Metropolitan News-Enterprise


Monday, December 30, 2019


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Ninth Circuit:

Office Depot Did Not Breach Copyright By Making Photocopies for a Fee


By a MetNews Staff Writer


The Ninth U.S. Circuit Court of Appeals on Friday held that Office Depot did not infringe a publisher’s copyright by making photocopies of its materials, for a fee, where the customers were a school and a school district which had a license to noncommercially reproduce those materials.

The opinion, by Circuit Judge Jerome Farris, affirms the dismissal by District Court Judge John F. Walter of the Central District of California of an action by Great Minds, which publishes materials known as “Eureka Math.”

Great Minds said in its Oct. 11, 2017 complaint:

“Office Depot, being fully aware of Great Minds’ rights in and to Eureka Math, is deliberately and willfully infringing those rights by actively soliciting customers for commercial reproduction of Eureka Math by Office Depot and by reproducing and distributing Eureka Math for profit without Great Minds’ authorization.”

Nationwide Operations

The pleading notes:

“Upon information and belief. Office Depot owns and operates approximately 1,400 Office Depot and Office Max stores throughout the United States—including but not limited to stores in and around Los Angeles. California—that provide, among other things, printing, duplication, and binding services to businesses, schools, and the general public.”

Great Minds, a non-profit organization, grants a “worldwide, royalty-free, non-sublicensable, non-exclusive, irrevocable license to...reproduce and Share” Eureka Math, but for “NonCommercial purposes only....” The plaintiff alleged that Office Depot was a “downstream recipient” of the schools’ licensing rights, and violated the terms by charging a fee for copying, thus becoming a copyright infringer.

Farris’s Opinion

Farris wrote:

“Office Depot is not a downstream recipient. That Office Depot employed field representatives to advertise the availability of copying services for schools and school districts that use Eureka Math does not confer a licensee status on Office Depot. Its activities remain within the ambit of the schools and school districts’ license.”

He went on to declare:

“Under the License, a non-commercial licensee may hire a third-party contractor, including those working for commercial gain, to help implement the License at the direction of the licensee and in furtherance of the licensee’s own licensed rights. The License extends to all employees of the schools and school districts and shelters Office Depot’s commercial copying of Eureka Math on their behalf. Holding differently 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. We conclude that the licensees’ contract with Office Depot to exercise the licensees’ rights under the License does not impose an independent liability on Office Depot. As a result, Great Minds has failed to state a plausible claim to relief on its copyright infringement claim.”

The case is Great Minds v. Office Depot, 18-55331.


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