Re: T-shirt resale

On 02/18/99, Kerry L. Konrad <k_konrad[_at_]stblaw.com> wrote:
>
> Last thoughts on Mirage. Having tried but failed to persuade the
> learned professors Ochoa and Lemley that Mirage could be closely
> read so as not to create a serious risk of liability in the absence
> of resale by the creator of the unauthorized derivative work...

Allow me to clarify my view. I think that there is NOT a serious risk of liability in the absence of resale for at least two reasons: first, no one is going to find out or bother suing you; second, the fair use doctrine. Even if no one buys my argument that 106(2) should NOT be independent from the other rights, I think a modification for personal use IS a fair use, and ought not be held infringing. So I don't disagree with the result you are advocating, just the reasoning.

> -- and accepting the point that, as a matter of strict statutory
> interpretation, Section 106(2) would appear to be independent of Section
> 106(3) (which implies to me however that Mirage was correctly decided
> under the law and the perceived problem arises from the drafting of the
> statute) -- let me propose that the unrestricted sale of a copy of the
> work carries with it an implied license to create derivative works by
> altering the copy sold for personal use. In the textbook hypothetical,
> for example, there would be an implied license to mark it up, which
> would certainly comport with the customary expectations of all of the
> parties involved in the transaction. If I recall correctly, at least
> part of the rationale for Section 117(1) (permitting the owner of a
> lawful copy of a software program to make a copy or adaptation for
> personal use) was the recognition that the user would likely need to
> make additional "copies" in computer memory as a technical matter in
> order to adapt the program to their machine, creating the need for a
> broader exception. Perhaps this could be articulated as a part of or
> a corollary to the judicially-created "first sale" doctrine (which is
> itself a kind of implied right of purchasers/users), and perhaps it
> has been so articulated in the distant past -- I haven't researched it.
> Following this rationale, the resale is infringing because it exceeds
> the scope of the implied license, permitting a principled basis upon
> which to distinguish the Mirage case.

I don't like the implied license rationale, not because I disagree with it [at least in some cases, like the textbook], but because it is too easy to avoid. All the copyright holder has to do is place a restriction in the copyright notice, and the threat returns. I much prefer an interpretation of the statute that doesn't depend on the good graces of the copyright holder. Hence, fair use.

> Let me also propose that the question of whether any damages are
> sustained as a result of the creation of such a derivative work has a
> substantive dimension, going beyond the practical question whether it
> would be cost effective for the copyright owner to enforce its "rights"
> in such instances. Leaving aside all questions of "moral rights," how
> possibly is the copyright owner injured if the work is not resold? Or
> if the single copy of the work is resold, injured beyond what the "first
> sale" doctrine allows? Indeed, if the practice is or becomes widespread
> and every purchaser marks up their personal copy or draws on their
> poster or whatever, how is the copyright owner injured? The de minimis
> concept is more than a declaration of "this is too trivial for us to
> bother with," it's a reflection of the traditional common law principle
> that there can be no remedy without an identifiable injury.

Unfortunately, that reasoning is directly contradicted by the provision for statutory damages in the Copyright Act. The whole point of statutory damages is that the author is entitled to recover something, even if he/she can't prove any actual damages or infringer's profits.

> And to say that there doesn't need to be an injury, that it's enough
> for the copyright owner to want to prevent anyone from altering their
> work and that they have an unqualified statutory right to preserve the
> integrity of every copy of their original work, seems to suggest that
> Section 106(2) already embodies an expansive version of the concept of
> "moral rights," which is counter-intuitive to say the least.

I agree, and so does Judge Easterbrook. That was part of his rationale (in the Lee case) for rejecting the holding in Mirage.

Tyler T. Ochoa
Associate Professor
Whittier Law School
<tochoa[_at_]law.whittier.edu> Received on Fri Feb 19 1999 - 23:07:40 GMT