Open Source Copyright Infringement

In Jacobsen v. Katzer and Kamind Associates, Inc., the United States Court of Appeals for the Federal Circuit, in a decision issued on August 13, 2008, reversed the trial court’s prior ruling and held that since the terms of Jacobsen’s open source software license serve to limit the scope of the license, they were enforceable copyright conditions entitling Jacobsen to pursue damages for copyright infringement, including injunctive relief.


Jacobsen, the holder of a copyright to certain computer programming code, licensed his software without a fee pursuant to an open source software license that conditioned use of the software, inter alia, on identifying the original source of the software, tracking and describing all changes to the original source code, and making all modifications to the source code freely available to others.

Defendants develop commercial software products, and they copied, modified, and distributed Jacobsen’s open source software as part of Defendants’ software product without following the terms of the open source software license.

Trial Court Decision

Jacobsen sued Defendants for copyright infringement. The trial court ruled that since the open source license granted a broad non-exclusive license which was unlimited in scope, the limitations in the software license were merely a contractual covenant rather than a condition on the scope of the license. Thus, Defendants’ alleged violation of the conditions of the license constituted a breach of contract, i.e., a breach of the non-exclusive license, but did not create liability for copyright infringement. Because a breach of contract creates no presumption of irreparable harm, the trial court denied Jacobsen’s motion for a preliminary injunction.

Court of Appeals Ruling

On appeal, the Court explained that the key question concerned whether the terms of the open source license were conditions of the copyright license or merely covenants to the copyright license. Generally, a copyright owner who grants a non-exclusive license waives his right to sue for copyright infringement and can sue only for breach of contract. However, if a license is limited in scope and a licensee acts outside the scope, the licensor may bring an action for copyright infringement. The Court explained that if the terms of Jacobsen’s license were both covenants and conditions, then they would serve to limit the scope of the license and would be governed by copyright law. However, if they were merely covenants, they would be governed only by contract law.

The Court held that copyright holders who engage in open source licensing have the same right as traditional commercial licensors to control the modification and distribution of their copyrighted material. The Court noted that the terms of Jacobsen’s open source license explicitly used the traditional language of conditions by providing that the rights to copy, modify, and distribute the software were granted “provided that” certain condition were met.

The Court concluded that the clear language of Jacobsen’s software license created conditions to protect the economic rights of the licensor in the granting of a public license. Thus, a licensee who modifies and distributes open source copyrighted materials without the mandated copyright notices and tracking of modifications would be in violation of the scope of the license.

Having determined that the terms of Jacobsen’s license were enforceable copyright conditions, the Court remanded the matter to the trial court to for further proceedings to determine whether Jacobsen demonstrated the conditions required for the grant of a preliminary injunction.


The Jacobsen decision is a highly significant opinion that will greatly bolster the efforts of open source software copyright owners to control the use of open source software according to the terms set out in their open source licenses.

To benefit from this ruling, licensors of open source code must ensure that their software licenses contain language that creates conditions for the grant of the license.

From the licensee’s standpoint, open source users must comply with the license terms of the open source software that they license. Since complete avoidance of open source software is often difficult, if not impractical, a thorough understanding of the limitations and conditions created by open source license terms is necessary in order to protect the licensees’ ownership rights in their own software products.

By Steve Kronengold and David C. Zuckerbrot. © November, 2008. All rights reserved.
This article is provided for educational, informational and non-commercial purposes only. The content of this article is not intended to provide legal advice on any subject matter and should not be relied on as such.

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