Open Source Software (OSS) – Are they protected?

What is “Open Source” License?

Public/artistic licenses, more commonly known as “open source” licenses, are used by artists, authors, educators, software developers, and scientists who wish to create collaborative projects and to dedicate certain works to the public. Several types of public licenses have been designed to provide creators of copyrighted materials a means to protect and control their copyrights.For instance ‘Creative Commons’, provides free copyright licenses to allow creators to dedicate their works to the public or to license certain uses of their works while keeping some rights reserved.


  • Massachusetts Institute of Technology (“MIT”) uses a Creative Commons public license for an OpenCourseWare project that licenses all 1800 MIT courses.
  • Other public licenses support the GNU/Linux operating system, the Perl programming language, the Apache web server programs, the Firefox web browser, and a collaborative web-based encyclopedia called Wikipedia, Android, VLC Media Player, etc.


  • Through creative collaboration, software programs can often be written and debugged faster and at lower cost than if the copyright holder were required to do all of the work independently;
  • In consideration for this collaborative work, the copyright holder permits users to copy, modify and distribute the software code subject to conditions that serve to protect downstream users and to keep the code accessible;
  • By requiring that users copy and restate the license and attribution information, a copyright holder can ensure that
    recipients of the redistributed computer code know the identity of the owner as well as the scope of the license granted by the original owner;
  • OSS requires the changes to the computer code to be tracked so that downstream users know what part of the computer code is the original code created by the copyright holder and what part has been newly added or altered by another collaborator;
  • Program creators may generate market share for their programs by providing certain components free of charge. Similarly, a programmer or company may increase its national or international reputation by incubating open source projects;
  • Improvement to a product can come rapidly and free of charge from an expert not even known to the copyright holder.

Therefore, the economic benefit inherent in public licenses, even where profit is not immediate, was expressly recognized by the Eleventh Circuit Court of U.S. in Planetary Motion, Inc. vs. Techsplosion, Inc., 261 F.3d 1188, 1200 (11th Cir. 2001)

Protections Available:

  • Copyright Protection: Most Effective
  • Moral Rights: Countries, where moral rights of the authors are legally recognized, violation of open source licensing terms would constitute a violation of the author’s moral rights.
  • Trade Secret: Disadvantages are insufficient protection, data security and user’s privacy risks, fewer incentives to developers. 
  • Patent Protection: Not very effective and popular due to several inherent difficulties and delay in implementing patent sharing.
  • osi-certified-120x100Trade Mark Protection: Since the term “open source” is descriptive, it can’t be protected as a trademark. However, since people need a reliable way of knowing whether a piece of software really is open source, OSI has registered a certification mark, OSI Certified. OSI maintains a list of open source licenses that conform to the Open Source Definition and have been approved by OSI through public scrutiny.

Key Issue:  

Ability of a copyright holder to dedicate certain work to free public use and yet enforce an open source “copyright license” to control the future distribution and modification of that work.

Landmark Judgments: 

  • Robert Jacobsen vs. Matthew Katzer, and Kamind Associates, Inc., 535 F.3d 1373 (Fed. Cir. 2008) 
  • Caldera Sys, Inc. v Int’l Bus Mach’s Corp. (D.Utah 2003) (No. 03-CV-0294) 

Robert Jacobsen vs. Matthew Katzer, and Kamind Associates, Inc.

Brief Facts:

Jacobsen held copyright to computer programming code which he made for public download from a website for free, pursuant to an “open source” or public/artistic license. Matthew Katzer and Kamind Associates, Inc. (“Appellants“) developed commercial software products for the model train industry and hobbyists. Jacobsen accused the Appellants of copying certain materials from Jacobsen’s website and incorporating them into one of their software packages without following the terms of the Artistic License. Jacobsen brought an action for copyright infringement and moved for a preliminary injunction. 

It was admitted that Jacobsen was the holder of a copyright for certain materials distributed through his website. The Appellants also admitted that certain elements of the DecoderPro software were copied, modified, and distributed as part of the Decoder Commander software (admitted by the appellants).

District Court:

The open source Artistic License created an “intentionally broad” nonexclusive license which was unlimited in scope. The alleged act of the appellant may have constituted a breach of the nonexclusive license, but it does not create liability for copyright infringement where it would not otherwise exist. 

The District Court found that Jacobsen had a cause of action only for breach of contract, rather than an action for copyright infringement based on a breach of the conditions of the Artistic License. Because a breach of contract creates no presumption of irreparable harm, the District Court denied the motion for a preliminary injunction.



  • They cannot be liable for copyright infringement because they had a license to use the material.
  • The terms of the Artistic License not limit the scope of the license and are merely covenants providing contractual terms for the use of the materials, and that his violation of them is neither compensable in damages nor subject to injunctive relief;
  • Jacobsen’s copyright gave him no economic rights because he made his computer code available to the public free of charge.
  • Copyright law does not recognize a cause of action for non-economic rights.

Jacob: The terms of the Artistic License define the scope of the license and that any use outside of these restrictions is copyright infringement.

Issue: Whether the use by Appellants was outside the scope of the license, i.e. whether the terms of the Artistic License are conditions of, or merely covenants to, the copyright license.

Major Observations:

Usually “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. Thus, if the terms of the Artistic License allegedly violated are both covenants and conditions, they may serve to limit the scope of the license and are governed by copyright law. If they are merely covenants, by contrast, they are governed by contract law. To sum up, whether breach of license is actionable as copyright infringement or breach of contract turns on whether provision breached is condition of the license, or mere covenant.

The interpretation of the of the conditions of the Artistic License by the District Court did not credit the explicit restrictions in the license that governed a downloader’s right to modify and distribute the copyrighted work. Jacob, the copyright holder, here 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. Moreover, the District Court did
not address the other restrictions of the license.

Copyright holders who engage in open source licensing have the right to control the modification and distribution of copyrighted material.  The unauthorized editing of the underlying work, if proven, would constitute an infringement of the copyright in that work similar to any other use of a work that exceeded the license granted by the proprietor of the copyright.

Copyright licenses are designed to support the right to exclude.The choice to exact consideration in the form of compliance with the open source requirements of disclosure and explanation of changes, rather than as a fee, is entitled to no less legal recognition. Since a calculation of damages is inherently speculative, these types of license restrictions well be rendered meaningless in the absence of any enforceability through injunctive relief.

A copyright holder can grant the right to make certain modifications, yet retain his right to prevent other modifications. In fact, such a goal is exactly the purpose of adding conditions to a license grant. The Artistic License, like many other common copyright licenses, requires that any copies that are distributed contain the copyright notices and the COPYING file. 

It is 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. If a downloader does not assent to these conditions stated in the COPYING file, he is instructed to “make other arrangements with the Copyright Holder.” In this case, the Appellants did not make any such “other arrangements.”

The attribution and modification transparency requirements directly serve to drive traffic to the open source incubation page and to inform downstream users of the project, which is a significant economic goal of the copyright holder that the law will enforce.

Conclusion: Having determined that the terms of the Artistic License are enforceable copyright conditions, the Court vacated the judgment of the District Court and remanded the matter for further proceedings consistent with the above observations. 

Full Text here

Author: Vivek Verma    |    Image from here

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