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Marc Temin, Foley Hoag LLP ABA Litigation Section, Copyright Litigation Subcommittee, May 6, 2010 - page 5 / 12





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    • iii.

      Rationale is that once copyright owner has transferred title to a copy, subsequent possessors should not have the trouble of negotiating with him when they contemplate a further transfer. If copyright owner wants to engage in further negotiation, he should lease or license the copy initially. II Goldstein (3d ed.) § 7.6.1 at 7:131.

  • 3.

    Imported copies that would otherwise violate §§ 602(a) and 106(3)

  • a.

    § 602(a) provides that importation into U.S., without CO’s authority, of copies acquired outside the U.S. is an infringement of the exclusive distribution right under § 106

  • b.

    Quality King Distribs. v. L'Anza Research Int'l, 523 U.S. 135

    • (1998)

      – § 109(a) defense applicable to copy made in the U.S., exported to authorized foreign distributor, sold abroad, imported into U.S. without authorization, sold in U.S. by unauthorized retailer – because scope of § 602(a) dependent on § 106(3), which is limited by § 109(a)

  • c.

    Omega S.A. v. Costco Wholesale Corp., 541 F.3d 982 (9th Cir.

    • 2008)

      – § 109(a) defense not applicable to copies not made in U.S., and so not “lawfully made under this title” (emphasis added).

      • i.

        Certiorari granted 4/19/10. Concern that decision would

encourage making of copies outside U.S.

  • C.

    Natural to say that copy is sold and software is licensed.

    • 1.

      But purpose of copy is only to obtain use of software, and use of software requires making additional copy(ies), so ownership of copy is worthless without right to make further copies, and issues cannot be separated.

    • 2.

      Need to balance (i) desire not to separate embodiment of copyrighted work from value to be obtained from it and to be fair to purchaser, (ii) statutory language crafted to deal with technical area, and (iii) risks to CO inherent in digital media.

  • D.


  • 1.

    Wall Data Inc. v. Los Angeles Cty. Sheriff’s Dept., 447 F.3d 769 (9th Cir.

    • 2006)

      -- two-part test for determining whether the purchaser of a copy of a software program is a licensee or an owner: generally, if CO (1) makes clear that it is granting only a license to the copy of the software, and (2) imposes significant restrictions on the redistribution or transfer of the copy, then transaction is a license, not a sale, and purchaser of the copy is a licensee, not an “owner” under § 117.

  • -


Marc Temin, Foley Hoag LLP ABA Litigation Section, Copyright Litigation Subcommittee, May 6, 2010

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