Submitted: October 3, 2017
from a judgment entered in the Eastern District of New York
(Hurley, J.) dismissing this copyright infringement action
filed by Plaintiff-Appellant Great Minds against
Defendant-Appellee FedEx Office and Print Services, Inc.
("FedEx"). FedEx allegedly violated Great
Minds' copyright by reproducing Great Minds'
educational materials at the request of school districts,
which sought to use the materials for noncommercial purposes
under Great Minds' non-exclusive public license. The
public license does not explicitly address whether licensees
may engage third parties to provide commercial services that
assist the licensees in furthering their own noncommercial
uses. We hold that a copyright holder must state in its
license any limitation it might wish to impose precluding
such an engagement. We decline to infer any such limitation
in Great Minds' public license, and therefore AFFIRM the
District Court's judgment.
O. Millsaps II, Law Office of Rhett O. Millsaps II, New York,
New York; Eric M. Lieberman, Rabinowitz, Boudin, Standard,
Krinsky & Lieberman, P.C., New York, New York, for
D. Taylor & Nicholas O. Kennedy, Baker & McKenzie
LLP, Dallas, Texas; Michael A. Pollard, Baker & McKenzie
LLP, Chicago, Illinois, for Defendant- Appellee.
Before: Raggi, Hall, and Carney, Circuit Judges.
L. CARNEY, CIRCUIT JUDGE:
Great Minds appeals from the March 21, 2017 dismissal under
Federal Rule of Civil Procedure 12(b)(6) of its copyright
infringement action against FedEx Office and Print Services,
Inc. ("FedEx") in the United States District Court
for the Eastern District of New York (Hurley, J.).
We find that Great Minds' public license does not
explicitly address whether licensees may engage third parties
to assist them in exercising their own noncommercial use
rights under the license. We hold that, in view of the
absence of any clear license language to the contrary,
licensees may use third-party agents such as commercial
reproduction services in furtherance of their own permitted
noncommercial uses. Because FedEx acted as the mere agent of
licensee school districts when it reproduced Great Minds'
materials, and because there is no dispute that the school
districts themselves sought to use Great Minds' materials
for permissible purposes, we conclude that FedEx's
activities did not breach the license or violate Great
Minds' copyright. We therefore AFFIRM the District
Minds is a non-profit organization that designs educational
materials. These include a copyrighted curriculum called
"Eureka Math" (the "Materials"). Great
Minds sells the Materials in book form and also releases them
to the public without charge but subject to a "public
license" (the "License"), using a template
that is made available by a group called Creative
Commons. The License allows "[a]ny member of
the public [to] download, reproduce, and distribute [the
Materials] pursuant to the terms of the  License, which is
made available to all on the same terms without the need to
negotiate." Appellant's Br. 2.
License provides that "[e]very recipient of the
[Materials] automatically receives an offer from the Licensor
to exercise the Licensed Rights under the terms and
conditions of this  License, " and grants each
"individual or entity exercising the Licensed
Rights" what it describes as a "worldwide,
royalty-free, non-sublicensable, non-exclusive, irrevocable
license to . . . reproduce and Share the [Materials], in
whole or in part, for NonCommercial purposes only."
App'x 30-31. It defines "NonCommercial
purposes" to mean purposes "not primarily intended
for or directed towards commercial advantage or monetary
compensation." Id. at 30.
complaint, Great Minds characterizes these provisions as
amounting to an "explicit limitation of the License to
noncommercial use requir[ing] that commercial print shops . .
. negotiate a license and pay a royalty to Great Minds if
they wish to reproduce the Materials . . . at the request of
their [paying] customers." Id. at 10 ¶ 14.
Great Minds incidentally avers that it uses the revenue that
it receives from royalties and direct sales to fund the
development of new curricular materials. Id.
2015 and early 2016, Great Minds discovered that FedEx stores
in Michigan and New York reproduced the Materials, without
Great Minds' authorization, in the course of their
ordinary, for-profit business. After each such discovery,
Great Minds sent a letter to FedEx demanding that FedEx
either negotiate a royalty-bearing license with it or cease
commercial reproduction of the Materials. FedEx refused,
arguing that it had permissibly reproduced the Materials at
the request of school districts, which sought to use the
Materials for noncommercial purposes under the License.
Minds filed the instant lawsuit in March 2016, asserting a
single claim of copyright infringement against FedEx. The
District Court dismissed the action under Rule 12(b)(6),
concluding that the unambiguous terms of the License permit
FedEx to provide for-profit copying services on behalf of a
school district exercising noncommercial use rights under the
License. Great ...