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JMRI Defense: Recent Events

This page describes recent events in the main case, in most-recent-at-the-top order. Other information and arrangements are available from the left-side menu. The entire story, in historical order (read from the beginning through to now) is on a separate page.

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.

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.

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.

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.

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.

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 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.

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

Katzer's Motion for Summary Judgment

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.

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.

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.

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.

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 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.

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.

December 19, 2008: Hearing in Federal District Court

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