“Free license” doesn’t mean free to do what you want

Larry Lessig (links added):

So for non-lawgeeks, this won’t seem important. But trust me, this is huge.

[T]he Court of Appeals for the Federal Circuit (THE “IP” court in the US) has upheld a free (ok, they call them “open source”) copyright license, explicitly pointing to the work of Creative Commons and others. (The specific license at issue was the Artistic License.)

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 [General Public License] and all CC [Creative Commons] 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.

Here’s yesterday’s decision, which is styled Jacobsen v. Katzer.  It involved a claim of copyright infringement arising from a model-train company’s violation of a free software license restricting the use of its software.  The court held that conditions over the use of the software demonstrated an intention to maintain control of how it is used, and that notwithstanding the lack of an exchange of money, there was ample consideration to support the assertion that the license could be enforced.

Dennis Crouch, incidentally, points out an interesting angle:

This decision[‘s] impact on patent law may be a reminder that the court will allow patent infringement actions even when the infringement is based on violation of an intricate or exotic licensing contract.

Excerpts (elipses between grafs omitted):

The District Court held that the open source Artistic License created an Aintentionally broad@ nonexclusive license which was unlimited in scope and thus did not create liability for copyright infringement.

The lack of money changing hands in open source licensing should not be presumed to mean that there is no economic consideration, however. There are substantial benefits, including economic benefits, to the creation and distribution of copyrighted works under public licenses that range far beyond traditional license royalties.

[I]f the terms of the Artistic License allegedly violated are both covenants and conditions, they may serve to limit the scope of the license and are governed by copyright law. If they are merely covenants, by contrast, they are governed by contract law.

Jacobsen argues that the terms of the Artistic License define the scope of the license and that any use outside of these restrictions is copyright infringement. Katzer/Kamind argues that these terms do not limit the scope of the license and are merely covenants providing contractual terms for the use of the materials, and that his violation of them is neither compensable in damages nor subject to injunctive relief. Katzer/Kamind’ss 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 . . .

Copyright holders who engage in open source licensing have the right to control the modification and distribution of copyrighted material. . . . Copyright licenses are designed to support the right to exclude; money damages alone do not support or enforce that right. The choice to exact consideration in the form of compliance with the open source requirements of disclosure and explanation of changes, rather than as a dollar-denominated fee, is entitled to no less legal recognition.

Copyright holders who engage in open source licensing have the right to control the modification and distribution of copyrighted material.

Interesting procedural point, by the way:  Perhaps you are wondering how this copyright case, an appeal from a decision of the Northern District of California, ended up before the Federal Circuit Court of Appeals in Washington?

Although an appeal concerning copyright law and not patent law is rare in our Circuit, here we indeed possess appellate jurisdiction. In the district court, Jacobsen’s operative complaint against Katzer/Kamind included not only his claim for copyright infringement, but also claims seeking a declaratory judgment that a patent issued to Katzer is not infringed by Jacobsen and is invalid. Therefore the complaint arose in part under the patent laws . . . [pursuant to 28 U.S.C.§] 1295(a)(1) (The Federal Circuit shall have exclusive jurisdiction “of an appeal from a final decision of a district court of the United States” if (1) “the jurisdiction of that court was based, in whole or in part, on section 1338 of this title” . . .).

Hunh!  It gets even odder — the panel included the Honorable Faith S. Hochberg, District Judge, United States District Court for the District of New Jersey, sitting by designation.  Hunh!

Hat tip to Goyishekop.

By Ron Coleman

I write this blog.

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