Implied License and De Minimis Use Defenses in IP Litigation: Raising and Contesting the Defenses

Description

Recent litigation has shined a light on the increased use of two defenses--the implied license defense and the de minimis use defense in IP litigation. In the implied license defense case, defendants have asserted that there is a nonexclusive license created by implication despite there being no written license. The de minimis use defense arises when the use of the copyrighted work is so small that it does not meet the quantitative threshold of substantial similarity.

For example, Take-Two Interactive was involved in two different lawsuits in which the courts came to two different conclusions regarding de minimis use and an implied license. In both lawsuits, Take-Two was sued over its depiction of athletes’ tattoos in video games. The Southern District of New York concluded, on summary judgment, that the use in video games was de minimis and was subject to an implied license. Solid Oak Sketches L.L.C. v. 2K Games Inc. (S.D.N.Y. 2020). In contrast, the Southern District of Illinois found a triable issue of fact on the implied license defense and rejected the de minimis use defense. Alexander v. Take-Two Interactive Software Inc. (S.D. Ill. 2020).

It is important for IP litigators for both plaintiffs and defendants to understand the contours of these two lesser-known defenses, especially in the context of current technology and new media cases, and how various courts analyze them. Litigators should be prepared to either raise the defenses or argue against them.

Listen as our authoritative panel of IP attorneys examines the implied license and de minimis use defenses in IP litigation. The panel will examine recent litigation and discuss the analysis for both defenses and when the defenses are likely to work. The panel will offer best practices for using and defending against the defenses in litigation.