Don't Judge a Sale by its License: New Perspectives on Software Transfers Under the First Sale Doctrine in the United States and Europe

University of San Francisco Law Review, Vol. 36, pp. 1-107, 2001

107 Pages Posted: 6 Aug 2009

See all articles by Aaron Xavier Fellmeth

Aaron Xavier Fellmeth

Arizona State University (ASU) - Sandra Day O'Connor College of Law

Lothar Determann

Baker & McKenzie LLP; Freie Universit├Ąt Berlin; Berkeley School of Law; University of California Hastings College of the Law

Date Written: 2001

Abstract

Section 109(a) of the Copyright Act, known as the First Sale Doctrine, protects the lawful owner of a copy of a copyrighted work from infringing the copyright in that work by reselling the copy. The First Sale Doctrine constitutes a well established principle of United States and European intellectual property law. Nearly every commercial transfer of a copy of software is accompanied by an explicit license agreement which seeks to impose restraints on the use and resale of the software. Thus, the applicability vel non of the First Sale Doctrine affects virtually every software transaction. The consequences of this legal doctrine penetrate the very core of public policy on competition and consumer protection in the software market.

This Article reviews the origins and functions of the First Sale Doctrine as it applies to software and attempts to clarify the circumstances under which a software transfer constitutes a 'first sale.' This Article revisits the concepts of sales and ownership in order to avoid the common misconception that by labeling a transaction a 'license grant,' the final word has been spoken on whether a sale of a software copy has in fact occurred. By eschewing the common judicial dichotomization of a 'license' of software and a 'sale' of software, this Article shows that the form of the license is almost uniformly epiphenomenal. A software transfer must always involve a license in some form. This Article also examines the application of the First Sale Doctrine to software licensing agreements in the European Community.

Keywords: first sale doctrine, license, software

Suggested Citation

Fellmeth, Aaron Xavier and Determann, Lothar, Don't Judge a Sale by its License: New Perspectives on Software Transfers Under the First Sale Doctrine in the United States and Europe (2001). University of San Francisco Law Review, Vol. 36, pp. 1-107, 2001, Available at SSRN: https://ssrn.com/abstract=1443346

Aaron Xavier Fellmeth (Contact Author)

Arizona State University (ASU) - Sandra Day O'Connor College of Law ( email )

Box 877906
Tempe, AZ 85287-7906
United States

Lothar Determann

Baker & McKenzie LLP ( email )

660 Hansen Way
Palo Alto, CA 94304-1044
United States
6508565533 (Phone)

Freie Universit├Ąt Berlin ( email )

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Germany
+49 (0) 30 838-70000 (Phone)

Berkeley School of Law ( email )

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United States

University of California Hastings College of the Law ( email )

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San Francisco, CA 94102
United States

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