If you thought shrink-wrap software licenses were bad, now the Ninth Circuit has upheld “box-wrap” patent licenses. When Lexmark sells you a printer cartridge, the box is labelled “single use only”, and the court has decided that when you open the box, you are agreeing to the terms of this “license”.
At least shrink-wrap licenses usually warn the customer that by opening the package, he or she is agreeing to the terms of the license. The printer cartridge box didn’t bear such warning that if you didn’t agree to the terms, you might be liable for patent infringement.
This also seems to contradict the doctrine of first sale. Suppose Joe patents a new method and apparatus for exercising cats, and sells a product using this patent. When Fred buys the product, Joe has no more say in what Fred does with the product, because he has already been paid for the use of the patent for that product. In the absence of a separate, signed contract, Joe can’t tell Fred that his patent license is only good for twelve uses and that after that many he has to return or destroy the product. Nor can Joe tell Fred that he is not allowed to resell the product to a third party, or that the product cannot be used to exercise dogs instead.
Yet this Ninth Circuit ruling apparently gives manufacturers those controls over the use of patents after the first sale, despite the absence of an explicit contract.
I would urge people to boycott Lexmark, and not buy their printers or cartridges. And if you already have a Lexmark printer, I suggest civil disobedience in terms of always refilling the cartridges. But unfortunately this case sets a horrendous legal precedent, and it is likely that many other manufacturers will follow suit.
Update: here’s the EFF commentary on the ruling.
before you bought me the HP printer, i had purchased a lexmark…it was not cmpatible with my laptop so i returned it…i will never buy anything by lexmark again….
signed,
mom