Photo Attorney

Aug 15, 2008

The Importance of Conditions In Your Free License

Photographers often allow others to use their photos without charge. They usually require a photo credit for marketing purposes or other restrictions. But if the user doesn't abide by those requirements, is it copyright infringement?

Such was the issue in the recent case of Jacobsen v. Katzer. There, Jacobsen had developed copyrighted software code for model trains but permitted others to use the software. Jacobsen's "open source" code included an "Artistic License" that required users of the software to include items such as the authors' names and Jacobsen's copyright notices. Katzer admitted that it had not followed these terms when incorporating Jacobsen's code into its own.

Jacobsen claimed that Katzer's use of the software without abiding by the terms of the License constituted copyright infringement. Katzer asserted that because it had not paid for the License and only breached "covenants" of the License, it could be liable only for breach of contract, not copyright infringement, likely resulting in fewer damages.

The 9th Circuit sided with Katzer. On appeal, the Court of Appeals for the Federal Circuit disagreed. The appellate court held that the terms of the Artistic License were conditions; without following them, Katzer had no right to use the software code. The Court explained:

The Artistic License states on its face that the document creates conditions: "The intent of this document is to state the conditions under which a Package may be copied." (Emphasis added.) The Artistic License also uses the traditional language of conditions by noting that the rights to copy, modify, and distribute are granted "provided that" the conditions are met. Under California contract law, "provided that" typically denotes a condition.
and
Copyright holders who engage in open source licensing have the right to control the modification and distribution of copyrighted material. . . . Copyright licenses are designed to support the right to exclude; money damages alone do not support or enforce that right. The choice to exact consideration in the form of compliance with the open source requirements of disclosure and explanation of changes rather than as a dollar-denominated fee, is entitled to no less legal recognition.

Of note, the Creative Commons Corp. filed an amicus brief to support Jacobsen's position because a negative ruling would directly affect CC licensing.

What can we learn from this? Always make the use of your photos conditioned on following your terms. Further, it's always best to put your license in writing, even if it's only an email, so a court will know exactly what were the terms and conditions of your license. Check with your attorney to make sure it's all done right.

HT to Likelihood of Confusion.