Sales and Licenses of Software and Copies
Why are copies of software not sold but licensed?
To avoid first sale doctrine, control further transfer of copy
To specify and limit scope of use (and so of necessary copying)
To avoid application of law of sales
To permit addition of contractual terms
Sale of copy and no license. Owner of copy has rights under §§ 109 and
117 but no other § 106 rights.
Sale of copy and license of software. Owner of copy has rights under §§109(a) and 117). License may restrict or expand copying permitted under § 117.
License of copy and software. Licensee of copy has no rights under §§ 109(a) or 117(a). License determines rights both to copy and software.
License grant alternatives
License grant with conditions
Once conditions met, license effective
Termination if conditions not met? Automatic or upon
notice (and perhaps failure to cure)?
E.g., automatic license termination if software transferred?
License grant with additional covenants
Breach of covenants is not breach of condition, but material breach
may permit termination of license agreement
Asset Marketing Systems, Inc. v. Gagnon, 542 F.3d 748 (9th Cir.
– provision of software under technical services agreement gave rise to implied unlimited nonexclusive license to use software
Marc Temin, Foley Hoag LLP ABA Litigation Section, Copyright Litigation Subcommittee, May 6, 2010