Sunday 5 June 2011

Licensees, third parties and the Software Directive: a reader asks ...

(Third) party time for the
Software Directive ... 
The 1709 Blog has received some interesting questions from one of its readers, who asks:
"“Articles 5(1), 5(2), 5(3) and 6 of the Software Directive (Directive 2009/24) and Sections 50A, 50B, 50BA and 50C of the Copyright, Designs and Patents Act 1988 in the UK set out ‘permitted acts’ in relation to software (see also SAS v WPL here and here, in which questions have been referred to the ECJ regarding the scope of the permitted act of observing, studying and testing). My questions however relate to third parties and the permitted acts. They are:
1. If a licensee engages a third party to carry out a permitted act on its behalf:
(a) would the licensee be able to use the results of the third party’s act without infringing the licensor’s copyright? 
(b) would the third party have a defence to copyright infringement, on the basis it was carrying out a permitted act on behalf of the licensee? 
(c) would the answer to 1(b) be different if the Licence Agreement between licensee and licensor included a prohibition on sublicensing or permitting any other third party use? 
(d) could a prohibition on permitting any third party access for the purpose of carrying out a permitted act on behalf of the licensee, be void under Article 8 Software Directive and Section 296A Copyright, Designs and Patents Act 1988?"
As usual, the 1709 Blog welcomes your answers and comments, even if you are a member of the Court of Justice of the European Union ...


Crosbie Fitch said...

Only copyright law derogates from an individual's liberty. Neither license nor contract can further reduce it.

A licensee always has a choice between observing the conditions of the license in order to enjoy the liberties it restores, OR dispensing with the license and enjoying the liberties not suspended by copyright, i.e. the acts permitted by copyright.

1a) YES, but this may be precluded by the license and thus mean any prior acts only permitted by license would become infringements.

1b) If the license permits otherwise infringing acts by parties authorised by the licensee then they aren't infringements. If a 3rd party performs a permitted act then it isn't an infringement (on whoever's behalf it may be).

1c) A license can only provide permission to the licensee with conditions. It cannot govern the licensee or 3rd parties. A license could permit copies on condition no access to them or the licensed copy was permitted to 3rd parties.

d) It would be a license condition not a prohibition. 3rd parties would still have legitimate access, but being permitted access by the licensee would breach that license condition - and thus possibly result in prior acts by the licensee constituting infringements. A license does not constrain 3rd parties.

AndyJ said...

Although the Act [only] specifically authorises the lawful owner to carry out specific actions in accordance with ss 50A, 50B and 50C, where it is necessary and when the information cannot be obtained in another way, the Directive at Art 6.1 (a) goes further and says ”the licensee or by another person having a right to use a copy of a program, or on their behalf by a person authorised to do so
Assuming that the Directive trumps domestic law (as I am sure a reference to the ECJ would rule), this would seem to permit the use of an authorised third party to undertake the de-compilation on behalf of the licensee for the permitted objective. Taking that a stage further, it could be argued from s 50B (1)(b) that the licensee would be permitted to make a copy of the program in order to provide that copy to the third party for the purpose of de-compilation> however, it would probably be safer to handover the actual licensed copy.
If the Art 6.1(a) statement is the correct interpretation as the the rights of the licensee, then it would follow that any terms in the licence which sought to prevent such an action would be void under s 296A.

Suzy S said...

I agree regarding Article 6.1(a), but Articles 5(1) and(3) don't contain similar wording. Doesn't this support a conclusion that the acts permitted under Article 5(1) and (3), including the act of observing, studying and testing, can only be carried out by the 'lawful acquirer'/'person having a right
to use the computer program'? i.e. such a party cannot engage 3rd parties to carry out the permitted acts on their behalf, nor can the 3rd parties enjoy the protection of the permitted acts in their own right (as they are not an 'lawful acquirer' nor a 'person having a right
to use the computer program').