Adobe Software Infringement Overview
In general, Adobe's software is licensed, not sold, from inception. In order to have validly licensed software you will need to show a proper “chain of title” so to speak. Meaning, you need to show you or your company purchased (“licensed”) their software from a valid and authorized source. If you cannot show that title has passed from Adobe to any distributor, for example, Adobe may find this to be infringing and may come after you. I have found dealing with them that they can be VERY aggressive so dealing with them on your own, or with inexperienced counsel can prove to be a costly mistake.
Types of cases we may accept
- Adobe license audits performed through the Business Software Alliance (BSA is a trade association that may audit your company when Adobe “participates” in the audit as they say).
- Adobe Software Asset Management (SAM)
- “True-Up” – internal self audits may be requested
- Demand letters – selling Adobe software online without authorization (see below)
You may find yourself contractually bound to submit to an audit or the audit may be more along the lines of a “voluntary” audit. While you may be told that the audit is INFORMAL, be careful, the risks of unlicensed software usage can be ENORMOUS and once they have you on the hook and you see the potentially STAGGERING settlement figures they are throwing at you, you may wish you would have hired a copyright lawyer from the outset. Note: Adobe may not be engaging in all of the above audits and I have heard that some of the auditing has ceased, but it is clear as of the date of this blog that audits through the BSA are still ongoing.
Selling Adobe Software without authorization
One type of case that can pop up is if a company or individual is selling software that is not a full retail version of the software. You cannot take software of their that comes bundled with hardware, called OEM, (ex. a printer that comes with an Adobe disc) and try to sell that disc separately. If you do this, you might find they are scanning the internet and you may end up getting a cease and desist letter. To them, this violates Adobe's exclusive rights when selling their copyrighted product separate from the hardware.
Non-exclusive list of Adobe software products
In some cases, you may be charged with copyright infringement from both Autodesk and Adobe (and sometimes Corel). Adobe's software products include both multimedia software, creativity software, and other programs. Most of us know Adobe as the company that allows us to make and read PDF's. However, they have many more products than just the Acrobat reader. Here is a list of known products from Adobe software that could lead to software licensing shortage allegations:
1. Adobe Acrobat 6, 7, 8, and 9 professional software
2. Adobe Acrobat XI
3. After Effects (great software to enhance video editing)
4. Adobe Captivate 5.5,6, 7 software
5. Adobe Creative Suite 2.0, 2.3, 4.0, 5.0, 5.5, 6 design standard software & web premium
6. Adobe Dreamweaver CS5, CS5.5, and CS6 software
7. Adobe Fireworks
8. Flash Catalyst CS5, CS5.5, CS6
9. Adobe Illustrator 8.0, 10.0, CS2, CS3, CS4, CS5, CS6
10. InDesign, CS2, CS4, CS5, CS5.5, CS6
11. Adobe Photoshop 6.0, 7.0, CS2, CS3
If you are being asked to audit one or more of these software products, give us a call at (877) 276-5084.
Adobe Systems Inc. v. Kornrumpf
This is one case that may be cited to you if you are alleged to be infringing their copyrights in the software. In this case, a person sold OEM versions of Adobe software without the accompanying hardware and argued that the first sale doctrine applied and that he was not subject to any license. Both the district court and the 9th Circuit disagreed.
*Copyright is a federal law protection provided to the authors of ‘original works of authorship,' including software programs.” Vernor v. Autodesk, Inc., 621 F.3d 1102, 1106 (9th Cir.2010) (citing 17 U.S.C. §§ 101–103). “The Copyright Act confers several exclusive rights on copyright owners, including the exclusive rights to distribute their works by sale or rental.” (citing 17 U.S.C. § 106(3)). Copyright infringement occurs whenever someone “violates any of the exclusive rights of the copyright owner,” including the exclusive distribution right. 17 U .S.C. §§ 106(3), 501. “The exclusive distribution right is limited by the first sale doctrine, an affirmative defense to copyright infringement that allows owners of copies of copyrighted works to resell those copies.” However, this affirmative defense is unavailable to “those who are only licensed to use their copies of copyrighted works. A software user is a licensee rather than an owner of a copy where the copyright owner:
(1) specifies that the user is granted a license;
(2) significantly restricts the user's ability to transfer the software;
(3) imposes notable use restrictions.”
The Court issued a preliminary injunction.
Key Adobe Cases
Here are some other cases to review if you are involved in a Adobe copyright case:
Adobe Systems Inc. v. Bea's Hive LLC, Southern District of Florida
Apple Inc. v. Psystar Corp., 658 F.3d 1150 (9th Cir. 2011)
Microsoft v. Harmony Computers & Electronics, 846 F. Supp. 208 (E.D.N.Y. 1994)
Sun Microsystems, Inc. v. Microsoft Corp., 188 F.3d 1115 (9th Cir. 1999)
Adobe Systems Inc. v. Stargate Software Inc., 216 F. Supp. 2d 1051 (N.D. Cal. 2002)
Adobe Systems Inc. v One Stop Micro, Inc., 84 F. Supp. 2d 1086 (N.D. Cal. 2000)
Triad Systems Corp. v. Southeastern Express Company, 64 F.3d 1330 (9th Cir. 1995) [Read our Copyright Case Brief]
MDY Industries, LLC v. Blizzard Entertainment, Inc., 629 F.3d 928 (9th Cir. 2010)
., 2010 WL 497720 (M.D. Fla. Feb. 9, 2010)
Metal Morphosis, Inc. v. Acorn Media Publishing Inc., 639 F. Supp. 2d 1367 (N.D. Ga. 2009)
Wall Data Inc. v. Los Angeles Cnty. Sheriff's Dept., 447 F.3d 769 (9th Cir. 2006)
Options when dealing with settlement
Generally when faced with a threat of software litigation, you can either:
(1) ignore the cease and desist letter (which has its risks since Adobe might take you to Court, as it has done many times as is obvious given the above cases.).
(2) try to settle this case (using a skilled IP law firm can be worth looking into). You need to make sure you negotiate either for a dismissal, or the lowest possible settlement with the best possible terms of settlement agreement.
There may be other options such as going on the offensive and filing for declaratory judgement.
Contact an Adobe Software Defense Law Firm
If received a legal demand requesting a full and complete accounting of all Adobe sales and documentation identifying suppliers, quantities purchased, and purchase prices call us BEFORE calling them. We have vast experience dealing with software companies and their legal counsel. In fact, we often get referrals not only from “inside counsel” but also from “intellectual property counsel” not familiar with software licensing issues such as the first sale doctrine and willful copyright infringement. Call us at (877) 276-5084.