Great Minds v. Fedex Office & Print Servs., Inc.
886 F.3d 91
| 2d Cir. | 2018Background
- Great Minds created a copyrighted curriculum (Eureka Math) and distributed it publicly under the Creative Commons Attribution-NonCommercial-ShareAlike 4.0 public license (the License).
- The License grants a worldwide, royalty-free, nonexclusive, non-sublicensable, irrevocable right to "reproduce and Share" the Materials for NonCommercial purposes.
- School districts downloaded and used the Materials under the License; FedEx, a for-profit copy service, made physical reproductions at the districts' requests.
- Great Minds sued FedEx for copyright infringement, alleging the License limits noncommercial use to the licensee and requires commercial reproducers to obtain a paid license.
- The district court dismissed under Rule 12(b)(6); the Second Circuit affirmed, holding the License is silent on third‑party agents and, absent express restriction, licensees may use agents like FedEx to exercise permitted noncommercial uses.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the public License permits licensees to engage third-party commercial reproducers to exercise noncommercial "reproduce and Share" rights | Great Minds: The License limits noncommercial rights to the licensee and makes commercial reproducers (like FedEx) independent licensees who must pay royalties | FedEx: The License allows licensees (school districts) to reproduce and share; they may enlist third-party agents to perform copying on their behalf | Held: License is silent on agents; under agency principles, licensees may use third-party agents unless license expressly prohibits it |
| Whether FedEx is directly liable as a licensee because it was a "recipient" who received the License offer | Great Minds: FedEx was a downstream "recipient" and thus an independent licensee when it reproduced the Materials | FedEx: It acted as an agent of licensed school districts, not as an independent licensee | Held: "Downstream recipient" language does not convert agents (employees or contractors) into independent licensees; FedEx acted as agent |
| Whether FedEx's volitional copying makes it liable for direct infringement despite acting at licensee direction | Great Minds: Volitional act of copying supports direct infringement liability (citing Cartoon Network) | FedEx: Even if volitional, the dispositive question is whether the License authorized the copying | Held: Cartoon Network is inapplicable; authorization under the License controls, and here licensees authorized the copying |
| Whether the License's reservation of rights to collect royalties covers FedEx's copying services | Great Minds: Reservation to collect royalties for "commercial uses" includes commercial reproducers | FedEx: Reservation targets licensee conduct that exceeds the license (e.g., selling copies), not agent-performed copying by licensees | Held: Reservation does not transform agents into independent infringers; it preserves rights against licensees who exceed the License |
Key Cases Cited
- Ashcroft v. Iqbal, 556 U.S. 662 (2009) (pleading standard for plausible claims)
- Chapman v. N.Y. State Div. for Youth, 546 F.3d 230 (2d Cir. 2008) (nonexclusive licensee authorization waives infringement claim)
- Tasini v. N.Y. Times Co., 206 F.3d 161 (2d Cir. 2000) (licensing/authorization principles in copyright)
- Automation By Design, Inc. v. Raybestos Prods. Co., 463 F.3d 749 (7th Cir. 2006) (licensees may use third parties to make permitted copies absent restriction)
- Estate of Hevia v. Portrio Corp., 602 F.3d 34 (1st Cir. 2010) (delegation to third parties allowed when license is silent)
- Cartoon Network LP v. CSC Holdings, Inc., 536 F.3d 121 (2d Cir. 2008) (volitional conduct test for direct infringement)
- Boosey & Hawkes Music Publishers, Ltd. v. Walt Disney Co., 145 F.3d 481 (2d Cir. 1998) (party seeking deviation from license meaning bears burden to negotiate explicit language)
- Princeton Univ. Press v. Michigan Document Servs., Inc., 99 F.3d 1381 (6th Cir. 1996) (fair use analysis where commercial reproducers copied copyrighted academic works)