Opinion of the Advocate General — ECLI:EU:C:2019:729
Date: 2019-09-12
Language of the case: French
Subject matter: Internal market - Principles;Intellectual, industrial and commercial property;Approximation of laws
Procedure: Reference for a preliminary ruling
Origin: France

Translation  C-666/18 — 1 
Case C-666/18 
Request for a preliminary ruling 
Date lodged: 
24 October 2018 
Referring court: 
Cour d’appel de Paris (France) 
Date of the decision to refer: 
16 October 2018 
Appellant: 
IT Development SAS 
Respondent: 
Free Mobile SAS 
  
...  
[administrative references omitted]  
COUR D’APPEL DE PARIS (COURT OF APPEAL, PARIS) 
... JUDGMENT OF 16 OCTOBER 2018 
... 
... 
APPELLANT 
SAS IT DEVELOPMENT 
... 69008 LYON [contact details of company and lawyer omitted] 
... RESPONDENT 
FREE MOBILE, 
EN 
REQUEST FOR A PRELIMINARY RULING OF 16.10.2018 — CASE C-666/18 
 
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... 
75008 PARIS [contact details of company and lawyer omitted] 
[composition of referring court and procedural steps omitted] 
... 
JUDGMENT: 
[procedural steps omitted] 
1 By a contract of 25 August 2010, amended by an addendum of 1 April 2012, the 
company IT Development granted a licence to and concluded a maintenance 
agreement with the company Free Mobile — a mobile phone operator offering 
mobile phone packages on the French market — for the ‘ClickOnSite’ software 
package, centralised project management software designed to enable Free Mobile 
to organise and monitor in real time the progress made by its teams and external 
technical service providers in deploying all its radiotelephone antennae. 
By document of 18 June 2015, IT Development brought proceedings against Free 
Mobile for infringement of the ClickOnSite software and seeking compensation 
for the damage IT Development had suffered, claiming that the software had been 
modified in breach of the licence agreement and having arranged for a seizure of 
infringing material to be carried out on 22 May 2015 at the premises of the 
company Coraso, a subcontractor of Free Mobile. 
In addition to contending that those claims were inadmissible and unfounded, 
FREE MOBILE made a counterclaim for abuse of process.  
2 On 3 February 2017, IT Development appealed against the judgment inter partes 
delivered on 6 January 2017 by the Regional Court, Paris, which: 
• Declared inadmissible the claims of IT Development based on tortious 
liability, 
• Rejected the claim for damages made by Free Mobile for abuse of process, 
• [procedural claims omitted]. 
3 In its latest submissions of 3 May 2018, IT Development asks the Court to: 
• First of all, refer to the Court of Justice of the European Union (CJEU) the 
following question for a preliminary ruling: 
IT DEVELOPMENT 
 
3 
‘Does a software licensee’s non-compliance with the terms of a software 
licence agreement (by expiry of a trial period, by exceeding the number of 
authorised users or some other limit, such as the number of processors which 
may be used to execute the software instructions, or by modifying the source 
code of the software where the licence reserves that right to the initial 
rightholder) constitute: 
- an infringement (for the purposes of Directive 2004/48 of 29 April 
2004) of a right of the author of the software which is reserved by 
Article 4 of Directive 2009/24/EC of 23 April 2009 on the legal 
protection of computer programs 
- or may it comply with a separate system of legal rules, such as the 
system of rules on contractual liability under ordinary law?’. 
• Set aside the judgment under appeal, and: 
- Declare that the infringement action brought by IT DEVELOPMENT 
is admissible; 
-  Hold that the ClickOnSite software claimed to be in infringement is 
identified and original; 
-  Rule that the modifications made to the software by FREE MOBILE 
constitute infringements; 
-  Primarily, based on the infringement, order FREE MOBILE to pay IT 
DEVELOPMENT the amount of EUR 1 440 000 as compensation for 
the damage suffered by IT DEVELOPMENT; 
- In the alternative, based on the contract, order FREE MOBILE to pay 
IT DEVELOPMENT the amount of EUR 840 000 as compensation for 
the damage suffered by IT DEVELOPMENT; 
• In any event: Prohibit FREE MOBILE and CORASO from using the 
ClickOnSite software and from extracting and reusing the data from the 
ClickOnSite software, subject to a penalty payment of EUR 500 for each 
day of delay as from the day after the fifteenth day of notification of the 
decision to be delivered, it being FREE MOBILE’s responsibility to 
establish that use of the software has ceased by any appropriate means 
(uninstalling or otherwise); 
- ...; 
- ...; 
- [procedural claims omitted].  
4 In its latest submissions of 11 May 2018, FREE MOBILE asks the Court to: 
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• Uphold in all respects the judgment under appeal, except in so far as it 
dismissed the claims of FREE MOBILE for damages for abuse of process 
…; 
•  Setting aside the judgment on those heads, and ruling anew: 
- order IT DEVELOPMENT to pay FREE MOBILE the sum of 
EUR 50 000 (fifty thousand euros) as damages for abuse of process; 
- [procedural claims omitted]. 
• Supplementing the judgment: 
- Declare invalid the report on the seizure of infringing material drawn 
up on 22 May 2015 [identity of author omitted]; 
- [procedural claims omitted]. 
- Declare all the claims of IT DEVELOPMENT against FREE MOBILE 
inadmissible and in any event unfounded; dismiss them; 
- [procedural claims omitted].; 
- [procedural claims omitted]. 
5 ... . 
THEREUPON 
[procedural reference omitted]  
Admissibility of the question referred for a preliminary ruling 
6 In the originating application and its claims at first instance, IT Development 
submitted that FREE MOBILE had committed infringements by modifying the 
ClickOnSite software, in particular by creating new forms. In its view, the 
respondent was not entitled to rely on the provisions of Article L.122-6-1 of the 
Intellectual Property Code permitting it to modify the software for use in 
accordance with its intended purpose, since, on the one hand, those modifications 
were substantial and, on the other hand, the possibility of doing so was excluded 
by the contract. 
7 In order to declare IT Development’s claims based on the infringement 
inadmissible, the Regional Court held that a combined reading of Articles 122-6 
and 122-6-1 of the Intellectual Property Code resulted in the recognition of two 
separate systems of rules on liability in this area: (i) tortious liability, in the event 
of infringement of the exploitation rights of the author of the software as 
determined by law, and (ii) contractual liability, in the event of infringement of a 
right of the author reserved by contract. The Regional Court ruled that, in the 
IT DEVELOPMENT 
 
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present case, Free Mobile was clearly alleged to have failed to perform its 
contractual obligations, providing a basis for an action for contractual liability, 
and not to have committed the tortious act of infringement of software copyright. 
8 On appeal, IT Development is, first of all, requesting that a reference for a 
preliminary ruling be made to the Court of Justice of the European Union and, 
next, the setting aside of the judgment and a declaration that the infringement 
action is admissible. For those purposes, it submits, in the first place, that the right 
of the author of software to authorise or prohibit the modification of the source 
code of the software is a right of statutory origin and that the breach of that right 
by the licensee is not merely the non-performance of a contract but a breach of 
legal copyright, thus constituting an infringement. IT Development argues, in the 
second place, that, although in the case of all other intellectual property rights an 
infringement action is expressly available in the event of breach of a licence 
agreement, the second paragraph of Article L.335-3 paragraph 2 of the Intellectual 
Property Code, which provides that the breach of any of the rights of an author of 
software as defined in Article L.122-6 is also to constitute an infringement, is 
intended to apply to cases both of use without right (‘piracy’ in the strict sense) 
and of use outside the licence. It maintains, in the third place, that an infringement 
action is not exclusively an action in tort and that the distinction between 
contractual and tortious liability is contrary to the EU legislature’s objective of 
establishing a single procedure in pursuance of Directive 2004/48. It states that, in 
reality, infringement has a twofold — tortious and contractual — nature and that, 
since the 2007 law, there has been no distinction between the contractual and the 
tortious. It claims, in the fourth place, that the anti-infringement directive has 
sought to give infringement the broadest possible definition, extending to any 
infringement of intellectual property rights. 
9 FREE MOBILE, which takes the view that it is not necessary to refer any question 
for a preliminary ruling, requests that the judgment be upheld. It argues that the 
statutory provisions establish two separate systems of liability for two distinct 
categories of acts: on the one hand, acts infringing a right reserved by law, 
entitling the author of the software to bring an action for liability in tort, namely 
an infringement action; on the other hand, acts infringing a right reserved by 
contract, entitling the author of the software to bring an action for contractual 
liability against the other party to the contract. In the present case, it claims that 
the acts alleged, constituting a breach of the contractual obligations of the 
licensee, do not confer on FREE MOBILE the right to bring an infringement 
action. FREE MOBILE argues that it is a cardinal principle of civil liability in 
French law that contractual and tortious liability cannot be aggregated and that it 
is established that the party to whom a contractual obligation is owed cannot rely 
on rules of tortious liability as against the party owing that obligation, even where 
there is good cause. According to FREE MOBILE, where it intends to derogate 
from the ordinary law by allowing the injured party to bring an action in tort 
against a licensee who contravenes any restriction in his licence, although the 
bringing of an action is, in principle, possible only on the basis of contractual 
liability, the legislature expressly and very precisely provides for that derogation, 
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for example in matters relating to patent licensing or trademark licensing. FREE 
MOBILE argues that in matters relating to software licensing, by contrast, the 
legislature has not provided for any derogation from the principle of ordinary law 
that, where a licence agreement binds the parties, the system of contractual 
liability prevails over that of tortious liability. FREE MOBILE maintains that no 
provision of Directive 2009/24/EC of 23 April 2009 on the legal protection of 
computer programs or of Directive 2004/48/EC of 29 April 2004 on the 
enforcement of intellectual property rights requires Member States to give 
precedence to tortious liability over contractual liability in cases where a lawful 
user of software contravenes the restrictions in his licence. It also submits that the 
Court of Justice of the European Union, in a judgment of 18 April 2013 
(C-103/11, European Commission v Systran) delivered in connection with a 
software licence, has already established the principle of ordinary law that 
contractual liability prevails over tortious liability. 
Having regard to the foregoing, the Court 
10 1 — Facts 
The Court recalls that, by a contract of 25 August 2010, amended by an addendum 
of 1 April 2012, IT Development granted a licence to and concluded a 
maintenance agreement with Free Mobile — a mobile phone operator offering 
mobile phone packages on the French market — for the ‘ClickOnSite’ software 
package, centralised project management software designed to enable Free Mobile 
to organise and monitor in real time the progress made by its teams and external 
technical service providers in deploying all its radiotelephone antennae. 
IT Development complains that FREE MOBILE has modified the ClickOnSite 
software, in particular by creating new forms. 
In addition to its claim that those modifications are substantial, IT Development 
refers, in particular, to the provisions of Article 6, ‘scope of the licence’, to argue 
that FREE MOBILE was not entitled to make such modifications: 
In any case, the Customer shall be expressly prohibited ... from: 
- reproducing, directly or indirectly, the Software Package ... with the 
exception of backup copies; 
- decompiling and/or performing reverse-engineering operations on the 
Software Package, subject to certain legal exceptions; 
- modifying, correcting, adapting, creating second and additional works, 
directly or indirectly, in relation to the Software Package, it being 
understood that the Customer will nevertheless have free access to read the 
database. 
- ... 
IT DEVELOPMENT 
 
7 
Where necessary, the Customer reserves the right to request, by simple mail, 
facsimile or email, that the Supplier provide information necessary for the 
interoperability or compatibility of the Software Package with other 
software used by the Customer. If, within one month of receiving that 
request, the Supplier fails to provide a satisfactory response in terms of the 
completeness and relevance of such information, the Customer himself will 
carry out, in accordance with the provisions of Article L.122-6-1 of the 
Intellectual Property Code, operations to decompile the source code of the 
Software Package for the sole purpose of ensuring the interoperability or 
compatibility of the Software Package with other software used by the 
Customer... . 
At first instance, the appellant based its claims exclusively on infringement. On 
appeal, it also bases those claims, in the alternative, on contractual liability. 
In addition to arguing that the claims based on infringement are inadmissible, 
FREE MOBILE submits, on the merits: first, that evidence of the originality of the 
software has not been adduced; secondly, that the seizures of infringing material 
are null and void, as is the expert’s report; thirdly, that evidence of unauthorised 
modification of the software has not been adduced and; lastly, that the 
modifications made concern only the licensed operator’s own database and that 
the clause prohibiting modification of the software package, which is contrary to 
the public policy provisions of Article L.122-6-1 of the Intellectual Property 
Code, must be deemed not to form part of the contract. 
11 2 — Relevant provisions 
a — Community directives 
Article 2 of Directive [2004/48/EC] of 29 April 2004 
1. Without prejudice to the means which are or may be provided for in 
Community or national legislation, in so far as those means may be more 
favourable for rightholders, the measures, procedures and remedies shall 
apply, in accordance with Article 3, to any infringement of intellectual 
property rights as provided for by Community law and/or by the national law of 
the Member State concerned. 
Directive 2009/24/EC of 23 April 2009 
Article 4 — Restricted acts 
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 ... 
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(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. 
Article 5 — Exceptions to the restricted acts 
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 use of the computer program by the lawful 
acquirer in accordance with its intended purpose, including for error correction. 
b — Articles of the Intellectual Property Code 
Article L.112-2 
The following, in particular, shall be considered works of the mind within the 
meaning of this Code: ... 13° software, including the preparatory design 
material.  
Article L.122-6 
Subject to the provisions of Article L.122-6-1, the exploitation right belonging 
to the author of the software shall include the right to do or to authorise: 
1° the permanent or temporary reproduction of software ... 
2° the translation, adaptation, arrangement or any other alteration of software and 
the reproduction of the results thereof; ... 
3° the placing on the market for consideration or gratuitously, including rental, of 
the software or of copies thereof by any process ... 
Article L.122-6-1 
I. The acts referred to in Article L.122-6(1) and (2) shall not require 
authorisation by the author where they are necessary for the use of the 
software by the person entitled to use it in accordance with its intended 
purpose, including for error correction. 
However, an author may by contract reserve the right to correct errors and 
stipulate any special conditions to which shall be subject the acts referred to 
in Article L.122-6(1) and (2) necessary to enable the entitled person to use the 
software in accordance with its intended purpose. 
Article L.335-3 
IT DEVELOPMENT 
 
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The breach of any of the rights of an author of software as defined in Article 
L.122-6 shall also constitute an infringement. 
3 — Reasons 
12 Since the nineteenth century, French law on civil liability has been based on the 
cardinal principle that contractual and tortious liability cannot be aggregated, 
which means that: 
- one person cannot hold another person liable in contract and tort for the same 
acts, 
- tortious liability must be excluded in favour of contractual liability, where, on 
the one hand, the parties are bound by a valid contract and, on the other hand, the 
damage suffered by a party results from the non-performance or the improper 
performance of a contractual obligation. 
Moreover, French law traditionally considers that infringement, which is in origin 
a criminal offence, is based on tortious liability and not on non-performance of a 
contract. 
13 The Regional Court concluded in the present case that, although the parties are 
bound by the contract of 25 August 2010 and it is alleged that the damage results 
from non-performance of the clauses of that contract and in particular of Article 6 
thereof, it was necessary to exclude liability in tort in favour of contractual 
liability and, consequently, held that the infringement action, comparable to an 
action in tort, must be declared inadmissible. 
The respondent company, which concurs with that analysis, rightly cites French 
court decisions which support that view, including a judgment of this chamber of 
10 May 2016.  
14 Nevertheless, the appellant company’s argument that infringement is not by its 
nature a tort but could also result from non-performance of a contract is not 
irrelevant. 
It is true that infringement is defined in its broadest sense as a breach of an 
intellectual property right and, in the particular case of Article L.335-3, as the 
breach of any of the rights of an author of software [as defined in Article L.122-
6]. 
Neither of those provisions or any other French provision relating to infringement 
expressly provides that this applies only where the parties are not bound by a 
contract. 
Though it is possible to present them as exceptions to the principle of non-
aggregation, the following provisions provide examples of situations in which an 
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infringement action may be brought in connection with patents and trademarks 
against a licensee who contravenes the restrictions in his agreement: 
Article L.613-8, third paragraph, of the Intellectual Property Code 
The rights conferred by the patent application or the patent may be invoked 
against a licensee who contravenes any restriction in his licence. 
Article L.714-1 of the Intellectual Property Code 
The rights conferred by an application for registration of a trade mark or by 
a trade mark may be invoked against a licensee who contravenes any of the 
restrictions in his licence with regard to its duration, the form covered by the 
registration in which the trade mark may be used, the scope of the goods or 
services for which the licence is granted, the territory in which the trade 
mark may be affixed, or the quality of the goods manufactured or of the 
services provided by the licensee. 
In the present case, Articles L.122-6 and L.122-6-1 of the Intellectual Property 
Code, although they provide, inter alia, that the particular arrangements for the 
modification of software may be determined by contract, by no means preclude an 
infringement action in those cases. The same is true of Articles 4 and 5 of 
Directive 2009/24/EC, which the former transpose. 
Finally, it is true that Article 2, ‘scope’, of Directive [2004/48/EC] of 29 April 
2004 on the enforcement of intellectual property rights provides in general that the 
measures, procedures and remedies are to apply ... to any infringement of 
intellectual property rights, without drawing any distinction on the basis of 
whether or not that infringement results from non-performance of a contract. 
In those circumstances, the Court considers that a question, in the wording 
proposed, must be referred to the Court of Justice of the European Union for a 
preliminary ruling. 
Proceedings before the Court are stayed pending the decision of the Court of 
Justice;  
FOR THESE REASONS 
15 The Court, by an interim judgment inter partes, 
Refers the following question to the Court of Justice [of the European Union] for a 
preliminary ruling: 
Does a software licensee’s non-compliance with the terms of a software 
licence agreement (by expiry of a trial period, by exceeding the number of 
authorised users or some other limit, such as the number of processors which 
may be used to execute the software instructions, or by modifying the source 
IT DEVELOPMENT 
 
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code of the software where the licence reserves that right to the initial 
rightholder) constitute: 
- an infringement (for the purposes of Directive 2004/48 of 29 April 
2004) of a right of the author of the software which is reserved by 
Article 4 of Directive 2009/24/EC of 23 April 2009 on the legal 
protection of computer programs 
- or may it comply with a separate system of legal rules, such as the 
system of rules on contractual liability under ordinary law? 
Stays the proceedings [procedural reference omitted]    
      .