The plaintiff in this case is the manager of an open source software project whose code was improperly used by the defendant in a commercial software product that did not comply with the plaintiff’s license.  But when the plaintiff brought an action for copyright infringement and moved for a preliminary injunction, the defendant argued that by releasing his code under an open source license the plaintiff waived his right to sue for copyright infringement and could now only sue for breach of contract under the license.  The defendants relied on language from Sun Microsystems v. Microsoft Corp.² that limited the rights of copyright owners to sue licensees for copyright infringement.  The problem here is that the defendant — and the lower court — seems to have misunderstood an important element of how a license works.

When a copyright owner issues a nonexclusive license to a licensee, he grants the licensee the rights to use the work for some purpose.  Here, the plaintiff wanted to ensure that his work remains available to the public in source code form so that anyone can edit and improve upon his work.  That’s why he chose to release the software under an open source license rather than some other kind.  In doing this, the plaintiff limited the scope of the license he granted the defendant as an end-user, and the defendant exceeded that scope.  Legally, this means that by using the plaintiff’s code in a way that was repugnant to the open source license, the defendant’s use was not a licensed use at all.

Consequently, the central issue in this case was whether the relevant requirements in the license were conditions for the license to be valid or merely covenants to which the receiver of source code contractually agreed.  A breach of a condition points toward copyright infringement liability because conditional language defines the scope of a contract.  On the other hand, promissory language merely serves to create covenants that are actionable only in contract law.³  Luckily for the plaintiff, the appellate court seems to have had an easy time finding that the relevant language in the license was conditional in nature.  Provisions such as “the intent of this document is to state the conditions under which [the program] may be copied” and that rights are granted “provided that” certain conditions are met weighed heavily in favor of the plaintiff in this case.  This should serve as an important reminder to anyone drafting a license agreement who wants to preserve his client’s ability to sue for copyright infringement.

Practical matters aside, one of the best things about this case is that the court reaffirmed that “copyright holders who engage in open source licensing have the right to control the modification and distribution of copyrighted material.”  All too often people seem to confuse “open source” with “public domain” when in fact they are very different.  In fact, open source relies heavily upon copyright law to exact its restrictions.  The peculiar thing about open source is that, while traditional software uses copyright as an offensive tool to thwart pirates, the copyleft movement uses the same body of law as a defensive shield to ensure that its work remains freely available and modifiable.

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1. Full text available at http://www.cafc.uscourts.gov/opinions/08-1001.pdf.
2. 188 F.3d 1115 (9th Cir. 1999).
3. Graham v. James, 144 F.3d 229, 236-37 (2d Cir. 1998).