Comments to my recent post on granting language in a license alluded to the case of Jacobsen v. Katzer (Fed. Cir., Aug. 13, 2008). I’d like to pick up on something mentioned by commenter Chris—the court’s discussion of provided that.

This case involved the language of an “open source” copyright license. The license granted users the right to use the software in question, “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: ….”

The defendants didn’t take any of the actions specified in the provided that language, so the licensor sued. The question was whether that failure meant that the defendants’ use of the software fell outside the scope of the license or whether it represented breach of the license. In other words, we’re faced with the age-old distinction between conditions and obligations (see MSCD 2.181): did the provided that language state conditions to validity of the license or did it state obligations forming part of the license?

The lower court held that the provided that language didn’t limit the license grant. The Federal Circuit disagreed, holding that the provided that language stated conditions to effectiveness of the license. It noted that the license “uses the traditional language of conditions by noting that the rights to copy, modify, and distribute are granted ‘provided that’ the conditions are met,” and it went on to note that “Under California contract law, ‘provided that’ typically denotes a condition.”

In MSCD 12.279 I note that provided is a conjunction meaning if or on condition that—”I’ll let you go to the party, provided you take a taxi home.” That’s the everyday use of provided and provided that.

But in drafting, provided that is also used as a truncation of the “term of enactment” it is provided that. Into the nineteenth century, provided that was used to introduce statutory provisions. And in contacts, it continues to serve that introductory function, although drafters mostly use provided however, that, preceded by a semicolon. It’s used to introduce not only conditions, but also limitations and exceptions, as well as unrelated provisions. It’s become a lazy way to tack on extra language in the course of negotiations.

So in saying that under California law provided that typically denotes a condition, the Jacobsen court made a murky issue seem clearer than it actually is, although of course one could drive a truck through “typically.”

So what kind of provided that is on display in Jacobsen? I agree with the Federal Circuit that it’s best read as a condition. That’s because the language in question doesn’t contain anything to suggest that in this context provided that conveys anything other than its meaning in everyday usage.

Of course, it would be best not to have to litigate this issue. My advice is that you not use provided that in any of its variant forms.