I renounce and reject those claims that covenants are not conditions….

Words indeed matter.

The big news today in open source land was that the Court of Appeals for the Federal Circuit (CAFC) issued its decision in the Jacobsen v. Katzer case. The case began as a patent infringement suit against Jacobsen and the authors of the open source software. Jacobsen then countersued claiming, among other things, violation of the terms of their open source software license (Artistic License).

I’ll skip the details since they are laid out if full detail here, but the gist of the back and forth legal decisions was that Jacobsen won most of his claims against Katzer, however, one vital request was denied. The request for a preliminary injunction to prevent the further distribution of the software. Specifically the court ruled that:

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. Therefore, based on the current record before the Court, the Court finds that Plaintiff’s claim properly sounds in contract and therefore Plaintiff has not met his burden of demonstrating likelihood of success on the merit of his copyright claim and is therefore not entitled to a presumption of irreparable harm.

What this says is that the Court did not believe that omitting the attribution provision of the license triggers copyright infringement. In the Artistic License the attribution provision states that:

You may Distribute verbatim copies of the Source form of the Standard Version of this Package in any medium without restriction, either gratis or for a Distributor Fee, provided that you duplicate all of the original copyright notices and associated disclaimers.

The important point here is that without copyright infringement, the remedies available to Jacobsen were limited. Mark Radcliffe at DLA Piper has a thorough analysis of the issues and their significance, but he make the point here:

Generally, the remedy for contract violations under US law is damages, not “injunctive relief” (which means that the court order a party to cease their violation). On the other hand, copyright infringement generally includes a presumption that injunctive relief is appropriate. Thus, the question of whether the violation of a license is a contract violiation or copyright infringement (it can be both) is very important, because licensors would prefer to obtain an injunction prohibiting the breach of the license.

Typical remedies for a contract violation might include monetary damages, but not injunctive relief. So, with this ruling, the biggest club that the open source license had to inforce it’s provisions was taken away. Without injunctive relief someone could violate the license and simply pay a fine, and refuse to make their changes available rendering the whole idea of copyleft meaningless.

Today’s ruling came down to the intrepretaion of the term ‘provided that’ which is used in the license. Again, Mark blogged about the ruling

The CAFC reversed the District Court’s decision and its reasoning is very helpful for the open source community. The court found that the limitations in the Artistic License were “conditions” on the scope of the license and, thus, Katzer was liable for copyright infringement (as well as breach of contract). The CAFC noted that the Artistic License imposed its obligations through the use of the words “provided that” which is generally viewed as imposing a condition.

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