An open source program is one in which the author distributes the underlying source code along with an executable version of the software and license.[1] In most cases, the person downloading or installing the software is required to consent to a license that includes covenants and conditions, which if broken by the licensee, provide the author (licensor) with a copyright claim and/or breach of contract claim.[2]

This article examines what happens if the licensee fails to include an attribution such as the author's name or source identifier. In specific, this article discusses the Jacobsen v. Katzer decision[3], which dealt with the issue that an open source plaintiff cannot usually prove damages, and the remedy for failure to attribute is often a breach of contract action of the software license - a cause of action the plaintiff usually cannot win, because the plaintiff cannot prove damages. By setting the license grant as conditional upon attribution, a copyright infringement claim can be had, bringing with it statutory damages and a presumption of irreparable harm for infringement. This boils right down to a license drafting practice, illustrating how a slight change in wording can have a huge impact on the enforceability of licensing terms.

Under U.S. law the author is free to sue for copyright infringement[4] to prevent others from copying or making derivative works of the source code of a program. But what if the author has distributed the source code as open source? Can an open source author assert a copyright infringement claim by asserting a user of the software has no license based upon a failure to provide attribution? The answer, in some cases, is yes, the author can do just that.

In Jacobsen v. Katzer, the author, Jacobsen, (a company which produced open source software for model trains) sought a copyright infringement claim when its competitor, Katzer, incorporated Jacobsen's open source software into its competing software product. Jacobsen v. Katzer, 535 F.3d 1373, 1376-77 (Fed. Cir. 2008). In this case, Jacobsen sought a copyright infringement claim for the procedural advantages of a presumption of irreparable harm which is a factor for issuing a preliminary injunction as well as statutory damages (17 U.S.C. § 504) and attorney fees (17 U.S.C. § 505). Id. Under the license included with the open source software, Katzer was free to use Jacobsen's software, provided that Katzer include copyright notices and identify Jacobsen as the author and source of the underlying software. Id. Katzer did not include these notices, admitted it copied the open source code, but argued that it had a license to use the software. Id. at 1379. Katzer argued that at best its failure to include the attributions to Jacobsen supported a breach of contract claim. This argument would defeat Jacobsen's motion for a preliminary injunction, because Jacobsen could not prove irreparable harm via breach of contract.[5] Jacobsen argued that Katzer had no license to use the open source software, because a condition of the license grant to the software required Katzer to include the attribution. Katzer won at the district level; Jacobsen appealed. The question presented to the Federal Circuit was, if a licensee fails to include the author's name and identity of the source of the file in a derivative work, does the author's cause of action flow from breach of contract or copyright infringement?

The court determined that the answer depends on the wording of the license. If a condition precedent for downloading or installing the software is including the attribution with any derivative work, the cause of action flows from copyright infringement because the licensee is exceeding the scope of the license (in effect, the licensee does not have a license.) Jacobsen at 1380. Whereas if the license is written in such a way that the licensee covenants or promises to include attribution in the derivative work in exchange for downloading or installing the software, the author's rights flow from contract law.[6] Id.

So in short, to preserve one's right to attribution in open source software, one should carefully state the license to use the software is conditioned upon providing a specifically described attribution. Otherwise, the author may be left with the remedy of pursuing a breach of contract case, which requires the plaintiff to prove lost profits or actual damages, which can be exceedingly difficult for some open source programs.