A fascinating patent infringement case between two software developers has bolstered the status of IP used under open-source deals. The importance of the case may give the impression that it grew from a dispute over a major piece of freeware designed for PCs – but its true beginnings lie in the somewhat modest landscape of model railroads. Its outcome has ensured that open-source licenses are as legally enforceable as conventional ones.

In 2007, North California's District Court heard proceedings in Jacobsen v Katzer. The suit concerned a model train control system patent – US6,530,329 – held by software developer, Matthew Katzer. He alleged that rival engineer Robert Jacobsen had infringed the '329 patent with his DecoderPro tool for model railway operation. Jacobsen countersued, alleging that the source code of Katzer's system was, in fact, based largely on DecoderPro, which Jacobsen distributed under the well-known open-source pact, Artistic License. By steering the litigation into the realm of copyright infringement, Jacobsen sought to invalidate Katzer's patent.

The open-source community greeted the District Court's decision with dismay. '[Jacobsen] claimed that, by modifying the software, [Katzer] had exceeded the scope of the license and therefore infringed the copyright,' said the court. 'However, the … license explicitly gives the users of the material, any member of the public, the right to use and distribute the [material] in a more-or-less customary fashion, plus the right to make reasonable accommodations. The scope of the nonexclusive license is, therefore, intentionally broad.' Open-source developers felt exposed by the ruling, as it appeared to shut down the injunctive avenues they would typically pursue over license violations.

In proceedings at the Court of Appeals for the Federal Circuit (CAFC), Jacobsen sought a reversal of the District Court's ruling based on a review of the language and terminology set out in the Artistic License agreement. This month, the CAFC held that the District Court's interpretation of the Artistic License text did not 'credit the explicit restrictions in the license that govern a downloader's right to modify and distribute the copyrighted work.' It also pointed out that the agreement 'expressly stated' conditions on which the right to modify and distribute software depended, and amply provided for further negotiation. In a rebuttal of the District Court's view, those conditions were described as 'clear and necessary'.

Long-time freeware advocate, Lawrence Lessig, hailed the fresh ruling. 'The Court has held that free licenses such as the CC licenses set conditions, rather than covenants, on the use of copyrighted work,' he said. 'When you violate the condition, the license disappears, meaning you're simply a copyright infringer. Put precisely, whether or not they are also contracts, they are copyright licenses which expire if you fail to abide by the terms of the license.'

Lawyer and IP observer, Scott F Pearce, agrees: 'I like the appellate court's decision,' he said. 'Everybody who creates intellectual property should have the right to decide the extent to which that property can be used. If you are one of those creators, make sure your open source software license is clear and understandable.'

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