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What is the “Essential Steps” defense in Copyright law?

Posted by Steve Vondran | Jan 16, 2018 | 0 Comments

Copyright Defenses – The Essential Steps Doctrine!


When faced with a copyright infringement lawsuit, a Defendant accused of willful copyright infringement needs to take a look at all the potential defenses to help defeat liability.   This blog discusses the “essential steps” defense.

What is the “Essential Steps” defense to copyright infringement

Here is some case law from the 9th Circuit which explains this defense:

Defendants also posit that their conduct is permissible under the essential step defense, which is set forth at 17 U.S.C. § 117(a)(1).

“Congress enacted the essential step defense to codify that a software user who is the ‘owner of a copy' of a copyrighted software program does not infringe by making a copy of the computer program, if the new copy is ‘created as an essential step in the utilization of the computer program in conjunction with a machine and … is used in no other manner.”' Vernor, 621 F.3d at 1109 (17 U.S.C. § 117(a)(1)). Like the related first sale doctrine, the essential step defense is applicable only if the alleged infringer is an owner, as opposed to licensee, of the copy of the software in dispute. Id. at 1108–109. As discussed, the pleadings sufficiently allege that Defendants are licensees, not owners.

Therefore, the essential step defense does not require the dismissal of Adobe's copyright claim. Defendants' motion to dismiss this claim is therefore DENIED.  See Adobe Sys. Inc. v. A & S Elecs., Inc., 153 F. Supp. 3d 1136, 1145 (N.D. Cal. 2015).

Here is another case dealing with video games that discusses this potential defense:

As a  copyright owner, Blizzard possesses the exclusive right to reproduce its work. 17 U.S.C. § 106(1). The parties agree that when playing WoW, a player's computer creates a copy of the game's software in the computer's random access memory (“RAM”), a form of temporary memory used by computers to run software programs. This copy potentially infringes unless the player (1) is a licensee whose use of the software is within the scope of the license or (2) owns the copy of the software.  See  Sun Microsystems, Inc. v. Microsoft Corp., 188 F.3d 1115, 1121 (9th Cir.1999) (“ Sun I ”); 17 U.S.C. § 117(a). As to the scope of the license, ToU § 4(B), “Limitations on Your Use of the Service,” provides: You agree that you will not .. (ii) create or use cheats, bots, “mods,” and/or hacks, or any other third-party software designed to modify the World of Warcraft experience; or (iii) use any third-party software that intercepts, “mines,” or otherwise collects information from or through the Program or Service. By contrast, if the player owns the copy of the software, the “ essential  step” defense provides that the player does not infringe by making a copy of the computer program where the copy is created and used solely “as an  essential  step in the utilization of the computer program in conjunction with a machine.” 17 U.S.C. § 117(a)(1).  See  MDY Indus., LLC v. Blizzard Entm't, Inc., 629 F.3d 928, 938 (9th Cir. 2010).

The Blizzard court continued:

Essential step defense We consider whether WoW players, including Glider users, are owners or licensees of their copies of WoW software. If WoW players own their copies, as MDY contends, then Glider users do not infringe by reproducing WoW software in RAM while playing, and MDY is not secondarily liable for  copyright infringement.  In Vernor v. Autodesk, Inc., we recently distinguished between “owners” and “licensees” of copies for purposes of the essential step defense. Vernor v. Autodesk, Inc., 621 F.3d 1102, 1108–09 (9th Cir.2010);  see also  MAI Sys. Corp. v. Peak Computer, Inc., 991 F.2d 511, 519 n. 5 (9th Cir.1993);  Triad Sys. Corp. v. Se. Express Co., 64 F.3d 1330, 1333, 1335–36 (9th Cir.1995);  Wall Data, Inc. v. Los Angeles County Sheriff's Dep't, 447 F.3d 769, 784–85 (9th Cir.2006). In  Vernor, we held “that a software user is a licensee rather than an owner of a copy where the  copyright owner: (1) specifies that the user is granted a license; (2) significantly restricts the user's ability to transfer the software; and (3) imposes notable use” restrictions. 621 F.3d at 1111 (internal footnote omitted). Applying  Vernor, we hold that WoW players are licensees of WoW's game client software. Blizzard reserves title in the software and grants players a non-exclusive, limited license. Blizzard also imposes transfer restrictions if a player seeks to transfer the license: the player must: (1) transfer all original packaging and documentation; (2) permanently delete all of the copies and installation of the game client; and (3) transfer only to a recipient who accepts the EULA. A player may not sell or give away the account. Blizzard also imposes a variety of use restrictions. The game must be used only for non-commercial entertainment purposes and may not be used in cyber cafes and computer gaming centers without Blizzard's permission. Players may not concurrently use unauthorized third-party programs. Also, Blizzard may alter the game client itself remotely without a player's knowledge or permission, and may terminate the EULA and ToU if players violate their terms. Termination ends a player's license to access and play WoW. Following termination, players must immediately destroy their copies of the game and uninstall the game client from their computers, but need not return the software to Blizzard.  Since WoW players, including Glider users, do not own their copies of the software, Glider users may not claim the  essential  step defense. 17 U.S.C. § 117(a)(1). Thus, when their computers copy WoW software into RAM, the players may infringe unless their usage is within the scope of Blizzard's limited license.

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Steve Vondran

Thank you for viewing our blogs, videos and podcasts. As noted, all information on this website is Attorney Advertising. Decisions to hire an attorney should never be based on advertising alone. Any past results discussed herein do not guarantee or predict any future results. All blogs are written by Steve Vondran, Esq. unless otherwise indicated. Our firm handles a wide variety of intellectual property and entertainment law cases from music and video law, Youtube disputes, DMCA litigation, copyright infringement cases involving software licensing disputes (ex. BSA, SIIA, Siemens, Autodesk, Vero, CNC, VB Conversion and others), torrent internet file-sharing (Strike 3 and Malibu Media), California right of publicity, TV Signal Piracy, and many other types of IP, piracy, technology, and social media disputes. Call us at (877) 276-5084. AZ Bar Lic. #025911 CA. Bar Lic. #232337


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