This article follows the case of Entr’Ouvert vs Orange on a GPL copyright violation. The case went to the Tribunal de Grande Instance in 2019 and went to the Cour d’Appel recently in 2021, with a referral to the European Court of Justice (CJUE) in between.

TL;DR: ALL courts so far have dismissed all copyright claims, asserting that the GPL (and software license generally) is a contract and can only be pursued as a contractual dispute in contract court.

This article will go into more details about the decisions and highlight some major culture and legal differences. Disclaimer, there may be a bit of a culture shock.

Source:

• [French] Judgment Tribunal de Paris, 21th June 2019
• [French] Judgment Cour d’Appel de Paris, 25 March 2021
• [All] Judgment, CJUE, 18 December 2019, in French in English and 21 other languages
• [French] Explications sur le parasitisme
• [French] Comments on the case from a French law firm

Summary of the case and the parties:

Recommend to read the article I wrote on the first instance, it explains the general case and some US vs French differences that I am not going to cover again.

• Entr’Ouvert, a small software company, was developing a GPL authentication library called Lasso since 2003 (an SAML authentication library).

• Orange Business Service used the library when developing a nationwide authentication service for France since 2005 (mon service public).

For context, Orange Business Service is the contracting arms of Orange, the national French ISP (previously named France Telecom).

It’s a relatively clear case of GPL violation. The question is how to go about enforcing the GPL and maximizing compensation? (Remember that court is about maximizing compensation!).

Decisions so far

Entr’Ouvert sued in the Tribunal de Grande Instance de Paris (similar to High Court in English), mainly based on a counterfeiting claim, citing French copyright law and the European copyright directive.

In first instance, the tribunal de grande instance de Paris dismissed all the copyright/IP related claims, stating that the GPL is a contract and can only be enforced via contact.

Entr’Ouvert lost the case, they had to pay damages and various fees to Orange.

In my opinion, it’s hard to emphasis how groundbreaking and unexpected that was. The case was as clear cut as it gets and Entr’Ouvert lost. They lost a decade and a lot of money through the process, they lost the case, they had to pay damages to Orange!

The decision was referred to the European Court of Justice to question whether it’s possible to dismiss IP/copyright claims like that, and the CJUE ruled it’s perfectly fine. (We will get into that below).

In appeal, the appeal court maintained the decision to dismiss all copyright claims… with a twist about an anti-competition French law from the 1960s.

Even though all the copyright claims were denied, Entr’Ouvert won and was awarded 150 000 euros in damages and various fees, for parasitism (I will cover that in a next section).

Understanding copyright and contractual claims

There’s two major ways to enforce copyright, or that’s what people thought before this case:

1. Under copyright/IP law, you can sue for counterfeiting. It’s similar in both US law (Copyright) and French law (IP Law, article L335-2) and under some European convention on intellectual property.
2. Under contract law, you can sue for breach of contract. It’s similar in both US and French law.

The strategy that is well tried in the US is to go for counterfeiting/copyright, to seek the most damages. Copyright/IP law can carry significantly more damages, both in France and in the US, compared to a contractual dispute. (Remember that it’s all about money!)

1. For an IP violation, the court typically looks at the gain of the counterfeiter. That may be winning and executing the government contracts for Orange. My guess is a government contract like that can go for 7 to low 8 figures.
2. For a contractual violation, the court typically looks at the loss of the victim. That may be some licensing fees and contracting fees for Entr’Ouvert. My guess is a library like that can go for 6 figures, while the bigger player selling OIDC/SAML solutions (Sun, ForgeRock, Oracle, Microsoft) go for an amount per user per year, easily adding up to 7 figures (but I don’t think that one standalone library from a small vendor in 2003 can do that).

Entr’Ouvert followed the counterfeiting strategy, they sued for counterfeiting and got dismissed. (I should stress out that it was a very reasonable strategy, similar law exist, it should have worked, it just didn’t).

In French law, it’s only possible to pursue a single domain, be it contract-law or criminal-law or IP-law. If a case spans multiple domains, it might be ruled on either depending on circumstances, and as soon a claim is settled all claims are closed (it is not possible to sue again or to sue multiple times).

That is to conclude, by having a contract (a license is a contract), you lose your rights to pursue any IP/copyright claims (the two are exclusive in French law). It’s probably the opposite of what US folks were thinking when they originally came up with software licenses.

The decision of the courts is effectively preventing software authors from defending their authors’ rights in any case where there is an open-source license. It effectively deprives them of their right to justice (for counterfeiting).

Note that different courts handle different domains, it’s really important to figure out what claims can be made AND where. Unless I am mistaking, counterfeiting case goes to the Tribunal de Grande Instance (High Court), contractual case between two companies goes to the Tribunal De Commerce (Trade Court), a court cannot rule outside of its respective jurisdiction which may be a factor why Entr’Ouvert lost (the court would not be able to read and interpret the contract).

On the non-existence of EU Copyright and the Bern Convention

A bit of context about the EU and how the EU works.

Many English-speakers readers think that there is an European court and some common legislation across European countries. US readers typically think Europe is similar to the US, in that the US has numerous states with some laws that differ but there is the Federal Court (or whatever) sitting above them that can be escalated to. Well, there is nothing like that in Europe. There is no European court and that’s now how Europe works.

The way Europe works is that each country has its own legal system and laws. When the European Union votes on some directives, each text they agree on will actually be adjusted and translated and incorporated into each member’s
state at their own discretion, eventually. Only then it can be applied by each country. You should understand at this point that there is no “European law”, there are only directives and conventions whose power is limited.

For example, when it comes to copyright, I sadly often hear folks replying anything about “the Bern convention”, they’re short to conclude that the EU (including France) has Copyright because they signed that convention. They couldn’t be more wrong.

The Bern convention is not a thing. It has no practical application. You can’t sue based on some Bern convention. You can’t sue in your country because that’s not local legislation, you can’t sue in an European Tribunal because there isn’t an European Tribunal. (edit for comments: there is one but it deals with human rights, things like war crime or genocide, you are NOT getting there).

France has Droits d’Auteurs that is fundamentally opposed to Copyright in its philosophy. Saying that France has Copyright is a little bit like saying France has a king. It should be well known that the king was beheaded during the French revolution of 1789, what is less known is that there were a handful more kings and revolutions in the following century, in multiple failed attempts to bring back the monarchy.

CJUE

There is an European Directive on Intellectual property, European Directive 2004/48/EC. It’s supposed to give some minimal common grounds, acknowledging the existence of intellectual properties in various forms (notice it doesn’t say copyright but IP).

Under European Directive 2004/48/EC on the enforcement of intellectual property rights, section 1, article 3:

(1) Member States shall provide for the measures, procedures and remedies necessary to ensure the enforcement of the intellectual property rights covered by this Directive. Those measures, procedures and remedies shall be fair and equitable and shall not be unnecessarily complicated or costly, or entail unreasonable time-limits or unwarranted delays.

(2) Those measures, procedures and remedies shall also be effective, proportionate and dissuasive and shall be applied in such a manner as to avoid the creation of barriers to legitimate trade and to provide for safeguards against their abuse.

Note: Notice the irony 16 years after the directive was passed, it’s supposed to be easy to enforce, one decade into a legal battle trying to enforce a clear GPL violation, unsuccessfully.

The French Court was aware of the European directive when it judged, it’s mentioned in the ruling, it was taken into account when copyright was dismissed entirely in favor of contract.

There’s some obvious issues here with combining and applying opposing rules. The French court referred to the European Court of Justice for advise. It is not a real court, you can’t get a case there. The way it works, a court can refer a -narrow- question of law to the CJUE and the CJUE will answer.

The French court referred to the CJUE the below question and they replied on 18th December 2019

“”” [Question]
Does a software licensee’s non-compliance with the terms of a software licence agreement ([…]) constitute:
– an infringement (for the purposes of Directive [2004/48]) of a right of the author of the software that is reserved by Article 4 of Directive [2009/24] on the legal protection of computer programs,
– or may it comply with a separate system of legal rules, such as the system of rules on contractual liability under ordinary law? “””

“”” [Reply conclusion, the full reply is 9 pages]
Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights and Directive 2009/24/EC of the European Parliament and of the Council of 23 April 2009 on the legal protection of computer programs must be interpreted as meaning that the breach of a clause in a licence agreement for a computer program relating to the intellectual property rights of the owner of the copyright of that program falls within the concept of ‘infringement of intellectual property rights’, within the meaning of Directive 2004/48, and that, therefore, that owner must be able to benefit from the guarantees provided for by that directive, regardless of the liability regime applicable under national law. “””

In layman terms, the CJUE decided that IP can be enforced in any way by each individual member’s state. It doesn’t matter “how” as long as it satisfies the guarantees of the directive (there must be a procedure that’s fair and equitable and not too costly…).

That is to say:

• France can enforce software license violations exclusively as contractual disputes, if they wish.
• France can systematically dismiss all IP and copyright claims, with a stamp of approval by the CJUE (in favor of contractual disputes).

Remember. There are different claims, in different courts, with a different order of magnitude of damages. Whichever procedure is chosen makes a substantial difference.

Appeal Court

The case went to Appeal Court of Paris on 19 March 2021, after the decision of the CJUE in 2020.

• Entr’Ouvert is claiming for counterfeiting and a few other minor claims.
• Orange is claiming that the case is a contractual dispute, to get it dismissed.
• There is no claim for breach of contract. If the case is recognized only as a contractual dispute, it falls short because there is no claim on that, which is what happened in first instance.

The Appeal Court decided to maintain the first decision, denying all counterfeiting/copyright/IP claims, however they granted one claim of parasitism. Orange lost the case and they had to pay 150 000 euros in damages plus various fees.

What is parasitism? It’s a French law that goes back to the 1960s or so.

Parasitism: Means by which a business is trying to profit from the reputation or the investments from a competitor, notably by spoofing their fame or they know-how and creating confusion in the mind of the customers.

To make a parallel with the US and the UK, this would be something related to antitrust, unfair or anti-competitive practices.

Read. Orange was unfair for using the software developed and promoted by Entr’Ouvert, without which they may not have been able to win the bid and develop the national authentication system.

That’s certainly a nice twist to not lose the case again. There’s one thing I don’t understand though. Why does the contract take precedence over IP-law but not over competition-law? (Maybe determining counterfeiting requires to interpret the GPL contract, but parasitism does not???). I don’t know if the Appeal Court has the authority to interpret the GPL contract (the previous court did not), which would make little difference because there is no contractual claims anyway.

What happens next?

Entr’ouvert got 150 000 euros in damages. They can leave it at that and take the money.

Or they can appeal to the cour de cassation to assert counterfeiting and we will find out what’s the result in a few years. For reference, they are asking for 3 millions for counterfeiting.

The cour de cassation is the highest French Court, there is just one and it has authority to all laws in the whole territory, one of it’s role is to ensure the law is applied uniformly across the country (It’s the antithesis of the US system where states can make their own laws).

The cour de cassation doesn’t judge cases, it judges whether the law is observed and interpreted as it should be by the courts. In this case it will consider both the national law and the European directive and come up with something.

While we’re at it, this is certainly a good explanation of why extra territorial laws have little holding in France or elsewhere. Tribunals are limited in what they can apply and when a case depends on something else, the case may have to spend a decade to escalate all the way to cour de cassation (premiere instance + cour d’appel + cour de cassation) before it can reach the desired outcome.

I hope the case goes to the cour de cassation so we can have a definitive answer on the enforcability of software licenses in France and the integration (or non-integration) of European Directives. That promises to be interesting.