A body of case law of the CJEU is being developed that relates to software protection. In this post, we 'll bring you updates about the jurisprudence of the Court on relevant issues.
1. Case C-128/11 - UsedSoft GmbH v Oracle International Corp.
Abstract: An author of software cannot oppose the resale of his ‘used’ licences allowing the use of his programs downloaded from the internet. The exclusive right of distribution of a copy of a computer program covered by such a licence is exhausted on its first sale. Whether that action can be classified as exhausting the rightholder's distribution right with regard to the copies downloaded - Marketing of 'used' licences of programs downloaded by the first acquirer - Concept of 'lawful acquirer.
Operative part of the judgment
a. Article 4(2) of 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 right of distribution of a copy of a computer program is exhausted if the copyright holder who has authorised, even free of charge, the downloading of that copy from the internet onto a data carrier has also conferred, in return for payment of a fee intended to enable him to obtain a remuneration corresponding to the economic value of the copy of the work of which he is the proprietor, a right to use that copy for an unlimited period.
b. Articles 4(2) and 5(1) of Directive 2009/24 must be interpreted as meaning that, in the event of the resale of a user licence entailing the resale of a copy of a computer program downloaded from the copyright holder's website, that licence having originally been granted by that rightholder to the first acquirer for an unlimited period in return for payment of a fee intended to enable the rightholder to obtain a remuneration corresponding to the economic value of that copy of his work, the second acquirer of the licence, as well as any subsequent acquirer of it, will be able to rely on the exhaustion of the distribution right under Article 4(2) of that directive, and hence be regarded as lawful acquirers of a copy of a computer program within the meaning of Article 5(1) of that directive and benefit from the right of reproduction provided for in that provision.
2. C-406/10 - SAS Institute
Reference for a preliminary ruling: High Court of Justice (England & Wales), Chancery Division - United Kingdom.
Intellectual property - Directive 91/250/EEC - Legal protection of computer programs - Articles 1(2) and 5(3) - Scope of protection - Creation directly or via another process - Computer program protected by copyright - Reproduction of the functions by a second program without access to the source code of the first program - Decompilation of the object code of the first computer program - Directive 2001/29/EC - Copyright and related rights in the information society - Article 2(a) - User manual for a computer program - Reproduction in another computer program - Infringement of copyright - Condition - Expression of the intellectual creation of the author of the user manual.
Operative part of the judgment
a. Article 1(2) of Council Directive 91/250/EEC of 14 May 1991 on the legal protection of computer programs must be interpreted as meaning that neither the functionality of a computer program nor the programming language and the format of data files used in a computer program in order to exploit certain of its functions constitute a form of expression of that program and, as such, are not protected by copyright in computer programs for the purposes of that directive.
b. Article 5(3) of Directive 91/250 must be interpreted as meaning that a person who has obtained a copy of a computer program under a licence is entitled, without the authorisation of the owner of the copyright, to observe, study or test the functioning of that program so as to determine the ideas and principles which underlie any element of the program, in the case where that person carries out acts covered by that licence and acts of loading and running necessary for the use of the computer program, and on condition that that person does not infringe the exclusive rights of the owner of the copyright in that program.
c. Article 2(a) of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society must be interpreted as meaning that the reproduction, in a computer program or a user manual for that program, of certain elements described in the user manual for another computer program protected by copyright is capable of constituting an infringement of the copyright in the latter manual if – this being a matter for the national court to ascertain – that reproduction constitutes the expression of the intellectual creation of the author of the user manual for the computer program protected by copyright.
3. Case C‑393/09,Bezpečnostní softwarová asociace – Svaz softwarové ochrany
Intellectual property – Directive 91/250/EEC – Legal protection of computer programs – Notion of ‘expression in any form of a computer program’ – Inclusion or non-inclusion of a program’s graphic user interface – Copyright – Directive 2001/29/EC – Copyrights and related rights in the information society – Television broadcasting of a graphic user interface – Communication of a work to the public.
Operative part of the judgement:
a. A graphic user interface is not a form of expression of a computer program within the meaning of Article 1(2) of Council Directive 91/250/EEC of 14 May 1991 on the legal protection of computer programs and cannot be protected by copyright as a computer program under that directive. Nevertheless, such an interface can be protected by copyright as a work by Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society if that interface is its author’s own intellectual creation.
b. Television broadcasting of a graphic user interface does not constitute communication to the public of a work protected by copyright within the meaning of Article 3(1) of Directive 2001/29.
4. Case T-198/98- Micro Leader v Commission
Judgment of the Court of First Instance (Third Chamber) of 16 December 1999.
Micro Leader Business v Commission of the European Communities.
Competition - Complaint - Rejection - Articles 85 and 86 of the EC Treaty (now Articles 81 and 82 EC) - Prohibition on importing software marketed in a third country - Exhaustion of copyright - Directive 91/250/EEC.
5. T-201/04 - Microsoft v Commission
Judgment of the Court of First Instance (Grand Chamber) of 17 September 2007.
Microsoft Corp. v Commission of the European Communities.
Competition - Abuse of dominant position - Client PC operating systems - Work group server operating systems - Streaming media players - Decision finding infringements of Article 82 EC - Refusal of the dominant undertaking to supply and authorise the use of interoperability information - Supply by the dominant undertaking of its client PC operating system conditional on the simultaneous acquisition of its media player - Remedies - Appointment of an independent monitoring trustee - Fine - Determination of the amount - Proportionality.
The Court confirmed the legality of the Decision and fine imposed by the
Commission on Microsoft for abuse of a dominant position in relation to the
refusal to supply the interoperability information for operating PC Windows
with other systems and the tied sale of Windows Media Player.
The Commission had adopted a Decision stating that Microsoft had infringed Article 82 EC by committing abuses of a dominant position because it had engaged in two kinds of abusive conduct, first the refusal by Microsoft to supply its competitors with “interoperability information” and to authorise the use of that information for the purpose of developing and distributing products competing with Microsoft’s own products on the work group server operating systems market, and second by making the availability of the Windows client PC operating system conditional on the simultaneous acquisition of the Windows Media Player software, the consequence of which is the restriction of competition in the multimedia player market. The
Commission imposed a fine of EUR 497 million on Microsoft, as well as corrective
action to be taken within a certain period of time, subject to a complex verification mechanism.
Microsoft brought proceedings for annulment of this Decision before the Court of First Instance, invoking several arguments including errors of assessment by the
Commission, the infringement of rules on the protection of intellectual property rights and the infringement of the principle of proportionality. Microsoft also asked, in the alternative, for a reduction of the fine.
In its judgment, the Court rejected Microsoft’s applications and confirmed the
Commission’s 2004 Decision, in particular with respect to the abuses of a dominant
position and the fine handed down.
Only one minor aspect of this Decision was annulled, namely the imposition of a
monitoring trustee with investigation powers with respect to Microsoft, in the context of the mechanism introduced to monitor the introduction of the corrective measures imposed on the company, as well as payment by Microsoft of the costs associated with this monitoring trustee. In fact, the Court considered that the Commission is thus delegating to the monitoring trustee excessive powers of investigation which the Commission alone can exercise pursuant to Community law.
This judgment is not being appealed against by Microsoft, which has in fact abandoned its other claims before the Court in cases relating to the one at issue.
6. T-19/07 - Systran and Systran Luxembourg v Commission
Judgment of the General Court (Third Chamber) of 16 December 2010.
Systran SA and Systran Luxembourg SA v European Commission.
The General Court orders the Commission to pay Systran liquidated damages of
€12 001 000. The Commission infringed the copyright and know-how held by the Systran group in the Unix version of the Systran machine translation software.
On 4 October 2003 the Commission published a call for tenders for the maintenance and linguistic enhancement of its machine translation system. Following that call for tenders, Systran – the parent company of Systran Luxembourg – contacted
the Commission to inform it that the planned work appeared likely to infringe its intellectual property rights. After correspondence between Systran and the Commission, the latter took the view that Systran had not produced ‘probative documents’ capable of establishing the rights which Systran might claim in respect of its EC-Systran Unix machine translation system. The Commission therefore considered that the Systran group had no right to object to the work carried out by the company which had been successful in the call for tenders. Considering that, after the award of the tender contract, the Commission had unlawfully disclosed its know-how to a third party and that the Commission was infringing its copyright when unauthorised development of the EC-Systran Unix version was carried out by the successful contractor, Systran and Systran Luxembourg brought an action for damages against the Commission before the General Court.
Since the parties could not reach any agreement to resolve the matter when invited by the General Court following the hearing to attempt conciliation, the General Court now gives its ruling on the action for damages. The General Court states, first, that the dispute concerns non-contractual liability. The contracts entered into in the past by the Commission to enable it to use the Systran software do not deal with questions of disclosure of Systran’s know-how to a third party or the carrying out of work which might infringe the intellectual property rights of that company.
As regards the unlawfulness of the Commission’s alleged conduct, the General Court considers that the Systran group has established that there is a substantial similarity, in the core material and certain linguistic routines (programmes), between the Systran Unix and EC-Systran Unix versions, and that the Systran group can therefore rely on the rights held in the Systran Unix version, developed and marketed by Systran since 1993, to object to the disclosure to a third party without its consent of the derivative EC-Systran Unix version, adapted by Systran Luxembourg from 1997 onwards to meet the needs of the Commission.
C. Russel, Exhaustion of rights and downloaded software
More Monday Miscellany, The IPKat
Angus MacCulloch & Albert Sánchez, The CJEU, Copyright, and the ‘First Sale’ Doctrine
Keane Legal, European Court upholds sale of used software products purschased in UsedSoft v. Oracle
Court of Justice of the European Union hands down
landmark judgment on dealing in used software
European Court of Justice: Secondhand Sales Are Legal
Gareth Halfacree, EU court rules second-hand sales of digital goods legal
Dr. Thomas Fischl, Dr. Alexander R. Klett, LL.M., ECJ allows resale of ‘used’ software licences in landmark case and extends the principle of exhaustion even to downloaded (non-physical) copies