2019/07/17 – 5 Tdo 513/2019 (summary)

Resolution of the Supreme Court of 17 July 2019, Ref. No. 5 Tdo 513/2109
(Breach of copyright law, lawful acquisition of a copy of a work protected by copyright)

Mr. T. N., the accused person in the present case, committed several acts qualified as offences in accordance with relevant provisions of Law No. 40/2009 Coll., Criminal Code. Firstly, in the period between 2 February and 5 April 2013 the accused broke the password of the administration access to a server of the injured party, Mr. P. Š., who pursued the business in the field of telecommunication services. The accused thus acquired unauthorised access to a computer system of the injured party with the intention to gain information about the business activity of its competitor and, consequently, to use it in the same field of business. After an unauthorised acquisition of a password, the accused also entered into the mailbox used by the injured party and downloaded datasets to his own personal computer. Secondly, the accused was using computer programmes having the protection as a copyright work. In particular, the accused was using various versions of the WORK programme to which he made modifications and adapted it without the consent of a copyright holder which was the injured party in this case. Consequently, the District Court in Karlovy Vary found the accused guilty of continuing offence of unauthorised access to computer system and carrier of information in accordance with Section 230 para 1 (a) of the Criminal Code and of the offence of infringing the copyright, rights related to copyright and rights to database in accordance with Section 270 para 1 and 2 (a) of the Criminal Code. The accused was sentenced to a cumulative punishment of 1 year of imprisonment with probation. In the appeal, the Regional Court in Plzeň confirmed the judgement modifying only a legal qualification of the offence. The accused then filed an extraordinary appeal before the Supreme Court.

The Supreme Court refused most of the appellant’s allegations. It accepted, however, his complaint against the conclusion of courts of lower instance which stated that the programme WORK was used unlawfully and that the rights of the injured party protected by copyright were infringed. The Supreme Court agreed with the argument of the accused that while assessing whether there was a use of software product with the exhausted licence, the courts of lower instance based their assumptions only on the fact that the injured party, as an original issuer of the software, did not grant a consent to the accused to use the WORK programme. The appellant mainly reproached that the authorities completely ignored the question of a possibility of the lawful acquisition of the computer programme. He further stressed that the burden of proof was on the side of the investigative and prosecuting authorities and that he was not obliged to prove the lawful acquisition.

The Supreme Court accepted this complaint and referred to its previous case-law regarding the possibility of exhausting the authorship rights and the disposal with the copy of the computer programme protected by copyright. With regards to the lawfulness, it referred to the judgment of the Court of Justice of the European Union (“CJEU”) in case C-128/11 where the CJEU expressed essential difference between the right of the rightholder to reproduce the protected work and the right to its distribution. A decision to create a copy of a work is the exclusive right of a rightholder which in this case was the injured party. On the other hand, the right of distribution is exhausted by the rightholder by first putting into circulation of the software product on the EU market. In the present circumstances, the injured party has had the right to restrict its own customers to make copies of his products protected by copyright but it could not limit them in case that they decide to further dispose with the already bought software to another person under the condition that they will not use it anymore. Therefore, should the anonymous person, as stated by the accused, provided him the programme WORK together with the fact that this person no longer needs it and will not use it, the accused could not become an unlawful user of the copy of the programme.

The Supreme Court further agreed with the appellant that the burden of proof should be borne with the prosecuting and investigating authorities. It stressed that in order to fulfil the objective element of a crime it is necessary to assess, inter alia, the manner in which the programme work came to the disposal of the accused because only an unlawful acquisition of a work may constitute the criminal liability of an accused. The Supreme Court stated that even though the defence of the accused may appear to be hardly believable, it is necessary to respect the procedural rules of criminal law, including the presumption of innocence and in dubio pro reo principle.

According to the Supreme Court, irrespective of a contractual clause stipulating the prohibition of subsequent transfer of the copy of the computer programme, the exhaustion of the copyright of the original rightholder by the first sale prevents the rightholder from prohibiting the subsequent sale of the copy. Furthermore, the statement of the accused that he acquired the computer programme WORK by an unknown third party throwing a CD into his mail is not completely ruled out and it is necessary to carry out proper discovery. Even though the verification of the unlawfulness of acquisition by the accused can be very problematic, the principle in dubio pro reo must be followed. In the present state of discovery, the accused cannot be considered as an unlawful user of the computer programme since the accused could obtain such programme by other means and not only by concluding a licence agreement with the author of the work.

Thus, the Supreme Court concluded that the extraordinary appeal was justified and partly quashed the judgment of the appeal court as well as the court of first instance.