Intellectual Property Law

Open Source Licenses and Copyright Infringement Claims

By Martha L. Arias

Copyright owners who dedicate their works to free public use can control the future distribution and modification of those works and claim copyright infringement according to a recent decision by a US court of appeals.  This decision becomes extremely important for the Internet society where software incubators sites and other copyright holders offer works that can be freely used and, before this decision, were not considered the object of copyright infringement claims. 

Open source licenses, commonly known as public licenses, are used by copyright holders who wish to dedicate their works to the public.  Artists, authors, scientists, educators, software developers, among others, offer their works to the public under a public license that allows free use of the work and, in some cases, establish certain conditions.  Some open source licenses keep several rights for the copyright holder and set use conditions such as (1) the express mention of the copyright holder as the creator of the work; and (2) a declaration of the scope of the license.  It is estimated that over 100 million works are currently licensed under open source licenses.  The software industry has commonly put free software available on the Internet through the use of these licenses.  For instance, open source software projects allow computer programmers to view software codes, make changes, improvements, and freely use it. This helps develop new products and, through the license conditions, assures that downstream users know the part of the computer code created by the copyright holder and those added or altered by subsequent software developers.  The legal question is: can the user of a public or open source license become a copyright infringer?

In the case of Jacobsen v. Katzer, the United States Court of Appeals for the Federal Circuit decided on August 13, 2008, held that copyright holders having open source licenses may sue for copyright infringement under the terms of the artistic license.  Jacobsen, the plaintiff, manages an open source software group -JMRI- that develops software through multiparty efforts and makes them freely accessible on their website called SourceForge.  They developed a computer programming application called DecoderPro, a program that allows controlling model trains.  This software, as all software in the plaintiff's site included a copyright notices that directed user to a "copying file" in which the Artistic license terms were set forth.  Katzer, the respondent, is a software programmer that developed a software product called Decoder Commander.  Jacobsen alleged that Katzer downloaded and used some part of DecoderPro in its Decoder Commander software and did not comply with the terms set by Jacobsen's Artistic license.   He concretely alleged that the Decoder Commander software did not include "(1) the authors' names, (2) JMRI's copyright notices, (3) references to the COPYING file, (4) an identification of SourceForge or JMRI 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."  Additionally, plaintiff claimed that the Decoder Commander software changed various computer file names of DecoderPro and did not make reference to JMRI as the creator or source for the purchase of the standard version software.  Each of these requirements was set in JMRI's Artistic license.    

The US District court held that Jacobsen had no claim for copyright infringement under the public license but a contract claim.  The court of appeals disagreed.  It stated that since Katzer admitted copying and using DecoderPro software, Jacobsen had a copyright infringement claim if Katzer fails to follow the Artistic license terms.  The court first considered whether the terms of the Artistic license are conditions of, or covenants to the copyright license, or both.  If they are both conditions of and covenants to the copyright license, they serve to limit the scope of the license and therefore are actionable under copyright laws.  The court of appeals, after carefully reading and analyzing the language of JMRI's Artistic license determined that its terms were conditions of and covenants to the copyright license.   Then, the court held that Katzer did not comply with the express terms of the Artistic agreement and consequently Katzer infringed upon JMRI's copyrights.       

This case is a precedent decision for open source licenses and copyright infringement claims.  Open source or public licenses were somehow perceived as public domain works but limits to this perception were set by the US Court of Appeals for the Federal Circuit.  The free accessibility and permissive use, especially in the Internet setting, makes any user a potential infringer if it does not follow the specific terms in the Artistic license.  Additionally, copyright holders rest assured that their rights are still protected under copyright laws.  Good decision for the future of copyright on the Internet.   

Full post as published by IBLS Internet Law Blog on August 18, 2008 (boomark / email).