[License-discuss] Essential step defense and first sale

Sat Jul 20 09:27:32 UTC 2019

BTW: BOWMAN v. MONSANTO actually sort of confirms both 17 USC 109 and 17
USC 117:

"Our holding today is limited—addressing the situation before us, rather
than every one involving a selfreplicating product. We recognize that such
inventions are becoming ever more prevalent, complex, and diverse. In
another case, the article’s self-replication might occur outside the
purchaser’s control. Or it might be a necessary but incidental step in
using the item for another purpose. Cf. 17 U. S. C. §117(a)(1) (“[I]t is
not [a copyright] infringement for the owner of a copy of a computer
program to make . . . another copy or adaptation of that computer program
provide[d] that such a new copy or adaptation is created as an essential
step in the utilization of the computer program”). We need not address here
whether or how the doctrine of patent exhaustion would apply in such
circumstances. In the case at hand, Bowman planted Monsanto’s patented
soybeans solely to make and market replicas of them, thus depriving the
company of the reward patent law provides for the sale of each article.
Patent exhaustion provides no haven for that conduct. We accordingly affirm
the judgment of the Court of Appeals for the Federal Circuit.   "

So here we have pretty direct confirmation of 17 USC 117. Now just try to
imagine what would the court say if Monsanto would had copylefted the
reproduction right and sued BOWMAN in patent (tort/infringement) rather
than contract (breach) for failure to fulfill some "conditions" (factually
contractual covenants) while distributing beans lawfully made under some
patentlefted license...

Am Do., 18. Juli 2019 um 19:20 Uhr schrieb Alexander Terekhov <
herr.alter at gmail.com>:

> You don't seem to grok 17 USC 109. Here's what Lee Hollaar who worked with
> the Chief Judge and the Chief Intellectual Property Counsel to the Senate
> Judiciary Committee on Internet, copyright, and patent issues  as a
> Committee Fellow (see
> http://digital-law-online.info/lpdi1.0/treatise2.html) had to say about
> the line of reasoning akin to your misreading of 17 USC 109 ("right to
> resell the one physical copy that you bought, and not lawful reproductions
> of it" so to speak):
>
>
> http://groups.google.com/group/misc.legal.computing/msg/cbd9e083622b1c1f?dmode=source
>
> ------
> In article <cedhdt$2l9... at toad.stack.nl> galac... at stack.nl (Arnoud
> "Galactus" Engelfriet) writes:
> >I had always understood first sale to be restricted only to the
> >copy you acquire (buy) from the copyright holder. Not to copies
> >you make yourself.
>
> And your understanding is wrong, at least if you are talking about
> United States copyright law.  The question under 17 USC 109 is
> simply whether the copy was "lawfully made," not who made it or
> what made it lawful.
>
> In the Committee Report that accompanied the passage of the Copyright
> Act of 1976 (House Report 94-1976), there is this explaination:
>
>        To come within the scope of section 109(a), a copy or
>      phonorecord must have been "lawfully made under this title,"
>      though not necessarily with the copyright owner's authorization.
>      For example, any resale of an illegally "pirated" phonorecord
>      would be an infringement, but the disposition of a phonorecord
>      legally made under the compulsory licensing provisions of section
>      115 would not.
> ------
>
>
> http://groups.google.com/group/gnu.misc.discuss/msg/a35d280e83f196a2?dmode=source
>
> ------
> In article <x5wu25ouhr.... at lola.goethe.zz> David Kastrup <d... at gnu.org>
> writes:
> >First sale applies if there is a sale.  It doesn't if there isn't.
> >Copyright defines the minimum set of rights that can be _sold_ to you.
> >It does not apply to items to which you have no right in the first
> >place, but to which you are unilaterally granted a conditional license
> >to use and redistribute, without any exchange of consideration from
> >your side.
>
> Wrong, wrong, wrong, at least under United States copyright law.
>
> "First sale" is just a shorthand for the judicially-created doctrine
> that is now codified in 17 USC 109.  It does not require a "sale"
> but applies to anyone who is "the owner of a particular copy or
> phonorecord lawfully made under this title".
>
> I can become the lawful owner of a copy by gift or similar things
> that are not a sale.
>
> And if I am the lawful owner, I can dispose of it in any way I want,
> except for rental in the case of phonorecords or most computer
> programs.
> ------
>
>
> http://groups.google.com/group/gnu.misc.discuss/msg/54e86da699867eab?dmode=source
>
> ------
> In article <x5k6y5otfo.... at lola.goethe.zz> David Kastrup <d... at gnu.org>
> writes:
> >holl... at faith.cs.utah.edu (Lee Hollaar) writes:
> >
> >> In article <x5wu25ouhr.... at lola.goethe.zz> David Kastrup
> <d... at gnu.org> writes:
> >> >First sale applies if there is a sale.  It doesn't if there isn't.
> >> >Copyright defines the minimum set of rights that can be _sold_ to you.
> >> >It does not apply to items to which you have no right in the first
> >> >place, but to which you are unilaterally granted a conditional license
> >> >to use and redistribute, without any exchange of consideration from
> >> >your side.
> >>
> >> Wrong, wrong, wrong, at least under United States copyright law.
> >>
> >> "First sale" is just a shorthand for the judicially-created doctrine
> >> that is now codified in 17 USC 109.  It does not require a "sale"
> >> but applies to anyone who is "the owner of a particular copy or
> >> phonorecord lawfully made under this title".
> >
> >What about "made under this title" don't you understand?
>
> I seem to understand it a bit more than you do, it appears.
>
> The phrase essentially means that the copy is not infringing, either
> because it was made with the permission of the copyright owner or
> it falls within one of the exceptions to the copyright owner's
> reproduction rights.
>
> >> I can become the lawful owner of a copy by gift or similar things
> >> that are not a sale.
> >
> >Which then is not obtained "under this title".
>
> More nonsense.  If the owner of the copyright gives me a copy, then
> I am the owner of a copy "made" (not "obtained") "under this title."
> ------
>
>
> http://groups.google.com/group/misc.int-property/msg/0e12f3571b78d7bd?dmode=source
>
> ------
> In article <nm9fyovbw4b.... at mass-toolpike.mit.edu> Bruce Lewis
> <brle... at users.sourceforge.net> writes:
> >Alexander Terekhov <terek... at web.de> writes:
> >> And what's the point of "and distribute"? As an owner of a copy
> >> lawfully made I'm free to distribute it.
> >
> >US copyright statute, chapter 1, section 106(1) and (3) defines copying
> >and distrubution as separate exclusive rights.
> >
> >http://www.copyright.gov/title17/92chap1.html#106
> >
> >I don't know why these rights are listed separately either, but it seems
> >prudent that if you want to grant both rights you should be explicit
> >about it, rather than assuming right (1) implies right (3).
>
> Because it was felt that both somebody who reproduces works but does
> not distribute them to the public, and somebody who distributes works
> to the public that were reproduced by another, should both be
> infringers?
>
> As for the reproduction right (1) implying the distribution right (3),
> it's not an implication, but a special rule in United States copyright
> law spelled out in Section 109.  (It is commonly called "first sale,"
> but the actual parameters of the rule are specified in the statute
> and not some lay reading of "first," "sale," or even "first sale.")
>
> The heart of the provision is its first sentence:
>
>      Notwithstanding the provisions of section 106(3), the owner of a
>      particular copy or phonorecord lawfully made under this title, or
>      any person authorized by such owner, is entitled, without the
>      authority of the copyright owner, to sell or otherwise dispose
>      of the possession of that copy or phonorecord.
>
> But it goes on to state exceptions to this rule (primarily for the
> rental of phonorecords and software) and exceptions to these exceptions,
> not part of the original Copyright Act of 1976.
>
> But if one has permission to make lawful copies, one does not need any
> additional permission to distribute those copies to the public.
> ------
>
> Hope this helps.
>
> Am Do., 18. Juli 2019 um 17:46 Uhr schrieb Smith, McCoy <
> mccoy.smith at intel.com>:
>
>> Plus, you’re not even doing it right.  You’re excluding the most relevant
>> case, more recent than the cases you cite, from the highest court in the US:
>>
>>
>> But as already explained, we have always drawn the boundaries of the
>> exhaustion doctrine to exclude that Activity [reproduction], so that the
>> patentee retains an undiminished right to prohibit others from making the
>> thing his patent protects. See, e.g., Cotton-Tie Co. v. Simmons, 106 U. S.
>> 89, 93–94 (1882) (holding that a purchaser could not “use” the buckle from
>> a patented cotton-bale tie to “make” a new tie). That is because, once again*,
>> if simple copying were a protected use, a patent would plummet in value
>> after the first sale of the first item containing the invention*. The
>> undiluted patent monopoly, it might be said, would extend not for 20 years
>> (as the Patent Act promises), but for only one transaction. And that would
>> result in less incentive for innovation than Congress wanted. *Hence our
>> repeated insistence that exhaustion applies only to the particular item
>> sold, and not to reproductions.*
>>
>> BOWMAN v. MONSANTO CO. ET AL. (U.S. 2013)
>>
>> *From:* License-discuss [mailto:
>> license-discuss-bounces at lists.opensource.org] *On Behalf Of *Pamela
>> Chestek
>> *Sent:* Thursday, July 18, 2019 6:19 AM
>> *To:* license-discuss at lists.opensource.org
>> *Subject:* Re: [License-discuss] Essential step defense and first sale
>>
>>
>>
>> No matter how long you beat your drum, or under how many email aliases
>> and pseudonyms, no one is buying your arguments here or on any other list.
>>
>> Pam
>>
>> Pamela S. Chestek
>> Chestek Legal
>> PO Box 2492
>> Raleigh, NC 27602
>> 919-800-8033
>> pamela at chesteklegal.com
>> www.chesteklegal.com
>>
>> On 7/17/2019 11:32 PM, Alexander Terekhov wrote:
>>
>> See, e.g., SoftMan Prods. Co. v. Adobe Sys. Inc., 171 F. Supp. 2d 1075,
>> 1083 (C.D. Cal. 2001).
>>
>>
>>
>>
>> https://www.linuxjournal.com/files/linuxjournal.com/linuxjournal/articles/056/5628/softman-v-adobe.html
>>
>>
>>
>>
>> I've collected most relevant stuff here:
>>
>>
>>
>> https://groups.google.com/d/msg/gnu.misc.discuss/jd7DiFRiH98/MaCxHL-lfpkJ
>>
>>
>>
>> Such as:
>>
>>
>>
>> "...the following factors require a finding that
>> distributing software under licenses transfers individual copy
>> ownership: temporally unlimited possession, absence of time
>> limits on copy possession, pricing and payment schemes that are
>> unitary not serial, licenses under which subsequent transfer is
>> neither prohibited nor conditioned on obtaining the licensor’s
>> prior approval (only subject to a prohibition against rental and
>> a requirement that any transfer be of the entity), and licenses
>> under which the use restrictions principal purpose is to protect
>> intangible copyrightable subject matter, and not to preserve
>> property interests in individual program copies. Id. at 172. "
>>
>>
>>
>> Unless you deliberately confuse ownership of copyright with ownership of
>> copies it must be clear to you that all copies of copylefted works falls
>> under 17 USC 109 and 17 USC 117.
>>
>>
>>
>> Am Mi., 17. Juli 2019 um 15:50 Uhr schrieb Pamela Chestek <
>> pamela at chesteklegal.com>:
>>
>> Your citations to cases that aren't analogous aren't convincing.
>>
>> Pam
>>
>> Pamela S. Chestek
>> Chestek Legal
>> PO Box 2492
>> Raleigh, NC 27602
>> +1 919-800-8033
>> pamela at chesteklegal.com
>> www.chesteklegal.com
>>
>> On 7/16/19 3:20 PM, Alexander Terekhov wrote:
>>
>> Story end:
>>
>> https://www.itassetmanagement.net/2016/10/31/secondary-software-2016/
>>
>> https://www.usedsoft.com/en/lawyer-christian-ballke-on-the-legal-basis-for-the-trade-in-used-software/
>>
>> Funny:
>>
>> http://www.groklaw.net/articlebasic.php?story=20110929014241932
>> ("Psystar Loses its Appeal; Licensees Have No First-Sale Rights; Costs
>> Awarded to Apple ~ pj")
>>
>> "But there is one more important result here. Do you remember all the
>> predictions on message boards all over the web by anti-GPL activists like
>> Alexander Terekhov that someone could get a copy of Linux, under the GPL,
>> and then make copies and sell them under another license, under the first
>> sale doctrine? That fantasy has just died a permanent death. It was never
>> true that one can do that. But now we can prove it with this Psystar
>> ruling. Yes, Psystar can ask the US Supreme Court to review this. But
>> seriously, what are the odds?"
>>
>>
>>
>> Am So., 14. Juli 2019 um 19:55 Uhr schrieb Alexander Terekhov <
>> herr.alter at gmail.com>:
>>
>> BTW, after Vernor v. Autodesk there was UMG vs. Augusto:
>>
>>
>> http://www.phphosts.org/blog/2011/01/court-rules-that-its-legal-to-sell-promotional-cds/
>>
>>
>>
>>
>> See also:
>>
>>
>>
>>
>> https://www.pcworld.com/article/258720/eu_court_rules_resale_of_used_software_licenses_is_legal_even_online.html
>>
>>
>>
>> Am So., 14. Juli 2019 um 16:01 Uhr schrieb Pamela Chestek <
>> pamela at chesteklegal.com>:
>>
>> On 7/13/2019 6:58 AM, Alexander Terekhov wrote:
>>
>> The thing is that 17 USC 117 makes the act of running/using software
>> unrestricted and 17 USC 109 also severely impedes ability to control
>> distribution as far as copyright is concerned. So, you'll have to stick to
>> contractual covenants and fight against
>> https://en.wikipedia.org/wiki/Efficient_breach ... good luck with that :)
>>
>>
>> In both cases, only if you are the owner of a copy. "Licensees are not
>> entitled to the essential step defense." *Vernor v. Autodesk, Inc.*, 621
>> F.3d 1102, 1111 (9th Cir. 2010). It is a rare decision that holds that a
>> party is an owner of a copy of software rather than a licensee.
>>
>> Pam
>>
>> Pamela S. Chestek
>> Chestek Legal
>> PO Box 2492
>> Raleigh, NC 27602
>> 919-800-8033
>> pamela at chesteklegal.com
>> www.chesteklegal.com
>>
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