Web developer gave implied copyright license to clients; court awards summary judgment to defendants in infringement action

In the case of Attig v. DRG, Inc., the U.S. District Court for the Eastern District of Pennsylvania has held that former clients of a web developer had an implied, nonexclusive copyright license to copy and move to different servers two websites that plaintiff web developer created and hosted for them.

Late in 1999, plaintiff Attig, a website developer, entered into an agreement with defendants to update and host two of defendants’ websites. One of the individual defendants had created the original versions of these sites using a template. Attig agreed to give the sites a “facelift,” add some basic information, and arrange for hosting. Defendants paid each invoice in full for web development services that Attig sent them.

In 2003, the defendants hired a new technology consultant to assist them with their web development matters. During this process, the defendants switched to a different hosting provider. Attig filed suit, claiming that he owned the copyright in the websites, and alleged that the defendants infringed his copyright by moving the sites to a different web server. The defendants moved for summary judgment, and the court granted the defendants’ motion.

Defendants presented several arguments in favor of their motion for summary judgment. Among those arguments was that Attig, in creating and delivering the websites to defendants, granted them an irrevocable, nonexclusive implied license. The court agreed with this argument. The defendants’ conduct in copying the sites do a different server did not exceed this implied license, thus they could not be liable for copyright infringement.

The court noted that “a nonexclusive license arises where the creator of a work, at the defendant’s request, hands it over, intending that the defendant copy and distribute it.” This analysis (according to the Ninth Circuit decision in Effects Associates v. Cohen, 908 F.2d 555 which was relied upon by the court) requires a determination of whether (1) the licensee requests the creation of a work, (2) the licensor makes that particular work and delivers it to the licensee, and (3) the licensor intends that the licensee copy and distribute the work.

The court easily found that the first two prongs of the analysis were met. The third prong required more discussion, but ultimately the court found that Attig had intended that the defendants copy and use the websites. To make this determination, the court looked for guidance in the Southern District of New York case of Holtzbrinck Publishing Holdings, L.P. v. Vyne Communications, Inc., 2000 WL 502860. Of particular importance in that case was the common sense determination that a customer would not be willing to pay good and valuable consideration for a site that it could not use. In this case, Attig had placed a copyright notice on one of the sites he updated, attributing ownership to the one of the defendants. He also sent correspondence referring to the sites as belonging to defendants. The court found these facts to reveal Attig’s intent regarding ownership.

Attig v. DRG, Inc., 2005 WL 730681 (E.D.Penn., March 30, 2005).