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Email Exchange Ending With “Great. Thanks” is Copyright License, Says Federal Court

By John DiGiacomo

Copyrights apply to what are called “original works” and come into existence when the original work is created. Copyrights are protected at common law, by state law, and by the federal Copyright Act of 1976. See 17 U.S.C. §101 et seq. Copyrights are potentially quite valuable to an author or business. Examples include the royalty rights for a blockbuster movie or a best-selling book. Beyond a limited category of use that is called “fair use,” the owners of a copyright have the legal right to control who may copy or use the original work. Generally, if a copyright owner plans on allowing use or copying, the owner should have a written license agreement drafted and executed. An experienced copyright attorney like the ones here at Revision Legal should be retained to ensure that the license accomplishes what is intended.

Among the more important aspects of a good written copyright license are the following:

  • Clearly defining what is the original work
  • Defining what type copying or use that is permitted (for example, printed, but not electronic)
  • Establishing payment
  • Limiting copying and/or use (for example, one copy or one performance)
  • Setting the term of the license (for example, one year)
  • Requiring proper and prominent attribution
  • Prohibiting sub-licensing
  • And more

Copyright owners should understand the importance of an effective license. Furthermore, copyright owners should avoid actions and statements that create an inadvertent license. A recent federal Second Circuit case held that ending in an email chain with “Great. Thanks.” was sufficient to grant copyright license for publication of a news media article. See Joseph v. Buffalo News, Inc., Case No. 18-2793 (2nd Cir. 2019). In that case, a writer named Joel Joseph, wrote an article for the Buffalo News, a local media outlet for Buffalo, New York. Joseph submitted the article for publication and one of the editors for the Buffalo News responded via email that there was “a spot for” the article in an upcoming edition. Joseph responded with an email that said “Great. Thanks.”

According to the court, the exchange of emails between the Buffalo News and Joseph created a copyright license that entitled the Buffalo News to publish the article in question without payment. When he submitted the article, Joseph did not include a formal copyright license and did not ask for any sort of payment. When Joseph demanded payment after the article was published, the Buffalo News refused. Joseph sued and claimed copyright infringement. However, his efforts were rejected.

As the court explained, a legal cause of action for copyright infringement requires proof of two elements:

  • Possession of a valid registered copyright and
  • That the defendant copied or distributed the copyrighted work without authorization

The court held that Joseph failed to state a claim for copyright infringement. While it was clear that Joseph held a valid copyright with respect to his article, Joseph could not establish that publication by the Buffalo News was unauthorized. The “Great. Thanks” email chain was sufficient to create a copyright license. The court emphasized the long-standing rule that copyright licenses may “be implied from conduct.” The Court of Appeals affirmed dismissal of the case by the trial court.

The court also affirmed dismissal of Joseph’s claim with respect to the scope of the license. The article in question was published in the print edition and was also posted for several months on the online version of the Buffalo News. Joseph attempted to salvage his lawsuit by arguing that, even if his “Great. Thanks” email was a copyright license, the license was only “good” for the print edition. Again, Joseph was rebuffed by the courts. When the legal issue concerns the scope of a license, the holder of the copyright has the burden of proof. The author must prove the license, any limitations and that the copying or use exceeded the license. Joseph could not prove this because he had failed to set any boundaries or limitations to the use of his article in his emails. As such, he could not demonstrate that the Buffalo News was not licensed to post the article in the print edition and online. That Joseph had not limited the scope of his license was bolstered by the fact that he never demanded that the article be taken down off the website and never responded when the Buffalo News offered to take down the article.

As said above, when granting permission to others to use or copy your “original works,” it is important to have a written copyright license. If you have questions about copyright licenses or about protecting your copyrights and other intellectual property, contact the copyright lawyers at Revision Legal at 231-714-0100.

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