The plea of applying the exhaustion doctrine to intangible copies of copyrighted artistic works has been extensively discussed within scholar circles. Although, the debate substantially concerns provisions of the international treaties and the explanation of the exhaustion doctrine under European Union copyright law, the subject brings more uncertainties. Under the European Union copyright law the distribution right is exhausted after the first sale with the consent of a right holder. However, there is neither explicit regulation nor decision in regard to the exhaustion doctrine to the online resale of digital goods. As the act of distribution is shifting and fulfilled through digital means these days, the application of the first sale doctrine is challenged. The given work provides with the legal, organizational and technological analysis of the exhaustion doctrine under European Union copyright law and possible scenarios in respect to digital secondary market.

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In the past, copyrighted works were distributed exclusively through physical means, while copyright law developed to bestow copyright holder a privilege to decide when and under what circumstances a work should be put into circulation. The first sale doctrine, however, limited that ability in so far as, once a product is sold, copyright owners can no longer control the flow of that particular product, benefiting consumers and society in several ways. Today, as distribution is increasingly shifting into digital, the application of the first sale doctrine is challenged. This work provides for an analysis of the first sale doctrine under EU law and the ECJ case law in matters of digital exhaustion. It is shown that many of the benefits of first sale stem from traditional understandings of what means to own a physical copy and when it comes to the digital environment, the first sale doctrine seems to be undermined, and so do its benefits. It is argued that there is still some room for exhaustion, despite the lack of clarity of the wording of the InfoSoc Directive and Software Directive and the absence from the ECJ to provide for a final interpretation. Further to the analysis, it is shown that the promotion of a right to access and a right to transfer digital copies is still possible, even though they may not be the right answer to the issue of exhaustion in a digital economy by virtue of how market has developed and consumers response to it.

The debate of recognition or non-recognition of the digital exhaustion doctrine of the right of distribution for the copyrighted objects other than computer programs has been actively carrying on within the last decades in the EU. The explosive growth of the electronic versions of works and digitalization of the traditional copyrighted objects leads to new questions and challenges about its dissemination and usage by consumers. This work examines and investigates whether, and if so to what extent, the exhaustion principle of the right of distribution can apply to e-books in the online realm after two landmark cases: the UsedSoft case and the Tom Kabinet case. These two cases offer a different interpretation of the exhaustion doctrine in the digital field in relation to the different copyrighted objects, namely digital books and computer programs. It is argued that despite the CJEU’s decision in the Tom Kabinet case and lack of explicit clarity in the EU Directives devoted to the copyrighted objects, there is some room for digital exhaustion of the distribution right for the electronic books. This paper will also analyze the hypothesis that the peculiarities of the book market itself may potentially influence the recognition of the digital exhaustion principle from an economic standpoint. However, it is shown that the digital marketing of the works per se entailing multiple reproductions of the e-files as a technical step of the dissemination process creates new challenges on the exhaustion doctrine application. The paper provides a legal, economic and technological analysis of the EU exhaustion doctrine and its potential admissibility on the second-hand market of electronic books.

自從美國最高法院在廣達與LGE案中作出解釋後，便將權利耗盡理論亦稱為第一次銷售理論帶往另一個層次。此案已被普遍認為對於美國過去的判例影響甚鉅，對於產業界的商業活動發展更是具有深遠的影響。智慧財產權旨在保護發明及創造公眾利益間取得一平衡點，權利耗盡理論長久以來已被視為專利法中重要的一環，並藉以杜絕專利權人的過當控制。而最高法院對於第一次銷售理論的解釋，則進而撼動專利權人長此以往對限制性銷售策略的仰賴。 即便銷售後限制(Post-sale restriction)確實提供了專利權人避免耗盡其權利的好方法，但專利權範圍則限縮了專利權人所享有的權利控制範圍，換言之，專利權人僅能擁有專利法所賦予的權利，且其加諸於被授權人的購買條件限制僅限於該專利之功能及使用目的。而超越該專利功能及使用目的的過分限制，則可能導致專利權濫用。而在開放WTO框架下，國際貿易的頻繁也使得權利耗盡衍生出了在散佈等方面的相關討論，平行輸入/輸出的議題亦隨著跨國交易的興盛而隨之重要。 故此篇論文的研究目的不僅僅探討權利耗盡理論及其相關議題，更旨在藉由廣達案的啟發，提供台灣的IT產業一有效的專利授權策略，並提供不論專利權人或被授權人於制定授權契約時，能有一更具有策略性的思考方向。 / The Supreme Court’s current decision in Quanta Computer, Inc. v. LG Electronics, Inc. brings the exhaustion doctrine also known as first sale doctrine up to a new phase. This case is believed significantly overcome quite a lot of past precedents and will effectively influent industry business operations in the future. The core goal of intellectual property right aims to find a balance between protecting the incentives to create and innovate, and providing the benefits to public interests. Exhaustion doctrine has been long standing as part of patent law to prevent patentees’ over control. The interpretation made by Supreme Court regarding the first sale doctrine does vibrate the conditional sale strategies long believed by patentees. Now the Supreme Court brings the issue from the phase of patent law down to the contract law level. Subsequently, the litigations of antitrust and fair trade are therefore involved while patentees are tempting to make an “end-run” control over the downstream purchasers. Though applying post-sale restriction provides a way out for intellectual property owner from triggering the exhaustion, however, the scope of the patent claims determine how far the privilege is given to the inventors. A patent owner or licenser can only enforce its patent right while the right is truly granted by the patent law. Subsequently, the restriction set forth to limit the licensees or purchasers must be accordance with the function or feature of the patent claims for. On the contrary, the patentee intends to restrict its purchasers by holding the exclusive right which beyond the scope of the patent granted may result to patent misuse, for instance, the resale price maintenance, prohibition of manufacturing the competing products, the conditional license which incorporates another license, and overwhelming royalties on the price of the whole product instead of the actual usage of the patented article. Under WTO, the concern of intellectual property protection has become more critical in the perspective of international trade, different issues and disputes regarding exhaustion have also been generated. Not alike the traditional domestic exhaustion, the discussion regarding distribution has therefore been derived. Moreover, the issues related to parallel import/export are generated in accordance with the frequent cross-border transaction. The purpose of this research does not merely lead us look into the doctrine and restriction patentees used to impose for avoiding exhaustion. But I intend to further illustrate a guideline based on the inspiration from Quanta and the explanation of the Courts. This guideline should provide both patentees and licensees an orientation while considering making a licensing agreement.

美國聯邦最高法院廣達v.LG案的判決結果，再次確認「專利權耗盡原則」之適用原則及標準。被告廣達電腦乃為台灣資訊代工產業的龍頭，該判決除了限制專利權人對產業鏈的不當控制外，也將影響整個產業供應鏈對於專利風險的承擔及專利授權策略。廣達案除了建立「未完成品足以體現專利物之必要特徵，且唯一用途係該專利物」及「方法權利項」適用專利權耗盡的重要標準，但也留下「附條件銷售或授權」合法性的爭議。在廣達案後續判決，對「專利權耗盡原則」的詮釋及適用，更值得加以重視。台灣資訊產業在產業供應鏈多居於「製造或組裝」角色，卻受制於上游關鍵元件的強勢及品牌客戶的訂單壓力，而被迫必須承擔產品引發的所有專利侵權的風險。如何善用廣達案及後續各國相關判決，將有助於台灣資訊代工廠商處理國際專利爭訟、專利授權等議題，並做為專利侵權抗辯手段的參考。 本論文首先從經營策略及代工模式，探討台灣資訊代工產業發展與面臨的困境。其次，從專利權與專利侵害的法律規範，到專利權耗盡原則的法理基礎做一完整論述，加以美國先前相關案例的整理及類型分析，對「專利權耗盡原則」的理論與發展做一完整的探討。更進而整理廣達案判決後美國、中國大陸及台灣重要案例，探討「專利權耗盡原則」在其專利法制及實務案例的適用及影響。接著，探討在「契約自由原則」與「專利權耗盡原則」的衝突與調和下，其對於專利授權實務的操作及影響。最後，整理台灣資訊代工產業的代工類型化與廣達案前後美國、中國大陸及台灣權利耗盡重要判決之關聯性，並提出看法及建議。本文初步結論，美國法院案例可初步解析侵權風險及專利權耗盡的適用，並在專利授權談判可提出有效因應條款。廣達案後，美國各級法院均大致遵守此一判決先例，惟中國大陸及台灣法院實務判決仍未完全採取美國的判斷原則。對於後續的研究建議，新興3D列印科技發展及應用，其引發的複雜智慧財產權及「專利權耗盡原則」適用的爭議，確實值得重視。 / Quanta v. LG reaffirmed the applicable principles and standards of the "patent exhaustion principle". As the Quanta plays the lead role in Taiwan’s Information ODM/OEM industry, this US Supreme court’s decision not only limits the patent holder improper control of the industrial chain, but also affects the entire supply chain face the risks and patent license strategies. Quanta establishes the index that "unfinished finished enough to reflect the essential features of the patent and the sole purpose thereof " and "method claim" apply to patent exhaustion. However, "conditional sale or license" is still controversial. Therefore, the Post-Quanta interpretation is worthy of attention. Taiwan's IT Industries most account for the role of "manufacture or assembly" in the supply chain. Subject to the upstream suppliers of the key components or downstream brand customers, they bear all risks caused by infringement of patented products. The Quanta case and its post development will help Taiwan Information foundries to deal with international patent litigation, patent license and etc., and take it as a means to defend against patent infringement claim. Firstly, this thesis explores the development of Taiwan's information ODM/OEM industry and the difficulties of its business strategies and ODM/OEM models. Secondly, it turns to discuss the development of the "patent exhaustion doctrine", and then reviews US critical cases of "patent exhaustion doctrine". In addition, it analyzes post-Quanta cases of the United State, China and Taiwan to discuss the application and impact of the "patent exhaustion doctrine". Furthermore it explores its operation and effect on patent license practice under the conflict and reconciliation of "freedom of contract" and "patent exhaustion doctrine". Then, it identifies Taiwan’s information OEM/OEM industry in a variety of models and associates the models with the important cases of the United States, China and Taiwan regarding patent exhaustion, and makes remarks and suggestions. Finally, this thesis preliminarily concludes that US court cases basically resolve the risk of infringement and patent exhaustion application, and patent license negotiation may be made to respond effectively to the situation. After Quanta, US courts are substantially in compliance with this precedent judgment, but not for China and Taiwan. For subsequent study suggestion, it is worth attention about dispute of the emerging 3D printing technology development and application, which link complex intellectual property rights and the application of "patent exhaustion doctrine".