JMRI Defense: Our Story So Far

This page describes the entire history, starting from the beginning and going to the most recent events. It's a long story.

If you want just the most recent events, they're also available on a shorter page.

Other information and arrangements are available from the left-side menu.

The navigation bar to the 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.

Start: Introduction

We are in the midst of a years-long effort to protect the JMRI open-source project from attack by someone who wants to steal our work and prevent anybody from using our software.

Some of his tactics and justifications 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 against such a concerted attack. We certainly won't be the last.

Here's our story.

Background

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.

March 13, 2006: 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.

July 12, 2006: 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.

August 13, 2006: 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.

September 10, 2006: Infringing Copyrighted Material

In June 2006, we learned that 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.

September 11, 2006: 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 previously) and asks the Court for relief.

September 27, 2006: 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).

October 20, 2006: 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.

October 25, 2006: 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.

October 30, 2006: 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).

November 3, 2006: 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.

December 4, 2006: 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 19, 2007: 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.

April 14, 2007: 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.

August 6, 2007: 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.

August 17, 2007: 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.

September 5, 2007: 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.

September 13, 2007: 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.

September 14, 2007: 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.

October 31, 2007: 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.

December 11, 2007: 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.

December 17, 2007: 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.

December 21, 2007: 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.

December 28, 2007: 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.

January 18, 2008: 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.

January 22, 2008: 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.

January 23, 2008: 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.

February 12, 2008: 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.

February 13, 2008: 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.

February 15, 2008: Hearing Rescheduled

The hearing on Katzer's motion to dismiss contract and DMCA violations (discussed briefly previously) 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.

March 21, 2008: 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.

April 4, 2008: 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.

April 16, 2008: 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.

August 13, 2008: Court Hearing

The Court of Appeals for the Federal Circuit has issued its decision in our copyright appeal, and it's a ringing victory for JMRI and open-source in general.

In summary, the Court decided:

• The Artistic License does put valid conditions on the use of licensed software.
• Those conditions limit the copyright license, and actions outside them are infringement.
• An injunction to stop that infringement is a suitable remedy.

Specifically, the Court wrote:

It is outside the scope of the Artistic License to modify and distribute the copyrighted materials without copyright notices and a tracking of modifications from the original computer files. If a downloader does not assent to these conditions stated in the COPYING file, he is instructed to "make other arrangements with the Copyright Holder." Katzer/Kamind did not make any such "other arrangements." The clear language of the Artistic License creates conditions to protect the economic rights at issue in the granting of a public license. These conditions govern the rights to modify and distribute the computer programs and files included in the downloadable software package. The attribution and modification transparency requirements directly serve to drive traffic to the open source incubation page and to inform downstream users of the project, which is a significant economic goal of the copyright holder that the law will enforce. Through this controlled spread of information, the copyright holder gains creative collaborators to the open source project; by requiring that changes made by downstream users be visible to the copyright holder and others, the copyright holder learns about the uses for his software and gains others' knowledge that can be used to advance future software releases.

The Appeals Court ruled that the lower court's decision is "vacated and remanded". This returns the case to the District Court for Northern California, which must decide on a remaining question before issuing the injunction.

Although there will be some further proceedings, this is a huge step forward for us. The appellate judges have ruled that when Kater took JMRI files, modified them, and distributed them as if there were his own, he was violating copyright law and we can hold him accountable.

It's also an important result for open-source software in general, because (to quote Larry Lessig's blog):

In non-technical terms, the Court has held that free licenses such as the CC licenses set conditions (rather than covenants) on the use of copyrighted work. When you violate the condition, the license disappears, meaning you're simply a copyright infringer. This is the theory of the GPL and all CC licenses. Put precisely, whether or not they are also contracts, they are copyright licenses which expire if you fail to abide by the terms of the license.

Important clarity and certainty by a critically important US Court.

There's been a lot of public reaction to this ruling. Our "Articles by Others" page carries links to some of the commentary.

August 29, 2008: Status and Scheduling Conference

We had a status and scheduling conference before Judge White on August 29th, 2008. He decided that both sides were to resubmit their motions to simplify the record. We'll then have a hearing on all matters on December 19th, after which he'd rule on all the motions.

Included in this is our request for a preliminary injunction under copyright laws (infringement and DMCA) to stop Katzer from misusing JMRI files, and Katzer's motions to remove various parts of our Second Amended Complaint against him.

All of the documents will be made available on the docket page after they are filed.

October 10, 2008: Preliminary Injunction and Other Motions

At the August status conference the Court decided that both sides would resubmit their written arguments to the Court. We have therefore filed two sets of documents with the Court.

The first set, filed Friday October 3, 2008 is our motion (and related declarations) for a preliminary injunction under both copyright law and the Digital Millenium Copyright Act (DMCA).

The second set, filed October 10, 2008, are our oppositions to two motions by Katzer. Back in December 2007, he filed his "Third Motion to Dismiss", asking the Court to dismiss our DMCA and breach of contract claims. He also asked the Court to strike our request for statutory damages for Katzer's copyright infringement. Our response argues that these should remain.

In February 2008, Katzer also filed a "Fourth Motion to Dismiss" seeking to have the patent claims removed because he disclaimed the '329 patent. We argue in our response (and associated exhibits) that Katzer is attempting to evade responsibility for his own bad acts, and that the law says that we can still hold him responsible.

Katzer's responses to these are due on November 7, 2008. We then get to file a reply regarding the preliminary injunction by November 21, 2008. Those will all be added to the docket page as soon as they are available. At that point, all the paper briefing is done, and the Judge can decide the motions at any time. If he has any questions, those will be discussed at a hearing, currently scheduled for December 19, 2008.

October 15, 2008: Katzer Request to Seal Declaration

On October 15, 2008, Katzer filed a motion requesting that he be allowed to file a declaration "under seal". This is usually used for trade secrets and similar information that shouldn't be made public. Putting the information under seal allows the Court and the parties to reference it while still protecting the information from public disclosure. In this case, however, Katzer has also asked that Jacobsen not be allowed to see the information.

We filed an opposition to this, pointing out that Katzer's request didn't comply with the relevant rules of civil procedure, and puts us at an extreme disadvantage in rebutting Katzer's statements.

Katzer then filed another declaration, and several days later provided the declaration that he proposed to be sealed. We replied, pointing out several ways that Katzer's request was still in violation of procedural rules and with basic fairness.

The Court agreed, and ruled that Katzer could not submit his declaration under seal, but could ask again. Katzer didn't do so.

November 7, 2008: Katzer filings

On November 7th, 2008, Katzer filed documents in the three existing motions.

He filed a reply to our opposition to his motion to dismiss our patent claims as moot. He also filed a reply to our opposition to his other motion, to dismiss and to strike parts of our complaint against him. At first glance, this contain the same arguments as before, trying to distract the Court from the real issue that Katzer is likely to continue to assert his improperly obtained patents.

Interestingly, Russell also filed a "response", along with a declaration from Katzer and a declaration from Russell himself. We're not entirely certain that this is even a reponse to, because Russell is no longer a party to the case at this own request.

We're still studying these, and will determine our next steps soon.

As expected, Katzer also filed an opposition to our motion for preliminary injunction, along with a declaration from Katzer and a number of exhibits. A first look indicates that Katzer is claiming that he does have permission to use the JMRI content because he holds the copyright on a QSI manual, because the JMRI decoder definitions are merely "manufacturer information", and because they "build on an effort" started by Katzer "to construct a master, uniform template of manufacturer's specification data". We disagree about all of this, and our reply will strongly rebut Katzer's evidence. Katzer is clearly still asserting that he has a right to use our content in violation of our license, and that he doesn't think he's done anything wrong. We also disagree about that. Our reply to this is due November 21st, and will be on the docket page shortly after it's filed.

November 21, 2008: Our Copyright Reply

On November 21, 2008, we filed our reply to Katzer's opposition to our motion for preliminary injunction (see previous item), along with a declaration and a number of exhibits. We point out his mistatements of facts and law, and use his own exhibits to demonstrate that his story of why he thought he can use the JMRI decoder definitions isn't right.

We also filed a motion to strike parts of Katzer's and Russell's declarations. Although they should be allowed to tell their story, they aren't allowed to just assert things without justifying them. The motion requests that the Judge disallow certain of their statements. Katzer and Russell talk about their beliefs that Jacobsen infringed and that the '329 patent was valid, but they didn't state the basis for this belief, which is required by the rules. Under the rules, Jacobsen is entitled to have those statements stricken. We expect that Katzer will respond to this pretty soon, and we'll post that when it becomes available.

November 26, 2008: Katzer Opposition Regarding Declarations

On November 26, 2008, Katzer filed a short opposition to our motion to strike part of his declarations. This was pretty much as expected.

December 8, 2008: Our surreply to Russell and Katzer

Normally, one side files a motion, the other side files an opposition, and then the first side files a reply to the opposition. The reply is not supposed to carry new argument. When one side doesn't follow the rules and raises new issues in a reply, or when new facts arise, a party can ask for permission to file a "surreply" to comment on the new argument or the new facts.

Because Katzer raised new issues after opposition was filed, and because we now have additional information, we filed surreplies to both Katzer motions on December 8, 2008.

The copyright surreply refutes some of Katzer's arguments by showing that he has misquoted case law or used case law that doesn't apply. Katzer had argued that no statutory damages or attorneys fees were available to Jacobsen because the first version of JMRI wasn't registered prior to Katzer's infringement, but we showed that it doesn't matter that the version wasn't registered. As long as some versions are registered, and Katzer infringed those later versions after registration or within three months of publication, then statutory damages and attorneys' fees are available.

We filed the patent surreply because Katzer, and his intellectual property attorney Kevin Russell, who had permission to file a response but filed it 4 weeks late, filed responses in which they, once again, tried to mislead the Court. We argued that the Court has jurisdiction to hear the '329 patent because of anti-SLAPP and because Jacobsen is prevailing party. Katzer and Russell said that they disclaimed the '329 patent because of "practical considerations" and "economic reasons", and argued that our jurisdiction arguments were a motion for reconsideration. We responded to these arguments to correct the record, and discussed some new information that we had learned.

December 19, 2008: Hearing in Federal District Court

We had a hearing before the Judge on December 19th, 2008. Three motions were addressed:

• Katzer's Motion to Dismiss the patent actions for mootness
• Katzer's Motion to Dismiss the DMCA and contract causes of action, and strike certain damages
• Bob Jacobsen's Motion for Preliminary Injunction to prevent further copyright violations

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

The Judge quizzed both sides about the questions he'd previously provided, plus some additional questions. There was about 90 minutes of discussion. He then took the case under submission, which means he'll give his decision in a written ruling at a later date.

January 5, 2009: Court Rules on Motions

On January 5, 2009, the Court ruled on all the pending motions. It was a mixed decision: The Court denied our request for a preliminary copyright injunction, and granted some of Katzer's motions but denied others. We're studying the implications of this ruling and will provide more information when we can.

February 4, 2009: Appeal of Copyright Ruling

Today, we filed a notice of appeal, a preliminary step to appeal the recent District Court decision. The next step is for the Court of Appeals for the Federal Circuit to "docket" it, at which point we'll have a better idea of what the appellate schedule will be.

In the main case, the next scheduled event is the long-awaited Answer from Matt Katzer. The Court has ordered him to provide it, and we're expecting to see it in the next few weeks.

After that, we have another settlement conference scheduled with Judge Laporte at the end of the month. A lot has happened since the last settlement conference a year ago, and we're cautiously optimistic that this one will be successful.

We'll post more information as it becomes available.

February 11, 2009: Katzer files Answer and counter-sues for $6 million

On February 11, we received Katzer's long-awaited Answer to our suit. It's a 29 page PDF document available, along with all the other filings in the case, on the docket page.

We still carefully considering it, and more information will follow. There is one striking thing, however: Katzer is now suing Bob Jacobsen for copyright infringement of the QSI decoder manuals and asking for damages "in excess of $6,000,000"! (page 28 of the filing)

We'll post another note on the updates page and via the email list after we've evaluated the filing.

February 27, 2009: Settlement Conference

We had a brief settlement conference today, February 27.

We can't talk about what happened, but the case didn't settle. It seems we still have a long way to go.

March 2, 2009: We Answer Katzer's Counter-claim

On February 11, Katzer filed a counter-claim for $6 million because the JMRI decoder definition files infringe "his" copyright in a manual originally written for QSI to describe QSI's decoder.

The next step was for us to file an Answer to that claim, laying out our "defenses", which are the reasons we think that counter-claim isn't legitimate. We've done that today.

With this, and after only three years, the initial part of the case now comes to a close. Both sides have laid out the basic structure of their case. Now we move to the 2nd part, where after some scheduling activities, the "discovery" phase begins. We'll provide more information as we get there.

May 14, 2009: Case Schedule Set: We Have a Trial Date!

The Court has ruled on the schedule for the rest of the case.

The next phase is "discovery", which involves lots of request for documents, answers to questions ("interrogatories"), and admissions, followed by depositions of various people. Most of the information that's learned in discovery has to remain confidential, so we won't be saying much for the next few months.

After that, both sides are expected to file "Motions for Summary Judgment". Basically, in civil cases like this one, judges decide matters of law, while juries rule on facts. If all the facts can be established through the discovery process, then some or all of the case can be decided by the judge without need for a jury trial. Motions for Summary Judgment ask the judge to first decide whether there's any questions left about the facts, and if not, to decide the case. Sometimes this is possible for part of the case, but not all, in which case it's called "Partial Summary Judgment".

Our Motions for Summary Judgment are due October 30th, followed by opposition briefs, replies, etc. We'll post them here as they become available.

That will be followed by a hearing on December 4th, 2009 on the summary judgment motions. The decision may come that day, or may follow later.

If anything remains undecided after the summary judgment decision, either because summary judgment wasn't requested on all parts of the case, or because the Judge decided that some questions of fact remain, there will be a trial. The trial is currently scheduled to start on March 22, 2010. There will probably be a few motions, etc, before that.

June 1, 2009: We File Our Appeal Brief

We have filed our Appellant Brief in our appeal to the Court of Appeals for the Federal Circuit.

It lays out the reasons that we think that the ruling of last January should be overruled.

This is the start of the briefing process, to be followed by an (expected) opposition from Katzer and a final reply from us.

June 15, 2009: Software Freedom Legal Center Files Amicus Brief

The Software Freedom Legal Center has filed an amicus motion in our appeal to the Court of Appeals for the Federal Circuit.

Actually, the process is that they file a motion for permission to file the motion. These are generally granted, as it's reasonable for the Court to get more information when trying to resolve issues.

They've posted a note on their news feed descibing their position. There's also a podcast episode.

June 29, 2009: Appeals Court Accepts SFLC Brief

Katzer had objected to the Software Freedom Legal Center filing an amicus brief with the Court of Appeals for the Federal Circuit, and the SFLC had replied to those arguments.

The Appeals Court has now ruled entirely in the SFLC's favor on this, and will consider the brief.

July 28, 2009: Katzer Appeal Brief Filed

Katzer has filed his brief in our appeal of the January ruling.

The next step is for us to file a reply, and then for the case to be scheduled for a hearing.

August 4, 2009: ACT Amicus Brief Filed

The Association for Competitive Technology (ACT) has filed an amicus brief is support of Katzer in our appeal of the January decision.

ACT's motto is "protecting small business innovation". Their online blog had previously commented on the first appeal on their ACT Online blog. They were one of the few commentators that disagreed with the decision.

They're an interesting organization. They apparently were created in response to the anti-trust suit against Microsoft. Despite having a motto of "protecting small business innovation", their positions are often very closely aligned with Microsoft, and against the interoperability considerations that help small companies. It seems that Matt Katzer has interesting friends.

August 19, 2009: Appeal Reply Brief Filed

We have filed our reply brief in the appeal to the Court of Appeals for the Federal Circuit.

The next step, assuming nothing unexpected happens, is for the appeal to be scheduled for a hearing date. We'll post more news as it arrives.

October 5, 2009: Discovery Closes

The discovery process in the main case is drawing to a close.

Both sides have provided the other with huge numbers of documents, answered questions, and desposed witnesses. The process is exhausting, because we've been asked for all sorts of things (have you ever had to feed a file cabinet to a scanner? Don't, if you can possibly avoid it), and because we've had to go through piles of documents provided by the other side.

The information from discovery has to remain confidential until it's needed to prove facts for the Court, and even then Katzer can ask that some things be sealed.

What we can say is that we've been able to get what we needed to prove our case. Some of that will become visible at the next step, which is the filing of Summary Judgment motions at the end of the month.

October 30, 2009: Motions for Summary Judgment

As expected, both sides filed Motions for Summary Judgment today.

In our motion, we're requesting that the Court find Katzer liable for cybersquatting and copyright infringement, plus certain parts of the DMCA violation claim, and that the Court dismiss Katzer's counter-claim that our decoder definition files infringe his copyright on the QSI manuals.

Katzer's motion asks the Court to throw out our copyright claim, and since there would then be no copyright infringement, the DMCA claim. He didn't ask for a ruling on cybersquatting or his copyright counter-claim.

The next step is for both sides to provide "Opposition" briefs, due in several weeks. Those will possibly be followed by "Replies", and other documents, before the December 4th hearing.

November 25, 2009: Summary Judgment Briefing Papers Complete

The briefing papers for the December 4, 2009 Summary Judgment hearing have all been filed.

Juries decide whether disputed facts are true. Summary Judgment is a procedure where the Court can rule on legal questions where all the facts are settled, and therefore the facts don't need to go to the jury. The Court looks at evidence and argument about whether there is a real dispute about the facts, so that it can first rule whether facts are undisputed, and if so, decide what they mean under the law.

There are two motions for Summary Judgment. In ours, we're requesting that the Court find Katzer liable for cybersquatting and copyright infringement, plus certain parts of the DMCA violation claim, and that the Court dismiss Katzer's counter-claim that our decoder definition files infringe his copyright on the QSI manuals.

Katzer in turn is asking the Court to throw out our copyright claim, and since there would then be no copyright infringement, the DMCA claim. He didn't ask for a ruling on cybersquatting or his copyright counter-claim.

Each side filed their motion at about the same time, then filed "oppositions" to the other's motions. Finally, after getting approval from the Court, each side filed a "Reply" on a few specific points. Each of these came with declarations and exhibits, all of which are linked below.

In addition to these, there were a lot of procedural filings that can be found on the complete docket page. These were needed because Katzer and QSI insisted that certain documents be sealed, and the parts of the arguments that refer to them be redacted from the public. This in turn required various motions to the Court to reqeust orders to seal documents, etc.

The next step is the hearing on December 4th. Before past hearings, the Court has provided a preliminary ruling and/or a list of questions the day before. If that happens again, we'll post it as soon as possible.

Jacobsen's Motion for Summary Judgment

• Associated documents:
  • Motion to seal documents and associated declaration
  • Jacobsen's declaration regarding copyright assignments and exhibits
  • Jacobsen's declaration in support and exhibits
  • Declaration of Jack Shall
  • Declaration of Robin Becker
  • Declaration of Victorial Hall and exhibits
• Katzer's Opposition to Jacobsen's Motion for Summary Judgment, and associated declarations by Matthew Katzer and Scott Jerger, with exhibits.
• Jacobsen's Reply to the Opposition to Jacobsen's Motion for Summary Judgment, and associated declarations by Bob Jacobsen, Victoria Hall and Howard Penny, with exhibits.

Katzer's Motion for Summary Judgment

• Associated documents:
  • Katzer's declaration and exhibits
• Jacobsen's Opposition to Katzer's Motion for Summary Judgment, and associated declarations by Bob Jacobsen, Victoria Hall and Howard Penny, with exhibits.
• Katzer's Reply to the Opposition to Katzer's Motion for Summary Judgment.
  • Jacobsen's Response to Objections in the Reply to Opposition.
    • Katzer's Memorandum in Opposition to Un-noticed Motion.

December 4, 2009: Hearing on Summary Judgment

The Summary Judgment hearing took place today.

The hearing closely followed the three questions provided in the "Notice of Tentative Ruling and Questions" issued yesterday:

• Is the question of originality of the copied work an issue of fact or an issue that can be resolved as a matter of law? Is there a dispute of fact regarding whether the selection and arrangement of data in the copied files is sufficiently original to be copyrightable?
• If the Court considers the expert reports submitted by Plaintiff, is there a dispute of fact regarding the damages allegedly sustained by Plaintiff? Regardless, does the Federal Circuit's holding in this matter, 535 F.3d 1373, 1378 (Fed. Cir. 2008), as well as the testimony of Penny and Jacobsen indicate that Plaintiff suffered damages, even in the absence of a specific monetary figure?
• Specifically where in the record is there a dispute of fact regarding whether the scope of QSI's permission was actually communicated to Plaintiff?

The Court questioned both sides closely for about an hour. (Unfortunately, due to Court rules, we won't be able to post the transcript for about six months) The next step will be a written ruling. We'll post that as soon as we get it.

December 10, 2009: Ruling on Summary Judgment

The Court has ruled on both sides' motions for summary judgement. The ruling is a very positive result. Some highlights, in the order they appear in the decision:

• The JMRI decoder definition files are copyrightable. (Page 5) All of Katzer's contentions that they were "merely duplicates" of NMRA information, "mere spreadsheets of data", etc, were rejected.
• Katzer's misuse of the decoder definition files damaged JMRI, and we can hold him accountable for that. (Page 6) Katzer had argued that since we distributed our work "for free", there was no harm in misappropriating it. The Court said this was not a valid legal argument. That decision helps both JMRI and other open-source projects. (This decisions is the second time that Courts have slapped back Katzer's claims, and in the process made good law for FOSS)
• Katzer cyber-squatted on "decoderpro.com". (Pages 6-8) We still have to show what he intended when he did that, which is a question of fact to be decided at trial, but all the other pieces are in place to show that what he did was illegal. We don't expect much trouble proving his intent at trial, as he'd done this to other people before, and knew that DecoderPro was the name of our software.
• Katzer did infringe JMRI's copyrights on the decoder definition files, in violation of the law. (Page 8) The Court ruled that his is "liable" for this, the civil equivalent of "guilty". All that's left for trial is to show the amount of damages, but it's already decided that they do exist (see above), and that he must pay them.
• JMRI did not infringe Katzer's copyrights on the QSI manuals while creating decoder definitions. The Court found that
  1. we had a license from QSI to create the decoder definitions, despite Katzer's contention that we didn't, except he forgot to tell us (page 9),
  2. we used the material fairly (page 9)
  3. Katzer's counter-suit for $6 million was a "litigation tactic barred by the equitable doctrine of laches", in other words he made the claim up for the purpose of setting a trap.
  This was a decisive rejection of Katzer's arguments.
• Katzer violated the Digital Millenium Copyright Act (DMCA) when he removed the copyrights from the JMRI decoder definitions he misappropriated. (page 10-11) We still have to show intent at trial, as that's a question of fact which Katzer has not yet admitted to, but we have little doubt we'll be able to do that. This part of the decision is also a victory for open-source in general, as it demonstrates that our copyright notices must be respected, not just removed to make it easier to hid misuse of open-source software.

Together, this set of decisions is a complete victory for JMRI at this stage of the proceedings.

There is still a lot more to be done. Katzer may be able to drag out and raise the cost of the preliminaries to trial. We're going to have to raise the money to persist, and find people to help with various things that still need to be done but in the end we're going to win this.

It's been a good day.

December 21, 2009: New Case Schedule

We have a new schedule for the case.

As ordered by the Court, we'll have a settlement conference on January 28, 2010. We hope that we can work something out either before or at that conference. Settlement discussions are confidential, so we can't say much more than that.

In the meantime, we've asked the Court of Appeals for the Federal Circuit in Washington DC to delay the hearing on our copyright appeal. If we can reach a settlement, there's no need for that hearing.

If we can't reach a settlement, we have a trial scheduled to start on June 1st, 2010 in San Francisco. The steps leading up to that are listed in the Court's scheduling order.

January 5, 2010: Conference Rescheduled

The settlement conference has been rescheduled for January 22, 2010. We can't comment much more than that on the ongoing settlement discussions.

January 22, 2010: Settlement Conference

We had a settlement conference today at the Federal District Court of the Northern District of California. The case didn't settle, and we can't provide any details of the discussions, but work toward a settlement continues. It would be in everybody's interest if we can find a way to end this and all get back to creating great software.

February 17, 2010: Settlement Agreement

We have agreed with Matt Katzer to settle the case and end the legal dispute.

The settlement agreement, which is now a legally-binding contract signed by both sides, accomplishes several things:

1. A permanent injunction will be entered by the Court, expressly forbidding Katzer from further misuse of the software that JMRI has created, and forbidding him to register any domain names that should rightly belong to us.

   In the past, Katzer has told people that we've copyrighted manuals that others wrote, or trademarked terms that belong to others. Neither of these are true, and we've shown in Court that Katzer has no evidence for his statements. To prevent there being any uncertainly about this, the agreement explicitly states that we're not talking about anything from the NMRA or other manufacturers.

   This injunction is important. We consider his misuse of JMRI's decoderpro.com domain name and the decoder definition files to have caused significant damage to JMRI, and this injunction makes it clear that the Court will not allow it to happen again.

2. Katzer explicitly releases all JMRI users and developers from any liability for anything related to JMRI, up until 18 months from now. This means that he can't try to extract patent royalties, claim infringement, argue that somebody infringed a copyright, or anything else. He has no right to complain about anything we've done in the past or will do in the near future.

   The goal was to make sure that this dispute really is over, and won't rise from the grave like a zombie that has to be fought over and over again. Katzer has said that he just wants to move on and put legal disputes behind him, and this provision is aimed at making sure that's what happens.

   As a matter of fairness, Jacobsen extended the same release to Katzer.

3. A procedure was put in place for handling any future disputes, after the 18 month period is up. This has some important features:
   1. It's "loser pays", so neither side can bring spurious complaints without risk.
   2. It's based on mediation and arbitration, so it's faster and can include people with more technical and model railroading background.
   3. It forbids going outside the agreed procedure, for example to contact an employer or relative in an attempt to apply pressure.

   If anybody really does do something wrong, this provides a way to deal with it, while making it riskier and more difficult for anybody to try to make spurious claims.

4. Katzer will pay $100,000, spread over the next 18 months.

   Despite generous support from over a hundred people, the costs defending against Katzer over the last six years are significantly more than 100K$. (Things like court reporters for depositions, travel expenses, and expert witnesses have to be paid for, and it adds up very quickly.) Katzer's payment gets us part-way back to where we would have been if all this hadn't started in the first place.

   To be sure, he has had significant costs of his own, and he has to pay them too.

   Although this doesn't entirely cover our costs, we believe this is the best we could do at this point, and there was no certainty that going to trial in June would result in a damage award large enough to offset the large additional costs of a trial.

   Sometimes, the best you can do is the best you can do.

This is not air-tight, in that it doesn't extend to e.g. future patent complaints about future patents, after the next 18 months. We believe that we've still got a very strong position on those, as Katzer stated in Court that JMRI didn't infringe any of his existing patents, because Katzer's ongoing chain of patents actually document the same set of claimed inventions, and because quite a few people have helped us accumulate several file drawers of strong prior art to defeat future patents.

It's very hard to craft an agreement that constrains all possible future behavior, so in the end you have to trust that the people making the agreement are going to live up to the intent of it. As Henry Stimson said, "The only way to make a man trustworthy is to trust him", and that's what we're doing here. We believe that this agreement has the right structure to motivate everybody to just work on their own stuff without getting into fights, and that it's fair. We're going to trust Katzer to approach it on that same basis.

We could not have reached this point without the help of the hundreds of model railroaders who have contributed money, time and knowledge to this effort, the open-source advocates and organizations who have worked on the legal effort, and particularly without the huge efforts by Victoria Hall, David McGowan and the other lawyers who have worked on this over the past six years. We'll have more to say about this later, but the message for right now is that we all owe them a huge debt of gratitude.

February 22, 2010: Injunction Final

The District Court and the Court of Appeals for the Federal Circuit have now entered the final documents in the case. This means that the injunction is now in effect, and the case is over.

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