First-sale doctrine

This article is about the first-sale doctrine as applied to copyright. For the analogous first-sale doctrine applicable to patents, see Exhaustion doctrine.

The first-sale doctrine is a limitation on copyright that was recognized by the Supreme Court of the United States in 1908 (see Bobbs-Merrill Co. v. Straus) and subsequently codified in the Copyright Act of 1976, 17 U.S.C. § 109. The doctrine allows the purchaser to transfer (i.e., sell, lend or give away) a particular lawfully made copy of the copyrighted work without permission once it has been obtained. This means that the copyright holder's rights to control the change of ownership of a particular copy ends once ownership of that copy has passed to someone else, as long as the copy itself is not an infringing copy. This doctrine is also referred to as the "right of first sale," "first sale rule," or "exhaustion rule."

In other jurisdictions, including the European Union, there is no right of first sale for works of art, but instead there is the droit de suite that allows artists to receive a fee from resale of works of art.

Overview

Copyright, as the name suggests, is the right to copy a work of some form. If one resells or gives as a gift a book (or CD or DVD) that one has bought, a new copy has not been made, therefore it is legal under US copyright law.

With reference to trade in tangible merchandise, such as the retailing of goods bearing a trademark, the "first sale" rule serves to immunize a reseller from infringement liability. Such protection to the reseller extends to the point where said goods have not been altered so as to be materially different from those originating from the trademark owner.

The common law, prior to the 1909 codification, originally applied to copies that had been sold (hence the "first sale doctrine"). The 1909 codification applied to anyone in possession, but over time, courts interpreting the Act required that the possession be of such a nature as to entitle the possessor to transfer it (as opposed to just being a bailee), and that the copy itself had to be a legitimate, non-infringing copy. Congress essentially agreed and, in the 1976 Act, clarified it to apply to any "owner" of a lawfully made copy or phonorecord (recorded music) regardless of whether it was first sold. So, for example, if the copyright owner licenses someone to make a copy (such as by downloading), then that copy (meaning the tangible medium of expression onto which it was copied under license, be it a hard drive or removable storage medium) may lawfully be sold, lent, traded, or given away.

The doctrine of first sale does not include renting and leasing phonorecords and certain types of computer software, although private nonprofit archives and libraries are allowed to lend these items if a notice that the work may be copyrighted is on the copy.

Some U.S. case law allows manufacturers to restrict the first-sale doctrine by a clickwrap contract or other agreement. The case law is conflicting, however, and the legality of allowing first-sale doctrine rights to be abrogated by contract has been questioned as described below. One apparent reason for the confusion is that the original 1909 codification has been divided into two parts, and most references to the codification cite only 17 U.S.C. § 109(a), which provides that the owner of a copy, lawfully made under the Copyright Act, is entitled to transfer possession or ownership without the consent of the copyright owner. But the other portion of the original codification, 17 U.S.C. § 202, clarifies the fundamental distinction between copies and copyrights (and between owners of copies and owners of copyrights). In other words, the agreement that purports to restrict the copy owner's statutory right cannot be viewed as an exercise of copyright licensing, since the copyright itself (the distribution right, under 17 U.S.C. § 106(3)) does not extend to non-infringing copies not owned by the copyright owner. Rather, the agreement is a pure restraint on trade in the tangible copies, and may be judged under antitrust laws, just like any other restraint^{[citation needed]}. Those who breach an agreement to not re-distribute a lawfully made copy they own may, perhaps, be liable for breach of contract, but not for copyright infringement^{[citation needed]}.

Computer software

The first-sale doctrine as it relates to computer software is an area of legal confusion. Some software publishers claim in their End User License Agreements (EULA) that their software is licensed, not sold, thus the first-sale doctrine does not apply to their works. Courts have contradicted. Bauer & Cie. v. O'Donnell and Bobbs-Merrill Co. v. Straus are two related Supreme Court cases.

Washington District Court in Vernor v. Autodesk, Inc. the court followed Autodesk software was sold, and thus eligible for the first-sale doctrine.^[2] This decision was overturned on September 10, 2010, by the 9th U.S. Circuit Court of Appeals.^[3]

Federal district courts in California and Texas have issued decisions applying the doctrine of first sale for bundled computer software in Softman v. Adobe (2001) and Novell, Inc. v. CPU Distrib., Inc. (2000) even if the software contains an EULA prohibiting resale. In the Softman case, after purchasing bundled software (a box containing many programs that are also available individually) from Adobe Systems, Softman unbundled it and then resold the component programs. The court ruled that Softman could resell the bundled software, no matter what the EULA stipulates, because Softman had never assented to the EULA. Specifically, the ruling decreed that software purchases be treated as sales transactions, rather than explicit license agreements. In other words, the court ruled that California consumers should have the same rights they would enjoy under existing copyright legislation when buying a CD or a book.

In a more recent case involving software EULAs and first-sale rights Davidson & Associates v. Internet Gateway Inc (2004)[2], the first sale reasoning of the Softman court was challenged, with the court ruling "The first sale doctrine is only triggered by an actual sale. Accordingly, a copyright owner does not forfeit his right of distribution by entering into a licensing agreement." However, the court also found the plaintiff's EULA, which prohibited resale, was binding on the defendants because "The defendants .. expressly consented to the terms of the EULA and Terms of Use by clicking 'I Agree' and 'Agree.'"

1984 and 1990 exclusions

The Record Rental Amendment of 1984 and the Computer Software Rental Amendments Act of 1990 both amended Section 109 to prevent all owners of phonorecords, and of certain types of computer programs, from distributing them through the acts of rental, lease, or lending, or by any other act or practice in the nature of rental, lease, or lending unless authorized by the owners of the copyright, with an exemption for non-profit educational institutions and non-profit libraries.

The acts specifically excluded:

• A computer program which is embodied in a machine or product and which cannot be copied during the ordinary operation or use of the machine or product; or

• A computer program embodied in or used in conjunction with a limited purpose computer that is designed for playing video games and may be designed for other purposes.

The privileges to sell or otherwise dispose of the possession of any particular copy or phonorecord and to display that copy publicly one image at a time, including through projection, one image at a time where the copy is physically located do not, unless authorized by the copyright owner, extend to any person who has acquired possession of the copy or phonorecord from the copyright owner, without acquiring ownership of it.

The Clayton Act

However, section 109 specifically leaves the copyright holder bound by the Clayton Antitrust Act of 1914 with respect to practices in the nature of rental, lease, or lending:

3. Nothing in this subsection shall affect any provision of the antitrust laws. For purposes of the preceding sentence, "antitrust laws" has the meaning given that term in the first section of the Clayton Act and includes section 5 of the Federal Trade Commission Act to the extent that section relates to unfair methods of competition.

This leaves the copyright holder, through the terms of the EULA and TOS that many software and music companies favor in order to bypass section 109, liable for Clayton Act violations through the fact that they claim that the purchase of the software or music is not a purchase and that the end user does not own the software but has rights to use it, thus engaging in other acts or practice in the nature of rental or lease^{[citation needed]}. Many states - in response to UCITA through so called Anti-UCITA bills - have changed their contract laws so that a sale of software is defined under the UCC such that a purchase of a copy of a program is a sale at the point of purchase. Therefore, the purchaser has the rights of an "owner of a copy" at the time of purchase; and the EULA terms (if not disclosed prior to the sale) are unenforceable. Other states have not passed such bills.

Under the Clayton Act it is unlawful to:

• Enter into an agreement to NOT use goods of competitors;
• Discriminate in rebates, discounts, or advertising service charges;
• Discriminate in favor of one purchaser against another purchaser;
• Provide material benefit to a customer unless such payment or consideration is available on proportionally equal terms to all other customers competing in the distribution of such products or commodities;
• Pay or grant, or to receive or accept, anything of value as a commission, brokerage, or other compensation, or any allowance or discount in lieu thereof, except for services rendered in connection with the sale or purchase;
• Discriminate in price between different purchasers of commodities of like grade and quality, where either or any of the purchases involved in such discrimination are in commerce; or
• Discriminate in favor of one purchaser against another purchaser upon terms not accorded to all purchasers on proportionally equal terms.

Section 109 includes the language "or by any other act or practice in the nature of rental, lease, or lending" and as having rights to use property but not own is in the nature of rental, lease, or lending they are subject to the Clayton Act. Through the use of the EULA and TOS which disclaim that the software is not owned but grants rights to use the property in order to preclude consumers first sale rights, they increase their liability. Most software companies and some music companies often engage in practices of discriminatory pricing, enter into "exclusive" contracts where in exchange for a discount they agree not to use competitors goods/services, or in the case of music services favor one company or another to distribute thus violating the Clayton Act in some manner or another^{[citation needed]}.

Application to DVDs and NEBG v Weinstein

No special new copyright protection was given to movies on video and DVD by the two above amendments, and consequently buyers of retail DVDs in the United States are free to sell or exchange them, and rent and lend them to others.

This right was underlined by the US courts in the case of NEBG v Weinstein,^[4] in which a film-industry defendant accepted that it had no right to restrict buyers of DVDs from renting them to third parties.

Copyright owners sometimes affix warning notices to packaged DVDs, or display notices on screen before showing the content, which purport to list uses of the DVD that are forbidden under copyright law. Such notices do not always fairly reflect the buyer's legal rights established by the first-sale doctrine.^{[citation needed]}

Microsoft v. Zamos

Microsoft was countersued in Microsoft Corp v. Zamos (Case: 5:04-cv-02504) for violating the Clayton Act. After unsuccessfully attempting to return legally acquired unopened copies of Microsoft software as specified in the Microsoft EULA, Zamos sold the software on eBay for a profit of $140.00. Microsoft investigators sent a message to Zamos, through eBay's website, asking whether the disk containing the software included the phrase "not for retail or OEM distribution." Zamos confirmed by return email the same day that the disk did include the phrase. Microsoft then sued Zamos claiming that "Microsoft has suffered and will continue to suffer substantial and irreparable damage to its business reputation and goodwill as well as losses in an amount not yet ascertained... Defendant's acts of copyright infringement have caused Microsoft irreparable injury." and sought legal fees and the profit from the sale.

Zamos responded on Jan 3, 2005 by countersuing Microsoft with Clayton Act charges and further charged that, "Microsoft purposely established and maintained a sales and distribution system whereby rightful rejection and return of merchandise that is substantially non-conforming is either impossible or practically impossible due to the ineptness of its employees, unconscionable policies, malicious intent and deceptive practices," thus engaging in fraud and violating the Consumer Sales Practice Act.

Microsoft offered to drop the case when local Ohio papers carried the story. Zamos refused to drop the case until Microsoft apologized and paid for the cost of copies of legal documents at the local copy shop. In March 2005, Microsoft and Zamos agreed to a settlement, which included a non-disclosure agreement with regard to the settlement terms.

Case law

In 1908, in Bobbs-Merrill Co. v. Straus, 210 U.S. 339 (1908), the first-sale doctrine was established. In a later opinion (Quality King v. L'Anza) (see below), the Court described this opinion:

“

In that case, the publisher, Bobbs-Merrill, had inserted a notice in its books that any retail sale at a price under $1.00 would constitute an infringement of its copyright. The defendants, who owned Macy’s department store, disregarded the notice and sold the books at a lower price without Bobbs-Merrill’s consent. We held that the exclusive statutory right to "vend" applied only to the first sale of the copyrighted work...

”

In 1979 Sony Corp. of America v. Universal City Studios, Inc. (often called "The Betamax Case"), determined that because the VCR was capable of substantial noninfringing uses, copyright owners objecting to infringement could not prevent its sale. The ruling, coupled with the high price of the first few movies on VHS and Betamax tapes ($50 each) created a large market for home video rental. Retailers purchased the expensive tapes and rented them to consumers at an affordable price, while studios earned considerable revenue from volume sales to rental stores. First-sale doctrine excused these merchants from seeking permission from the copyright holders.^{[citation needed]}

The Consumer Video Sales/Rental Amendment of 1983 (1983, H.R. 1029/S. 33) would have required stores to obtain permission from copyright owners before renting videotapes to the public. The bill was defeated.

In 1997 in Novell v. Network Trade Center 25 F. Supp. 2d 1218 (C.D. Utah 1997)[3] purchaser is an "owner" by way of sale and is entitled to the use and enjoyment of the software with the same rights as exist in the purchase of any other good. Said software transactions do not merely constitute the sale of a license to use the software. The shrinkwrap license included with the software is therefore invalid as against such a purchaser insofar as it purports to maintain title to the software in the copyright owner. Under the first sale doctrine, NTC was able to redistribute the software to end-users without copyright infringement. Transfer of a copyrighted work that is subject to the first sale doctrine extinguishes all distribution rights of the copyright holder upon transfer of title.

In 1998 in Quality King Distributors Inc., v. L'anza Research International Inc. 523 U.S. 135 (1998)^[5] there was a unanimous ruling: in a case involving distribution of hair care products bearing a copyrighted label, the Supreme Court found that the doctrine does apply to importation into the US of copyrighted works (the labels) which were made in the US, then exported. This is significant for grey market imports of software, books, movies or other copies of copyrighted works, where the price outside the US may be lower than the price inside. The importation of goods first manufactured outside the US under the copyright laws of other countries was specifically excluded from that decision, leaving undecided whether goods "lawfully made" under the Copyright Act but made outside the United States also benefit from the first sale doctrine. Until that is decided, copyright holders are free to take action against foreign distributors who sell products made in their region into the US market.

In 2008, in Timothy S. Vernor v. Autodesk Inc.,^[6] a U.S. Federal District Judge in Washington rejected a software vendor's argument that it only licensed copies of its software, rather than selling them, and that therefore any resale of the software constituted copyright infringement. Judge Richard A. Jones cited first-sale doctrine when ruling that a reseller was entitled to sell used copies of the vendor's software regardless of any licensing agreement that might have bound the software's previous owners because the transaction resembled a sale and not a temporary licensing arrangement.^[7]

In 2010 however, the judgment against Autodesk was overturned and the Court of Appeals for the Ninth Circuit held that the sale of the software was indeed a lease and not a sale. Because there was no sale, the court held that the First Sale Doctrine did not apply and remanded the case for further proceedings. ^[8]

In 2009, in Pearson Education, Inc. v. Ganghua Liu,^[9] the District Court in the Southern District of New York ruled that the first sale copyright doctrine does not apply to products that are lawfully manufactured abroad and then imported and sold in the U.S without authority from the copyright holder. The court reached this conclusion reluctantly, saying that it found nothing in the copyright statute that limits the doctrine to copies manufactured in the U.S., but it relied upon dicta in the 1998 Supreme Court opinion in Quality King Distribs., Inc. v. L’anza Research Int’l, Inc. (discussed above) to reach its conclusion. That case is currently before the Second Circuit Court of Appeals, on petition for leave to appeal, a decision on which has been deferred pending a ruling in a similar case. The argument that § 109(a) does not apply to copies made abroad is often approached as a means for a copyright owner to seek to prevent the "gray market" importation of copyrighted goods made abroad without finding the first sale doctrine to be an obstacle, and thereby enabling the copyright owner to engage in geographic price discrimination without fear that copies it sells more cheaply abroad will find their way back into the United States and undermine the higher prices they seek to extract from U.S. consumers. While this theory has some appeal in economic circles, the implications of such an interpretation are much broader, as it would mean that any object (perfume, an automobile, a cell phone, a home appliance) bearing a copyrighted label or containing copyrighted computer code, where the label or code was made into a copy while outside of the United States, could not be lent, sold or given away without the permission of the owner of the copyright in that work^{[citation needed]}. Given that modern technology allows literally thousands of discrete copyrighted works to embody the same tangible medium, just one copyright holder in a work that was reproduced onto the object, while outside of the United States, would effectively give the copyright owner power over the object^{[citation needed]}. For example, if a new cell phone was made in China, where it was pre-loaded with a number of copyrighted computer programs, the owner of the copyright in each program could sue anyone who let someone else borrow their phone. Even where everything was initially made in the United States, if a student downloaded a "patch" or upgrade to a computer program while temporarily abroad would be committing copyright infringement by lending the computer to someone else upon returning to the United States^{[citation needed]}. But in commerce this supposed problem is not likely to arise, as any manufacturer of a computer program or other work embodying copyrighted elements only needs to acquire a worldwide distribution right from the copyright holder at the time of first acquiring the right to use the copyright in order to avoid any potential problem with the US importation right.

See also

• Copyright infringement
• Droit de suite – contrary policy in French and EU law as far as regards copyright on works of art
• Exhaustion of rights – A concept in EU law similar to the US "First-sale doctrine" as far as regards patents
• Restrictive covenant
• Digital rights management
• Limitations on exclusive rights: Computer programs
• Vault Corp. v. Quaid Software Ltd.
• Copyright Directive 2001/29/EC including the right to make a copy for private use
• Fair use

References

1. ^ United States v. Wise - 370 U. S. 405 (1962) - Justicia.com - Supreme Court Center - Retrieved 08 December 2010.
2. ^ Timothy S. Vernor v. Autodesk Inc. summary - United States District Court - Western District of Washington at Seattle - Decision.
3. ^ Timothy S. Vernor v. Autodesk Inc. decision - United States Court of Appeals for the Ninth Circuit,
4. ^ NEBG, LLC v. Weinstein Company Holdings, LLC, 2007 WL 1454460 (D. Mass. May 18, 2007)
5. ^ Quality King Distributors Inc., v. L'anza Research International Inc. 523 U.S. 135 (1998)
6. ^ Timothy S. Vernor v. Autodesk Inc.
7. ^ "Court smacks Autodesk, affirms right to sell used software". ArsTechnica.com. 2008-05-23. http://arstechnica.com/news.ars/post/20080523-court-smacks-autodesk-affirms-right-to-sell-used-software.html. Retrieved 2008-05-26. 
8. ^ [1]
9. ^ Pearson Education, Inc. v. Ganghua Liu Court Decision

External links

• Full text of the Statute
• Rights of software users
• "Judge Orders Software Developer to Remove And Stop Using Deceptive And Restrictive Clauses" (Press release). Office of New York State Attorney General. 2003-01-17. http://www.oag.state.ny.us/media_center/2003/jan/jan17a_03.html. Retrieved 2008-09-05. 
• The VSDA (Video Software Dealer's Association) 's list of lobbying priority issues includes protection of the First Sale Doctrine.
• Explanation of the "Betamax Case"
• Quality King Distributors, Inc. v. L'anza Research International, Inc., 1998 WL 96265 syllabus (summary), Court decision written by Justice Stevens, Justice Ginsburg's Concurrence and 1998 B.C. Intell. Prop. & Tech. F. 040801 report of the decision
• Davidson & Associates v. Internet Gateway Inc ruling
• Blizzard v BnetD
• Nicole Rizzo Smith, "A Dubious Decision: First Sale Doctrine Does Not Extend to Copyrighted Works Made Overseas", Sunstein IP Update (October, 2009)
• Thomas Hoeren: Der Erschöpfungsgrundsatz bei Software, GRUR 2010, 665 - 673 German