Westermeier on The Non-Assignability of Open Source Software Licenses

Westermeier on The Non-Assignability of Open Source Software Licenses

Open source software licenses are copyright licenses. The open source software is copyrightable subject matter, and the open source license specifies the extent to which "copying" is permitted and under what terms and conditions. In this Analysis, Jay Westermeier, of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, discusses the non-assignability of open source licenses and strategies related to their assignment. He writes:

The Jacobsen Case

     In 2008, the Federal Circuit issued a ruling in Jacobsen v. Katzer, 2008 U.S. App. LEXIS 17161 (Fed. Cir. August 13, 2008), with respect to the Artistic Open Source License. The Federal Circuit found that the Artistic License is a conditional copyright license and that the terms of the Artistic License are enforceable copyright conditions. While the Jacobsen decision concerns the Artistic License the ruling relates to open source licenses generally. As part of the rationale for its holding, the Federal Circuit emphasized that copyright holders who engage in open source licensing have the right to control the modification and distribution of copyrighted materials and that the restrictions set forth in open source licenses might be rendered meaningless unless the copyright holder has the right to enforce the license through injunctive relief. The fact that open source licenses are copyright licenses raises a number of significant issues.

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     Copyright licenses are not assignable without the consent of the copyright owner. This rule was recently stressed in Cincom Systems, Inc. v. Novelis Corp., 581 F.3d 431, 437 (6th Cir. 2009). In the Cincom case, the Sixth Circuit discussed the general rule regarding assignability in the context of intellectual property. In particular, the Sixth Circuit noted that intellectual property licenses are presumed to be nonassignable and nontransferable in the absence of "express provisions to the contrary." Where the license agreement is silent on its assignability, the license agreement must be construed consistent with Federal copyright law and policy prohibiting unauthorized transfers in the absence of express authorization.

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