On March 10, 2021, Advocate General Szpunar issued its Opinion in case C-13/20, involving a software developer and a lawful user.
The Court of Justice of the European Union (“CJEU”) had to decide if the lawful user of a computer program (“lawful acquirer” in the terms of Directive 91/250) could decompile it for the purpose of correcting errors, without the rightholder’s authorization.
The Opinion is an interesting and recommended read because of AG Szpunar’s (i) contextualization of software-related rights as intellectual property rights; and (ii) specific responses to the CJEU.
The debate revolves around the interpretation of article 5(1) of Directive 91/250 (the “Directive”). This Directive is applicable due to the timing of the facts, but its wording is the same as that of article 5(1) of Directive 2009/24, currently in force):
“Article 5. Exceptions to the restricted acts
1. In the absence of specific contractual provisions, the acts referred to in Article 4(a) and (b) shall not require authorization by the rightholder where they are necessary for the use of the computer program by the lawful acquirer in accordance with its intended purpose, including for error correction.”
This provision was transposed into article 100(1) of the Spanish Intellectual Property Act:
“Unless otherwise provided in specific contractual provisions, the reproduction or transformation of software, including for error correction, will not require the rightholder’s authorization if these acts are necessary for the lawful user to use the software in accordance with its intended purpose.”
AG Szpunar first examines articles 5 and 6 of the Directive: “Although those articles are presented as exceptions to the exclusive rights, they are in fact a restriction inherent in such rights.” Unfortunately, he does not further differentiate between an exception to the exclusive right and a restriction inherent in that right. This differentiation could have provided a sounder argument on whether the lawful user’s rights under article 5(1) should be interpreted strictly.
The first substantive issue discussed by AG Szpunar is whether the lawful user’s right to make error corrections under article 5(1) can be restricted or excluded by contract. He thinks it can.
AG Szpunar relies on this clause in article 5(1) of the Directive: “In the absence of specific contractual provisions.” Contrary to this clause, recital 17 provides that “the acts of loading and running necessary for the use of a copy of a program which has been lawfully acquired, and the act of correction of its errors, may not be prohibited by contract.” AG Szpunar considers that article 5(1) should prevail in this contradiction for the following reasons: (i) only articles have legislative force, and recitals guide the interpretation of articles, but without leading to an interpretation contra legem; (ii) the Directive carefully specifies which contractual provisions contrary to articles 5 and 6 should be considered invalid, including paragraphs (2) and (3) of article 5, but not paragraph (1); and (iii) the wording of recital 17 comes from the original proposal for the Directive, which drew a distinction between licensing contracts negotiated between the parties and pre-formulated standard contracts. The final version of the Directive does not include this distinction. AG Szpunar tries to reconcile his interpretation with the CJEU Judgment of May 2, 2012 in case C-406/10 (SAS Institute). In this case, the CJEU found that the acts of loading and running necessary for the use of software may not be prohibited by contract because it would be a contradiction in terms: authorizing the use and prohibiting the acts necessary for that use.
AG Szpunar concludes that “interpreting that it is not possible to preclude by contract the right of the program’s acquirer to make corrections would create an imbalance to the detriment of the copyright holders because […] this would prevent that rightholder from opposing such decompilation.”
AG Szpunar also concludes that decompilation qualifies as a restricted act within the exclusive rights of the rightholder because decompilation “consists of a transformation of the program in (protected) object code form into ‘quasi-source code’. The latter is a reproduction of the program resulting from its alteration; that alteration consists in the translation of the machine language into a programming language. Such reproduction is expressly subject to the exclusive right of the program’s author pursuant to article 4(b) of Directive 91/250.” Article 6 indirectly confirms this conclusion. Under the heading “Decompilation,” this provision defines decompilation referring to the rightholder’s exclusive rights as the “reproduction of the code and translation of its form within the meaning of article 4(a) and (b).”
The third substantive issue discussed by AG Szpunar is directly connected with the questions referred to the CJEU for a preliminary ruling. He considers that the restriction to the rightholder’s rights provided in article 5(1) covers decompilation of the copyright-protected software if necessary to correct errors (and if not excluded by contract). AG Szpunar argues that article 5(1) allows lawful users to carry out any acts listed in article 4(a) and (b), i.e., reproduction and transformation, necessary for decompiling. Therefore, there is no need for article 5(1) to specifically allow for decompilation.
Note that decompilation must be limited to what may be necessary to correct errors. Also, the “quasi-source code” resulting from decompilation can only be used for error correction (at least under article 5(1)). However, this is a loose limit in practice, because decompiling to correct errors also includes decompiling to find those errors first.
AG Szpunar makes a very relevant warning: error correction only covers errors (i) preventing the use of software in accordance with its intended purpose; and (ii) qualifying as errors originally, i.e., not including the updating of the program in line with technological progress. In other words: technological obsolescence of software is not an “error.”
Finally, the Opinion examines whether the requirements of article 6 on decompilation for interoperability purposes are applicable to the decompilation for error correction under article 5(1). See article 6 of the Directive:
“1. The authorization of the rightholder shall not be required where reproduction of the code and translation of its form within the meaning of Article 4 (a) and (b) are indispensable to obtain the information necessary to achieve the interoperability of an independently-created computer program with other programs, provided that the following conditions are met:
(a) these acts are performed by the licensee or by another person having the right to use a copy of a program, or on their behalf by a person authorized to so;
(b) the information necessary to achieve interoperability has not previously been readily available to the persons referred to in subparagraph (a); and
(c) these acts are confined to the parts of the original program which are necessary to achieve interoperability.
2. The provisions of paragraph 1 shall not permit the information obtained through its application:
(a) to be used for goals other than to achieve the interoperability of the independently-created computer program;
(b) to be given to others, except when necessary for the interoperability of the independently created computer program; or (c) to be used for the development, production or marketing of a computer program substantially similar in its expression, or for any other act which infringes copyright.
3. In accordance with the provisions of the Berne Convention for the protection of Literary and Artistic Works, the provisions of this Article may not be interpreted in such a way as to allow its application to be used in a manner which unreasonably prejudices the right holder’s legitimate interests or conflicts with a normal exploitation of the computer program.”
AG Szpunar concludes that the requirements of article 6 cannot apply, directly or by analogy, to the exception provided in article 5(1).
AG Szpunar’s main argument is that article 5(1) benefits the lawful user of software specifically for him/her to use it in accordance with its intended purpose. Article 6 has a different approach: allowing for decompilation for interoperability reasons (i) is unrelated to the normal use of software; and (ii) has a different purpose, i.e., the interoperability with other independently created programs. The debate during the legislative process for the Directive revolved around these aspects.
A significant consequence of not applying the requirements of article 6 to article 5(1) is that the lawful user is “not obliged to ask the rightholder to correct the errors, to request access to the program’s source code, or to bring legal proceedings seeking an order that the rightholder perform a particular act.” AG Szpunar notes that decompilation is a time-consuming and expensive process with uncertain effects. Therefore, in practice, the rightholder’s cooperation could be relevant in any case, which underlines the importance of considering the limit of article 5(1) in licensing contracts.
For the above reasons, AG Szpunar suggests the CJEU answer the questions referred for a preliminary ruling as follows:
“(1) Article 5(1) of Council Directive 91/250/EEC of 14 May 1991 on the legal protection of computer programs is to be interpreted as permitting a lawful acquirer of a computer program to decompile that program where that is necessary to correct errors affecting its functioning.
(2) Article 5(1) of Directive 91/250 is to be interpreted as meaning that the decompilation of a computer program, under that provision, by a lawful acquirer, to correct errors in that program, is not subject to the requirements of Article 6 of that directive. However, this decompilation may be carried out only to the extent necessary for that correction and within the limits of the acquirer’s contractual obligations.”
We will pay attention to the CJEU judgment to discuss it on this blog.
Author: Álvaro Bourkaib