Brussels, 03/07/2012 (Agence Europe) - An author of software cannot oppose the resale of his “used” licences allowing the use of his programmes downloaded from the internet. Indeed, the exclusive right of distribution of a copy of a computer programme covered by such a licence is exhausted on its first sale. On the other hand, the exclusive right for reproduction of the programme remains and the person initially acquiring the programme must make the copy held unusable when selling the licence to a third person.
That, in substance, is the content of the ruling delivered by the EU Court of Justice on Tuesday 23 July in Case C-128/11, in response to the question raised by the Bundesgerichtshof (Federal Court of Justice, Germany). The latter was to rule on litigation between: - the developer of Oracle software which distributes programmes on a physical support or online and allows up to 25 users to access it by downloading it to the main memory of their work-station computers, providing maintenance and monitoring; - and the German company UsedSoft, an undertaking which markets licences acquired from customers of Oracle. Customers of UsedSoft, who are not yet in possession of the software download it directly from Oracle's website after acquiring a “used” licence. Customers who already have that software can purchase a further licence or part of a licence for additional users. In that case, they download the software to the main memory of the work stations of those other users. The German court therefore asked the CJEU whether, on the basis of the directive on the legal protection of computer programmes (2009/24/EC), the person acquiring a “second hand” licence can be considered a “lawful acquirer” according to the meaning of the directive, using that licence to make copies of the programme in question.
In its ruling, the Court confirms the principle of exhaustion of the distribution right, set out by the directive whereby the first sale of a copy of a computer programme in the EU by the copyright holder (or author of the programme), or with his consent, exhausts his exclusive right to distribution of the copy in the Union and consequently makes him lose the possibility of invoking his exclusive use for opposing resale of that copy. This principle applies not only where the copyright holder markets copies of his software on a material medium (CD-Rom or DVD) but also where he distributes them by means of downloads from his website, the Court states in answer to an objection raised by Oracle. It goes on to explain that, when the copyright holder makes a tangible or intangible copy available to his customer and at the same time concludes, against payment, a licence contract granting the customer the right to use the copy for an unlimited period of time, that copyright holder transfers the right of ownership for that copy to the customer and thus exhausts his own exclusive right of distribution. Therefore, even if the licence contract prohibits further sale, the copyright holder can no longer oppose resale of the copy.
This exhaustion of the right of distribution is also extended to the copy of the programme sold as corrected and updated by the copyright holder, as the functionalities corrected, altered or added on the basis of such an agreement form an integral part of the copy originally downloaded and can be used by the customer for an unlimited period.
Nonetheless, if the licence acquired by the first acquirer relates to a greater number of users than he needs, that acquirer is not authorised by the effect of the exhaustion of the distribution right to divide the licence and resell only part of it. When selling to a third party, he must make the copy downloaded onto his own computer unusable at the time of resale. If he continued to use it, he would infringe the copyright holder's exclusive right of reproduction of his computer programme. In contrast to the exclusive right of distribution, however, the exclusive right of reproduction is not exhausted by the first sale.
Here too, however, the directive authorises “any reproduction that is necessary for the use of the computer programme by the lawful acquirer in accordance with its intended purpose”. Consequently, such reproductions may not be prohibited by contract. Thus, the Court states, any subsequent acquirer of a copy for which the copyright holder's distribution right is exhausted, constitutes such a “lawful acquirer”, who can therefore download onto his computer the copy sold to him by the first acquirer. Such a download must be regarded as a reproduction of a computer programme that is necessary to enable the new acquirer to use the programme in accordance with its intended purpose. Therefore, “the new acquirer of the user licence, such as a customer of UsedSoft, may, as a lawful acquirer of the corrected and updated copy of the computer programme concerned, download that copy from the copyright holder's website”. (FG/transl.jl)