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Victoria Hall, Esq.

Attorney for Robert Jacobsen | Jacobsen v. Katzer, 535 F.3d 1373

Intellirights again thanks Victoria Hall for the opportunity to discuss her work on Jacobsen v. Katzer, 535 F.3d 1373 (Fed. Cir. 2008). In this case, her client, Robert Jacobsen, manager of the Java Model Railroad Interface, had sued defendants for infringing the copyright in his model train software by using the software in violation of the express conditions in the open source license governing its use. As Victoria Hall points out, Jacobsen v. Katzer is an important case because it holds that a copyright owner may dedicate for free public use but still enforce an open source license to control future distribution and modification of that work.

In Jacobsen v. Katzer, the Federal Circuit found that the open source license here allowed anyone to download and use the copyrighted software for free, but subject to certain enforceable limitations. In this case, the limitations required a user to agree to license terms and to provide attribution. To the appellate court, a key distinction was that these limitations were conditions, not mere covenants, and that violation of these conditions meant that the user or copier no longer had a license to copy the software and was engaging in copyright infringement. As Victoria Hall notes, a finding of copyright infringement importantly allows a plaintiff to seek injunctive relief, statutory damages, and attorneys’ fees. Conversely, as Hall also points out, if the license terms were only found to be covenants, breach of those covenants would provide Jacobsen with “uncertain damages, no injunction and no attorneys’ fees.”

In finding that the disputed license terms in Jacobsen v. Katzer were conditions, the Federal Circuit explained:

The Artistic License states on its face that the document creates conditions: The intent of this document is to state the conditions under which a Package may be copied. … The Artistic License also uses the traditional language of conditions by noting that the rights to copy, modify, and distribute are granted “provided that” the conditions are met. Under California contract law, “provided that” typically denotes a condition.…

The conditions set forth in the Artistic License are vital to enable the copyright holder to retain the ability to benefit from the work of downstream users. By requiring that users who modify or distribute the copyrighted material retain the reference to the original source files, downstream users are directed to Jacobsen’s website.…

Copyright holders who engage in open source licensing have the right to control the modification and distribution of copyrighted material.

In response to the Jacobsen v. Katzer ruling, Creative Commons founder Lawrence Lessig said, “this is huge.”

To learn more about Victoria Hall and her intellectual property law practice, visit

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