SpicyIP Tidbit: Open source licenses are copyright enforceable

The terms of an open source license are copyright enforceable, and not merely enforceable under contract law, according to a pioneering decision of a US Court of Appeals for the Federal Circuit (CAFC) last week. The court essentially held that the provisions of an open source license constitute a form of copyright, and are legally enforceable as such. Read this excellent article in InformationWeek on the case here.

Brief facts of the Jacobsen vs Katzer decision (available as a download here) are as follows:

Robert Jacobsen, the appellant, is the copyright-holder of computer code available for free public download from the Internet, under the terms of an Artistic, or open source, Licence. The appellees Matthew Katzer and Kamind Associates develop commercial software for the model train industry. Jacobsen accused Katzer/Kamind of copying and using code from his website without due credit or indicating how the code had been altered. In other words, Katzer/Kamind had violated terms of the open source Artistic License. Jacobsen thus brought an action for copyright infringement and moved for a preliminary injunction.

In 2007, the District Court held that the Artistic License created an “intentionally broad” nonexclusive license that was unlimited in scope and that there was no liability for copyright infringement. At best, it said, Jacobsen had could press only for breach of contract. The case came up in appeal before the CAFC, which vacated the decision of the District Court, and remanded the case for reviewing the motion for injunction.

It all came down to how the License was interpreted, which would make a difference between applying contract law and copyright law. The central question was whether the terms of the License were conditions of, or merely covenants to, the copyright license. The court observed, “if the terms of the Artistic License allegedly violated are both covenants and conditions, they may serve to limit the scope of the license and are governed by copyright law. If they are merely covenants, by contrast, they are governed by contract law.”

The CAFC said the District Court’s interpretation of the License did not consider the conditions under which a downloader could modify or distribute the copyrighted work. The License explicitly laid down restrictions, through the insertion of a “provided that” clause, which introduced certain conditions for use of the software.

Open source licenses have had little legal clarity, and this decision is important because of its pointed and succinct discussion in the matter. The court says:

“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.” [emphasis added]

I would highly recommend reading the CAFC judgement, not least for its lucidity in explaining the Artistic License and the paths to protect it.

The case has obviously not gone unnoticed by the open source community. Managing IP has run a story here on the responses to the ruling. Concerns still remain about enforcing compliance with open source licenses and the calculation of damages.

Open source software and related legalese in India is still in grey territory, and you may recall SpicyIP's posts on the subject here. Nevertheless, it will be interesting to note how the Indian open source community reacts to this decision.