Jacobsen v. Katzer: Failure of the Artistic License and Repercussions for Open Source

• Jurisdiction: United States,Federal,California
• Citation: Vol. 9 No. 2007
• Publication year: 2007

Erich M. Fabricius ¹

I. Introduction

Open source software ² development has become an increasingly important part of the software development landscape. Many important products today have open source foundations, ³ and open source is becoming increasingly accepted in mainstream corporate America. ⁴ Because the typical open source project has its source code assets readily available to the public, such a project runs the risk that individuals will obtain and misuse valuable intellectual property. With no physical or technical barriers to this misuse, those behind the open source project rely on the protection of legal remedies.

Despite the fact that open source software has existed for decades, open source licenses are largely untested in the courts. ⁵ Licensors have often been successful in obtaining compliance pre-litigation, ⁶ and there is public pressure against misappropriating open source assets. ⁷ For these reasons, the recent district court case of Jacobsen v. Katzer ⁸ has attracted attention. ⁹ In Jacobsen, the court denied the licensor plaintiff’s attempt to seek an injunction under copyright law. ¹⁰ Instead, it held that the license could be enforced under contract, not copyright law. ¹¹ This is a disappointment to licensors in general, as copyright remedies are often more attractive than contract remedies. ¹² While the license at issue in Jacobsen was a less common license and the District Court’s decision is not binding precedent, the court’s opinion is troubling because it has the potential to become persuasive authority, as it is the first to squarely confront the license enforcement issue.

While on the particular facts of the Jacobsen case, the court was justified in denying copyright infringement relief, broader concerns for effective protection of open source software demand new legal rules that ensure access to both copyright and contract remedies for open source software providers. This paper begins with a review of the background of open source licenses and the facts of the Jacobsen case. Next, the order of the District Court is analyzed in the context of present law. Finally, the paper concludes with a discussion of the implications of Jacobsen on other open source projects and what sort of legal rules would best serve to protect them.

II. Background

A. Nature of Open Source Licenses

In the general sense, open source software is licensed to permit “users to copy, distribute, or modify the source code, and publicly distribute derived works based on the source code.” ¹³ Often, open source licenses restrict these permitted activities, such as requiring attribution or continued same-license open source distribution of re-distributed or derivative works. ¹⁴ This last restriction—requiring continued use of the same terms—can be thought of as a form of reciprocity and is the core of what has become known as “copyleft” licenses. ¹⁵ A contrast can be drawn to public domain software that exists without copyright protection. ¹⁶ While public users can similarly copy, distribute, modify, and prepare derivative works based on public domain software, ¹⁷ no one is legally in the position to impose restrictions upon their actions. Thus, the ability of open source authors to impose restrictions has been asserted as the result of the author holding a copyright. ¹⁸

Discussing open source licenses as a single monolithic license must be avoided; licenses have proliferated in recent years, and there are dozens of licenses that can be generally categorized as “open source.” ¹⁹ These licenses vary both in prevalence and in restrictiveness. The GNU ²⁰ General Public License (GPL) 2.0 ²¹ is the most common open source license; ²² it includes high profile projects such as the Linux operating system kernel. The GPL is the license most associated with copyleft and imposes the significant restriction that all derivative works must also be licensed under it. ²³ Other licenses, which can be broadly grouped as “academic licenses,” place fewer restrictions on the use of the open source code. ²⁴ The Artistic License, ²⁵ which was at issue in the Jacobsen case, is also relatively common, ²⁶ and its restrictions largely concern original author attribution. ²⁷ The Artistic License has been criticized by the Free Software Foundation as “too vague; some passages are too clever for their own good, and their meaning is not clear.” ²⁸ The Foundation is not alone in its view, ²⁹ and the community maintaining the license has even expressed concern about the viability of the Artistic License. ³⁰ Subsequently, the Artistic License 2.0, ³¹ which is not as common as the original, was released to address some of these criticisms and as a result is less ambiguous than its predecessor. ³²

It is within this framework that the license issues of Jacobsen must be considered. The case has attracted attention not because of its interpretation of the original Artistic License, but because of concern that similar judicial reasoning could emerge in a case concerning the GPL, which is the most common license.

B. Facts and Holding in Jacobsen v. Katzer

In Jacobsen v. Katzer, the United States District Court for the Northern District of California considered issues of enforcement of the Artistic License ³³ used for the Java Model Railroad Interface Project (“JMRI Project”) an open source software project. ³⁴ The core of the suit was the claim that Matthew Katzer and his associated company appropriated intellectual property from Robert Jacobsen and the JMRI Project. ³⁵ While a number of matters were at dispute, including claims of improperly obtained patents, ³⁶ of key interest is the allegation that Katzer copied decoder files ³⁷ from the JMRI Project and resold them as his own company’s creations. ³⁸ This act was alleged to be copyright infringement in violation of the terms of the Artistic License. ³⁹ On the copyright infringement claim, Jacobsen sought a preliminary injunction. ⁴⁰

The District Court denied the preliminary injunction, holding that Jacobsen did not have a claim for copyright infringement, but potentially had one for breach of contract. ⁴¹ At the beginning of its analysis, the court cited the Ninth Circuit opinion in S.O.S., Inc. v. Payday, Inc. ⁴² for the proposition that “[a] licensee infringes the owner’s copyright where its use exceeds the scope of the license.” ⁴³ Noting that the license rights in the Artistic License are “intentionally broad,” ⁴⁴ the court concluded that “[t]he condition that the user insert a prominent notice of attribution does not limit the scope of the license.” ⁴⁵ Having found that the scope of the license was not exceeded, the court concluded that copyright infringement liability should not attach and that violation of the particular license terms would be a breach of contract matter. ⁴⁶

III. Analysis

A. Analysis of Jacobsen Order

The District Court in Jacobsen does not fully explain its rationale. Nevertheless, it is possible to analyze the soundness of the court’s order through the discussion of two questions triggered by the decision. The first is whether the breach of contract claim suggested by the court is in fact legally actionable. The second is whether the court was correct in deciding that no copyright cause of action existed.

1. Availability of Breach of Contract to Jacobsen Plaintiffs

At its core, a license is a contract governed by the same principles as other contracts. ⁴⁷ To enforce such a license by suit for breach of contract, one must be able to demonstrate the formation of a valid contract. In the simple sense, the basic requirements of contract formation are offer, acceptance, and consideration. In the context of the open source project, the existence of an offer of rights to otherwise copyrighted intellectual property is not likely to be in dispute. The other two requirements, acceptance and consideration, present more complicated questions.

The matter of acceptance and assent to the contract terms in the Jacobsen dispute is closely related to the issue of enforceability of click-wrap and shrink-wrap agreements, which turn on manifestations of assent. ⁴⁸ One case in this area, Register.com, Inc. v. Verio, Inc., ⁴⁹ found assent to terms of a contract not by an explicit “I agree” click, but by information that was merely posted and encountered by the offeree during its repeated use of the offeror’s services. ⁵⁰ The Register.com court also signaled a disinterest in requiring strict formal assent when it was clear that the offeree “knew perfectly well what terms [were] demanded.” ⁵¹ The outcome in Register.com is in contrast to the outcome in Specht v. Netscape Communications Corp., ⁵² an earlier case in the same circuit, where the court found no implicit assent to posted contract terms by presumably one-time internet downloaders. ⁵³ Netscape demonstrates that there is a lower bound to situations where the court will find implied assent.

By analogy, it would be unreasonable to believe that Katzer, in the Jacobsen case, was unaware of the existence of license requirements for the JMRI files. He was active in the industry, and was likely aware of the basic character of his competitor as an open source provider. Indeed, the primary point of distribution for JMRI source code is the prominent open source project site SourceForge, ⁵⁴ downloads from which a reasonably attentive user would be aware are governed by open source licenses. It is difficult to believe that a software professional in the mid-2000s would not have at least some notion of the nature of open source software and that a variety of licenses exist. Addressing the awareness point concretely in the Jacbsen case context, the JMRI source files at issue came packaged with a file named “COPYING” which included the text of the Artistic License. ⁵⁵ Furthermore, each of the files at issue in the dispute included a notice at the top explicitly calling one’s attention to the existence of the “COPYING” file and...