DOE 1 v. GitHub, Inc.DOE 1 v. GitHub, Inc.
I. BACKGROUND
Because the facts are well-known to the parties and the Court has summarized Plaintiffs’ allegations in detail in its prior orders, see ECF Nos. 95, 189, the Court will not elaborate them here.
Following the last round of briefing, the Court found that Plaintiffs alleged standing for damages as to Does 1, 2, and 5, but not Does 3 and 4. Further, the Court dismissed Plaintiffs’ state law claims for intentional and negligent interference with prospective economic relations,
In Plaintiffs’ second amended complaint (“SAC“), ECF No. 201, three claims remain.2 Count One alleges a violation of
In support of these claims, Plaintiffs add two primary new assertions to their SAC. First, they allege that “[i]n July 2022,” “GitHub introduced a user-settable Copilot filter called ‘[s]uggestions matching public code.‘” Id. ¶ 145. This filter is also referred to as the “duplication-detection feature.” Id. ¶ 146 n.23. Users can set the filter “to either allow or block code completion suggestions that match publicly available code.” Id. ¶ 146. If a user chooses to block suggestions that match public code, “GitHub Copilot checks code completion suggestions with their surrounding code of about 150 characters against public code on GitHub.” Id. “If there is a match, or a near match, the suggestion is not shown” to the user. Id. However, “GitHub makes [this feature] entirely optional to users, and provides no such optionality to licensors.” Id. ¶ 148. Therefore, in Plaintiffs’ telling, “users who want to receive identical code from GitHub or do not want to exclude it, may do so.” Id. In light of this feature, Plaintiffs “believe it is likely that their licensed code is omitted3 by Github [sic] in violation of the open source licenses[,]” and that “there is a substantial risk, if not certainty, that identical code will be emitted in the future.” Id. ¶ 149.
Second, Plaintiffs allege that “[r]ecent academic research shows that the likelihood Plaintiffs’ or class members’ code would be emitted verbatim is only increasing.” Id. ¶ 104. They
Both Defendants move to dismiss Plaintiffs’ Section 1202(b) claim pursuant to
II. JURISDICTION
The Court has jurisdiction over Plaintiffs’ federal claims pursuant to
III. LEGAL STANDARD
A. Rule 12(b)(6)
“Dismissal under
B. Leave to Amend
Leave to amend a complaint “shall be freely given when justice so requires.”
IV. DISCUSSION
A. DMCA Section 1202(b)(1) and 1202(b)(3)
Defendants ask the Court to dismiss Plaintiffs’ Section 1202(b) claim. See ECF Nos. 214-2 at 17-22, 219 at 10-13. Although each Defendant contends that Plaintiffs’ claim fails on various grounds, the Court finds one argument dispositive: Plaintiffs again fail Section 1202(b)‘s identicality requirement.
Plaintiffs’ opposition spills much ink arguing that identicality is not an element of a Section 1202(b) claim. See ECF Nos. 234 at 12-16, 235 at 12-15. Having twice addressed this issue already, the Court will not revisit it at length.5 Plaintiffs focus on a non-binding decision from the Southern District of Texas, ADR Int‘l Ltd. v. Inst. for Supply Mgmt. Inc., 667 F. Supp. 3d 411, 425 (S.D. Tex. 2023), which concluded that the “DMCA is not limited to [copyright management information] conveyed in connection with identical copies of a work.” But caselaw from courts in the Ninth Circuit continues to compel this Court to reach a different conclusion. See, e.g., Kirk Kara Corp. v. W. Stone & Metal Corp., No. CV 20-1931, 2020 WL 5991503, at *6 (C.D. Cal. Aug. 14, 2020) (“courts have found that no DMCA violation exists where the works are
Turning to the allegations in the SAC, Defendants argue that “[l]ike the FAC, the SAC does not identify even a single example of Copilot producing an identical copy of any work.” ECF No. 219 at 10. The Court agrees. The SAC includes the same allegations that Defendants’ programs released, or “output,” code published to GitHub by Does 1, 2, and 5. See ECF No. 201 ¶¶ 115, 120, 121, 124, 125, 133. In its last order, the Court concluded that these facts were “not sufficient for a Section 1202(b) claim” because they were not identical. ECF No. 189 at 15. Because these facts have not changed, the Court must again conclude that Plaintiffs have failed to meet the DMCA‘s identicality requirement.
Plaintiffs’ new allegations fare no better. Plaintiffs allege that, should a user elect to not use the duplication-detection feature, a user could conceivably view an identical match of 150 characters, and use it without attribution. See ECF No. 201 ¶¶ 147-151. While Plaintiffs aver that the duplication-detection tool “by definition establishes Copilot‘s ability to reproduce verbatim copies of code,” ECF No. 234 at 18 (emphasis omitted), they “do not explain how the tool makes it plausible that Copilot will in fact do so through its normal operation or how any such verbatim outputs are likely to be anything beyond short and common boilerplate functions.” ECF No. 242-1 at 16; see also Iqbal, 556 U.S. at 680 (finding that plaintiff had not “nudged [his] claims” . . . “across the line from conceivable to plausible.“). And, as Defendant GitHub also points out, “the mere existence of such a feature does not make it more likely that Copilot would ever output an identical copy of Plaintiffs’ works.” ECF No. 214-2 at 21 (emphasis in original). Thus, Plaintiffs have not demonstrated that Copilot‘s duplication-detection tool is likely to give rise to Section
In addition, the Court is unpersuaded by Plaintiffs’ reliance on the Carlini Study. It bears emphasis that the Carlini Study is not exclusively focused on Codex or Copilot, and it does not concern Plaintiffs’ works. That alone limits its applicability. And further, as Defendant GitHub notes, the Carlini Study does nothing to “rehabilitate Plaintiffs’ own concession that, still, ‘more often,’ Copilot‘s suggestions are ‘a modification.‘” ECF No. 214-2 at 21 (quoting ECF No. 201 ¶ 108).
The Study “tested multiple models by feeding prefixes of prompts based on training data into each model in order to compare the performance of models of different sizes to emit output that is identical to training data.” ECF No. 201 ¶ 104. It determined that when models are “prompted appropriately, they will emit the memorized training data verbatim.” Id. (quoting Carlini Study). In regard to the GitHub Copilot model in particular, the Study concluded that it “rarely emits memorized code in benign situations, and most memorization occurs only when the model has been prompted with long code excerpts that are very similar to the training data.” Carlini Study at 6. To paraphrase Defendant GitHub, “Plaintiffs tried to [prompt Copilot] in their last complaint . . . to generate an identical copy of their code” and they were unable to do so. ECF No. 214-2 at 22 (emphasis omitted). Accordingly, Plaintiffs’ reliance on a Study that, at most, holds that Copilot may theoretically be prompted by a user to generate a match to someone else‘s code is unpersuasive.
To conclude, the Court dismisses Plaintiffs’ Section 1202(b) claim. Having previously dismissed this claim on the same ground, the Court will now dismiss Plaintiffs’ Section 1202(b) claim with prejudice.
B. Breach of Contract
Defendant OpenAI moves to dismiss Plaintiffs’ breach of contract claim for violation of open-source licenses. ECF No. 219 at 13. In support of this argument, OpenAI contends that (1) Plaintiffs fail to state a claim based on Codex; (2) Plaintiffs fail to state a claim based on Copilot; and (3) Plaintiffs’ theory based on Copilot fails on the merits because “the attribution and notice terms are conditions and do not give rise to a contract claim.” Id. at 14-17. Plaintiffs respond that
1. Rule 12(g)(2)
The Court begins by examining whether
2. Plaintiffs State a Claim Based on Codex
OpenAI‘s first argument is that Plaintiffs fail to state a claim based on Codex. OpenAI contends that “[t]he SAC does not identify the contracts at issue or explain how the Doe Plaintiffs and OpenAI entered those contracts, how OpenAI purportedly breached those contracts with respect to the Doe Plaintiffs, or how Doe Plaintiffs suffered damage from that breach.” ECF No.
In its prior order denying Defendants’ motions to dismiss Plaintiffs’ breach of contract claim, the Court explained:
Plaintiffs advance claims for breach of the eleven suggested licenses GitHub presents to users that require (1) attribution to the owner, (2) inclusion of a copyright notice, and (3) inclusion of the license terms. [ECF No. 1] ¶ 34 n.4. [...] Plaintiffs allege that use of licensed code “is allowed only pursuant to the terms of the applicable Suggested License,” and that each such license requires that any derivative work or copy include attribution, a copyright notice, and the license terms. Id. ¶¶ 173, 34 n.4. Plaintiffs further allege that Codex and Copilot reproduce licensed code as output without attribution, copyright notice, or license terms, thereby violating the relevant provisions of each license. While Plaintiffs do not identify the specific subsections of each suggested license that correspond to each of these requirements, the Court finds that Plaintiffs have sufficiently identified “the contractual obligations allegedly breached,” as required to plead a breach of contract claim. [Williams v. Apple, Inc., 449 F. Supp. 3d 892, 908 (N.D. Cal. 2020)].
ECF No. 95 at 22. Having already determined that Plaintiffs adequately stated a breach of contract claim, the Court declines to reanalyze this issue. Therefore, Plaintiffs’ breach of contract claim will not be dismissed on this ground.
3. Plaintiffs State a Claim Based on Copilot
OpenAI‘s second argument is that Plaintiffs fail to state a claim based on Copilot. In OpenAI‘s view, “Plaintiffs’ theory is based on actions by other Defendants and does not give rise to a breach of contract claim against OpenAI.” ECF No. 219 at 15. Plaintiffs respond that their breach of contract claim must stand, as they have alleged that Copilot and Codex are “related,” and that “Copilot is a joint venture relationship” between GitHub and OpenAI. ECF No. 235 at 21-22 (citing ECF No. 201 ¶ 59).
“A joint venture is ‘an undertaking by two or more persons jointly to carry out a single business enterprise for profit.‘” Forest v. Equitable Life Assurance Soc‘y of U.S., No. C99-5173 SI, 2001 WL 1338809, at *5 (N.D. Cal. June 12, 2001) (quoting Nelson v. Abraham, 29 Cal. 2d 745, 749 (1947)). “The elements necessary for a joint venture are: (1) an intent to become partners; (2) a community of interest in the undertaking; (3) an understanding to share profits and losses; and (4) equal authority and right to direct and control the conduct of all co-venturers with
OpenAI responds that “Copilot is not a joint venture because OpenAI lacks ‘equal authority and right to direct and control the conduct’ of GitHub with respect to Copilot, as demonstrated by the fact that GitHub alone has released features altering Copilot‘s outputs.” ECF No. 244 at 15-16 (citing ECF No. 201 ¶¶ 145-157). True, Plaintiffs’ allegations concerning the duplication-detection feature state that “GitHub Copilot now includes an option to either allow or block code completion suggestions that match publicly available code.” ECF No. 201 ¶ 145. But this does not dispel Plaintiffs’ other allegations that “Copilot requires Codex to function,” and that “Codex . . . powers GitHub Copilot.” Id. ¶ 59. Accordingly, the Court declines to dismiss Plaintiffs’ breach of contract claim on this ground.
4. Conditions Versus Covenants
Finally, Defendants contend that even if they violated the attribution and notice terms of the Doe Licenses, those breaches were of conditions that sound in copyright law, and therefore Plaintiffs’ claims for breach of contract must be dismissed.7
While OpenAI is likely correct that the attribution and notice terms in the Doe Licenses at issue are conditions, this does not impede Plaintiffs’ ability to bring a breach of contract claim. Patry on Copyright is instructive: “[i]t is common for courts to say that if there is a material breach of a condition of the license, the copyright owner has the option of suing for copyright infringement or breach of contract, but if there is a violation of a covenant, only a breach-of-contract claim will lie.” 5 Patry on Copyright § 17:43 (emphasis added); see also 3 Nimmer on Copyright § 10.15 (emphasis added) (“If the grantee‘s violation consists of a failure to satisfy a condition to the grant (as distinguished from a breach of a covenant), it follows that . . . the
Finally, OpenAI contends that Jacobsen “is relevant because it found that terms similar to those in the Doe Licenses were conditions to the license grant (giving rise to a copyright claim), and not covenants undertaken by the licensee (giving rise to a contract claim).” ECF No. 244 at 19. In OpenAI‘s view, “[t]he same analysis applies whether the plaintiff ultimately brings a copyright or contract claim.” Id. The Court disagrees. Although the language of the licenses in Jacobsen is fairly analogous to the language of the Doe Licenses, this is immaterial to whether Plaintiffs can bring a breach of contract claim. As evidenced by the treatises and caselaw above, suing for copyright infringement is not the exclusive avenue a plaintiff must pursue in the event of a breach of a condition of a license—it is simply one option a plaintiff may elect.
Therefore, the Court concludes that Plaintiffs have alleged a breach of contract claim for violation of open-source licenses.
C. Unjust Enrichment and Punitive Damage Requests
1. Unjust Enrichment
Finally, the Court addresses Defendant GitHub‘s argument that Plaintiffs’ request for monetary relief in the form of unjust enrichment, as well as their request for punitive damages, should be denied. ECF No. 214-2 at 24-25. Agreeing with GitHub on both fronts, the Court dismisses Plaintiffs’ requests for unjust enrichment and punitive damages.
GitHub argues that Plaintiffs’ “request for unjust enrichment is insupportable under California law.” ECF No. 242-1 at 18. GitHub avers that “although unjust enrichment is sometimes a ‘theory underlying a claim that a defendant has been unjustly conferred a benefit,’ a plaintiff must [also] plead ‘mistake, fraud, coercion, or request.‘” ECF No. 214-2 at 25 (quoting Astiana v. Hain Celestial Grp., Inc., 783 F.3d 753, 762 (9th Cir. 2015)). California law supports this position: absent an exception, “a quasi-contract action for unjust enrichment does not lie where, as here, express binding agreements exist and define the parties’ rights.” California Med. Ass‘n, Inc. v. Aetna U.S. Healthcare of California, Inc., 94 Cal. App. 4th 151, 172 (2001). The Court agrees with GitHub that Plaintiffs’ breach of contract claims do not contain any allegations of mistake, fraud, coercion, or request. Accordingly, unjust enrichment damages are not available.8
In response, Plaintiffs point to the Restatement (Third) of Restitution and Unjust Enrichment § 39, which provides that where “a deliberate breach of contract results in profit to the
The caselaw Plaintiffs provide is similarly unavailing. In MSC.Software Corp. v. Heroux-Devtek Inc., No. 8:19-cv-01987-SB-(DFMx), 2021 WL 9696752, at *2 (C.D. Cal. Sept. 16, 2021), the court concluded that “contrary to Defendant‘s assertion, Plaintiff‘s request for restitution may still be tried by a jury.” However, in reaching that conclusion the MSC court relied on caselaw concerning quasi-contract. See Welborne v. Ryman-Carroll Found., 22 Cal. App. 5th 719, 725 (2018) (“A cause of action for quasi-contract invokes consideration of equitable principles, rather than of contract .... In applying the principles of unjust enrichment, . . . a plaintiff is entitled to restitution of the amount at issue.“). The other cases Plaintiffs cite fall prey to the same issue. See Hernandez v. Lopez, 180 Cal. App. 4th 932, 938-39 (2009) (allowing plaintiffs to recover for unjust enrichment on a quasi-contract theory); Alkayali v. Hoed, No. 18-cv-777, 2018 WL 3425980, at *6 (S.D. Cal. July 16, 2018) (citing cases relying on quasi-contract).
One final point bears mention. The Court conducted additional research concerning whether “a defendant‘s unjust enrichment can satisfy the ‘damages’ element of a breach of contract claim, such that disgorgement is a proper remedy.” Foster Poultry Farms, Inc. v. SunTrust Bank, 377 Fed. Appx. 665, 669 (9th Cir. 2010). In Foster Poultry Farms, Inc., the Ninth
In sum, Plaintiffs’ claims do not support they remedy they seek. Plaintiffs have failed to establish, as a matter of law, that restitution for any unjust enrichment is available as a measure of Plaintiffs’ damages for their breach of contract claims.
2. Punitive Damages
Turning to GitHub‘s arguments concerning punitive damages, the Court agrees that these
CONCLUSION
In sum, the Court dismisses Plaintiffs’ Section 1202(b) claim, this time with prejudice. The Court declines to dismiss Plaintiffs’ claim for breach of contract of open-source license violations against all Defendants. Finally, the Court dismisses Plaintiffs’ request for monetary relief in the form of unjust enrichment, as well as Plaintiffs’ request for punitive damages.
IT IS SO ORDERED.
Dated: June 24, 2024
JON S. TIGAR
United States District Judge