When there is an issue of scope regarding a copyright license the burden is on the issuer

Cheryl Smith v. BarnesandNoble.com, LLC

Mr. Smith licensed his book to the defendant, but when disappointed by the sales he decided to terminate his agreement with Barnes and Nobles, LLC. “A claim of direct copyright infringement requires proof that (1) the plaintiff had a valid copyright in the work; and (2) the defendant infringed the copyright by violating one of the exclusive rights that 17 U.S.C. §106 bestows upon the copyright holder.” Since there was no debate in this case regarding the validity of the licensing of the copyright to the defendant, the issue turns in whether the defendant exceeded the contracted for scope of the license and the burden of proof there lies on the holder of the copyright.

The agreement that both parties entered into allowed for the distribution of samples as promotional material. When the contract was cancelled, only those consumers who had legitimately acquired the sample were able to continue to receive access for two additional interactions with the sample. Additionally, paper samples could not be limited because once the consumer had a copy, it was theirs to use as they pleased.

These points of access were the plaintiff’s concern. However, the court differentiated the distribution of content from access, once the digital sample was distributed to the consumer the transaction was over, the only thing remaining was access according to the court which was not a part of the licensing agreement.

Effectively, the licensing of the book by the plaintiff was valid, which allowed Barnes and Nobles to distribute samples in line with the same agreement, however due to the advents of technology the court has created a distinction between distribution and online access.

This article is provided for informational purpose only and is not intended as a form of legal advice. If you have any questions on the subject matter of this article, call Roland Tong, at 949-298-6867 or email Mr. Tong at [email protected]. Mr. Tong has been obtaining patent, trademark, copyright, and trade secret protections for his clients since 2001. He has represented a wide range of clients from start-up companies to Fortune 500 companies in a wide range of industries.