USCA Federal Circuit, August 13, 2008

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The Court of Appeals for the Federal Circuit determined that a copyright holder who makes a work available to the public via an “open source” license may sue a user of that copyrighted work for copyright infringement if the user does not comply with the conditions of the open source license.

The plaintiff owns the copyright to software that allows model railroad enthusiasts to use their computers to program the decoder chips that control model trains. The plaintiff provides his software on a web site for free, pursuant to an Artistic License. The terms of the license allow a user to make modifications to the program and distribute the program provided that the user follows the restrictive terms of the Artistic License, which include the need for any modification of plaintiff’s software to contain certain disclosures and explanation of changes.

The plaintiff brought this action against the defendants who offer a competing software product, accusing them of copying certain materials from his website and incorporating them into their software package without following the restrictive terms of the Artistic License.

The district court ruled that the alleged violation of the open source license could only be challenged as a breach of contract. However, the Federal Circuit disagreed and explained that “copyright holders who engage in open source licensing have the right to control the modification and distribution of copyrighted material” and that terms of plaintiff’s Artistic License were conditions of, and not merely covenants to, the copyright license, and therefore a violation of those conditions would be a violation of copyright law and not just a breach of the license. The court overturned the district court’s ruling that the failure to attribute the source of the work merely constituted a violation of the terms of the open source license, which can only be enforced in an action for breach of contract (and therefore could not be the subject of a preliminary injunction).

The court further explained that the choice of exact consideration in the form of compliance with the open source requirements of the Artistic License, rather than as a dollar-denominated fee, is entitled to no less legal recognition than a copyright holder who does not make his or her copyright available to the public free of charge. Thus, the court held that plaintiff could enforce the open source copyright license to control the future distribution and modification of his programming code and that defendants’ incorporation of the programming code without complying with the specific requirements of the Artistic License was outside the scope of the license.

Since the plaintiff already made a prima facie case of copyright infringement (the parties did not dispute that the plaintiff was the copyright holder and that the defendants copied, modified and distributed part of the plaintiff’s software), the Federal Circuit vacated the district court’s decision and remanded the case to the district court to determine whether the plaintiff is entitled to injunctive relief.