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Jacobsen v. Katzer - 535 F.3d 1373 (Fed. Cir. 2008)


Generally, a copyright owner who grants a nonexclusive license to use his copyrighted material waives his right to sue the licensee for copyright infringement and can sue only for breach of contract. If, however, a license is limited in scope and the licensee acts outside the scope, the licensor can bring an action for copyright infringement. 


Plaintiff Robert Jacobsen (Jacobsen) holds a copyright to computer programming code. He makes that code available for public download from a website without a financial fee pursuant to the Artistic License, an "open source" or public license. Defendants Matthew Katzer and Kamind Associates, Inc. (Katzer/Kamind) develop commercial software products for the model train industry and hobbyists. Jacobsen accused Katzer/Kamind of copying certain materials from Jacobsen's website and incorporating them into one of Katzer/Kamind's software packages without following the terms of the Artistic License. Jacobsen brought an action for copyright infringement and moved for a preliminary injunction. The District Court held that the open source Artistic License created an "intentionally broad" nonexclusive license which was unlimited in scope and thus did not create liability for copyright infringement. On this basis, the District Court denied the motion for a preliminary injunction. Jacobsen appealed.


Were the terms of the artistic license conditions of the copyright license, thus, the district court erred in denying Jacobsen’s motion for a preliminary injunction?




The Court of Appeals for the Federal Circuit held that because the license used the phrase "provided that," it created conditions. The district court interpreted the license to permit a user to modify the material in any way and did not find that any of the "provided that" limitations in the artistic license served to limit this grant. The district court's interpretation of the conditions of the artistic license did not credit the explicit restrictions in the license that governed a downloader's right to modify and distribute the copyrighted work. The copyright owner expressly stated the terms upon which the right to modify and distribute the material depended and invited direct contact if a downloader wished to negotiate other terms. These restrictions were both clear and necessary to accomplish the objectives of the open source licensing collaboration, including economic benefit. It was outside the scope of the artistic license to modify and distribute the copyrighted materials without copyright notices and a tracking of modifications from the original computer files.

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