“Copyright misuse is an equitable defense to copyright infringement which precludes the copyright holder's enforcement of its copyright during the misuse period.” Vernor v. Autodesk, Inc., 621 F.3d 1102, 1115 (9th Cir. 2010); Practice Mgmt. Info. Corp. v. Am. Med. Ass'n, 121 F.3d 516, 520 n. 9 (9th Cir. 1997). It is analogous to the equitable defense of unclean hands.

“The copyright misuse doctrine . . . forbids the use of a copyright to secure an exclusive right or limited monopoly not granted by the copyright office and is contrary to public policy to grant.” Malibu Media, LLC v. Miller, No. 13-CV-02691-WYD-MEH, 2014 WL 2619558, at *4 (D. Colo. June 12, 2014); Home Design Servs., Inc. v. B & B Custom Homes, LLC, No. 06-cv-00249-WYD-GJR, 2008 WL 2302662, at *2 (D. Colo. May 30, 2008); In re Indep. Serv. Orgs. Antitrust Litig., 85 F. Supp. 2d 1130, 1175 (D. Kan. 2000); Alcatel USA, Inc. v. DGI Techs., Inc., 166 F.3d 772, 792 (5th Cir. 1999); Altera Corp. v. Clear Logic, Inc., 424 F.3d 1079, 1090 (9th Cir. 2005).

Illegitimate, anticompetitive conduct, such as an overreaching license agreement, could provide a basis for a misuse defense. Lasercomb Am., Inc. v. Reynolds, 911 F.2d 970, 977–79 (4th Cir. 1990) (misuse of a software copyright in a licensing agreement that forbade the licensee from creating a competing product); A & M Records, Inc. v. Napster, Inc., 239 F.3d 1004, 1026 (9th Cir. 2001) (the doctrine “prevents copyright holders from leveraging their limited monopoly to allow them control of areas outside the monopoly”).

Copyright misuse is a defense that is commonly asserted (although not all courts will recognize the defense), and rarely successful.

A Tale of Two Harrington Cases

In Harrington v. 360 ABQ, LLC, No. 22-cv-00063, 2022 WL 1567094 (D. N.M May 18, 2022), the defendant asserted that Mr. Harrington was a “copyright troll” who misused the copyright system through abusive tactics. Specifically, “that Mr. Harrington intentionally allows his images to be posted online without copyright notice and uses a service to track who uses or downloads the image so that he can sue or ‘extort' money from these ‘unwitting' users.” Id. at *3. Furthermore, “that Mr. Harrington uses abusive litigation tactics and threats, including demanding settlements well in excess of the damages.” Id.

The District of New Mexico held this stated a plausible claim that Mr. Harrington has a wrongful motive and misused the copyright or legal system. In support, the court cited Oppenheimer v. ACL LLC, 504 F. Supp. 3d 503, 511–12 (W.D.N.C. 2020) (finding a plausible claim of copyright misuse where “a reasonable jury could find Plaintiff is using copyrights to derive an income from infringement suits”); Malibu Media, LLC v. Miller, No. 13-CV-02691-WYD-MEH, 2014 WL 2619558, at *5 (D. Colo. June 12, 2014); Malibu Media, LLC v. Cuddy, No. 13-CV-02385-WYD-MEH, 2015 WL 1280783, at *9 (D. Colo. Mar. 18, 2015).

This does not mean, however, that such a defense ultimately would be successful. In an earlier case involving Mr. Harrington, Harrington v. Aerogelic Ballooning, LLC, No. 18-cv-02023-MSK-NYW, 2018 WL 8646682 (D. Colo. Nov. 29, 2018), Judge Krieger of the District of Colorado held that arguing Mr. Harrington had posted his photograph on the Internet “with the intent of inducing others to infringe it” which had “somehow ‘set them up' to commit infringement [was] frivolous” and “appears to be an odious form of victim-blaming by the perpetrator.” Id. at *2.

Whether a copyright misuse defense based on a wrongful motive to entrap the unwitting is deemed plausible or frivolous may depend on how it is presented to the court.

The copyright attorneys at Thomas P. Howard, LLC litigate copyright infringement cases nationwide and in Colorado.