The Superior Court of Justice (STJ) has ruled that infringements related to software licensing agreements follow the general 10-year statute of limitations, overriding the 3-year period applicable to copyright.
By Victor Lima
In a recent ruling, the Third Panel of the Superior Court of Justice unanimously consolidated a relevant understanding for the technology ecosystem by defining that claims for damages arising from breach of a software licensing agreement are subject to the ten-year statute of limitations provided for in Article 205 of the Civil Code, and not to the three-year period applicable to extra-contractual liability. The decision was rendered in REsp No. 1,907,034/DF, in a case involving software counterfeiting recognized through an audit.
The court of origin had applied the three-year statute of limitations, arguing that it constituted a violation of copyright. However, the Superior Court of Justice (STJ) rejected this interpretation, recognizing that when the infringement stems from the breach of obligations assumed in a licensing agreement, the nature of the liability is primarily contractual, even if the object of the agreement is an asset protected by copyright.
In this context, the Court reaffirmed its jurisprudence to the effect that the three-year period provided for in Article 206, §3, V, of the Civil Code is restricted to cases of extra-contractual civil liability. In contractual relations, including those involving copyright, the general rule of a ten-year period prevails, unless there is a specific legal provision to the contrary.
As expressly stated in the judgment: “there is no reason to give different treatment to contractual liability for copyright infringement compared to other contractual relationships. In the absence of a special rule dealing with the statute of limitations for claims related to damages for breach of a software licensing agreement, the provisions of Article 205 of the Civil Code apply to contractual civil damage actions involving copyright.”
It is important to highlight that the irregular use of software, usually labeled as "piracy," can, depending on the specific case, be classified as either extra-contractual or contractual. The established jurisprudence opens the door to this discussion in the context of software audits, requiring careful analysis of the existence of contractual links, the nature of adhesion contracts for so-called off-the-shelf software, and the most appropriate legal framework for the strategy to be adopted.
*Victor Lima is a lawyer at Murta Goyannes Advogados, specializing in Intellectual Property and Anti-Piracy. He is the Leader of the Intellectual Property Committee of ABES (Brazilian Association of Software Companies).
Notice: The opinion presented in this article is the responsibility of its author and not of ABES - Brazilian Association of Software Companies
Article originally published on the INOVATIVOS website: https://inovativos.com.br/artigos/decisao-recente-da-terceira-turma-do-stj-firma-prazo-prescricional-de-10-anos-em-violacoes-contratuais-de-software/
