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Copyright Applies to Free Software Too

by Tara Warrington
Legal Satyricon Correspondent

The Court of Appeals for the Federal Circuit ruled in Jacobsen v. Katzer that the terms of a license – even one granting free and nonexclusive use – control when determining if the scope of the use is limited by the license itself or more broadly by copyright law. The decision itself is not earth shattering when viewed in light of the specific terms of this particular open source license. Nevertheless, it shows a promising tolerance for moral rights principles.

Robert Jacobsen created a software application called DecoderPro which he made available for download and free public use. The programming of the application included a file named COPYING containing an Artistic License which granted users the right to copy, modify, and distribute the software “provided that” the user attributed the original code to Jacobsen, track and record modifications to the original code, and either make the modified code available for free public use, allow Jacobsen to use the modified code in his freely available version, only use the modified code in a noncommercial manner, or contact Jacobsen to make other mutually agreeable distribution arrangements.

Defendants Katzer and Kamind Associates, Inc., allegedly used Jacobsen’s software to create a competing program which they released for sale and without any notice of the original code or modifications thereto. Jacobsen sued for copyright infringement and asked for an injunction preventing the defendants from using the modified code. The District Court ruled in favor of defendants, finding that Jacobsen’s only remedy would be to sue the defendants for breach of contract for allegedly violating the terms of the Artistic License. The Court of Appeals vacated the district court’s decision on the grounds that the Artistic License was a conditional offer allowing free use and modification of the code, if the user agreed to attribute the code to the author and track changes in subsequent releases of the modified code.

The Court illustrated the distinction between conditions and covenants. A condition in this context, does not create a right to use or modify the code unless the user agrees to be bound by the terms of the license. Any use or modification that did not comply with the terms of the license would be unauthorized by the copyright holder thus subject to an infringement suit. By contrast, construing the terms of the license as covenants would create an immediate right in the user to use or modify the original code in exchange for future compliance with the terms of the license. A subsequent failure to include the required attributions or notifications, or a failure to allow free public access to the modifications, would be a violation of the license agreement entitling the original owner to sue for breach of contract, but the use or modification itself would still have been authorized and the owner would not be entitled to sue for copyright infringement. The Artistic License at issue in this case clearly stated that users were entitled to use, copy, modify, and distribute Jacobsen’s code “provided that” they comply with the terms of the Artistic License. The Court of Appeals ruled that this language plainly and unambiguously conditioned use or modification of the code on compliance with the terms of the Artistic License. Any use outside the scope of the Artistic License then would be unauthorized thereby entitling Jacobsen to sue for copyright infringement.

Its hard to argue with the decision in light of the express terms of the license agreement at issue. However, the intent of original authors in using an open source or creative commons license is usually to allow immediate access, use, and modification of their material. The intent behind these licenses is to create a new scheme whereby subsequent users are entitled to use the original material in various ways, but allow the original author to receive recognition, without having to resort to copyright remedies. The system relies on the goodwill and reciprocity of other users instead of the traditional court system. Notwithstanding the actual terms of these types of licenses, bringing the authors and users back within the scope of copyright law seems to violate the intent of the authors in approving this type of license in the first place.

As an interesting side note, the Court of Appeals also appeared to dispel the notion that copyright limits authors to causes of action based on purely economic rights. The defendants apparently relied on the argument that open source licenses merely rely on the moral rights of authors to receive attribution for their works and to maintain the integrity of their works:

Katzer/Kamind’s argument is premised upon the assumption that Jacobsen’s copyright gave him no economic rights because he made his computer code available to the public at no charge. From this assumption, Katzer/Kamind argues that copyright law does not recognize a cause of action for non-economic rights… (pg. 10-11, citations omitted).

The Court stopped short of saying moral rights were recognized by U.S. copyright law, but chastised defendants for discounting the economic nature of receiving proper attribution and maintaining the integrity of original works:

The clear language of the Artistic License creates conditions to protect the economic rights at issue in the granting of the public license. These conditions govern the rights to modify and distribute the computer programs and files included in the downloadable software package. The attribution and modification transparency requirements directly serve to drive traffic to the open source incubation page and to inform downstream users of the project, which is a significant economic goal of the copyright holder that the law will enforce. Through this controlled spread of information, the copyright holder gains creative collaborators to the open source project; by requiring that changes be made by downstream users be visible to the copyright holder and others, the copyright holder learns about the uses for his software and gains others’ knowledge that can be used to advance future software releases. (pg. 14, emphasis added).

Editor’s note: Although Congress has been less than enthusiastic about recognizing moral rights, it seems that courts are not afraid to recognize them if they are created by contract. See Gilliam v. ABC, 538 F.2d 14 (2d. Cir. 1976). This case seems to recognize that moral rights are not only enforceable when they are infused into an open source license, but that they have inherent economic value. Perhaps, if this trend continues, moral rights theory will back its way into American intellectual property law.

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