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Don’t copy that - Lack of implied license results in copyright infringement
The Internet continues to generate new twists and issues in copyright law, forcing courts to apply traditional legal concepts to technologies not contemplated when the Copyright Act was enacted. In one recent case, the U.S. Court of Appeals for the Eleventh Circuit considered whether the publication of material on a blog or “really simple syndication” (RSS) feed granted an implied license to use the material.
Plaintiff is fed up
MidlevelU operates a for-profit website that offers resources to health care providers. It also publishes a free blog designed to attract potential customers.
MidlevelU makes the full text of its blog articles available in an RSS feed. It also codes its website to instruct search engines to copy and archive every page on the site.
Newstex LLC, doing business as ACI Information Group, is a wholesale aggregator of news publications. It offers a curated index of abstracts and full-text articles of academic blogs to subscribers (mostly academic institutions). The full-text entries are from blogs for which it has a license; the abstracts are of blogs for which it doesn’t.
In 2017, it subscribed to the RSS feed for MidlevelU’s blog and included abstracts of the posts in its index. The index entries included a link to the original posts, but Newstex subscribers also could click on another link to view the full text without going to the MidlevelU website.
The companies didn’t have a licensing agreement. After receiving a cease-and-desist letter from MidlevelU, Newstex removed its content and coded links to index entries for MidlevelU’s articles to redirect to MidlevelU’s website.
But MidlevelU content still appeared in the website repositories of university libraries. The entries credited ACI as the content’s publisher and directed viewers to see the blog’s full-text content in the “subscribers only” section of the aggregator’s website.
Predictably, MidlevelU sued Newstex for copyright infringement. Newstex asserted it had an implied license to use the copyrighted material. The trial court ruled against Newstex on the license defense. Newstex appealed. The appeals court faulted some of the trial court’s reasoning but ultimately agreed that Newstex didn’t have an implied license.
Plaintiff posts a victory
The trial court relied on an earlier decision, Latimer v. Roaring Toyz, Inc., in which the court found that an implied license is created when one party:
- Creates a work at another person’s request,
- Delivers the work to that person, and
- Intends that the person copy and distribute the work.
The trial court found that Newstex didn’t satisfy the first element.
The appellate court explained that the lower court misread Latimer to mean that it created an exclusive test for implied licenses. But that case considered only the work-for-hire context — and, the court said, implied licenses can arise in circumstances outside that context. The court noted that other courts have recognized permission to use copyrighted material in web-based contexts vastly different from the facts in Latimer.
Newstex claimed that an implied license arose because MidlevelU didn’t code its website to instruct web crawlers (automated programs that crawl the Internet to locate, copy and archive webpages for a search engine index) not to copy any of its pages. But Newstex didn’t present any evidence that it used such a web crawler to collect content for its index.
To the contrary, Newstex presented testimony that it collected content by “grabbing it” through RSS feeds. As the court put it, “implied permission to enter through a front door (web crawler) does not also imply permission to enter through a back window (RSS feed).” Similarly, publishing the full text through an RSS feed didn’t imply permission “to enter and throw a party” by selling summaries of the full text paired with software showing the full-text content.
Limited entry
The court’s decision confirms that creating material at another’s request isn’t the essence of a license; an owner’s grant of permission to use the material is. And when the owner’s conduct clearly conveys a consent to use of the material, the owner grants an implied nonexclusive license. Unfortunately for Newstex, the court found that MidlevelU’s conduct didn’t constitute consent.
SIDEBAR: Fair use defense fails
The defendant in MidlevelU v. ACI Information Group (see main article) also asked the U.S. Court of Appeals for the Eleventh Circuit to reverse the jury’s rejection of its fair use defense. It argued that no reasonable juror could have found that fair use didn’t apply.
The court ran through the nonexclusive factors that generally determine whether a particular use is fair use: 1) the purpose and character of the use, 2) the nature of the copyrighted work, 3) the amount and significance of the portion taken, and 4) the effect of the use on the potential market for or value of the copyrighted work. It found that reasonable minds could differ about all four factors and whether fair use applied.
For example, the use of factual, as opposed to creative, material is more likely fair use. While the works at issue clearly weren’t fictional, they also weren’t bare factual compilations. At best, the court said, the nature of the work factor was neutral, but a jury reasonably could have found it weighed against fair use.
