About | HeinOnline Law Journal Library | HeinOnline Law Journal Library | HeinOnline

1 Oslo L. Rev. 1 (2014)

handle is hein.journals/oslo1 and id is 1 raw text is: 








Legally Flawed but Politically Sound? Digital

Exhaustion of Copyright in Europe after UsedSoft


Ole-Andreas Rognstad*



Abstract

    The principle of exhaustion, or the first sale doctrine (US), in copyright means that once a copy of a
    work is put on the market with the consent of the right holder he or she will not be entitled to control
    the further distribution of the copy. It is well settled that the exhaustion rule applies to the
    distribution of tangible copies (books, CDs, DVDs etc), but its application to the online context is
    controversial. In the UsedSoft case (case C-128/11) the Court of Justice of the European Union
    nevertheless applied the exhaustion rule of the Computer Software Directive to a situation where
    'used licenses' of computer software were passed on to third parties enabling them to download the
    software from the right holder's website. The article discusses the legal premises and the policy
    implications of the decision, contrasting it also to the ReDigi decision of the US District Court of the
    Southern District of New York.

Keywords: Intellectual property; copyright; distribution right; exhaustion; first sale doctrine; free
    movement of goods and services




1. Introduction

The exhaustion of rights is one of the 'hot topics' of intellectual property (IP) law. The
principle of exhaustion and the equivalent US first sale doctrine go to the very heart of
what IP law is about: a concrete reflection of the trade-off between the interests of the
rights holders and the general public. In the copyright field, exhaustion traditionally
relates to the distribution right, meaning that when a copy of a copyright-protected
work (or other related subject matter) is sold or otherwise put on the market by the
copyright holder or with his or her consent, the right holder may not invoke his or her
exclusive right to control the further distribution of the copy. After the emergence of
digital technology and the Internet, the question arose as to whether or to what extent
exhaustion applies to the online environment. In EU law, the question might have
seemed resolved by the 2001 European Copyright Directive (EUCD), which states that
exhaustion does not occur.1 Yet, the topic has still been subject to discussion after the
adoption of the Directive.2 Furthermore, in 2012 the Court of Justice of the European


* Professor of Law, University of Oslo; email: o.a.rognstad@jus.uio.no. All URLs cited in the following were
last accessed July 1 2014.
1 Directive 2001/29/EC on the harmonisation of certain aspects of copyright and related rights in the
information society [2001] OJ L167/10; see in particular Art 3(3) and recitals 28 and 29 of the preamble.
2 See eg Bernhard Knies, 'Ersch6pfung Online. Die aktuelle Problematik beim On-Demand Vertrieb von
Tontrdgern im Lichte der Richtline zur Informationsgesellschaft' (2002) 51 Gewerblicher Rechtsschutz

What Is HeinOnline?

HeinOnline is a subscription-based resource containing thousands of academic and legal journals from inception; complete coverage of government documents such as U.S. Statutes at Large, U.S. Code, Federal Register, Code of Federal Regulations, U.S. Reports, and much more. Documents are image-based, fully searchable PDFs with the authority of print combined with the accessibility of a user-friendly and powerful database. For more information, request a quote or trial for your organization below.



Short-term subscription options include 24 hours, 48 hours, or 1 week to HeinOnline.

Contact us for annual subscription options:

Already a HeinOnline Subscriber?

profiles profiles most