Creative Commons Non-Commercial Does Not Exclude Copy-for-Hire

The end of 2019 brought an interesting decision that could bear on open source licensing. The case interpreted a Creative Commons license, but raised an issue that crops up regularly for open source.

In Great Minds v. Office Depot, the Ninth Circuit affirmed dismissal of a copyright infringement claim by a publisher against a copy shop.  Great Minds published a curriculum called Eureka Math. It sold copies, but also made Eureka Math available for download online under the Creative Commons Attribution-NonCommercial-ShareAlike 4.0 International License (“CC-NC”).

Schools and school districts, intending to use the materials under CC-NC, paid Office Depot to make copies of Eureka Math for use in their schools. Two principles were taken as given: that the schools’ intended use of the materials was authorized under CC-NC, but that if Office Depot were considered a licensee under CC-NC License, its use would not be authorized.

The Court held that Office Depot was not a licensee, because 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” under the CC-NC License.  The Court specifically addressed Section 2(a)(5)(A) of CC-NC , concluding that Office Depot was not a “downstream recipient” of Eureka Math.  The Court also disagreed with Great Minds’ “volitional” arguments, explaining the “absurd” results of treating copies made by a third-party copy shop differently from copies made by the schools’ own employees. 

This case bears on a common question for open source licensing: If a company has customized but not distributed GPL software that was developed by others, can the company engage a contractor to test or further develop that software without licensing the contractor under GPL? Most companies that ask this question put it a different way: Is engaging an contractor “distribution” that invokes copyleft requirements?

Based on this case, and on custom and practice, the answer is no. The contractor need not be licensed under GPL. Companies often take this issue seriously, because they wish to preserve their right to use “private copies” without disclosing source code under GPL.

Thanks to Patrick Nack-Lehman for his help preparing this post.

Author: heatherjmeeker

Technology licensing lawyer, drummer, dancer

Leave a Reply