A decision out of the Ninth Circuit that demands that we roll up our sleeves and attempt an exegesis on a Creative Commons public license? Count me in! 

#GeekProud. #ResistanceIsFutile. 

Plaintiff Great Minds publishes a math curriculum called "Eureka Math" which it sells commercially in print form. Great Minds also makes certain materials available to the public as a free digital download under a Creative Commons public license (the "Eureka Digital Materials"). A number of school districts that downloaded the free Eureka Digital Materials hired defendant Office Depot to copy them for classroom use. Great Minds alleged that Office Depot had marketed its copying services to schools expressly for this purpose. In 2015, after Great Minds discovered (and presumably complained about) this practice, Great Minds and Office Depot entered into a license agreement, pursuant to which Great Minds authorized Office Depot to copy the Eureka Digital Materials for school districts in exchange for royalty payments. Office Depot terminated this license a few years later after a district court in the Eastern District of New York, in an unrelated lawsuit brought by Great Minds against a different copying service, ruled that the other copying service had not infringed upon Great Minds’ copyrights when it reproduced the Eureka Digital Materials at the behest of school district licensees. Great Minds then sued Office Depot for copyright infringement.

The case turned on the interpretation of the applicable Creative Commons public license. Creative Commons is a nonprofit organization with a mission to build "a globally-accessible public commons of knowledge and culture." To accomplish this, Creative Commons makes available license templates that (in its words) "give every person and organization in the world a free, simple, and standardized way to grant copyright permissions for creative and academic works." Many websites - including Wikipedia, Flickr, and Vimeo - provide their users with the option of licensing works with Creative Commons licenses. The licenses come in six different flavors. Here, Great Minds chose to make the Eureka Digital Materials available to the public pursuant to the Creative Commons Attribution—Non Commercial—Share Alike 4.0 International Public License. Creative Commons describes this license, in lay person terms, as allowing others to "remix, tweak, and build upon [the licensor’s] work non-commercially, as long as they credit [the licensor] and license their new creations under the identical terms."

These are the key provisions of the public license that you need to know to understand the arguments made by the parties:

• Great Minds granted users a "worldwide, royalty-free, non-sublicensable, non-exclusive, irrevocable license to ... reproduce and Share [the Eureka Digital Materials], in whole or in part, for NonCommercial purposes only." 
• "Share" is defined as "to provide material to the public by any means or process that requires permission under the Licensed Rights, such as reproduction, public display, public performance, distribution, dissemination, communication, or importation." 
• "Licensed Rights" means all rights under copyright law and "similar rights closely related to copyright."
• "Noncommercial" is defined as "not primarily intended for or directed towards commercial advantage or monetary compensation." 
• The license includes provisions pertaining to "downstream recipients," including that "[e]very recipient of [the Eureka Digital Materials] automatically receives an offer ... to exercise the Licensed Rights under the terms and conditions of this Public License."

Great Minds argued that, pursuant to the applicable terms of the license, (1) Office Depot was a downstream recipient, (2) Office Depot, accordingly, had received an "offer" to exercise the Licensed Rights "under the terms and conditions" of the public license, and (3) as a licensee, Office Depot was bound by the non-commercial use requirement. Because, in Great Mind’s view, Office Depot made a commercial use of the Eureka Digital Materials when it accepted payment in exchange for photocopying services, it had breached the agreement and was liable for copyright infringement.

The Ninth Circuit disagreed and held that Office Depot did not itself become a direct licensee when it was engaged by the schools to photocopy the Eureka Digital Materials. The court ruled that a "licensee’s hiring of a third-party copy service to reproduce licensed material strictly for the licensee’s own permitted use does not turn that third party into a licensee that is bound to the License terms." This makes sense since Office Depot never consented to the terms of the public license. 

The court also found that Office Depot wasn’t liable for copyright infringement. There was no dispute that the license permitted the direct licensees (the school districts) to make copies of the Eureka Digital Materials for noncommercial use. Here, Office Depot was acting on behalf of the licensees – as their agent. Accordingly, Office Depot’s "activities remain within the ambit of the schools and school districts’ license" and was, essentially, "sheltered" by the terms of that license. The court noted that nothing in the license expressly prohibited the licensee school districts from hiring a third party contractor to make copies. Moreover, to interpret the agreement as prohibiting the school districts from outsourcing photocopying would lead to absurd results. As the court noted. 

"[T]hat argument produces the following absurd results: (1) a teacher may copy Eureka Math on an Office Depot-owned copy machine for a fee in-store, but cannot hand the materials to an Office Depot employee to be copied; (2) a school may pay a copy machine provider a monthly fee to keep a machine on site to copy Eureka Math, but cannot pay Office Depot employees to make the same copies; and (3) a school may permit teachers to copy Eureka Math on school-owned or leased machines, but cannot pay a high school student to make the same copies."

The Ninth Circuit cited with approval the Second Circuit’s decision that reaches the same result in the case involving the other copying service (mentioned above).

In the wake of the these decisions, Great Minds could, of course, change the way it does business. For example, in the future, it could make the Eureka Digital Materials available to schools under a bespoke license that bars licensees from using third party services to photocopy the Eureka Digital Materials. Yet ... revising its license in this (unusual) manner would not be without its risks. After all, it is possible (likely, even) that school district licensees would (either knowingly or innocently) breach such a provision. This would put Great Minds in the unenviable position of having to enforce the license against public school districts, its actual (and potential) customers. 

Great Minds v. Office Depot, Inc., 945 F.3d 1106 (9th Cir. 2019)