contradicts the second in that paragraph. It's simply unbelievable that Katzer didn't think Bob worked for LBL, given that Katzer was already aware of Bob's use of an LBL email address. They had even had several direct email exchanges in the past.

Still, given the structure of the California anti-SLAPP law and that Katzer is willing to lie to the court, it's going to take a very large amount of effort to defeat these motions. We'll be submitting replies, which will be available from the documents page once they're in.

Court Hearing

On August 11, 2006, the Court held a hearing to decide the motions. (Transcript) The day before, the Court had issued a tentative ruling that indicated the questions that were to be addressed in the hearing, and said that the Court was tentatively planning to grant all the motions (basically giving Katzer, KAM and Russell all that they had requested).

The hearing lasted about 90 minutes, during which the Judge asked thoughtful questions of both sides. Clearly, he was trying to understand the issues raised in the large legal briefs. In the end, however, he adopted the tentative order, and issued a "minute order" to that effect.

We don't have the Court's full reasoning, but we believe that - because of California's anti-SLAPP procedure - the Court decided it could not hear evidence that would contradict Katzer's false statements. As a result, Katzer prevailed. And as a result, California's anti-SLAPP law requires that the defendants (Katzer and Russell) be reimbursed for their legal fees. The next step is the Court ruling on Katzer and Russell's attorneys fee requests. We have filed objections with the Court, and demand more detail of the bills than the sketchy outlines that have been provided so far. But if the requests are found to be reasonable, the Court will then order them paid.

The important thing is that the main parts of the case are still intact. However, certain claims in the original complaint have been removed. The Court will no longer consider libel or anti-trust charges against Katzer, nor any charges against Russell.

Infringing Copyrighted Material

Katzer took JMRI copyrighted code, stripped out authors' names and JMRI copyright notices, converted it to his own use and then distributed it as his own.

DecoderPro is able to easily configure more than 300 types of devices because hobbyists have contributed more than 100 decoder definition files. These definitions, produced by lots of separate contributors, are what makes the program so useful, since they express a model railroader's view of how best to configure a particular device. DecoderPro first started using this approach in September of 2001.

In 2004, Matt Katzer started talking about "his" Decoder Commander product. It was finally released in 2005; on his web site, Katzer used to claim:

In June 2005 at the [NMRA] Cincinnati convention we Introduced Decoder Commander. The first XML based distributed programmer.(sic)

(Untrue, as JMRI predated this by years) Imagine our surprise when we discovered that he had copied the JMRI decoder definitions for distribution on his CDs and even tried to claim them as his own work, saying in the product manual

All decoders have unique characteristics. KAM has created a set of Decoder Templates that has these characteristics in an XML configuration file.

A separate page discusses some of the evidence for the copying in detail, but we can summarize some key points:

• He distributed a copy of each of the JMRI files. For example, the content of the JMRI QSI_Electric.xml file was included on the Decoder Commander CD in a file called QSI_Electric.tpl.xml; the names are identical except for adding the ".tpl" modifier. All of the files on the KAM version 304 CD were based on JMRI files in this way; no extra files were present on the KAM version 304 CD.
• Original JMRI definition files contain the version, the date modified, the author's name, and a copyright notice. These have free-form content, so there are many formats. The version strings and the modification date strings in the KAM files are EXACTLY the same as those in the original JMRI files they were copied from. The author's name, however, was not copied into the KAM file, nor was the JMRI copyright information.
• Many details of the content of the original JMRI files were copied exactly: Misspellings, odd capitalizations, technical errors, even the order in which options are described were all copied over exactly.

KAM created a tool that copies JMRI definitions and stores them in the KAM format, deliberately omitting all evidence of their origin with DecoderPro. Katzer even advertises this tool as a feature of "his" product, without even mentioning that they're the work of JMRI.

Amended Complaint

On September 11, 2006, we filed an "Amended Complaint" with the Court. This includes descriptions of Katzer's and KAM's copyright and trademark violations (discussed above) and asks the Court for relief.

Another Round of Motions from Katzer

September 27, 2006: Katzer's lawyer has filed another motion to dismiss parts of the amended complaint.

In it, he doesn't argue that Katzer didn't copy the JMRI software in violation of the copyright terms, probably because even HE can't stretch the truth that far. Instead, he argues that copyright doesn't protect free and open source (FOSS) software! You can read the entire argument in the motion filed with the court, in particular the section named "Plaintiff has waived his ability to sue under the Copyright Act" starting on page 13. Basically, it says that since JMRI makes the software available on the web, free of charge (although not free of restriction), when someone like Katzer takes it and uses it in violation of those restrictions, we can sue him in contract law only, if at all. The shocking part of Katzer's argument is that he says we have no rights under either copyright or contract to enforce.

This argument strikes right at the heart of much of FOSS licensing. It's already hard enough for the FOSS community to enforce its legal rights. If we lose the possibility of protecting the integrity of our work via copyrights, we'll be in a terrible situation. We hope you'll help us in this fight. Click here to donate (anonymously if you prefer).

Written Ruling on Initial Motions

On October 20th, 2006, the Court issued its written order on the initial motions. The decision was along the lines of the minute order issued right after the hearing and discussed previously. The Court did find that the full amount of the legal fees demanded by Jerger and Zeff was "excessive" and "unreasonable", so it reduced the amounts to $14,486.68 and $16,976.25 respectively.

Request for Preliminary Injunction Against Copyright Infringement

October 25, 2006: Given the strength of the evidence that Katzer copied from JMRI, and given that it appears that he's going to continue, we asked the court for a preliminary injunction. The motion was accompanied by two declarations and several exhibits. This was scheduled for a hearing on January 19, 2007.

Request for Reconsideration of Motions Denied

On October 30, 2006, we filed a "Motion for Leave to File Motion for Reconsideration, Motion for Stay, and Request for Clarification". This was a preliminary step required before seeking reconsideration of the written order of October 20th, 2006. It lays out the reasons why we think that reconsideration is justified. The Court denied the request that same day. As a result, Bob paid the legal fees demanded by Jerger and Zeff. David Zeff wasn't content to actually wait for the deadline, however, and sent another threatening email (see page 15 in the linked filing).

Reply to Motions; Defending Open-Source Copyright

On November 3, 2006, we filed an opposition (basically, a rebuttal argument) to Katzer's motion of September 28th in which he argues that copyright law shouldn't apply to his theft of the JMRI files. There are various technical elements involved, but the most important parts are the sections defending the use of copyright for protecting open-source software (pages 3 through 10). The next steps were a reply from Katzer, due on November 17th, then a decision from the Court. We will probably have a tentative ruling the day before the hearing (currently scheduled for January 19th, 2007), followed by the final ruling.

Activity on Motions and Copyright

On November 9th, Katzer filed his Memorandum in Opposition to our motion for a preliminary injunction to prevent further violations of the copyright in the JMRI decoder definition files. Included with it was a declaration by Matt Katzer. He argues that he shouldn't be held responsible for the actions of KAM Industries, his company, and repeated the previous arguments that copyright law doesn't apply. Katzer also argued that he had stopped distributing any products with JMRI materials, and thus the Court should not order him to stop infringing.

Not that it matters - once someone breaks the law and has shown that he will continue to, he can't get out of an injunction just by saying that he stopped breaking the law. Nevertheless, we tried to confirm whether Katzer was telling the truth, but his product wouldn't work and so we couldn't tell if he had stopped using JMRI copyrighted materials.

On November 17th, we filed a reply to this, along with declarations from Paul Bender, Bob Jacobsen (exhibits) and Alex Shepherd (exhibits), to set the record straight.

Also on November 17th, Katzer filed his reply to our memorandum opposing his motions to dismiss. He backed off his challenge to our copyright right claim - at least for the time being.

On December 4th, we filed a Motion for Leave to File Surreply to Defendant's Reply Memorandum. This is the legal mechanism to ask the Court to file a response to a Reply brief. Normally, once the Reply has been filed, the parties can't file anything else. However, under certain circumstances, the Court will consider a 'Surreply'. We believe that because Katzer misstated case law and brought up new facts that we should be permitted to respond to those, which is why we sought 'leave' (that is, permission) to file the Surreply and then attached the Surreply. The Court will first decide whether to consider it, and if so, then take it into account.

January 19th Hearing

We had a hearing before the Judge on January 19th, 2007. (Transcript) Two sets of issues were addressed:

• Katzer's motions re the Amended Complaint to dismiss for failure to state a claim on which relief can be granted, motion to dismiss for failure to join a necessary party, motion to strike, and motion for a more definite statement.
• Bob Jacobsen's motion for preliminary injunction to prevent further copyright violations

The day before, the Court provided a Notice of Tentative Ruling and Questions, which provides some background for what was going to happen.

The Judge quizzed both sides about the questions he'd previously provided. He then took the case under submission, which means he'll give his decision in a written ruling at a later date.

After that, there was a discussion of the scheduling of the next steps in the case, called a Case Management Conference. If you're interested in those details, there's some additional information in the docket, including the proposed CMC, and other documents.

Patent Update

As of April 13th, the court hadn't yet issued a ruling from the January 19th hearing. So the only news is that there is no news regarding that ruling.

But there has been other news. We have been watching Mr. Katzer's activities at the Patent Office. There were three continuation applications that were pending. One issued as a patent recently, but should not have. It was the exact same claims that were in its parent application, and the exact same patent specification. The only difference was the 5000+ pages of references which Mr. Katzer submitted in response to our charges of inequitable conduct. However, under 35 U.S.C. 101, Mr. Katzer was not entitled to get another patent with claims that were the exact same as the claims of an earlier patent. The examiner apparently made a mistake.

The good news is that, after wading through all 5000 pages of another continuation application, another examiner rejected all claims and questioned whether anything was patentable in the application. As a result, Mr. Katzer abandoned that application. While it is possible to revive an abandoned application, it was great news to see that no patent issued from that application.

We'll post any other news here and send it to the jmri-legal-announce mailing list when it happens.

DecoderPro.com Ordered Transferred

As described previously, Matt Katzer registered the decoderpro.com domain name to prevent us from using our own trademark. He then transferred it to current registrant Jerry Britton through a settlement agreement which required Jerry Britton to pay $20,000 and Katzer's attorneys fees if Jerry transferred the domain name to JMRI. When we filed our Complaint with the court, we included a claim for cybersquatting and a request that the Judge order the return of that domain name.

Katzer's lawyers seized on that request, and argued that because we'd not "joined all necessary parties" -- that is, the current registrant Jerry Britton who lives on the other side of the country -- the judge had to dismiss the whole cybersquatting claim. There is a legal rule that a case has to include all people whose interest might be seriously harmed, so that they can have a say in the case. Katzer tried to use this rule to force us to either drag in Jerry Britton, another model railroader who just wants Katzer to leave him alone, or drop our request to get our domain name back.

To avoid bringing Jerry in, and to get our domain name back, we brought a proceeding under the "Uniform Domain Name Dispute Resolution Policy" (UDRP). We filed a complaint with the World Intellectual Property Organization, describing Katzer's misbehavior and misuse of the decoderpro.com domain name and asking them to order that it be returned.

Focusing on Katzer's settlement agreement, the WIPO panel returned a decision that had an entire section on "Katzer's Bad Faith", including:

• "Indeed, the evidence supports the conclusion that Katzer had no purpose in registering the name except to keep it out of others' hands, including Complainant's hands."
• "it is difficult to conceive of a legitimate use Katzer could make of the Domain Name."
• "In the Panel's view, there is essentially a purpose on the part of Katzer to disrupt the business of a competitor by interfering with Complainant's exercise of his trademark rights."

and ended with the statement that:

• "The Panel concludes that Complainant has demonstrated sufficient evidence of bad faith registration and use of the Domain Name on the part of Katzer"

The WIPO Panel then ordered the decoderpro.com domain name transferred.

It's undeniable -- this is a win for JMRI. An impartial panel, experienced in Internet and trademark law, has made a clear statement that Katzer had acted in "bad faith". Although that's been clear to us in the community since the beginning, having an impartial panel ruling in our favor is a big step toward holding Katzer accountable for his actions. Further, it allowed us to continue to press our cybersquatting complaint against Katzer, and prevents Katzer from entangling Jerry Britton in the case.

Ruling on January 19th Motions

On August 17th, the Court ruled on the motions from the January 19th hearing. We won on perhaps the most important issue, but lost on several others. Perhaps the most striking part was the Court's decision to deny our request for a preliminary injunction. You can read the reasoning on pages 8 through 11 of the ruling, but the conclusion is:

The condition that the user insert a prominent notice of attribution does not limit the scope of the license. Rather, Defendants' alleged violation of the conditions of the license may have constituted a breach of the nonexclusive license, but does not create liability for copyright infringement where it would not otherwise exist. Therefore, based on the current record before the Court, the Court finds that Plaintiff's claim properly sounds in contract and therefore Plaintiff has not met his burden of demonstrating likelihood of success on the merit of his copyright claim and is therefore not entitled to a presumption of irreparable harm.

This is very troubling, both for us and for Open Source efforts in general.

• The facts in this case are the strongest imaginable: Katzer admitted copying the JMRI files, admitted removing their copyright notifications, admitted being aware that JMRI was distributed under license, admitted redistribution of the modified version, and admitted doing it in violation of the license terms. This kind of problem could happen to any open source project.
• The ruling rests on the Court's uncertainty that an Open Source organization will ever be able to enforce copyright on software that can be downloaded from the Internet. The Court's reading of the law in this area expressed uncertainty, but in the end decided that our "claim properly sounds in contract", and therefore denied the preliminary injunction.
• This ruling is particularly troublesome, because the logic it contains can be used for any project which freely distributes software using something that can be construed as a "nonexclusive license".

We are carefully considering an appeal of this decision. As long as the Court's logic stands, we can't enforce our copyrights. Further, we need to get the strongest possible decision from an appeal, because the "uncertain law" will be clarified by that appeal and will apply to other cases in the future. We're going to need help to do that, and we're actively looking for that help.

The Court also dismissed our claim against Katzer for cybersquatting. The Court apparently misunderstood the reasoning behind our argument, and decided that we had waived our claim by saying that we were only asking for the return of decoderpro.com "in rem". On the contrary, we want Katzer held responsible under the law for his illegal actions, beyond just being forced to return our domain name (which we now have back due to the WIPO, not the Court), and we said so in the hearing. We are considering how to go about getting this claim reinstated.

Request for Reconsideration on Cybersquatting Denied

On September 4th, 2007, we asked the Court to reconsider its decision on the cybersquatting claim. We believe that the Court misunderstood our argument. Unfortunately, the Court has denied this request.

We're considering what the next step will be. We can wait until the rest of the case has been resolved, and then appeal this decision (you can't appeal something like this until it's final, and that generally means when the case as a whole is complete), but we are also investigating other alternatives.

Appeal of Copyright Ruling

On September 13, 2007, we appealed the Court's ruling on copyright to the Court of Appeals for the Federal Circuit in Washington DC. Over the next few months, a series of briefs will be filed, first by us, then a reply from Katzer and then a final brief from our side before a (possible) hearing before the Appeals Court next Spring.

We've added a separate docket page for those who'd like to keep track of all the documents that will get filed.

This is an important part of the case, and we'd appreciate as much help as we can get. We're not just trying to get the Court's erroneous ruling corrected for our own case, but because it's a very dangerous precedent for other open source and free software projects that might find themselves in similar struggles against abuse. Please, if you know people in open source organizations, suggest to them that they help with this.

Case Management Conference

On September 14, 2007, the Court held another Case Management Conference to discuss a schedule for coming events.

We continue to learn more and more about Katzer's misbehavior, and we want a new complaint before the Court to include as much of it as possible. Although we asked for until the end of October to prepare a a Second Amended Complaint, the Court ordered us to provide it to Katzer's lawyers by October 19th.

Filing Second Amended Complaint

On October 31st, 2007, we filed a motion requesting leave to file a second amended complaint. This is a necessary step, ordered by the Court, toward getting the new complaint before the Court. The motion includes two proposed versions. We believe that our cybersquatting claim for Katzer's misuse of the decoderpro.com domain name is a valid one, and we now have the hearing transcript that proves we did not waive this claim. We're therefore asking the Court to allow us to file a version which includes cybersquating. In the interest of time, however, we've also included a version without that claim if the Court continues to believe that we've waived it. In that case, we're asking the Court to allow us to go forward with the version of the complaint without the cybersquatting claim, and to declare the decision on that final so that we can appeal it.

We included a claim under the Digital Millennium Copyright Act (DMCA). You might wonder what DMCA has to do with open source software. DMCA has two main statutes. Section 1201 is the one which has to do with circumvention, and it is used more frequently of the two statutes. Many people in open-source and free software communities hate this section, for good reason. We are NOT suing under section 1201. Then there's Section 1202, rarely used so far, which forbids providing false copyright management information or removing copyright management information. We believe that Katzer's removal of JMRI copyright notices, author's names, and license terms -- which qualify as copyright management information -- from our machine-readable XML decoder definitions is a violation of Sec. 1202. We believe this section is a great weapon we can use against Katzer to protect our intellectual property rights, so we charged Katzer and his company with a violation of this section. If we succeed, it will allow other open source groups to invoke this section to defend their intellectual property, and to obtain statutory damages and attorneys fees.

Katzer's lawyer has already said he doesn't object to either version, so we expect this will be straight-forward.

Second Amended Complaint Ruling

Although Katzer had previously agreed to the filing of either of our draft complaints (see above), he's clearly still more interested in delaying the case rather than resolving it, so on November 2nd, he filed an opposition to our request to file the complaint. He then followed this up with a request for sanctions.

In typical style, he misstated law and facts in these filings, and didn't obey the Court's rules regarding notice. We filed a motion pointing this out, and asking that the hearing on sanctions be deferred until proper notice had been given. Katzer's reply included additional misrepresentations, and the Court denied our motion. We felt we had no choice but to file our own motion for sanctions to at least bring this misbehavior to the attention of the Court.

On December 11th, the Judge allowed the filing of our preferred version of the new complaint and denied the requests for sanctions.

We then filed second amended complaint on December 12th. The Court has set a deadline of January 4th, 2008, for Katzer to either file his reply, or start another round of motions.

This is a big victory for us. We've learned a lot about Katzer's misdeeds over the last year. This new complaint puts it all before the Court, including Katzer's cybersquatting, and will (eventually) force him to reply in detail to each item. He's been able to avoid doing that for almost two years, but his time is running out.

Appeal Brief Filed

On December 17th, 2007, we filed our appellant's brief in our appeal of the Court's copyright ruling with the Court of Appeals for the Federal Circuit. It lays out, in detail, the legal reasons we believe that the District Court's copyright ruling is incorrect and should be overturned.

Katzer's reply to this is due on January 29th, 2008.

Yet Another Motion From Katzer

On December 21, 2007, Katzer filed his 3rd motion to dismiss parts of the complaint. We're still analyzing it and will decide how best to reply soon.

Key Open Source Organizations File Brief Supporting JMRI

On December 28, 2007, a motion to file an amicus brief, along with the brief itself, was filed in our appeal by

• Creative Commons Corp,
• The Linux Foundation,
• The Open Source Initiative,
• The Software Freedom Law Center,
• Yet Another Society (Perl Foundation), and
• The Wikimedia Foundation.

An "amicus brief" is a way for a "friend of the Court" to explain to the Court the larger issues involved in a case. They can be very helpful in making sure that decisions with far-reaching consequences are made properly. Here, the amici clearly laid out how copyright protection is key to the success of open source and free software, and educated the Court on why that matters. It's a very strong argument, which should be widely read.

Katzer's deadline to oppose entry of this brief has now passed, and we hope that the Court will accept it soon.

Our Response to Katzer's Contract, Copyright and DMCA Arguments

On January 18, 2008, we filed our response to Katzer's most recent motion to dismiss. That motion attempted to get rid of various parts of our recent Second Amended Complaint regarding copyright, contract and DMCA violations. In our response, we show that Katzer misstated both law and facts, and show that the Court should allow us to hold Katzer responsible for his actions in stripping the copyright management information out of the JMRI files, for repeatedly infringing JMRI copyrights, and, if Katzer's argument that he had a contract is valid, for violation of that contract.

The next step will be Katzer's reply, due on Friday January 25th, which we will post on the docket page when it arrives, followed by a hearing on March 14th.

Amicus Brief Accepted

The U.S. Court of Appeals for the Federal Circuit has accepted the amicus brief filed by six free and open source organizations. This means that the Federal Circuit will consider arguments from the amicus brief when the judges hear the case later this spring.

Deadline For Settlement Disclosures Set

The Court has ordered both sides to take part in a settlement conference, now scheduled for February 13th before Judge Elizabeth Laporte. The judge has ordered Katzer to provide his "position on validity, enforceability and infringement of the '329 patent". This order is a positive step for us. We've been trying for years to get Katzer to say why he thinks his patents are valid, and why he thinks 7,000 people have infringed them. We think he knows that his patents are invalid and unenforceable, and that he knows his claims of thousands of infringements are a dishonest attempt to extract money that no one ever owed to him. Many of his actions in this case seem to have been intended to delay proceedings so he wouldn't have to provide a detailed answer to the complaint, including this information. Now he's been ordered to provide it by January 31, 2008. We're looking forward to getting this information.

Katzer Doesn't Provide Disclosures, Disclaims A Patent, Moves to Dismiss

Katzer had been ordered to explain by January 31st why he thought that his '329 patent was valid and why Jacobsen infringed. He didn't provide the disclosures required by Judge Laporte, so he was in violation of the order. Instead, on February 1st, he filed a disclaimer of that patent with the US Patent Office. The disclaimer treats the patent as if it never existed, so no one can ever be charged with infringing the '329 patent. Getting that disclaimer out of Katzer is a victory for JMRI, because it removes the threat of that patent.

But Katzer has repeatedly said that he believes that Jacobsen is infringing multiple patents. He said it to the U.S. Department of Energy and Lawrence Berkeley National Laboratory, when he filed a FOIA request for information relating to Jacobsen, and included a bill for $200,000 for the supposed infringement. He also said it several times to the Court. Because he has thirteen other patents, Katzer can still use his patents against JMRI and other model railroaders. Preventing him from asserting the '329 patent was therefore just the start. There is more work to do to prevent Katzer from asserting other ill-gotten patents against innocent parties.

In the meantime, to avoid judgment being entered against him, Katzer asked the Court to dismiss our request for three declaratory judgment causes of action relating to patent as "moot". Katzer is saying that since he disclaimed '329, nobody has anything to fear, and our patent causes of action should be dismissed because federal courts do not decide matters unless there is a "case or controversy", in legal lingo, keeping the matter alive. (His motion asking for this is linked here) Because Katzer has repeatedly said Jacobsen infringed multiple patents, we'll be fighting this vigorously, including filing a motion for early discovery to determine what other patents Katzer believes that Jacobsen infringed.

Settlement Conference

On February 13, 2008, we had a settlement conference before Judge Laporte at the San Francisco Federal Courthouse. Discussions in settlement conferences are confidential, so we are severely limited in what we can discuss about what happened there, except of course what's in public orders. The case didn't settle, and that's about all we can say.

Hearing Rescheduled

The hearing on Katzer's motion to dismiss contract and DMCA violations (discussed briefly above) was scheduled for March 14th. The Court has ordered that this be combined with the hearing on his motion to dismiss the patent claims, and scheduled the combined hearing for April 11, 2008.

Motions for For Early Discovery & Rescheduling Denied

As we mentioned earlier, Katzer repeatedly said Jacobsen infringed multiple patents. He was under an order to produce disclosures on why he thought Jacobsen infringed a valid and enforceable patent, but instead, Katzer tried to pull the rug out from under us by filing a disclaimer on the '329 patent, and then moving to dismiss the declaratory judgment causes of action relating to patent. We filed a request for early, limited discovery to get the identities of all patents that Jacobsen supposedly infringed, along with a corresponding request to move the briefing deadline back so that we had time to get the information. Katzer of course opposed this. The Court declined to order Katzer to provide the information on other supposedly infringed patents, so we filed our response to the motion to dismiss the patent parts of the case that same day.

Katzer Disclaimed Not One, but Two Patents!

On March 18th, the U.S. Patent Office published two disclaimers, not just one, that Katzer had filed on Feb. 1, 2008. One is the '329 patent mentioned above, and the other is U.S. Patent No. 7,177,733.

We had pointed out that the '733 patent is invalid for "Section 101 double patenting": It has, word-for-word, the exact same claims as an earlier patent, U.S. Patent No. 6,909,945, which issued from '733's parent continuation application. Katzer and his patent attorney, Kevin Russell, had repeatedly filed patent applications that had the exact same claims as in earlier issued Katzer patents. (See the Second Amended Complaint, paragraphs 135 - 221 for details on Katzer's double patenting.)

Katzer and Russell are supposed to tell the examiners if they file copied claims, but they repeatedly didn't. Most of the time, the patent examiners caught this and rejected the claims as improper under Section 101 of the patent law.

Back in 2006, when we filed our original complaint, we identified a number of examples of "prior art", which are examples showing that other people had already created what Katzer claimed he invented. While we were fighting the anti-SLAPP motions, we produced other examples of prior art. Katzer and Russell took those examples, and added several more, and submitted them as part of the application that later issued as the '733 patent. In total, Katzer and Russell submitted between 5,000 and 6,000 pages. Although the examiner who was working on this application had also handled the previous application that issued as the identical '945 patent, she must have been overwhelmed by the thousands of pages of newly produced references, and missed that those claims had improperly been filed again. She allowed the '733 patent to issue.

Our Second Amended Complaint put this situation before the Court as part of demonstrating that Katzer has a pattern of misleading the Patent Office. With pressure on them over the '733 reference, Katzer had Russell disclaim the entire '733 patent, as well as the '329 patent.

Two Surreplies

Normally, when one party makes a motion, the other party gets to file an "Opposition", the original party gets to reply to that opposition, and that's it. There's then a hearing and the Court decides. The side making the motion is supposed to put all their arguments in the original motion.

In the case of two most recent motions, however, Katzer raised new arguments in his replies. The only place we get a chance to refute those new arguments is via a "surreply", but we have to ask the Court for permission to file that. Because Katzer raised new arguments in his reply for each of two motions, we've asked the court for permission to file a surreply for the copyright motion and a surreply for the patent motion. These include the surreplies themselves (copyright surreply, patent surreply), if you'd like to read them.

April 11, 2008 Hearing

We had a hour-long hearing in the Northern District of California on April 11th, 2008. It was nice to see so many supporters there!

The day before, the court had issued a Notice of Tentative Ruling and Questions which indicated that the preliminary decision was to grant some parts of the motions and deny others. Much of the hearing was spent on the patent aspects of the case, but copyright also received some attention. We'll post the transcript on the docket page and link to it from here as soon as it's available.

At the hearing, the Judge did not indicate what his decision will be. We'll let you know as soon as we see it.

Events in the Copyright Appeal

There are some recent events in our copyright appeal to the Court of Appeals for the Federal Circuit in Washington DC.

On April 4th, 2008, Creative Commons Corp, The Linux Foundation, The Open Source Initiative, Software Freedom Law Center, Yet Another Society and Wikimedia Foundation filed a request to be allowed to participate in oral argument at the hearing on May 7, 2008 in Washington DC. Katzer promptly filed an opposition. We filed a reply which argued that the amici have useful things to say, and requested that the court allow them to present their views. The amici also filed a reply describing how they would be presenting information the Court would find useful. Unfortunately, the Court denied the request.

Separately, also on April 4th, Katzer filed a "Notice of Supplemental Authority". This is a way to bring a recently-decided case to the attention of the court. Katzer cited Netbula v. Storage Technology, which is about two companies that negotiated a contract so Storage Tech could use copyrighted material that belonged to Netbula. When that deal went bad, Netbula accused Storage Tech of copyright infringement, but the Judge in the case found for Storage Tech. We've filed a reply, arguing that this case is very different from ours. In our case, we didn't negotiate a contract, and Katzer never did anything to accept one; no contract exists or has ever existed between us, so Katzer is clearly an infringer. Katzer seems to be citing this case to attempt to befuddle the Court about the facts, not to update them on the law.

May 7, 2008 Copyright Appeal Hearing

On May 7, 2008, we argued our copyright appeal at the Federal Circuit in Washington DC. Each side had been given 15 minutes to argue their case. Chief Judge Michel, Judge Prost, and a visiting judge, Judge Hochberg, were on the panel.

We were first up. The three Judges asked about whether anything Katzer did could have formed a contract, what we expected from him under our license, and what effect their ruling would have on further proceedings in the district court. They seemed particularly interested in the Open Source development model, and whether Katzer's arguments meant that there was no way to hold him to account for his infringement of the copyrights.

When it was Katzer's attorney's turn, they asked him why Katzer didn't just accept an injunction against using the JMRI files, since he claimed to no longer use them and that he had no future use for them. He had to admit that the District Court Judge had ruled that the infringement could recur. They next asked why Katzer didn't just comply with one of the many options within the license for using the material. In replying to this, Katzer's attorney claimed that Katzer had downloaded the decoder definitions as part of his interest in furthering industry standards, and that he thought he could use them as he wished. Complying with the license "never crossed his mind". They also quizzed him about whether Katzer knew about the terms, and how an author would go about protecting his rights if Katzer's arguments are accepted. One Judge wondered whether Katzer was arguing for "Too bad, so sad", and asked whether this would make it impossible to protect Open Source development under copyright.

It was a very interesting session, with a lot of thoughtful questions. It was clear that the Judges had already carefully considered the issues. There were enough questions that both sides were given several minutes past the fifteen minutes allotted. The sound recording, approximately 40 minutes, is available here.

The next step will be the ruling from the Federal Circuit. There's no way to know precisely when that will be, but we'll post it here as soon as we get it.

Coming Events

We currently have no hearings scheduled. We're waiting for decisions from the District Court on Katzer's motions and from the Federal Circuit on our copyright appeal.

More info

The navigation bar to the upper left has links to more information, or you can go back to the main page for an overview.

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.