HT-2021-000363 - [2025] EWHC 532 (TCC)

Clause 4.1.3 of the ICA imposes express restrictions on use of the ICA Programs by Winsopia:

“The Customer agrees not to:

a.

reverse assemble, reverse compile, otherwise translate, or reverse engineer the ICA Program unless expressly permitted by applicable law without the possibility of contractual waiver; or

b.

sublicence, assign, rent, or lease the ICA Program or transfer it outside the Customer’s Enterprise.”

Clause 4.1.1(d) of the ICA limits authorised use of the ICA Programs:

“Under each licence, IBM authorises the Customer to:

…

d.

use any portion of the ICA Program IBM provides i) in source form, or ii) marks restricted (for example “Restricted materials of IBM”) only to: (1) resolve problems related to the use of the ICA Program, and (2) modify the ICA Program so that it will work together with other projects.”

Under clause 4.1.3(a), Winsopia was prohibited from reverse assembly, reverse compilation, other translation or reverse engineering of any ICA Program. These are not defined terms in the ICA. The experts have not identified any standard definition of them in the computer science community. They do not agree the precise definitions of these terms for the purpose of their application to the allegations of breach in this case and their differences are examined in the context of the relevant allegations. At a high level of generality, there appears to be agreement between the experts that reverse assembly can be described as the act of using a tool to rebuild assembly code from binary object code; decompiling can be described as the act of using a tool to recreate high-level language source code from a program’s binary object code; translation changes the language or form of the code whilst retaining its sense; and reverse engineering can be described as the testing or analysis of the internal structures or workings of an application to ascertain how it has been built and/or how it is executed. It should be stressed that each allegation of breach must be analysed in turn to determine whether or not the relevant activity amounted to any of the prohibited acts.

Under clause 4.1.3(b), Winsopia was prohibited from transferring ICA Programs outside its Enterprise. In this case, the Enterprise is the legal entity that is Winsopia. This provision would be engaged whenever Winsopia transferred an ICA Program, or component thereof, to a third party.

Under clause 4.1.1(d), Winsopia could only use the source code of programs supplied in this form for certain narrow purposes; in particular, Winsopia was not permitted to facilitate use of this source code by third parties.

The above restrictions on use of the ICA Programs are express and clear. However, it is common ground that they must be read subject to the Software Directive and CDPA, to which I now turn.