The US case of Jacobsen v Katzer and Kamind Associates, Inc. (535 F.3d 1373 (Fed. Cir. 2008)) was heard by the US Court of Appeals and settled in February 2010 in favour of the licensor, Mr Jacobsen. This case is of particular importance as it addressed the issue of whether the General Public Licence (GPL), the licence accounting for currently around half the Open Source Software (OSS) in use, is enforceable and, if so, if a breach of the licence terms is a breach of contract or copyright infringement. The differences in the remedies available for these offences made this case of considerable interest. At the time of writing, there is no UK case law on this issue.
How would Jacobsen v Katzer be considered by the UK courts?
US: Jacobsen v Katzer
Robert Jacobsen developed and managed software which enabled model-railroad enthusiasts to download “DecoderPro”, software files for programming the decoder chips that control model trains. DecoderPro was downloadable free of charge but subject to copyright notices and an OSS Artistic Licence.
In essence the DecoderPro OSS Artistic License granted the user the right to copy, modify and distribute the software provided he or she inserted a notice in each modified file stating how and when the file was changed. It also requires the user to either: make modifications freely available; only use the modified package within the user’s corporation or organisation; rename any non-standard executables and provide a separate manual page stating how it differs from the Standard Version; or make other distribution arrangements with the copyright holder.
Matthew Katzer and Kamind Associates, Inc developed and managed the competing software product “Decoder Commander”. The developers of Decoder Commander downloaded the definition files from DecoderPro and used portions of these in their product. The use of these definition files did not comply with the terms of the OSS Artistic License and Mr Jacobsen issued proceedings against Mr Katzer.
The US District Court (Northern District of California) found at an interim hearing that Mr Katzer, as licensee, had breached his obligations under the OSS licence giving rise to a claim for breach of contract. This decision caused much controversy in the US OSS community which had anticipated a claim for copyright infringement would be the more appropriate analysis.
The decision was appealed and the US Court of Appeals for the Federal Circuit vacated the District Court’s decision, finding that Mr Katzer’s obligations as licensee were conditions limiting the scope of the licence, rather than independent contractual covenants and Mr Katzer’s failure to comply with these conditions gave rise to an action for copyright infringement. The case settled in February 2010 with a payment of $100,000 to Mr Jacobsen and a permanent injunction preventing Mr Katzer from copying or modifying the software in question.
UK: Contract or Copyright?
If Jacobsen v Katzer had been considered by the UK courts, the finding is likely to have been more in line with the US District Court decision than that of the Court of Appeals. The principles of UK contract law would mean that it is likely the terms of the Artistic Licence would have been deemed contractual terms giving rise to a claim for breach of contract, rather than conditions giving rise to a breach of copyright, as finally decided in the USA.
UK contract law provides that for a contract to exist there must be an offer, acceptance, consideration and the intention to create legal relations. Contract terms must also be sufficiently drawn to the attention of the contracting party (Thornton v Shoe Lane Parking  2 QB 163) and be within the ‘reasonable expectation of the parties’ (Equitable Life Assurance Society v Hyman  1 AC 408). The difficulty in an OSS licence agreement is there does not appear to be any consideration by the licensor. However, an analogy can be drawn with the old ‘free pass’ cases where the licensor’s use of the software, for example the accessing or uploading of the software, would be sufficient to constitute an enforceable contract by way of part performance of the obligations under the GPL.
If the above requirements for a contract are not disputed then it is probable that the UK courts would have found for Mr Jacobsen but for breach of contract, enabling him to recover a remedy in damages. The ease with which any such damages could be quantified is questionable but would be limited to those damages within the ‘contemplation of the parties’ (Hadley v Baxendale  9 Exch 341) at the time the contract was created. Unlike the settlement in Jacobsen v Katzer, the UK courts could not have awarded an injunction against the licensor for a finding of breach of contract, a remedy only available for the tortuous offence of copyright infringement, but could have made an order for specific performance, compelling the licensor to comply with the relevant licence terms.
Europe’s approach to the GPL enforcement
Although the UK courts have yet to hear an OSS GPL case, there has been much activity in Europe. Germany, primarily the Munich District court, has heard many cases on the enforcement of GPL since 2004. It seems the approach of the German courts has been an interesting mix of the US rationale and the likely finding of a UK court. Under German law, failure to comply with the terms of a GPL licence constitutes a breach of contract but also a copyright infringement, agreeing with the decision in Jacobsen v Katzer but extending this to enable GPL licensors to rely upon all enforcement provisions under the Directive 2004/48/EC.
The Paris Court of Appeal has also looked at the issue of GPL enforcement. In the recently decided ‘Paris GPL case’, the action was brought by AFPA (Association for Professional Education of Adults) against Edu4 (a company) who were to provide software solutions to AFPA. The court found against Edu4, who violated the terms of the GNU GPL when it distributed binary copies of remote desktop access software but denied users access to the corresponding source code. However, the importance with which this case is regarded in relation to the implications for OSS licenses has attracted criticism. Some allege that the matter was a mere contractual dispute between the parties and did not involve the GPL licence as such, therefore the court did not specifically address the enforceability of the GPL Licence.
Interestingly the Paris GPL case was brought by a user of the software, not by a copyright holder. Loic Dachary, president of the Free Software Foundation (FSF) France said:
‘It’s a commonly held belief that only the copyright holder of a work can enforce the license’s terms – but that’s not true in France. People who receive software under the GNU GPL can also request compliance since the license grants them the rights from the authors.’
Decisions from Europe and the US have strengthened the licensor’s hand in the enforceability of OSS licence terms. It appears that the rationales applied by the courts differ greatly in construction and remedies but the overall outcomes are in line. OSS licence terms are enforceable and are recognised by the courts.
Despite the popularity of OSS, and in particular the GPL, it seems surprising there is not more case law available both in Europe and the US and even more unexpected is the lack of UK authority on the matter. This trend may be reflective of the organisations and task forces set up to assist the OSS community to secure settlements outside of court and enforce licence terms to protect the spirit of OSS.
Clive Thorne is a Partner and Nicole Mellors is an Associate at Reynolds Porter Chamberlain LLP.