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Jacobsen v. Katzer

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This article is about the United States litigation over the Artistic License and the JMRI model railroad software. For the conditions that open-source licences attach to distribution, see Open-source software licensing. It is not legal advice.

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Jacobsen v. Katzer is a United States copyright case about software released under the Artistic License, an open-source licence. In an opinion issued on 2008-08-13, the United States Court of Appeals for the Federal Circuit held that the Artistic License’s requirements on attribution and on marking modifications were conditions that limited the scope of the licence, not merely contractual promises, so that a person who copied and distributed the code without meeting them could be liable for copyright infringement.[1] Later federal courts deciding GPL cases have relied on or distinguished it.[8][9]

Background

Robert Jacobsen managed an open-source software group called Java Model Railroad Interface (JMRI). Through the work of many participants, JMRI created DecoderPro, an application that lets model railroad enthusiasts program the decoder chips that control model trains. The files were available for free download from SourceForge, contained copyright notices, and referred users to a COPYING file setting out the Artistic License.[1]

Matthew Katzer and Kamind Associates, Inc. (doing business as KAM Industries) developed commercial software for the model train industry, including a competing product called Decoder Commander.[1] The district court later described Katzer as the chief executive officer and chairman of KAM, and Jacobsen as working for Lawrence Berkeley National Laboratory, a professor of physics, and a leading member of the JMRI Project.[4]

The Artistic License granted the right to copy, modify and distribute the package “provided that” the user inserted a prominent notice in each changed file stating how and when it was changed, and did at least one of several things, such as making modifications freely available, using the modified package only within the user’s organisation, renaming non-standard executables, or making other distribution arrangements with the copyright holder.[1]

The dispute

Jacobsen accused Katzer and Kamind of copying decoder definition files from DecoderPro into Decoder Commander without following the Artistic License. According to the Federal Circuit, the Decoder Commander files that used the DecoderPro material did not include the authors’ names, the JMRI copyright notices, references to the COPYING file, an identification of SourceForge or JMRI as the original source, or a description of how the files had been changed. The defendants represented that they had voluntarily ceased all potentially infringing activity.[1]

The litigation also involved a patent held by Katzer. Jacobsen’s complaint sought declaratory judgments that the patent was invalid and not infringed, alongside claims for copyright infringement, violation of the Digital Millennium Copyright Act (DMCA), breach of contract under California law and cybersquatting.[3] The patent claims gave the Federal Circuit, normally a patent court, jurisdiction over the copyright appeal.[1]

Jacobsen moved for a preliminary injunction, arguing that breaching the Artistic License was copyright infringement and that irreparable harm could be presumed. Katzer and Kamind argued that the licence terms were covenants, not conditions, and that their breach was neither compensable in damages nor subject to injunction, on the premise that Jacobsen had no economic rights in code he gave away.[1]

In an order of 2007-08-17, the district court (Judge Jeffrey S. White) held that the Artistic License created an “intentionally broad” nonexclusive licence, that any violation of its conditions “may have constituted a breach of the nonexclusive license” but did not create copyright liability, and that Jacobsen’s claim sounded in contract. Because a breach of contract carries no presumption of irreparable harm, it denied the injunction.[2][1]

Decision or outcome

Federal Circuit, 2008

The Federal Circuit (Chief Judge Michel, Judge Prost, and District Judge Hochberg sitting by designation) vacated and remanded. It framed the question as whether the Artistic License’s terms were conditions of the copyright licence or merely covenants: if a licensee acts outside the scope of a limited licence, the licensor can sue for infringement, whereas breach of an independent covenant is a matter of contract law.[1]

The court held that the terms were conditions. It noted that the licence states on its face that it sets out “the conditions under which a Package may be copied”, and that the grant is made “provided that” the requirements are met, language that under California contract law typically denotes a condition. It held that it is outside the scope of the Artistic License to modify and distribute the materials without copyright notices and a tracking of modifications.[1]

The court also addressed consideration. It stated that the lack of money changing hands in open-source licensing “should not be presumed to mean that there is no economic consideration”, pointing to benefits such as market share, reputation and improvements contributed by others, and held that the attribution and modification-transparency requirements serve economic goals “that the law will enforce”.[1] Because the district court had not made factual findings on likelihood of success or irreparable harm, the Federal Circuit remanded for it to decide the injunction under the correct legal framework.[1]

Remand, 2009

On 2009-01-05 the district court denied Jacobsen’s second motion for a preliminary injunction. It applied the Supreme Court’s intervening decision in Winter v. Natural Resources Defense Council, which no longer allowed irreparable harm to be presumed, and found that Jacobsen had not offered evidence of specific and actual harm or of continuing conduct.[3] In the same order it dismissed the patent declaratory claims as moot and dismissed the breach-of-contract claim with leave to amend, both for failure to plead damages caused by the breach and because, as drafted, the claim alleged violations of “the exact same exclusive federal rights” as the copyright claim and was therefore preempted by the Copyright Act.[3]

On 2009-12-10 the court granted Jacobsen summary judgment on liability, but not damages, for copyright infringement, granted it on the cybersquatting claim and on the defendants’ counterclaim for copyright infringement, and granted in part and denied in part his motion on the DMCA claim.[4]

Settlement, 2010

On 2010-02-22 the district court entered a stipulated permanent injunction. It bars the defendants from reproducing, modifying or distributing “JMRI Material”, defined as expression made available to the public as part of the JMRI project, and from registering JMRI project names such as “DecoderPro” and “PanelPro” as trademarks or domain names.[5] On the same day the Federal Circuit dismissed a second appeal in the case, No. 2009-1221, on the parties’ agreement.[6] The court records cited here do not state any other settlement terms. The district court’s published orders in the case are collected in the United States Courts Opinions collection on GovInfo.[7]

Significance for software licensing and SAM practice

Conditions and covenants. The 2008 opinion turns on how a licence is worded. Terms framed as conditions of the grant (“provided that”) limit the scope of the licence, and use outside that scope can be copyright infringement with copyright remedies; terms read as independent covenants are enforced, if at all, in contract.[1] For software asset management (SAM) and open-source compliance programmes, the case is a reference point for treating notice, attribution and change-marking obligations in open-source licences as part of the permission to distribute, not as optional courtesy.

No fee is not the same as no rights. The court rejected the premise that code given away without charge carries no economic interest the law will protect.[1]

Limits of the ruling. The Federal Circuit did not decide that Jacobsen was entitled to an injunction; on remand the district court refused one for lack of evidence of irreparable harm, and it held the contract claim, as pleaded, preempted.[3] Later courts have treated the preemption ruling as specific to its pleading. In Artifex Software v. Hancom (2017) the court found that the GPL’s obligation to release source code could be an “extra element” that saves a contract claim from preemption, and noted that the argument “was apparently not made” in the 2009 Jacobsen ruling.[9] In Software Freedom Conservancy v. Vizio (2022) the federal court distinguished Jacobsen because the plaintiff there held the copyright and sought copyright-equivalent remedies, whereas SFC sought only delivery of source code.[8]

Jurisdiction. The appeal reached the Federal Circuit only because the complaint included patent claims. The opinion applies Ninth Circuit law on the copyright questions.[1]

Lessons learned

  • Open-source notice requirements are conditions. The Federal Circuit held that the Artistic License’s attribution and change-marking requirements limited the scope of the licence, so distributing modified code without them could be copyright infringement.[1] Open-source compliance reviews should check that notices, attribution and records of changes travel with any redistributed code.
  • Free software is not free of obligations. The court rejected the premise that code given away without charge carries no economic interest the law will protect.[1] Components with no licence fee still need to be inventoried and their terms followed.
  • Wording decides the remedy. Terms framed as conditions of the grant (“provided that”) can support a claim for copyright infringement, while independent covenants are enforced in contract.[1] On remand the court also showed that the licensor must still prove harm to obtain an injunction.[3]

References

  1. Jacobsen v. Katzer, No. 2008-1001 (Fed. Cir. 2008-08-13), opinionUnited States Court of Appeals for the Federal Circuit; reported at 535 F.3d 1373Effective 2008-08-13. Retrieved 2026-09-30.
  2. Jacobsen v. Katzer, No. C 06-01905 JSW (N.D. Cal. 2007-08-17), order on motions including preliminary injunctionUnited States Courts Opinions collection, GovInfoEffective 2007-08-17. Retrieved 2026-09-30.
  3. Jacobsen v. Katzer, No. C 06-01905 JSW (N.D. Cal. 2009-01-05), order on motions to dismiss, motion to strike and second motion for preliminary injunctionDocument 284; reported at 609 F. Supp. 2d 925Effective 2009-01-05. Retrieved 2026-09-30.
  4. Jacobsen v. Katzer, No. C 06-01905 JSW (N.D. Cal. 2009-12-10), order on cross-motions for summary judgmentDocument 395Effective 2009-12-10. Retrieved 2026-09-30.
  5. Jacobsen v. Katzer, No. C 06-01905 JSW (N.D. Cal. 2010-02-22), stipulated permanent injunctionDocument 403Effective 2010-02-22. Retrieved 2026-09-30.
  6. Jacobsen v. Katzer, No. 2009-1221 (Fed. Cir. 2010-02-22), order dismissing appealReported at 449 F. App'x 8; public copy on CourtListenerEffective 2010-02-22. Retrieved 2026-09-30.
  7. Jacobsen v. Katzer et al, 3:06-cv-01905 (N.D. Cal.), court opinions and ordersGovInfo package listing the district court's published opinions and ordersRetrieved 2026-09-30.
  8. Software Freedom Conservancy, Inc. v. Vizio, Inc., No. 8:21-cv-01943-JLS-KES (C.D. Cal. 2022-05-13), order granting motion to remandDocument 30; distinguishes the 2009 Jacobsen preemption rulingEffective 2022-05-13. Retrieved 2026-09-30.
  9. Artifex Software, Inc. v. Hancom, Inc., No. 16-cv-06982-JSC (N.D. Cal. 2017-04-25), order re motion to dismissDocument 32; relies on and distinguishes JacobsenEffective 2017-04-25. Retrieved 2026-09-30.

See also

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