An offence is an offence, violation or unauthorized act. Offences occur in different situations. Damage to the law is an offence. A violation of the law is also an offence. In a commercial contract, there is a violation if one of the contractors violates the terms of the contract. In the areas of intellectual property, a violation relates to the unauthorized use of a copyrighted or patented invention. (see also: Trademark infringement, patent infringement and copyright infringement.) In this case, it is a matter of “compensating, defending and keeping unscathed.” However, the funder should try to limit the obligation to “compensation.” Indeed, if the undertaking involves the duty of defence, the compensation officer is also responsible for the cost of defending the allegations of infringement and not just the proven cases of infringement. With regard to the “keep unscathed” language, there are two schools of thought, which means that, as explained above, there are significant differences between the breach of the license agreement, the violation of the IP and the violation of the license. If this issue arises, counsel must carefully consider the options on which claims or defences must be relied upon. Unsurprisingly, the ECJ then decided that the violation of such a clause in a software licensing agreement does fall within the concept of “violation of intellectual property rights” within the meaning of the enforcement directive and that, therefore, the rights holder must benefit from the guarantees provided by this directive, regardless of the applicable (national) liability regime.
The ECJ has also expressly stated that the determination of the liability regime for infringement is within the competence of the Member States, which should in no way constitute an obstacle to the effective protection imposed by the enforcement directive. The original application for a preliminary decision asked the Court of Justice to rule on whether, in the event of a breach of licence conditions, rights holders could assert contractual rights against licensees or whether they could also opt for a non-contractual right. However, the ECJ has reformulated and limited the reference as follows: “Is the violation of a clause in a software licensing agreement relating to intellectual property rights akin to the concept of “violation of intellectual property rights” within the meaning of the implementing directive?” The threshold is whether the licence is exclusive or non-exclusive. The courts have held that if an exclusive licence has been granted to the licensee, the unlicensed use of the IP is only an offence. The underlying rationale arises from the argument that an exclusive license transfers ownership of IP rights. The licensee is not in a position to infringe an interest in ip that he owns. Therefore, any use of the investigation period beyond the scope of the licence agreement would lead to an infringement and not a violation. Conversely, any use of the IP address beyond the scope of the licensing agreement could lead to the licensee being held liable for a violation if the licensee has received only a non-exclusive licence. As a result, the IP Enforcement Directive is an important aid for rights holders.
Nevertheless, it appears that a serious obstacle to the application of the directive has arisen in “non-cumulative” jurisdictions, i.e. in jurisdictions that allow simultaneous liability in the event of an unlawful act and in the treaty (“principle of non-cumulative”).