839 F.3d 163
2d Cir.2016Background
- Cheryl Smith sued Barnes & Noble for direct and contributory copyright infringement after Barnes & Noble continued to allow a customer to access a free digital sample of her late husband's book following termination of the Smashwords distribution agreement.
- Louis K. Smith had licensed distribution rights to Smashwords, which explicitly authorized distribution of free samples in any media, licensed for free noncommercial use, duplication, and sharing, and did not include a provision terminating already-distributed samples upon contract termination.
- Smashwords distributed the book to retail partners, including Barnes & Noble; one BN customer downloaded a free sample while the distribution agreement was in effect.
- After Smith terminated the Smashwords agreement, the title remained briefly listed on bn.com; the book was de-listed April 20, 2012, but the same customer accessed the cloud-based sample twice after termination.
- The district court granted summary judgment for Barnes & Noble; on appeal the Second Circuit affirmed on the alternative ground that Barnes & Noble’s post-termination provision of access was authorized by the governing contracts.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Barnes & Noble’s post-termination cloud access to a pre-obtained sample constituted unauthorized copying | Smith: continued access after termination exceeded license scope and thus infringed copyright | Barnes & Noble: sample distribution and customer’s ongoing access were authorized by the Smashwords license and B&N’s retail terms | Held: Access was authorized by the contracts; no infringement on that basis |
| Who bears burden to prove scope of license | Smith: plaintiff must show conduct was unauthorized | Barnes & Noble: license exists so plaintiff must prove it was exceeded | Held: Copyright owner (Smith) bears burden to prove defendant’s conduct was unauthorized under the license |
| Whether cloud-based access is distribution or access for purposes of infringement doctrines | Smith: repeated cloud access equals impermissible distribution/copying | Barnes & Noble: once sample obtained, cloud-based delivery is access (not new distribution) within license | Held: Court treats post-acquisition cloud delivery as access permitted by the license; no breach |
| Whether contract termination revoked rights in already-distributed samples | Smith: termination should revoke downstream access | Barnes & Noble: license contains no term revoking rights in already-distributed samples; paper and digital treated alike | Held: License did not terminate rights to already-distributed samples; access remained authorized |
Key Cases Cited
- Authors Guild v. HathiTrust, 755 F.3d 87 (2d Cir.) (standard of review for summary judgment in copyright contexts)
- Cartoon Network LP v. CSC Holdings, Inc., 536 F.3d 121 (2d Cir.) (copyright liability framework for provider-customer copying)
- Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417 (U.S.) (betamax/secondary liability principles)
- Revson v. Cinque & Cinque, P.C., 221 F.3d 59 (2d Cir.) (contract interpretation under New York law)
- Graham v. James, 144 F.3d 229 (2d Cir.) (burden to prove conduct unauthorized under a license)
- Boosey & Hawkes Music Publishers v. Walt Disney Co., 145 F.3d 481 (2d Cir.) (scope of licensed media uses)