Adobe sued defendant for selling online unauthorized copies of versions of photoshop. Adobe generally had a slam dunk case for infringement, and–apparently before discovery was closed, or at least before it had produced any relevant copies of its software licenses–it moved for summary judgment of copyright infringement. In response, the defendant asserted the first sale defense (17 USC 109(a)) and provided invoices substantiating (or at least suuporting his contention) that he had purchased legitimate copies of the software. The district court, in ruling on the summary judgment motion, excluded any Adobe licenses or testimony related to same, and found in favor of the alleged infringer. There was also a trademark issue in the case, but the district court found any use by the defendant was a nominative fair use.
The Ninth Circuit affirmed, noting:
In the context of a summary judgment motion in a software case…the party asserting a first sale defense must come forward with evidence sufficient for a jury to find lawful acquisition of title, through purchase or otherwise, to genuine copies of the copyrighted software. To the extent that the copyright holder claims that the alleged infringer could not acquire title or ownership because the software was never sold, only licensed, the burden shifts back to the copyright holder to establish such a license or the absence of a sale.