Licence breach equals copyright infringement in U.S.

Some time ago I had talked about the case of Jacobson v Katzer, a very interesting ruling from the United States that in my view had made the argument that open source licences are contracts, and therefore breach of licence should be pursued as breach of contract.

As I wrote before, the case involved Robert Jacobsen, an open source developer participating in an open source project called Java Model Railroad Interface (JMRI), which is a model train software released it under the Artistic License. Jacobsen received a letter demanding the licence fee payments from a company named Kamind Associates, owned by Matthew Katzer, which has obtained software patents over model rail road software (particularly U.S. patent 7,216,836). Jacobsen decided to pre-empt legal action and sued Katzer first, alleging that the patent is invalid on the grounds of obviousness and for failure to meet disclosure requirements. He later amended the complaint to include copyright infringement, as he claims that his software pre-dates Katzer’s. In first instance, the District Court alleged that there should be no presumption of a copyright infringement claim, and that such claim should be proven before the plaintiff can make its case. If they cannot provide evidence that such a claim may be successful in court, then the Jacobson can only rely on the contractual elements of the licence in order to seek redress; namely, the failure to place attribution notices is not enough to make a copyright claim, but a contractual one.

I was probably the only pro Open Source person who thought this was a good decision, as everybody else hated it because it contravened one of the main mantras of Free Software proponents, that OSS licences are not contracts. Katzer, who lost the case, appealed the ruling, and it made its way to the Court of Appeals for the Federal Circuit (CAFC), who have produced a decision that seems to please most people, except me of course. Lessig explains the ruling in very clear terms:

“In non-technical terms, the Court has held that free licenses such as the CC licenses set conditions (rather than covenants) on the use of copyrighted work. When you violate the condition, the license disappears, meaning you’re simply a copyright infringer. This is the theory of the GPL and all CC licenses. Put precisely, whether or not they are also contracts, they are copyright licenses which expire if you fail to abide by the terms of the license.”

Interestingly, Creative Commons, the Open Source Initiative, the Linux Foundation, Wikipedia Foundation, and others, presented an amicus curiae against the District Court reasoning. In this document the amici claim that “it would be enormously beneficial to public licensing for this Court to state clearly a rule regarding the importance of interpreting public licenses in a manner consistent with their unique nature and federal copyright policy.”

The ruling makes for some interesting reading, and the CAFC has accepted the reasoning presented in the amicus curiae highlighted above. The CAFC says that:

“In this case, a user who downloads the JMRI copyrighted materials is authorized to make modifications and to distribute the materials Aprovided that the user follows the restrictive terms of the Artistic License. A copyright holder can grant the right to make certain modifications, yet retain his right to prevent other modifications. Indeed, such a goal is exactly the purpose of adding conditions to a license grant. The Artistic License, like many other common copyright licenses, requires that any copies that are distributed contain the copyright notices and the COPYING file.”

The CAFC has to be congratulated for understanding the basic concepts behind open source licensing. In various passages, they clearly “get” the basis of the movement and the underlying rights. The CAFC has delivered the highest instance recognition to open licences, which is another encouraging sign. However, I am still somehow unconvinced by divorcing licences from the issue of contracts (at least in the United States). The main problem that I’ve always had with looking at licences as something separate from contracts is that they may have some unwanted results. For example, if all breach of licences are to be treated as copyright infringement, we may end up with decisions that retroactively apply such infringement, such as the recent Blizzard v MDY.

Nevertheless, this is a ruling that will boost the enforceability of all types of licences, not only open ones. I am attending a software conference in Costa Rica, and I heard from a Microsoft lawyer that they were very pleased with the ruling as it turns EULA licence breaches into copyright infringements. However, the ruling has no relevance in Civil Jurisdictions.

As a shallow aside, it seems like the new term to refer to open licences is “public licences”. I shall now have to tinker with my blog tags.

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