The pending lawsuit of Vernor v. Autodesk might answer this question.
Timothy Vernor makes his living as an eBay vendor selling used comic books, video games, software, and collectibles. Autodesk, the maker of software application AUTOCAD, managed to get several of Vernor’s auctions shut down. Autodesk managed this feat by sending a take-down notice to eBay claiming that Vernor’s sale of used versions of AUTOCAD is copyright infringement.
Like many online sites, eBay relies on a safe harbor provision under the Digital Millennium Copyright Act (DMCA) to insulate it from copyright infringement liability for material posted by eBay online visitors and vendors. In order to qualify for that safe harbor, eBay must remove any material identified by the copyright owner as infringing. However, under the DMCA, eBay vendors shut down by a takedown notice can get their auctions reinstated by sending eBay a counter notice claiming that the material is not infringing and was improperly removed. That’s exactly what Vernor did, triggering a DMCA dance of takedown notices and counter notices through which Autodesk repeatedly had Vernor’s auctions shut down and Vernor subsequently got them re-instated.
Vernor ultimately tired of the game and has filed suit against Autodesk in which he asks a Washington federal court to declare his sale on eBay of used AUTOCAD copies as lawful. You can read the full complaint here.
The most relevant issue in the case is application of copyright law’s First Sale Doctrine to software.
The First Sale Doctrine and Software
Software applications are protected by copyright law. The U.S. Copyright Act contains a provision referred to as the First Sale Doctrine which allows anyone who OWNS a lawfully-made, lawfully-obtained copy of a software application to re-sell or otherwise dispose of that copy in any way the person wishes. Resale does not require the permission of the software maker.
There’s a reason I stress the word “own”. Software makers often try to defeat the First Sale Doctrine by claiming that the software has been “licensed” and not “sold”. The software maker argues that it has not transferred ownership but instead has only granted a limited right to use it and, therefore, the First Sale Doctrine does not apply.
That’s the situation in the Vernor case. AUTOCAD comes with a license agreement inside the box which Autodesk interprets as prohibiting all resale of the AUTOCAD product.
Likely Outcome for the Vernor Case
It wouldn’t surprise me if Autodesk backs down and agrees to leave Vernor and his eBay auction site alone.
The Vernor v. Autodesk case reminds me of another case involving eBay, DMCA takedown notices, allegations of copyright misuse, and the World of Warcraft video game. However, rather than the First Sale Doctrine, the featured copyright provision in the World of Warcraft case was copyright fair use.
Here’s a brief summary of the facts from that case. Brian Kopp is the author of The Ultimate World of Warcraft Leveling & Gold Guide, an instructional book for the video game. While Kopp’s book does not contain any of the game’s copyrighted text or storyline, it does contain screen shots of the game. Vivendi Universal Games, the parent company of the game maker, objected to the sale of Kopp’s book, sent take-down letters to eBay and got Kopp’s eBay store shut-down several times. Sound familiar?
Kopp decided to fight back and filed a suit asking for a court ruling that his book’s use of the screen shot qualifies as a fair use. Before the lawsuit advanced very far, the parties settled with Vivendi agreeing to stop objecting to Kopp’s continued sale of his instructional book.
Incidentally, Brian Kopp was represented by Public Citizen, a national non-profit public interest organization. Public Citizen is also representing Timothy Vernor in this case.