Sale of Secondhand Software: Vernor v. Autodesk round II

Autodesk makes design software, copies of which were bought by Cardwell/Thomas Associates, an architectural firm in Seattle. Mr. Vernor bought used copies of the software at a sale of the architects’ office equipment. When he put them up on eBay, Autodesk issued several take-down notices claiming that the proposed sales infringed Autodesk’s copyright in its software. Vernor contested each notice and finally brought an action for declaratory judgment against Autodesk. In round one, Autodesk moved to dismiss Vernor’s complaint, but the court found that Autodesk’s right to control the disposition of used copies had been exhausted upon the initial sale to the architectural firm. Vernor v Autodesk, 555 F. Supp. 2d 1164 (W.D. Wash. 2008). On September 30, 2009, a year and a half later, the court issued an order on the parties’ cross-motions for summary judgment. (Case 2:07-cv-01189-RAJ.) The opinion reviews the history of the case, discusses some intervening decisions, and reviews and reaffirms the reasoning of the original decision. In short, when the architectural firm acquired the software copies, it acquired ownership of them and was free to dispose of them as it pleased under the first sale doctrine codified in § 109 of the Copyright Act, despite provisions in the license forbidding the transfer of the software to others. Given the conflicting decisions noted by the Vernor opinion even between the Ninth Circuit’s precedents, the debate over the exhaustion of copyright in software copies is likely to go for additional rounds at the appellate level.