The First Civil Senate of the Federal Court of Justice, which is responsible for copyright law, has once again dealt with the admissibility of the distribution of "used" software licences under copyright law.
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 on the interpretation of Directive 2009/24/EC on the legal protection of computer programs to the Court of Justice of the European Union for a preliminary ruling. After the European Court of Justice answered these questions, the Federal Court of Justice has now set aside the appeal judgment and referred the case back to the Court of Appeal.
According to the Federal Court of Justice, by downloading the computer programs, the defendant's customers encroach on 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, the defendant's customers may be able to rely on the provision of Section 69d (1) UrhG, which transposes Art. 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.
It follows from the decision of the European Court of Justice - according to the Federal Court of Justice - that the acquirer of a "used" software licence is to be regarded as a "lawful acquirer" of a copy of the programme who may make use of the reproduction right if the right to distribute the copy of the programme is exhausted pursuant to Article 4(2) of Directive 2009/24/EC and the resale of the licence to the acquirer is connected with the resale of the copy of the programme downloaded from the copyright holder's website. A resale of the copy of the program downloaded from the copyright holder's website does not require the defendant to hand over a data carrier with an "exhausted" copy of the computer program to its customers. Rather, such a resale can also exist if the customer downloads the copy of the computer program sold to him by the defendant from the copyright holder's website onto his computer.
However, according to the decision of the European Court of Justice, the exhaustion of the copyright holder's distribution right is dependent on a number of conditions. These include, among other things, that the copyright holder has granted the first acquirer the right to use this copy without time limit. Furthermore, the subsequent acquirer of a copy of the computer program can only successfully invoke exhaustion of the distribution right in this copy if the first acquirer has rendered his copy unusable. The Federal Court of Justice referred the case back to the Court of Appeal so that it can examine whether these requirements are met in the present case after the parties have made their submissions.
Judgment of the Federal Court of Justice of 17 July 2013 - I ZR 129/08 - UsedSoft II
Lower courts:
LG München I - Judgement 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
BGH, decision of 3 February 2011 - I ZR 129/08, GRUR 2011, 418 = WRP 2011, 480 - UsedSoft I
ECJ, Judgment of 3 July 2012 - C-128/11, GRUR 2012, 904 = WRP 2012, 1074 - UsedSoft/Oracle
Source: Press release of the BGH
Goldberg Attorneys at Law 2013
Attorney at Law Michael Ullrich, LL.M. (Information Law)
Specialist lawyer for information technology law
E-mail: info@goldberg.de
