Copyright Exhaustion Rationales and Used Software

Author:Antoni Rubí Puig
Position:Senior Lecturer of Civil Law at Universitat Pompeu Fabra (Barcelona, Spain)

This article aims to provide courts and policymakers with an analytical framework that, building upon the traditional rationales of IP exhaustion doctrine, identifies factors which advocate for a modulation or flexibilization of the role of exhaustion in copyright law. Factors include (i) the personal features of acquirers of copies of copyrighted works, distinguishing between consumers and... (see full summary)

Copyright Exhaustion Rationales and Used Software
A. Exhaustion as a structural
limitation to aftermarket control
1 The right of distribution plays a substantial role in
the exploitation of intellectual property assets and
in the commercialization of works protected by cop-
yright law. The right of distribution basically allows
rightholders to control the introduction of tangi-
ble embodiments of a work into the market and, in
this regard, supplements the right of reproduction
in cases where the act of reproduction has occurred
outside the EU or where the origin of the infringing
copies is unknown.
Obvious as it may be, this right is
not unrestricted: among other limitations, once the
rightholder authorizes the transfer or transfers own-
ership of a copy of the work or the medium in which
 
the acquirer from reselling the copy in the aftermar-
schöpfung, épuisement du droit de mise en circulation,
agotamiento del derecho de distribución) and of other
intellectual property rights limits rightholders’ abil-
ity to monitor and control purchasers’ conduct in re-
lation to copies of a protected work or products in
which the copies have been installed.
Article 4(2) of the Directive 2001/29/EC of 22 May
2001 on the harmonization of certain aspects of cop-
yright and related rights in the information soci-
establishes the general rule providing for the
regional exhaustion of the right of distribution in
the European Economic Area (EEA).3 In the case of
software copies, which are the focus of this article,
Article 4(2) of the Directive 2009/24/EC of the Eu-
ropean Parliament and the Council of 23 April 2009
Copyright Exhaustion Rationales
and Used Software
A Law and Economics Approach to Oracle v. UsedSoft
by Antoni Rubí Puig, Senior Lecturer of Civil Law at Universitat Pompeu Fabra (Barcelona, Spain)
© 2013 Antoni Rubí Puig
Everybody may disseminate this ar ticle by electronic means and m ake it available for download under the terms and
conditions of the Digita l Peer Publishing Licence (DPPL). A copy of the license text may be obtaine d at http://nbn-resolving.
de/urn:nbn:de:0009-dppl-v3-en8 .
Recommended citation: Antoni Rubí Puig , Copyright Exhaustion Rationa les and Used Softwar e: A Law and Economics
Approach to Oracle v. UsedSof t , 4 (2013) JIPITEC 3, 159
Keywords: Exhaustion, Law and Economics, Ownership Rationale, Information Costs
of complexity of the acquired goods and their pros-
pects of productive uses and interoperability; (iv) the
role of other exclusive rights in providing righthold-
ers with indirect control over uses of the copies in the
aftermarket; (v) the impact of post-sale restraints in
preventing opportunism in long-term contracts and
in reducing deadweight losses created by IP pricing;
and (vi) the temporal scope of post-sale restraints.
After setting out this analytical framework, the ECJ
Judgement in Oracle v. UsedSoft is discussed.
Abstract: This article aims to provide courts
and policymakers with an analytical framework that,
building upon the traditional rationales of IP exhaus-
tion doctrine, identifies factors which advocate for a
modulation or flexibilization of the role of exhaus-
tion in copyright law. Factors include (i) the personal
features of acquirers of copies of copyrighted works,
distinguishing between consumers and commercial
users; (ii) whether post-sale restrictions have been
adequately communicated to acquirers and have
been agreed in the contract or license; (iii) the degree
Antoni Rubí Puig
on the legal protection of computer programs4 cod-
program by the copyright owner or with her con-
sent shall exhaust the distribution right of that copy
within the European Community (EC), i.e. the EEA.5
According to these provisions, transferring owner-
ship of a copy exhausts the distribution right in re-
Yet from a broader analytical standpoint, exhaus-
tion reduces rightholders’ control over aftermarket
activity by acquirers or third parties in relation to
Both traditional and law and economics scholarship
has advocated the limitation of monitoring and con-
trolling powers over further distribution of a copy-
righted work, its copies and the products into which
the work is incorporated, and has endorsed exhaus-
tion as a sound and socially desirable policy for copy-
right markets. First, without exhaustion of the distri-
bution right, ordinary dealings in the market would
frequently give rise to copyright infringement unless
the rightholder had authorized them in advance.6
Traditional foundations of exhaustion highlight that
markets for copyrighted works would be seriously
affected if their participants lacked the minimum
security that common events such as a consumer
sale implied a potential liability risk for copyright
infringement, or if the distribution rightholder had
the opportunity, at any time, to seek an injunction
and paralyze any business by a third party that con-
sisted in introducing copyrighted copies into cir-
culation.7 In this scenario, exhaustion of the dis-
tribution right stands as the legal solution to the
transaction costs and risks of hold-up that the need
for the rightholders’ consent would involve for such
normal mass behaviours in the market. Second, ex-
haustion of copyright involves several positive ex-
economics literature.8
4 However, application of the exhaustion doctrine is
not without social costs. To put it simply, exhaustion
prevents parties from including some covenants and
conditions in sales and other transfer agreements,
and freedom of contract is thus restricted. In this
vein, the doctrine has been heavily criticized from
the standpoint of economic analysis of competition
   
and pro-competitive effects of vertical restraints
  -
cient price discrimination. Extensive literature on
strictions – or, in general terms, the ability to con-
trol post-commercial activities – reduce the need
  -
ing IP assets.
5 The goals of this article are threefold: 1) to present
a critical assessment of the traditional foundations
ordinarily associated to the doctrine with costs that
arise in particular distribution or marketing con-
texts; 2) to provide an analytical framework for ex-
amining issues related to the exhaustion of the right
a lower scope for exhaustion in some settings; and
3) to apply this analytical framework to ECJ Judg-
ment of 3 July 2012 in Oracle v. UsedSoft. In pursuing
these goals, the article is organized as follows: Sec-
tion B surveys the positive external effects that the
doctrine of exhaustion may have in markets for cop-
yrighted works; Section C further describes the ra-
 
to support the exhaustion of the distribution right;
Section D critically assesses these traditional ration-
ature and builds an analytical framework that may
help decision-makers in matters concerning copy-
right exhaustion; Section E applies this framework
to the ECJ Judgment in Oracle v. UsedSoft
Section F provides a summary of the article’s main
B. Spillovers of exhaustion
Copyright exhaustion entails substantial positive ex-
cation for the enactment or keeping in force of rules
that purport to reduce or eliminate rightholders’
control of aftermarkets.9
I. Creation of secondary markets
7 The doctrine of exhaustion of copyright allows the
creation of secondary markets for legal copies and
the development of alternative distribution models
outside rightholders’ control.10 Thrift stores, book-
stores, public libraries and websites like eBay de-
pend to some extent on the previous exhaustion of
the distribution right on the products or works that
they offer in the market. The immediate social con-
sequence of these alternative distribution systems,
outside rightholders’ control, is greater public access
to works. Moreover, the existence of these alterna-
tive systems increases competition in the primary
market and encourages rightholders to improve or
update their products.11 In this regard it is common
for sellers of a copyrighted work in the primary mar-
ket to put new versions of the same product into cir
culation – such as remastered CDs, DVDs with new
content or new versions of computer programs – in
order to compete with those in the secondary mar-
ket offering lower quality copies or copies with less

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