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Ius usus inocui (innocuous use)
of a computer program

Fernando Brandolini

Our case of "innocuous use" of software

At YUNIKALAW we have had the opportunity to successfully resolve a conflict that posed a certain complexity, especially in the area of software, in which the so-called “innocuous use” of this type of intellectual creations was being discussed.

We refer to the case in which an Architecture Firm asked us for legal advice and defense in relation to the complaint received from the holder of the exploitation rights of a computer program. Our client had used a software without having obtained the prior and mandatory authorization, so that the holder of the rights claimed that its rights had been infringed and, therefore, in addition to having to cease immediately in its use, our client had to compensate them for the damages caused.

What the current Spanish regulation - Royal Decree 1/1996 - says

In relation to this issue, the current Spanish legal regulation [Law approved by Royal Decree 1/1996] establishes that anyone interested in using a computer program must contact its author -or the person to whom he/she has assigned his/her exploitation rights- to obtain the corresponding authorization. Failure to do so could be considered an infringement of copyright.

However, these rights are not absolute, but have certain legal limits. With respect to computer programs, the Law establishes its own legal regime in which these limits are more restricted than for the rest of intellectual works. In fact, to use a computer program without the corresponding authorization, it is not enough to reproduce it [understood as the action of downloading, executing, transmitting or storing] on a temporary basis or in a private, academic and/or scientific environment, without commercial or lucrative purposes and on an individual basis, as is the case with other intellectual creations. In the case of computer programs, it is also required that the use made is of the copy acquired directly from its owner.

However, Spanish jurisprudential doctrine has established that the protection granted by copyright -including the aforementioned legal limits- cannot and should not authorize abusive claims. Thus, when analyzing the use made and not authorized, special consideration must be given to the impact or incidence it has had on the economic sphere of the holder of the rights deriving therefrom. This is what is known as “ius usus inocui“; i.e. “right to the harmless use” of another’s right. 

This criterion is expressed, among others, in the Rulings of the Spanish Supreme Court of 29/04/2009, 14/03/2003 and 20/03/1989; and, in the field of copyright, in the Spanish Supreme Court’s Ruling of 03/04/2012. In the latter, the Supreme Court indicated that the doctrine of the right to innocuous use of another’s right finds its manifestation in one of the provisions contained in the Spanish Law on Intellectual Property; in particular, in Art. 40.bis, which states that “the articles of this chapter [limits to copyrights] may not be interpreted in such a way as to allow their application in a manner that would cause unjustified prejudice to the legitimate interests of the author or would be detrimental to the normal exploitation of the works to which they refer”.

The Case Law

Thus, in the event of litigation, the Court analyzing the rightsholder claims must verify whether the unauthorized reproduction has caused any prejudice to the “legitimate interests” of the owner – however remote or indirect – or whether it has even threatened the “normal” exploitation of the work whose protection is claimed; or whether, on the contrary, such reproduction even favors those same interests and a “normal” exploitation, turning those claims into “abusive” or contrary to good faith.

Also applicable to the specific case, sensu contrario, was the Ruling issued on 06/06/2016 by the Commercial Court 2 of Bilbao, concerning a case in which the defendant had downloaded a computer program without authorization from the owner of the same during the period in which it carried out a training course on the use of the aforementioned computer tool. In this case, the defendant company was convicted for infringement, since – in addition to having used the computer program without having obtained the corresponding authorization – this use had had an impact on the economic sphere of the plaintiff company, since not one single download was made, but up to eight, on different computers. In addition, the accesses had been “continuous, reiterated and expansive in time”, without these coinciding temporally with the hours of use with the calendar of the course carried out. Thus, the Court considered that the “expansive use” given to this program revealed an intention of use whose transcendence had an importance that exceeded the hypothesis of being intended for a training course.

In this state of affairs, and taking into consideration the information provided by our client -(i) that the actions consisting of downloading and executing the computer program took place in the context of a training course on the use of this computer tool, in order to be instructed during the course; (ii) that the program was not used again; (iii) that our client renewed all the computer equipment of its employees even before receiving the injunction; not for that reason, but to improve its performance; and (iv) that the company did not obtain any economic benefit, since it did not provide any service in which the software could have been used, so that the holder of the rights of the program did not suffer any damage – we were able to confirm that this was one of the cases of the so-called “innocuous use” or harmless use.

Conclusion

Beyond the satisfactory conclusion of the case in favor of our client, it is not very adventurous to conclude that the use of a computer program such as the one presented here is an “innocuous use” of another’s right and, as such, should be allowed, not only because it does not infringe the normal exploitation of that Intellectual Property work but, on the contrary, because -depending on the circumstances of the case- it may even favor its exploitation since the holder of those rights finds a way to promote the sale of the same; that is to say, that the user ends up acquiring a license for its use.

About the author

With experience in the practice of law since 1998, I have been advising and defending the rights and interests of clients in Intellectual Property, Advertising and Unfair Competition/Passing-off matters, especially in the pharmaceutical, cosmetics, agri-food and intellectual creations sectors, since I specialised two years later. In particular, in matters of trademarks, patents, copyright and other forms of intellectual creation, as well as in matters of new technologies, computer programs and the implications that these types of matters have in other areas of law, such as contract law and company law.

My professional career stands out for the quality and method I apply in the provision of my services, which ensures the high level of success I obtain, both in commercial and criminal matters and in contentious-administrative matters; and not only in the pre-trial and administrative phase but also betore the Courts, both Spanish and of the European Union (the General Court and the Court of Justice of the European Union).

At the same time as practising as a lawyer, I have accumulated teaching and academic experience in different higher education institutions. Among others, at the Faculty of Law of the UCM Universidad Complutense de Madrid (Civil Law), at the EOI Escuela de Organización Industrial (Master in Intellectual Property), at the ISDE Instituto Superior de Derecho y Economía (Master in International Law and Master in Intellectual Property), at the Madrid Bar Association (Courses on legal actions in Intellectual Property matters) and at the Colegio de Ingenieros de Caminos, Canales y Puertos de Madrid (Course on Arbitration).

Speaks Spanish, English and Italian

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