Adobe Systems, Inc. v. Christenson

If a copyright holder challenges a first sale defense on the grounds that the copyrighted material was licensed and not sold, the burden shifts to the copyright holder to prove so, instead of the individual raising the affirmative defense bearing the burden of satisfying the statutory requirements.

Joshua Christenson sold Adobe products and software on his website after acquiring the software from a third-party distributor. Adobe Systems, Inc. (“Adobe”) brought suit against Christenson for copyright and trademark infringement. In response, Christenson raised a first sale defense to the copyright claims. Both parties filed motions for summary judgment, and Christenson’s motion was granted with regards to the copyright claim. The district court determined that Christenson did purchase the software and then sold it to other individuals, and that the burden shifted to Adobe to prove that it licensed and did not sell the software in dispute. On appeal, the Ninth Circuit found that Adobe had a prima facie case for copyright infringement and that Christenson’s actions did not fall under the narrow exception of first sale. The panel held that the principle that an individual bringing an affirmative defense bears the burden of satisfying the statutory requirements was applicable when a first sale defense is raised. The panel also found that when the copyright holder alleges that the individual raising the first sale defense did not buy the material and that it was licensed, the burden shifts back to the copyright holder to establish that there was a license or that no sale occurred. The panel further held that Christenson successfully discharged his burden, and that Adobe failed to prove that it licensed and did not sell the software; therefore the panel upheld the district court’s grant of Christenson’s motion for summary judgment on the copyright infringement claim. The panel also affirmed the district court’s grant of Christenson’s motion for summary judgment on the trademark claim, finding that Christenson’s use of trademarks was nominal and was used to identify the products. AFFIRMED.