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Drafted with special attention to recent changes in U.S. Copyright Law, especially but not limited to those outlined in the following case:
628 F.3d 1175
United States Court of Appeals,
Ninth Circuit.UMG RECORDINGS, INC., a Delaware corporation, Plaintiff–Counter–Defendant–
v.
Troy AUGUSTO, an individual doing business as Roast Beast Music Collectables doing business as Roastbeastmusic, Defendant–Counter–Claimant–
No. 08–55998.
Argued and Submitted June 7, 2010.Filed Jan. 4, 2011.
Synopsis
Background: Copyright owner brought copyright infringement action against seller of owner's promotional CDs, which were sent to music industry insiders by owner. Seller then brought a counter-claim against copyright owner alleging a violation of the Digital Millennium Copyright Act (DMCA). The United States District Court for the Central District of California, S. James Otero, J., 558 F.Supp.2d 1055, granted in part and denied in part parties' motions for summary judgment. Copyright owner appealed.
Affirmed.
West Headnotes (5)Collapse West Headnotes
Court of Appeals reviews de novo a grant of summary judgment and may affirm on any ground supported by the record.
To establish a prima facie case of copyright infringement, a plaintiff must show (1) ownership of a valid copyright and (2) violation by the alleged infringer of at least one of the exclusive rights granted to copyright owners by the Copyright Act. 17 U.S.C.A. § 501(a).
“First sale doctrine,” which provides that the owner of a copy or phonorecord lawfully made under the Copyright Act, or any person authorized by such owner, is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy or phonorecord, applies not only when a copy is first sold, but when a copy is given away or title is otherwise transferred without the accouterments of a sale. 17 U.S.C.A. § 109(a).
Copyright owner who transfers title in a particular copy to a purchaser or donee cannot prevent resale of that particular copy. 17 U.S.C.A. § 109(a).
Copyright owner did not create license in recipients of its promotional CDs, but rather conveyed title to those recipients, precluding owner's infringement action against recipient arising from subsequent sale of promotional CD; owner dispatched promotional CDs to recipients without any prior arrangement as to those copies and without any attempt to track recipients' use or disposition, “Promotional Use Only–Not for Sale” label on CDs did not even purport to create any license, and more detailed statement, providing that recipient's acceptance of CD constituted agreement to license, did not provide any means for recipients to communicate such acceptance. 17 U.S.C.A. § 109(a); 39 U.S.C.A. § 3009.
Attorneys and Law Firms
*1176 Russell J. Frackman, Mitchell Silberberg & Knupp, LLP, Los Angeles, CA, for the plaintiff, counter-defendant, appellant.
Joseph C. Gratz, Keker & Van Nest, LLP, San Francisco, CA, for the defendant-counter-claimant-
Robert W. Clarida, Cowan, Liebowitz & Latman, P.C., New York, NY, Jason Schultz, Samuelson Law, Technology & Public Policy Clinic, Berkeley, CA, for the amici curiae.
Appeal from the United States District Court for the Central District of California, S. James Otero, District Judge, Presiding. *1177D.C. No. 2:07–cv–03106–SJO–AJW.
Opinion
OPINION
CANBY, Circuit Judge:
UMG Recordings appeals the district court's grant of summary judgment in favor of defendant Troy Augusto on UMG's claim of copyright infringement in violation of § 501 of the Copyright Act, which entitles copyright owners to institute an action for infringement of the exclusive right to distribute copies of the copyrighted work. See 17 U.S.C. §§ 501(a), (b), 106(3) (2006). The copies in issue comprise eight specially-produced compact discs, each embodying a copyrighted sound recording. UMG, the copyright owner, used the discs solely for marketing purposes, sending them unsolicited to individuals such as music critics and radio disc jockeys. Although Augusto was not one of those individuals, he managed to obtained the discs from various sources. He later sold them at auction, an act which UMG contends infringed its exclusive right to distribute the discs.
Augusto asserts that UMG's initial distribution of the discs effected a transfer of ownership of the discs to the recipients, rendering the discs subject to the “first sale” doctrine, which permits one who has acquired ownership of a copy to dispose of that copy without the permission of the copyright owner. See id. § 109(a). UMG argues that the statements on the discs and the circumstances of their distribution granted only a license to each recipient, not a transfer of ownership (or “sale”) of the copy. Absent a sale, UMG remained the owner of the discs and, accordingly, the defense of the first sale doctrine would be out of Augusto's reach. We conclude that the mailing indeed did effect a sale of the discs to the recipients for purposes of the first sale doctrine, and we affirm the order of the district court.
BACKGROUND AND PROCEDURAL HISTORY
The material facts of the case are undisputed. UMG is among the world's largest music companies. One of its core businesses is the creation, manufacture, and sale of recorded music, or phonorecords, the copyrights of which are owned by UMG.1 These phonorecords generally take the form of compact discs (“CDs”).
Like many music companies, UMG ships specially-produced promotional CDs to a large group of individuals (“recipients”), such as music critics and radio programmers, that it has selected. There is no prior agreement or request by the recipients to receive the CDs. UMG does not seek or receive payment for the CDs, the content and design of which often differs from that of their commercial counterparts. UMG ships the promotional CDs by means of the United States Postal Service and United Parcel Service. Relatively few of the recipients refuse delivery of the CDs or return them to UMG, and UMG destroys those that are returned.
Most of the promotional CDs in issue in this case bore a statement (the “promotional statement”) similar to the following:
This CD is the property of the record company and is licensed to the intended recipient for personal use only. Acceptance of this CD shall constitute an *1178 agreement to comply with the terms of the license. Resale or transfer of possession is not allowed and may be punishable under federal and state laws.
Some of the CDs bore a more succinct statement, such as “Promotional Use Only—Not for Sale.”2
Augusto was not among the select group of individuals slated to receive the promotional CDs. He nevertheless managed to acquire numerous such CDs, many of which he sold through online auctions at eBay.com. Augusto regularly advertised the CDs as “rare ... industry editions” and referred to them as “Promo CDs.”
After several unsuccessful attempts at halting the auctions through eBay's dispute resolution program, UMG filed a complaint against Augusto in the United States District Court for the Central District of California, alleging that Augusto had infringed UMG's copyrights in eight promotional CDs for which it retained the “exclusive right to distribute.” The district court granted summary judgment in favor of Augusto, and UMG appealed. We have jurisdiction of the appeal pursuant to 28 U.S.C. § 1291.
STANDARD OF REVIEW
1We review de novo a grant of summary judgment. See Bagdadi v. Nazar, 84 F.3d 1194, 1197 (9th Cir.1996). We may affirm on any ground supported by the record. See Video Software Dealers Ass'n v. Schwarzenegger, 556 F.3d 950, 956 (9th Cir.2009).
While it is an open question as to whether the plaintiff or defendant bears the burden of proving the applicability of the first sale defense, see
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