THE COURT OF VENICE
SPECIALIZED SECTION IN ENTERPRISE MATTERS
The appointed Judge by deciding upon the reserved matter of 1 December 2021 hereby issues the following
In the ante causam precautionary proceeding pursuant to art. 156 l.d.a (Law on Copyright), 700 c.p.c. (Code of Civil Procedure) n. 6716/2021 promoted with a legal claim filed on 13 September 2021
Ovation s.r.l. (04331270273) represented by Advocate Alberto Pianon (Bar of Vicenza), Carlo Piana (Bar of Milan), Raffaella Mainardi (Bar of Venice, who is also appointed to receive service)
Nerds Farm s.r.l. (04634330270)
represented by Advocate Renato Speranzoni (Bar of Venice) and Advocate Valentina Trevisan (Bar of Padua)
STATEMENT OF REASONS
The Claimant states they produce and market software, and offer services in the field of advertisement, consultancy, and creation of web sites – as well as the Defendants.
They also claim to hold the right to the economic use of a software application called Dynamic.ooo – Dynamic Content for Elementor (hereafter referred to as just DCE), a plug-in (or add-on) of another plug-in (Elementor) of the application CMS (Content Management System) named WordPress, which is widely used worldwide.
DCE is an Open Source, a “free software” that is released under a licence chosen by the Claimant, the standard GNU GPLv3 licence. The Claimant explains that they are the holder of the rights on their software: they decided to release it for public access and use, but under the provisions of a specific licence. In this way they can set the conditions for the circulation of the software: they grant a certain freedom to use and also modify it, but if the user violates the rules chosen by the holder, the holder may exercise their author’s rights according to the law.
The Defendants have reportedly developed a similar program, E-Addons for Elementor (doc. 3), deriving it legitimately from DCE (shown in doc. 2 in its 188.8.131.52. version), but they distributed it in violation of the GNU rules chosen by Ovation, for they did not:
– include a notice about their modification of the program
– specify the name of the original copyright holder
The fact that E-Addons is a derivative work is proved by the large parts of the DCE 184.108.40.206 code contained (“copied”) in E-Addons.
Therefore, Ovation claim a prohibitory injunction under penalty of a fine and declare their intention to start a lawsuit to have the prohibitory injunction confirmed and claim for the restoration of the damage. Such prohibitory injunction is reportedly urgently needed because it would be difficult to determine and restore the damage ex-post; the Claimant further argues that “both parties” (meaning the opposing parties, even if the Claimant had not originally indicated a connection between Pesce and Poglie and the company Nerds Farm and their relevant actions) gain profits by selling services related to the use of the software.
Defendants herein are Pesce, Poglie and Nerds Farm, whose last legal representative is Pesce himself.
They allege a pending lawsuit before this Court promoted by Pesce and Poglie against Ovation and Cintolo to ascertain the existence of a de facto company among the three natural persons for the sale of the plug-in of DCE through the platform of Ovation s.r.l., as well as the existence of author’s moral and economic rights on the program itself for Pesce and Poglie as creators. The Defendants argue that pending this lawsuit it is not possible to order the prohibitory injunction requested by the Claimant herein and that the precent proceeding should be suspended in compliance with art. 295 c.p.c. (Code of Civil Procedure). They further argue that the legal claim by the Claimant is too generic, their claim for a prohibitory injunction is inadmissible – since it refers to a program that has been modified in the meantime. They also maintain that the difficulty to determine the damage is actually a proof of its non-existence.
The Defendants deny that E-Addons derives from DCE, since both (DCE and E-Addons) derive from the Defendants’ competences and immaterial property: both programs are derivative works from an original Dynamic Contents Elementscreated by the Defendants themselves.
Therefore, they claim to be holder of the “moral rights (or co-owners who possess the 66%)”.
According to the Defendants, E-Addons and DCE both contain material from the creators’ personal property – which allegedly accounts for the overlapping parts: they don’t result from copying, but rather stem from the same intellectual property.
The parties were granted time to file supplementary statements of defence and replications.
At the hearing for appearance the Claimant, being requested to differentiate relevant actions and claims for the three Defendants herein, stated that Pesce and Poglie had been summoned because they declared themselves holder of the copyright on the software at issue; Nerds Farm, on the other hand, had most likely received from Pesce and Poglie the right to its use.
The Claimant further explained that Ovation hold author’s and economic rights since it acquired it by means of a consultancy and verbal contract for services, as shown and proved by the relative invoices paid by the Claimant.
After the statements of defence and replication have been duly submitted, the Judge took the matter under advisement.
Firstly, there is no interference of any kind between the lawsuit Pesce / Poglie vs. Cintolo / Ovation and the present precautionary proceeding: the precautionary proceeding does not lead to an unassailable decision by the court.
That the precautionary proceeding might potentially be instrumental in relation to the lawsuit promoted by the Defendants herein could cause doubts about its admissibility. In consideration of the evidence submitted, however, there is no instrumental connection between this proceeding and the aforesaid lawsuit – in which the defendants have not filed an appearance yet.
The Claimant has clearly identified what is the intangible asset they claim an exclusive author’s economic right on: the DCE plug-in, specifically in the version 220.127.116.11. as shown in doc. 2, whereas its lastly modified version is of 31 may 2021 – and what is the interfering program: E-Addons, particularly its version of 17 June 2021 shown in the documents 3, 14, 15. The natural evolution of software programs released under free licence does not inhibit the protection of lawful rights. It entails that the infringement be detected and verified with precision and that the lawful right is enforced in a way adequate for the particular asset protected by the author’s rights and for the nature of the violation.
Even the writ of summons by Pesce and Poglie confirms that it is possible to acknowledge the right claimed by the Claimant – or at least rights on free software – since the Plaintiffs therein assert that such right has to be acknowledged to Pesce, Poglie and Cintolo (1/3 per capita).
In the same writ of summons the Plaintiffs further declare the identicalness of DCE and Dynamic Content Elements – contrary to what they do in this proceeding: here they maintain the first to be a derivative of the second and they build part of their defence on this argument.
The front page of doc. 5 filed by the Claimant also contributes to make clear that DCE is a mere renomination of Dynamic Content Elements: the two names on this page are connected with a directional arrow (from Dynamic Content Elements towards DCE) accompanied by the highlighted word “RENAMED”; the document shows the content of the renomination (see the part on pink background): “Elementor Elements” and identifies Poglie as the author of the renomination; further below (green background) Ovation is referred to as “Author”, and hence apparently the holder of the rights on the plug-in.
The articles 64 bis, ter and quarter of the l.d.a. (Law on Copyright) provide that authors or holders of the author’s rights can grant the possibility to publicly use, duplicate and modify their work, but with limitations, by means of a conditional public licence. The violation of the conditions set forth in the licence – in this case a standard licence, presumably the same one adopted by WordPress, a licence whose applicability is undisputed – involves the infringement of the author’s right that can be enforced according to the law. The Claimant’s reconstruction has not been disputed by the Defendants, who nonetheless insist on their being the authors (Poglie and Pesce), whereas Nerds Farms should allegedly be a company marketing E-Addons on behalf of the two natural persons.
According to the writ of summons filed by Pesce and Poglie, Pesce and Poglie themselves set up together with Cintolo a de facto company to share the profits from the sale of the “product” created by Pesce and Poglie and has a company they reportedly decided to “use the company Mr. Cintolo was legal representative of, Ovation s.r.l. in Margera (Province of Venice), as a medium to sell the product”; according to this reconstruction the three parties involved then decided to receive each 33% of the profits gained through Ovation s.r.l.. This presentation tends to neglect the juridical individuality of Ovation, a company which – according to the account offered by Pesce and Poglie themselves as Plaintiffs – was granted, on the basis of mutual agreement, the right to the economic use of DCE. It is unclear how the Defendants thought it possible for them to divert the profits of the company to Pesce and Poglie (they never maintained to be partners in that company and there is no documentation that allows to effectively understand the structure of the two companies at issue). This aspect is not ultimately relevant for the subject matter of this proceeding: it is relevant, though, that the Defendants herein de facto admit that Ovation was granted the right to the economic use, as provided for in the above mentioned GNU.
None of the Defendants herein refers (or referred – in their writ of summons) to a form of reservation of autonomous rights to economic use made by the three subjects involved in favour of the developers of DCE (that is to say, according to the Defendants’ statements, Pesce and Poglie themselves); on the contrary, the decision to use Ovation as a medium to gain economic profit from DCE, profit which was to be entirely divided conflicts with such an hypothesis. Thus the defence focusing on Pesce and Poglie’s being creators is ineffective: it is apparent that also the “creators” have to respect the right they voluntarily bestowed upon Ovation, since they can continue to develop and derive from DCE on their own, while respecting the terms of the GNU in favour of Ovation.
The Defendants don’t deny that they failed to respect the rules of the GNU when they created (by means of derivation – fork –, according to Ovation, from DCE), distributed and proposed “E-Addons” to the public, that is to say no copyright note was published stating that E-Addons derived from DCE and no information was given about the holder of the rights on the original program the derivative was created from.
Another argument proposed by the Defendant is that E-Addons is not a derivative of DCE: the question of the code core shared by the two programs is dealt with in terms of “copying” or “not copying”, whereas it could prove that E-Addons (unquestionably released after DCE) is derived from DCE.
The arguments proposed by the Defendants already imply that E-Addons derives from DCE. They claim that DCE derives, just like E-Addons, from a previous work of theirs: Dynamic Content Elements. Since DCE actually coincideswith Dynamic Content Elements, this entails that the two plug-ins at issue are partially superimposable and that this quality results from a voluntary operation which is inevitably to be regarded as such even if it was performed alongside a relevant decomposition and re-edition work.
It is certainly true what the Defendants further maintain: they can create a utility program similar to DCE. It is not legitimate, though, to derive a program from DCE (since, as already explained, Ovation has an exclusive economic right on it, under the terms of the GNU) – that is to say: to partially or fully use the same codes in order to develop a new software without explicit mentioning the original software, as requested by the GNU. The Defendants reason that the codes shared by E-Addons and DCE are an effect of an unintentional “dragging” due to the creator of both programs being one and the same.
This defence is ineffective.
Notwithstanding the implicit admission mentioned above, the Defendants still dispute the fact that the two programs share large code parts.
The extensive report submitted by the Defendants closes with the following points:
- Both programs aim to add new tools for the creation of web pages through Elementor, a very widespread plugin of WordPress.
- For the above-mentioned functions, the programs share the name of the main folders, such as: Assets, Core, Modules and Override.
- The number of folders and files is substantially different in the two programs.
- E-Addons is made up of a basic program and 20 additional plugins that can be downloaded separately, whereas the “dynamic” program is a program with no additional plugins.
- The comparison of the “core” folder showed that both the structure of the sub-folders and the source codes are remarkably different.
These remarks cannot lead to the conclusions drawn thereafter: “It can be said with certainty that the software “E-Addons for Elementor” does not result from the infringement of the copyright of “Dynamic Content for Elementor”, nor it is a derivative of it.”
What counts in this matter for an effective comparison of the two programs are not their functionalities, but rather the underlying codes.
The existence of different parts in the programs is not relevant to establish whether a derivative process has taken place: the discovery of identical or similar code strings beyond a certain minimum is.
Two different developers working independently to create, from the very beginning, two different programs will naturally use different codes for the operations the programs shall perform; and the same developer creating two different programs, if the rights on the first program have been transferred to another party, can and must use different codes, just like a writer cannot reuse sentences and chapters of a novel he has sold the economic rights on to write a second one.
The fact that the more recent program (E-Addons) is more articulate and complete than the previous one (DCE) is obviously consistent with the evolution of the software, if the program has been derived from the older one, and does not speak against the derivative process itself. The diversity of the source codes in some folders, for example, does not affect the identity of the codes in others.
Before examining the elements that show the derivative process, though, some remarks need to be made about how the Defendants submitted their documentation to this Court. They failed to present their documents in a sequential order and with the Italian translation (not all judges speak English). It is particularly blameworthy that they filed documents divided into nameless folders and even documents with no index or clear denomination. A clear example of it is offered by the large volume of repeated, not chronologically ordered emails in English the Defendants’ argumentation referred to – as a whole – mentioning some relevant circumstances they allegedly proved.
This conduct is especially inappropriate in a precautionary proceeding, and it can by no means be expected that the Judge conduct her own research of significant elements in the pile.
Under doc. 1 two reports in English were submitted that appear to be similar (if not identical). The (two) reports doc. 1 show the existence of numerous, relevant overlapping parts in the codes of DCE and E-Addons, which cannot be dismissed as coincidental. As already explained, the coincident sections (and not the differing ones) need to be considered in a matter of derivation.
As for the Defendants’ argument, they assume that their personal expressive matrix as creators cannot be avoided. Now, if expressive mistakes and odd English formulations (pointed out by the Claimant’s expert in doc. 1) may indeed show linguistic limits and expressive mannerism by the same and only author, their presence in both programs is harmless only as long as it is occasional. Resuming the literary analogy previously used: if someone were in the habit of writing “Affrica” just like the Italian writer Gabriele D’Annunzio used to do, this person would always do so and the presence of “Affrica” in a text would reveal who the author is; it would be a different matter if a literary text contained numerous sentences from another text: in this case this text would be a result of “copying” or “deriving”. Indeed, the conclusions of the Claimant’s report prove exactly that the software codes are largely superimposable.
With the doc. 16 the Claimant submitted the list of the identical parts. The Defendants reacted with a generic negation (“In fact, even if the circumstance were true, which is not…”) and further argued that the identical part is limited and therefore irrelevant.
In truth, 8200 identical lines out of a 300.000 lines’ code provides, in this precautionary proceeding, a substantiated allegation of derivation of E-Addons (which was unquestionably created at a later time) from DCE.
The GNU (doc. 9, Italian version) provides as follows:
“4. Conveying Verbatim Copies.
You may convey verbatim copies of the Program’s source code as you receive it, in any medium, provided that you conspicuously and appropriately publish on each copy an appropriate copyright notice; […] [that you] give all recipients a copy of this License along with the Program. You may charge any price or no price for each copy that you convey, and you may offer support or warranty protection for a fee.
- Conveying Modified Source Versions.
You may convey a work based on the Program, or the modifications to produce it from the Program, in the form of source code under the terms of section 4, provided that you also meet all of these conditions:
- a) The work must carry prominent notices stating that you modified it, and giving a relevant date.
- b) […]
- c) […]
- d) If the work has interactive user interfaces, each must display Appropriate Legal Notices; however, if the Program has interactive interfaces that do not display Appropriate Legal Notices, your work need not make them do so”.
E-Addons does not indicate Ovation as the lawful right holder, nor it informs of any modification of the original software (art. 4 and art. 5, letter a); this information is not given in any of its user interface. Hence, it violates the GNU.
Art. 8 of the GNU further provides as follows:
You may not propagate or modify a covered work except as expressly provided under this License. Any attempt otherwise to propagate or modify it is void, and will automatically terminate your rights under this License (including any patent licenses granted under the third paragraph of section 11).
However, if you cease all violation of this License, then your license from a particular copyright holder is reinstated (a) provisionally, unless and until the copyright holder explicitly and finally terminates your license, and (b) permanently, if the copyright holder fails to notify you of the violation by some reasonable means prior to 60 days after the cessation.
Moreover, your license from a particular copyright holder is reinstated permanently if the copyright holder notifies you of the violation by some reasonable means, this is the first time you have received notice of violation of this License (for any work) from that copyright holder, and you cure the violation prior to 30 days after your receipt of the notice.
Ovation served Nerds Farm a notice (doc. 8) by certified email, to the attention of Mr. Pesce and Mr. Poglie, to which Pesce and Poglie themselves replied, using the certified email of Nerds Farm. In their reply they jointly stated that an expert’s report in their possession excluded that any infringement of the copyright or derivation had taken place, and alsomaintained that the GPL in any case protects the developers, that is to say themselves. This defence sounds ambiguous since it denies and acknowledges at the same time the derivation.
Anyway, the requests of the notice have not been complied with pursuant to art. 8, sub-section 3, so the licence is terminated, and Ovation may well claim a prohibitory injunction.
The existence of the periculum in mora is confirmed, since it appears that the circulation of the software and of accessory services would result in economic consequences – economic consequences Pesce and Poglie themselves refer to in their writ of summons; profits are most likely to be diverted from DCE to E-Addons (which has been derived from DCE upon infringement of the licence) to an extent that could hardly be determined ex post (it is difficult to quantify the economic performance of the software without the infringement at issue), but could be considerable.
The prohibitory injunction is herewith issued with the exclusion of a minimum amount of code lines (to be quantified as 500) in acknowledgment of accidental and inevitable identities and in order to preserve the interoperability with third parties. The matter of the interoperability has been raised both by the Claimant (doc. 1) and by the Defendants in their defence and doc. 6: their arguments, however, in consideration of the 8.200 superimposable lines meticulously indicated by the Claimant, offered a mere generic defence and did not effectively point out which parts are indispensable to grant the interoperability. For this reason, this Court does not intend to prolong the duration of this precautionary proceeding and procrastinate the precautionary measure by requesting an official technical expertise.
To be published on the Defendants’ site.
The Judge establishes the expenses and who should bear them, taking into account the anticipatory character of the proceeding.
FOR THESE REASONS
having regard to articles 156 l.d.a (Law on Copyright), 700 c.p.c. (Code of Civil Procedure), the Judge orders that:
1) the Defendants cease any use open to the public and any publication of the software named E-Addons for Elementor unless they delete each and every part of the code already contained in the 18.104.22.168 version of Dynamic Content for Elementor (as in doc. 2 submitted by the Claimant) exceeding the 500 lines granted above within 7 days from the notification of this order.
2) the Defendants (each subject committing the violation) pay a fine of 100 € for each day of delay in enforcing the order after the due date above specified and within 15 days from the notification of this order, and that they pay 300 € for each day after the 15th day.
3) this ruling be published – at the defendants’ care and expenses – on a page of their website e-addons.com, with a reference on the homepage in a font twice as large as the one normally used on the website; the same be done on their official Facebook page.
4) the Defendants pay the Claimant’s expenses of the present proceedings as follows: € 5.000 for fees, € 545,00 for disbursements, 15 % overheads, VAT and cpa (fee due for the Italian Lawyer’s Fund).
Be it notified
Venice, 13 December 2021
Dr. Lina Tosi