Judgment of the Court (Grand Chamber) of 3 July 2012 (reference for a preliminary ruling fromthe Bundesgerichtshof - Germany) - UsedSoft GmbH v Oracle International Corp.
(Case C-128/11) (Legal protection of computer programs - Marketing of used licences for computer programs
downloaded from the internet - Directive 2009/24/EC - Articles 4(2) and 5(1) - Exhaustion of the
distribution right - Concept of lawful acquirer)
Language of the case: German
Referring court
Bundesgerichtshof
Parties to the main proceedings
Applicant: UsedSoft GmbH
Defendant: Oracle International Corp.
Re:
Reference for a preliminary ruling - Bundesgerichtshof - Interpretation of first subparagraph of Article
4(2) and Article 5(1) of Directive 2009/24/EC of the European Parliament and of the Council of 23
April 2009 on the legal protection of computer programs (OJ 2009 L 111, p. 16) - Downloading of
copies of computer programs from the internet with the rightholder's consent onto a data carrier on thebasis of a software licence - Whether that action can be classified as exhausting the rightholder's
distribution right with regard to the copies downloaded - Marketing of 'used' licences of programs
downloaded by the first acquirer - Concept of 'lawful acquirer'
Operative part of the judgment
1. Article 4(2) of Directive 2009/24/EC of the European Parliament and of the Council of 23 April
2009 on the legal protection of computer programs must be interpreted as meaning that the right of
distribution of a copy of a computer program is exhausted if the copyright holder who has authorised,even free of charge, the downloading of that copy from the internet onto a data carrier has also
conferred, in return for payment of a fee intended to enable him to obtain a remuneration
corresponding to the economic value of the copy of the work of which he is the proprietor, a right touse that copy for an unlimited period.
2. Articles 4(2) and 5(1) of Directive 2009/24 must be interpreted as meaning that, in the event of theresale of a user licence entailing the resale of a copy of a computer program downloaded from the
copyright holder's website, that licence having originally been granted by that rightholder to the firstacquirer for an unlimited period in return for payment of a fee intended to enable the rightholder toobtain a remuneration corresponding to the economic value of that copy of his work, the second
acquirer of the licence, as well as any subsequent acquirer of it, will be able to rely on the exhaustion of
the distribution right under Article 4(2) of that directive, and hence be regarded as lawful acquirers of acopy of a computer program within the meaning of Article 5(1) of that directive and benefit from theright of reproduction provided for in that provision.
____________1- OJ C 194, 2.7.2011.

1/1 ページJUDGMENT OF THE COURT (Grand Chamber)
3 July 2012 (*)(Legal protection of computer programs – Marketing of used licences for computer programs
downloaded from the internet – Directive 2009/24/EC – Articles 4(2) and 5(1) – Exhaustion of
the distribution right – Concept of lawful acquirer)

In Case C-128/11,
REFERENCE for a preliminary ruling under Article 267 TFEU from the Bundesgerichtshof(Germany), made by decision of 3 February 2011, received at the Court on 14 March 2011, in theproceedings
UsedSoft GmbHv
Oracle International Corp.,
THE COURT (Grand Chamber),composed of V. Skouris, President, A. Tizzano, J.N. Cunha Rodrigues, K. Lenaerts (Rapporteur),J.-C. Bonichot and A. Prechal, Presidents of Chambers, K. Schiemann, E. Juhász, A. Borg
Barthet, D. Šváby and M. Berger, Judges,
Advocate General: Y. Bot,
Registrar: K. Malacek, Administrator,
having regard to the written procedure and further to the hearing on 6 March 2012,
after considering the observations submitted on behalf of:–

UsedSoft GmbH, by B. Ackermann and A. Meisterernst, Rechtsanwälte,–Oracle International Corp., by T. Heydn and U. Hornung, Rechtsanwälte,–Ireland, by D. O’Hagan, acting as Agent,–

the Spanish Government, by N. Díaz Abad, acting as Agent,–

the French Government, by J. Gstalter, acting as Agent,–

the Italian Government, by G. Palmieri, acting as Agent, and S. Fiorentino, avvocato dello
Stato,–

the European Commission, by J. Samnadda and F.W. Bulst, acting as Agents,

after hearing the Opinion of the Advocate General at the sitting on 24 April 2012,
gives the following

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Judgment
1This reference for a preliminary ruling concerns the interpretation of Articles 4(2) and 5(1) of
Directive 2009/24/EC of the European Parliament and of the Council of 23 April 2009 on thelegal protection of computer programs (OJ 2009 L 111, p. 16).

2

The reference has been made in proceedings between UsedSoft GmbH (‘UsedSoft’) and Oracle
International Corp. (‘Oracle’) concerning the marketing by UsedSoft of used licences for Oraclecomputer programs.
Legal context
International law

3

The World Intellectual Property Organisation (WIPO) adopted the WIPO Copyright Treaty (‘theCopyright Treaty’) in Geneva on 20 December 1996. That treaty was approved on behalf of theEuropean Community by Council Decision 2000/278/EC of 16 March 2000 (OJ 2000 L 89, p. 6).

4

Article 4 of the Copyright Treaty, ‘Computer programs’, reads as follows:‘Computer programs are protected as literary works within the meaning of Article 2 of the Berne
Convention. Such protection applies to computer programs, whatever may be the mode or formof their expression.’

5

Article 6 of the Copyright Treaty, ‘Right of distribution’, provides:‘1.
Authors of literary and artistic works shall enjoy the exclusive right of authorising themaking available to the public of the original and copies of their works through sale or othertransfer of ownership.
2.
Nothing in this Treaty shall affect the freedom of Contracting Parties to determine theconditions, if any, under which the exhaustion of the right in paragraph 1 applies after the firstsale or other transfer of ownership of the original or a copy of the work with the authorisation of
the author.’

6

Article 8 of the Copyright Treaty provides:‘… authors of literary and artistic works shall enjoy the exclusive right of authorising any
communication to the public of their works, by wire or wireless means, including the making
available to the public of their works in such a way that members of the public may access theseworks from a place and at a time individually chosen by them’.

7

In the agreed statements concerning Articles 6 and 7 of the Copyright Treaty, it is declared that:‘As used in these Articles, the expressions “copies” and “original and copies” being subject to theright of distribution and the right of rental under the said Articles, refer exclusively to fixed
copies that can be put into circulation as tangible objects.’
European Union law
Directive 2001/29

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8

Recitals 28 and 29 in the preamble to Directive 2001/29/EC of the European Parliament and of
the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related
rights in the information society (OJ 2001 L 167, p. 10) state:‘(28) Copyright protection under this Directive includes the exclusive right to control distributionof the work incorporated in a tangible article. The first sale in the Community of theoriginal of a work or copies thereof by the rightholder or with his consent exhausts the rightto control resale of that object in the Community. This right should not be exhausted in
respect of the original or of copies thereof sold by the rightholder or with his consent
outside the Community. Rental and lending rights for authors have been established in
Directive 92/100/EEC. The distribution right provided for in this Directive is without
prejudice to the provisions relating to the rental and lending rights contained in Chapter I ofthat Directive.
(29)

The question of exhaustion does not arise in the case of services and on-line services inparticular. This also applies with regard to a material copy of a work or other subjectmatter made by a user of such a service with the consent of the rightholder. Therefore, thesame applies to rental and lending of the original and copies of works or other subjectmatter which are services by nature. Unlike CD-ROM or CD-I, where the intellectual
property is incorporated in a material medium, namely an item of goods, every on-line
service is in fact an act which should be subject to authorisation where the copyright or
related right so provides.’9

In accordance with Article 1(2)(a) of Directive 2001/29, the directive ‘shall leave intact and shallin no way affect existing Community provisions relating to … the legal protection of computer
programs’.

10

Article 3 of Directive 2001/29 provides:‘1.
Member States shall provide authors with the exclusive right to authorise or prohibit any
communication to the public of their works, by wire or wireless means, including the making
available to the public of their works in such a way that members of the public may access themfrom a place and at a time individually chosen by them.
…
3.
The rights referred to in paragraphs 1 and 2 shall not be exhausted by any act ofcommunication to the public or making available to the public as set out in this Article.’11

Article 4 of Directive 2001/29, ‘Distribution right’, provides:‘1.
Member States shall provide for authors, in respect of the original of their works or of
copies thereof, the exclusive right to authorise or prohibit any form of distribution to the publicby sale or otherwise.
2.
The distribution right shall not be exhausted within the Community in respect of theoriginal or copies of the work, except where the first sale or other transfer of ownership in theCommunity of that object is made by the rightholder or with his consent.’
Directive 2009/24

12

According to recital 1 in the preamble to Directive 2009/24, that directive codifies Council
Directive 91/250/EEC of 14 May 1991 on the legal protection of computer programs (OJ 1991
L 122, p. 42).

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According to recital 7 in that preamble, ‘[f]or the purpose of this Directive, the term “computer
program” shall include programs in any form, including those which are incorporated into
hardware.’14

According to recital 13 in that preamble, ‘the acts of loading and running necessary for the useof a copy of a program which has been lawfully acquired, and the act of correction of its errors,
may not be prohibited by contract’.

15

Article 1(1) of Directive 2009/24 provides that ‘Member States shall protect computer programs,by copyright, as literary works within the meaning of the Berne Convention for the Protection of
Literary and Artistic Works’.

16

Under Article 1(2) of that directive, ‘[p]rotection in accordance with this Directive shall apply tothe expression in any form of a computer program’.

17

Article 4 of the directive, ‘Restricted acts’, provides:‘1.
Subject to the provisions of Articles 5 and 6, the exclusive rights of the rightholder within
the meaning of Article 2 shall include the right to do or to authorise:(a)the permanent or temporary reproduction of a computer program by any means and in any
form, in part or in whole; in so far as loading, displaying, running, transmission or storageof the computer program necessitate such reproduction, such acts shall be subject toauthorisation by the rightholder;(b)

the translation, adaptation, arrangement and any other alteration of a computer program
and the reproduction of the results thereof, without prejudice to the rights of the person
who alters the program;(c)

any form of distribution to the public, including the rental, of the original computer
program or of copies thereof.

2.
The first sale in the Community of a copy of a program by the rightholder or with his
consent shall exhaust the distribution right within the Community of that copy, with the
exception of the right to control further rental of the program or a copy thereof.’
18

Article 5 of the directive, ‘Exceptions to the restricted acts’, provides in paragraph 1:‘In the absence of specific contractual provisions, the acts referred to in points (a) and (b) of
Article 4(1) shall not require authorisation by the rightholder where they are necessary for the useof the computer program by the lawful acquirer in accordance with its intended purpose,including for error correction.’
German law

19

Paragraphs 69c and 69d of the Law on copyright and related rights (Gesetz über Urheberrecht
und verwandte Schutzrechte (Urheberrechtsgesetz)) of 9 September 1965, as amended (‘theUrhG’), transpose Articles 4 and 5 of Directive 2009/24 into national law.
Facts of the main proceedings and questions referred for a preliminary ruling

20

Oracle develops and markets computer software. It is the proprietor of the exclusive user rights
under copyright law in those programs. It is also the proprietor of the German and Community
word marks Oracle, which are registered inter alia for computer software.

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Oracle distributes the software at issue in the main proceedings, namely databank software, in
85% of cases by downloading from the internet. The customer downloads a copy of the software
directly to his computer from Oracle’s website. The software is what is known as ‘client-serversoftware’. The user right for such a program, which is granted by a licence agreement, includes
the right to store a copy of the program permanently on a server and to allow a certain number ofusers to access it by downloading it to the main memory of their work-station computers. On thebasis of a maintenance agreement, updated versions of the software (‘updates’) and programs forcorrecting faults (‘patches’) can be downloaded from Oracle’s website. At the customer’s
request, the programs are also supplied on CD-ROM or DVD.

22

Oracle offers group licences for the software at issue in the main proceedings for a minimum of
25 users each. An undertaking requiring licences for 27 users thus has to acquire two licences.

23

Oracle’s licence agreements for the software at issue in the main proceedings contain thefollowing term, under the heading ‘Grant of rights’:‘With the payment for services you receive, exclusively for your internal business purposes, for
an unlimited period a non-exclusive non-transferable user right free of charge for everything that
Oracle develops and makes available to you on the basis of this agreement.’

24

UsedSoft markets used software licences, including user licences for the Oracle computer
programs at issue in the main proceedings. For that purpose UsedSoft acquires from customers ofOracle such user licences, or parts of them, where the original licences relate to a greater numberof users than required by the first acquirer.

25

In October 2005 UsedSoft promoted an ‘Oracle Special Offer’ in which it offered for sale‘already used’ licences for the Oracle programs at issue in the main proceedings. In doing so it
pointed out that the licences were all ‘current’ in the sense that the maintenance agreement
concluded between the original licence holder and Oracle was still in force, and that thelawfulness of the original sale was confirmed by a notarial certificate.

26

Customers of UsedSoft who are not yet in possession of the Oracle software in question
download a copy of the program directly from Oracle’s website, after acquiring such a used
licence. Customers who already have that software and then purchase further licences for
additional users are induced by UsedSoft to copy the program to the work stations of those users.

27

Oracle brought proceedings in the Landgericht München I (Regional Court, Munich I) seeking
an order that UsedSoft cease the practices described in paragraphs 24 to 26 above. That court
allowed Oracle’s application. UsedSoft’s appeal against the decision was dismissed. UsedSoft
thereupon appealed on a point of law to the Bundesgerichtshof (Federal Court of Justice).

28

According to the Bundesgerichtshof, the actions of UsedSoft and its customers infringe Oracle’s
exclusive right of permanent or temporary reproduction of computer programs within themeaning of Article 4(1)(a) of Directive 2009/24. UsedSoft’s customers cannot, in that court’sview, rely on a right validly transferred to them by Oracle to reproduce the computer programs.
Oracle’s licence agreements state that the right to use the programs is ‘non-transferable’. Oracle’s
customers are not therefore entitled to transfer to third parties the right of reproduction of those
programs.

29

The outcome of the dispute depends, according to that court, on whether the customers of
UsedSoft can successfully rely on Paragraph 69d(1) of the UrhG, which transposes Article 5(1)of Directive 2009/24 into German law.

30

The question arises, first, whether a person who, like UsedSoft’s customers, does not hold a user
right in the computer program granted by the rightholder, but relies on the exhaustion of the right

5/14 ページto distribute a copy of the computer program, is a ‘lawful acquirer’ of that copy within themeaning of Article 5(1) of Directive 2009/24. The referring court considers that that is the case.
It explains that the marketability of a copy of the computer program which arises from theexhaustion of the distribution right would be largely meaningless if the acquirer of such a copy
did not have the right to reproduce the program. The use of a computer program, unlike the useof other works protected by copyright, generally requires its reproduction. Article 5(1) of
Directive 2009/24 thus serves to safeguard the exhaustion of the distribution right under Article 4(2) of Directive 2009/24.
31

Next, the referring court considers whether, in a case such as that in the main proceedings, theright to distribute a copy of a computer program is exhausted under the second sentence ofParagraph 69c(3) of the UrhG, which transposes Article 4(2) of Directive 2009/24.

32

There are several possible interpretations. First, Article 4(2) of Directive 2009/24 could beapplicable if the rightholder allows a customer, after the conclusion of a licence agreement, tomake a copy of a computer program by downloading that program from the internet and storing it
on a computer. That provision attaches the legal consequence of exhaustion of the distribution
right to the first sale of a copy of the program and does not necessarily presuppose the putting
into circulation of a physical copy of the program. Secondly, Article 4(2) of Directive 2009/24
could be applicable by analogy in the case of the sale of a computer program by means of on-line
transmission. According to the supporters of that view, there is an unintended lacuna in the law(‘planwidrige Regelungslücke’) because the authors of the directive did not regulate orcontemplate on-line transmission of computer programs. Thirdly, Article 4(2) of Directive
2009/24 is inapplicable because the exhaustion of the distribution right under that provision
always presupposes the putting into circulation of a physical copy of the program by therightholder or with his consent. The authors of the directive deliberately refrained from extending
the rule on exhaustion to the on-line transmission of computer programs.

33

Finally, the referring court raises the question whether a person who has acquired a used licencemay, for making a copy of the program (as UsedSoft’s customers do in the dispute in the mainproceedings by downloading a copy of Oracle’s program onto a computer from Oracle’s website
or uploading it to the main memory of other work stations), rely on exhaustion of the right of
distribution of the copy of the program made by the first acquirer, with the consent of therightholder, by downloading it from the internet, if the first acquirer has deleted his copy or nolonger uses it. The referring court considers that the application by analogy of Articles 5(1) and 4(2) of Directive 2009/24 can be ruled out. Exhaustion of the distribution right is intended solely
to guarantee the marketability of a copy of a program which is incorporated in a particular datacarrier and sold by the rightholder or with his consent. The effect of exhaustion should nottherefore be extended to the non-physical data transmitted on-line.

34

In those circumstances the Bundesgerichtshof decided to stay the proceedings and to refer thefollowing questions to the Court for a preliminary ruling:‘1.

Is the person who can rely on exhaustion of the right to distribute a copy of a computer
program a “lawful acquirer” within the meaning of Article 5(1) of Directive 2009/24?

2.

If the reply to the first question is in the affirmative: is the right to distribute a copy of acomputer program exhausted in accordance with the first half-sentence of Article 4(2) ofDirective 2009/24 when the acquirer has made the copy with the rightholder’s consent bydownloading the program from the internet onto a data carrier?

3.

If the reply to the second question is also in the affirmative: can a person who has acquireda “used” software licence for generating a program copy as “lawful acquirer” under Article
5(1) and the first half-sentence of Article 4(2) of Directive 2009/24 also rely on exhaustionof the right to distribute the copy of the computer program made by the first acquirer with

6/14 ページthe rightholder’s consent by downloading the program from the internet onto a data carrier
if the first acquirer has erased his program copy or no longer uses it?’
Consideration of the questions referred
Question 2
35

By its second question, which should be addressed first, the referring court essentially seeks toknow whether and under what conditions the downloading from the internet of a copy of acomputer program, authorised by the copyright holder, can give rise to exhaustion of the right of
distribution of that copy in the European Union within the meaning of Article 4(2) of Directive
2009/24.

36

It should be recalled that under Article 4(2) of Directive 2009/24 the first sale in the European
Union of a copy of a computer program by the rightholder or with his consent exhausts the
distribution right within the European Union of that copy.

37

According to the order for reference, the copyright holder itself, in this case Oracle, makes
available to its customers in the European Union who wish to use its computer program a copy ofthat program which can be downloaded from its website.

38

To determine whether, in a situation such as that at issue in the main proceedings, the copyrightholder’s distribution right is exhausted, it must be ascertained, first, whether the contractual
relationship between the rightholder and its customer, within which the downloading of a copy ofthe program in question has taken place, may be regarded as a ‘first sale … of a copy of aprogram’ within the meaning of Article 4(2) of Directive 2009/24.

39

According to settled case-law, the need for a uniform application of European Union law and theprinciple of equality require that the terms of a provision of European Union law which makes noexpress reference to the law of the Member States for the purpose of determining its meaning andscope must normally be given an independent and uniform interpretation throughout theEuropean Union (see, inter alia, Case C-5/08 Infopaq International [2009] ECR I-6569,
paragraph 27; Case C-34/10 Brüstle [2011] ECR I-0000, paragraph 25; and Case C-510/10 DR
and TV2 Danmark [2012] ECR I-0000, paragraph 33).

40

The wording of Directive 2009/24 does not make any reference to national laws as regards themeaning to be given to the term ‘sale’ in Article 4(2) of the directive. It follows that that term
must be regarded, for the purposes of applying the directive, as designating an autonomous
concept of European Union law, which must be interpreted in a uniform manner throughout the
territory of the European Union (see, to that effect, DR and TV2 Danmark, paragraph 34).

41

That conclusion is supported by the subject-matter and purpose of Directive 2009/24. Recitals 4
and 5 in the preamble to that directive, which is based on Article 95 EC, to which Article 114
TFEU corresponds, state that its objective is to remove differences between the laws of theMember States which have adverse effects on the functioning of the internal market and concern
computer programs. A uniform interpretation of the term ‘sale’ is necessary in order to avoid theprotection offered to copyright holders by that directive varying according to the national law
applicable.

42

According to a commonly accepted definition, a ‘sale’ is an agreement by which a person, in
return for payment, transfers to another person his rights of ownership in an item of tangible orintangible property belonging to him. It follows that the commercial transaction giving rise, in
accordance with Article 4(2) of Directive 2009/24, to exhaustion of the right of distribution of acopy of a computer program must involve a transfer of the right of ownership in that copy.

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Oracle submits that it does not sell copies of its computer programs at issue in the mainproceedings. It says that it makes available to its customers, free of charge, on its website a copyof the program concerned, and they can download that copy. The copy thus downloaded may not,however, be used by the customers unless they have concluded a user licence agreement with
Oracle. Such a licence gives Oracle’s customers a non-exclusive and non-transferable user rightfor an unlimited period for that program. Oracle submits that neither the making available of acopy free of charge nor the conclusion of the user licence agreement involves a transfer of theright of ownership of that copy.

44

In this respect, it must be observed that the downloading of a copy of a computer program andthe conclusion of a user licence agreement for that copy form an indivisible whole. Downloadinga copy of a computer program is pointless if the copy cannot be used by its possessor. Those two
operations must therefore be examined as a whole for the purposes of their legal classification(see, by analogy, Joined Cases C-145/08 and C-149/08 Club Hotel Loutraki and Others [2010]
ECR I-4165, paragraphs 48 and 49 and the case-law cited).

45

As regards the question whether, in a situation such as that at issue in the main proceedings, thecommercial transactions concerned involve a transfer of the right of ownership of the copy of thecomputer program, it must be stated that, according to the order for reference, a customer ofOracle who downloads the copy of the program and concludes with that company a user licenceagreement relating to that copy receives, in return for payment of a fee, a right to use that copy
for an unlimited period. The making available by Oracle of a copy of its computer program andthe conclusion of a user licence agreement for that copy are thus intended to make the copy
usable by the customer, permanently, in return for payment of a fee designed to enable thecopyright holder to obtain a remuneration corresponding to the economic value of the copy of thework of which it is the proprietor.

46

In those circumstances, the operations mentioned in paragraph 44 above, examined as a whole,
involve the transfer of the right of ownership of the copy of the computer program in question.

47

It makes no difference, in a situation such as that at issue in the main proceedings, whether the
copy of the computer program was made available to the customer by the rightholder concernedby means of a download from the rightholder’s website or by means of a material medium suchas a CD-ROM or DVD. Even if, in the latter case too, the rightholder formally separates thecustomer’s right to use the copy of the program supplied from the operation of transferring the
copy of the program to the customer on a material medium, the operation of downloading fromthat medium a copy of the computer program and that of concluding a licence agreement remain
inseparable from the point of view of the acquirer, for the reasons set out in paragraph 44 above.
Since an acquirer who downloads a copy of the program concerned by means of a material
medium such as a CD-ROM or DVD and concludes a licence agreement for that copy receives
the right to use the copy for an unlimited period in return for payment of a fee, it must be
considered that those two operations likewise involve, in the case of the making available of acopy of the computer program concerned by means of a material medium such as a CD-ROM orDVD, the transfer of the right of ownership of that copy.

48

Consequently, in a situation such as that at issue in the main proceedings, the transfer by the
copyright holder to a customer of a copy of a computer program, accompanied by the conclusion
between the same parties of a user licence agreement, constitutes a ‘first sale … of a copy of aprogram’ within the meaning of Article 4(2) of Directive 2009/24.

49

As the Advocate General observes in point 59 of his Opinion, if the term ‘sale’ within themeaning of Article 4(2) of Directive 2009/24 were not given a broad interpretation as
encompassing all forms of product marketing characterised by the grant of a right to use a copyof a computer program, for an unlimited period, in return for payment of a fee designed to enable
the copyright holder to obtain a remuneration corresponding to the economic value of the copy of

8/14 ページthe work of which he is the proprietor, the effectiveness of that provision would be undermined,
since suppliers would merely have to call the contract a ‘licence’ rather than a ‘sale’ in order tocircumvent the rule of exhaustion and divest it of all scope.
50

Secondly, the argument put forward by Oracle and the European Commission that the making
available of a copy of a computer program on the copyright holder’s website constitutes a‘making available to the public’ within the meaning of Article 3(1) of Directive 2001/29, which,in accordance with Article 3(3) of that directive, cannot give rise to exhaustion of the right of
distribution of the copy, cannot be accepted.

51

It is apparent from Article 1(2)(a) of Directive 2001/29 that the directive ‘leave[s] intact and …
in no way affect[s] existing … provisions [of European Union law] relating to … the legal
protection of computer programs’ conferred by Directive 91/250, which was subsequently
codified by Directive 2009/24. The provisions of Directive 2009/24, in particular Article 4(2),thus constitute a lex specialis in relation to the provisions of Directive 2001/29, so that even if thecontractual relationship at issue in the main proceedings or an aspect of it might also be coveredby the concept of ‘communication to the public’ within the meaning of Article 3(1) of the latterdirective, the ‘first sale … of a copy of a program’ within the meaning of Article 4(2) ofDirective 2009/24 would still give rise, in accordance with that provision, to exhaustion of theright of distribution of that copy.

52

Moreover, as stated in paragraph 46 above, in a situation such as that at issue in the mainproceedings, the copyright holder transfers the right of ownership of the copy of the computer
program to his customer. As the Advocate General observes in point 73 of his Opinion, it follows
from Article 6(1) of the Copyright Treaty, in the light of which Articles 3 and 4 of Directive
2001/29 must, so far as possible, be interpreted (see, to that effect, Case C-456/06 Peek &Cloppenburg [2008] ECR I-2731, paragraph 30), that the existence of a transfer of ownershipchanges an ‘act of communication to the public’ provided for in Article 3 of that directive into an
act of distribution referred to in Article 4 of the directive which, if the conditions in Article 4(2)of the directive are satisfied, can, like a ‘first sale … of a copy of a program’ referred to in
Article 4(2) of Directive 2009/24, give rise to exhaustion of the distribution right.

53

Thirdly, it must also be examined whether, as argued by Oracle, the governments which havesubmitted observations to the Court, and the Commission, the exhaustion of the distribution rightreferred to in Article 4(2) of Directive 2009/24 relates only to tangible property and not tointangible copies of computer programs downloaded from the internet. They refer in this respect
to the wording of Article 4(2) of Directive 2009/24, recitals 28 and 29 in the preamble to
Directive 2001/29, Article 4 of Directive 2001/29 read in conjunction with Article 8 of the
Copyright Treaty, and the agreed statement concerning Articles 6 and 7 of the Copyright Treaty,
whose transposition is one of the aims of Directive 2001/29.

54

Furthermore, according to the Commission, recital 29 in the preamble to Directive 2001/29
confirms that ‘[t]he question of exhaustion does not arise in the case of services and on-line
services in particular’.

55

On this point, it must be stated, first, that it does not appear from Article 4(2) of Directive
2009/24 that the exhaustion of the right of distribution of copies of computer programs
mentioned in that provision is limited to copies of programmes on a material medium such as a
CD-ROM or DVD. On the contrary, that provision, by referring without further specification tothe ‘sale … of a copy of a program’, makes no distinction according to the tangible or intangible
form of the copy in question.

56

Next, it must be recalled that Directive 2009/24, which concerns specifically the legal protectionof computer programs, constitutes a lex specialis in relation to Directive 2001/29.

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57

Article 1(2) of Directive 2009/24 states that ‘[p]rotection in accordance with this Directive shallapply to the expression in any form of a computer program’. Recital 7 in the preamble to that
directive specifies that the ‘computer programs’ it aims to protect ‘include programs in any form,
including those which are incorporated into hardware’.

58

Those provisions thus make abundantly clear the intention of the European Union legislature to
assimilate, for the purposes of the protection laid down by Directive 2009/24, tangible andintangible copies of computer programs.

59

In those circumstances, it must be considered that the exhaustion of the distribution right under
Article 4(2) of Directive 2009/24 concerns both tangible and intangible copies of a computer
program, and hence also copies of programs which, on the occasion of their first sale, have been
downloaded from the internet onto the first acquirer’s computer.

60

It is true that the concepts used in Directives 2001/29 and 2009/24 must in principle have thesame meaning (see Joined Cases C-403/08 and C-429/08 Football Association Premier League
and Others [2011] ECR I-0000, paragraphs 187 and 188). However, even supposing that Article
4(2) of Directive 2001/29, interpreted in the light of recitals 28 and 29 in its preamble and in thelight of the Copyright Treaty, which Directive 2001/29 aims to implement (Case C-277/10
Luksan [2012] ECR I-0000, paragraph 59), indicated that, for the works covered by that
directive, the exhaustion of the distribution right concerned only tangible objects, that would not
be capable of affecting the interpretation of Article 4(2) of Directive 2009/24, having regard to
the different intention expressed by the European Union legislature in the specific context of that
directive.

61

It should be added that, from an economic point of view, the sale of a computer program on CDROM or DVD and the sale of a program by downloading from the internet are similar. The online transmission method is the functional equivalent of the supply of a material medium.
Interpreting Article 4(2) of Directive 2009/24 in the light of the principle of equal treatment
confirms that the exhaustion of the distribution right under that provision takes effect after the
first sale in the European Union of a copy of a computer program by the copyright holder or withhis consent, regardless of whether the sale relates to a tangible or an intangible copy of the
program.

62

As to the Commission’s argument that European Union law does not provide for the exhaustionof the distribution right in the case of services, it must be recalled that the objective of theprinciple of the exhaustion of the right of distribution of works protected by copyright is, in order
to avoid partitioning of markets, to limit restrictions of the distribution of those works to what isnecessary to safeguard the specific subject-matter of the intellectual property concerned (see, tothat effect, Case C-200/96 Metronome Musik [1998] ECR I-1953, paragraph 14; Case C-61/97
FDV [1998] ECR I-5171, paragraph 13; and Football Association Premier League and Others,
paragraph 106).

63

To limit the application, in circumstances such as those at issue in the main proceedings, of theprinciple of the exhaustion of the distribution right under Article 4(2) of Directive 2009/24 solely
to copies of computer programs that are sold on a material medium would allow the copyrightholder to control the resale of copies downloaded from the internet and to demand further
remuneration on the occasion of each new sale, even though the first sale of the copy had alreadyenabled the rightholder to obtain an appropriate remuneration. Such a restriction of the resale ofcopies of computer programs downloaded from the internet would go beyond what is necessary
to safeguard the specific subject-matter of the intellectual property concerned (see, to that effect,
Football Association Premier League and Others, paragraphs 105 and 106).

64

Fourthly, it must also be examined whether, as Oracle claims, the maintenance agreement
concluded by the first acquirer prevents in any event the exhaustion of the right provided for in

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Article 4(2) of Directive 2009/24, since the copy of the computer program which the firstacquirer may transfer to a second acquirer no longer corresponds to the copy he downloaded but
to a new copy of the program.
65

According to the order for reference, the used licences offered by UsedSoft are ‘current’, in thatthe sale of the copy of the program by Oracle to its customer was accompanied by the conclusionof a maintenance agreement for that copy.

66

It must be observed that the exhaustion of the right of distribution of a copy of a computer
program under Article 4(2) of Directive 2009/24 only concerns copies which have been thesubject of a first sale in the European Union by the copyright holder or with his consent. It does
not relate to contracts for services, such as maintenance agreements, which are separable fromsuch a sale and were concluded, possibly for an unlimited period, on the occasion of the sale.

67

None the less, the conclusion of a maintenance agreement, such as those at issue in the mainproceedings, on the occasion of the sale of an intangible copy of a computer program has theeffect that the copy originally purchased is patched and updated. Even if the maintenanceagreement is for a limited period, the functionalities corrected, altered or added on the basis ofsuch an agreement form an integral part of the copy originally downloaded and can be used by
the acquirer of the copy for an unlimited period, even in the event that the acquirer subsequently
decides not to renew the maintenance agreement.

68

In such circumstances, the exhaustion of the distribution right under Article 4(2) of Directive
2009/24 extends to the copy of the computer program sold as corrected and updated by the
copyright holder.

69

It should be pointed out, however, that if the licence acquired by the first acquirer relates to agreater number of users than he needs, as stated in paragraphs 22 and 24 above, the acquirer is
not authorised by the effect of the exhaustion of the distribution right under Article 4(2) ofDirective 2009/24 to divide the licence and resell only the user right for the computer program
concerned corresponding to a number of users determined by him.

70

An original acquirer who resells a tangible or intangible copy of a computer program for which
the copyright holder’s right of distribution is exhausted in accordance with Article 4(2) ofDirective 2009/24 must, in order to avoid infringing the exclusive right of reproduction of acomputer program which belongs to its author, laid down in Article 4(1)(a) of Directive 2009/24,
make his own copy unusable at the time of its resale. In a situation such as that mentioned in thepreceding paragraph, the customer of the copyright holder will continue to use the copy of the
program installed on his server and will not thus make it unusable.

71

Moreover, even if an acquirer of additional user rights for the computer program concerned did
not carry out a new installation – and hence a new reproduction – of the program on a server
belonging to him, the effect of the exhaustion of the distribution right under Article 4(2) ofDirective 2009/24 would in any event not extend to such user rights. In such a case theacquisition of additional user rights does not relate to the copy for which the distribution rightwas exhausted at the time of that transaction. On the contrary, it is intended solely to make itpossible to extend the number of users of the copy which the acquirer of additional rights has
himself already installed on his server.

72

On the basis of all the foregoing, the answer to Question 2 is that Article 4(2) of Directive
2009/24 must be interpreted as meaning that the right of distribution of a copy of a computer
program is exhausted if the copyright holder who has authorised, even free of charge, thedownloading of that copy from the internet onto a data carrier has also conferred, in return for
payment of a fee intended to enable him to obtain a remuneration corresponding to the economic

11/14 ページvalue of the copy of the work of which he is the proprietor, a right to use that copy for an
unlimited period.
Questions 1 and 3
73

By its first and third questions the referring court seeks essentially to know whether, and underwhat conditions, an acquirer of used licences for computer programs, such as those sold by
UsedSoft, may, as a result of the exhaustion of the distribution right under Article 4(2) ofDirective 2009/24, be regarded as a ‘lawful acquirer’ within the meaning of Article 5(1) of
Directive 2009/24 who, in accordance with that provision, enjoys the right of reproduction of the
program concerned in order to enable him to use the program in accordance with its intended
purpose.

74

Article 5(1) of Directive 2009/24 provides that, in the absence of specific contractual provisions,the reproduction of a computer program does not require authorisation by the author of the
program where that reproduction is necessary for the use of the computer program by the lawful
acquirer in accordance with its intended purpose, including for error correction.

75

When the customer of the copyright holder purchases a copy of a computer program that is on
the rightholder’s website, he performs, by downloading the copy onto his computer, a
reproduction of the copy which is authorised under Article 5(1) of Directive 2009/24. This is a
reproduction that is necessary for the use of the program by the lawful acquirer in accordancewith its intended purpose.

76

Moreover, recital 13 in the preamble to Directive 2009/24 states that ‘the acts of loading andrunning necessary for the use of a copy of a program which has been lawfully acquired … may
not be prohibited by contract’.

77

It must be recalled, next, that the copyright holder’s distribution right is exhausted, in
accordance with Article 4(2) of Directive 2009/24, on the occasion of the first sale in theEuropean Union by that rightholder, or with his consent, of any copy, tangible or intangible, of
his computer program. It follows that, by virtue of that provision and notwithstanding theexistence of contractual terms prohibiting a further transfer, the rightholder in question can nolonger oppose the resale of that copy.

78

Admittedly, as stated in paragraph 70 above, the original acquirer of a tangible or intangible
copy of a computer program for which the copyright holder’s distribution right is exhausted inaccordance with Article 4(2) of Directive 2009/24 who resells that copy must, in order to avoid
infringing that rightholder’s exclusive right of reproduction of his computer program under
Article 4(1)(a) of Directive 2009/24, make the copy downloaded onto his computer unusable atthe time of its resale.

79

As Oracle rightly observes, ascertaining whether such a copy has been made unusable may
prove difficult. However, a copyright holder who distributes copies of a computer program on amaterial medium such as a CD-ROM or DVD is faced with the same problem, since it is onlywith great difficulty that he can make sure that the original acquirer has not made copies of the
program which he will continue to use after selling his material medium. To solve that problem,
it is permissible for the distributor – whether ‘classic’ or ‘digital’ – to make use of technicalprotective measures such as product keys.

80

Since the copyright holder cannot object to the resale of a copy of a computer program for whichthat rightholder’s distribution right is exhausted under Article 4(2) of Directive 2009/24, it must
be concluded that a second acquirer of that copy and any subsequent acquirer are ‘lawful
acquirers’ of it within the meaning of Article 5(1) of Directive 2009/24.

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Consequently, in the event of a resale of the copy of the computer program by the first acquirer,
the new acquirer will be able, in accordance with Article 5(1) of Directive 2009/24, to download
onto his computer the copy sold to him by the first acquirer. Such a download must be regarded
as a reproduction of a computer program that is necessary to enable the new acquirer to use theprogram in accordance with its intended purpose.

82

The argument put forward by Oracle, Ireland and the French and Italian Governments that theconcept of ‘lawful acquirer’ in Article 5(1) of Directive 2009/24 relates only to an acquirer who
is authorised, under a licence agreement concluded directly with the copyright holder, to use thecomputer programme cannot be accepted.

83

That argument would have the effect of allowing the copyright holder to prevent the effective
use of any used copy in respect of which his distribution right has been exhausted under Article 4(2) of Directive 2009/24, by relying on his exclusive right of reproduction laid down in Article 4(1)(a) of that directive, and would thus render ineffective the exhaustion of the distribution rightunder Article 4(2).

84

In the case of a situation such as that at issue in the main proceedings, it must be recalled that inparagraphs 44 and 48 above it was found that the downloading onto the customer’s server of acopy of the computer program on the rightholder’s website and the conclusion of a user licenceagreement for that copy form an indivisible whole which, as a whole, must be classified as a sale.
Having regard to that indivisible link between the copy on the rightholder’s website, as
subsequently corrected and updated, on the one hand, and the user licence relating to the copy, on
the other, the resale of the user licence entails the resale of ‘that copy’ within the meaning of
Article 4(2) of Directive 2009/24, and thus benefits from the exhaustion of the distribution rightunder that provision, notwithstanding the term in the licence agreement set out in paragraph 23
above.

85

As may be seen from paragraph 81 above, it follows that a new acquirer of the user licence, suchas a customer of UsedSoft, will be able, as a ‘lawful acquirer’ within the meaning of Article 5(1)of Directive 2009/24 of the corrected and updated copy of the computer program concerned, todownload that copy from the copyright holder’s website, with that downloading constituting a
reproduction of a computer program that is necessary to enable the new acquirer to use theprogram in accordance with its intended purpose.

86

It should be recalled, however, that, if the licence acquired by the first acquirer relates to agreater number of users than he needs, that acquirer is not authorised by the effect of theexhaustion of the distribution right under Article 4(2) of Directive 2009/24 to divide the licenceand resell only the user right for the computer program concerned corresponding to a number ofusers determined by him, as explained in paragraphs 69 to 71 above.

87

Moreover, a copyright holder such as Oracle is entitled, in the event of the resale of a user
licence entailing the resale of a copy of a computer program downloaded from his website, toensure by all technical means at his disposal that the copy still in the hands of the reseller is madeunusable.

88

It follows from the foregoing that the answer to Questions 1 and 3 is that Articles 4(2) and 5(1)of Directive 2009/24 must be interpreted as meaning that, in the event of the resale of a user
licence entailing the resale of a copy of a computer program downloaded from the copyrightholder’s website, that licence having originally been granted by that rightholder to the firstacquirer for an unlimited period in return for payment of a fee intended to enable the rightholder
to obtain a remuneration corresponding to the economic value of that copy of his work, thesecond acquirer of the licence, as well as any subsequent acquirer of it, will be able to rely on theexhaustion of the distribution right under Article 4(2) of that directive, and hence be regarded as

13/14 ページlawful acquirers of a copy of a computer program within the meaning of Article 5(1) of that
directive and benefit from the right of reproduction provided for in that provision.
Costs
89

Since these proceedings are, for the parties to the main proceedings, a step in the action pending
before the national court, the decision on costs is a matter for that court. Costs incurred insubmitting observations to the Court, other than the costs of those parties, are not recoverable.
On those grounds, the Court (Grand Chamber) hereby rules:
1.

Article 4(2) of Directive 2009/24/EC of the European Parliament and of the Council of
23 April 2009 on the legal protection of computer programs must be interpreted asmeaning that the right of distribution of a copy of a computer program is exhausted if
the copyright holder who has authorised, even free of charge, the downloading of thatcopy from the internet onto a data carrier has also conferred, in return for paymentof a fee intended to enable him to obtain a remuneration corresponding to theeconomic value of the copy of the work of which he is the proprietor, a right to usethat copy for an unlimited period.

2.

Articles 4(2) and 5(1) of Directive 2009/24 must be interpreted as meaning that, in theevent of the resale of a user licence entailing the resale of a copy of a computer
program downloaded from the copyright holder’s website, that licence having
originally been granted by that rightholder to the first acquirer for an unlimited
period in return for payment of a fee intended to enable the rightholder to obtain aremuneration corresponding to the economic value of that copy of his work, thesecond acquirer of the licence, as well as any subsequent acquirer of it, will be able torely on the exhaustion of the distribution right under Article 4(2) of that directive,
and hence be regarded as lawful acquirers of a copy of a computer program within
the meaning of Article 5(1) of that directive and benefit from the right ofreproduction provided for in that provision.

[Signatures]* Language of the case: German.

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