`
`2008-1001
`
`ROBERT JACOBSEN,
`
`Plaintiff-Appellant,
`
`
`v.
`
`MATTHEW KATZER and
`KAMIND ASSOCIATES, INC. (doing business as KAM Industries),
`
`
`Defendants-Appellees.
`
`
`
`
`
`
`
`Victoria K. Hall, Law Office of Victoria K. Hall, of Bethesda, Maryland, argued for
`plaintiff-appellant.
`
`
`
`R. Scott Jerger, Field Jerger LLP, of Portland, Oregon, argued for defendants-
`appellees.
`
`
`
`Anthony T. Falzone, Stanford Law School, Center for Internet and Society, of
`Stanford, California, for amici curiae Creative Commons Corporation, et al. With him on
`the brief was Christopher K. Ridder.
`
`Appealed from: United States District Court for the Northern District of California
`
`Judge Jeffrey S. White
`
`
`
`
`
`
`
`United States Court of Appeals for the Federal Circuit
`2008-1001
`
`
`
`
`
`ROBERT JACOBSEN,
`
`
`Plaintiff-Appellant,
`
`v.
`
`MATTHEW KATZER and
`KAMIND ASSOCIATES, INC. (doing business as KAM Industries),
`
`
`Defendants-Appellees.
`
`
`
`Appeal from the United States District Court for the Northern District of California in
`case no. 06-CV-1905, Judge Jeffrey S. White.
`
`
`__________________________
`
`DECIDED: August 13, 2008
`__________________________
`
`
`
`Before MICHEL, Chief Judge, PROST, Circuit Judge, and HOCHBERG,* District Judge.
`
`HOCHBERG, District Judge.
`
`
`We consider here the ability of a copyright holder to dedicate certain work to free
`
`public use and yet enforce an Aopen source@ copyright license to control the future
`
`distribution and modification of that work. Appellant Robert Jacobsen (AJacobsen@) appeals
`
`from an order denying a motion for preliminary injunction. Jacobsen v. Katzer, No. 06-CV-
`
`01905 JSW, 2007 WL 2358628 (N.D. Cal. Aug. 17, 2007). Jacobsen holds a copyright to
`
`computer programming code. He makes that code available for public download from a
`
`*
`The Honorable Faith S. Hochberg, District Judge, United States District Court
`for the District of New Jersey, sitting by designation.
`
`
`
`
`website without a financial fee pursuant to the Artistic License, an Aopen source@ or public
`
`license.
`
` Appellees Matthew Katzer and Kamind Associates,
`
`Inc. (collectively
`
`AKatzer/Kamind@) develop commercial software products for the model train industry and
`
`hobbyists. Jacobsen accused Katzer/Kamind of copying certain materials from Jacobsen=s
`
`website and incorporating them into one of Katzer/Kamind=s software packages without
`
`following the terms of the Artistic License. Jacobsen brought an action for copyright
`
`infringement and moved for a preliminary injunction.
`
`The District Court held that the open source Artistic License created an Aintentionally
`
`broad@ nonexclusive license which was unlimited in scope and thus did not create liability
`
`for copyright infringement. The District Court reasoned:
`
`The plaintiff claimed that by modifying the software the defendant had
`exceeded the scope of the license and therefore infringed the copyright.
`Here, however, the JMRI Project license provides that a user may copy the
`files verbatim or may otherwise modify the material in any way, including as
`part of a larger, possibly commercial software distribution. The license
`explicitly gives the users of the material, any member of the public, Athe 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. The condition that the
`user insert a prominent notice of attribution does not limit the scope of the
`license. Rather, Defendants’ alleged violation of the conditions of the license
`may have constituted a breach of the nonexclusive license, but does not
`create liability for copyright infringement where it would not otherwise exist.
`
`Jacobsen, 2007 WL 2358628 at *7 (internal citations omitted).
`
`
`On this basis, the District Court denied the motion for a preliminary injunction. We
`
`vacate and remand.
`
`I.
`
`Jacobsen manages an open source software group called Java Model Railroad
`
`Interface (AJMRI@). Through the collective work of many participants, JMRI created a
`
`
`2008-1001
`
` 2
`
`
`
`computer programming application called DecoderPro, which allows model railroad
`
`enthusiasts to use their computers to program the decoder chips that control model trains.
`
`DecoderPro files are available for download and use by the public free of charge from an
`
`open source incubator website called SourceForge; Jacobsen maintains the JMRI site on
`
`SourceForge. The downloadable files contain copyright notices and refer the user to a
`
`ACOPYING@ file, which clearly sets forth the terms of the Artistic License.
`
`Katzer/Kamind offers a competing software product, Decoder Commander, which is
`
`also used to program decoder chips. During development of Decoder Commander, one of
`
`Katzer/Kamind=s predecessors or employees is alleged to have downloaded the decoder
`
`definition files from DecoderPro and used portions of these files as part of the Decoder
`
`Commander software. The Decoder Commander software files that used DecoderPro
`
`definition files did not comply with the terms of the Artistic License. Specifically, the
`
`Decoder Commander software did not include (1) the authors= names, (2) JMRI copyright
`
`notices, (3) references to the COPYING file, (4) an identification of SourceForge or JMRI as
`
`the original source of the definition files, and (5) a description of how the files or computer
`
`code had been changed from the original source code. The Decoder Commander software
`
`also changed various computer file names of DecoderPro files without providing a
`
`reference to the original JMRI files or information on where to get the Standard Version.1
`
`
`1
`Katzer/Kamind represents that all potentially infringing activities using any of
`the disputed material have been voluntarily ceased. The district court held that it could not
`find as a matter of law that Katzer/Kamind=s voluntary termination of allegedly wrongful
`activity renders the motion for preliminary injunction moot because it could not find as a
`matter of law that it is absolutely clear that the alleged behavior could not recur. Jacobsen,
`2007 WL 2358628 at *5. We agree that this matter is not moot. See also Adarand
`Constructors, Inc. v. Slater, 528 U.S. 216, 222 (2000) (AVoluntary cessation of challenged
`conduct moots a case . . . only if it is absolutely clear that the allegedly wrongful behavior
`could not reasonably be expected to recur.@ (emphasis in original)).
`
`2008-1001
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` 3
`
`
`
`Jacobsen moved for a preliminary injunction, arguing that the violation of the terms
`
`of the Artistic License constituted copyright infringement and that, under Ninth Circuit law,
`
`irreparable harm could be presumed in a copyright infringement case. The District Court
`
`reviewed the Artistic License and determined that ADefendants’ alleged violation of the
`
`conditions of the license may have constituted a breach of the nonexclusive license, but
`
`does not create liability for copyright infringement where it would not otherwise exist.@ Id. at
`
`*7. The District Court found that Jacobsen had a cause of action only for breach of
`
`contract, rather than an action for copyright infringement based on a breach of the
`
`conditions of the Artistic License. Because a breach of contract creates no presumption of
`
`irreparable harm, the District Court denied the motion for a preliminary injunction.
`
`Jacobsen appeals the finding that he does not have a cause of action for copyright
`
`infringement. Although an appeal concerning copyright law and not patent law is rare in our
`
`Circuit, here we indeed possess appellate jurisdiction. In the district court, Jacobsen’s
`
`operative complaint against Katzer/Kamind included not only his claim for copyright
`
`infringement, but also claims seeking a declaratory judgment that a patent issued to Katzer
`
`is not infringed by Jacobsen and is invalid. Therefore the complaint arose in part under the
`
`patent laws. See 28 U.S.C. § 2201(a); Golan v. Pingel Enter., 310 F.3d 1360, 1367 (Fed.
`
`Cir. 2002) (explaining that “[i]n the context of a complaint seeking a declaration of
`
`noninfringement, the action threatened by the declaratory defendant . . . would be an action
`
`for patent infringement,” and “[s]uch an action clearly arises under the patent laws”). Thus
`
`the district court’s jurisdiction was based, at least in part, on 28 U.S.C. § 1338(a) as it
`
`relates to the patent laws, and we have appellate jurisdiction under 28 U.S.C. § 1292(c)(1).
`
` See 28 U.S.C. § 1338(a) (“The district courts shall have original jurisdiction of any civil
`
`
`2008-1001
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` 4
`
`
`
`action arising under any Act of Congress relating to patents, plant variety protection,
`
`copyrights and trademarks.”); id. at § 1295(a)(1) (The Federal Circuit shall have exclusive
`
`jurisdiction “of an appeal from a final decision of a district court of the United States” if (1)
`
`“the jurisdiction of that court was based, in whole or in part, on section 1338 of this title” and
`
`(2) the case is not “a case involving a claim arising under any Act of Congress relating to
`
`copyrights, exclusive rights in mask works, or trademarks and no other claims under
`
`section 1338(a).”); id. at § 1292(c)(1) (Federal Circuit shall have jurisdiction over appeals
`
`from interlocutory orders of the district courts refusing injunctions “in any case over which
`
`the court would have jurisdiction of an appeal under section 1295”).
`
`II.
`
`This Court looks to the interpretive law of the regional circuit for issues not
`
`exclusively assigned to the Federal Circuit. Hutchins v. Zoll Med. Corp., 492 F.3d 1377,
`
`1383 (Fed. Cir. 2007). Under Ninth Circuit law, an order granting or denying a preliminary
`
`injunction will be reversed only if the district court relied on an erroneous legal premise or
`
`abused its discretion. Wright v. Rushen, 642 F.2d 1129, 1132 (9th Cir. 1981). A district
`
`court=s order denying a preliminary injunction is reversible for factual error only when the
`
`district court rests its conclusions on clearly erroneous findings of fact. Sports Form, Inc. v.
`
`United Press Int=l, Inc., 686 F.2d 750, 753 (9th Cir. 1982).
`
`In determining whether to issue a preliminary injunction, the Ninth Circuit requires
`
`demonstration of (1) a combination of probability of success on the merits and the
`
`possibility of irreparable harm; or (2) serious questions going to the merits where the
`
`balance of hardships tips sharply in the moving party=s favor. Perfect 10, Inc. v.
`
`Amazon.com, Inc., 487 F.3d 701, 713-14 (9th Cir. 2007); Dep=t of Parks & Recreation v.
`
`
`2008-1001
`
` 5
`
`
`
`Bazaar Del Mundo, Inc., 448 F.3d 1118, 1123 (9th Cir. 2006). In cases involving copyright
`
`claims, where a copyright holder has shown likelihood of success on the merits of a
`
`copyright infringement claim, the Ninth Circuit has held that irreparable harm is presumed.
`
`LGS Architects, Inc. v. Concordia Homes of Nev., 434 F.3d 1150, 1155-56 (9th Cir. 2006).
`
`But see MGM Studios, Inc. v. Grokster, Ltd., 518 F. Supp. 2d 1197, 1212 (C.D. Cal. 2007)
`
`(noting that “the longstanding rule that irreparable harm can be a presumed after a showing
`
`of likelihood of success for purposes of a copyright preliminary injunction motion may itself
`
`have to be reevaluated in light of eBay [Inc. v. MercExchange, L.L.C., 547 U.S. 388
`
`(2006)]”). Thus, for a preliminary injunction to issue, Jacobsen must either show (1) a
`
`likelihood of success on the merits of his copyright infringement claim from which
`
`irreparable harm is presumed; or (2) a fair chance of success on the merits and a clear
`
`disparity in the relative hardships that tips sharply in his favor.
`
`A.
`
`Public licenses, often referred to as Aopen source@ licenses, are used by artists,
`
`authors, educators, software developers, and scientists who wish to create collaborative
`
`projects and to dedicate certain works to the public. Several types of public licenses have
`
`been designed to provide creators of copyrighted materials a means to protect and control
`
`their copyrights. Creative Commons, one of the amici curiae, provides free copyright
`
`licenses to allow parties to dedicate their works to the public or to license certain uses of
`
`their works while keeping some rights reserved.
`
`Open source licensing has become a widely used method of creative collaboration
`
`that serves to advance the arts and sciences in a manner and at a pace that few could
`
`have imagined just a few decades ago. For example, the Massachusetts Institute of
`
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`2008-1001
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` 6
`
`
`
`Technology (AMIT@) uses a Creative Commons public license for an OpenCourseWare
`
`project that licenses all 1800 MIT courses. Other public licenses support the GNU/Linux
`
`operating system, the Perl programming language, the Apache web server programs, the
`
`Firefox web browser, and a collaborative web-based encyclopedia called Wikipedia.
`
`Creative Commons notes that, by some estimates, there are close to 100,000,000 works
`
`licensed under various Creative Commons licenses. The Wikimedia Foundation, another of
`
`the amici curiae, estimates that the Wikipedia website has more than 75,000 active
`
`contributors working on some 9,000,000 articles in more than 250 languages.
`
`Open Source software projects invite computer programmers from around the world
`
`to view software code and make changes and improvements to it. Through such
`
`collaboration, software programs can often be written and debugged faster and at lower
`
`cost than if the copyright holder were required to do all of the work independently. In
`
`exchange and in consideration for this collaborative work, the copyright holder permits
`
`users to copy, modify and distribute the software code subject to conditions that serve to
`
`protect downstream users and to keep the code accessible.2 By requiring that users copy
`
`and restate the license and attribution information, a copyright holder can ensure that
`
`recipients of the redistributed computer code know the identity of the owner as well as the
`
`scope of the license granted by the original owner. The Artistic License in this case also
`
`requires that changes to the computer code be tracked so that downstream users know
`
`what part of the computer code is the original code created by the copyright holder and
`
`what part has been newly added or altered by another collaborator.
`
`
`2
`For example, the GNU General Public License, which is used for the Linux
`operating system, prohibits downstream users from charging for a license to the software.
`See Wallace v. IBM Corp., 467 F.3d 1104, 1105-06 (7th Cir. 2006).
`
`2008-1001
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` 7
`
`
`
`Traditionally, copyright owners sold their copyrighted material in exchange for
`
`money. The lack of money changing hands in open source licensing should not be
`
`presumed to mean that there is no economic consideration, however. There are
`
`substantial benefits, including economic benefits, to the creation and distribution of
`
`copyrighted works under public licenses that range far beyond traditional license royalties.
`
`For example, program creators may generate market share for their programs by providing
`
`certain components free of charge. Similarly, a programmer or company may increase its
`
`national or international reputation by incubating open source projects. Improvement to a
`
`product can come rapidly and free of charge from an expert not even known to the
`
`copyright holder. The Eleventh Circuit has recognized the economic motives inherent in
`
`public licenses, even where profit is not immediate. See Planetary Motion, Inc. v.
`
`Techsplosion, Inc., 261 F.3d 1188, 1200 (11th Cir. 2001) (Program creator Aderived value
`
`from the distribution [under a public license] because he was able to improve his Software
`
`based on suggestions sent by end-users. . . . It is logical that as the Software improved,
`
`more end-users used his Software, thereby increasing [the programmer=s] recognition in his
`
`profession and the likelihood that the Software would be improved even further.@).
`
`B.
`
`The parties do not dispute that Jacobsen is the holder of a copyright for certain
`
`materials distributed through his website.3 Katzer/Kamind also admits that portions of the
`
`DecoderPro software were copied, modified, and distributed as part of the Decoder
`
`Commander software. Accordingly, Jacobsen has made out a prima facie case of
`
`copyright infringement. Katzer/Kamind argues that they cannot be liable for copyright
`
`
`3
`Jacobsen=s copyright registration creates the presumption of a valid copyright.
`
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`2008-1001
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` 8
`
`
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`infringement because they had a license to use the material. Thus, the Court must
`
`evaluate whether the use by Katzer/Kamind was outside the scope of the license. See
`
`LGS Architects, 434 F.3d at 1156. The copyrighted materials in this case are
`
`downloadable by any user and are labeled to include a copyright notification and a
`
`COPYING file that includes the text of the Artistic License. The Artistic License grants
`
`users the right to copy, modify, and distribute the software:
`
`provided that [the user] insert a prominent notice in each changed file stating
`how and when [the user] changed that file, and provided that [the user] do at
`least ONE of the following:
`a) place [the user=s] modifications in the Public Domain or otherwise make
`them Freely Available, such as by posting said modifications to Usenet or an
`equivalent medium, or placing the modifications on a major archive site such
`as ftp.uu.net, or by allowing the Copyright Holder to include [the user=s]
`modifications in the Standard Version of the Package.
`b) use the modified Package only within [the user=s] corporation or
`organization.
`c) rename any non-standard executables so the names do not conflict with
`the standard executables, which must also be provided, and provide a
`separate manual page for each nonstandard executable that clearly
`documents how it differs from the Standard Version, or
`d) make other distribution arrangements with the Copyright Holder.
`
`The heart of the argument on appeal concerns whether the terms of the Artistic
`
`License are conditions of, or merely covenants to, the copyright license. Generally, a
`
`Acopyright owner who grants a nonexclusive license to use his copyrighted material waives
`
`his right to sue the licensee for copyright infringement@ and can sue only for breach of
`
`contract. Sun Microsystems, Inc., v. Microsoft Corp., 188 F.3d 1115, 1121 (9th Cir. 1999);
`
`Graham v. James, 144 F.3d 229, 236 (2d Cir. 1998). If, however, a license is limited in
`
`scope and the licensee acts outside the scope, the licensor can bring an action for
`
`
` See, e.g., Triad Sys. Corp. V. Se. Exp. Co., 64 F.3d 1330, 1335 (9th Cir. 1995).
`
`2008-1001
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` 9
`
`
`
`copyright infringement. See S.O.S., Inc. v. Payday, Inc., 886 F.2d 1081, 1087 (9th
`
`Cir.1989); Nimmer on Copyright, ' 1015[A] (1999).
`
`Thus, if the terms of the Artistic License allegedly violated are both covenants and
`
`conditions, they may serve to limit the scope of the license and are governed by copyright
`
`law. If they are merely covenants, by contrast, they are governed by contract law. See
`
`Graham, 144 F.3d at 236-37 (whether breach of license is actionable as copyright
`
`infringement or breach of contract turns on whether provision breached is condition of the
`
`license, or mere covenant); Sun Microsystems, 188 F.3d at 1121 (following Graham;
`
`independent covenant does not limit scope of copyright license). The District Court did not
`
`expressly state whether the limitations in the Artistic License are independent covenants or,
`
`rather, conditions to the scope; its analysis, however, clearly treated the license limitations
`
`as contractual covenants rather than conditions of the copyright license.4
`
`Jacobsen argues that the terms of the Artistic License define the scope of the
`
`license and that any use outside of these restrictions is copyright infringement.
`
`Katzer/Kamind argues that these terms do not limit the scope of the license and are merely
`
`covenants providing contractual terms for the use of the materials, and that his violation of
`
`them is neither compensable in damages nor subject to injunctive relief. Katzer/Kamind=s
`
`argument is premised upon the assumption that Jacobsen=s copyright gave him no
`
`economic rights because he made his computer code available to the public at no charge.
`
`From this assumption, Katzer/Kamind argues that copyright law does not recognize a
`
`
`4
`The District Court held that ADefendants’ alleged violation of the conditions of
`the license may have constituted a breach of the nonexclusive license . . . [and] the Court
`finds that Plaintiff’s claim properly sounds in contract.@ Jacobsen, 2007 WL 2358628 at *7.
`Thus, despite the use of the word Aconditions,@ the District Court treated the terms of the
`Artistic License as contractual covenants which did not limit the scope of the license.
`
`2008-1001
`
` 10
`
`
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`cause of action for non-economic rights, relying on Gilliam v. ABC, 538 F.2d 14, 20-21 (2d
`
`Cir. 1976) (AAmerican copyright law, as presently written, does not recognize moral rights
`
`or provide a cause of action for their violation, since the law seeks to vindicate the
`
`economic, rather than the personal rights of authors.@). The District Court based its opinion
`
`on the breadth of the Artistic License terms, to which we now turn.
`
`III.
`
`The Artistic License states on its face that the document creates conditions: AThe
`
`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 Aprovided that@ the
`
`conditions are met. Under California contract law, Aprovided that@ typically denotes a
`
`condition. See, e.g., Diepenbrock v. Luiz, 159 Cal. 716 (1911) (interpreting a real property
`
`lease reciting that when the property was sold, Athis lease shall cease and be at an end,
`
`provided that the party of the first part shall then pay [certain compensation] to the party of
`
`the second part@; considering the appellant=s Ainteresting and ingenious@ argument for
`
`interpreting this language as creating a mere covenant rather than a condition; and holding
`
`that this argument Acannot change the fact that, attributing the usual and ordinary
`
`signification to the language of the parties, a condition is found in the provision in question@)
`
`(emphases added).
`
`The conditions set forth in the Artistic License are vital to enable the copyright holder
`
`to retain the ability to benefit from the work of downstream users. By requiring that users
`
`who modify or distribute the copyrighted material retain the reference to the original source
`
`files, downstream users are directed to Jacobsen=s website. Thus, downstream users
`
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`2008-1001
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` 11
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`
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`know about the collaborative effort to improve and expand the SourceForge project once
`
`they learn of the Aupstream@ project from a Adownstream@ distribution, and they may join in
`
`that effort.
`
`The District Court interpreted the Artistic License to permit a user to Amodify the
`
`material in any way@ and did not find that any of the Aprovided that@ limitations in the Artistic
`
`License served to limit this grant. The District Court=s interpretation of the conditions of the
`
`Artistic License does not credit the explicit restrictions in the license that govern a
`
`downloader=s right to modify and distribute the copyrighted work. The copyright holder here
`
`expressly stated the terms upon which the right to modify and distribute the material
`
`depended and invited direct contact if a downloader wished to negotiate other terms.
`
`These restrictions were both clear and necessary to accomplish the objectives of the open
`
`source licensing collaboration, including economic benefit. Moreover, the District Court did
`
`not address the other restrictions of the license, such as the requirement that all
`
`modification from the original be clearly shown with a new name and a separate page for
`
`any such modification that shows how it differs from the original.
`
`Copyright holders who engage in open source licensing have the right to control the
`
`modification and distribution of copyrighted material. As the Second Circuit explained in
`
`Gilliam v. ABC, 538 F.2d 14, 21 (2d Cir. 1976), the Aunauthorized editing of the underlying
`
`work, if proven, would constitute an infringement of the copyright in that work similar to any
`
`other use of a work that exceeded the license granted by the proprietor of the copyright.@
`
`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,
`
`
`2008-1001
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` 12
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`
`
`rather than as a dollar-denominated fee, is entitled to no less legal recognition. Indeed,
`
`because a calculation of damages is inherently speculative, these types of license
`
`restrictions might well be rendered meaningless absent the ability to enforce through
`
`injunctive relief.
`
`In this case, a user who downloads the JMRI copyrighted materials is authorized to
`
`make modifications and to distribute the materials Aprovided that@ the user follows the
`
`restrictive terms of the Artistic License. A copyright holder can grant the right to make
`
`certain modifications, yet retain his right to prevent other modifications. Indeed, such a
`
`goal is exactly the purpose of adding conditions to a license grant.5 The Artistic License,
`
`like many other common copyright licenses, requires that any copies that are distributed
`
`contain the copyright notices and the COPYING file. See, e.g., 3-10 Nimmer on Copyright
`
`' 10.15 (AAn express (or possibly an implied) condition that a licensee must affix a proper
`
`copyright notice to all copies of the work that he causes to be published will render a
`
`publication devoid of such notice without authority from the licensor and therefore, an
`
`infringing act.@).
`
`It is outside the scope of the Artistic License to modify and distribute the copyrighted
`
`materials without copyright notices and a tracking of modifications from the original
`
`computer files. If a downloader does not assent to these conditions stated in the COPYING
`
`
`5
`Open source licensing restrictions are easily distinguished from mere Aauthor
`attribution@ cases. Copyright law does not automatically protect the rights of authors to
`credit for copyrighted materials. See Gilliam, 538 F.2d at 20-21 (“American copyright law,
`as presently written, does not recognize moral rights or provide a cause of action for their
`violation, since the law seeks to vindicate the economic, rather than the personal rights of
`authors.”); Graham, 144 F.3d at 236. Whether such rights are protected by a specific
`license grant depends on the language of the license. See County of Ventura v. Blackburn,
`362 F.2d 515, 520 (9th Cir. 1966) (copyright infringement found where the county removed
`copyright notices from maps licensed to it where the license granted the county Athe right to
`
`
`2008-1001
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` 13
`
`
`
`file, he is instructed to Amake other arrangements with the Copyright Holder.@
`
`Katzer/Kamind did not make any such Aother arrangements.@ The clear language of the
`
`Artistic License creates conditions to protect the economic rights at issue in the granting of
`
`a public license. These conditions govern the rights to modify and distribute the computer
`
`programs and files included in the downloadable software package. The attribution and
`
`modification transparency requirements directly serve to drive traffic to the open source
`
`incubation page and to inform downstream users of the project, which is a significant
`
`economic goal of the copyright holder that the law will enforce. Through this controlled
`
`spread of information, the copyright holder gains creative collaborators to the open source
`
`project; by requiring that changes made by downstream users be visible to the copyright
`
`holder and others, the copyright holder learns about the uses for his software and gains
`
`others= knowledge that can be used to advance future software releases.
`
`IV.
`
`
`obtain duplicate tracings@ from photographic negatives that contained copyright notices).
`
`2008-1001
`
` 14
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`
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`For the aforementioned reasons, we vacate and remand. While Katzer/Kamind
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`appears to have conceded that they did not comply with the aforedescribed conditions of
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`the Artistic License, the District Court did not make factual findings on the likelihood of
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`success on the merits in proving that Katzer/Kamind violated the conditions of the Artistic
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`License. Having determined that the terms of the Artistic License are enforceable copyright
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`conditions, we remand to enable the District Court to determine whether Jacobsen has
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`demonstrated (1) a likelihood of success on the merits and either a presumption of
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`irreparable harm or a demonstration of irreparable harm; or (2) a fair chance of success on
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`the merits and a clear disparity in the relative hardships and tipping in his favor.6
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`The judgment of the District Court is vacated and the case is remanded for further
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`proceedings consistent with this opinion.
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`VACATED and REMANDED
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`
`6
`At oral argument, the parties admitted that there might be no way to calculate
`any monetary damages under a contract theory.
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`2008-1001
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` 15