Author’s rights infringement and software licenses
Entr’Ouvert v. Orange and Orange Business Services
Paris Court of appeals, Pole 5 – 2nd Chamber, 19 March 2021, Docket number 19/17493
The Paris Court of appeals handed down a new decision, on 19 March 2021, in the field of author’s right infringement on softwares.
Specifically, the Court has looked at the nature of the action that the rights owner must launch when the reproached acts revolve around the breach of a licence contract signed between the parties.
In the case at issue, Entr’Ouvert owned author’s rights on a software called LASSO, which had been made available to Orange and Orange Business Services under a free GNU GPL Version 2 license.
It reproached Orange and Orange Business Services to have made the LASSO software available to the French State over the course of a tender for an app, implementing the software, without its authorization and in spite of the contractual stipulations of the GNU GPL Version 2 license.
The parties thus debated the nature of the action to be brought before the Courts : was it an infringement action, i.e. a tortious action, or a breach of contract action, i.e. a contractual action, aimed at condemning the breach of the terms of the license ?
In that regard, the European Court of Justice, in a decision of 18 December 2019, had deemed that such use of a software beyond the scope of a license agreed upon fell « within the concept of ‘infringement of intellectual property rights’ ».
The Paris Court of appeals refers to this decision and indicates that it « does not question the principle of non-cumulation of tortious and contractual liability, and the ensuing consequence of the dismissal of contractual tortious liability to the benefit of contractual liability as soon as the parties are linked by a contract and that the breach of said contract is reproached. ».
According to the Paris Court of appeals, « when the generating factor of an intellectual property right infringement results from a breach of contract, the owner of the rights having consented to the use of said intellectual property rights under certain conditions, then only a breach of contract action is admissible as per the principel of non-cumulation of tortious and contractual liability ».
An infringement action, i.e. a tortious liability action is thus only admissible, according to the Paris Court of appeals, only when an intellectual property right is used outside of any contractual framework. When a license exists, even if it is breached, the Paris Court of appeal deems that reparation has to be sought on the grounds of contractual liability.
It concludes that Entr’Ouvert’s action, on the grounds of Orange and Orange Business Services’ alleged tortious liability, must be ruled inadmissible.
If the Paris Court of appeals has intended to put an end to this debate, with a decision referencing the ECJ’s, legal uncertainty still remains as to the nature of the action to be brought in this type of situations.
Owners of author’s rights on softwares thus have to remain careful in the handling of infringement proceedings, in order to ensure the respect of their intellectual property rights against licensees.
LAVOIX’ team remains available to assist you in this type of litigation and to answer any question.
 ECJ, 18 December 2019, IT Develoment SAS v. Free Mobile SAS, aff. C-666/18