What Counsel Would You Have Given: UMG Recordings v. Augusto?

When asked in polite company what this Kat does for a living, he tries his best to explain what IP is all about. Not infrequently, there is a retort at some point by the interlocutor about the exotic nature of IP practice. Contrast that with a discussion about contracts and contract law. Generally speaking, everyone has a rough idea about what a contract is all about--the parties agree and there is a written contract that sets this out, such that the parties more or less have a reasonable expectation what they can expect from each other. IP is esoteric, even inpenetrable, while contracts are part and parcel of our daily lives.

I have found that, in reality, the situation may sometimes be quite the opposite. People have an instinctive notion of what is protected by copyright, namely, you cannot copy the work of someone else with that person's permission. If you do so, or try to make some changes without altering the basic character of the underlying work, there is little uncertainty about what you are doing. You are simply prepared to take the risk of copyright infringement. On the contrary, contracts are often a lot more uncertain about what they allow or forbid. In part this is due to the indeterminacy of language, in part it is due to the absence of a clear legal position on multiple provisions of the contract. Both uncertainty and risk must be taken into account. The upshot is that, from the point of view of risk, persons may sometimes have a better sense of when they are taking the risk of copyright infringement than breach of contract.

I reflected on this while reading a virtually fresh-off-the-press copy of a judgment rendered by the (IP)-influential United States Circuit Court of Appeals for the Ninth District in the case of UMG Recordings, Inc. v Troy Augusto, No. 08-55998 (January 4, 2011) here. In brief, the Court describes the case as follows:
"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 [via eBay.com--NJW], an act which UMG contends infringed its exclusive right to distribute the discs."
Augusto argued that the initial distribution of the promotional copies constituted a transfer of ownership in the discs; as a result, the first sales doctrine applies. This doctrine provides that a person who acquires ownership of a copy of a work is permitted to dispose of that copy as he sees fit without requiring the permission of the copyright owner. UMG (being Universal Music Group, described as being among the world's largest music companies, here ) countered with the argument that the distribution of promotional copies was a mere grant of of licence and, as such, the first sale doctrine did not apply in favour of Augusto. The Court of Appeals agreed with the ruling of the district court and affirmed the decision that a transfer of ownership of the discs had taken place.

What I want to focus on is the promotional statement that accompanied the discs in, more or less, the following language:
"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 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.”

Put yourself in the position of counsel for a recording company and that you are presented either form of the promotional statement. You are asked: "Will one or both of these forms of promotional statement provide us with a reasonable basis to claim that a licence, and not a sale of the disc, has taken place?" Assume that you are not given a $50,000 budget to research the question and that you are requested to give your advice by the end of the day. Hand over heart, how many of you would advise that the more reasonable construction is that a licence has been created?

You recall the cases on shrink-wrap licences and the various decisions that have
held that a transaction to use mass-distributed software has been construed as a licence (even, as I recall, when language referring to "sale" may sometimes appear). You even reach out to offer a bit of policy by analogy: just as the courts are loathe to apply the copyright law in such a way as to competely overturn the manner in which mass-market software is commercialized, so too will they avoid overturning 'business as usual' in the musical disc business, battered as it is by the challenge of the digital world. Yes, you might consider some or all of these points--and you would, in the eyes of the Ninth Circuit, be wrong.

Consider the court's reasoning, as it noted as follows:
"Our conclusion that the recipients acquired ownership of the CDs is based largely on the nature of UMG’s distribution. First, the promotional CDs are dispatched to the recipients without any prior arrangement as to those particular copies. The CDs are not numbered, and no attempt is made to keep track of where particular copies are or what use is made of them. As explained in greater detail below, although UMG places written restrictions in the labels of the CDs, it has not established that the restrictions on the CDs create a license agreement."
Further on, the Court adds additional observations:
"There are additional reasons for concluding that UMG’s distribution of the CDs did not involve a consensual licensing operation. Some of the statements on the CDs and UMG’s purported method of securing agreement to licenses militate against a conclusion that any licenses were created. The sparest promotional statement, “Promotional Use Only—Not for Sale,” does not even purport to create a license. But even the more detailed statement is flawed in the manner in which it purports to secure agreement from the recipient.... It is one thing to say, as the statement does, that “acceptance” of the CD constitutes an agreement to a license and its restrictions,but it is quite another to maintain that “acceptance” may be assumed when the recipient makes no response at all. This record reflects no responses."
If that is not clear enough for the reader, consider that the district court granted the summary judgment motion on different grounds. As the Court of Appeal itself states:
"The district court based its decision in favor of Augusto in part on somewhat different grounds from those we have adopted. The district court first held that the licensing language in the detailed promotional statement did not create a license because it lacked any provision for UMG to regain possession of the CD", 
relying on a prior decision of the Ninth Circuit (United States v Wise, 550 F.2d. 1180 (9th Cir 1977). No problem here for the Court. Wise and its progeny apply to software users who pay for to acquire products; that is "a very different position from that held by the recipients of UMG's promotional CD's." Indeed, one wonders how the lower court did not see this "obvious" distinction (the Court also found that the recipients could freely distribute the discs under an indiosyncratic piece of U.S. legislation, the Unordered Merchandise Statute, but let's leave that discussion for legal salons in San Francisco and New York.)

When all of this is said and done, this Kat renews his question: how many of you lawyers out there, faced with a similar siutation and requested to give advice in real time, would have counselled your client in accordance with the decision of either of these courts? Copyright law, except perhaps at the margin of giving a view on issues of infringement when non-literal copying is involved, may be a more certain excercise than the challenge of applying contractual provisions of sale and licensing to the disposition of IP rights.
What Counsel Would You Have Given: UMG Recordings v. Augusto? What Counsel Would You Have Given: UMG Recordings v. Augusto? Reviewed by Neil Wilkof on Saturday, January 08, 2011 Rating: 5


  1. In the Ninth Circuit, some might say that it is a matter of quantity, rather than quality, of IP cases. This case exemplifies the confusion between a contract and a licence (or license). (I wonder whether the discussion about licences was a bit off the point in any case. Listening to the CD would not have engaged copyright.) However, in answer to the IPKat's question, I would have had a slight doubt about the wording "resale is not allowed". If resale had to be fobidden, you might say, was this not in substance a transfer of ownership? But whatever else it was, the initial transfer of possession by UMG was not a sale, stricto sensu, so "resale" would in any case be a misnomer. The transfer of possession was a bailment, and the case was wrongly decided. Better wording on the CDs should squash this decision.

  2. From discussion with a US IP lawyer, I understand that US laws on the rule against derogation, exhaustion of rights etc have taken a different direction to English laws, although some of the terminology is confusingly similar.

    Having said that, my instinctive view is that the record company has not done enough. It could have set up proper contracts with each recipient. My guess is that the business focus was on getting the product out to influential recipients. Did they (a) even consider legal issues when they did so? Or did they (b) take a business decision that it was more important to make it easy for the influential person to receive and use the product for promotional purposes, than to address legal issues properly (which might have been off-putting to some recipients)? Or did they (c) genuinely believe, in light of careful legal advice, that all they had to do was put these statements on the product and this would given watertight legal protection? I suspect (a) is most likely, (b) is possible, and (c) is unlikely.

    This is, of course, merely speculation. The best marketing departments work closely with the legal department to ensure that all the important "i"s are dotted and "t"s are crossed before a promotional exercise is initiated.

  3. Applying the European approach: The first sale or other contract, transferring the property of the physical carrier embodying the copyrighted work, exhausts this copyright, notwithstanding the parties' intentions (id. ex lege). UMG is transferring the CDs, though not selling them, and that's sufficient. By way of statements, such as "Promotional Use Only—Not for Sale", the record company could not limit or exclude the exhaustion. The right-holder consent is necessary in order to transfer the CDs property, not to exhaust / un-exhaust the copyright. Exhaustion is not an implied license but core IP issue.
    If I were UMG lawyer I'd rather advise the company: 'Do not produce CDs - offer the recordings via the network. No exhaustion for digital recordings downloaded from the networks - notwithstanding the right-holder consent to make a copy (on a CD or otherwise). Or offer rental-lending rights - no exhaustion once again'. If there is not any transfer of the physical disguise, there is not any exhaustion. I'd rather evade 'consensual licensing operation' despite the real time deep pressure.

  4. I suspect that the commercial need drove things - they need to get promo CDs out to reviewers so that they get a positive press and column inches in printed news and online and thereby generate retail sales. The number of promo CDs compared to retail CDs is fairly minimal, so the actual commercial loss (in this one case) is negligible.

    Promo CDs get sent out to plenty of people, the recipients change frequently, and copies sent to publications per se are passed around and shared. Individually marking and tracking promo CDs is time-consuming and costly. It's pretty much impossible to say who received what and when, let alone try to enforce contract terms against the recipients (I note that the action here was against somebody further down the chain). The most practical solution might be some kind of an online distribution channel with tight DRM, but that might not be very popular with journalists.

    The availability of second hand promo material such as CDs is also important for fans since it gives them access to highly desirable products (maybe it's that acoustic version of a particular track) which are not available through the regular retail channel. Heck, I've got plenty of promo CDs at home which I bought from second-hand stores, and they fuelled my enthusiasm for the artists and generated plenty of sales of retail CDs, merchandise and concert tickets.

    Essentially, this is a no-win situation for a record label taking any kind of an aggressive stance - the best option is to embrace the journalists et al and use them to generate a positive press for artists. If they're that bothered about people selling promo CDs then just don't send them out (or at least don't send out so many), use DRM-encumbered media (above), or have special press events (fairly standard in the music industry) and don't distribute physical media.

    Seeking to impose and enforce contract terms on promo CDs would just annoy the journalists and alienate fans. And if people are actually willing to spend money on physical products rather than download tracks online without paying for them then that should be encouraged, even if it doesn't directly generate income for the record label.

    Go into any second hand record shop and you will find vast numbers of promo CDs for sale. It was exactly the same for vinyl. In fact, a quick search on eBay for 'promo CD' gave me just under 38000 results. This is not something that record labels can or should try to control.

    So, it's bad press and a total no-win for the record label.

  5. Well if you were an artist putting out your own CD and trying to sell it on your website and then promo copies turned up on ebay at half price - because some poxy journalist sold it - you'd maybe get frustrated too. I can understand the labels' position here.


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