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Intellectual Property Law

: The Patry Copyright Blog

A First Sale Question

By Senior Copyright Counsel, Google Inc.

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A friend sent me a question last night about first sale. We had some back and forth that I thought might lead to some good discussion. Here is an edited version of our exchange:

Him: Assume, a la Vernor that the defendant in a software infringement case over unauthorized distribution wins that question on the ground that the transaction was a sale. Wouldn't the purchaser still be open to an infringement suit by the software owner for the copies made while installing and running the software because those copies are not licensed?

Me: My answer to your question is no, no infringement because there is an
implied license to use a lawfully owned copy for its intended purpose.

Him: How can there be an implied license if the
sale was a violation of the original "license" contract? I don't think
there can be an implied license when it is facially obvious that the
copyright owner would not under any circumstances willingly license the
use. I get why the original purchaser would have an implied license,
but it is less clear why a court would imply one to a purchaser whose
purchase was contractually prohibited by the copyright owner. Also,
can't an implied license be terminated at will by the licensor?

Me: But we are assuming the express license is not a license but
a sale. That doesn't mean there isn't some kind of contract but what
contract that says, this car is being sold to you for driving but you
can't drive it would be upheld?

Him: No, I don't think it would be upheld against the person who purchased it
at retail, but I think the question would be framed differently in an
action against the second purchaser. The copies made by the purchaser
are prima facie infringing. There must be some defense. Section 109
only applies to the distribution right, not the reproduction right, so
that is of no help to the second purchaser. Implied license based on
the sale is, I think, of no help to the second purchaser because that
purchaser did not buy the software from the copyright owner, or anyone
authorized by the copyright owner. I think an implied license has to be
based on some evidence of a voluntary act by the copyright owner that
fairly implies that the owner has consented to the copying (or other 106
act).

Me: The voluntary act is selling the produce for a particular purpose; that purpose includes being able to install and run the software.

So, what do people think?

Full post as published by The Patry Copyright Blog on June 19, 2008 (boomark / email).