Proof of Specific Licenses Required to Rebut Successful First Sale Defense

Adobe sued Joshua Christenson for copyright infringement when Christenson sold Adobe software on his website without Adobe’s authorization.  Christenson lawfully purchased genuine copies of the Adobe software from a third party distributor.

The Ninth Circuit concisely stated the central issue and controlling law:

Who bears the burden of proving the first sale defense in a software licensing dispute?

While the copyright holder bears the ultimate burden of establishing copyright infringement, the party raising a first sale defense bears an initial burden with respect to the defense. At the summary judgment stage, this burden is discharged by producing evidence sufficient for a jury to find that the alleged infringer lawfully acquired ownership of genuine copies of the copyrighted software. Once this initial burden is satisfied, the burden shifts back to the copyright owner to establish the absence of a first sale, because of a licensing or other non-ownership-transferring arrangement when the copy first changed hands.

(Opinion pdf page 4).

The Ninth Circuit agreed with the district court that Christenson lawfully acquired genuine copies of Adobe’s copyrighted software, but that Adobe failed to produce licensing agreements or other evidence that Adobe retained title to the software when Adobe initially transferred to a third party the copies that Christenson ultimately acquired.

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