Re: Effect of Assignments of IP on Prior Licenses

From: Lemley, Mark <mlemley[_at_]msmail.law.utexas.edu>
Date: Fri, 04 Nov 94 16:54:00 CST

---

>From: cni-copyright
>To: Multiple recipients of list
>Subject: Re: Effect of Assignments of IP on Prior Licenses
>Date: Fri, Nov 4, 1994 1:40PM
>
>Paul Robinson writes, among other things:
>
>The software company is selling right, title and ownership of a piece of
>property, to wit, a software program. There are two parts to this piece
>of property, the physical property itself (the program, documentation,
>masters, source code, film copies of the manuals for printing, etc) and
>the legal rights as a result of copyright or trade secret depending on
>how the product is sold.

Sorry, Paul, in this case you have to blame the software vendors, not the lawyers. The reason your (perfectly logical) analysis of transfers of rights doesn't work is that many software vendors don't *want* their rights to be transferable. By prohibiting transfers in the license agreement, vendors can keep greater control over who gets their software (for example, they can keep it from being sold to competitors), can engage in price discrimination (ie. small companies pay a little, large companies pay a lot), and can expand the market for their programs (since the license trumps the provisions of the "first sale" doctrine in copyright law).

The problem, then, is that your rights under copyright law differ depending on whether software is considered to be "licensed" or "sold." *Should* we treat software like physical property, and consider it to be sold? Quite possibly. It would certainly avoid some silly results [like the fact that if you buy software for a family member for Christmas, you are most likely in breach of the shrinkwrap "license" that accompanies that software]. And some software is considered to be sold, particularly the over-the-counter stuff. But as long as vendors and purchasers agree by license not to transfer the software, we will have this problem.

Mark Lemley
Assistant Professor
University of Texas School of Law
mlemley[_at_]msmail.law.utexas.edu Received on Fri Nov 04 1994 - 23:28:22 GMT