In an opinion Friday, Judge Forrest permanently enjoined ABN AMRO from using certain trading software called BankTrade made by the plaintiff, “CSI.” ABN sold to Bank of America the subsidiary that had licensed BankTrade, but continued to use the software, without permission, after the sale. Judge Forrest rejected ABN’s argument that, since BankTrade was critical to ABN’s business, CSI should have to offer ABN a reasonable license:
[T]he evidence is clear that the moment the [sale] closed, ABN no longer had a license to use BankTrade. The evidence is equally clear that during the intervening period, as it tried unsuccessfully to negotiate one for a low price, ABN knew it no longer had the license to BankTrade. Nonetheless, ABN hunkered down and continued apace, even after (and despite the fact that) CSI filed this infringement lawsuit in 2008. That alone might not be unexpected, but the decision not to develop a backup plan in the event it lost this lawsuit is. After six years of uninterrupted infringement by ABN, CSI prevailed on liability. It now seeks injunctive relief to prevent certain and ongoing infringement. ABN resists. ABN argues that BankTrade is too important to its trade finance business to cease using it – it is deeply embedded as a component of a complicated technical platform used in 22 countries (called “GTP”). ABN argues that it has tried to negotiate a license but CSI has been commercially unreasonable and that this Court should therefore allow ABN to use BankTrade perpetually in exchange for a Court-imposed license – complete with financial and other terms. Taken to its logical conclusion, this position may be reduced to the following propositions: – If a software application is really quite useful and relied upon (the developer would undoubtedly hope for both), once licensed, a licensee has a de facto and de jure perpetual license; -When a licensor acts in a commercially unreasonable manner in the context of a negotiation for renewal of a useful and relied upon software application, a licensee may simply cease negotiations, continue usage, and seek the Court’s assistance in setting a license fee and the other terms, thus irrevocably shifting leverage in any licensing discussion; and -If an infringer bets it can obtain a license for its preferred price and bets wrong, the burden of that bet falls on the licensor – not on the infringer. The Court declines to accept these propositions.