[Date Prev][Date Next][Thread Prev][Thread Next][Date Index][Thread Index]
[verdict in English] German-GPL victorious in Frankfurt district court
From: |
Alexander Terekhov |
Subject: |
[verdict in English] German-GPL victorious in Frankfurt district court |
Date: |
Thu, 16 Nov 2006 13:06:54 +0100 |
Alexander Terekhov wrote:
>
> http://www.jbb.de/urteil_lg_frankfurt_gpl.pdf
>
> Man oh man. This is fun.
http://www.jbb.de/judgment_dc_frankfurt_gpl.pdf
-----------
DISCLAIMER: This is an unofficial translation! The correctness or
exactness of it is not guaranteed or represented in any way. The
information is not intended to be a comprehensive study, nor to provide
legal advice, and should not be relied on or treated as a substitute
for specific advice concerning individual situations
Page 1
Docket Number 2-6 0 224/06
DISTRICT COURT OF FRANKFURT AM MAIN
On behalf of the people
JUDGMENT
In re
Harald Welte, [
] Counsel: Attorney-at-Law Dr. Till Jaeger, [
], - Plaintiff -
vs.
D
Deutschland GmbH, represented by [
] Counsel: [
] - Defendant -
the 6th Civil Panel of the District Court of Frankfurt am Main,
through
Presiding Judge [
],
Judge [
] and
Judge [
],
based on the Hearing dated July 26, 2006, renders the following Judgement:
Defendant is ordered to pay to Plaintiff 2,871.44 EUR, plus interest on
this amount of 5 percentage points above the base interest rate since
February 25, 2006; regarding the amount of 141.34 EUR, payment shall be
made in exchange for the transfer of ownership of the data storage unit
[
] Wireless G Network Media Storage DSM-G6000 which is owned by
Plaintiff.
Defendant is ordered to disclose to Plaintiff how many items of the data
storage unit [
] Wireless G Network media Storage DSM-G600 Defendant
has acquired, the number of items of this data storage unit Defendant has
sold, the identity of the commercial purchasers of the device, and from
whom Defendant has acquired the data storage units.
Further claims are dismissed.
Defendant bears the costs of the proceedings
The decision is provisionally enforceable if a deposit of 15,000 EUR is
made. The value of this dispute is set at 10,000 EUR.
Facts
Plaintiff brought claims against Defendant for reimbursement of costs
and disclosure of information because of a copyright infringement in
relation to a software program.
Plaintiff is a professional programmer. Defendant is a subsidiary
company of a Taiwanese manufacturer and acts as a distributor of
hardware and network components to private and commercial customers.
Page 2
With three contractual agreements designated Fiduciary Licensing
Agreements, the exclusive rights to copy, to distribute, and of
public display, as well as the right to allow a third party to
undertake modifications in the programs, were transferred for three
software programs to Plaintiff: Mr. Werner Almesberger, who is an
Austrian citizen, transferred these rights to Plaintiff for the
software msdosfs on December 12, 2004 (Annex K5) and for the
software initrd on September 28, 2004 (Annex K7). On November 11,
2004, Mr. David Woodhouse, a UK citizen, transferred these rights to
the Plaintiff for the software mtd (Annex K9). For further details
reference is made to the cited agreements.
The three programs msdosfs, initrd and mtd are parts of the so-
called Linux-kernel.
The software msdosfs allows access to data files that were stored on
a data medium by other operating systems. The software initrd, among
other things, makes it possible to start a system in two phases; a
minimal system is initiated in phase one and additional modules can be
started in phase two. The software mtd contains generic support for MTD
device drivers as well as an interface for programs that access MTD
devices, MTD being an abbreviation for Memory Technology Devices.
These three software programs are licensed [by Plaintiff] under the GNU
General Public License (hereinafter referred to as the GPL) exclusively.
The GPL grants anyone who enters into such contract with the licensor the
right to copy, distribute and modify the software, on the condition that
the software is again distributed under the very conditions of the GPL,
in particular by making reference to the GPL, by accompanying it with the
GPL licence text, by making available the source code and by making
reference to the disclaimer of warranty. According to Sec. 4 of the GPL,
any copying, distribution or modification of the software that is not
accordance with the GPL is void and automatically terminates the rights
under the licence. However, parties who have received copies, or rights,
under the license from the GPL infringer will not have their licenses
terminated so long as such parties remain in full compliance. For further
details reference is made to the submitted copy of the GPL (Annex K11).
In January 2006, Defendant offered the data storage unit [
] Wireless G
Network Media Storage DSM G600 (hereinafter referred to as the data
storage unit) for sale. The distribution of the data storage unit did not
satisfy the conditions of the GPL, since the licence text of the GPL was
not enclosed, a disclaimer of warranty was not made, and the source code
was not disclosed.
Plaintiff made a test purchased of Defendants data storage unit, from
which costs in the amount of 141.34 EUR accrued. He reengineered the data
storage unit in order to investigate the firmware contained in the device.
Through a lawyers letter of February 1, 2006, (Annex 12) Plaintiff
demanded that Defendant cease and desist from its infringing actions,
asserting that the Defendant used in the firmware of the data storage
unit the three programs mtd, initrd and msdosfs without complying
with the GPL. Defendant thereafter responded that without acknowledging
any corresponding legal obligation to do so Defendant has issued a
declaration to cease-and-desist. Defendant asserts that the source code
of the software in question is available for download from Defendants
ftp-server free of charge. Defendant further asserts that Defendant will
inform its purchasers about the distribution of the devices being GPL
violating (Annex 13).
By letter of February 10, 2006, Plaintiff called upon Defendant to
reimburse him for the lawyers fees for the formal cease-and-desist letter
(1.5x the general fee based on a value of the dispute of EUR 150.000,00
plus expenses, 2,397.50 EUR), the costs of the test purchase and the cost
for the re-engineering until February 24, 2006 (Annex 14).
Plaintiff alleges that the programs msdosfs, initrd and mtd as well as the
creative efforts made by Messrs. Almesberger and Woodhouse constitute in
each case sufficient individual creative achievements to be protectable by
copyright law. Plaintiff further claims that Mr. Almesberger is the
creator of the program msdosfs and initrd, and Mr. Woodhouse is the
creator of the program mtd. Plaintiff asserts that the programs were only
modified after their initial creation by third parties through the addition
of open source developments. Plaintiff alleges that Mr. Hans Lermen is also
named with respect to the program initrd.txt, as a result of the
pre-existing program parts initrd of Mr. Almesberger and bzImage of
Mr. Lermen having been connected.
Plaintiff asserts that the data storage unit distributed by Defendant
contains firmware that also contains the programs msdosfs, initrd and
mtd.
Page 3
Plaintiff claims that the re-engineering took 4 hours. Plaintiff is of the
opinion that he can for this matter claim 140 EUR per hour, i.e. an
aggregate amount of 649.60 EUR gross.
Plaintiff asks the Court to:
1. Order Defendant to pay to Plaintiff 3,188.44 EUR plus interest on
this amount of 5 percentage points above the base interest rate since
February 25, 2006; regarding the amount of 141.34 EUR, payment shall
be made in exchange for the transfer of ownership of the data storage
device [
] Wireless G Network Media Storage DSM-G6000 which is
owned by Plaintiff.
2. Order Defendant to disclose to Plaintiff how many items of the
data storage unit [
] Wireless G Network media Storage DSM-G600
Defendant has acquired, the number of items of this data storage unit
Defendant has sold, the identity of the commercial purchasers of the
device, and from whom Defendant has acquired the data storage unit.
Defendant asks the Court to:
Dismiss the case.
Defendant asserts that the Plaintiff has no right of action as Mr.
Almesberger and Mr. Woodhouse are only co-authors, and Section 8, Para.
2, Subpara. 3 of the German Copyright Act (UrhG) is therefore not
applicable since Plaintiff only relies on derived rights. Defendant also
argues that the claims based on negotiorum gestio and for damages and
the right to disclosure do not enjoy the privilege afforded by Section 8,
Para. 2 Subpara. 3 of the German Copyright Act (UrhG) in the first place.
Defendant further argues that the GPL is invalid due to violations of
Art. 81 of the Treaty establishing the European Community and Section 1
of the German Antitrust Act (GWB) as it prejudices trade between Member
States and leads to a restriction on competition. In addition, Defendant
asserts that the conditions of the GPL do not apply because of the
principle of exhaustion.
Moreover, Defendant alleges that by means of the so-called re-engineering,
which in the opinion of Defendant comes close to an illicit decompilation,
Plaintiff has gained information that must be excluded from this case
because it has been improperly obtained. Defendant argues that Plaintiff,
in any event, cannot claim for reimbursement of cost allegedly accrued as
a result of such illegal interference.
Inasmuch as certain facts and opinions are not included herein, reference
is made to the written statements exchanged between the parties as well as
to the Annexes hereto that have been submitted to the Court.
Rationale for the Decision
The action [brought by Plaintiff] is admissible and justified in almost
all respects.
Plaintiff can demand that Defendant reimburse him for the costs of the
formal cease-and-desist letter of February 1, 2006, of the test purchase,
as well as for the re-engineering pursuant to Section 683, 670 of the
German Civil Code (BGB) on the basis of a justified negotiorum gestio
claim.
Sending the cease-and-desist letter was justified as Plaintiff is
entitled to make the claims asserted therein. By distributing the data
storage unit, in the firmware of which the programs mtd, initrd and
msdosfs are included, without complying with the provisions of the GPL,
Defendant violated the copyrights in the programs, as a result of which
Plaintiff, who is entitled to exercise the copyrights, could assert a
claim to cease-and-desist against Defendant (Section 97 of the German
Copyright Act (UrhG)).
Plaintiff has standing to bring an action since he was granted the
exclusive rights of use in the programs mtd, initrd and msdosfs by the
authors.
In regard to the program msdosfs, Mr. Almesberger is the author. The
presumption of authorship (Section 10 of the German Copyright Act (UrhG))
applies, because he as can be seen from the printout (Annex K 6) is
Page 4
named in the source code of the software and is therefore designated as
author in the usual fashion. In regard to the program mtd, Mr. Woodhouse
is designated as author in the source code, the printout of which has
been submitted as Annex K 10. As a result, the presumption of authorship
applies to him as well. Defendant initially denied that the printouts
submitted [by Plaintiff] are really the original printouts of the code;
he argues that the pages [with the names of Messrs. Almesberger and
Woodhouse] could very easily have been typed [after the fact] in the
program Word. Defendant has not countered the assertions of Plaintiff
in a substantial manner, however, following submission by Plaintiff of a
comparison of the original code programmed by Messrs. Almesberger and
Woodhouse, respectively, and the source code used by Defendant.
As a result, Defendant has not proven that contrary to the presumption
(as provided in Section 10 of the German Copyright Act (UrhG)), Messrs.
Woodhouse and Almesberger are in fact not the exclusive authors of both
programs.
Initially, Defendant asserted that Messrs. Woodhouse and Almesberger are
merely to be regarded as joint authors and that Plaintiff should have
alleged that the software was produced in integral parts programmed by
both of them. In response, Plaintiff substantiated his allegations by
explaining that Messrs. Woodhouse and Almesberger each performed the
initial programming, respectively, and that later only modifications by
third parties within the meaning of Sections 3, 23 of the German Copyright
Act (UrhG) took place. Defendant has not countered this explanation in its
written statement of August 16, 2006, which was allowed by the Court.
Inasmuch as Defendant points out with respect to the program msdosfs that
Mr. Almesberger, according to the submitted printout of the Internet page
www.almesberger.de (Annex B2), declares that he no longer works on the
program and that code has been added to [the existing version of the
program] to a great extent by third parties, Defendant has not contradicted
the allegations of Plaintiff that the initial programming was carried out
by Mr. Almesberger and that later modifications were contributed by third
parties.
This is also the case with respect to the program mtd and the reference
made by Defendant in the written statement submitted after the hearing to
the description of Mr. Woodhouses activities on the Internet page about
that program (Annex B3). Based precisely on the description on that
Internet page, it follows that Mr. Woodhouse carried out the initial
programming (he started MTD from scratch
). In particular, it cannot be
concluded from either Defendants allegations or the printouts submitted
that either program is an integrative creation of Mr. Almesberger and
others, or Mr. Woodhouse and others, respectively, generated conjointly by
the deliberate co-operation of the individuals involved. In particular,
where several authors have participated in creating a work and have not
made their contributions at the same time but instead have made them
successively, the possibility of joint authorship is not excluded, but
the presumption is that each individual involved has rendered his/her
contribution in subordination to a common overall idea (BGH, GRUR 2005, S.
860, 862 Flash 2000). Such subordination to the common overall idea has
not been shown by Defendant. As to Defendants reference that Plaintiff
himself referrers to a core-team in his article on Wikipedia (cf.
printout Annex B4), this does not prove joint authorship in the programs
in question because Plaintiff has undisputedly not contributed to them.
Moreover, Defendant on whom the burden of proof lies in respect of
rebutting the presumption of authorship has not offered relevant evidence.
With respect of the program initrd, Mr. Almesberger is to be regarded as
author as well.
However, the presumption of authorship, Section 10 of the German Copyright
Act (UrhG), does not militate in favour of Mr. Almesberger being sole
author. For on the submitted printout initrd.txt (Annex B8) Hans Lermen
is designated as author alongside Mr. Almesberger. Where multiple persons
are designated as authors it is presumed that these persons have acted as
joint authors (Dreier/Schulze, UrhG, 2nd edition, Munich 2006, § 10, Rz.
24). In this respect Plaintiff has asserted that the designation of both
individuals is due to the fact that Mr. Almesberger developed the software
component initrd on his own, whereas Mr. Lermen developed a software
component zlmage. Both components, that can be used separately, were
then connected with the effect that the connected components are regarded
as a connected work pursuant to Section 9 of the German Copyright Act (UrhG).
This scenario under which the separately useable software component initrd
was created by Mr. Almesberger acting alone has not been substantially
countered by Defendant. Defendant has only alleged that, as displayed in
the submitted printout of the website (Annex B2), Mr. Almesberger himself
no longer asserts that he is actively involved with the computer program
initrd. The fact that Mr. Almesberger currently no longer actively
modifies the program does not change anything with respect to the [original]
authorship of this component.
The computer programs msdosfs, mtd and initrd are protected by copyright
law since they are the result of a sufficiently individual, intellectual
creation of their authors. As shown by the source code (cf. Annexes K6 and
K10 as well as Annex K20), the three programs are complex computer
programs. Based on this, a factual
Page 5
presumption arises in favour of there being sufficient originality in the
program design to merit copyright protection. In the face of this
presumption, it is therefore the burden of Defendant to show that the
programs are instead the result of programming efforts of only trivial
quality or merely adaptations of the programming results of another
programmer (BGH GRUR 2005, 860, 861 Fash 2000). Defendant has not done
this.
As Mr. Almesberger and Mr. Woodhouse are citizens of other member states
of the European Union, they enjoy copyright protection for their works
(Section 120, Subsection 2, No. 2 of the German Copyright Act (UrhG)).
Since Mr. Almesberger and Mr. Woodhouse granted to Plaintiff in the
contracts submitted to the court (Annex K5, Annex K7, and Annex K9) the
exclusive rights to copy and to distribute the software as well as to
make it available to the public and also the right to allow third parties
to modify and supplement the software, Plaintiff has a right of action.
It was possible for Mr. Almesberger and Mr. Woodhouse to validly grant
an exclusive right of use to Plaintiff even though rights of use had
been granted to third parties under to the GPL prior to the grant of
rights to Plaintiff, since the GPL only grants non-exclusive rights of
use. It follows from Section 33 of the German Copyright Act (UrhG) that
exclusive rights of use may be granted that are restricted by
non-exclusive rights of use granted before, just as the authors of the
programs could still grant non-exclusive rights of use according to the
GPL after having granted exclusive rights of use to Plaintiff. This
follows from Section 4, Subsection 2, of the agreements the authors
entered into with Plaintiff, under which Plaintiff grants back to the
authors additional non-exclusive and transferable rights of use as
necessary for the authors to further license the programs.
The firmware of the data storage unit includes the programs msdosfs,
initrd and mtd. Defendant initially alleged that as only a distributor
[of the data storage unit], Defendant had no knowledge of the code
embedded in the data storage unit itself. Plaintiff then submitted a
comparison of the original source code programmed by Mr. Almesberger
and Mr. Woodhouse and the source code used by Defendant, specifying in
detail which of the code strings contained in both of the source codes
have the highest possible degree of likelihood of originating from the
source code of mtd, initrd or msdosfs. Defendant has not contested
this evidence with any substance, and has only claimed that Plaintiff
has not proven that the code is in fact actually identical but only
provided assertions that the code may be identical. Contrary to the
claims of Defendant, however, Plaintiff has indeed sufficiently
substantiated its assertions of copyright infringement. In general, the
fact that there are code strings which with utmost likelihood originate
from a particular source code leads to the conclusion that such source
code has in fact been used. Defendant has not offered any other
explanation for the code strings that have been individually enumerated
by Plaintiff and which undisputedly point to the usage of that source
code by Defendant. Since Defendant itself distributed the data storage
unit with that firmware, it cannot claim to have no knowledge thereof
and to have not received any such information from its parent company.
Plaintiffs copyright claim may also be based on the code strings
identified by Plaintiff. Contrary to Defendants claims, this evidence
is not excluded.
To identify the strings which with the utmost likelihood originate
from the source codes of the three programs, Plaintiff downloaded the
firmware from the Defendants website, unpacked it, and proceeded as
specified in Plaintiffs statement of July 20, 2006, page 3. This
procedure does not constitute an illegal decompilation prohibited under
Section 69 e of the German Copyright Act (UrhG).
Regarding the claims of Defendant that this pleading is irrelevant since
the Internet page in question was only uploaded by Defendant because of
Plaintiffs cease and desist letter to Defendant and can therefore not
result in evidence relating to the code used in the firmware, such
argument is not successful. Firstly, Defendant has failed to contest
that the code published after Plaintiffs cease and desist letter is
indeed the code of the data storage unit. Secondly, the pre-trial letter
of February 9, 2006, submitted by Defendant (Annex K13) shows that
Defendant itself states towards Plaintiff that the source code uploaded
onto the ftp-server is the source code of the relevant firmware.
Defendant, for example, has also neither alleged that the source code
uploaded onto the server was been given to her by Plaintiff nor explained
where the code originates from.
Defendant was not entitled to copy, distribute or modify the three
software programs.
The GPL applies to the legal relationship between the authors and
Defendant. The three software programs are undisputedly licensed only
under the terms of the GPL. In the case of free software it is to be
assumed that the copyright holder by putting the program under the GPL
makes an offer to a determinable or definite circle of people and that
this offer is accepted by users [of the software] through an act that
requires consent
Page 6
under copyright law; in this respect, it can be assumed that the
copyright holder enters into this legal relationship without receiving
an actual declaration of acceptance [from the users] (Section 151 of the
German Civil Code (BGB)).
In addition, if the GPL were not sufficient to form a legal relationship
with Plaintiff, Defendant would not have any right to copy, distribute
or modify the three programs, such that a copyright infringement by the
Defendant would have taken place. In particular, the conditions of the
GPL can in no case be interpreted to contain a waiver of legal positions
afforded by copyright law. The GPL precisely stipulates that the freedom
to use, modify and distribute the corresponding software initially
afforded by way of a grant of a non-exclusive license to everyone is
automatically terminated upon a violation of the GPL (cf. Dreier/Schulze,
§ 69a, Rz.11)
The conditions of the license granted under the GPL must be regarded as
standard terms and conditions that are subject to Sections 305 et seq. of
the German Civil Code (BGB).
Since the conditions of the license granted by the GPL are easily
available on the Internet, they were without a doubt incorporated into
the contractual relationship between the authors and Defendant (Section
305, Subsection 2, No.2 of the German Civil Code (BGB)).
Pursuant to Sec. 4 of the GPL the rights under the GPL are terminated
and revert to the author if the user violates the obligations set forth
in Sec. 2 of the GPL. In particular, these obligations provide that the
user has to publish a disclaimer of warranty on each copy [of the program],
make reference to the GPL, accompany the program with the license text,
and provide the source code of the program. These rules do not unduly
discriminate the user and are therefore not invalid pursuant to Section
307, Subsection 2 No. 1 of the German Civil Code (BGB).
The obligations [under the GPL] are not a valid limitation of the right
to use under Section 31, Subsection 1, Sentence 2 of the German Copyright
Act (UrhG), since the possibility to split up into different forms of use
requires a sufficiently distinguishable, economically-technically uniform
and autonomous form of use from the point of view of the relevant public
(BGH GRUR 2001, p. 153, 154 OEM Version). Section 2 of the GPL does not
fulfil this requirement.
The regulations of the GPL must be understood to provide that the grant
of the non-exclusive right of use under the GPL is subject to the
condition subsequent (Section 158 of the German Civil Code (BGB)) that
the licensee must not fail to comply with the terms of the agreement.
Upon occurrence of the condition the license [granted under the GPL] is
terminated.
This arrangement is not invalid pursuant to Section 307, Subsection 2,
No. 1 of the German Civil Code (BGB) and does not, in particular,
circumvent Section 31 of the German Copyright Act (UrhG). Section 31 of
the German Copyright Act (UrhG), which provides for the possibility to
split up the right in rem to use but at the same time restricts such
possibility, establishes a balance between the interests of the author
to, in the most thorough and complete way, exploit his works, on the one
hand, and the public interest in the protection of its legal relations,
on the other hand, i.e. to be able to recognize and clearly distinguish
which different forms of use exist in order to acquire corresponding
separate rights of use or for the purpose of complying with those
rights as such (Dreier/Schulze, l.c., § 31, Rz. 9). Hence, a provision
must be regarded as circumventing Section 31 of the German Copyright Act
(UrhG) if it severely affects the marketability of the rights or the
physical copies of the work. The GPL, however, only provides that the
very user who does not comply with the conditions of the GPL loses his
license. Sec. 4, Sentence 3 of the GPL explicitly stipulates that
licenses [granted under the GPL] to parties who received copies or
rights from someone whose license has been terminated according to Sec.
4, Sentence 1, will not be terminated so long as these parties continue
to observe and comply with the terms of the GPL. As far as the
marketability of a physical copy is concerned, such marketability is
not inadequately limited, either. The person who purchases such a copy
from someone who at the time of making the copy was not entitled to do
so for having had his/her license terminated can accept the GPL and
acquire the license necessary from the author at any time (cf. LG
München I MMR 2004, 693, 695).
Since Defendant violated the obligations provided for in Sec. 2 of the
GPL, the condition subsequent has occurred with the result that
Defendant has lost its license.
Defendant cannot invoke a claim of exhaustion of the right to
distribute (Section 69 c, No. 3, Sentence 2 of the German Copyright Act
(UrhG)), even though the three programs are available to the public on
the Internet.
The principle of exhaustion only applies to the individual physical data
carrier onto which the software is copied during the downloading process.
With respect to the right to copy, no exhaustion takes place; thus,
Page 7
Defendant is not entitled pursuant to Section 69 c, No. 3, Sentence 2 of
the German Copyright Act (UrhG) to [freely] copy the software onto the
individual data storage units.
With respect to the data storage units already sold by Defendant, no
exhaustion of the right to distribute takes place, since those data
storage units were not put into circulation by sale with the consent of
the authors as the sale of the data storage units did not comply with
the GPL. However, purchasers can, as described above, at any time
acquire the necessary rights of use [the three programs] directly from
the author by recognising the GPL.
It need not be decided whether, as Defendant argues, the provisions of
the GPL violate Article 81 EC and Section 1 of the German Antitrust Act
(GWB), in particular the prohibition against price fixing and of
predetermining the conditions of secondary contracts in the first
contract. This would, according to Section 139 of the German Civil Code
(BGB), result in the invalidity of the entire license agreement with the
consequence that Defendant would not have a right of use in the software
at all, so that Plaintiff could file a copyright infringement claim for
that reason. If an agreement is partly invalid, the entire transaction
is invalid pursuant to Section 139 of the German Civil Code (BGB),
unless it can be assumed that the parties would carry out the
transaction without the invalid part. This is not the case here. Since
the parties agreed on the grant of the license being subject to the
condition subsequent of compliance with the GPL, the possibly invalid
part [of the GPL] (Sec. 2 of the GPL) is inseparably connected to the
primary obligation, i.e. the grant of the license. In addition,
invalidity of this part of the GPL would also jeopardize the further
development of the software and therefore affect the basic principle
of open source, which is incorporated into the contract by virtue of
the preamble of the GPL (cf. Annex K11).
Plaintiff would also be entitled to plead invalidity of the entire
contract and therefore allege that Defendant is lacking any license
[to the three programs] whatsoever. This case is not one in which
Plaintiff would be barred from pleading invalidity for reasons of
good faith and, in particular, because of the objection of improper
exercise of a right.
It is possible that the principle of good faith in contravened when a
party who is called upon because of a culpable violation of a
contractual obligation pleads nullity of such contractual provision
because another contractual provision is invalid (BGH GRUR 1971, 272,
273 Blitzgeräte). This applies especially where there is no
connection between the invalid clause and the clause that pertains to
the contractual obligation that has been violated (BGH GRUR 1969, 701,
702 Auto-Lok).
That, however, is not the case here. Plaintiff, or the licensors from
whom Plaintiff derives his right, have not violated any contractual
obligations themselves. Rather, Defendant, who violated contractual
obligations, relies on rights granted by contract. Moreover, the
allegedly invalid clause Sec. 2 of the GPL, that imposes duties on the
licensee, and the provision of the GPL according to which the licensor
grants a non-exclusive license to the other party are closely connected
by the fact that the failure to meet the obligations of Sec. 2 of
the GPL is a condition subsequent for the grant of the license.
Therefore, Plaintiff would not be not barred from claiming invalidity
of the entire contract.
Contrary to the Defendants opinion, this likewise does also not result
in the fact that any clauses of the GPL violate antitrust law. The only
consequence of the invalidity of the entire contract is that Defendant
is not a licensee [of the programs].
Therefore, Plaintiff can call upon Defendant for reimbursement of the
costs of the cease-and-desist letter of February 1, 2006. However,
Plaintiff can only claim reimbursement of a 1.3x the General Fee instead
of the 1.5x the General Fee claimed in the action, since the matter was
only of average difficulty. The presumed value of the dispute of 150.000
EUR is not inappropriate considering the fact that the claim is founded
in copyright infringements of three software programs. Adding the
statutory lump sum for expenses, Plaintiff can demand reimbursement of
2,080.50 EUR.
Likewise, Plaintiff can pursuant to Sections 683, 670 of the German
Civil Code (BGB) demand reimbursement of the costs for the test purchase
(141.34 EUR) upon transfer of ownership of purchased data storage unit
to Defendant (Section 322 of the German Civil Code (BGB)).
Finally, Plaintiff can demand reimbursement of the reengineering costs
of the data memory unit purchased for testing purposes. The costs
incurred were costs that Plaintiff could rightly assess as necessary
costs considering the circumstances, since reengineering was the only
possible means for him to examine whether the firmware used in the data
storage unit contained the three software programs. In reengineering,
Plaintiff also did not infringe Defendants copyright, since he did not
perform a decompilation which would only be permissible under the
conditions of Section 69e of the German Copyrights Act (UrhG). Plaintiff
did not
Page 8
translate the object code back to the source code but only recorded the
booting process of the data storage unit and examined the result for
evidence of usage of one of the software programs.
Plaintiff is entitled to the customary remuneration for the time
invested in the reengineering, since such services are part of
Plaintiffs profession as a free programmer (cf. Palandt-Sprau, 65th
edition, München 2006, § 683, Rz. 8). The suggested hourly rate of
140.00 EUR net has not even been contested as unusual by Defendant.
Plaintiff could also claim an amount of time spent of four hours.
Initially, Defendant contested the reengineering costs by pleading lack
of knowledge. However, after Plaintiff described the way he proceeded
in a detailed manner in the statement of July 20, 2006, Defendant no
longer contested the alleged amount of time spent. It would have been
the burden of Defendant as a company that offers a large variety of
hardware and network components to demonstrate that the amount of
time spent was not necessary to carry out the reengineering.
The decision on interest is based on Sections 280, 286, 288 of the
German Civil Code (BGB). Plaintiff is, however, only entitled to the
payment of interest on account of delay in the amount of 5 percentage
points above the base rate.
Because of the copyright infringement, Plaintiff also has a right of
disclosure against Defendant based on copyright infringement pursuant
to Section 101 a of the German Copyright Act (UrhG).
Defendant bears the full costs of the litigation, since Plaintiffs
claims only slightly exceeded the claims granted by the court and only
lead to a marginal increase in costs (Section 92, Subsection 2, No. 1
of the German Code of Civil Procedure (ZPO))
The decision on the provisional enforceability follows from Section 709
of the German Code of Civil Procedure (ZPO).
The setting of the value of the dispute is based on Section 3 of the
German Code of Civil Procedure (ZPO).
Signatures
-----------
regards,
alexander.
- [verdict in English] German-GPL victorious in Frankfurt district court,
Alexander Terekhov <=