May the license holder outsource software maintenance to a third party?

Yes, in principle, a licensee may outsource software maintenance to a third party, but only within the limits of Section 45j of the Copyright Act. Whoever has lawfully acquired the software may perform (or have performed) the actions necessary to use the software for its intended purpose, such as correcting errors. The rights holder may not even exclude this right by agreement for such error correction. More extensive maintenance, such as adding new functionalities, falls outside this scope and may constitute copyright infringement.

Outsourcing software maintenance: what is and isn't allowed?

For entrepreneurs, it comes down to a simple distinction. You may generally outsource maintenance that keeps the software running without separate permission. However, maintenance that expands or further develops the software generally requires permission from the rights holder.

• Usually permitted without additional permission: fix bugs, repair omissions, and keep the program running, as long as you are the lawful acquirer and the maintenance is necessary for the intended use.
• Permission is usually required for: adding new features, adapting the software to changed business processes, or further developing the software.

Below, we explain where this limit comes from, what the judge has said about it, and how you, as an entrepreneur, can prevent unintentional infringement.

Why is software maintenance sensitive to copyright?

Software is protected by copyright. The underlying source code is a protected work, and modifying it is a form of reproduction. Therefore, the general rule is: software may not be modified without the permission of the copyright holder. This applies not only to the licensee themselves but also to a third party performing maintenance on their behalf.

This directly impacts practice. Software maintenance almost always requires interventions in the software: fixing bugs, correcting errors, or modifying code to ensure the program continues to function. Each of these actions is, in principle, protected by copyright. Without a legal exception or contractual permission, a licensee would therefore find themselves in a difficult position: they are using the program legally but are not allowed to maintain it.

The exception of Article 45j of the Copyright Act

To prevent this stalemate, the Copyright Act contains an exception. Pursuant to Section 45j of the Copyright Act, the reproduction of software is not considered an infringement when this is necessary for the intended use of that work by the lawful acquirer. Important: according to the law, actions necessary to correct errors may not be prohibited, even by agreement.

From this provision, three conditions can be derived that must be met simultaneously:

• Lawful acquirer: the person performing (or having performed) the maintenance must have lawfully acquired the software, for example via a license agreement.
• Necessity: the maintenance work must be genuinely necessary, not merely desirable or convenient.
• Intended use: that necessity must relate to the use for which the software is intended.

If the maintenance meets all three conditions, the lawful acquirer may in principle also outsource it to a third party. That third party does not then commit an infringement, provided it remains within those same limits.

The Rainbow case: where did the dispute lie?

The extent of this exception was addressed in a case before the District Court of Central Netherlands (judgment of 10 April 2019, ECLI:NL:RBMNE:2019:1478). The company Rainbow had acquired the copyrights to a software package following the bankruptcy of a previous supplier. This concerned logistics software that allowed users to, among other things, create orders, plan routes, and issue invoices.

Rainbow discovered that other companies were offering maintenance contracts for that software and ordered them to stop doing so, because, according to it, this infringed its newly acquired copyright. The party being sued invoked the exception of Section 45j of the Copyright Act: lawful acquirers (licensees) would indeed be permitted to outsource the maintenance. It was the court's task to apply the three conditions to this situation.

What did the Central Netherlands District Court decide?

The court could not yet definitively conclude the case and ruled in an interlocutory judgment that additional investigation and a new hearing were necessary. Nevertheless, important conclusions can be drawn from the ruling regarding the three conditions.

Is the user a lawful acquirer?

The court ruled that the user who had the maintenance performed is indeed a lawful acquirer . After all, an agreement had been concluded with the copyright holder. That acquirer may therefore outsource the maintenance to a third party, provided that the other conditions are met and the right has not been validly excluded.

What is the intended use?

Whether the requirement of intended use has been met calls for an assessment in concreto. And that was precisely where the problem lay: neither party had clarified exactly what the intended use entailed. The court was provided with, among other things, an article and a Wikipedia page, but these did not unequivocally reveal what the parties had in mind.

This touches upon a fundamental practical problem: the intended use is rarely documented in writing, while software is often deployed for diverse purposes that were not all foreseeable at the time of purchase. Does the court then follow the view of the licensor, the licensee, or a standard such as reasonably expected use? That knot still had to be untied in these proceedings.

Is the maintenance necessary?

The court did provide guidance regarding necessity. In line with the legislative history, it must concern actions that are absolutely required to use the program in accordance with the intended purpose. In other words: without the maintenance, the intended use would no longer be possible (properly).

The specific activities here consisted of repairing omissions and ensuring that users could continue to use the program. Significantly, the list of activities did not include the addition of new functionalities. This is relevant, because adding new functionality generally does not fall under the necessary actions of Article 45j and can therefore constitute an infringement.

Bug fixes or new functionality: an important distinction

The boundary between permitted and prohibited maintenance runs roughly along this distinction:

• Error correction and maintenance (fixing bugs, repairing omissions, keeping the program operational) falls more within the exception of Article 45j. Moreover, regarding the correction of errors, this right cannot be excluded by agreement.
• Expansion and improvement (new functions, adjustments to business processes, further development) go beyond strictly necessary use. As a rule, such interventions require separate permission from the rights holder.

For entrepreneurs, this means that the type of maintenance determines whether outsourcing without permission is justifiable. Mere preservation carries more weight than an assignment that effectively amounts to further development of the software. Are you unsure which category your maintenance falls into? Then it is advisable to have the work legally reviewed beforehand.

What does this mean for you as an entrepreneur?

The practical lesson from this case is that outsourcing maintenance is permitted, but the scope of the work and the written agreements are decisive. If in doubt, ask yourself these questions:

1. Am I using the software lawfully , for example pursuant to a license agreement?
2. Is it about bug fixes and maintenance, or about new functionality and further development?
3. Does my contract state anything about maintenance, and what limitations are included therein?
4. Is it clear what the intended use of the software is?

The more of these points you clarify in advance, the smaller the chance of a conflict with the supplier or rights holder.

Practical tips: prevent a conflict over software maintenance

Whether you are a licensee, licensor, or maintenance party: good agreements prevent litigation. Consider the following.

• Licensee: Before outsourcing maintenance, check whether your software license agreement addresses maintenance and whether the intended work falls under bug fixes or further development.
• Licensor/right holder: specify in the agreement as concretely as possible what the intended use is and which forms of maintenance are permitted. Take into account that error correction cannot simply be excluded contractually.
• Maintenance Party: clearly describe the work you perform and how it relates to the intended use. Have the Client declare that he has the rights to have the maintenance carried out.

A clear contract would likely have prevented much discussion in the Rainbow case. If it had been stipulated what the parties understood by the intended use, the judge could not have ignored it.

Frequently asked questions about outsourcing software maintenance

As a license holder, am I allowed to have my software maintained by another company?

In principle yes, provided you have lawfully acquired the software and the maintenance is necessary for the intended use, such as fixing errors. This follows from Article 45j of the Copyright Act. If it concerns more extensive modifications or new functionalities, you generally need permission from the rights holder.

Can the software vendor contractually prohibit outsourced maintenance?

Not unlimited. Actions necessary to correct errors in the software cannot be prohibited by agreement under the law. For maintenance that goes beyond strictly necessary error correction, there is more scope to agree on limitations.

Does the third party performing the maintenance infringe copyright?

Not if that party remains within the limits of Article 45j. A lawful acquirer may outsource the maintenance, and the engaged third party does not commit an infringement as long as the work is necessary for the intended use. If the maintenance goes beyond fault repair and preservation, then there may indeed be an infringement.

What does lawful acquirer mean?

A lawful acquirer is the person who has obtained the use of the software in a legal manner, for example pursuant to a license agreement with the copyright holder. Only that person or organization can invoke the exception of Article 45j of the Copyright Act.

What is meant by the intended use of software?

The intended use is the purpose for which the software is intended and for which the licensee uses it. Because this is rarely explicitly defined, disputes quickly arise regarding this. Concretely describing the intended use in the agreement prevents much ambiguity.

Does adding new functionalities fall under Article 45j of the Copyright Act?

Generally not. Article 45j applies to actions necessary for the intended use, such as bug correction and maintenance. Adding new functionalities generally goes beyond this and therefore requires separate permission from the rights holder.

Assistance with software contracts and copyright

Do you want to outsource maintenance, contact a supplier, or ensure you remain within the boundaries of copyright? Our legal experts will work with you and draft the accompanying documents. This helps you avoid unnecessary legal proceedings.

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• Want to discuss your situation immediately? Schedule an intake with one of our legal experts.