is (according to the site) a "baking platform with video recipes designed to inspire sweet and delicious creations in the kitchen" that was founded by two famous chefs from The French Pastry School in Chicago. At a cost of $24.99 per month or $199.99 per year, subscribers get access to recipes, videos, and other exclusive content. The site (IMHO) is polished and appealing. Without a doubt, a subscription would make a wonderful holiday gift for anyone on your list who aspires to become a competent home baker. 

In 2016, the publishers of ("Butter Book") engaged Laura Miller to develop content for the site. Over the next two years, Miller worked on a glossary of terms, “learn pages" that teach food-science concepts, course descriptions, employee biographies, and blog entries (collectively, the "Work Product"), and Butter Book paid her more than $50,000 for doing so. Unfortunately for everyone involved, the agreements between the parties did not address ownership of Miller's Work Product.

At some point in 2018, the relationship between the parties soured (the opinion is silent as to why). Eventually, Butter Book demanded that Miller turn over the Work Product and sign a proposed "Content Provider Agreement" (which, presumably, included a full assignment of all rights in the Work Product). Rather than comply, Miller countered by sending Butter Book a proposed agreement of her own which included a copyright license for the Work Product (which, apparently, was more limited in scope than Butter Book wanted). Naturally, Butter Book refused to sign Miller's license agreement. After registering the Work Product with the Copyright Office, Miller sued Butter Book seeking declarations that (1) she is the sole owner of the copyrights to the Work Product; (2) she did not grant an implied license to Butter Book to use the Work Product; and (3) Butter Book's unauthorized use of the Work Product constituted copyright infringement. (Miller also asserted claims for fraudulent inducement, fraudulent concealment, and promissory estoppel under Illinois law.) Butter Book counterclaimed for, among other things, a declaration that Miller had granted Butter Book an implied license to use the disputed Work Product. 

This case presents an all-too-common story. A relationship that began with so much promise ends in acrimony before the parties got around to executing a contract that spells out (or, perhaps, before the parties had come to an agreement on) an important term (here, ownership). And then it is left for the court to sort out the mess.

The parties cross moved for summary judgment on the implied license and copyright claims and counterclaims. Last month, District Judge Edmond E. Chang (sitting in the Northern District of Illinois) denied those motions. (Judge Chang did grant Butter Book's motion for summary judgment on the state law claims.)

1. Implied License? In the absence of a written agreement, did the parties' actions here give rise to an implied-in-fact license? If it did, then Butter Book would have been entitled to exploit the Work Product pursuant to the terms of that license without interference from Miller. For Butter Book, this is its best shot at winning.

While the Copyright Act requires that a transfer of copyright ownership or an exclusive license be in writing, a non-exclusive license can be granted verbally or inferred through conduct. See 17 U.S.C. § 204(a) (a "transfer of copyright ownership ... is not valid unless an instrument of conveyance, or a note or memorandum of the transfer, is in writing and signed by the owner of the rights conveyed"); 17 U.S.C. § 101 ("transfer of copyright ownership" defined to exclude non-exclusive licenses). In the Seventh Circuit, a non-exclusive license can be implied when “(1) a person (the licensee) requests the creation of a work, (2) the creator (the licensor) makes that particular work and delivers it to the licensee who requested it, and (3) the licensor intends that the licensee-requestor copy and distribute this work.” I.A.E. v. Shaver, 74 F.3d 768, 776 (7th Cir. 1996). 

Here, Judge Change concluded that material, disputed issues of fact existed as to whether an implied license could be inferred based on the parties' conduct. On the one hand, a jury might conclude that a license arose because Miller had shared several drafts of the Work Product with Butter Book and was paid for her efforts. On the other hand, a jury might be persuaded that no license should be inferred given that Miller rejected the the Content Provider Agreement proposed by Butter Book, sent Butter Book a proposal for a limited copyright license, and sought and obtained copyright registrations for the Work Product. 

2. Joint Work? Miller sought a declaration that she was the sole author of the Work Product; Butter Book argued that, if there was no implied license, then the Work Product constituted joint work co-authored by Miller and Butter Book.

Under the Copyright Act, a “joint work” is defined as “a work prepared by two or more authors with the intention that their contributions be merged into inseparable or interdependent parts of a unitary whole.” (17 U.S.C. § 101.) To qualify as a joint work, both parties must contribute copyrightable content to the endeavor. See Erickson v. Trinity Theatre, Inc., 13 F.3d 1061 (7th Cir. 1994). If the Work Product were determined to be joint work co-authored by Miller and Butter Book, then (in the absence of an agreement to the contrary between the parties), each of them would hold an undivided interests in the Work Product (17 U.S.C. § 201(a)), and Butter Book would be entitled to exploit the Work Product without additional consent from Miller. (However, Butter Book would have a duty to account to Miller for profits, a fact that could cause complications for Butter Book down the road.)

Miller argued she was the sole author of the Work Product because (1) she was the lead writer and editor of the Work Product who provided the "voice" for Butter Book's ideas; and (2) the elements that Butter Book contributed to the Work Product either were not original content and/or were nothing more than ideas or technical edits that were not copyrightable. Butter Book countered that it had provided Miller with thorough feedback and supervision throughout the project and had supplied copyrightable content that ultimately was incorporated in the Work Product, including text from its website and videos that formed the basis for some of the "learn pages" created by Miller. Once again, Judge Chang concluded that there was a genuine dispute of material fact over whether Butter Book’s contributions went beyond general “ideas, refinements, and suggestions” sufficient to pass the test of copyrightability. Accordingly, "[t]he jury will have to decide whether Butter Book was a joint author of the Work [Product]."

The result here is not a huge surprise since the parties disagreed on a number of key factual issues, including whether Miller was engaged to be the lead writer and editor of the site, the extent to which Miller independently created the Work Product, and whether Butter Book contributed copyrightable elements to the Work Product. 

Miller v. The French Pastry School, LLC, No. 1:18-cv-04738, 2021 WL 5493236 (N.D. Ill. Nov. 23, 2021)