In a decision of 12 May 2009, the Higher Regional Court of Frankfurt am Main (OLG) ruled in appeal proceedings that the first purchaser of software licences is not entitled to sell them to second purchasers without the manufacturer's consent.
The plaintiff in the injunction is the manufacturer and owner of the copyright of the computer program "Microsoft Windows XP Professional". It provides its programmes with a so-called certificate of authenticity (COA), which also contains the serial number (product key) necessary for the installation of the programme. With this serial number, the download of the programme and its activation is possible.
Within the framework of so-called volume licence agreements, the plaintiff allows its major customers to reproduce the programme and sell the reproductions. If the major customer has acquired too many licences or COAs, it sells the COAs it does not need to dealers for resale.
In this way, the defendant also acquired the COAs in dispute and offered them for sale on the eBay trading platform.
At the request of the defendant, the Frankfurt am Main Regional Court issued a temporary injunction on November 26, 2008 prohibiting the defendant from offering, selling or otherwise marketing the certificates of authenticity without the defendant's consent.
The defendant filed an opposition to this and applied for legal aid to conduct the opposition proceedings. The Regional Court rejected this application on the grounds that the opposition had no prospect of success.
Rightly so, as the OLG now ruled on the complaint of the defendant in the injunction. Since the COAs, in addition to their function of certifying the authenticity of a certain software, also embodied licensing rights, they could not be transferred to third parties without the consent of the plaintiff in the injunction. In principle, it was only up to the copyright holder to decide to whom it granted rights of use to the software programmes it had developed.
The acquirer could also not invoke the so-called "principle of exhaustion". This principle states that the right holder is only entitled to the right of first distribution, but has no possibility to restrict the manner of further distribution. However, exhaustion could only occur in a physical copy of a work, but not in rights or documents embodying rights. The COAs in dispute only enabled the download and activation of the associated software. Therefore, the COAs were not physical copies of the work, but only licence rights.
Higher Regional Court (OLG) Frankfurt am Main, order of 12.5.2009, file number 11 W 15/09
Source: Press release of the Higher Regional Court Frankfurt am Main
Goldberg Attorneys at Law
Michael Ullrich, LL.M. (Information Law)
Specialist lawyer for information technology law (IT law)
E-mail: info@goldberg.de
