License To Use Publisher’s Copyrighted Math Curriculum Did Not Prohibit Licensee From Employing Third Party Commercial Printing Service

CATEGORY: Private Education Matters
CLIENT TYPE: Private Education
DATE: Mar 04, 2020

Great Minds is a nonprofit organization that publishes copyrighted math curriculum called “Eureka Math.”  Great Minds sells Eureka Math in print form and also permits any member of the public to download Eureka Math online free of charge under a limited public copyright license (License).  The License permits individuals or entities to reproduce and share Eureka Math for non-commercial purposes.  Under the License, a non-commercial purpose is one that is “not primarily intended for or directed towards commercial advantage or monetary compensation.”  The License grants Great Minds the right to collect royalties from individuals or entities that use Eureka Math for a commercial purpose.

Public schools, school districts, and other educational institutions (Licensee-Schools) often utilize Office Depot and other commercial print shops to make copies of Eureka Math materials for their own use.  Office Depot charges the Licensee-Schools a fee to make copies of the materials.

Great Minds filed a copyright infringement claim against Office Depot, alleging that Office Depot infringed Great Minds copyright by “reproducing and distributing Eureka Math for profit without Great Minds’ authorization.”  Great Minds contended that the provision in the License limiting reproduction and sharing of Eureka Math for non-commercial purposes only prohibited Office Depot from making copies of the materials on behalf of the Licensee-Schools at a profit.  Great Minds also asserted that the License required Office Depot, as a commercial print shop, to pay a royalty to Great Minds in order to make copies of Eureka Math on behalf of the Licensee-Schools at a profit.

The court disagreed with Great Minds’ arguments, finding that the License permitted the Licensee-Schools to use Eureka Math for the non-commercial purposes to employ third parties like Office Depot to make copies of Eureka Math curriculum on their behalf.  The court noted that following Great Minds’ interpretation and reaching the opposite conclusion would cause “absurd results” such as permitting a teacher to copy Eureka Math on an Office Depot copier for a fee, but prohibiting her from having an Office Depot employee copy the materials for her, or permitting “a school [to] pay a copy machine provider a monthly fee to keep a machine on-site to copy Eureka Math, but [prohibiting paying] Office Depot employees to make the same copies.”  Also, the court noted that it would “prevent proper non-commercial licensees from using relatively common means of reproduction to share, engage with, and exercise their rights to the licensed work in a way that would contravene the intent of the License and undermine its utility.”

Accordingly, the court determined that Office Depot was not prohibited under the License from making copies of Eureka Math at a profit for the Licensee-Schools.  Similarly, the court held that the Licensee-Schools may hire a third-party contractor, including those working for commercial gain, to help implement the License in their direction and in furtherance of their own rights under the License.

Great Minds v. Office Depot, Inc. (9th Cir. 2019) 945 F.3d 1106.