17.26 COPYRIGHT—AFFIRMATIVE DEFENSE—FIRST SALE

(17 U.S.C. § 109(a))

The defendant contends that [he] [she] [it] is not liable for copyright infringement for [reselling] [redistributing] a particular copy of the plaintiff's copyrighted work because the plaintiff sold or otherwise transferred ownership of that copy. The plaintiff may not claim copyright infringement for subsequent distributions of that particular copy. [The defendant may invoke this ["first sale"] defense only if [he] [she] [it] is an owner of a particular copy of the plaintiff's copyrighted work, and not a licensee.]

If you find that the defendant was an owner of the particular copy of the plaintiff's copyrighted work and that the plaintiff sold or otherwise transferred ownership of that particular copy, your verdict should be for the defendant on plaintiff's copyright infringement claim.

Comment

The first sale doctrine is an affirmative defense to copyright infringement. Bobbs-Merrill Co. v. Straus, 210 U.S. 339, 350-51 (1908) (articulating first sale doctrine); Vernor v. Autodesk, Inc., 621 F.3d 1102, 1107 (9th Cir.2010). The doctrine "allows owners of copies of copyrighted works to resell those copies," including copies lawfully made abroad, by limiting the copyright holder's exclusive distribution right to the first sale. Id. at 1106-07; see also Kirtsaeng v. John Wiley & Sons, 133 S. Ct. 1351, 1358 (2013); Omega S.A. v. Costco Wholesale Corp., 776 F.3d 692 (9th Cir.2015) (holding that watch manufacturer had no infringement cause of action because its rights to control importation and distribution of its copyrighted work expired after authorized first sale); UMG Recordings, Inc. v. Augusto, 628 F.3d 1175, 1179 (9th Cir.2011) ("Notwithstanding its distinctive name, the [first sale] doctrine applies not only when a copy is first sold, but when a copy is given away or title is otherwise transferred without the accouterments of a sale.").

The first sale defense is unavailable to those who have only a license to use the copyrighted work. Vernor, 621 F.3d at 1107. For an analysis of the owner versus licensee distinction, see Adobe Systems Inc. v. Christenson, 809 F.3d 1071, 1078 (9th Cir.2015) (analyzing distinction with respect to computer software); UMG Recordings, 628 F.3d at 1180-
83 (analyzing distinction with respect to recipients of promotional musical recordings); Apple Inc. v. Psystar Corp., 658 F.3d 1150, 1155 (9th Cir.2011) (involving computer software); Vernor, 621 F.3d at 1111 (involving computer software); and United States v. Wise, 550 F.2d 1180, 1183 (9th Cir.1977) (involving motion picture). The Ninth Circuit has yet to decide which party bears the burden of proving the first sale or lack of sale in a civil case. Vernor, 621 F.3d at 1107 n.7.