Second Injunction Enforcing GPL Issued in Germany

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Second Injunction Enforcing GPL Issued in Germany

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For the second time in a year, a Munich court has issued a temporary injunction enforcing the General Public License (GPL) by prohibiting a commercial software provider from distributing certain products until it has complied with the terms of the GPL.

Background: The GPL

Without a valid license, no one other than the copyright holder is permitted to copy, distribute or create derivative works of any item of software. Modifying or translating the software code results in the creation of a derivative work.

The GPL, which was developed by the Free Software Foundation in 1991, is one of the best-known licenses used by developers of open source software. As discussed in our December 20, 2000, email alert, "open source software" means software for which the source code is "open" or available for anyone to read and modify.

Anyone who distributes or publishes GPL-licensed code, whether in original or modified form, must make the code available under the terms of the GPL. The GPL requires that the distributor or publisher provide a copy of the GPL to all recipients, so that they know their rights and obligations with respect to the code. It also requires the distributor or publisher to either provide the source code for the distributed code or offer to make the source code available to recipients, at a cost not to exceed the distributor's actual cost of physical distribution. Any attempt on the part of a publisher or distributor to copy, modify or distribute the GPL code without adhering to the terms of the GPL will result in an automatic termination of rights.

The aspect of the GPL that is of the greatest concern to commercial software developers is its "viral" character. As explained in the GPL Frequently Asked Questions, if proprietary code is combined or linked with GPL code, the proprietary code itself becomes subject to the GPL and must be made freely available in source code form.

The Sitecom Case

In early April 2004, the District Court of Munich (Landgericht München I) granted a preliminary injunction against Sitecom Deutschland GmbH, prohibiting Sitecom from distributing its wireless networking router based on GPL code until it complied with the terms of the GPL. Harald Welte, head of the open source netfilter/iptables project (the Project), applied for the Sitecom injunction, claiming that Sitecom's router included GPL-licensed software developed by the Project. As the owner of the copyright in the GPL software, the Project had the right to seek enforcement of the GPL license under which Sitecom received the right to modify and distribute the code. The Project sought the injunction because Sitecom was distributing its router code without making the source code available and without including the GPL license terms with the router.

Sitecom appealed the injunction, but the Munich court issued a written opinion upholding it. (This first court opinion upholding the validity of the GPL is available in German and in English.) The court determined that, without a valid license, Sitecom would have been infringing the Project's exclusive rights as the holder of the copyright in the underlying GPL software. Therefore, Sitecom either never had the right to distribute the code in the first place, or, if it did receive such right, it received it pursuant to the terms of the GPL and thereby lost those rights by violating the GPL. As a result, the court confirmed that it was appropriate to enjoin Sitecom from distributing the GPL code unless it complied with the terms of the GPL.

The parties later settled the dispute. As of June 3, 2005, Sitecom has posted the terms of the GPL on the Frequently Asked Questions webpage for the router.

The Fortinet Case

Mr. Welte also runs the gpl-violations.org project, which tracks violations of the GPL and tries to enforce its terms. In early April 2005, he obtained a preliminary injunction, also from the District Court of Munich, against Fortinet UK Ltd. Fortinet was prohibited from distributing its firewall products that include GPL code without distributing the source code for those products and otherwise complying with the GPL. Mr. Welte holds the copyright for the Linux component "initrd," which Fortinet used in its products.

Within a few weeks of the issuance of the injunction, Fortinet agreed to provide the source code for these products, upon request, for the cost of distribution. Fortinet also promised to modify its licensing provisions to include the GPL terms.

Conclusion

The Sitecom and Fortinet cases are the first cases anywhere in the world where a court has ruled on the enforceability of—and has enforced—the GPL. Although the 2001/2002 lawsuit between MySQL AB and NuSphere Corporation in the US District Court for the District of Massachusetts touched on the enforceability of the GPL, the issue was not central to the case and therefore not ruled on by the court.

It is unclear whether other courts will follow the lead of the District Court of Munich. However, companies using software subject to the GPL or any other open source license should be aware of the real possibility that their distribution of the code may be jeopardized if they do not abide by the terms of the GPL.

All software developers should carefully review the license terms of any software that they are considering incorporating into or bundling with proprietary software, whether obtained commercially or for "free," and should seek legal counsel to understand the terms of the license and the risks of ambiguous or unresolved language.

For more information on this issue or other technology transactions and licensing matters, contact any of the authors listed above.

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