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.