Law.com Subscribers SAVE 30%

Call 855-808-4530 or email [email protected] to receive your discount on a new subscription.

Raising a License Defense In a Copyright Infringement Action

By Christine Lepera and Christopher T. Bavitz
August 26, 2003

The Copyright Act (17 U.S.C. Sec. 204) provides that '[a] transfer of copyright ownership, other than by operation of law, is not valid unless an instrument of conveyance, or a note or memorandum of the transfer, is in writing and signed by the owner of the rights conveyed or such owner's duly authorized agent.' A copyright infringement defendant may argue that it made use of a plaintiff's work pursuant to a grant of rights or license from the plaintiff. Where a license is written, the consent defense is relatively straightforward, and frequently turns on whether or not the defendant acted in accordance with the terms and scope of the license at issue. Where no writing exists, however, a plaintiff can more readily challenge such consent and force the defendant to face the writing hurdle imposed by Sec. 204.

Notwithstanding the statutory requirement, in recent years federal courts have demonstrated an increasing willingness to hold parties to the terms of implied or oral license agreements. If a copyright defendant acts pursuant to an oral or implied license, such a license to use a copyrighted work for a particular purpose can preclude a finding of infringement. The oral or implied license doctrine thus provides a powerful defense for a defendant charged with infringement who was granted permission, implicitly or orally, by a plaintiff to use a particular work, but never obtained such consent in writing.

The leading case on implied licenses is Effects Assoc. v. Cohen, 908 F.2d 555 (9th Cir. 1990), cert. denied, sub nom., Danforth v. Cohen, 498 U.S. 1103 (1991). In that case, the writer/director of a horror movie asked a special effects company to create effects footage for his film. The special effects company offered to prepare seven effects shots, and the writer/director orally agreed to pay a specified sum in exchange for the footage. But the parties did not discuss any license or grant of rights that would permit the writer/director to use the film clips produced by the effects company. After the writer/director released the movie, the special effects company sued for copyright infringement.

This premium content is locked for Entertainment Law & Finance subscribers only

  • Stay current on the latest information, rulings, regulations, and trends
  • Includes practical, must-have information on copyrights, royalties, AI, and more
  • Tap into expert guidance from top entertainment lawyers and experts

For enterprise-wide or corporate acess, please contact Customer Service at [email protected] or 877-256-2473

Read These Next
Major Differences In UK, U.S. Copyright Laws Image

This article highlights how copyright law in the United Kingdom differs from U.S. copyright law, and points out differences that may be crucial to entertainment and media businesses familiar with U.S law that are interested in operating in the United Kingdom or under UK law. The article also briefly addresses contrasts in UK and U.S. trademark law.

Strategy vs. Tactics: Two Sides of a Difficult Coin Image

With each successive large-scale cyber attack, it is slowly becoming clear that ransomware attacks are targeting the critical infrastructure of the most powerful country on the planet. Understanding the strategy, and tactics of our opponents, as well as the strategy and the tactics we implement as a response are vital to victory.

The Article 8 Opt In Image

The Article 8 opt-in election adds an additional layer of complexity to the already labyrinthine rules governing perfection of security interests under the UCC. A lender that is unaware of the nuances created by the opt in (may find its security interest vulnerable to being primed by another party that has taken steps to perfect in a superior manner under the circumstances.

Removing Restrictive Covenants In New York Image

In Rockwell v. Despart, the New York Supreme Court, Third Department, recently revisited a recurring question: When may a landowner seek judicial removal of a covenant restricting use of her land?

The Benefits of Blockchain for e-Discovery and Data Preservation Image

As businesses across various industries increasingly adopt blockchain, it will become a critical source of discoverable electronically stored information. The potential benefits of blockchain for e-discovery and data preservation are substantial, making it an area of growing interest and importance.