## Facts

- Robert Jacobsen led development of JMRI’s open-source model railroad software, including “DecoderPro,” distributed under the Artistic License.
- The Artistic License granted rights to copy, modify, and distribute the software only if users complied with specified requirements, including preserving copyright notices and author attribution, referencing the license, identifying the code’s source, and describing modifications.
- Matthew Katzer and Kamind Associates, Inc., developed proprietary competing software (“Decoder Commander”) and incorporated portions of JMRI code and files into their product.
- Katzer/Kamind allegedly failed to comply with the Artistic License’s attribution, notice, source-identification, and change-description requirements while copying and distributing the code.
- Jacobsen sued for copyright infringement (and sought other relief) and moved for a preliminary injunction.
- The district court denied a preliminary injunction, treating the license obligations as contractual covenants rather than copyright conditions and concluding Jacobsen was unlikely to succeed on an infringement theory.

## Issues

1. Whether the Artistic License obligations were conditions limiting the scope of the copyright license, such that violation renders copying and distribution unlicensed and infringing, or merely contractual covenants remediable only in contract.
2. Whether distributing software without a monetary fee precludes the copyright holder from asserting protected economic interests sufficient to support enforcement of non-monetary license terms through copyright infringement remedies.
3. Whether the district court applied an incorrect legal standard in denying preliminary injunctive relief by treating the license as effectively unlimited and the claim as sounding only in contract.

## Decision

- The Federal Circuit reversed the denial of the preliminary injunction and remanded.
- The court held the Artistic License requirements at issue were enforceable copyright conditions that limit the scope of the license grant.
- The court rejected the view that the absence of a license fee defeats the licensor’s economic interests; attribution and disclosure requirements can supply legally cognizable value.
- Because Katzer/Kamind admitted copying and the alleged noncompliance placed their conduct outside the license scope, Jacobsen presented a viable copyright infringement theory.
- The district court’s “unlimited license” characterization reflected legal error in distinguishing license conditions from contractual covenants.

## Legal Principles

- A copyright licensee who violates a condition limiting the scope of the license acts outside the license and may be liable for copyright infringement.
- A term framed as a condition to the grant of permission (using conditional language and tying authorization to compliance) is more likely to be treated as a copyright condition than a mere contractual promise.
- Open-source and no-fee distribution does not negate protectable economic interests; non-monetary terms such as attribution and disclosure of modifications can constitute valuable consideration connected to copyright’s exclusive rights.
- When copying is admitted or shown, the central infringement question becomes whether the copying and distribution were authorized under the license’s conditions.

## Conclusion

The Federal Circuit held that key open-source license obligations in the Artistic License functioned as conditions on the permission to copy, modify, and distribute, so failure to comply can support a copyright infringement claim and related injunctive relief even when the software is licensed without charge.


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