Regarding the legal protection of software it is recommended not to only use copyright protection, but also to utilise protection based on individual identifiers and trademark rights. A recent decision of the Court of Appeals of Düsseldorf addresses special questions of such protection for GPL-licensed software (judgement of 4/24/2012 – I-20 U 176/11 – Enigma) according to which an allowed use of the software title may depend on ways of the software development and sales. Furthermore, the GPL-compliant use of the software may play a role as well.

Matter of dispute was the title of a user interface software in set-top-boxes protected as a Community trademark. The user interface software itself was licensed under the GPLv2. The proprietor of the trademark requested to stop the use of the software title in competitors’ products. In there the software title was used in the context of further technical information as well as in the corresponding “About”- menu.

However, the Court did not recognise a trademark infringement in such use of the software title. Thus, a prerequisite of trademark infringements is the use of an identifier for the same purpose as a trademark is to be used, i.e. as an indication of the commercial origin of the product. However, according to the Court of Appeals of Düsseldorf the disputed title in this case was merely used as an indication of the software itself. But furthermore, an indication of the commercial origin of the GPL-licensed software could not be recognised, if the software was actually developed and distributed by one of a wide variety of manufactures.

In addition, the Court of Appeals of Düsseldorf was of the opinion that the contested use of the software title as a descriptive indication did not require any consent of the trademark proprietor in the sense of Article 12 lit. b CTMR as long as it was used for the same software and the user complied with the license terms of the GPL. Therefore, software, for which anyone can acquire a right of use, is ultimately to be treated as a public domain works in terms of its title. Regarding public domain works the Federal Court of Justice had already decided some time ago that the use of the title of such works in the context of § 23 para. 2 of the German Trademark Act (MarkenG) or Article 12 lit. b CTMR was allowed without the consent (BGH, order of 2/17/2000 –  I ZB 33/97 – Bücher für eine bessere Welt).

Furthermore, neither adjustment nor change of the software would lead, in principle,  to a different assessment. As such a title of the public domain material could be used without approval for its adaptation in the sense of § 23 para. 2 of the German Trademark Act (MarkenG) (cf. Court of Appeals of Munich, judgement of 4/30/2009 – 29 U 4978/08 – Der Seewolf). In this respect the Court of Appeals of Düsseldorf made a software-specific limitation, according to which the identification could only be used without the consent of the proprietor for the modified software if at least the core functions of the software still remain. And already some time ago  the Court of Appeals of Düsseldorf had decided that a right to use the software title protected as a trademark cannot be acquired on the basis of a GPL-license (cf. Court of Appeals of Düsseldorf, judgement of 28/9/2010 – I-20 U 41/09 – xt:commerce).