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Implied Nonexclusive License as an Affirmative Defense to a Claim of Copyright Infringement in Pennsylvania


Legal issues pertaining to intellectual property, such as copyright infringement, are governed by federal law. Specifically, copyright infringement is covered under the Copyright Act, at 17 U.S.C. §§ 101 et. seq.To prove a claim for copyright infringement, a plaintiff must establish: (1) ownership of a valid copyright; and (2) unauthorized copying of original elements of the plaintiff’s work. Kay Berry, Inc. v. Taylor Gifts, Inc., 421 F.3d 199, 203 (3d Cir. 2005).

Under the Copyright Act, the owner of a copyright has the exclusive right to “copy, distribute or display his work.” MacLean Associates, Inc. v. WM. M. Mercer-Meidinger-Hansen, Inc., 952 F.2d 769, 778 (3d Cir. 1991) (citing 17 U.S.C. § 106). The owner of a copyright may transfer ownership by selling it or exclusively licensing it; transfers via exclusive licenses must be in writing. 17 U.S.C. § 204(a).An owner of a copyright may also grant a nonexclusive license to use the copyrighted work. MacLean, supra at 778-79.Because a nonexclusive license is expressly removed from the scope and language of § 204, courts have interpreted that a “nonexclusive license may be oral or implied because it does not amount to a ‘transfer’ of ownership.” Beholder Productions, Inc. v. Catona, 629 F. Supp.2d 490, 493 (E.D.Pa. 2009); see also MacLean, supra at 778.

The Third Circuit has found an implied license where three factors are present: “(1) a person (the licensee) requests the creation of a work, (2) the creator (the licensor) makes the particular work and delivers it to the licensee who requested it, and (3) the licensor intends that the licensee-requestor copy and distribute his work.” Beholder, supra at 494; see also National Ass’n For Stock Car Auto Racing, Inc. v. Scharle, 184 Fed.App’x. 270, 275 (3d Cir. 2006). “A nonexclusive license may arise by implication where the creator of a work at a defendant’s request ‘hands it over, intending that the defendant copy and distribute it.’” 274 (quoting MacLean, supra at 779).

“Whether there is an implied license is determined by an objective inquiry into the facts; the private hopes of the creator are not relevant.” Scharle, supra at 275. If the defendant can establish that the plaintiff granted him an implied nonexclusive license, it serves as an affirmative defense against a claim of copyright infringement. Id.

If you think that you might have a claim, or are potentially facing a claim, under the Copyright Act, please contact the experienced lawyers at Sidkoff, Pincus & Green in Philadelphia, who are licensed to practice law in all courts in Pennsylvania and New Jersey.