Canada: Court Issues Key Rulings In Copyright Infringement Case Over Open Source Software

In the latest instalment in the Jacobsen v. Katzer saga, the District Court for the Northern District of California found that open source files for a model train software application were eligible for copyright protection. Even though the copyright owner provided the code free of charge, the court allowed the copyright owner's damages claim to proceed because there was evidence attributing monetary value to the work performed by the software developers.

In this case, the plaintiff Jacobsen was the lead member of the Java Model Railroad Interface open source project (JMRI). That organization had developed a software application called Decoder Pro for model trains enthusiasts. Jacobsen owns the copyright over certain Decoder Pro files, and made the files available for the public to download free of charge, under a so-called "Artistic License" (a form of open source license). The license permits users to copy, modify or distribute the licensed content provided that they restate the attribution information found in the software, repeat all copyright notices, and document any modifications made to the files.

Jacobsen sued the defendants for copyright infringement, alleging that that they had downloaded his files, included portions of the files in their competing software program, and failed to comply with the terms of the artistic license.

The US Federal Circuit Court of Appeals ruled that failing to comply with the terms and conditions of an artistic license could attract liability for copyright infringement. The appeals court remanded the case back to the district court to consider whether there was infringement on the facts of the case.

The district court has since denied the defendants' motion for partial summary judgment and granted the plaintiff's summary judgment motion in part. In its decision, the court made important rulings on three main issues:

  1. Whether Jacobsen's work enjoys copyright protection. In their motion for partial summary judgment, the defendants argued that Jacobsen's work was not sufficiently original to be copyrightable. However, the district court held that copyright was capable of subsisting in the text files. It observed that there was "undisputed evidence in the record indicating that Plaintiff and the other members of the JMRI group invested a sufficient amount of creativity in the selection, ordering and arrangement of the data collected in the subject copied files" and that "these selections and choices about arrangement reflect the minimal amount of creativity required to satisfy the low threshold for demonstrating originality." It therefore denied the defendants' summary judgment on that issue. Finding that Jacobsen had a valid copyright and that the defendants had copied his files, the court granted Jacobsen summary judgment on his copyright infringement claim (on the liability issue).
  2. Whether copyright damages are available. The defendants contended that Jacobsen's copyright claim should be dismissed because he had not suffered damages, as he had distributed the works via the Internet for free. In denying the defendants' motion, the court stated that copyright owners are entitled to recover compensatory damages for infringement and there was "evidence in the record attributing a monetary value for the actual work performed by the contributors to the JMRI project."
  3. Whether the defendants' removal of attribution information constitutes a violation of the Digital Millennium Copyright Act (DMCA). Jacobsen alleged that the defendants had violated a section of the DMCA, which protects the integrity of copyright management information. Specifically, he contended that the "author's name, a title, a reference to the license and where to find the license, a copyright notice, and the copyright owner" constituted "copyright management information" within the meaning of the DMCA. He argued that, by removing the attribution information from his files and making copies of them, the defendants violated the DMCA. The court found that Jacobsen had satisfied all of the elements of DMCA claim, except there remained a question about the defendants' intent and knowledge. As that raised a triable issue, the court only granted Jacobsen's motion for summary judgment in part on the DMCA claim.

McCarthy Tétrault Notes:

This decision confirms the enforceability and effectiveness of open source licensing in the form of artistic licenses.

The case is also noteworthy in that a member of the open source community sought to leverage the DMCA to protect his licensing model and moral right of paternity (right to be identified as author) inherent in open source licensing. While there are certain circles within the open source community that oppose the DMCA, this case suggests that there are potential synergies between open source license enforcement and the availability of rights management information protection in the DMCA.

It is interesting to ponder how the rights management part of the case would have been decided in Canada. Since Canada has not enacted legislation to implement the WIPO Copyright Treaty (WCT), as the US and many of our other trading partners have, Canada has no laws that explicitly protect rights management information. Jacobsen would have had to argue that the deletion of the attribution information infringed his moral right of paternity under the Copyright Act.

That might have gotten him some relief, but it would have been limited to information that identified him as author, not to all of the other information recognized by the WCT as rights management information. Under Article 12 of the WCT, protection is mandated for "information which identifies the work, the author of the work, the owner of any right in the work, or information about the terms and conditions of use of the work, and any numbers or codes that represent such information, when any of these items of information is attached to a copy of a work or appears in connection with the communication of a work to the public."

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

*** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.