Jacobsen v. Katzer

Citation: Jacobsen v. Katzer, 535 F.3d 1373 (Fed. Cir. 2008).

Factual Background
Jacobsen (Plaintiff-Appellant) is the copyright owner of certain computer program (DecoderPro files), which is available for download and use. The code is made available to the public without cost pursuant to the "Artistic License" -- an open source or public license. Jacobsen’s open source group “JMRI” (Java Model Railroad Interface) created the computer program in question. The program is an application called DecoderPro, which allows model railroad enthusiasts to use their computers to program the decoder chips that control model trains. The downloadable files contain copyright notices and provide a file that clearly sets forth the terms of the Artistic License for use of those files.

Katzer (Defendant-Appellee) is a commercial software developer for the model train industry and hobbyists. The plaintiff alleges that the defendant used portions of the downloaded files as part of defendant’s software program that did not comply with terms of the Artistic License. The software did not include the authors’ names, copyright notices, references to the COPYING file that includes the text of the license, identification of plaintiff’s site as the source, and description of the changes made to the copied files.

Plaintiff Jacobsen sought a preliminary injunction against defendant Katzer’s use of the DecoderPro materials.

Trial Court Proceedings
The court found that defendant’s actions constituted a breach of the nonexclusive license. The court found that plaintiff had not established a claim for copyright infringement.

Federal Circuit Proceedings
The appellate court addressed whether the license created conditions or merely covenants that limited the use of the copyrighted material to determine whether the defendants complied with the license. The court noted, based on 9th Circuit precedent, that an open source copyright license is governed by copyright law if the terms include both covenants and conditions that limit the scope of the copyright license. The lower court had failed to make a distinction between covenants and conditions, but treated the license limitations as contractual covenants.

Appellant argued that the terms of the Artistic License define the scope of the license, which restrict the copyright rights that could be exercised by the license. Appellee (Katzer) argued that the terms of the license were merely covenants that provide contractual terms for use of the materials, such that a violation was neither compensable (since the license provide use at no cost) or subject to injunctive relief.

Analysis of license terms
The Federal Circuit concluded that the Artistic License provided use of copyright materials with the right to make modifications and to distribute the software conditioned on the restrictions in the license. The court stated that “it is outside the scope of the Artistic License to modify and distribute the copyrighted materials without copyright notices and a tracking of modifications from the original computer files.” The court noted the importance of conditions to the copyright holder’s ability to retain the benefit from work performed by downstream users.

The court relied on reasoning by other circuit court of appeals regarding copyright holder rights. “Copyright holders who engage in open source licensing have the right to control the modification and distribution of copyrighted material.” The court found that the license instructed the downloader to make other arrangement with the copyright holder if he did not assent to the license conditions.

The court determined that the appellant did not comply with the copyright restrictions nor did he make other arrangements with the appellant. The court pointed out that Artistic Licenses provide economic benefits, such as driving traffic to the open source incubation page or providing downstream users with notice of the open source project that eventually lead to creative collaboration. The court acknowledged that conditions may exist in an open source license to protect these benefits, a right conferred on the copyright holder. The court concluded that appellee, Jacobsen, did not comply with the conditions set forth by the Artistic License and therefore infringed the appellant’s copyright in the programs.