April 2009

"Open source software relies upon copyright law: both its protections, and exceptions."

David Fewer, CIPPIC

The University of Ottawa, Faculty of Law is Canada's premiere legal program in law and technology. The Torys Technology Law Speaker Series brings prominent speakers from around the world to discuss current topics in law and technology.

A new approach to open source software (OSS) was presented to students and faculty at the University of Ottawa on March 11, 2009. Michael Madison, Associate Dean for Research and Professor of Law at the University of Pittsburgh School of Law, presented "Open Source Licenses and the Boundaries of Knowledge Production". Prof. Madison spent time outlining and answering questions on a novel interpretation of copyright in the age of OSS. Using historical examples, he called for the courts to incorporate a "spatial framework" to deal with open source licenses. His approach was particularly relevant and timely in light of a recent opinion from the US Court of Appeals for the Federal Circuit, Jacobsen v. Katzer.

Lessons Learned from Jacobsen v. Katzer

The presentation began with a detailed case history in the fight between Robert Jacobsen, manager of an OSS project hosted on SourceForge called the Java Model Railroad Interface (JMRI), and Matthew Katzer and Kamind Associates, Inc. who collectively develop commercial software products for the model train industry. Prof. Jacobsen, among other things, sought a declaration from the courts recognizing that Mr. Katzer's use of the JRMI software was in violation of the open source license offered by the project. A preliminary injunction was then sought under copyright infringement. The appellate court decision held that the Artistic License granted by the JMRI to users of the model train software, and, more generally, OSS licenses, are enforceable. These licenses also set conditions, rather than merely covenants, regarding the use of the copyrighted work. As conditions, a breach of the license may terminate the contract, allowing the copyright holder to sue for infringement.

Although the Court of Appeal ultimately remanded the case back to the district court, two important principles were set forth in the judgment. First, the decision recognized that work can still be protected by copyright even when given away for free. A breach in the conditions in the license makes a user susceptible to copyright infringement as he or she can no longer rely on the license against such claims. Secondly, the court took a purposive approach in legitimizing the nature of the open source collective. It recognized that the OSS movement's growth flowed from the sense of community and credit one gets through contribution and not from common notions of monetary gain. According to the court, "[t]hese restrictions were both clear and necessary to accomplish the objectives of the open source licensing collaboration."

In drawing attention to Jacobsen, Prof. Madison noted that the court's opinion was neither novel nor new. He used a number of historical examples to illustrate how courts have been inconsistent, though tending towards not upholding restraints, in deciding whether "the covenant runs with the code." He used half a dozen examples where "equitable servitudes on chattel" strive to create an obligation to either do something or refrain from doing something through simple possession of the object. These equitable servitudes try to go beyond mere contract law by stating that the property right in an object is constrained by the obligation attached. In the case of Jacobsen, a condition attached by the Artistic license was attribution to the JRMI. According to the examples cited in the US, a "single use" stamp on a cotton tie was deemed enforceable, but a stamp of "not for resale" on a record/CD/blue-ray disc was not.

In bringing up these examples, Prof. Madison sought to highlight the special, and often unpredictable, arena where OSS exists. There is no single universally accepted criterion for when a covenant becomes a condition. Sometimes it is based on patent law, other times on copyright, customary use or practice. This incongruity and confusion in determining an object's status is exposed in the alternate decisions from the trial and appeal court in Jacobsen. In remanding the case and sending it back to the lower court, the appeal court recognized that a condition such as the attribution guarantee in the Artistic License was enforceable on the license holder.

Licensing in a Spatial Framework

Prof. Madison believes it is time for the courts to recognize a new framework for this type of litigation. Instead of using a linear temporal approach to decide if the equitable servitude meets certain criteria or fits within a certain box, a court should base its decision on the purpose of the introduced limitation. Instead of relying on the structure or trying to massage the servitude into an "if-then narrative", Prof. Madison believes the court should take a more abstract approach in applying a spatial framework that looks to the purpose of the condition or license. OSS relies on copyright and the conditions set forth in the licensing agreement are necessary to uphold the open source paradigm. In order for users to contribute code and not incorporate openly accessible software into their own projects free of payment or attribution, OSS projects must turn to copyright law. Although the conditions may not be economic, they are vital in order to encourage and maintain the integrity of the social alliance.

While open source licenses can fit into the well-known temporal framework, Prof. Madison suggests that recognizing a spatial framework is better suited. As recognized by the appellate court in Jacobsen, the license utilized in open source projects enables open source users to come together from all over the world. These communities utilize the license to encourage different models of creation as well as different types of consumption, reuse, and development. Open source flourishes upon these ideals.

Prof. Madison states that a spatial approach in recognizing the importance of the open source licenses better reflects the community's goals. Such an approach allows open source users to have better recourse against infringers. Potential remedies would also be affected. Normally, courts are very reluctant to grant non-economic relief. Although it may create problems in other areas, Prof. Madison believes a spatial framework would find courts more susceptible to injunctions that recognize the non-economic importance of open source licenses.

Finally, Prof. Madison discussed the spatial model finding more traction in open source licensing when acting as the proverbial shield rather than sword. He cited the GPLv3 example of license termination when a user applies to patent a project incorporating open source code. In such situations, the GPLv3 explicitly terminates the user's license and makes him or her liable for copyright infringement. Such a defensive strategy protects the open source community from claims of patent infringement and explicitly uses the spatial metaphor to set up a protective zone around the open source project.


Prof. Madison's approach is still being developed and increased discourse and reflection will invariably occur as open source licenses are further utilized and tested by courts. Whether or not a spatial model takes hold in a post-Jacobsen world is unknown, but open source users should take heart that the US appellate court upheld the enforceability of OSS licenses and the importance of copyright to building OSS communities.

Recommended Resources

Michael Madison's Law and Tech Blog

Law and Technology Program at the University of Ottawa

Video of Lecture

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