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

Fecha: 10-Mar-2025

The ICA

The ICA

64.

Intellectual property rights in the IBM mainframe software products are owned by IBM Corp and licensed to IBM pursuant to a Principal Licence Agreement dated 1 April 1987 (as subsequently amended).

65.

On 15 August 2013, Winsopia entered into the ICA (and associated agreements) with IBM. Pursuant to the ICA, the following software was licensed by IBM subject to the terms and conditions of the ICA:

DB2 10 for z/OS, a relational database management system;

ii)

IMS V12 Database Manager, a hierarchical database management system;

iii)

IMS V12 Transaction Manager, a message-based transaction processor;

iv)

IBM COBOL V4, a development environment for COBOL high level programming language;

IBM Enterprise PL/I for z/OS, a development environment for PL/I, a high level programming language;

vi)

CICS Transaction Server for z/OS, a mixed-language application server which can provide services such as security and exchanging data between new and existing applications;

vii)

z/OS V1 Base, providing basic operating system functionality;

viii)

z/OS V1 DFSMS dss, a direct access storage device data and space management tool;

ix)

z/OS V1 DFSORT, a program used to sort, merge, and copy information;

z/OS V1 HLASM Toolkit, facilitating use of the IBM assembler;

xi)

z/OS V1 SDSF (System Display and Search Facility), a utility to monitor, control, and view the output of jobs in the system; and

xii)

z/OS V1 Security Server (Resource Access Control Facility), a mainframe security manager.

66.

Subsequently, Winsopia licensed three further programs from IBM:

MQ V8, a message-oriented middleware product used to send messages between applications;

ii)

IMS ETO (Extended Terminal Option) V12;

iii)

RMF (Resource Management Facility) V2, a utility for measuring and reporting on performance and usage.

67.

The recital to the ICA states:

“This IBM Customer Agreement (called the “Agreement”) governs transactions by which the Customer purchases Machines, licences ICA Programs, obtains Program Licences and acquires Services (including, without limitation, customised development and support, business consulting, and maintenance Services) from IBM United Kingdom Limited (“IBM”).”

68.

The scope of the licence is set out in clause 4.1:

“4.1
When IBM accepts the Customer’s order, IBM grants the Customer a non-exclusive licence to use the ICA Programs only within the Customer’s Enterprise in the United Kingdom. ICA Programs are owned by International Business Machines Corporation, one of its subsidiaries, or a third party and are copyrighted and licenced (not sold).
4.1.1
Authorised Use
Under each licence, IBM authorises the Customer to:
a.
use the ICA Program’s machine-readable portion on only the Designated Machine. If the Designated Machine is inoperable, the Customer may use another machine temporarily. If the Designated Machine cannot assemble or compile the ICA Program, the Customer may assemble or compile the ICA Program on another machine. If the Customer changes a Designated Machine previously identified to IBM, the Customer agrees to notify IBM of the change and its effective date;
b.
use the ICA Program to the extent of authorisations the Customer has obtained;
c.
make and install copies of the ICA Program, to support the level of use authorised, provided the Customer reproduces the copyright notices and any other legends of ownership on each copy or partial copy; and
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.
4.1.2
The Customer’s Additional Obligations
For each ICA Program, the Customer agrees to:
a.
comply with any additional or different terms in its Licensed Program Specifications or an Attachment or Transaction Document;
b.
ensure that anyone who uses it (accessed either locally or remotely) does so only for the Customer’s authorised use and complies with IBM's terms regarding ICA Programs; and
c.
maintain a record of all copies and provided to IBM at its request.
4.1.3
Actions The Customer May Not Take
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.”

69.

Relevant definitions were set out in clause 1.3 of the ICA, including:

Designated Machine:

“either i) the machine on which the Customer will use an ICA Program for processing and which IBM requires the Customer to identify to IBM by type/model and serial number, or ii) any machine on which the Customer uses the ICA Program if IBM does not require the Customer to provide this identification.”

ii)

Enterprise:

“any legal entity (such as a corporation) and the subsidiaries it owns by more than 50 percent. The term “Enterprise” applies only to the portion of the Enterprise located in the United Kingdom.”

iii)

ICA Program:

“an IBM Program licensed under Part 4 of this Agreement.”

iv)

Machine Code:

“microcode, basic input/output system code (called “BIOS”), utility programs, device drivers, diagnostics, and any other code (all subject to any exclusions in the licence provided with it) delivered with an IBM Machine the purpose of enabling the Machine’s function as stated in its Specifications …”

Materials:

“literary works or other works of authorship (such as software programs and code, documentation, reports and similar works) that IBM may deliver to the Customer as part of a Service. The term “Materials” does not include Programs, Machine Code, or other items available under their own licence terms or agreements.”

vi)

Non-IBM Program:

“a Program licensed under a separate third party licence agreement.”

vii)

Other IBM Program:

“an IBM Program licensed under a separate IBM licence agreement (e.g., IBM International Program Licence Agreement).”

viii)

Product:

“a Machine or a Program”

ix)

Program:

“the following, including the original and all whole or partial copies:
a.
machine readable instructions and data;
b.
components;
c.
audio-visual content (such as images, text, recordings, or pictures); and
d.
related licenced materials.
The term “Program” includes any ICA Program, Other IBM Program, or Non-IBM Program that IBM may provide to the customer. The term does not include Machine Code or Materials.”

Specifications:

“information specific to a Product … ICA Program Specifications are in a document entitled "Licensed Program Specifications".”

xi)

Specified Operating Environment:

“The machines and programs with which an ICA Program is designed to operate, as described in its Licensed Program Specifications.”

70.

Provisions regarding IBM’s right to conduct an audit are contained in clause 4.4:

“4.4.1
IBM’s right to verify the Customer's usage data and other information affecting the calculation of charges also includes the right to verify the Customer’s compliance with other terms of this Agreement (including applicable Attachments and Transaction Documents) relating to the Customer’s use of ICA Programs at all sites and for all environments in which the Customer installs or uses ICA Programs for any purpose. IBM may use an independent auditor to assist with such verification, provided IBM has a written confidentiality agreement in place with such auditor.
4.4.2
The Customer agrees to create, retain, and provide to IBM and its auditors written records, system tools outputs, and other system information sufficient to provide auditable verification that the Customer’s installation and use of ICA Programs complies with the Agreement terms, including IBM's applicable licensing and pricing terms. IBM will notify the Customer in writing if any such verification indicates that the Customer is not in compliance with Agreement terms. The rights and obligations in this section remain in effect during the period any ICA Programs are licenced to the Customer and for two years thereafter.”

71.

Clause 1.11.4 makes the following provision for dispute resolution:

“Each party will allow the other reasonable opportunity to comply before it claims that the other has not met its obligations under this Agreement. The parties will attempt in good faith to resolve all disputes, disagreements, or claims between the parties relating to this Agreement. Unless otherwise required by applicable law without the possibility of contractual waiver or limitation, i) neither party will bring a legal action, regardless of form, arising out of or related to this Agreement or any transaction under it more than two years after the cause of action arose; and ii) after such time limit, any legal action arising out of this Agreement or any transaction under it and all respective rights related to any such action lapse.”

72.

Clause 1.11.5 makes the following provision regarding confidential information:

“The exchange of any confidential information will be made under a separate, signed confidentiality agreement. However, to the extent confidential information is exchanged in connection with any Product or Service under this Agreement, the applicable confidentiality agreement is incorporated into, and subject to, this Agreement.”

73.

Clause 1.12 contains the following provisions regarding termination:

“1.12.1
Either party may terminate this Agreement on written notice to the other following the expiration or termination of the terminating party’s obligations under this Agreement, including any applicable Attachment or Transaction Document.
1.12.2
Either party may terminate this Agreement if the other does not comply with any of its terms, provided the one who is not complying is given written notice and reasonable time to comply. Licence termination and termination of a Services transaction are described in Parts 4 and 5, respectively.
1.12.3
Any terms of this Agreement that by their nature extend beyond the Agreement termination remain in effect until fulfilled, and apply to both parties’ respective successors and assignees.”

74.

Licence Termination is dealt with in clause 4.5:

“4.5.1
The Customer may terminate the licence for an ICA Program at any time on one month’s written notice to IBM.
…
4.5.3
IBM may terminate the Customer’s licence if the Customer fails to comply with the licence terms. If IBM does so, the Customer's authorisation to use the ICA Program is also terminated.”

75.

The ICA contains an entire agreement provision at clause 1.4.5:

“… This Agreement, including its applicable Attachments and Transaction Documents, is the complete agreement regarding transactions by which the Customer purchases Machines, licences ICA Programs, obtains Program licences, and acquires Services from IBM, and replaces any prior oral or written communications between the Customer and IBM. In entering into this Agreement, including each Attachment and Transaction Document, neither party is relying on any representation that is not specified in this Agreement … Additional or different terms in any written communication from the Customer (such as a purchase order) are void.”