IT contracts

Is the software licensee an infringer or simply a faulty co-contractor?

by Cabinet Roquefeuil | Nov 12, 2022

Oct 18, 2018 –

Can the licensee be qualified as an infringer? Evolution of the debate.

– an infringement (within the meaning of directive 2004/48 of April 29, 2004) suffered by the copyright holder of the software reserved by article 4 of directive 2009/24/EC of April 23, 2009 concerning legal protection computer programs
– or can it obey a separate legal regime, such as the common law contractual liability regime?

If it is a counterfeit, the counterfeiter can be prosecuted according to the specific regime for counterfeiting, with in particular the possibility of criminal prosecution, seizure-counterfeiting;

If it is a simple breach of contract, the licensee is liable under the general regime of contractual civil fault.

The difference is considerable on the legal level, particularly with regard to the administration of evidence and the type of compensation that can be obtained in reparation.

Paris Court of Appeal, pole 5 – ch. 1, judgment of October 16, 2018

1 By a contract of August 25, 2010, modified by an amendment of April 1, 2012, the company IT Development granted the company Free Mobile, a telephone operator offering mobile plans on the French market, a license and a maintenance contract on a software package called ClickOnSite, centralized project management software intended to allow it to organize and monitor in real time the evolution of the deployment of all of its radiotelephony antennas by its teams and by its external technical service providers.

Arguing that modifications were made to the software in violation of the license agreement, and after having had an infringement seizure carried out on May 22, 2015 at the premises of the company Coraso, a subcontractor of the company Free Mobile, the company IT Development, by deed of June 18, 2015, summons the company Free Mobile for infringement of the ClickOnSite software and compensation for its damage.

In addition to the inadmissibility and ill-foundedness of these requests, the company Free Mobile brought a counterclaim in abusive proceedings.

2 IT Development appealed on February 3, 2017 against the contradictory judgment delivered on January 6, 2017 by the Paris tribunal de grande instance which:

Declared the company IT Development inadmissible in its claims based on tort liability,
Dismissed the company's claim for damages for abuse of process
Free mobile,
Order IT Development to pay the costs and to pay Free Mobile the
sum of 8000 euros on the basis of the provisions of article 700 of the code of
Civil Procedure.

3 In its final conclusions of May 3, 2018, the company IT Development asks the court to:

On a preliminary basis, submit to the Court of Justice of the European Union (CJEU) a preliminary question in the following form:
"The failure of a software licensee to comply with the terms of a software license agreement (by expiration of a trial period, exceeding the number of authorized users or other unit of measure, such as the processors that can be used to execute the instructions of the software, or by modifying the source code of the software when the license reserves this right to the initial holder) does it constitute:
– an infringement (within the meaning of directive 2004/48 of April 29, 2004) suffered by the copyright holder of the software reserved by article 4 of directive 2009/24/EC of April 23, 2009 concerning legal protection computer programs
– or can it obey a separate legal regime, such as the common law contractual liability regime? ".
Set aside the judgment under appeal, and:
» Declare admissible the action for infringement brought by the company IT Development;
» State that the allegedly infringing ClickOnSite software is identified and original;
» Declare and judge that the modifications of the software by the company Free Mobile constitute acts of counterfeiting;
Mainly, in respect of the infringement, order the company Free Mobile to pay the company IT Development the sum of €1,440,000 for compensation for the damage suffered by the company IT Development;
In the alternative, on a contractual basis, order the company Free Mobile to pay the company IT Development the sum of €840,000 for compensation for the damage suffered by the company IT Development;
In all cases: Prohibit the Free Mobile and Coraso companies from using the ClickOnSite software and from extracting and reusing the data from the ClickOnSite software under a penalty of €500 per day of delay from the day after the fifteenth day of notification the decision to be made, it being up to Free Mobile to justify the cessation of use of the software by any means at its convenience (uninstallation or other);
» Reserving competence for the liquidation of penalty payments;
» Order Free Mobile to pay all the costs, including the costs of reports and the costs of seizure-infringement;
» Order Free Mobile to pay IT Development the sum of €40,000 under Article 700 of the Code of Civil Procedure.

4 In its final conclusions of May 11, 2018, the company Free Mobile asks the court to:

Confirm in all its provisions the judgment entered into, except insofar as it dismissed the company Free Mobile's claim for damages for abuse of process, and except on the quantum of the sentence pronounced against the company IT Development on the basis of the provisions of article 700 of the code of civil procedure;
Reversing the judgment of these counts, and ruling again:
» order IT Development to pay Free Mobile the sum of €50,000 (fifty thousand euros) in damages for abusive proceedings;
» order the company IT Development to pay the company Free Mobile the sum of €50,000 (fifty thousand Euros) on the basis of Article 700 of the Code of Civil Procedure, for costs not included in the costs of the first instance;
Adding to the judgment:
» Pronounce the nullity of the report of seizure-infringement drawn up on May 22, 2015
by Maître Yves MAS, bailiff, at the registered office of CORASO;
» Declare the nullity of the “Expert report” of May 30, 2015 and the “Freely established technical note” submitted to the proceedings by the company IT Development as exhibits n°12 and n°43, or at the very least declare them inadmissible as evidence and exclude them from the proceedings;
» Declare the company IT Development inadmissible, and in any case ill-founded, in all of its claims against the company Free Mobile; dismiss it;
» Order IT Development to pay Free Mobile the sum of €50,000 (fifty thousand Euros) on the basis of Article 700 of the Code of Civil Procedure, for costs not included in the costs of the proceedings call;
» Order IT Development to pay all the costs, which may be recovered directly by SELAS Bardehle Pagenberg, Lawyers, in accordance with the provisions of Article 699 of the Code of Civil Procedure.

5 The closing order is dated May 15, 2018.

DISCUSSION

Pursuant to the provisions of Article 455 of the Code of Civil Procedure, reference is expressly made, for an exhaustive statement of the claims and means of the parties, to the written submissions that they submitted, as referred to above.

Admissibility and the question referred

6 In its summons and conclusions at first instance, the company IT Development maintained that the company Free Mobile had committed acts of infringement by modifying the ClickOnSite software, in particular by creating new forms. According to it, the defendant was not admissible to invoke the provisions of article L.122-6-1 of the intellectual property code authorizing it to modify the software for use in accordance with its intended purpose, therefore, d on the one hand, that these modifications would have been substantial, on the other hand, that the possibility of proceeding with them would have been excluded by the contract;

7 In order to declare it inadmissible in respect of these claims based on infringement, the court considered that the combination of articles 122-6 and 122-6-1 of the intellectual property code led to the recognition of two distinct liability regimes in the matter, the tort in the event of infringement of the rights of exploitation of the author of the software, as designated by law, the other contractual, in the event of infringement of a copyright reserved by contract; that in the present case, the company Free Mobile was clearly accused of breaches of its contractual obligations, relating to an action for contractual liability and not tortious acts of software infringement;

8 In case of appeal, the company IT Development requests on a preliminary basis the submission of a preliminary question to the Court of Justice of the European Union, then the reversal of the judgment, asking to declare admissible the action for infringement. For these purposes, it maintains, firstly, that the recognized right of the author of software to authorize or prohibit the modification of the source code of the software is a right of legal origin, and that the violation of this right by the licensee is not a simple breach of contract but a violation of the author's legal right, thus constituting an infringement; secondly, that if for all other intellectual property rights the action for infringement is expressly opened in the event of violation of a license contract, article L 335-3 paragraph 2 of the CPI which provides that is also an offense of counterfeiting the violation of one of the rights of the author of software defined in article L.122-6, is intended to apply both to cases of use without right (the "piracy ” in the strict sense), only to those of a use exceeding the license; thirdly, that the action for infringement is not an action of an exclusively tortious nature; that the distinction between contractual and tort liability is contrary to the objective of the European legislator to establish a single procedure following Directive 2004/48; that in reality, counterfeiting has a dual nature: criminal and contractual action, and it is blind, since the law of 2007, to the distinction between contractual and tortious; that fourthly, the directive on the fight against counterfeiting wanted to give counterfeiting the widest possible definition extending to any infringement of intellectual property rights.

9 Free Mobile, which considers that there is no need to ask any question for a preliminary ruling, requests confirmation of the judgment. It argues that the legal provisions establish two different liability regimes for two different categories of acts, on the one hand, acts infringing a right reserved by law, giving rise to a liability action for the benefit of the author of the software tort, the action for infringement, on the other hand, acts infringing a right reserved by contract, opening for the benefit of the author of the software an action in contractual liability against his co-contracting party; that in the present case, the incriminated acts, namely a violation of the contractual obligations of the licensee, do not open to the company Free Mobile an action for infringement; that the non-cumulation of contractual and tort liability is a cardinal principle of civil liability in French law and that it is in fact established that the creditor of a contractual obligation cannot prevail against the debtor of this obligation, even if - even there would be interest, rules of tort liability; that in reality, when the legislator intends to derogate from common law by allowing the injured party to take action in tort against a licensee who infringes one of the limits of his license when he could only do so in principle on the basis of contractual liability, it then expressly and very precisely provides for this derogation, thus in matters of patent licensing or in matters of trademark licensing; whereas, on the other hand, with regard to software licenses, the legislator has not provided for any derogation from the principle of common law according to which, in the presence of a license contract binding the parties, the regime of contractual liability prevails over that of tort liability; that no provision of Directive 2009/24/EC of April 23, 2009 on the legal protection of computer programs, nor any provision of Directive 2004/48/EC of April 29, 2004 on the enforcement of intellectual property rights, does not require Member States to make tortious liability prevail over contractual liability in the event that the legitimate user of software infringes the limits of the license from which he benefits; that the Court of Justice of the European Union has already itself established, in a judgment of April 18, 2013 (C-103/11, European Commission v. Systran) rendered in matters of software licensing, the principle of common law according to which contractual liability prevails over tort liability.

This being stated, the court

10 1 – The factual context

The court recalls that by a contract of August 25, 2010, modified by an amendment of April 1
2012, the company IT Development granted the company Free Mobile, operator of
telephony offering mobile plans on the French market. license and contract
maintenance on a software package called ClickOnSite, project management software
centralized system intended to enable it to organize and monitor in real time the evolution of the
deployment of all of its radiotelephony antennas by its teams and by its
external technical service providers.

The IT Development company accuses the Free Mobile company of having modified the ClickOnSite software, in particular by creating new forms.

In addition to the substantial nature of these modifications, it relies in particular on the stipulations of article 6 “scope of the license” to maintain that the company Free Mobile did not have the right to make such modifications:

In any event, the Customer expressly refrains (…) from:
– reproduce, directly or indirectly, the Software (…) with the exception of backup copies;
– decompile and/or carry out reverse engineering operations on the Software, except for legal exceptions;
– modify, correct, adapt, create secondary works and additions, directly or indirectly, in relation to the Software Package, it being understood that the Client will nevertheless have free read access to the database.
– (…)

If necessary, the Customer reserves the right to ask the Supplier, by simple mail, fax or email, for information necessary for the interoperability or compatibility of the Software Package with other software used by the Customer. In the absence of a satisfactory response as to the completeness and relevance of this information from the Supplier within a period of one month after receipt of the said request, the Customer will proceed on its own, in accordance with the provisions of article L 122 -6-1 of the Intellectual Property Code, to the operations of decompiling the source code of the Software Package for the sole purpose of ensuring the interoperability or compatibility of the Software Package with another software used by the Customer (…).

At first instance, the plaintiff based its claims exclusively on infringement. On appeal, it also bases them, in the alternative, on contractual liability.

In addition to the inadmissibility of the claims on the basis of counterfeiting, the company Free Mobile essentially argues, firstly, that the proof of the originality of the software is not reported, secondly, that the seizure operations- counterfeiting are void, as well as the report drawn up by an expert, thirdly, that the proof of an unauthorized modification of the software is not reported, lastly, that the modifications carried out concern only the database specific to the licensed operator and that the clause prohibiting modification of the software package, contrary to the public order provisions of article L.122-6-1 of the intellectual property code, must be deemed unwritten.

11 2 – Relevant texts

a – Community directives

Article 2 of Directive 48/2004/EC of April 29, 2004

1 – Without prejudice to the means provided for or which may be provided for in Community or national legislation, insofar as these means are more favorable to the holders of rights, the measures, procedures and remedies apply, in accordance with Article 3, to any infringement of intellectual property rights provided for by Community law and/or the national law of the Member State concerned.

Directive 2009/24/EC of April 23, 2009

Article 4 – Acts subject to restrictions

1. Subject to Articles 5 and 6, the Holder's exclusive rights within the meaning of Article 2 include the right to make or authorize:
(a) the permanent or temporary reproduction of a computer program, in whole or in part, by any means and in any form whatsoever (…)
b) the translation, adaptation, arrangement and any other transformation of a program
computer and the reproduction of the resulting program, without prejudice to the rights of the
person who transforms the computer program;
c) any form of distribution, including rental, to the public of the original or copies
of a computer program.

Article 5 – Exceptions to acts subject to restrictions

1. Except for specific contractual provisions, the acts referred to in Article 4(1)(a) and (b) are not subject to the holder's authorization when these acts are necessary to enable the lawful purchaser to use the computer program in a manner consistent with its intended purpose, including to correct errors.

b – Articles of the intellectual property code

Article L112-2

Are considered in particular as works of the mind within the meaning of this code: (…)
13° Software, including preparatory design material.

Article L122-6

Subject to the provisions of article L. 122-6-1, the right of exploitation belonging to the author of software includes the right to perform and authorize:

1° The permanent or temporary reproduction of software (…)
2° The translation, adaptation, arrangement or any other software modification and
the reproduction of the resulting software (…)
3° The placing on the market for consideration or free of charge, including rental, of the copy or copies of software by any process (…)

Article L122-6-1

I. The acts provided for in 1° and 2° of Article L. 122-6 are not subject to the authorization of the author when they are necessary to allow the use of the software, in accordance with its intended purpose, by the person having the right to use it, including to correct errors.

However, the author is entitled to reserve by contract the right to correct errors and to determine the specific terms and conditions to which the acts provided for in 1° and 2° of Article L. 122-6 will be subject, necessary to allow the use of the software, in accordance with its intended purpose, by the person having the right to use it.

Article L335-3

Violation of one of the copyrights of software defined in article L. 122-6 is also an offense of counterfeiting.

3 – Patterns

12 Since the 19th century, French civil liability law has been based on the cardinal principle of non-cumulation of tort and contractual liability, which implies:

– that a person cannot see his contractual liability and his tort liability engaged by another person for the same facts,
– that tort liability is excluded in favor of contractual liability when, on the one hand, the parties are bound by a valid contract and that, on the other hand, the damage suffered by one of the parties results from the non-performance or poor performance of one of the obligations of the contract.

Moreover, French law traditionally considers that counterfeiting, which is originally a criminal offence, arises from tort liability and not from non-performance of a contract.

13 The court deduced from this in this case, when the parties are bound by the contract of August 25, 2010 and it is alleged that the damage results from the non-performance of the clauses of this contract and particularly of its article 6, that tort liability must be set aside in favor of contractual liability, and consequently that the action for infringement, assimilated to the tort action, must be declared inadmissible.

The respondent company, which supports this analysis, rightly cites decisions of French courts going in this direction, including a judgment of this chamber of May 10, 2016.

14 However, it is not irrelevant that the appellant company maintains that infringement is not in essence a delictual action but could also result from the non-performance of a contract.

It is indeed true that counterfeiting is defined in its broadest sense as an infringement of an intellectual property right and, in the particular case of article L.335-3, as the violation of one of the rights the author of software [defined in article L.122-6].

Neither of these texts nor any other French text relating to counterfeiting expressly provides that the latter only applies when the parties are not bound by a contract.

Even if they can be presented as so many exceptions to the principle of non-cumulation, the texts below are also examples of what action for infringement can be brought in patent and trademark matters against the licensee who violates the limits of his contract:

Article L.613-8, paragraph 3 of the Intellectual Property Code

The rights conferred by the patent application or by the patent may be invoked against a licensee who infringes one of the limits of his licence.

Article L.714-1 of the Intellectual Property Code

The rights conferred by the application for registration of a mark or by the mark may be invoked against a licensee who infringes one of the limits of his license with regard to its duration, the form covered by the registration under which the mark may be used, the nature of the goods or services for which the license is granted, the territory in which the mark may be affixed or the quality of the goods manufactured or the services provided by the licensee.

In the case in point, Articles L 122-6 and L 122-6-1 of the Intellectual Property Code, if they provide in particular that the specific terms of a software modification can be determined by contract, do not do not provide that in these cases an action for infringement would be excluded. The same applies to Articles 4 and 5 of Directive 2009/24/EC of which they are the transposition.

Finally, it is true that Article 2 “scope” of Directive 48/2004/EC of April 29, 2004 on the enforcement of intellectual property rights generally provides that the measures, procedures and remedies are apply (…) to any infringement of intellectual property rights, without distinguishing between whether or not this infringement results from the non-performance of a contract.

The court considers under these conditions that a preliminary question must be submitted in the terms proposed to the Court of Justice of the European Union.

That there will be a stay of proceedings until the court of justice has answered it;

DECISION

15 The court, by contradictory judgment before saying right,

Refers to the Court of Justice of the European Communities for the purpose of answering the following preliminary question:

Failure by a software licensee to comply with the terms of a software license agreement (by expiration of a trial period, exceeding the number of authorized users or other unit of measure, such as processors that can be used to execute the instructions of the software, or by modifying the source code of the software when the license reserves this right to the initial holder) does it constitute:
– an infringement (within the meaning of directive 2004/48 of April 29, 2004) suffered by the copyright holder of the software reserved by article 4 of the directive 2009/24/EC of April 23, 2009 on the legal protection of computer programs
– or can it obey a separate legal regime, such as the common law contractual liability regime?

Stay to rule on the appeal of the company IT Development until the decision of the Court of Justice,

Holds that a copy of the judgment and a copy of the case file will be sent to the Court of Justice of the European Communities by registered post.

The originality of the software before the pretrial judge

Get support for your IT contracts

Paris Court of Appeal, Chamber 5, Pole 2, March 19, 2021, RG n°19/17493 confirming TGI Paris June 21, 2019 n°11/07081.

In this judgment, it is the contractual breach which is retained following a non-respect of the terms of the intellectual property license agreement (software license agreement).

This solution is nevertheless called into question by the Court of Cassation, which admits the action for infringement.

Court of Cassation, 1st ch. civil, judgment of October 5, 2022

Preliminary question: is the licensee of software an infringer or simply a faulty co-contractor?

Assignment of copyright

Reminder of the principle

The rules of intellectual property sanction criminally and civilly infringements of copyright, trademark or patent, copyright attached to software, that is to say the offense of counterfeiting.

Playdoyer for an exception

However, when a contract is at stake, involving a discussion and a partnership between two co-contractors, a form of confidentiality, it is surprising to invoke the wrath attached to the repression of the offense (criminal and civil) of counterfeiting to sanction the unscrupulous contractor.

The very notion of contract seems antithetical to the notion of offence, which presupposes an attack on public confidence, a public scandal. One is tempted to say here that the stop comes down to fundamentals.

However, it does not expand on the reasons for choosing the contractual liability regime, simply stating that:

"when the event giving rise to an infringement of an intellectual property right results from a contractual breach, the right holder having consented by contract to its use subject to certain reservations, then only an action for contractual liability is admissible by application of the principle non-accumulation of responsibilities. »

The debate before the Court of Justice of the European Union

The judgment reports above all and also the debate that there was before the Court of Justice of the European Union on the subject (judgment of the Court of Justice of the European Union (CJEU) delivered on December 18, 2019, case C-666-18)(judgment of December 18, 2019, IT Development v. Free mobile), on the basis of directives 2004/48 relating to the respect of intellectual property rights and 2009/24 on the legal protection of computer programs.

According to the CJEU:

[…] if Directive 2004/48 aims to establish the measures, procedures and remedies vis-à-vis the holders of intellectual property rights, which includes the copyright of computer programs provided for by Directive 2009/24 , this first directive does not lay down the exact terms and conditions for the application of these guarantees and does not prescribe the application of a particular liability regime in the event of infringement of these rights.

44 – It follows that the national legislature remains free to set the concrete methods of protection of the said rights and to define, in particular, the nature, contractual or tortious, of the action available to the holder of these rights, in the event of violation of its intellectual property rights, against a computer program licensee.

However, the doctrine remains divided on the subject, as well as recent case law (TJ Paris July 6, 2021, No. 18/01602), but tends to admit the action for infringement (see the aforementioned judgment at the beginning of article Court of Cassation, (1st ch. civ), October 5, 2022, Sté Entr'ouvert and Sté Orange)

NFTs and copyright

The originality of the software before the pretrial judge

IT contracts and lawyer support

Updated Nov 12, 2022

The Court of Cassation admits the action for infringement in the event of non-compliance with the license agreement.

In the Court of Cassation judgment, (1st ch. civ), October 5, 2022, Sté Entr'ouvert and Sté Orange, the Court of Cassation recognizes that the infringement of intellectual property rights can be sanctioned by counterfeiting regardless of the regime national responsibility, contractual or not.

Texts quoted:

Article L. 335-3, paragraph 2, of the Intellectual Property Code,

Articles 7 and 13 of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights

Article 1 of Directive 2009/24/EC of the European Parliament and of the Council of April 23, 2009 on the legal protection of computer programs.

Lawyer specializing in IT law in Paris: get support for your IT contracts

by Cabinet Roquefeuil | Jan 24, 2022

Update February 8, 2023: OVH cloud condemned at first instance by the Commercial Court of Lille judgment of January 26, 2023

– Contractual liability, Unwritten clause, Force majeure, Gross negligence, Obligation of means, Significant imbalance, Membership contract, articles 1170 and 1171, 1147 of the civil code, “the backup data had also been destroyed and lost at cause of the fire because the latter were stored at the same place as the main server" – In this case, the court dismisses the exemption and limitation of liability of the cloud service provider, holding that otherwise it would create a significant imbalance and would negate the provider's essential obligation:

"In this case, making backup copies and keep them safe, in particular in case of sinister Or of fire, is an essential obligation from CONTRACT. Clause 7.7 of the OVH contract therefore deprives of its substance the essential obligation of SAS OVH and must therefore be deemed not written. »

[…]

" In this case, the limitation of liability clause established by SAS OVH grants an unjustified advantage to the latter in the absence of consideration for the customer. This clause creates a real asymmetry between them obligations of each Parties. Ultimately, this clause transfers the risk to the other party in an unjustified way and without consideration for this last. »

Be accompanied by a lawyer specializing in computer law as part of your IT contracts. Disputes relating to computer law can be numerous. These may include counterfeit hardware issues, data loss issues, contract termination, etc. A lawyer specializing in computer law can help you.

Computing continues to grow in our society over the years. At the heart of the digital transformation, it is appropriate for professionals, and in particular for companies, to ensure their protection to prevent possible IT disputes.

In order to protect itself, a company can set up IT contracts as part of the management of its IT equipment. Several types of services can be defined in an IT contract. This can be installation, development, maintenance or support services on a computer system.

Are you faced with a dispute over computer law? Would you like to find out about the IT contracts that you can put in place to protect yourself? Stone of Roquefeuil, lawyer specializing in computer law at Paris accompanies you to advise you and defend your interests.

IT contract and the lawyer specializing in computer law, in Paris

A computer contract can be established in the context of a sale, rental or provision of services, concerning a computer system or an integrated element. It can be hardware (computers, IT equipment, peripherals, etc.) or software (software developed by a service provider or standard software).

IT contracts must be drawn up with care to prevent any technical changes or changes in use. The development of IT contracts is therefore technical and complex, the contract must be drafted with vigilance.

The IT contract must mention several essential information in particular in connection with the problems of intellectual property or even protection of personal data. In addition, several characteristics must be defined in the contract. Indeed, must appear: the implementation schedule or the scope concerned by the contract.

A lawyer specializing in computer law can help you draft your contract in due form.

What are the different IT contracts? A lawyer specializing in computer law answers you:

The maintenance contract and the IT lawyer

Otherwise called SLA (Service Level Agreement), the maintenance contract allows the customer to determine his expectations relating to the maintenance of his computer equipment that the computer service provider must have towards him.

Thus, the maintenance contract has the effect of defining the rights and duties of both parties: the customer and the service provider. This must mention the scope of the equipment, the services covered by the contract, the duration of the contract, the quality of the service provided, etc.

When drawing up the contract, a distinction should nevertheless be made between corrective maintenance and preventive maintenance:

Corrective maintenance aims to repair operating errors,
Preventive maintenance concerns the periodic checks that must be carried out to detect any malfunctions, damage or obsolescence of the equipment.

The system integration contract

System integration is defined by the assembly of the various IT components of a company, whether they are hardware: computer, server, network equipment, telephones, etc. ; or intangible: software, applications, etc.

The system integration contract must cover different aspects:

Material aspects: supply and installation
Software aspects: as well as their interfacing
The wiring
Training
Start-up assistance
Maintenance
The deployment

A service provider has an obligation to advise and warn its client under a systems integration contract.

The Software License Agreement and computer law attorney

A license agreement relates only to the software. This may be a sales or rental license agreement. This precisely defines the rights given by the author of the software to the other party. It details the rights of use, the rights of reproduction, the rights of modification or the rights of adaptation of the software in question.

Just like the aforementioned contracts, the software license contract must mention the identification of the two parties, its object, the date of entry into force and the date of end, the general and specific provisions.

IT hosting contract

The computer hosting contract is one of the most widespread. This consists of delimiting an IT service that allows the hosting of numerous resources on a server. Also, it mentions the conditions of management or evolution of the client over time.

To this end, the IT hosting contract is therefore a commitment to storage capacity and a guarantee of data availability. The contract must contain a reversibility clause allowing customers to recover all of their data.

Finally, the host must in this contract, commit to the confidentiality of the information that will be hosted. It must also specify the procedures applied in the context of resource security. This applies in particular to hacking or any malicious act of computer threat.

The contract for the sale or rental of computer equipment

The contract for the sale or rental of computer equipment allows a company to rent computer equipment. It can be made for computers or computer systems. It can also be the rental of software or software packages.

The contract for the sale or rental of computer equipment may be of short duration. For example, for the replacement of a device that has just broken down. It can be entered into to meet an urgent or even unforeseen need such as an increase in activity.

The IT equipment rental contract is generally concluded for a period of 3 years. It must include an upgrade clause that allows the customer to renew the hardware after 15 to 30 months. This in order to benefit from new features without a price increase.

The service provider must for its part carry out the repairs and maintenance of the equipment it rents. Also, it has a warranty obligation. As a result, it guarantees the proper functioning of the equipment. He must therefore intervene in the event of malfunction of the rented device following a hidden defect or a breakdown.

Finally, for his part, the customer undertakes to use the property in a reasonable manner and to return it to the service provider at the end of the rental contract.

The outsourcing contract or outsourcing contract and the IT law lawyer in Paris

It aims to entrust a function or service to a specialized external service provider. The service provider must therefore ensure that the service is provided in accordance with the service levels. The performance and responsibilities specified in the specifications must be respected.

Using an external service provider allows the requesting company to focus on its main mission.

Obligations of the parties in an IT contract. Hire a lawyer in Paris specializing in computer law

As in any contract, the parties agree to each other to respect certain obligations. What are they ?

The service provider's obligations

The service provider must respect a certain number of obligations in return for his remuneration:

He undertakes to provide all the information on the various issues of the contract to the client,
He must advise his client on the choices he will have to make within the framework of the project. The service provider's expertise will allow the customer to benefit from all the useful information. This will then allow him to choose the best solutions for his project,
The service provider is required to keep his client informed if a danger or risk occurs during the service.

Customer's obligations

Then, the customer, for his part, is also required to respect certain obligations within the framework of an IT contract:

The customer agrees to pay the service provider the price agreed upon prior to the contract,
It must be able to enable the service provider to perform its service properly,

Duration of the IT contract: is it possible to terminate it before its term? How to handle breach of contract?

In the event that the contract determines a duration, the contract then ends once the service has been completed. Nevertheless, it remains possible to interrupt the contract before the end date, provided that both parties agree. The decision to end it must be recorded in writing. In addition, the contract can also be renewed if both the service provider and the customer agree.

If the contract does not provide for an end date, it is possible for the service provider and for the customer to terminate it at any time. The decision must be made in writing. It will however be necessary to respect a notice defined by the users or by certain professional agreements. Both parties, one like the other, may demand compensation for damages suffered in the event of a sudden, violent or unpredictable breach of a computer contract.

Specifications, obligation to advise, agile method, acceptance report, evolutionary and corrective maintenance, sequestration of the source code, IT expertise, termination for exclusive wrongs, so many concepts to master to consider the implementation of a new software, a new ERP, a new system, or consider a breach of contract.

You wish to be accompanied by a lawyer specializing in computer law in order to obtain advice on drawing up an IT contract? Do you encounter disputes related to computer law?

Stone of Roquefeuil, lawyer specializing in computer law at Paris, accompanies you to advise you and to ensure that your interests are respected.

See as well :

The agile method: https://roquefeuil.avocat.fr/contrat-informatique-et-methode-agile/

Ord. no. 2021-1658, 15 Dec. 2021, relating to the devolution of intellectual property rights on assets obtained by authors of software or non-salaried inventors or public officials hosted by a legal person carrying out research: JO 16 dec. 2021

The problem of access to source code

The company may have difficulties with the publisher of its software, which asks exorbitant sums to carry out the maintenance, and may want to keep the software by having it maintained by a third-party service provider.

To be able to modify the software, to maintain it, it is necessary to be able to modify the source code therefore to have this code, that is to say the version written in a programming language, understandable by man, unlike the object code binary, executable and understandable only by the machine.

However, the publisher of software generally delivers only the executable version, the one that is understandable by the computer. Publishers are often very reluctant to hand over this source code because they fear that their know-how and their investment will be stolen.

It will be a question of setting up an escrow contract to find a balance between the rights of the user and those of the software publisher. But such a contract does not always exist. And existing contracts can be laconic or unsatisfactory when it comes to the “maintenance” component.

The reference articles are the articles L. 122-6 and L. 122-6-1 of the Intellectual Property Code.

Article L122-6

Version in force since May 11, 1994, Amended by Law No. 94-361 of May 10, 1994 – art. 4 () JORF May 11, 1994

Subject to the provisions of Article L. 122-6-1, the right of exploitation belonging to the author of software includes the right to perform and authorize:

1° The permanent or temporary reproduction of software in whole or in part by any means and in any form. To the extent that the loading, display, execution, transmission or storage of this software requires reproduction, such acts are possible only with the permission of the author;

2° The translation, adaptation, arrangement or any other modification of software and the reproduction of the resulting software;

3° The placing on the market for consideration or free of charge, including rental, of the copy or copies of software by any process. However, the first sale of a copy of software in the territory of a Member State of the European Community or of a State party to the Agreement on the European Economic Area by the author or with his consent exhausts the right to put this copy on the market in all Member States, with the exception of the right to authorize the subsequent rental of a copy.

Article L122-6-1

Version in force since November 26, 2021, Amended by Ordinance No. 2021-1518 of November 24, 2021 – art. 2

I. The acts provided for in 1° and 2° of Article L. 122-6 are not subject to the authorization of the author when they are necessary to allow the use of the software, in accordance with its intended purpose, by the person having the right to use it, including to correct errors.

However, the author is entitled to reserve by contract the right to correct errors and to determine the specific terms and conditions to which the acts provided for in 1° and 2° of Article L. 122-6 will be subject, necessary to allow the use of the software, in accordance with its intended purpose, by the person having the right to use it.

II. The person having the right to use the software can make a backup copy when this is necessary to preserve the use of the software.

III. The person having the right to use the software can without the authorization of the author observe, study or test the operation or the safety of this software in order to determine the ideas and principles which are at the base of any element of the software when it performs any operation of loading, displaying, executing, transmitting or storing the software that it is entitled to perform.

IV. The reproduction of the software code or the translation of the form of this code is not subject to the authorization of the author when the reproduction or the translation within the meaning of 1° or 2° of article L. 122 -6 is essential to obtain the information necessary for the interoperability of software created independently with other software, provided that the following conditions are met:

1° These acts are carried out by the person having the right to use a copy of the software or on his behalf by a person authorized for this purpose;

2° The information necessary for interoperability has not already been made easily and quickly accessible to the persons mentioned in 1° above;

3° And these acts are limited to the parts of the original software necessary for this interoperability.

The information thus obtained cannot be:

1° Nor used for purposes other than achieving the interoperability of independently created software;

2° Neither communicated to third parties unless this is necessary for the interoperability of software created independently;

3° Nor used for the development, production or marketing of software whose expression is substantially similar or for any other act infringing copyright.

V.-The acts mentioned in 1° of Article L. 122-6 are not subject to the authorization of the author when they are carried out for the purposes and under the conditions mentioned in 8° of Article L. 122-5.

VI.-The acts mentioned in 1° and 2° of Article L. 122-6 are not subject to the authorization of the author when they are carried out for the purposes and under the conditions mentioned in III of the article L.122-5-3.

VII.-The acts mentioned in article L. 122-6 are not subject to the authorization of the author when they are carried out for the purposes and under the conditions mentioned in 12° and 13° of article L 122-5.

VIII. This article shall not be construed as permitting to interfere with the normal operation of the software or to cause unreasonable prejudice to the legitimate interests of the author.

Any stipulation contrary to the provisions set out in II, III and IV of this article is null and void.

The service provider may therefore be forced to hand over the source code, under penalty, by the judge, who will check whether or not the maintenance should be carried out by the publisher, according to the terms of the contract, and whether the handing over of the source code and its technical documentation is essential for carrying out maintenance.

The new order for payment procedure – the opinion of the commercial lawyer

IT contracts special page

Get cybersecurity support

The originality of the software before the pretrial judge

by Cabinet Roquefeuil | May 27, 2021

CA Versailles, 1st ch. 1st sect., 25 May 2021, n° 20/03501.

In a software infringement case, the judgment confirms the order of the pre-trial judge before whom the validity of the summons for lack of precision was contested.

Interest of the judgment

It is interesting in the context of the reform of civil procedure attributing new powers to the pretrial judge (article 789 of the code of civil procedure) because it recalls the type of question that can be debated before him, in terms of computer law.

Facts

In this case, the judge underlines the contours of the copyright of the software, which does not concern the graphic interface, or the functionality implemented (directive 91/250/EEC of the Council, of May 14, 1991, concerning the legal protection of computer programs and Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonization of certain aspects of copyright and related rights in the information society) .

“Only the source code made it possible to know the precise choices of the programmer who presided over the formatting which constitutes the seat of the originality of a software. »

The judge indicates that he does not have to rule on the originality of the software or to assess the sufficiency of the explanation of the subject of the request, but sanctions the lack of explanation of the subject of the request.

"Failing to explain the original characteristics claimed, to comment on the source code which is the seat of his rights, to produce any organization chart, he deduced that the assignment did not meet the requirements of article 56, 2°, of the code of civil procedure and had to be annulled since, in addition, this deficiency caused a grievance to the company Sélectour Entreprise, which was deprived of developing a useful response and therefore of defending itself effectively. »

It is indeed up to the plaintiff to indicate the original characteristic of the work, the one that merits the action for infringement (CA Paris, Pôle 5 – ch. 1, May 7, 2019, No. 16/11002 , CA Douai, ch. 1 sect. 2, 5 Apr. 2018, n° 16/04545).

Update May 9, 2022

“it does not follow from any text that the originality of works eligible for protection under copyright is a condition of admissibility of an action for infringement. If the demonstration of such originality is indeed required, it is a condition of the merits of the action and constitutes a means of defense on the merits.
Court of Justice of Marseille, 1st ch. – cabin. 1, incident order of May 3, 2022
Sweet & Salty / Gaillet & Azur Technology group

See as well :

Breach of software license is not infringement

Preliminary question: is the licensee of software an infringer or simply a faulty co-contractor?

IT contracts: the support of the lawyer in IT law

Ord. no. 2021-1658, 15 Dec. 2021 relating to the devolution of intellectual property rights on assets obtained by authors of software or inventors who are not employees or public officials hosted by a legal person carrying out research

IT contract and agile method

by Cabinet Roquefeuil | Nov 11, 2020

The agile method, described in the "Agile Manifesto", is sparkling computing, or dancing, where you don't bother too much with plans, documentation, tests, negotiations, you develop live and we see if it works. It's IT in action, on the field, like in rugby (“scrum” or “scrum” method), requiring “sprints” and using dynamic project management, adapted to “sprints”. Thus, today's project management software has its “sprint” version.

The measurement of the effort deployed: measurement by points and not by day/man or by result achieved, based on an estimate by the service provider of the duration and complexity required to develop the functionality, without guarantee of a result of predetermined set at a given time.

It is immediacy that is sought, adaptation to changing needs, maximum client/provider cooperation. Thus the “agile” service order IT contract, the “Agile Contract” must reflect these specificities.

The service provider team acts very close to the sponsor, which distorts the usual assessments in terms of responsibility and invoicing. The service provider does not benefit from any guarantee of turnover or sustainability of the relationship.

Case law:

T.com.Paris, March 9, 2015, Marty

T.comm. Nanterre, June 24, 2016, MACIF
T.com., Paris, October 7, 2020, Oopet

Aix-en-Provence March 2, 2017, 13/22835, Drilnet

Pau 19 Nov 2018, 17/030030, DE
Paris Nov. 17, 2017, 15/20024, Credential

Paris 3 Jul 2015, 13/06963, SET

Paris Oct. 1, 2015, 14/07440, Isiasoft

Cass.com. Jan 10, 2018, 16-23790

See as well :

The interpretation of the contract

Breach of software license is not infringement

The originality of the software before the pretrial judge

Assignment of copyright, reminder of the principle

IT contracts: support of the IT lawyer

IT contracts special page