Like many software publishers Autodesk claims that it sells only
licences to use its software and that those who pay for it do not
necessarily have the right to sell it on. It sued Timothy Vernor,
who was selling legitimate copies of Autodesk software on eBay, for
copyright infringement.
The US District Court for the Western District of Washington has
backed Vernor, though, in his claim that he owned the software and
had the right to sell it on.
The Court said that there were two cases to use as a precedent
and that they clashed fundamentally. It had no choice, it said, but
to follow the earlier precedent, which was a dispute over the
ownership of prints of Hollywood films sold to film stars.
While many of the film copies were explicitly only licensed, the
court had previously found that in one case, involving Vanessa
Redgrave, the agreement had transferred ownership of the print to
the actress. This is called the Wise case.
One major consideration in that was the fact that the studio did
not have the right, as it did in other agreements, to demand the
return of the print.
The Court said that though the issue was complicated, software
agreements were similar enough to those film agreements to act as a
precedent.
"The Autodesk License is a hodgepodge of terms that, standing
alone, support both a transfer of ownership and a mere license,"
said the ruling. "Autodesk expressly retains title to the 'Software
and accompanying materials,' but it has no right to regain
possession of the software or the 'accompanying materials'.
Licensees pay a single up-front price for the software. Autodesk
can require the destruction of the software, but only as
consideration in the later purchase of an upgrade."
"The court concludes that Wise leads to the conclusion that the
transfer of AutoCAD copies via the License is a transfer of
ownership," it said.
The Court said that it had to follow that case's precedent
because it was older than another conflicting ruling, and that it
could not choose a precedent based on the most desirable
policy.
"The court’s decision today is not based on any policy judgment.
Congress is both constitutionally and institutionally suited to
render judgments on policy; courts generally are not," the Court
ruled. "Precedent binds the court regardless of whether it would be
good policy to ignore it."
The Court did say, though, that Autodesk's claims that Vernor's
actions were likely to result in the creation and sale of illegal
copies of its AutoCAD software were not well founded.
"Autodesk’s claim that Mr. Vernor promotes piracy is
unconvincing," the ruling said. "Mr. Vernor’s sales of AutoCAD
packages promote piracy no more so than Autodesk’s sales of the
same packages. Piracy depends on the number of people willing to
engage in piracy, and a pirate is presumably just as happy to
unlawfully duplicate software purchased directly from Autodesk as
he is to copy software purchased from a reseller like Mr.
Vernor."
Vernor had tried to argue that Autodesk's behaviour in suing him
amounted to a misuse of its copyrights. The Court rejected that
claim.
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