Robert Gomulkiewicz, Professor of Law and Co-Director of the Intellectual Property Law & Policy Graduate Program at the University of Washington School of Law, recently posted a new paper on open source licensing and Jacobsen v. Katzer.

Professor Comulkiewicz began his paper by outlining four lessons that were reinforced in Jacobsen:

1. “[I]f a licensee fails to abide by a condition placed on a license grant, then he or she infringes the licensor’s copyright.  In other words, ignoring the condition not only breaches a contract, it infringes a copyright.”;
2. “[C]ourts can grant injunctive relief for breaches of open source licenses. As the Federal Circuit highlighted in Jacobsen, injunctive relief is particularly critical in open source licensing because the standard remedy for breach of contract, monetary damages, normally is beside the point.”
3. “[L]icense provisions fall into two categories: a pure contractual
   covenant or a license condition. . .[A] breach of a license condition covenant can trigger copyright infringement, not merely breach of contract. Pure contractual covenants . . . only can trigger breach of contract. Thus, the distinction is vital because of the teaching of lesson two about the importance of injunctive relief in open source licensing.”
4. “[C]ontract law applies to open source licenses.”

Professor Comulkiewicz then addressed two issues, or complexities, that wasn’t addressed in the opinion.  First Comulkiewicz touched on whether and how much the intent of the drafters should matter when interpreting a contract/license.  This remains an issue because, oftentimes, a party that uses a form in open source software is unaware of the original drafters intent.  Comulkiewicz argued that “[t]o the extent it is relevant, the form drafter’s intent should not be dispositive. The licensor or licensee may not be well schooled in the form drafter’s interpretation of the finer points of the license form and, even if they are, may not agree with it.”

Secondly, in the main push of the article, Professor Comulkiewicz examined “to what extent can” and should license drafters be able to “choose whether a particular license provision is a pure covenant or a license condition.”  Comulkiewicz analyzed two competing views on whether courts should consider deeper copyright policy issues when evaluating whether to allow parties to “manipulat[e] the distinction” between contracts and licenses.

View 1: Conditions Must Touch on Copyrights:  Under the first view on the issue, “only a condition touching on the exclusive rights under copyright qualifies as a license condition;” e.g. “Copying onto what? Using what to make copies? How many copies? What type of copies? Who can make copies?” For a condition on the right to distribute, the condition should relate to issues such as: Where (and where not)? When? To whom? By whom? For how long? For a condition on the right to make derivative works, the condition should relate to: What type of works? Who can make derivatives?”

Although Professor Comulkiewicz acknowledged that this view “checks the power of copyright licensors,” he concluded that this method of interpretation would inhibit the “useful business model innovation” “characterized by open source licensing.”

View 2: Parties can “freely choose” whether a provision is a license condition or a pure covenant.

Professor Comulkiewicz advocated the second view, that parties should be able to “freely choose” whether a provision is a license condition (license) or pure covenant (contract).  Comulkiewicz noted that “[a]s open source licensing so nicely illustrate[], licensing fosters flexibility and choice in both the creation and distribution of works. If someone can right-size a license, then that person is more likely to grant permission than to hold it back.”

However, Professor Comulkiewicz also cautioned that courts need to play a critical role when evaluating whether to grant an injunction for breach of a license condition.

Exercising prudence will safeguard against the effects of a licensor’s attempt to improperly expand copyright power via proliferation of license conditions.  For example, the farther a license condition strays from touching on an exclusive copyright and the less it contributes positively to the underlying purposes of copyright law, the less compelling the case may be for emergency.