Vondran Legal® - Copyright Infringement Firm - Affirmative Defenses - The Implied License.  If you or your company are dealing with Copyright related legal issues, and need representation, call us to discuss your case in confidence at (877) 276-5084.

Introduction

If you are being accused of posting infringing images, or are an artist deciding whether or not to file a lawsuit against an infringer who is posting your images for commercial benefit or real estate websites, corporate blogs, in brochures or newsletters, on Etsy or Amazon seller pages, or on social media sites such as Twitter/X, Instagram, Facebook, LinkedIn, or TikTok, it would behove you to take a look at one of the possible defenses to copyright infringement, that is, the implied license affirmative defense. Affirmative defense means the defendant who is sued in federal court must raise and prove the defense applies. If not, they cannot prevail on the defense. This blog provides some general insight into this legal topic. Feel free to share this post (yes, you have consent, which is another defense to copyright infringement). Don't forget to review innocent infringement as well.

Implied License Jury Instructions - 9th Circuit

For this defense to apply in the 9th Circuit, here are the general jury instructions. Read this carefully; it you believe it applies, you may be on to something.

           The defendant contends that [he] [she] [other pronoun]  is not liable for copyright infringement because the plaintiff granted [him] [her] [other pronoun]  an implied license in the plaintiff's copyrighted work. The plaintiff cannot claim copyright infringement against a defendant who [copies] [distributes] [uses] [modifies] [retains] the plaintiff's copyrighted work if the plaintiff granted the defendant an implied license to [copy] [distribute] [use] [modify] [retain] the work. 

In order to show the existence of an implied license, the defendant has the burden of proving that:

First, the defendant requested that the plaintiff create work;

Second, the plaintiff made that particular work and delivered it to the defendant; and

Third, the plaintiff intended that the defendant [copy] [distribute] [use] [modify] [retain] the plaintiff's
            work. 

If you find that the defendant has proved by a preponderance of the evidence that the plaintiff granted [him] [her] [other pronoun] an implied license to [copy] [distribute] [use] [modify] [retain] the copyrighted work, your verdict should be for the defendant [on that portion of the plaintiff's copyright infringement claim]. 

Attorney Steve® Tip:  As you can see, this is a very limited defense.  The defendant must have requested that plaintiff make the work, and plaintiff must have made and delivered the work to the defendant with the INTENT (which can always be difficult to prove) that the defendant copy, distribute, and use the copyrighted work. If a defendant can prove ALL THREE of these elements, this can serve as a valid defense to copyright infringement.

9th Circuit Case Law

Here is some case law from the 9th Circuit which may help differentiate a winning from a losing defense:

Implied licenses can arise in a wide variety of circumstances, including many—such as express contracts that fail because of the statute of frauds or partnership arrangements—for which the elements of an implied license defense will be different. 

Implied license is an affirmative defense to copyright infringement. See Oracle Am., Inc. v. Hewlett Packard Enter. Co., 971 F.3d 1042, 1047 (9th Cir. 2020). When a plaintiff contributes copyrightable work to the defendant in exchange for some benefit (such as a share in partnership profits, a fee, or a salary), a license for the defendant to use the plaintiff's work may be implied. See U.S. Auto Parts, 692 F.3d at 1019-20 (discussing the existence of an implied license in the context of an employment relationship); Asset Mktg., 542 F.3d at 750, 754-55 (involving an independent contractor relationship); Oddo v. Ries, 743 F.2d 630, 634 (9th Cir. 1984) (involving a partnership relationship). A license is often implied when “without such a license, [the plaintiff's compensated] contribution . . . would have been of minimal value.” 

A license may be implied by the parties' conduct.  See Foad Consulting Grp., Inc. v. Azzalino, 270 F.3d 821, 825 (9th Cir. 2001). An implied license may be unlimited in scope or restricted to certain rights.  Compare Asset Mktg., 542 F.3d at 757 (that plaintiff granted defendant “unlimited” implied license “to retain, use, and modify” work), with Oddo, 743 F.2d at 634 (plaintiff granted defendant implied license to use work in a manuscript, but not “in any work other than the manuscript itself”). The defendant bears the burden of proof as to the scope and existence of an implied license.  See id. at 634 & n.6.

In another case, the court discussed how an EXCLUSIVE license must be in WRITING to be enforceable; the same was not true for a NON-EXCLUSIVE license, which can be implied:

Nonexclusive Licenses

Citation:  Effects Assocs. v. Cohen (9th Cir. 1990) 908 F.2d 555, 558-559.)

Although we reject any suggestion that moviemakers are immune to section 204, we note that there is a narrow exception to the writing requirement that may apply here. Section 204 provides that all transfers of copyright ownership must be in writing; section 101 defines transfers of ownership broadly, but expressly removes from the scope of section 204 a "nonexclusive license." See note 2 supra. The sole issue that remains, then, is whether Cohen had a nonexclusive license to use plaintiff's special effects footage.

The leading treatise on copyright law states that "nonexclusive license may be granted orally, or may even be implied from conduct." 3 M. Nimmer & D. Nimmer, Nimmer on Copyright § 10.03[A], at 10-36 (1989). Cohen relies on the latter proposition; he insists that, although Effects never gave him a written or oral license, Effects's conduct created an implied license to use the footage in "The Stuff."

Cohen relies largely on our decision in Oddo v. Ries, 743 F.2d 630 (9th Cir. 1984). There, we held that Oddo, the author of a series of articles on how to restore Ford F-100 pickup trucks, had impliedly granted a limited non-exclusive license to Ries, a publisher, to use plaintiff's articles in a book on the same topic. We relied on the fact that Oddo and Ries had formed a partnership to create and publish the book, with Oddo writing and Ries providing capital. Id. at 632 & n. 1. Oddo prepared a manuscript consisting partly of material taken from his prior articles and submitted it to Ries. Id. at 632. Because the manuscript incorporated pre-existing material, it was a derivative work; by publishing it, Ries would have necessarily infringed the copyright in Oddo's articles, unless Oddo had granted him a license. Id. at 634. We concluded that, in preparing and handing over to Ries a manuscript intended for publication that, if published, would infringe Oddo's copyright, Oddo "impliedly gave the partnership a license to use the articles insofar as they were incorporated in the manuscript, for without such a license, Oddo's contribution to the partnership venture would have been of minimal value." 

The district court agreed with Cohen, and we agree with the district court: Oddo controls here. Like the plaintiff in Oddo, Effects created a work at defendant's request and handed it over, intending that defendant copy and distribute it. To hold that Effects did not at the same time convey a license to use the footage in "The Stuff" would mean that plaintiff's contribution to the film was "of minimal value," a conclusion that can't be squared with the fact that Cohen paid Effects almost $ 56,000 for this footage. Accordingly, we conclude that Effects impliedly granted nonexclusive licenses to Cohen and his production company to incorporate the special effects footage into "The Stuff" and to New World Entertainment to distribute the film. 

Contact Us

Since the founding of Vondran Legal® in 2004, few firms can match our IP litigation track record as it relates to handling copyright infringement matters. We have appeared in several hundred copyright-related cases dealing with a wide variety of copyright infringement matters, including:

• Software piracy and licensing disputes (ex. Ansys, Siemens, Autodesk, Vero/Hexagon and Solidworks)
• Strike 3 Holdings bitTorrent file sharing defense
• Photo infringement (contingency recovery programs for creators)
• Jewelry infringement
• Fabric infringement
• Infringement of popular trademark and copyrighted characters
• Illegal broadcast of PPV boxing fights (ex. Joe Hand promotion cases)
• Providing illegal access to Dish-Nagrastar, Sling, and Direct TV copyrighted content (IPTV defense)
• Computer fonts
• Copyright fair use opinion letters for movie-makers
• YouTube DMCA takedown law
• Etsy, Amazon image disputes (ex. counterfeit products, IP infringement)
• Video game characters and mobile application disputes

Our firm has grown with the technology. New types of cases involving AI technology are on the horizon and creating new legal issues. When you need a firm that understands e-commerce, internet law, and IP copyright, trademark, and trade secret, there are few firms, large or small, that can match our experience. Call us for more information at (877) 276-5084 or email us through our contact form on the right side of this page. We look forward to working with you to cost-effectively resolve your legal disputes, whether through basic negotiation, arbitration, mediation, or litigation if necessary.