By Sue McLean, Morrison & Foerster
Nov. 15, 2016
Furthermore, the CJEU confirmed the principle in its earlier decision in the (much-criticised) Usedsoft case, which involved the sale of used software purchased online via a download, that the rule of exhaustion applies to both tangible as well as intangible software copies, including software purchased under an unlimited licence.
However, unlike Usedsoft, this recent case focused on the resale of a used copy that wasn't made or distributed on an original medium with the rights holder's consent.
The Directive specifies exceptions to the rights holder's exclusive right of reproduction. One of these exceptions relates to the reproduction of backup copies. Backup copies can be made without the copyright holder's authorisation if, (1) they are made by a person who has a right to use the software and, (2) such copies are necessary for the authorised person's licensed use of such software.
The CJEU emphasised that this exception has to be interpreted strictly. Therefore, a back-up copy reproduced for resale purposes is not considered to be made 'only to meet the sole needs of the person having the right to use that software'.
For this reason, even in circumstances where the original physical copy is damaged, destroyed or lost, the acquirer of the backup copy can't resell that backup copy to a third party.
So, what does this ruling mean for businesses?
Businesses can resell used software that they have purchased subject to an unlimited user licence. In addition, businesses that legitimately obtain software can't be prevented from making backup copies if required for their own necessary use, despite any contractual provisions to that effect.
But, if a company unlawfully acquires software, it is not permitted to make backup copies, and, consequently, such backup copies can't be lawfully resold. Moreover, a business can't sell a backup copy even where the original copy was purchased lawfully, because a backup copy can only be made for the user's sole use.
The CJEU's distinction between different types of media appears policy-driven. With this decision, the court helps prevent both the sale of backup software copies obtained illegally and the sale of unauthorised copies of original software on the pretence that they are backup copies.
In addition, the case demonstrates, once again, the requirement for the CJEU to adjust traditional legal principles to reflect technological developments.
Given the size and scale of the European software sector I expect that this won't be the last time the CJEU will be asked to consider what constitutes the lawful resale of software. The topic is far from exhausted.