[A2k] First sale doctrine case Timothy S. Vernor v. Autodesk, Inc.

Manon Ress manon.ress at keionline.org
Thu Jun 23 09:37:06 PDT 2011

If you believe the first sale doctrine is as an essential element of
balance of copyright law, check out the very interesting petition to
the US Supreme Court by Gregory Beck and Allison Zieve of Public
Citizen Litigation group re Timothy S. Vernor v. Autodesk, Inc.


Public Citizen represents an eBay vendor in a case against Autodesk, a
California-based software company. The suit alleges that Autodesk used
its copyright to suppress competition from the sale of used copies of
its products online, leading to higher prices for consumers. Although
Autodesk claims that its shrink-wrap license prohibits resale of its
products, Public Citizen argues that the contract language is unlawful
under the Copyright Act, which guarantees that the owner of a
copyrighted product can resell that product without permission. In
October 2009, the district court ruled that Autodesk sells, rather
than licenses, its software, and therefore that Vernor is permitted to
resell it. On appeal, the U.S. Court of Appeals for the Ninth Circuit
reversed. Vernor's petition for certiorari in the U.S. Supreme Court
is pending.
end of quote

And here is info on the case and a coalition of public interest,
consumer, and library groups that did an amicus brief (EFF, ALA,
Public Knowledge, Consumer Federation of America, and U.S. PIRG).


June 21st, 2011
EFF asked the Supreme Court yesterday to weigh in on Vernor v.
Autodesk, a case that tests whether the "first sale doctrine" will
survive in the digital age.

Under the first sale doctrine, once a copyright owner sells or gives
you a copy of her work, she gives up control of that particular copy.
You buy it, you own it. This principle is extraordinarily important
for consumers, as it makes it legal for you to resell, lend, or give
away the books, CDs, DVDs, and software that you purchase.

Many copyright owners don’t like these limits; they’d rather be able
to completely control the market for their products, including any
secondary markets. Thus, in an effort to duck the first sale doctrine,
companies increasingly claim that they are "licensing" products to
consumers, instead of selling them.

That's exactly what's happening in Vernor. Timothy Vernor, an online
software reseller, tried to auction four packages of Autodesk's
AutoCAD software on eBay, but Autodesk threatened Mr. Vernor with a
copyright infringement lawsuit, claiming that its software is only
“licensed,” never sold and pointing to the fine print on the agreement
it had with the original purchaser from whom Mr. Vernor obtained the

The public interest litigators at Public Citizen pitched in to help
Mr. Vernor, and they filed suit in Seattle, asking the court to
clarify his right to resell the software. The district court agreed
with Vernor in 2009, but Autodesk appealed to the 9th U.S. Circuit
Court of Appeals. There, justices wrongly held that the first sale
doctrine doesn't apply as long as the vendor writes a user agreement
that includes restrictions transforming a sale into a license. In
other words, if you use the right "magic words," you can turn buyers
of your works into renters, who don't have the right to resell, lend,
or give away property they thought they owned.

This decision was bad news for consumers. By undermining the crucial
balance between copyright owners and users that supports used
bookstores, libraries, DVD rentals, and so on, it hurt our ability to
save a few dollars and our ability to retain, archive and access
older, out-of-print materials. Libraries and second-hand sellers are
often the only hope for these materials and the “long tail” community
of researchers, historians and hobbyists that value them. And since
software is embedded in an extraordinary array of content and devices,
from videos to music to goods such as phones, picture frames, book
readers, etc., all of which is made available subject to a EULA few
consumers read, we worry that the decision may have an even broader

This Ninth Circuit got this one wrong, which is why we asked the
Supreme Court to hear this case. A coalition of public interest,
consumer, and library groups joined EFF in the amicus brief, including
several national library associations, Public Knowledge, the Consumer
Federation of America, and U.S. PIRG. We hope that the Court agrees to
review the case and treats it as an opportunity to put consumer rights
and expectations ahead of the overreaching demands of software

Manon Anne Ress
Knowledge Ecology International
1621 Connecticut Ave, NW, Suite 500
Washington, DC 20009 USA
manon.ress at keionline.org

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