Thursday, August 30, 2007

Open source licences are contracts

Habitual readers may have noticed that one of the repetitive memes in this blog is that copyleft licences are contracts. In Jacobsen v Katzer, and American court has agreed.

The case involved Robert Jacobsen, an open source developer participating in an open source project called Java Model Railroad Interface (JMRI), which is a model train software released it under the Artistic License. Jacobsen received a letter demanding the licence fee payments from a company named Kamind Associates, owned by Matthew Katzer, which has obtained software patents over model rail road software (particularly U.S. patent 7,216,836). Jacobsen decided to pre-empt legal action and sued Katzer first, alleging that the patent is invalid on the grounds of obviousness and for failure to meet disclosure requirements. He later amended the complaint to include copyright infringement, as he claims that his software pre-dates Katzer's.

The current decision rules on a motion to dismiss by the defendants and on a motion for preliminary injunction from the plaintiff. The District Court granted some of the motions to dismiss, denied others and denied the claim for preliminary injunction. The important bit of the decision is the analysis of the copyright infringement claims. The Court has declared that because the software is released to the public online through an open source licence, there is a clear permission to use the software. The Artistic License is not a copyleft licence, it allows modification and the creation of derivatives, provided that those doing it insert prominent notices on each file, and perform one of the following:

"a) place your modifications in the Public Domain or otherwise make them Freely Available, such as by posting said modifications to Usenet or an equivalent medium, or placing the modifications on a major archive site such as, or by allowing the Copyright Holder to include your modifications in the Standard Version of the Package.
b) use the modified Package only within your corporation or organization.
c) rename any non-standard executables so the names do not conflict with standard executables, which must also be provided, and provide a separate manual page for each non-standard executable that clearly documents how it differs from the Standard Version.
d) make other distribution arrangements with the Copyright Holder."
The District Court has astutely understood that such restrictions are not copyright restrictions, they are contractual obligations. They claim:
"Based on the both the allegations in the amended complaint and the explicit language of the JMRI Project’s artistic license, the Court finds that Plaintiff has chosen to distribute his decoder definition files by granting the public a nonexclusive license to use, distribute and copy the files. The nonexclusive license is subject to various conditions, including the licensee’s proper attribution of the source of the subject files. However, implicit in a nonexclusive license is the promise not to sue for copyright infringement. [...] Therefore, under this reasoning, Plaintiff may have a claim against Defendants for breach the nonexclusive license agreement, but perhaps not a claim sounding in copyright. [...] However, merely finding that there was a license to use does not automatically preclude a claim for copyright infringement. [...] 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."
Apologies if I go all geeky and unprofessional here, but ZOMG! The implications for this ruling are huge. The District Court alleges that there should be no presumption of a copyright infringement claim, and that such claim should be proven before the plaintiff can make its case. If they cannot provide evidence that such a claim may be successful in court, then the Jacobson can only rely on the contractual elements of the licence in order to seek redress; namely, the failure to place attribution notices is not enough to make a copyright claim, but a contractual one.

Interestingly, the District Court understood perfectly the trade-off in open source licences which rests at the very heart of the contract/licence dichotomy: if you comply with the licence, we will not sue you for copyright infringement. But, if you cannot sue for copyright infringement, then all you have is a claim for breach of contract.

I'm now off to smugly finish my coffee...

Update 1: OSS proponents are understandably upset by the ruling, but perhaps it would be better if open source acted as if they are contractual obligations instead of relying on the dogmatic mantra that contracts are licences.

Update 2: The paragraphs cited from the decision come from a section entitled "Plaintiff’s Claim Sounds in Contract, Not Copyright". By stating that the plaintiff does not have a copyright infringement case, but a breach of contract claim, I would believe that it is clear that the licence is indeed a contract (otherwise, you could not have a contractual case).

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