Recent Developments in Anti-Circumvention law, GPL Licensing and Adwords

There are some interesting developments in three areas I have been covering in this blog for some time now, all coming from foreign courts.

Anti-Circumvention Law
According to press reports (the decision has not been officially published yet), the German highest civil appellate court (BGH) reversed last week a judgment coming from the Regional Appellate Court in Munich concerning the liability of internet news portals for linking to Internet sites where unlawful circumvention software is offered.

To my knowledge, it is the first time the BGH releases a decision on the German anti-circumvention law, which is interesting in itself. The outcome should please those (like me) who are skeptical about the so-called anti-trafficking provisions (such provisions exist also in U.S. and E.U. law), which prohibit various kinds of activities that help others to circumvent technological protection measures preventing access to and use of copyrighted materials.

Some background first:
In March 2005 the Munich District Court I issued an injunction against an online news portal (called Heise Online) that had published a report about a new software update (AnyDVD) enabling overcoming DVD copy restrictions. Heise provided a link to the Web site of the company that offered CD- and DVD-ripping tools (SlySoft). The district court held that downloading the copy control circumvention software by users in Germany would constitute importation and distribution within the meaning of Section 95a(3) of the German Copyright act, and therefore, would violate the trafficking prohibition. Based on this finding, the court held that by providing Internet linking to the SlySoft Web site, Heise Online was liable for willfully assisting that illegal act.

The decision was appealed to the Munich Regional Appellate Court. The Appellate Court found Heise indirectly liable as a facilitator (Störer) regarding the illegal infringing activities of SlySoft. In the view of the Court, freedom of the press did not legitimize the provision of the “additional service” of linking, and consequently, the injection was affirmed to remove the linking to the SlySoft Web site.

Now the BGH appears to have reversed this judgment and ruled in favor of Heise. Since we do not know the grounds for the reversal yet, it is difficult to assess the impact of this decision on German anti-circumvention law.

GPL Licensing
Another one from Germany: This time the Düsseldorf Appellate Court was asked to decide on interface questions between GPL licensing and trademark law. Most of the decision discusses the violation of trademark rights committed by an operator of online shop selling software and related services. The software at issue was distributed by the trademark owner under a GPL license. The relevant question was whether the GPL license could have any effect on the trademark infringement counts for the unauthorized use of the trademark on the commercial website of defendant.

Well, not surprisingly, the Court held that GPL permissions do not embody permissions to make use of a protected mark by the entity that offers the software. Here is my loose translation of the relevant paragraph (page 14 of the judgment):

The General Public License (GPL), which controls the software distributed under the trademark of plaintiff, grants the defendant no rights whatsoever to use the mark. The GPL controls merely the copyright aspects of using the underlying software, containing no provisions that relate to trademarks. The lack of permission to use the mark does not empty the copyright permissions. The licensee can market the software she has legally reproduced under a different (her own) name. Though marketing the software under the name of its creator surly bears commercial advantages, it is not necessary for taking advantage of the copyright permissions.

In other words, the GPL contains no implied license to use the mark of the entity distributing the GPL software. So how about creating in the GPL an explicit license to use the mark, at least in certain circumstances? Would it make sense? This could provide some food for thought to those considering working on a GPLv.4 draft.

The decision rendered on September 30, 2010 by the High Court of Madras, India, is by far the most extensive Adwording decision I have seen so far (thanks to Mr. Rajan Arumuga for drawing my attention to this decision). It contains plenty of citations to U.S., E.U. and other foreign case law. The full text (per Justice RAMASUBRAMANIAN) is searchable here.

Plaintiff is Consim Info Pvt. Ltd. and defendant is Google India. Bottom line: The court basically rejected plaintiff’s trademark-based objections to the practice of Adwords. Google marks another victory among those already won in many other jurisdictions in its worldwide litigation campaign to immunize Adwording against trademark infringement allegations, where protected marks are used as keywords to trigger contextual advertisements.

UPDATE - As to the GPL decision, Dr. Till Jaeger reminds me that the GPLv.3 already mentions trademarks (the decision above involved a GPLv.2 license).

Indeed. Sec. 7 to the GPLv.3 provides:

Notwithstanding any other provision of this License, for material you add to a covered work, you may (if authorized by the copyright holders of that material) supplement the terms of this License with terms: ...
e) Declining to grant rights under trademark law for use of some trade names, trademarks, or service marks ...

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