In a unusual copyright decision testing remedies for breach of an open source copyright license, the U.S. Court of Appeals for the Federal Circuit recently determined in that software developers who release their code under an open source license do not waive their right to sue for copyright infringement. The Court confirmed that "copyright holders who engage in open source licensing have the right to control the modification and distribution of copyrighted material." Jacobsen v. Katzer, Case No. 08-1001 (Fed. Cir., Aug. 13, 2008) (Hochberg, Dist. J., sitting by designation).
In Jacobsen, the Federal Circuit addressed the district court's rejection of the copyright owner's motion for preliminary injunction against Kamind Associates and its CEO Matthew Katzer, which was based upon their alleged infringement of Jacobsen's computer programming code. Jacobsen developed model train software and made it available online for free, subject to the conditions in a standard open source software "Creative Common" license. One of the conditions required proper attribution of Jacobsen as the author of the licensed software.
According to Jacobsen, Katzer and Kamind, a company that develops model railroad software, incorporated portions of his software code into one of the company's products without complying with certain terms of the open source license. Jacobsen claimed that Katzer/Kamind did not comply with license provisions requiring the inclusion of copyright notices, references to a file that sets forth the license terms and a description of how the user had changed the software. Jacobsen moved for a preliminary injunction to enjoin the defendants from willfully infringing his software. In denying the motion, the district court held that because the license allowed potential licensees to copy, distribute and create derivative works from Jacobsen's software, it was an unlimited non-exclusive license. The court noted that a non-exclusive license effectively constitutes a waiver of the right to sue for infringement, so long as the licensee's use of the work is within the scope of the license. Additionally, the court found that the license provision requiring attribution was not a restriction on the scope of the license, but merely a contractual covenant. Accordingly, the district court held that Katzer/Kamind did not infringe Jacobsen's copyright by copying and redistributing the software source code files. If anything, Katzer/Kamind merely breached the license by not including the required attributions. Because breach of contract creates no presumption of irreparable harm, the court rejected Jacobsen's motion for a preliminary injunction.
On appeal, the Federal Circuit considered the "heart of the argument," which was "whether the terms of the Artistic License are conditions of, or merely covenants to, the copyright license." Jacobsen argued that the terms defined the scope of the license and that any use outside of those restrictions constituted copyright infringement. Katzer/Kamind argued that the terms were merely covenants because code made available for free could not provide the copyright holder economic rights.
Ultimately, the Federal Circuit found that the limitations in Jacobsen's license were conditions on the scope of the license and Katzer/Kamind could be found liable for copyright infringement as well as breach of contract for the violations. In finding that the license terms were conditions, the Federal Circuit rejected Katzer's/Kamind's economic argument, stating "[t]he choice to exact consideration in the form of compliance with the open source requirements of disclosure and explanation of changes, rather than as a dollar-denominated fee, is entitled to no less legal recognition." Additionally, the Federal Circuit found that the specific language in the license created conditions on the rights to copy, modify and distribute because the license was conditioned on compliance. Therefore, modification and distribution of the copyrighted materials without providing copyright notices and a tracking of modifications would be outside of the scope of the license and would constitute infringement. Because the district court did not make factual determinations on Jacobsen's likelihood of success on the merits in proving that Katzer/Kamind violated the conditions of the license, the Federal Circuit remanded the case for further proceedings consistent with its opinion.
Practice Note: This decision will likely reduce the uncertainty concerning the enforceability of copyright claims upon the violation of public licenses, such as the Creative Commons license.
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.
