The First Civil Senate of the Federal Court of Justice (BGH), which is responsible, inter alia, for copyright law, has referred questions to the Court of Justice of the European Union (ECJ) for a preliminary ruling on the admissibility under copyright law of the distribution of "used" software licences.
The plaintiff develops computer software which it sells predominantly in such a way that the customers do not receive a data carrier but download the software from the plaintiff's website onto their computer. The plaintiff's licence agreements stipulate that the right of use which the plaintiff grants to its customers for the computer programs is not assignable.
The defendant trades in "used" software licences. In October 2005, it offered "already used" licences for the plaintiff's programmes. In doing so, it referred to a notarial certificate in which reference was made to a confirmation by the original licensee according to which he had been the legal owner of the licences, was no longer using them and had paid the purchase price in full. After purchasing a "used" licence, customers of the defendant download the corresponding software from the plaintiff's website onto a data carrier.
The plaintiff is of the opinion that the defendant infringes the copyright in "used" licences by inducing the purchasers to copy the corresponding computer programs. It therefore brought an action against the defendant for injunctive relief.
The District Court and the Court of Appeal upheld the action. On appeal by the defendant, the Federal Court of Justice stayed the proceedings and referred some questions to the Court of Justice of the European Union for a preliminary ruling on the interpretation of Directive 2009/24/EC on the legal protection of computer programs.
According to the Federal Court of Justice, by downloading the computer programs, the defendant's customers interfere with the right to reproduce the computer programs, which is exclusively vested in the right holder under Section 69c No. 1 UrhG. Since the defendant induces its customers to commit this interference by offering "used" licences, it can be held liable for injunctive relief if its customers are not entitled to reproduce the programmes. However, according to the BGH, the defendant's customers may possibly rely on the provision of Section 69d (1) UrhG, which transposes Article 5 (1) of Directive 2009/24/EC into German law and must therefore be interpreted in conformity with the Directive. According to Art. 5(1) of Directive 2009/24/EC, unless otherwise agreed, the reproduction of a computer program does not require the rightholder's consent if it is necessary for the lawful acquirer to use the computer program for its intended purpose. The question therefore arises whether and, if so, under what conditions the person who has acquired a "used" software licence is to be regarded as the "lawful acquirer" of the corresponding computer program. In this context, the further question may also arise as to whether the right holder's distribution right is exhausted if a computer program has been put into circulation with his consent by way of online transmission.
Order of the BGH of 3 February 2011 - I ZR 129/08 - UsedSoft
Lower courts:
LG München I - Judgment of 15 March 2007 - 7 O 7061/06 (ZUM 2007, 409 = CR 2007, 356)
OLG Munich - Judgment of 3 July 2008 - 6 U 2759/07 (ZUM 2009, 70 = CR 2008, 551)
Source: Press release of the BGH
Attorney at Law Michael Ullrich, LL.M. (Information Law)
Specialist lawyer for information technology law (IT law)
E-mail: info@goldberg.de
