Ruling Is a Victory for Supporters of Free Software

A U.S. appellate court recently held in Jacobsen v. Katzer that copyright holders who dedicate their work for free public use are entitled to enforce an open-source copyright license to restrict the work’s future distribution and modification. The Court ruled that open-source licenses are enforceable under copyright law, not merely under contract law, thereby providing open-source software creators with more extensive rights to enforce their licenses, including through injunctive relief.

Robert Jacobsen held a copyright to model train computer programming code and made the code available for free pubic download under an open-source license. Katzer incorporated part of the code in his own software without complying with the terms of the license that required users to credit the software creators and describe changes made to the original code. Jacobsen brought an action for copyright infringement and moved for a preliminary injunction.

Under U.S. case law, a copyright owner who grants a nonexclusive license to use copyrighted work waives his right to claim copyright infringement and can only sue for breach of contract if the licensee breaches the license.[1] However, if a license is limited in scope and the licensee acts outside such scope, the licensor can bring an action for copyright infringement.[2] While the district court in Jacobsen found that the license terms were mere covenants, the appellate court held that they constituted conditions to the scope of the license, thereby rendering any breach subject to remedies available under copyright law as well as contract law.

The Jacobsen decision is significant for the open-source software community. Open-source software licensing facilitates creative collaboration among computer programmers who view, modify and improve software, thereby stimulating innovation. By requiring users to restate the licence and attribution information, as well as note changes to the original software, software creators obtain the only compensation requested for making the software available – recognition for their efforts. This seems a small price to pay for such a significant contribution to society. This landmark decision strengthens the enforceability of open-source licenses by making available copyright law remedies of injunctive relief, statutory damages and attorneys’ fees that are more robust than the contractual remedy of monetary damages, and without which software programmers would likely be less inclined to contribute to the collaborative open-source community.

The Jacobsen decision impacts the rights of open-source licensors generally, not merely software licensors. The decision is expressed broadly, and may therefore apply to other open-source licenses, such as those provided by Creative Commons. Artists, authors, educators and scientists may now be able to seek injunctive relief for violation of conditions in their open-source licenses, and thereby be encouraged to make their works freely available to the public.

What is the impact of this decision in Canada? Canadian courts, while not bound by U.S. case law, often consider the reasoning of such decisions, particularly where relevant Canada authorities are sparse. If the reasoning in Jacobsen is applicable to Canadian copyright law, the decision would be a welcome development for the Canadian open-source movement.

1 Sun Microsystems, Inc. v. Microsoft Corp., 188 F.3d 1115, 1121 (9th Cir. 1999); Graham v. James, 144 F.3d 229, 236 (2d Cir. 1998).
2 S.O.S., Inc. v. Payday, Inc., 886 F.2d 1081, 1087 (9th Cir. 1989).