Order Denying Motion for Summary Judgment

U.S. District Judge James Ware denies Defendants' motion for summary judgment. 

For Plaintiff: Mr. Cortes (the winning brief)
For Defendants: Laurence Pulgram, Liwen Mah, Jedediah Wakefield

Fools try the same fraud thrice

Defense counsel claim that "Plaintiffs bear the burden on summary judgment of showing that the scope of those licenses did not include Chordiant Inc." and "the undisputed evidence reflects no agreement to exclude Chordiant as a licensee."

The Court finds that "there are genuine issues of material fact as to whether a license was granted to Defendant Chordiant Inc." In other words, Defendant has the burden to prove the existence of a license before talking about the scope of a license.

"[A]n implied license will be found only in narrow circumstances where one party created a work at the others request and handed it over, intending that the other copy and distribute it." Ulloa v. Universal Music & Video Distribution Corp., 303 F. Supp. 2d 409, 416 (S.D.N.Y. 2004). "In order to establish an implied license, as for any implied contract, [the Defendants] must prove that there was a meeting of the minds." Ulloa, 303 F. Supp. 2d at 416. See also, John G. Danielson, Inc. v. Winchester-Conant Properties, Inc., 322 F.3d 26 (1st Cir. 03/06/2003).

Against this rule, some copyright defendants think they find a cure-all in Field v. Google Inc., 412 F. Supp. 2d 1106, 1116 (D. Nev. 2006). However, that case had a specific set of facts. There, the plaintiff specifically created many copyrighted works for Google to copy off his web site -- he wrote 51 works in three days, he knew Google's cache mechanism would copy those poems, he also knew that he could inform Google's search engine not to cache the web pages. But he intended Google's machines to cache the poems, so he could "manufacture a claim for copyright infringement against Google in the hopes of making money from Google's standard practice."
According to the Field court, the intention to let Google copy the works created an implied license, even though plaintiff did not create the work upon Google request.

2. A typical logically false argument is asking the other side to prove the negative. Defendants say that because Plaintiff cannot prove they do not have a license therefore Defendants have a license. Sounds wonderful news for all defendants in civil litigation. The agreement did not exclude Mickey Mouse either.

Proving the negative, relying on the "known unknown" and "unknown unknown", straw man, circular logic, ad hominem... there is a bag of dirty tricks out there to fool the unwary. But they do not always work. Defendants bears the burden to prove license -- an affirmative defense.

3. Since a license cannot exist without a scope, asking the plaintiff to prove the scope of a license is the same as asking the plaintiff to prove the existence of a license. Thus, asking plaintiff to prove the scope of a license is the same as asking the plaintiff to prove the existence of a license -- exactly opposite to the U.S. copyright law, which says the defendant bears the burden to prove the existence of a license.

Put it simply, before praising the emperor's new clothes, one must first prove that the emperor is wearing some.

4. "
Federal copyright law provides a bright line prohibition against transfer of copyright license rights." SQL Solutions, Inc. v. Oracle Corp., No. C-91-1079 MHP, 1991 WL 626458 (N.D. Cal. Dec. 18, 1991). See, example diagrams and an analysis.

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