Open source licence enforced under copyright law

The IPKat has a bit of a thing for US copyright law today. He has learnt from that the Federal Circuit Court of Appeals has held in Jacobsen v Katzer that an open source copyright licence can be enforced under copyright law, rather than merely under contract law. The claimant made software available for decoders for model railways from his website. The defendant used and modified the software but failed to comply with the licence in the following ways:

His software did not include

(1) the authors’ names,

(2) the claimant’s copyright notices,

(3) references to the COPYING file,

(4) an identification of the claimant as the original source of the definition files, and

(5) a description of how the files or computer code had been changed from the original source code.

The District Court held that this was a breach of contract, which did not give rise to a right to an injunction.

The CAFC recognised:

The lack of money changing hands in open source licensing should not be presumed to mean that there is no economic consideration, however. There are substantial benefits, including economic benefits, to the creation and distribution of copyrighted works under public licenses that range far beyond traditional license royalties.

The terms of the licence were classed as ‘conditions’ on the scope of the licence rather than ‘covenants’, which meant they were governed by copyright law, and enforceable as such. On its literal wording, the licence referred to ‘conditions’. Moreover, the fact that money didn’t change hands in return for being allowed to use the copyright work didn’t mean that the restrictions weren’t copyright restrictions. According to the court:

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 IPKat welcomes this case, as it should make authors more likely to make their work available to the public if they know that it will be protected copyright, and not just contract. He notes that the same distinction may be relevant in the UK, where there are also differences in the remedies available between the two causes of action.

Open source licence enforced under copyright law Open source licence enforced under copyright law Reviewed by Unknown on Thursday, August 14, 2008 Rating: 5


  1. Has the Kat noticed the Modern Law Review article on a closely related subject, "Dedicating Copyright to the Public Domain", (2008) 71(4) MLR 587-610, by Phill Johnson? In the words of the abstract: "This article explores whether authors can dedicate their copyright to the public domain. Such dedications are becoming increasingly relevant as authors now see the expansion of the public
    domain as value in itself. This is facilitated by organisations providing pro forma documents for
    dedicating works to the public domain. However, there has been no real consideration of what,
    if any, legal effect a dedication to the public might have.This article suggests that such dedications are no more than copyright licences which, in English and US law at least, can be revoked at will. This means that users of such works must rely on estoppel alone to enforce any dedication to the public domain."

  2. Hector -- never tiring in his pursuit of good articles published elsewhere, the IPKat did indeed notice Phillip Johnson's article, giving it an honourable mention here:

  3. Excellent. It was obviously too early in the morning for this old Scottie!

  4. I think this is how open source licences are supposed to work. The licence is a contract, offered to the world at large, which allows copying in return for obeying certain conditions. A person can accept or reject this offer. If they accept, they are bound by the conditions under contract law. If they reject it, they are not bound by the conditions, but they do not get the right to copy the code (beyond the usual fair dealing etc).

    I presume that if someone copies the code and doesn't stick to the conditions, they can choose whether to be sued for breach of contract (not sticking to the conditions they've agreed to) or copyright infringement.

  5. An excellent and well-publicised ruling.

    - Hector: I would distinguish open source/free software from public domain. The two are conceptually very different, and most open source/free software developers would not consider themselves to be releasing software into the public domain. Whilst the software is made publically available, it is subject to often strict licence terms.

    - Anonymous. Unfortunately it's not that simple and the debate over whether free software/open source licences are bare licences or contracts is ongoing.

    A fascinating area. Here's to more open source law reporting on IPKat!


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