United States District Court, E.D. New York
Office of Rhett O. Millsaps II Attorneys for Plaintiff By:
Rhett O. Millsaps II, Esq.
& McKenzie LLP Attorneys for Defendant By: Mark D.
Taylor, Esq. Nicholas O. Kennedy, Esq.
MEMORANDUM & ORDER
R. Hurley United States District Judge.
Great Minds (“plaintiff” or “GM”)
commenced this action against defendant FedEx Office and
Print Services, Inc. (“defendant” or
“FedEx”) alleging violations of the Copyright Act
of 1976, as amended, 17 U.S.C. §§ 101 et
seq. Presently before the Court is defendant's
motion to dismiss the complaint and for an award of
attorney's fees. For the reasons set forth below, the
motion to dismiss is granted and the motion for
attorney's fees is denied.
following allegations are taken from the complaint
(“Compl.”) and documents attached thereto.
is a non-profit organization that produces various
educational materials used by school districts across the
county. Included in those materials is a comprehensive
mathematics curriculum, Eureka Math, for grades
PreK-12 (“Material” or “Licensed
Material”) for which GM owns the federal copyright.
Plaintiff publishes and sells printed book versions of the
Material and has entered into royalty bearing licenses with
third parties for commercial reproduction of the Material.
Compl. ¶¶ 8-11, 15.
also makes the Material available under a “Creative
Commons Attribution - Non Commercial - Share Alike 4.0
International Public License (the
“License”).” Compl. ¶ 12 & Ex. B.
As such, GM is the licensor. GM's “public licensing
of its Eureka Math curriculum under this Creative
Commons license advances [its] mission and benefits the
public by allowing teachers, students, and school districts
to freely share, reproduce, and use the Materials for their
noncommercial, educational benefit.” Compl. ¶ 12.
License describes the licensed rights in relevant part as
follows: “Licensor hereby grants You a worldwide,
royalty-free, non-sublicensable, non-exclusive, irrevocable
license to exercise the Licensed Rights in the Licensed
Material to reproduce and Share the Licensed Material, in
whole or in part, for NonCommercial purposes only.”
Compl. Ex. B, ¶ 2(a)(1)(A). “You” is defined
as “the individual or entity exercising the Licensed
Rights.” Compl. Ex. B ¶ 1(n). The License further
provides that as Licensor, plaintiff “waives any right
to collect royalties from You for the exercise of the
Licensed Rights, whether directly or through a collecting
society under any voluntary or waivable statutory or
compulsory licensing scheme. In all other cases the Licensor
expressly reserves any right to collect such royalties,
including when the Licensed Material is used other than for
NonCommercial purposes.” Id. at ¶
2(b)(3). The License defines NonCommercial as “not
primarily intended for or directed towards commercial
advantage or monetary compensation. For purposes of this
Public License, the exchange of Licensed Materials for other
material subject to Copyright or Similar Rights by digital
file-sharing or similar means is NonCommercial provided there
is no payment of monetary compensation in connection with the
exchange.” Id. ¶ 1(k). “You”
is defined as “the individual or entity exercising the
Licensed Rights under this Public License.”
Id. ¶ 1(1). The License requires that a
licensee who shares the Material must, inter alia,
“indicate the Licensed Material is licensed under this
Public License, and include the text of, or the URI or
hyperlink to, this Public License.” Id. ¶
3(a)(1)(C). With respect to “Downstream recipients,
” the License provides that “[e]very recipient of
the Licensed Material automatically receives an offer from
the Licensor to exercise the Licensed Rights under the terms
and conditions of this Public License” and “[y]ou
may not offer or impose any additional or different terms or
conditions on, or apply any Effective Technological measures
to, the Licensed Material if doing so restricts exercise of
the Licensed Rights by any recipient of the Licensed
Material.” Id. at ¶ 3(a)(5)(A) & (C).
around October 2015 GM discovered that “at least one
FedEx store in Michigan had reproduced the Material for
profit - a commercial use - without authorization.” In
response to GM's demand that FedEx enter into a
royalty-bearing license or cease reproduction of the
Materials, FedEx asserted that “its duplication of the
Materials for its own profit was lawful because FedEx was
assisting school districts in their noncommercial use of the
Materials” and refused to comply with GM's demand.
Compl. ¶¶ 16-18.
February 2016, GM “discovered that at least one FedEx
store in or around Suffolk County, New York also had
reproduced the materials for profit without authorization or
license . . . .” Compl. ¶ 19. In response to
GM's renewed demand to cease commercial reproduction of
the Materials or to enter into a license, FedEx again
declined because “in FedEx's view, FedEx is merely
acting as agent for school districts in assisting them with
their lawful activities under the License.”
Id. ¶¶ 20, 21.
action asserting a claim for copyright infringement followed.
Standard of Review - ...