Karlson v. Red Door Homes, LLC

A nonexclusive license may be granted orally or implied from conduct. An implied license is created when (1) a licensee requests creation of a work; (2) the licensor makes that work and delivers it to the licensee; and (3) the licensor intends that the licensee copy and distribute the work.

Opinion (Johnson):Plaintiff Keith Karlson ("Karlson") creates renderings of new home plans for marketing purposes. Defendants Red Door Homes, LLC ("Red Door"), and SMA Operations Management, LLC ("SMA"), design new homes. SMA sells home plans and drawings to builders, including Karlson’s renderings, while Red Door provides software estimates and building packages, including access to the renderings. Karlson and non-party Patrick Miller ("Miller") had previously worked together, with Miller designing new homes and calling on Karlson for renderings. When Miller was hired by SMA to design homes, Karlson was hired by the defendants as an independent contractor to create renderings of new home designs. Karlson asserts he has claimed a copyright interest in his renderings. When Miller joined SMA and retained Karlson as an independent contractor to produce renderings in 2008, Karlson placed copyright language on each invoice he sent to defendants. Nothing was said about the language by either Karlson or the defendants until 2009 when a dispute arose over whether Karlson should be paid for redoing a rendering upon request by the defendants.

The parties do not dispute that the Karlson obtained registered copyrights for his renderings in 2009. The defendants also do not dispute that the copyrights covered the renderings Karlson created for the defendants. Rather, the sole dispute is whether Karlson impliedly granted the defendants a license to use those copyright protected works in furtherance of their business.

A nonexclusive license may be granted orally or implied from conduct. An implied license is created when (1) a licensee [Red Door] requests creation of a work; (2) the licensor [Karlson] makes that work and delivers it to the licensee; and (3) the licensor [Karlson] intends that the licensee [Red Door] copy and distribute his work. Because an implied license is an affirmative defense to a claim of copyright infringement, the alleged infringers have the burden of establishing an implied license.

Here, defendants requested Karlson to create artwork. Karlson knew the renderings were going to be used by defendants to promote their new home designs. Karlson knew the defendants would display his designs to their licensees and customers to encourage the purchase of the new home plans. Thus, the court found it reasonable to infer that Karlson intended his artwork be distributed by the defendant. At a minimum, Karlson granted defendants an implied license to copy and distribute his work.

Accordingly, the court GRANTED summary judgment in favor of the defendants and against the Karlson on the issue of implied license. Karlson granted defendants an implied license to use his renderings, and the defendants paid Karlson for this use, making their license irrevocable.