Rami Olwan

All About CyberLaw, Copyright and Developing Countries

Robert Jacobsen V. KAM Industries

Open source software refers to computer software available with its source code and under an open source license to study, change, and improve its design. Open source software applications such as Linux, Apache and Bind have become widely used by computer hackers and businesses alike, along with the expansion of the internet and the proliferation of “peer production” models. National courts and specially American, the birth place of General Public License (GPL) have not discussed the legal validity of open source software licensing.

This situation has changed after a U.S Court of Appeals for the Federal Circuit (Appealate Court) has examined for the first time the legal validity and enforceability of open source software licenses. The recent decision in Robert Jacobsen (Jacobsen) v. Kam Industries (Kam) issued on 13 August 2008 should be examined carefully, before commenting on the said decision; I will briefly outline the facts behind the dispute, and the main findings of the District Court and Appealate Court.

1. Background to Dispute

In March 2006, Jacobsen, a physics professor at the University of California, Berkeley, filed a lawsuit against Mr. Katzer claiming that his company (Kam) was distributing a commercial software program that had taken software code from the Java Model Railroad Interface project, and was redistributing the program without the credits required as part of the open source licensing it was distributed under.[1]

“Jacobsen accused Kam of copying certain materials from Jacobsen”s website and incorporating them into one of Kam’s software packages without following the terms of the Artistic License“. Jacobsen brought an action for copyright infringement requesting a preliminary injunction.

Kam argued that they could not be held liable for copyright infringement as they have used a free license to use the material. The subject of the copyright dispute was “decioder definition files” that included a “copyright notification and a copying file that includes the text of the Artistic License“. The legal issue that the Districts and Appellate Courts were supposed to answer was “whether the terms of the OSS license (Artistic License) are conditions of, or merely covenants to, the copyright license“? This is an important question that has been debated and discussed by copyright scholars, but not by American courts. If the terms of the Artistic license were found covenants rather than conditions then contract law not copyright will be applicable on the dispute, and by contrast if they are found to be conditions they will limit the scope of the license and it will be covered by copyright rather than contract law. This matter was not answered clearly in both the District Court and the Appellate Court.

2. The District Court

The District Court did not discuss the covenant and copyright issues, but determined that there is a beach of contract law rather copyright. The District Court denied the preliminary injunction as requested by Jacobsen and considered the matter to be a breach of contract. The reasoning of the District Court was as follows:

 “The license explicitly gives the users of the material, any member of the public, the right to use and distribute the [material] in a more-or-less customary fashion, plus the right to make reasonable accommodations. The scope of the nonexclusive license is, therefore, intentionally broad. The condition that the user inserts a prominent notice of attribution does not limit the scope of the license. Rather, Defendants’ alleged violation of the conditions of the license may have constituted a breach of the nonexclusive license, but does not create liability for copyright infringement where it would not otherwise exist”. This matter was not answered clearly in the District Court and the Appellate Court.

3. The Appellate Court

The Appellate Court criticised the decision issued by the District Court and mentioned that:

“The District Court interpretation of the conditions of the Artistic License does not credit the explicit restrictions in the license that govern a downloaders right to modify and distribute the copyrighted work. The copyright holder here expressly stated the terms upon which the right to modify and distribute the material depended and invited direct contact if a downloader wished to negotiate other terms. These restrictions were both clear and necessary to accomplish the objectives of the open source licensing collaboration, including economic benefit. Moreover, the District Court did not address the other restrictions of the license, such as the requirement that all modification from the original be clearly shown with a new name and a separate page for any such modification that shows how it differs from the original. Copyright holders who engage in open source licensing have the right to control the modification and distribution of copyrighted material”

The Appellate Court mentioned the importance of clarity in drafting open source software licensing in upholding it and stated that:

 “The clear language of the Artistic License creates conditions to protect the economic rights at issue in the granting of a 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 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”

At the end, the Appellate Court found that the term of the Artistic license are enforceable under copyright law and thus the action of Kim in incorporating and using the “decioder definition files“ in their business software without giving the proper attribution and abiding by the exact conditions of the open source software license constituted a copyright infringement rather than a breach of contract claim.

The Appellate Court vacated and remanded the decision of the District Court to determine the following issues:

“TO determine whether Jacobsen has demonstrated (1) a likelihood of success on the merits and either a presumption of irreparable harm or a demonstration of irreparable harm; or (2) a fair chance of success on the merits and a clear disparity in the relative hardships and tipping in his favour”.

4. Comment

The District and the Appellate Courts disagreed on how to treat the Artistic license, but they have agreed not to render the motion for primarily injunction moot as requested by Kam who argued that they have terminated voluntary the alleged wrongful activity. The main reason is that there is no assurance that the copyright infringement activity would not occur in the future. The decision is a landmark one that will be taught in copyright law class rooms and referred by open source software developers and promoters of open content concepts.

The decision although discusses specifically open source software licenses but have broad implication on voluntarily mechanisms such as Creative Commons.

The Honorable Faith S. Hochberg, District Judge, should be congratulated for the clarity of the opinion and the sound understanding of open source software movement and legal mechanism behind it. The decision sends a clear message to businesses that want to use open content models that they have to abide by terms of open source software licenses otherwise they could be held liable for infringement.

The decision retreat the importance of drafting clear and appropriate language in contracts that will guarantee their enforceability even in the context of open source software licenses. Open source software licenses that mention without equivocal terms that they are regarded as a condition will be likely in front of American courts.

It will remain to be seen to what extent other American courts will follow the reasoning that was reached by the Appellate Court.

It is hoped that the decision would not be interpreted in any way as favouring restrictiveness by allowing users to place extreme conditions on the use of open source software as this would jeopardise spreading open source software and its underlying philosophy. It is hoped that the decision will have broader implication outside the US to other common law jurisdiction that are yet to consider the legal enforceability of open source software.

The Appellate Court recognised the importance of the legal framework for software business and overturned a long established bias that open source software is worthless financially as it is offered for free. It recognize for the first time the countless hours that have been invested by the hacker community and techno geeks in developing and spreading the awareness of open source software models.


The ambiguity surrounding the legal validity and enforceability of open source software has been one of the obstacles facing the recognition and development of open source software. Although the matter is far from over, the decision is a good starting point that should give from the legal perspective a more weight to the movement and its proponents worldwide.

It is hoped that open source software will be more clearly understood from the legal perspective in the few upcoming years. In the mean time, it will remain to be seen to what extent similar court decisions will be reached either by American courts or other common law jurisdictions.

[1] John Markoff,  Ruling Is a Victory for Supporters of Free Software, available at http://www.nytimes.com/2008/08/14/technology/14commons.html

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