Copyright Law Blog: Exclusive Rights

Category Archives: First Sale

Supreme Court asks SG to brief Costco v. Omega

Shourin Sen - 5 October 2009 – 7:00 pm

Well, we didn’t get a cert decision in Costco Wholesale Corporation v. Omega, S.A. but we did get a bombshell. The Supreme Court has invited the Solicitor General to file a brief on behalf of the United States. It’ll be interesting to see where this goes.

For any of you who want to know more about the process through which the Supreme Court “invites” a brief from the S.G., Tony Mauro of the Legal Times wrote a great article on the topic in 2003. Snipits below:

[M]ost of the time, when asked, the solicitor general’s advice carries great weight: In the last three terms, the Court has followed the SG’s invited recommendation 74 percent of the time.
* * * * *
Although there is no written rule, it is believed that the vote of three justices is needed to ask for the solicitor general’s views, one less than is needed to grant review. For that reason, an invitation is sometimes seen as a sign that three justices who want the Court to grant review are looking for a powerful ally to help them win a fourth vote.

And although framed as invitations, CVSGs are included on the list of orders issued by the Court. When the solicitor general files his brief in reply, he uses the odd formulation that it is being “submitted in response to the order of this Court inviting the Solicitor General to express the views of the United States.”

Indeed they are more like orders than invitations: They are not to be declined. But no firm deadline is established, and sometimes the SG’s office takes months to reply.
* * * * *
[D]elay can also occur because an invitation forces the government to study and take a stance on an issue that it would just as soon have avoided. Factions from all parts of the federal government and the private sector are called in, and intense lobbying often ensues.

“There are times when you very much hope to be asked. It can be an opportunity,” says former Reagan administration Solicitor General Charles Fried, now a professor at Harvard Law School. “But sometimes you very much hope you won’t be asked.”

Here are the documents from the Court docket:

Moral Panics, Costco, Salinger v. Colting, and the elimination of the fee for expedited filing if litigation is pending

Shourin Sen - 11 August 2009 – 9:00 am

Filed under Fair Use, First Sale, Importation, News, Registration

Moral Panics

As a number of other copyright blogs have noted, William Patry’s new book Moral Panics and the Copyright Wars has hit the shelves along with a new blog. Mr. Patry’s role in shaping copyright is undeniable, from his work on the Visual Artists Rights Act and the Architectural Works Copyright Protection Act, to his treatise, Patry on Copyright, and his role as Chief Copyright Counsel at Google. My copy of Moral Panics shipped yesterday morning, and like many others, I am anxiously awaiting its arrival.

Costco v. Omega

A friend of the program was kind enough to pass along the most recent filings in Costco v. Omega, including Omega’s opposition brief and Costco’s reply. The cert petition was Distributed for the Conference on September 29, 2009, the Supreme Court’s long conference where it decides which cases to hear in the fall and early winter.

The full list of documents is here:

Salinger v. Colting

The New York Times Company, the Associated Press, the Gannett Company and the Tribune Company have filed an amicus brief arguing for reversal of the granting of a preliminary injunction in Salinger v. Colting.

Library of Congress

The Library of Congress has published a new rule, effective immediately through July 1, 2011, that eliminates the fee for an expedited filing when an applicant needs registration to file suit for copyright infringement. The previous fee was $760. This appears to be one of a series of moves aimed at remedying or at least alleviating the problems caused by the backlog for obtaining copyright registration. The most controversial of the measures may be the proposed amendment that would eliminate mandatory deposit for electronic works. (Are we allowed to call this the Facebook amendment?)

S.D. Fla. holds that imporation of software from Jordan infringes Microsoft’s 106(3) rights

Shourin Sen - 8 December 2008 – 11:21 pm

Filed under First Sale

Microsoft Corp. v. Big Boy Distribution LLC, et al., 07-80296-CIV, 2008 WL 5100849 (S.D. Fla Dec 3, 2008).

Via their Ireland affiliate, Microsoft distributed software in Jordan through Educational Solutions and Technological Development, Inc (“EdSol”). The Kingdom of Jordan’s Ministry of Education acquired a license from EdSol to use Microsoft’s Student Media software for its faculty, staff and students. According to the Ministry’s license, it was not authorized to transfer its license to other users except under limited circumstances, and only with Microsoft’s written consent.

The Court found that, according to non-contradicted evidence presented by Microsoft in support of its motion for summary judgment, Big Boy imported approximately 10,000 units of Student Media software, obtained from the Kingdom of Jordan’s Minister of Education, and then sold the copies to non-student end users in the United States.

In this suit, Microsoft alleged that Big Boy LLC was (Count 1) liable for infringement of Microsoft’s distribution right for the resale of Microsoft software in the U.S.; and (Count 2) liable for infringement of Microsoft’s distribution right for the importation of Microsoft’s software under 17 U.S.C. 602(a). The Court granted summary judgment in Microsoft’s favor on both claims.

In regards to Count 1, Big Boy LLC asserted the first sale doctrine as a defense, “which holds that once a copyright owner consents to the sale of particular copy of his work, he may not thereafter interfere with subsequent sales or distribution of that particular copy.” Microsoft contended that § 109(a) didn’t apply because, although the Student Media software at issue was copyrighted in the United States, the software was manufactured and first distributed overseas.

The Court found that the first sale doctrine only acts a defense to copyright claims that involve domestically made copies of U.S. copyrighted works, and not works that are manufactured overseas. Explained the Court:

The rationale here is that the first sale doctrine protects only resales of works lawfully made “under this title,” a phrase which is generally interpreted to mean works legally made in the United States. That is, the first sale doctrine has no application to copyrighted works manufactured abroad because such works are not made “under this title.” See Parfums Givenchy, Inc. v. Drug Emporium, Inc., 38 F.3d 477, 481-92 (9th Cir.1993); Swatch SA v.. New City, Inc., 454 F.Supp.2d 1245 (S.D.Fla.2006) (Huck, J.) (because Swatch watches were manufactured and first sold abroad, defendant’s importation of watches violated Swatch’s right to prevent importation under 602(a).

Big Boy LLC further asserted that they they were not bound by the terms of Microsoft’s distribution license, because the Jordanian Ministry of Education never entered Microsoft’s licensing agreement. The Court conducted an evaluation of the contract, finding that Big Boy was bound by the terms of the agreement. (Somewhat surprisingly, the Court used U.S. law to evaluate the contractual defense. I’m curious if there were choice of law provision in Microsoft’s licensing agreement with the Kingdom of Jordan.)

The Court also granted summary judgment for Microsoft in regards to their second claim, finding that the importation of the software, as an act in and of itself, infringed Microsoft’s 106(3) right via 17 U.S.C. § 602(a).

Documents:

Counsel: