ment of the copyright constitute a transfer of the title to The doctrine in its statutory form, however, was plagued by a wide variety of problems due most probably to the somewhat imprecise language. For example, the phrase "the possession of which has been lawfully obtained" is capable of a number of different interpretations. Taken literally, one could argue that the innocent purchaser of an illegally manufactured or copied re29 cord would not infringe the owner's copyright upon resale, although the interpretive case law is overwhelmingly to the contrar. Similarly, a mere bailee, by very definition in lawful possession, could argue protection upon 31 unauthorized resale under a literal reading of section 27. Application of the foregoing construction would present a somewhat perplexing dilemma to the copyright holder who seeks to have copies of the protected work manufactured for eventual sale. By surrendering mere possession purely for the purpose of reproduction, the proprietor runs the risk of losing a portion of his copyright protection. The alternative is self manufacturing and reproduction, the economics of which might operate to foreclose many from the opportunity to vend their works. This problem seems to have been first addressed by the 2nd Circuit Court 32 of Appeals in Platt & Munk Co. v. Republic Graphics, Inc.. Platt & Munk involved a defendant manufacturer of copyrighted toys, alleged by the plaintiff holder to have been defective, who decided to sell them in satisfaction of the contract price. The court, per Judge Friendly, affirmed the lower court injunction restraining the manufacturer from selling the protected items, recognizing thereby the potential infringement of the exclusive right to vend. Citing the legislative history to the 1909 Act, he declared that the legislative intent required the presence of a first sale, before the holder is di33 vested of the exclusive vending right as to the particular material object? Consequently, a remedial "judicial gloss" has been applied to section 27 requiring a full transfer of title rather than mere valid possession before the first sale limitation is triggered.34 C. First Sale And The 1976 Copyright Act The first sale doctrine in its current formulation is incorporated in sections 10932nd 2023 that: "...the owner of a particular copy or phonorecord lawfully made under this title, or any person authorized by such owner, is entitled, without the 236f the 1976 Copyright Act. Section 109 (a) provides authority of the copyright owner, to sell or otherwise dispose of the posses37 sion of that copy or phonorecord. Section 202 codifies the distinction between ownership of the copyright and ownership of the material object: Ownership of a copyright, or of any of the exclusive rights Section 109 (c) operates to limit the foregoing by denying the privilege of Thus, section 109 of the current act addresses squarely the dilemma posed by the Platt & Munk controversy by extending protection only to the lawful Owner rather than mere possessor. Missing, however, is any express require- restates and confirms the principle that, where the copy- Thus, for example, the outright sale of an authorized Section 109 may also be viewed as a clear legislative response to the innocent purchaser of an illegally made copy seeking refuge in the literal in ment of the copyright constitute a transfer of the title to The doctrine in its statutory form, however, was plagued by a wide variety of problems due most probably to the somewhat imprecise language. For example, the phrase "the possession of which has been lawfully obtained" is capable of a number of different interpretations. Taken literally, one could argue that the innocent purchaser of an illegally manufactured or copied record would not infringe the owner's copyright upon resale, although the interpretive case law is overwhelmingly to the contrar. Similarly, a mere bailee, by very definition in lawful possession, could argue protection upon 31 unauthorized resale under a literal reading of section 27. 29 Application of the foregoing construction would present a somewhat perplexing dilemma to the copyright holder who seeks to have copies of the protected work manufactured for eventual sale. By surrendering mere possession purely for the purpose of reproduction, the proprietor runs the risk of losing a portion of his copyright protection. The alternative is self manufacturing and reproduction, the economics of which might operate to foreclose many from the opportunity to vend their works. This problem seems to have been first addressed by the 2nd Circuit Court 32 of Appeals in Platt & Munk Co. v. Republic Graphics, Inc., Platt & Munk involved a defendant manufacturer of copyrighted toys, alleged by the plaintiff holder to have been defective, who decided to sell them in satisfaction of the contract price. The court, per Judge Friendly, affirmed the lower court injunction restraining the manufacturer from selling the protected items, recognizing thereby the potential infringement of the exclusive right to vend. Citing the legislative history to the 1909 Act, he declared that the legislative intent required the presence of a first sale, before the holder is divested of the exclusive vending right as to the particular material object?3 Consequently, a remedial "judicial gloss" has been applied to section 27 requiring a full transfer of title rather than mere valid possession before the first sale limitation is triggered. 34 C. First Sale And The 1976 Copyright Act The first sale doctrine in its current formulation is incorporated in sections 1093 and 202 of the 1976 Copyright Act. 36 Section 109 (a) provides that: "...the owner of a particular copy or phonorecord lawfully made under this title, or any person authorized by such owner, is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy or phonorecord. 37 Section 202 codifies the distinction be tween ownership of the copyright and ownership of the material object: Ownership of a copyright, or of any of the exclusive rights Section 109 (c) operates to limit the foregoing by denying the privilege of resale to ..any person who has acquired possession of the copy or phonorecord from the copyright owner, by rental, lease, loan or otherwise without acquiring ownership of it."39 40 Thus, section 109 of the current act addresses squarely the dilemma posed by the Platt & Munk controversy by extending protection only to the lawful owner rather than mere possessor. Missing, however, is any express requirement of an actual first sale. Thus, is section 109 protection afforded to a licensee manufacturer who is the original owner of the material object? The House Report on this section, however, clearly sets forth the legislative intent that a full transfer of ownership occur before the section becomes operative. The House Report states that section 109 (a) restates and confirms the principle that, where the copy- Thus, for example, the outright sale of an authorized Section 109 may also be viewed as a clear legislative response to the innocent purchaser of an illegally made copy seeking refuge in the literal in terpretation of section 27. Section 109 now requires not only lawful ownership of the material object, but that the object itself have been legally manufactured.""Although the same result might be achieved under the Platt & 42 Munk approach as no first sale was duly authorized by the copyright holder, section 109 makes clear a legislative intent to deny such protection to any 43 seller of pirated phonorecords. 45 One particularly troublesome and frequently prevalent problem with respect to the application of section 109 and the first sale doctrine is that of burden of proof. The problem, arising most frequently in relation to criminal infringement cases is best illustrated by a civil infringement case: American International Pictures, Inc., et al. v. Foreman. American International arose under section 27 of the 1909 Act and involved an action alleging infringement brought by the copyright owners of 120 films against a 16mm film distributor. The plaintiffs alleged that sales of their films by the defendant violated their exclusive right to vend, claiming that no first sale had ever occurred. At trial plaintiffs proved copyright ownership and presented testimony from film executives to the effect that the corporate policy was to tightly control the distribution of film prints. The defendant introduced evidence of an inconsistent course of conduct with respect to films owned by the plaintiffs but not the subject of the instant litigation. Neither party was able to prove the chain of title of the films in controversy. The district judge, in holding for the defendant, recognized a presumption that his possession was lawful; thereby determining that the plaintiffs had failed to carry ? burden of proof on the issue of non occurrence of a first sale. The decision, however was reversed on appeal. The court per Judge Godbold recognized first that the common law presumption of lawful possession is inappropriate with respect to copyright law. It was reasoned that since the copyright law favors the copyright holder, the mere possessor should assume the burden of proving valid title, the existence of which would bestow the unlimited distribution right. It was held, therefore, that mere possession was insufficient per se to meet this burden. It was held further that a mere possessor may only meet this burden by introducing evidence specific to the copies in question. Defendant's course of conduct evidence was therefore clearly |