Providence Publications, LLC v. NBC Universal Media, LLC

District court dismisses plaintiff’s copyright claims, holding that NBC Universal maintained license to forward plaintiff’s copyrighted Cal-OSHA Reporter where plaintiff for several years had affirmatively stated materials could be forwarded, knew that defendant had been forwarding materials, and failed to alert defendant of any change to its policy allowing (and encouraging) forwarding. 

Plaintiff Providence Publications LLC is the publisher of a reporter detailing developments in occupational health and safety laws along with administrative decisions by the California Division of Occupational Safety and Health (Cal-OSHA). On a weekly basis, Providence sends its Cal-OSHA Reporter to those who purchase licenses or subscriptions. It also sends out promotional emails including news bulletins and solicitations to buy licenses for the reporter. For years, these emails included a copyright notice that stated: “The Cal-OSHA Reporter may be forwarded, copied or distributed” so long as the full report was included, the copies sent contained Providence’s copyright notices and the distributions were not for profit.

Defendant NBC Universal Media LLC (NBCU) received a number of Providence’s email solicitations. In early 2013, NBCU purchased a license to receive the reporter for a handful of relevant senior employees. From 2013 until the middle of 2017, promotional emails sent to NBCU by Providence continued to state that the reporter could be “forwarded, copied, or distributed.” In July 2017, Providence began omitting that language. But Providence never advised NBCU, including when it renewed its license, that Providence had made any changes or restricted permission to forward the reporter. Providence also used marketing software that showed customers were regularly forwarding the reporter.

In 2022—five years after it began omitting the language allowing forwarding—Providence sent NBCU a demand letter, claiming that NBCU’s forwarding of the reporter was copyright infringement. NBCU immediately stopped forwarding the reporter, but Providence nevertheless sued, arguing that NBCU was liable for its forwarding of the reporter starting in 2013. 

On NBCU’s motion for summary judgment, the district court dismissed Providence’s claims. First, the court found that NBCU had an express license to forward the reporter up until Providence removed from its promotional emails the language that permitted forwarding. The court rejected Providence’s claims that the language in the promotional emails did not authorize forwarding of the reporter itself, pointing to the plain language in those emails that stated, “The Cal-OSHA Reporter may be forwarded, copied or distributed.” Providence also provided no evidence that NBCU had exceeded the scope of its license.

Next, the court considered the period after Providence had removed from its promotional emails the language permitting forwarding. The court held that although NBCU did not have an express license, it still had an implied license to forward the emails. In reaching this conclusion, the court looked to the evidence of Providence’s intent at the time it sent the reporters to NBCU. The court found, for three independent reasons, that the strongest evidence of that intent was Providence’s conduct, which indicated that the forwarding of the materials was permitted. First, Providence had for years sent NBCU emails clearly stating that the reporter could be forwarded. Second, Providence knew its customers were forwarding the emails, even after the language allowing forwarding was removed, because it used marketing software that tracked how often the reporter was forwarded. Finally, Providence never provided any notice that its policies regarding forwarding had changed, nor did it contact NBCU about its forwarding of the reporter until nine years after NBCU first began doing so. These facts, the court held, all strongly supported a finding of an implied license.  

Summary prepared by David Grossman and Tyler Downing