Licensor of Open-Source License Agreement Can Enfroce Copyright in Licensed Property

Jacobsen v. Katzer, [2008-1001] (August 13, 2008) [HOCHBERG, Michel, Prost] The Federal Circuit reversed the denial of a preliminary injunction against copyright infringement, holding that an open source license agreement is enforceable.
DISCUSSION: Katzer downloaded Jacobsen’s copyrighted files which were available pursuant to an open source license, and used these files in violation of the open-source license agreement. The district court held that denfendant’s may have breached the contract, but they did not infringe plaintiff’s copyright.
The Federal Circuit observed that open source licenses, are used by artists, authors, educators, software developers, and scientists who wish to create collaborative projects and to dedicate certain works to the public. The Federal Circuit said that open source licensing has become a widely used method of creative collaboration that serves to advance the arts and sciences in a manner and at a pace that few could have imagined just a few decades ago.
Defendants acknowledged copying, but argued that it could not constitute infringement because they had a license to use the material. The Federal Circuit said that the heart of the argument on appeal concerns whether the terms of the Artistic License are conditions of, or merely covenants to, the copyright license. The Federal Circuit noted that the Artistic License stated on its face that the document creates conditions, and that agreement used the traditional language of conditions by noting that the rights to copy, modify, and distribute are granted “provided that” the conditions are met. The Federal Circuit found that The conditions set forth in the Artistic License are vital to enable the copyright holder to retain the ability to benefit from the work of downstream users. The Federal Circuit further found that copyright holders who engage in open source licensing have the right to control the modification and distribution of copyrighted material. Copyright licenses are designed to support the right to exclude; money damages alone do not support or enforce that right. The Federal Circuit said that he choice to exact consideration in the form of compliance with the open source requirements rather than as a dollar-denominated fee, is entitled to no less legal recognition. In fact, 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 Federal Circuit vacated and remanded the case for the district court to reconsider the denial of the preliminary injunction.