A Creative Commons-Licensed Work Walks into a Copy Shop – Great Minds v. Office Depot

http://ipkitten.blogspot.com/2020/01/a-creative-commons-licensed-work-walks.html

This copyKat is loving the printer!

As 2019 came to a close, the Ninth Circuit Court of Appeals issued its decision in Great Minds v. Office Depot.  Concerned the interpretation of permitted, non-commercial activity under the Attribution-NonCommercial 4.0 (CC BY-NC 4.0) license, this case resembles and is, in fact, intertwined with Great Minds v. FedEx, which Great Minds appealed to the 2nd Circuit in 2018. 

In both cases, Great Minds sued a copy shop for reproducing – for a profit – their Eureka Math curriculum on behalf of public schools or school districts that had paid the copy shop for the reproductions; while the schools are free to use and reproduce the curriculum for noncommercial uses, Great Minds contends that the copy shops are violating the CC BY-NC 4.0 license through commercial use by reproduction for profit. Let’s explore how courts on both coasts rejected Great Minds’ argument, finding for the copy shops. 

Background

Great Minds developed the Eureka Math curriculum between 2012 and 2014, originally for the New York State Education Department (the curriculum was initially named “Engage NY.”) Proudly advertised as the “Most Widely Used Curriculum in America” on their website, Great Minds released Eureka Math under a Creative Commons license, allowing for noncommercial reproduction and sharing of the curriculum. 

This case concerns the use of the curriculum by several public schools and school districts in California; in particular, Office Depot had solicited their copying services toward the school districts in question. While those schools were compliant licensees of the curriculum through noncommercial use, Great Minds contended that copy shops like Office Depot became “downstream recipient” licensees through reproduction; because this reproduction was for profit and commercial, Great Minds argued that such copy shops needed to pay royalties, pursuant to § 2(b)(3) of the License:

“To the extent possible, the Licensor waives any right to collect royalties from [the licensee] for the exercise of [these NonCommercial] Licensed Rights, whether directly or through a collecting society under any voluntary or waivable statutory or compulsory licensing scheme. In all other cases the Licensor expressly reserves any right to collect such royalties, including when [Eureka Math] is used other than for NonCommercial purposes”

Separate Licensing Agreement 

In 2015, Great Minds discovered that Office Depot was reproducing the curriculum on behalf of various public schools and school districts in California; avoiding litigation, the two parties agreed to a separate licensing agreement “whereby Great Minds permitted Office Depot to make the copies in exchange for royalty payments.” This produced a stasis on the West Coast that lasted until 2017.

In February of that year, the Eastern District of New York ruled in favor of FedEx Office and Print Services in a case with nearly identical facts, save for the separate licensing agreement. The decision was later upheld by the Second Circuit Court of Appeals in 2018. Office Depot stopped paying royalties on June 10, 2017, relying on the opinion of Judge Hurley:

“As the school districts are the entities exercising the rights granted by the License, it is irrelevant that FedEx may have benefited by having been hired by them to act, viz. make copies, in their stead … Nor can the reservation of rights contained in the License be read to preclude a licensee from hiring someone to make copies of the Materials so the licensee can use them for a ‘nonCommercial’ purpose.”

Judge Hurley paid particular attention to the language of the License, which defined “Share” (for which permission is granted for noncommerical purposes) as the provision of the material “by any means or process,” a term intended to give broad latitude to licensees to reproduce the curriculum for permitted use.

Litigation – District Court, Central District of California

On October 11, 2017, Great Minds filed suit against Office Depot, alleging copyright infringement and breach of contract; before the year ended, Office Depot filed a motion to dismiss the copyright infringement claim, which was ruled upon on January 18, 2018. The court found similar broad latitude afforded by the words “any means or process,” a latitude sufficient to allow the licensees (the schools and districts) to employ third parties in the reproduction of the curriculum for noncommercial uses.

Further, Judge Walter of the Central District was unpersuaded by the contention that Office Depot became a licensee through soliciting their copy services to the schools and districts in question. The Judge noted that the License offered three relevant permissions:

1) “reproduce and use the Materials for NonCommercial purposes,”

2) “expressly permits the schools to provide those Materials to the public ‘by any means or process,’ and”
3) “does not prohibit the schools from outsourcing the copying to third party vendors.”

Taking these three facts in consideration, Judge Walter ruled that none of Office Depot’s actions were outside the scope of the License, thus dismissing the copyright infringement claim.

Appeal to the Ninth Circuit

On November 8, 2019, the Ninth Circuit heard Great Minds appeal from the dismissal of the copyright infringement claim; this came a year and a half after the 2nd Circuit affirmed a similar dismissal in Great Mind’s appeal against FedEx. The Ninth Circuit issued an affirming opinion on December 27th, as 2019 came to a close.
The court noted that reproduction by the school and district licensees was permitted by the license, while “if Office Depot were itself a licensee, commercial copying of Great Minds’ material would fall outside the scope of the License and infringe Great Minds’ copyright.” As a result, the question as issue was whether or not, by the licensees using Office Depot’s services to lawfully exercise the rights of the license, Office Depot had themselves become licensees. 

The court ruled that Office Depot was not a downstream recipient licensee, citing to a “consensus in courts” that third-party agents employed by licensees to exercise the lawful rights of the license do not themselves become licensees by virtue of providing their services to the licensee. Rather, “[i]ts activities remain within the ambit of the schools and school districts’ license.”

The court rejected Great Mind’s argument that there was a volitional element to Office Depot’s services, noting the unwanted consequences that would result from the court drawing the line of distinction sought by Great Mind’s council. 

 “(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;

(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 

(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.”

The court deemed these hypotheticals “absurd results,” prompting a holding that “[t]he License extends to all employees of the schools and school districts and shelters Office Depot’s commercial copying of Eureka Math on their behalf.” 

Comment

The ruling in this case provides needed clarity for those seeking to reproduce and use works licensed for noncommercial purposes, particularly in the context of education. Educators require reproduction of course materials for noncommercial use, and requiring all such reproductions by teachers or third-party agents to be at cost would eliminate the possibility of employing third-party agents. Instead, teachers or students would be required to make their own reproductions, a needlessly inefficient allocation of the resources necessary to make copies. This decision, in conjunction with the similar ruling in the Second Circuit, correctly held that a third-party commercial activity may rightly be employed by a noncommercial user in facilitation of their noncommercial use. 

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