Jacobsen v. Katzer

Court of Appeals for the Federal Circuit
535 F.3d 1373 (2008)

ELI5:

Rule of Law:

The terms and conditions of an open source copyright license are enforceable conditions that limit the scope of the license, and a violation of these conditions constitutes copyright infringement, not merely a breach of contract.

Facts:

Robert Jacobsen manages the Java Model Railroad Interface (JMRI) project, which created a software application called DecoderPro for model railroad enthusiasts.
Jacobsen made the DecoderPro software files publicly available for download free of charge under the terms of the Artistic License, an open source license.
The Artistic License permits users to copy, modify, and distribute the software, provided they include attribution to the original authors, copyright notices, references to the original source, and descriptions of any changes made to the files.
Matthew Katzer and Kamind Associates, Inc. (Katzer/Kamind) develop a competing commercial software product called Decoder Commander.
Katzer/Kamind downloaded and incorporated portions of Jacobsen's DecoderPro files into their Decoder Commander software.
Katzer/Kamind then distributed their software without complying with the Artistic License's terms, failing to provide the required attribution, copyright notices, source references, or descriptions of modifications.

Procedural Posture:

Jacobsen sued Katzer/Kamind in the U.S. District Court for the Northern District of California for copyright infringement.
Jacobsen filed a motion for a preliminary injunction to prevent Katzer/Kamind from distributing the allegedly infringing software.
The District Court denied the motion for a preliminary injunction, holding that the license violations likely constituted a breach of contract rather than copyright infringement.
The District Court concluded that because the claim was for breach of contract, Jacobsen was not entitled to a presumption of irreparable harm necessary for an injunction.
Jacobsen (Appellant) appealed the denial of the preliminary injunction to the U.S. Court of Appeals for the Federal Circuit, with Katzer/Kamind as the Appellee.

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Issue:

Does the violation of the conditions of an open source copyright license constitute copyright infringement when the license does not require a monetary payment?

Opinions:

Majority - Hochberg, District Judge

Yes, the violation of the conditions of an open source copyright license constitutes copyright infringement. The terms of the Artistic License are enforceable conditions that limit the scope of the license, not merely contractual covenants. The court reasoned that the license uses traditional conditional language (e.g., 'provided that'), and the conditions serve significant economic purposes for the copyright holder, even without a monetary fee. These purposes include driving traffic to the original project, attracting new collaborators, and allowing the creator to benefit from downstream modifications. By acting outside the scope defined by these conditions, the licensee forfeits the protection of the license and becomes a copyright infringer.

Analysis:

This case was a landmark decision for the open source software movement, as it affirmed that open source licenses are enforceable under copyright law, not just contract law. This provides copyright holders with more powerful remedies, such as injunctions and statutory damages, against those who violate license terms. The decision establishes that non-monetary conditions, like attribution and transparency, can be essential elements that define the scope of a copyright license, recognizing the unique economic and collaborative models of open source development.

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