Great Minds v. FedEx, 16-CV-1462 (E.D.N.Y. 2016)
Great Minds produces educational materials used by schools across the country. Great Minds make some of these materials available under a “Creative Commons Attribution – NonCommercial – Share Alike 4.0 International Public License.” The license grants licensees (schools) use of Great Minds materials “for NonCommercial purposes only.” Great Minds discovered that schools have been using FedEx stores to make copies of the materials. Great Minds alleged that because FedEx was charging more than their costs to make the copies, the materials were being used for an unauthorized “commercial use.” For a summary of the case click here.
FedEx moved for the case to be dismissed asserting that “the complaint rests upon the mistaken premise that the school district that Great Minds explicitly licenses to reproduce its materials for educational use may not enlist FedEx to make those reproductions on their behalf. . . . The law is clear that a licensee may enlist others to help perform licensed activities. FedEx is doing just that. There is therefore no infringement.” Great Minds respond that FedEx “overlook[ed] that the License specifically limits it grant of rights to NonCommercial purposes only and specifically reserves any right to collect royalties when the Licensed Materials is used for other than NonCommercial purposes.”
The Court granted FedEx’s Motion to Dismiss reasoning that “A licensee to make and use is not (in the absence of specific language in the license) limited to making with his own hands, in his own shop, or by his own employees. He may employ, procure, or contract with as many persons as he chooses to supply him with that which he may lawfully use, provided such conduct does not change his relation to the licensor.” And concluded, “[i]n sum, the unambiguous terms of License permit FedEx to copy the Materials on behalf of a school district exercising rights under the License and charge that district for that copying at a rate more than FedEx’s cost, in that absence of any claim that the school district is using the Materials for other than a ‘non-Commercial purpose.’ The motion to dismiss is granted.”