Open source license bars claim for copyright infringement

Jacobsen v. Katzer, No. 06-1905, 2007 WL 2358628 (N.D. Cal. August 17, 2007).

Plaintiff Jacobsen wrote some decoder definition files and made them available under an open source license used by the Java Model Railroad Interface Project. This open source license granted broad rights to members of the general public to do certain things with the software, including

– the right to distribute and create derivative works from the software, provided that the licensee give proper credit to the JMRI Project original creators.

– the right to make or give away verbatim copies of the source form without restriction provided that the licensee duplicate all of the original copyright notices and associated disclaimers.

– the right to distribute the copyrighted work “in a more-or-less customary fashion, plus [have] the right to make reasonable modifications.”

– the right to “distribute [the material] in aggregate with other (possibly commercial) programs as part of a larger (possibly commercial) software distribution provided that [the licensee] not advertise [the material] as a product of [the licensee's] own.”

Jacobsen sued defendant Katzer for copyright infringement, claiming that without permission or consent, Jacobson made copies of the software, distributed copies to the public, or created derivative works. He also moved for a preliminary injunction. The court denied the motion.

The opinion explains the distinction between causes of action for infringement on one hand, and and breach of contract on the other, when a licensee violates some term of the agreement. In general, the court observed, a non-exclusive license, like the one in this case, is a waiver of the right to sue for infringement. So long as the licensee’s use of the work is within the scope of the license (say, only to distribute and not make copies), any other violation of a condition of the agreement, (like providing attribution), would allow only for a breach of contract action.

In this case, the court looked to the open source license at issue and found that

[T]he scope of the nonexclusive license is, therefore, intentionally broad. The condition that the user insert 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.

Accordingly, the Court found that Jacobsen’s claim properly sounded in contract and therefore had not met his burden of demonstrating likelihood of success on the merit of his copyright claim.

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