I’ve been thinking lately about the concept of a “license.” This is a typical statement of what it is:
[A] license is not a contract; rather, a license is “permission to use a copyrighted work in a particular specified manner …” Saxelbye Architects, Inc. v. First Citizens Bank & Tr. Co., 1997 U.S. App. LEXIS 30320, 1997 WL 702290, at *3 (4th Cir. Nov. 3, 1997). Indeed, “[a] nonexclusive license may be granted unilaterally by a copyright holder” so no meeting of the minds is required. Crump v. QD3 Entm’t, Inc., 2011 U.S. Dist. LEXIS 14157, 2011 WL 446296, at *4 (S.D.N.Y. Feb. 8, 2011) (citation omitted).
But that’s not actually correct, it’s mixing apples an oranges. More accurately, a license is a defense to infringement which may or may not be in a contract. The implied copyright license with its origin in Effects Assocs. v. Cohen, 908 F.2d 555 (9th Cir. 1990) is an example of a license, a defense, that isn’t a contract. But licenses can be contracts too.
Confusion reigns because an agreement will be named a “license.” But an error in understanding the difference between a license, which is a defense, and a document called a “license,” can lead to an error in analysis. Take the case that the quote is from, Philpot v. Media Research Center, Inc. Larry Philpot is a photographer who puts his photos on Wikimedia under a Creative Commons Attribution-Share Alike license. This license allows the display of the copyrighted work at no cost on the condition that a user gives attribution to the source of the work (and other obligations not at play here). Defendant Media Research Center used Phipot’s photos
to illustrate political articles but did not provide the required attribution. Philpot sued.
MRC claimed that it had a non-exclusive license as granted in the Creative Commons license. Philpot “unpersuasively argue[d] that defendant was not a party to the license because there was no meeting of the minds with respect to the terms of the license.” This is the statement leading to the above quote “a license is not a contract,” which is followed by the conclusion “Accordingly, the mere fact that plaintiff uploaded the Photographs to Wikimedia under a nonexclusive [Creative Commons license] is sufficient to grant a license to defendant.”
Having concluded that the legal issue wasn’t a contract one, the proper analysis would be to inquire whether MRC was within the scope of the license. If not, the use is a copyright infringement. Sun Microsystems, Inc. v. Microsoft Corp., 188 F.3d 1115, 1121 (9th Cir. 1999). Said another way, if you claim as a defense to infringement that you have a license, you won’t have the defense if your use isn’t what the license allows.
But the Philpot court didn’t go there; instead, it reverted to contract theory. The CC-BY-SA license has a termination clause, “The License and the rights granted hereunder will terminate automatically upon any breach by You of the terms of this License.” The court concluded:
Here, the parties do not dispute that attribution was a material term of the license, and the parties agree that defendant publicly displayed the Photographs without attribution. Thus, a reasonable juror could find that defendant breached the license, and as a result, the license was terminated. After termination of the license, defendant’s continued use of the Chesney and Kid Rock Photographs would then be grounds for plaintiff’s copyright infringement action provided there is no other defense, including fair use.
Note the confusing use of the word “license” to mean “agreement” in “material term of the license” and “defendant breached the license, and … the license was terminated.” The court stumbled to the right result but in a very confusing way. And I didn’t think too much of its fair use analysis either.
Philpot v. Media Research Ctr. Inc., No. 1:17-cv-822 (E.D. Va. Jan. 8, 2018).