But, what can one really do if, for example, your top search results include an out of date, hopelessly inaccurate and embarrassing article from your hometown newspaper? As much guff as Facebook gets for its poor record on privacy protection, an average Facebook user has a relatively powerful set of tools at his or her disposal: you can delete or untag yourself from embarrassing photos, limit who can view your profile, and even delete your profile completely. But, is there anything you can do about embarrassing search results?

In 2010, Hugo Guidotti Russo, a Spanish plastic surgeon, filed a legal complaint with Spain’s privacy regulator, the Agency for Data Protection, asking them to order Google to remove a 1991 article about a malpractice complaint from his top search results. Russo insisted that because he was cleared of wrongdoing and the article did not mention this, it was within his right to privacy to have the search results removed. The agency agreed. Google is fighting the ruling which was recently referred to the European Court of Justice in Luxembourg on the issue of whether the ruling clashed with EU freedom of expression laws.

The case of the Mr. Russo is connected to the larger issue of whether governments should—or could—guarantee individuals a so-called “right to be forgotten.” Though, like most newly recognized rights, the contours are hazy and the terms ambiguous, the right to be forgotten is catching on. In 2009, the French secretary of state launched a campaign for le Doit a l’Oubli (the right to oblivion, though no English translation is quite adequate) that culminated in the adoption of so-called “codes of good practice” by several trade associations, social networks and search engines.  The provisions are themselves broad but somewhat vague: adoptees are obligated to give notice to users about how to exercise their privacy rights, respect an individual’s right to consent to data processing, to receive prior notice of procession and to object to the use of their data. The European Union is currently tossing around some proposed legislation which would give people the right, any time to have all personal information online deleted—though it’s hard to see how this would work in practice. Even in the United States, where courts have been much less willing to allow individuals to assert a general right of privacy against search engines and social networks, the FTC has issued a working paper called “Safeguarding Consumer Privacy in an Era of Fast Transform” which recommends, among other things, that individuals have the right to have inaccurate information about themselves removed from databases.

Critics of the “right to privacy” argue that, in its extreme form, it’s tantamount to suppression of speech—censorship. Most facts and opinions worth writing about–and reading about– are facts and opinions about people.  Individuals have always been able to fight others who publish false information using libel and defamation law, but falsity is not a requirement for a privacy claim. If individuals are empowered to suppress true or arguably true information written about them by third parties under the guise of privacy, the argument goes, our freedom of expression is significantly burdened.  In one infamous case, Wikipedia was sued by two German murderers  demanding that their names be removed from an article about their victim. German law allows criminals’ names to be withheld from association with their crimes after their sentences are over.  The case of German murderers points to another criticism of the right to privacy: practicability. If a German court orders the removal of the names from the article, does it only apply to the German language version of Wikipedia or with a .de web url? Does it apply to any article accessible from Germany? Or only if the servers which host the article are located in Germany? Moreover, does Wikipedia, which can be edited by anyone, have an ongoing obligation to ensure that the ex-con’s names are kept of the site? For a website like Wikipedia, which relies heavily on user donations, and which relies on a relatively small number of editors to maintain their pages, an ongoing obligation to monitor for information about individuals is a heavy burden.

From the perspective of someone with a rare name—say for example, the author of this post (but three out of the first four results are not me!)—the right to delete whatever search results I wanted from Google would certainly be a blessing. That being said, there is a thin and hazy line between what information is truly private—which should be protected—and what information is merely embarrassing or inconvenient, but a legitimate part of the public discourse.

The First Sale Doctrine

The first sale doctrine was established by the Supreme Court in Bobbs-Merrill Co. v. Straus where a book publisher printed the following note on its copyright page: “The price of this book at retail is $1 net. No dealer is licensed to sell it at a less [sic] price and a sale at a less [sic] price will be treated as an infringement of the copyright.” The Supreme Court held that, under existing copyright law, copyright holders have the exclusive right of distribution over the “first sale” of their works, but further distributions are outside of their control.  The first sale doctrine was later codified in the Copyright Act.

As a legal principle, first sale strikes a balance between the rights of copyright holder and the rights of the owner of a copy of said material. The doctrine also embodies the general principle in property law that unreasonable constraints on alienation (gifting, selling, etc.) are void.

First sale also promotes the value of free access to information by making out of print copyrighted works widely available and lowering prices through the existence of secondary markets.

Many copyright owners justifiably dislike the first sale doctrine because it prevents them from maintaining a monopoly on their copyrighted works, and it enables secondary markets which tend to drive down prices.

The Vernor Decision and the Sale/License Distinction

The essential facts of Vernor are straightforward. Vernor purchased used software at a garage sale and attempted to sell it on eBay. The copyright holder, Autodesk, filed several DMCA take-down notices with eBay. After some back and forth, Vernor brought a declaratory action in Federal District Court to establish that his resale was protected by first sale doctrine.

The primary legal issue was whether the transfer of Autodesk’s software to the customer who had sold it to Vernor constituted a sale or a licensing. This is the legal hook: if all that was transferred was license, the “first sale” has not occurred and the doctrine does not apply.

The licensee/owner distinction was not clear law prior to Vernor. The District Court in Vernor, determining that there were conflicting precedents on point, applied the 9th Circuit case United States v. Wise and found that the critical factor in the sale/license distinction was whether the purchaser had a right to possess the copyrighted work perpetually or whether he was required to return it to the copyright holder. The court found the right to perpetual possession and thus held that Vernor was covered by the first-sale doctrine.

On appeal, the 9th Circuit held that the license/ownership distinction depended on only three factors: (1) whether the copyright owner specifies that a user is granted a license (2) whether the copyright owner significantly restricts the user’s ability to transfer the software (3) whether the copyright owner imposes notable use restrictions. Applying this test to Autodesk, the court found that the transfer in question was a mere transfer of license and, thus, that Vernor was not protected by the first sale doctrine.

Criticism of the Vernor Test

The problem with the Vernor test is clear: a copyright holder can completely avoid the first sale doctrine by using the term “license” coupled with the “significant” transfer and use restrictions. Thus, under Vernor the application of first sale doctrine depends solely on the discretion of the copyright holder and what “magic words” he chooses to place in the license agreement.

The Vernor test completely undermines the first sale doctrine and all of its underlying policies. First sale is meant to balance between the rights of copyright owners and the rights of owners of copies; Vernor undermines that balance by making its applicability contingent on a copyright holder’s preference. Under the Vernor test, if Bobbs-Merrill Co. had written its note slightly differently, referring to the purchaser as a licensee, and imposing more use and transfer restrictions, the case would have come out the other way—an absolutely preposterous result.

And finally, Vernor effectively negates the principle against unreasonable restrictions on alienation as they apply to copyrightable works. A copyright holder only has to write the “magic words” in a licensing agreement to prevent resale. Thus, there is little standing in the way of copyright holders from unilaterally destroying secondary markets—the used software, book, DVD, CD and videogame market—and maintaining a monopoly on its work.

Currently, the plaintiffs in Vernor are petitioning for an en banc rehearing in the 9th Circuit. If denied, they will likely take it to the Supreme Court. Vernor as it stands today has the potential to fundamentally change not only the legal relevance of the first sale doctrine, but the entire economic, social and legal landscape for copyrightable works.