The document discusses legal issues for third-party software maintenance providers. It covers that licenses and copyright can be breached through non-payment of fees or unauthorized copying. The Computer Software Directive restricts certain acts without permission. Courts will interpret license terms based on common understanding and aim of agreement. A case found that increasing access through new methods still required being a named user. Third parties can perform maintenance as agents if the licensee is allowed the acts. Providers must act within license restrictions such as not copying software without permission. Access to fixes may depend on the license or maintenance agreement. Competition issues can arise if access is denied to create an unfair advantage.

1. The ITAM Review UK Conference 2017
IP and Legal Issues for 3P
Maintenance and Support
Software Providers
Guy
Tri(on

2. Licensor
TPM
Customer

3. The ITAM Review UK Conference 2017
Licences and Copyright
Acts
fall
within
licence
Breach
of
licence
but
not
IP
infringement
e.g.
non-­‐payment
of
licence
fees
Copyright
infringement
e.g.
unauthorised
number
of
copies

4. The ITAM Review UK Conference 2017
Computer Software Directive
Restricted acts
• Permanent or temporary reproduction of a computer program
by any means and in any form in part or in whole
• Alteration or adaptation of a computer program
• Distribution to the public including rental of original or copies of
program
Art.4 Dir. 2009/24/EC

5. The ITAM Review UK Conference 2017
Normal enjoyment
• Licensee cannot be prevented from carrying
out acts 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”
• Art.5.1 Dir.2009/24/EC
• SAS v WPL (C-406/10, European Court of
Justice)

6. The ITAM Review UK Conference 2017
Construction of licences
“Canons” of construction
• Language is first port of call.
• Courts will interpret licence terms by reference to
• What the reasonable person would understand terms to
mean
• Factual background and aims of parties are relevant
• Subjective intentions of parties are not relevant
• Courts avoid an over literal analysis of wording but if
language is clear, it will not “rewrite” contract even if the
result seems unfair and to flout common sense
• Courts will interpret contracts to cover new technology not
known at time of execution of licence (Kirin-Amgen [2005]
RPC 46, House of Lords – “carriage” = “motor car”)

7. The ITAM Review UK Conference 2017
SAP v Diageo [2017] EWHC 189
• Software licence for mySAP software
• Categories of “named users”. Fee based on number
of named users
• Diageo offered access for customers and
distributors to SAP via third party software (Connect
and Gen2 – Salesforce)
• Idea was to allow customers to access mySAP
rather than going through Diageo call centre
employees
• So no increase in amount of access but substantial
increase in number of users

8. The ITAM Review UK Conference 2017
SAP v Diageo (continued)
Court agreed with SAP
• Connect and Gen2 “used” and “accessed” mySAP software
• Connect and Gen2 software triggered a connection with SAP
ERP via SAP PI engine
• Irrelevant that customers using Connect were licensed to
access via call centre employees as latter were Named Users
but customers were not
• Sales representatives who connected via Gen2 were not
Named Users

9. The ITAM Review UK Conference 2017
SAP v Diageo - Implications
• Irrelevant that level of use did not increase
• Wording of licence was clear – model was named users not
level of use
• Access via Internet of Things will increase number of persons
accessing software and devices accessing software but not
necessarily level of use
• Licensees should focus on ensuring that licence fees are
proportionate to
• Level of use
• Device-neutral
• Caters for new types of access i.e. IoT and remote access

10. The ITAM Review UK Conference 2017
TPMs
• Third
party
maintenance
is
lawful
if
done
in
the
right
way
• Licensees
have
the
right
to
do
their
own
maintenance
on
licensed
soCware
eg
• Installing
fixes
and
upgrades
• Establishing
workarounds
• Re-­‐installing
soCware
• Even
though
such
involves
carrying
out
restricted
acts
(eg
temporary
reproducJon
in
RAM
of
soCware)
• If
the
licensee
can
do
it,
then
generally
TPMs
can
do
on
their
customer’s
behalf
as
agent
for
licensee
• General
principle
of
agency
law

11. The ITAM Review UK Conference 2017
Rimini Street: How Not to Do It
• Rimini
Street
downloaded
copies
of
Oracle
Database
for
Windows
onto
its
servers
for
tesJng
and
development
environments
• Various
licensee’s
licences
did
not
allow
this
• Licence
allowed
right
for
TPMs
to
“access
to
and
use”
soCware
but
not
right
to
reproduce
or
copy
soCware
onto
Rimini
Street
servers
• But
Oracle-­‐Novell
licence
did
allow
Novell
to
permit
Rimini
Street
to
install
the
licensed
soCware
for
archival,
back
up
and
DR
purposes
• It
all
depends
on
what
licence
says

12. The ITAM Review UK Conference 2017
TPM vs OEM support & maintenance

13. The ITAM Review UK Conference 2017
TPM vs OEM support & maintenance

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Access to fixes, patches and upgrades
• Workarounds
(funcJonal
upgrades)✔
• Security
patches/fixes
• EnJtlement
under
licence
or
Art.5.1
SoCware
DirecJve
?
• Patch/fix
downloaded
during
S&M
agreement
with
licensor
✔
• Amending
source
code
✖

15. The ITAM Review UK Conference 2017
CompeJJon
Issues
• Licensor
denies
access
to
fixes
and
upgrades
to
licensees
with
TPM
contracts
• AnJ-­‐compeJJve
conduct
if
S&M
market
is
separate
market
from
primary
soCware
market
• IBM/Maintenance
Services
(COMP/C/39.692)
• IBM
has
dominant
posiJon
for
Machine
Code
Updates
for
mainframes
• S&M
market
separate
from
primary
mainframe
market
(CEAHR
v
Commission)
• IBM
entered
into
commitments
to
provide
PTFs
on
FRAND
terms
(Fair,
Reasonable
and
Non-­‐Discriminatory)
• How
to
complain?
• European
Commission
• NaJonal
CompeJJon
AuthoriJes
(CMA
in
UK)

16. The ITAM Review UK Conference 2017
Questions?
The ITAM Review UK Conference 2016

17. The ITAM Review UK Conference 2017
Thank You