Counterfeit or contractual liability? That is the question!
The Paris Court of Appeal ruled on March 19, 2021 in favor of contractual liability and set a guideline for the future.
It takes into account the event giving rise to the dispute:
If the chargeable event results from an act of infringement, the holder of the right must then invoke it;
If the operative event results from a contractual breach, he/she must then invoke the basis of contractual liability in application of the principle of non-accumulation of responsibilities.
What were the facts? The company Entr’Ouvert owns the intellectual property rights to the LASSO software, which it grants under a free license. In 2005, Orange won a call for tenders based on an interfacing solution for its own IDMP platform and Entr’Ouvert’s LASSO software library in its free version.
The company Entr’Ouvert considering that this use does not comply with the terms of the free license, it sued Orange for copyright infringement on April 29, 2011 before the First Instance Court of Paris.
In its judgment dated June 21, 2019 the court declared the infringement action inadmissible. Why? The allegations against Orange result from the non-performance of contractual obligations of the license.
The Paris Court of Appeal then confirms that this is not the position adopted by the Court of Justice of the European Union in its judgment of December 18, 2019: to the interlocutory question concerning the interpretation and the application of the non-cumulative liability applied to software, the CJEU ruled in favor of the infringement action. This seemed to be the most appropriate legal ground for infringement of intellectual property rights, including breach of a license agreement.