{"id":3231,"date":"2020-03-03T14:57:09","date_gmt":"2020-03-03T14:57:09","guid":{"rendered":"https:\/\/www.dekuzu.com\/en\/?p=3231"},"modified":"2020-03-03T14:58:56","modified_gmt":"2020-03-03T14:58:56","slug":"creative-commons-commercial-element","status":"publish","type":"post","link":"https:\/\/www.dekuzu.com\/en\/2020\/03\/creative-commons-commercial-element.html","title":{"rendered":"Hiring a third party to exercise the licensee\u2019s rights does not convert that third party into an independent licensee"},"content":{"rendered":"\n

The appeal held that defendant Office Depot, Inc., did not become a licensee of a Creative Commons license, and become bound by its terms, or otherwise infringe Great Minds\u2019 copyright by making copies of Eureka Math materials for a profit on behalf of school and school district licensees.<\/span><\/p>\n

<\/span><\/p>\n

Office Depot provides copy services on request and behalf of public schools and school districts. It charges a fee for those services, and at times it makes copies of Eureka Math materials for the schools\u2019 use. It does not sell those copies to the public in Office Depot stores. Great Minds claims, and Office Depot does not dispute, that Office Depot employs field representatives to advertise its copying services to schools and school districts that use Eureka Math.<\/span><\/p>\n

In 2015, when Great Minds discovered that Office Depot was reproducing Eureka Math on behalf of the schools, the parties entered into a separate licensing agreement, whereby Great Minds permitted Office Depot to make the copies in exchange for royalty payments. After the court\u2019s ruling in Great Minds v. FedEx Office and Print Servs, which held that the License could not \u201cbe read to preclude a licensee from hiring someone to make copies of Eureka Math so the licensee can use them for a \u2018noncommercial\u2019 purpose,\u201d Office Depot terminated the royalty agreement.<\/span><\/p>\n

As a result, on October 11, 2017, Great Minds filed suit against Office Depot in district court, alleging claims of copyright infringement and breach of contract. Great Minds does not dispute that the school districts\u2019 own use and distribution of Eureka Math materials is \u201cNonCommercial\u201d and permitted by the License. Rather, it alleges that Office Depot was \u201cdeliberately and willfully infringing Great Minds\u2019 copyrights by actively soliciting customers for commercial reproduction of Eureka Math,\u201d and \u201cby reproducing and distributing Eureka Math for profit without Great Minds\u2019 authorization.\u201d<\/span><\/p>\n

Great Minds asserts that the \u201cNonCommercial\u201d restriction in the License requires commercial print shops like Office Depot to \u201cnegotiate a license and pay a royalty to Great Minds if they wish to use or reproduce Eureka Math for commercial purposes – i.e., for their own profit.\u201d On December 6, 2017, Office Depot filed a motion to dismiss the copyright infringement claim, which the district court granted without leave to amend. The court found that the License did not prohibit the school districts from employing third parties like Office Depot to make copies of the Eureka Math curriculum on their behalf. Id. The appeal followed.<\/span><\/p>\n

The issue was whether the school and school district licensees\u2019 exercise of their rights under the License through the services provided by Office Depot results in Office Depot becoming a licensee. The appeal held that it does not. A licensee\u2019s hiring of a third-party copy service to reproduce licensed material strictly for the licensee\u2019s own permitted use does not turn that third party into a licensee that is bound to the License terms.<\/span><\/p>\n

Under Great Minds\u2019 reading of the License, third party contractors like Office Depot are \u201cdownstream recipients\u201d, meaning they \u201cautomatically receive an offer from Great Minds to exercise the Licensed Rights,\u201d they accept that offer the moment the copy store employee presses \u201ccopy\u201d on a machine, and they become bound to the terms of the License. Office Depot is not a downstream recipient.<\/span><\/p>\n

That Office Depot employed field representatives to advertise the availability of copying services for schools and school districts that use Eureka Math does not confer a licensee status on Office Depot. Its activities remain within the ambit of the schools and school districts\u2019 license. Great Minds also contends that the \u201cvolitional\u201d element, i.e., which entity\u2019s employee does the copying, is determinative in this case. But that argument produces the following absurd results:<\/span><\/p>\n

(1) a teacher may copy Eureka Math on an Office Depot-owned copy machine for a fee in-store, but cannot hand the materials to an Office Depot employee to be copied;<\/span><\/p>\n

(2) a school may pay a copy machine provider a monthly fee to keep a machine on site to copy Eureka Math, but cannot pay Office Depot employees to make the same copies; and<\/span><\/p>\n

(3) a school may permit teachers to copy Eureka Math on school-owned or leased machines, but cannot pay a high school student to make the same copies. Great Minds\u2019 interpretation cannot be correct.<\/span><\/p>\n

The License itself provides no basis to distinguish between permitted copies of Eureka Math made by a licensee\u2019s own employees (e.g., school teachers or staff) versus those made by a third-party contractor (e.g., Office Depot employees). Under the License, a non-commercial licensee may hire a third-party contractor, including those working for commercial gain, to help implement the License at the direction of the licensee and in furtherance of the licensee\u2019s own licensed rights.<\/span><\/p>\n

The License extends to all employees of the schools and school districts and shelters Office Depot\u2019s commercial copying of Eureka Math on their behalf. Holding differently would prevent proper non-commercial licensees from using relatively common means of reproduction to share, engage with, and exercise their rights to the licensed work in a way that would contravene the intent of the License and undermine its utility.<\/span><\/p>\n

The court concluded<\/a> that the licensees\u2019 contract with Office Depot to exercise the licensees\u2019 rights under the License does not impose an independent liability on Office Depot. As a result, Great Minds has failed to state a plausible claim to relief on its copyright infringement claim.<\/span><\/p>\n","protected":false},"excerpt":{"rendered":"

The appeal held that defendant Office Depot, Inc., did not become a licensee of a Creative Commons license, and become bound by its terms, or otherwise infringe Great Minds\u2019 copyright by making copies of Eureka Math materials for a profit<\/p>\n

Continue readingHiring a third party to exercise the licensee\u2019s rights does not convert that third party into an independent licensee<\/span><\/a><\/div>\n","protected":false},"author":1,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[5,35,25,6,39,18,17],"tags":[],"class_list":["post-3231","post","type-post","status-publish","format-standard","hentry","category-copyright","category-consideration","category-distribution","category-intellectual-property","category-interpretation","category-law","category-litigation","entry"],"_links":{"self":[{"href":"https:\/\/www.dekuzu.com\/en\/wp-json\/wp\/v2\/posts\/3231","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/www.dekuzu.com\/en\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/www.dekuzu.com\/en\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/www.dekuzu.com\/en\/wp-json\/wp\/v2\/users\/1"}],"replies":[{"embeddable":true,"href":"https:\/\/www.dekuzu.com\/en\/wp-json\/wp\/v2\/comments?post=3231"}],"version-history":[{"count":1,"href":"https:\/\/www.dekuzu.com\/en\/wp-json\/wp\/v2\/posts\/3231\/revisions"}],"predecessor-version":[{"id":3232,"href":"https:\/\/www.dekuzu.com\/en\/wp-json\/wp\/v2\/posts\/3231\/revisions\/3232"}],"wp:attachment":[{"href":"https:\/\/www.dekuzu.com\/en\/wp-json\/wp\/v2\/media?parent=3231"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.dekuzu.com\/en\/wp-json\/wp\/v2\/categories?post=3231"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.dekuzu.com\/en\/wp-json\/wp\/v2\/tags?post=3231"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}