Adobe Systems v. Joshua Christenson
809 F.3d 1071
9th Cir.2015Background
- Adobe sued Christenson and Software Surplus (SSI) for copyright and trademark infringement for reselling Adobe software purchased from third‑party distributors. Christenson asserted the first sale defense and nominative fair use for trademark.
- At summary judgment both sides filed cross‑motions; discovery was protracted and Adobe failed to produce purported license agreements timely, leading the magistrate to preclude many license materials under Rule 26.
- The district court found it undisputed that Christenson lawfully purchased genuine copies and concluded the initial burden shifted to Adobe to prove the copies were licensed (not sold); excluded license evidence prevented Adobe from meeting that burden and the court entered judgment for Christenson on copyright and trademark claims.
- On trademark, the district court treated Christenson’s use as nominative fair use (identifying genuine Adobe goods) and rejected Adobe’s attempt to recast its claim as false advertising not pled in the complaint.
- The Ninth Circuit affirmed, framing (a) the burden allocation for the first sale defense at summary judgment and (b) upholding exclusion of Adobe’s late license evidence; it also affirmed the nominative fair use disposition on the trademark claim.
Issues
| Issue | Plaintiff's Argument (Adobe) | Defendant's Argument (Christenson) | Held |
|---|---|---|---|
| Who bears burden to prove first sale defense? | Adobe argued burden should be on defendant to disprove licensing assertions. | Christenson argued Adobe, as the party with contract info, should bear burden to disprove first sale. | Defendant bears initial burden to produce evidence a lawful purchase created ownership; if met, burden shifts to plaintiff to prove a license/no sale. |
| What suffices at summary judgment to meet the initial burden? | Adobe argued defendant’s invoices and testimony were insufficient to show ownership. | Christenson produced invoices and testimony showing lawful purchases from third parties. | At summary judgment defendant need only produce evidence sufficient for a jury to find lawful acquisition of title; Christenson met that burden. |
| Who must prove the existence/terms of a license (sale vs. license)? | Adobe: it licenses software and ownership never transferred; Adobe should be able to prove licensing. | Christenson: lacked access to Adobe’s contracts and should not be required to disprove a license. | After defendant meets initial burden, the burden shifts to copyright holder to produce license documents and prove restrictions showing a license. |
| Trademark claim — nominative fair use vs false advertising | Adobe argued consumers were misled (bait‑and‑switch) and suggested false advertising/unfair competition. | Christenson argued nominative fair use: used Adobe marks to identify genuine Adobe products. | Court held nominative fair use applied; Adobe’s false‑advertising theory was not pled and differed from the trademark infringement claim. |
Key Cases Cited
- Quality King Distribs., Inc. v. L’anza Research Int’l, Inc., 523 U.S. 135 (distinguishing owners from licensees under § 109(a))
- Vernor v. Autodesk, Inc., 621 F.3d 1102 (9th Cir.) (software license vs sale test: label, transfer restrictions, use restrictions)
- Bobbs‑Merrill Co. v. Straus, 210 U.S. 339 (early recognition of sale vs license distinction and first sale rule)
- UMG Recordings, Inc. v. Augusto, 628 F.3d 1175 (9th Cir.) (discusses burden question in first sale context)
- New Kids on the Block v. News Am. Pub., Inc., 971 F.2d 302 (9th Cir.) (nominative fair use doctrine)
- Toyota Motor Sales, U.S.A., Inc. v. Tabari, 610 F.3d 1171 (9th Cir.) (test for nominative fair use)