1. Thanks for the analysis, Evan.
    Interesting to see how this might play out in the gaming industry, where sales of used copies generates considerable revenues that the developers feel they’re missing out on.

  2. On average, the Supreme Court reverses the Federal Appellate Courts

    about 73 per cent of the the time.

    The VERNOR v. AUTODESK case is one of those appellate decisions that
    cries out for reversal. The Ninth Circuit steadfastly refuses to

    acknowledge that Congress declared ownership of material, tangible

    copies of works are independent of intangible copyrights. 17 USC § 202

    makes this very clear:

    "17 USC § 202.

    Ownership of copyright as distinct from ownership of material object.

    Ownership of a copyright, or of any of the exclusive rights under a

    copyright, is distinct from ownership of any material object in which

    the work is embodied. Transfer of ownership of any material object,

    including the copy or phonorecord in which the work is first fixed, does

    not of itself convey any rights in the copyrighted work embodied in the

    object; nor, in the absence of an agreement, does transfer of ownership

    of a copyright or of any exclusive rights under a copyright

    convey property rights in any material object."

    The ownership of material copies of copyrighted works is a matter

    soley reserved for state property law. Both Nimmer on Copyright and the

    the non-precedential Federal Circuit has pointed to this fact:

    "[T]he court's decision has been criticized for failing to recognize the

    distinction between ownership of a copyright, which can be licensed, and

    ownership of copies of the copyrighted software. See, e.g., 2 Melville

    B. Nimmer, Nimmer on Copyright p 8.08[B], at 8-119 to 1-121 (3d

    ed.1997). Plainly, a party who purchases copies of software from the

    copyright owner can hold a license under a copyright while still being

    an "owner" of a copy of the copyrighted software for purposes of section

    117." DSC COMM. v. PULSE COMM., 170 F.3d 1354.

    The proper resolution of the VERNOR v. AUTODESK decisions is dependent

    upon the Washington state law:

    RCW 62A.2-401

    Passing of title; reservation for security; limited application of this section.


  3. Alon Delon

    "The VERNOR v. AUTODESK case is one of those appellate decisions that
    cries out for reversal."

    Yep, supported by


    "In Wells the court granted defendant's motion for acquittal

    on eight counts of criminal infringement of the copyright of

    aerial survey maps owned by Edgar Tobin. Tobin had licensed

    107 of his customers to manufacture reproductions of his

    maps for their own use. Defendant was charged with selling,

    without authorization, copies of Tobin's copyrighted maps.

    The pivotal issue was whether the copies sold by the

    defendant were copies which had been the subject of a first

    sale, thereby terminating their statutory protection:

    ". . . If title has been retained by the copyright

    proprietor, the copy remains under the protection of the

    copyright law, and infringement proceedings may be had

    against all subsequent possessors of the copy who interfere

    with the copyright proprietor's exclusive right to vend the

    copyrighted work. If title has passed to a first purchaser,

    though, the copy loses the protection of the copyright law

    as discussed above." 176 F.Supp. at 633-634.

    The court found that "there has been no showing on the

    record that the copies of the aerial survey maps were not

    published by a lawful licensee of the copyright proprietor

    or that title to these copies was retained at all times by

    the copyright proprietor". 176 F.Supp. at 633. Since the

    Tobin license did not specify that title to the reproduced

    maps was to remain in Tobin, title to the maps belonged to

    the licensees who, under the first sale doctrine, were free

    to resell the maps. The court concluded: "Lacking the

    protection of the copyright law, there can be no

    infringement, and defendant should be acquitted." 176

    F.Supp. at 634."

  4. Fred Otte

    "questions about the rights associated with physical copies is becoming increasingly irrelevant."

    I think you mean "are" — verb agreement.

  5. Jim Sowers

    Everyone is talking about the license, but no one seems to have a reference to the actual license involved for Autodesk Release 14. Could you point me a PDF of the exact license involved in this case (not paraphrasing)? Thanks!

Comments are closed.

Did you enjoy this post? Then please share it with your friends and colleagues: