What follows are four letters related to the case of Timothy S. Vernor versus Autodesk, now underway in US District Court in Seattle. Copies of the letters were given to AECnews by Vernor. We have added hyperlinks where relevant.
As I read these letters, I get the sense that both parties are talking by each other, not to each other. Vernor relies on the First Sale Doctrine and perceives violations of the Digital Millenium Copyright Act, while Autodesk's lawyer Andrew S. MacKay relies on the software license agreement. As other commentators have stated, this does not seem to be an area of settled law, and I think software vendors would prefer it to stay unsettled.
--RSN
Letter to Timothy Vernor from Autodesk Lawyer Andrew S. MacKay Dated May 25, 2007
Dear Mr. Vernor:
This firm represents Autodesk, Inc. (“Autodesk”) in connection with investigating instances of unauthorized duplication and/or distribution of its proprietary software products. I understand that you have submitted a Counter-Notice to eBay regarding cancellation of Item Number 7151105209 for AutoCAD, Release 14 software. It also appears that you are in the business of selling items on auction web sites, such as eBay, for your customers. In your Counter-Notice, you certify under penalty of perjury that your listing of Autodesk software does not involve infringing material or use. I write to put you on notice of the fact that this is incorrect.
Autodesk software is licensed, not sold. When your customer purchased the package of AutoCAD, Release 14 software in question, the customer purchased a license, or a limited light, to use the software. The limiting terms of the license are set forth in the Autodesk Software License Agreement (the “Agreement”), which provides that Autodesk software licenses are "nontransferable," meaning that they cannot be sold or transferred by any other means. Thus, your attempted sale of Autodesk software violates the Agreement. Actions in violation of the Agreement also constitute copyright infringement.
By submitting the Counter-Notice, you have consented to jurisdiction in the federal court located here in the Northern District of California. Rather than simply filing suit against you here and obtaining judgment, which we would then have enforced in Washington, I thought I would provide you with an opportunity to remove the listing for Autodesk software voluntarily. I suspect you may have been unaware of the licensing restrictions involved. If you cooperate fully, we will be able to avoid litigation.
Please advise me of your intentions by the end of the month.
Very truly yours,
Andrew S. MacKay
Letter to Autodesk from Timothy S. Vernor Dated June 11, 2007
Dear Sirs,
On multiple occasions you have used eBay’s VERO program to have my auction listings ended. The item I am selling is the full retail version. It is not a copy, an academic version, OEM version or any other version that would be prohibited to sell.
The first-sale doctrine is a limitation upon copyright that was recognized by the U.S. Supreme Court in 1908 and subsequently codified in the Copyright Act of 1976, 17 U.S.C. § 109. The doctrine of first sale allows the purchaser to transfer (i.e. sell or give away) a particular, lawfully made copy of the copyrighted work without permission once it has been obtained.
I have never installed this software and have never agreed to any End User License Agreement. Furthermore your EULA terms are not disclosed until after the sale. EULA terms imposed after the sale, if not disclosed prior to the sale, are unenforceable.
That means you couldn't possibly have a good faith belief as required by the Digital Millennium Copyright Act for shutting down the auction and are therefore liable for damages under USC 512(f).
Misrepresentations: Any person who knowingly materially misrepresents under this section—that material or activity was removed or disabled by mistake or misidentification, shall be liable for any damages, including costs and attorneys’ fees, incurred by the alleged infringer, by any copyright owner or copyright owner’s authorized licensee, or by a service provider, who is injured by such misrepresentation, as the result of the service provider relying upon such misrepresentation in removing or disabling access to the material or activity claimed to be infringing, or in replacing the removed material or ceasing to disable access to it.
There have been many companies that have had a federal lawsuit filed against them and settled in the sellers favor or were ordered to pay damages to eBay sellers. The list includes Major League Baseball, Disney, United Media and many more. A partial list with full details can be found at http://www.tabberone.com/Trademarks/HallofShame/HallOfShame.shtml.
I demand you to immediately notify eBay’s VERO department of your mistake in ending auctions 300106808004, 300106327216, 300107073543 & 300116914849. Failure to do so or any further interference will result in immediate legal action and you will be found to have acted in violation of the Digital Millennium Copyright Act and ordered to pay damages.
Sincerely,
Timothy S. Vernor
Letter to Autodesk Lawyer Andrew S. MacKay from Timothy Vernor Dated June 15, 2007
I am writing to follow up my communication to you via mail on 6/11/07. Since I have not heard a response I wanted to further explain my position.
I do not have a license, agreement or contract with Autodesk, Inc. Under the first sale doctrine and U.S. Copyright law I am legally entitled to sell used legal retail copies of AutoCAD software. I know you clearly understand this but this issue must be communicated to your client, AutoCAD.
This is not a negotiation on whether I am allowed to sell this item, but about the damage your client caused when they violated the Digital Millennium Copyright Act to have my eBay listings ended. This was done under penalty of perjury.
eBay informs Intellectual Property owners that are seeking to have items removed from the site that repeat violators will have their accounts suspended. Your client reported me on at least five occasions. My eBay account has been restricted and I am no longer able to list items for sale on the site. I have exhausted the appeals process and the only way I can have the restriction lifted is for your client to notify eBay of their mistake. I make the majority of my income from sales on the eBay site. The longer this takes, the more financial damage to my business that is incurred.
In my research I have found many times where suit has been filed in Federal Court by eBay sellers against organizations that have removed listings from the eBay site. I can tell you I have never found a case that has gone to trial. They have all been settled in the eBay seller’s favor for an “undisclosed amount” and the willingness of the intellectual property holder to notify eBay of their mistake and promise never to take such action again.
I also do not need to remind you that this is not a contract dispute. This case will fall under Tort law which allows for Punitive Damages. There is really no need to discuss this now. There will be plenty of time to assess the damages once my eBay account is reinstated.
I also do not need to remind you that if I am forced to hire an attorney and file a federal case these damages will skyrocket.
Thank you for your immediate attention to this issue. I look forward to hearing from you as soon as possible.
Sincerely,
Timothy S. Vernor
Letter to Timothy S. Vernor from Autodesk Lawyer Andrew S. MacKay Dated June 29, 2007
Dear Mr. Vernor:
As you know, this firm represents Autodesk, Inc. (“Autodesk”) in connection with investigating instances of illegal duplication and/or distribution of its proprietary software products.
This responds to your June 11 and 15, 2007 letters regarding the numerous auctions you have posted on eBay in an attempt to sell packages of AutoCAD, Release 14 software. You express concern over the apparent restriction or suspension of your account with eBay. We have not asked eBay to take action against your eBay account. Perhaps the action with respect to eBay resulted from other auctions you have placed. In any event, the action has not resulted from any request from us. This firm does not represent or have any control over eBay.
You assert that with respect to the recent auctions for Autodesk software you have placed that you had no knowledge of the provision of the Autodesk Software License Agreement (“ASLA”) that prohibits transfer of the software license. This is incorrect. Our past correspondence and telephone conversation in 2005 clearly put you on notice that the Autodesk software license is a “nontransferable license.” You have clearly been put on notice of this restriction on transfer; you cannot genuinely claim ignorance.
Any rights you have cannot exceed the rights of the original licensee. Autodesk specifically delineates the licensee’s rights in the ASLA. If you claim the license has been transferred to you, the original licensee was without legal authority to transfer the software license. If you claim that you are acting as a broker for the original licensee, the licensee is still without legal authority to transfer the license. In any event, you have been on notice of this license restriction for over two years and are deemed to have knowledge of this restriction, even if you were the original purchaser of the software products in question.
Please refrain from any further attempts at the unauthorized sale of Autodesk software. If you do not, then I will have no choice but to advise my client to take further action regarding this matter.
Very truly yours,
Andrew S. MacKay
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