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

Fecha: 10-Mar-2025

Section IV - Construction of the ICA

Section IV - Construction of the ICA

147.

IBM’s case on the construction of the ICA is that:

the ICA provides a licence of limited scope, permitting Winsopia to use the licensed ICA Programs solely for its internal purposes; this does not extend to the provision of services using its mainframe and ICA Programs to LzLabs and the other defendants;

ii)

the definition of ICA Programs is broad, comprising “machine readable instructions and data” as well as “components”;

iii)

Winsopia’s use of an ICA Program obtained from a third party is subject to the restrictions in the ICA because it remains an IBM Program and, once licensed under the ICA, is an ICA Program;

iv)

under clause 4.1.3(a), Winsopia was prohibited from reverse engineering ICA Programs;

under clause 4.1.3(b), Winsopia was prohibited from transferring ICA Programs out of its Enterprise;

vi)

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 copy and transfer copies of this source code to other parties;

vii)

the Licensed Program Specifications relied on by the defendants do not operate to widen the scope of Winsopia’s licence in light of clause 4.1.2(a); any right to distribute copies of CSECTs is limited to the distribution of copies of such CSECTs to other licensed users of ICA Programs and not LzLabs or the other defendants.

148.

The defendants’ case is that the alleged acts of reverse engineering were not prohibited by the effective terms of the ICA:

the contractual restrictions apply only to the twelve ICA Programs identified in the Agreement for Third Party Program Access (as updated) together with the additional three ICA Programs subsequently licensed; in particular, this does not include code fragments, sub-routines or individual programs as they do not constitute the product licensed;

ii)

the contractual restrictions relied on do not apply to customer applications;

iii)

the operative restrictions must be construed against the relevant factual matrix, including the practices of independent software vendors (“ISVs”), sharing and distribution of customer applications and modules, and use of debugging tools and techniques;

iv)

on a true construction of the ICA, Winsopia was entitled to use the licensed software to perform the activities that are said by IBM to amount to breaches of contract;

further or alternatively, Winsopia was entitled to carry out the alleged acts of reverse engineering pursuant to rights guaranteed to licensees of computer programs by Articles 5(1), 5(3) and/or 6 of the Software Directive and the CDPA;

vi)

the contractual restrictions are ineffective to the extent that they are contrary to the rights conferred by the Software Directive and the CDPA.