Open Source License Conditions Enforceable Through Copyright Law

Jacobson v. Katzer (Fed. Cir. 2008)

In an interesting decision, the CAFC held that open source license conditions are enforceable under the copyright laws. Jacobson’s open source license at issue here allowed anyone to use his software so long as his conditions are met (such as making any modified code freely available).

Copyright vs Contract: The district court held that violation of the open source conditions are remedied through a contract claim rather than copyright. The CAFC sided with the copyright holder – holding that “Copyright holders who engage in open source licensing have the right to control the modification and distribution of copyrighted material.”

Copyright holders who engage in open source licensing have the right to control the modification and distribution of copyrighted material. As the Second Circuit explained in Gilliam v. ABC, 538 F.2d 14, 21 (2d Cir. 1976), the “unauthorized editing of the underlying work, if proven, would constitute an infringement of the copyright in that work similar to any other use of a work that exceeded the license granted by the proprietor of the copyright.” Copyright licenses are designed to support the right to exclude; money damages alone do not support or enforce that right. The 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. Indeed, because a calculation of damages is inherently speculative, these types of license restrictions might well be rendered meaningless absent the ability to enforce through injunctive relief.

. . . .

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.

This decision is based on the court’s interpretation of 9th Circuit law. However, its impact on patent law may be a reminder that the court will allow patent infringement actions even when the infringement is based on violation of an intricate or exotic licensing contract.

28 thoughts on “Open Source License Conditions Enforceable Through Copyright Law

  1. 28

    With regards to the interplay with the recent LG decison, it should be pointed out that fair use and first sale in the context of copyright may serve to more protective of down stream users than in the context of patent law (which does not recognize fair use). Contractual restrictions on fair use should be pre-empted (in fact that would be a great next case for the Supreme Court that has not ruled on IP preemption since Bonito Boats in 1989), and the first sale doctrine should protect users of software that has been integrated into a product (like the patented technologies were integrated in the LG case). In Jacobsen, it strikes me that the transaction was a license rather than a sale and so the reasoning of Quanta does not apply. But one point is clear from the Quanta decision: the battle line will be between license and sale, especially in the open source context.

  2. 27

    “However, since this is a copyright case, it’s only precedent the CAFC itself, not on any district court. Right?”

    Correct as far as it goes. The fact that the opinion is precedential, however, is significant for several reasons. First, the opinion will be published in the Federal Reporter 3d Series. Second, other circuits will probably give considerably greater persuasive weight to the opinion, especially in light of circuit rules tending to restrict citation to unpublished opinions.

  3. 26

    The log lists it as precedential, which is OK. However, since this is a copyright case, it’s only precedent the CAFC itself, not on any district court. Right?

  4. 24

    I heard someone on the radio yesterday crowing about this “landmark decision.” But, am I wrong in understanding that this is precedential only for, well, nobody?

  5. 23

    Further attempt to elaborate on the jurisdictional question–

    I’m not sure, but my guess is that if a plaintiff had voluntarily dismissed his patent claim before trial, or amended his complaint to contain only the copyright and other claims, then it would have been impossible to take his appeal to the Federal Circuit.

    You might ask why do that? It could be that the (hypothetical) plaintiff felt that he would likely lose on the patent-related claim, and didn’t want the claim preclusive effect in the future. Or, as most litigators and appellate practitioners would tell you, it’s usually better to go forward with your strongest argument(s) and focus as best you can.

  6. 22

    Do you want to hear three judges and two attorneys confused about copyright law? Take a listen to the audio. I did, and I am just shaking my head thinking that copyright law is not their bag.

    After clicking the following link, type “08-1001” in the Case Number block:

    link to oralarguments.cafc.uscourts.gov

  7. 21

    I think that these copyleft licenses are great and all, but this decision ought to be rubbing people the wrong way. Essentially, the court found that breach of a contract clause (attribution) can give rise to “copyright infringement!” The court bent over backwards to make attribute a “condition” on the license grant, but I was left entirely unconvinced.

    The grant was purposefully broad. It does not seem that the person breached the granting clause. They breached other provisions.

    This is bad because most grants have some “catch-all” language that states: Licensor grants to licensee a non-exclusive right to do x under Licensor’s patents [copyrights], provided licensee complies with the terms of this agreement. Does that mean ANY violation of the contract gives rise to an infringement? E.g. if you make ONE late payment and you’re now an infringer? Yikes!

    That said, presumably a licensor can terminate the agreement for breach and then on-going activity would be infringement. But that is simply not what this court has done.

    All around, really, not a good day for the consumers.

  8. 20

    “For continued inquiry: if the Fed. Cir. self-imposes a requirement that regional circuit law be applied to a copyright claim, then why should the parties be disqualified from having that regional circuit law applied by the regional circuit that rendered it?”

    Thomason–it depends on the statutes that create jurisdiction. Once the plaintiff files the complaint, the choice is already made.

  9. 19

    John McCain, the copyright maverick:

    link to huffingtonpost.com

    “Singer, songwriter, liberal activist and now John McCain scourge Jackson Browne filed a lawsuit today against the presumptive GOP nominee and the Republican Party for failing to obtain a license to use one of his songs in a television commercial… This is the second time in a week a celebrity has chastised the McCain camp for allegedly illegally using his or her material. Mike Myers, earlier this week, insisted that the Arizona Republican take down a web ad that … used a “we’re not worthy” clip from his movie Wayne’s World.”

  10. 18

    “I’m curious. If a programmer can use copyright-contract to restrain the future distribution of modified versions of his code, why can’t a writer place such a declaration on the first page of their book and sue using the rationales espoused in this article if someone creates a spin-off work?”

    The author of a book does not need to include such a declaration in order to, for example, prevent the creation of derivative works. Even if you purchase a book you still do not have unfettered rights with respect to that book. In particular, you do not have the right to create a derivative work based on that book.

  11. 17

    Pose a professorial query – get professorial rejoinders. For continued inquiry: if the Fed. Cir. self-imposes a requirement that regional circuit law be applied to a copyright claim, then why should the parties be disqualified from having that regional circuit law applied by the regional circuit that rendered it? The basis for the preliminary injunction motion, and so appellate jurisdiction, was the copyright claim, not the patent claim.
    Even so, Christianson v. Colt held that CAFC’s 1338 jurisdiction extends “only to those cases” in which “either …federal patent law creates the cause of action or that the plaintiff’s right to relief necessarily depends on resolution of a substantial question of federal patent law.” Not “either” of those applies to the gravamen of Jacobsen’s appeal or to the district court proceeding that preceded it. Also, where a complaint is engineered to manipulate the direction of the appeal, then it is directed to the regional circuit.
    Maybe it just goes back to the en banc decision in Atari v. JS&A, 747 F.2d 1422.

  12. 16

    “I’m curious. If a programmer can use copyright-contract to restrain the future distribution of modified versions of his code, why can’t a writer place such a declaration on the first page of their book and sue using the rationales espoused in this article if someone creates a spin-off work?”

    When you obtain a copy of licensed software, anything useful that you want to do with the software involves possibly infringing activity, so you have to agree to the license in order before you run or modify the software to avoid infringement.

    By contrast, just looking at or reading a copyrighted book (the hard copy type) to yourself is not infringement. In fact, even reading the book in the store without buying it is not copyright infringement. If a book has a license on page 1, You can simply ignore the license and continue to read page 2, 3, etc. The author won’t be able to point to any copyright infringing activity.

    In order to make a book license work, the license would have to bind you at the time of purchasing the book. I don’t think you could design a license such that reading the book implied consent to the license.

  13. 15

    Edward: The important issue in this case concerns “open source”, not that the subject matter was software. Try to reword your hypothetical book question to involve “open source” if you want to see how this decision applies to books.

  14. 14

    I’m curious. If a programmer can use copyright-contract to restrain the future distribution of modified versions of his code, why can’t a writer place such a declaration on the first page of their book and sue using the rationales espoused in this article if someone creates a spin-off work??? I thought the notion of derivative rights being protected was part of copyright protection. If modifications of the copyrighted program are substantial, at some point it will become a new entity, itself entitled to copyright.

    What are the ‘limitations’ of a copyrighted work that are being infringed?

    I’m a patent agent, not a lawyer so any comments would be welcome.

  15. 13

    “It will be interesting to see how this approach stacks up against the exhaustion doctrine of LG Electronics in terms of whether copyrights or patents end up being the stronger IP right to use for reaching downstream to control future behavior.”

    Brad,

    As a patent attorney (who now has greater appreciation for the complexity that copyright law is), I’ve learned that the “bundle of rights” in copyright is very different from the “bundle” you get in patents. Copyright provides you more layers of protection by covering use, derivative works (modifications or uses of the original work to create new works), performance rights, recording rights, etc. This means that the “exhaustion of rights” doctrine has to work differently in copyright (vs. patents), or the copyright right owner will be deprived of the benefits of this statutorily recognized “bundle of rights.” For example, if you don’t allow the copyright owner to control how the licensee uses the work to stay within the license (some licenses even prohibit modifications of the licensed work), you’ll frustrate the ability to exercise this “bundle of rights.”

  16. 11

    The leading Supreme Court case on the jurisdictional issue is Holmes Group, Inc. v. Vornado Air Circulation Systems, Inc., 535 U.S. 826 (2002). The link here:
    link to supremecourtus.gov goes to the Supreme Court online version of Bound Volume No. 535, just go to page 826 to read the opinion.

    I think the Federal Circuit has jurisdiction here, although I had the same questions as Thomason. But it seems the dispositive issue is whether the original complaint contained a count asserting a claim for relief under the patent laws, which DID occur here. See pages 4-5 of the Federal Circuit slip opinion: link to cafc.uscourts.gov

  17. 9

    What thinks ye professors of the jurisdictional ruling in this case? It’s a pure copyright question, with no patent issues part of the appeal. There had to be some question of whether the denial of the injunction should be taken up to the 9th Circuit or to the CAFC.
    It would seem that the CAFC could have declined this case, and required it go to the 9th. But then, maybe the CAFC wanted something with more zest and currency than hearing more post-KSR and conflicts-between-CAFC-panels arguments.

  18. 7

    JAOI,

    “In the meantime, please re-thing about the meaning of the Framers’ language in the Patent Clause and the question below.”

    I can’t. We’ve been over this many times. I answered your question and provided my legal reasoning yesterday.

    Have a safe and enjoyable roadtrip with your son.

  19. 6

    Hi Jim,

    Sorry, I can’t look into it today — I already have a late start for my mini-road trip with my son, but I’ll be back Monday.

    In the meantime, please re-thing about the meaning of the Framers’ language in the Patent Clause and the question below.

    “… by securing for limited Times … Inventors the exclusive Right to their … Discoveries.”

    Do you agree that the Framers would not have objected to the Court stopping the infringer from infringing?, if that is what the patent owner wanted after his patent in suit is upheld and found infringed?, (other than under the exceptions found in the Constitution itself).

    PS: …especially the plain & intended meaning of “securing” and “exclusive” and especially why the Framers carefully chose not to use the well-known word “injunction” in the Patent Clause.

  20. 5

    Leopold Bloom,

    “JAOI(tm), surely you’ve got to love this language”

    Oh gosh darn!

    “License”, “right to exclude”, “monetary damages”, and the dreaded “i” word all in the same paragraph.

    Talk about a timely opinion! Yikes! ;-)

    If I may be so bold as to speculate, I believe JAOI(tm) might disagree with the unamious opinion of the Federal Circuit panel.

  21. 3

    JAOI(tm), surely you’ve got to love this language:

    “Copyright licenses are designed to support the right to exclude; money damages alone do not support or enforce that right. … Indeed, because a calculation of damages is inherently speculative, these types of license restrictions might well be rendered meaningless absent the ability to enforce through injunctive relief.”

    Of course, this has to be tempered with the realization that huge swaths of copyrighted material are managed through statutory compulsory licensing schemes.

  22. 2

    It will be interesting to see how this approach stacks up against the exhaustion doctrine of LG Electronics in terms of whether copyrights or patents end up being the stronger IP right to use for reaching downstream to control future behavior.

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