Cite as 68 F.3d 621 (2nd Cir. 1995)
proving that its use of the Compositions was authorized.
Bourne is correct insofar as it contends that the possession of a license by an accused infringer traditionally has been characterized as a matter of affirmative defense. See, e.g., Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 13.01 (“Nimmer”). However, in most of the cases addressing the defense of license, the issue has been whether a license is held by the accused infringer. See, e.g., CMS Software Design Sys., Inc. v. Info Designs, Inc., 785 F.2d 1246, 1247 (5th Cir.1986). Since, in such cases, evidence of a license is readily available to the alleged licensee, it is sensible to place upon that party the burden of coming forward with evidence of a license. See United States v. Larracuente, 952 F.2d 672, 674 (2d Cir.1992) (holding that a defendant charged with criminal copyright infringement bears the burden of producing evidence of a sub-license).
In this case, however, there is no dispute that Disney received from Bourne various licenses to copyrighted compositions. The only dispute is whether Disney’s synchronization of the Compositions with its home videocassettes and its use of the Compositions in its television commercials fall within the scope of the existing licenses. See Gilliam v. American Broadcasting Cos., 538 F.2d 14, 20 (2d Cir.1976) (licensee infringes owner’s copyright if its use exceeds the scope of the license). Thus, the only dispute here is the scope of the licenses, not their existence.
We conclude that, in cases where only the scope of the license is at issue, the copyright owner bears the burden of proving that the defendant’s copying was unauthorized. See S.O.S., Inc. v. Payday, Inc., 886 F.2d 1081, 1085 (9th Cir.1989) (“To prevail on its claim of copyright infringement, [the copyright owner] must prove … ‘copying’ of protectible expression by [the accused infringer] beyond the scope of [the] license.”); Microsoft Corp. v. Harmony Computers & Electronics, Inc., 846 F.Supp. 208, 210 (E.D.N.Y.1994); see also NLFC, Inc. v. Devcom Mid-America, Inc., 45 F.3d 231, 235 n. 5 (7th Cir.), cert. denied, – U.S. —, 115 S.Ct. 2249, 132 L.Ed.2d 257 (1995). Copyright disputes involving only the scope of the alleged infringer’s license present the court with a question that essentially is one of contract: whether the parties’ license agreement encompasses the defendant’s activities. Just as in an ordinary contract action, the party claiming a breach carries the burden of persuasion. See Gordon v. Leonetti, 324 F.2d 491, 492 (2d Cir.1963).
- d. Disney’s Right to Distribute Videocassettes
Bourne further argues that, even if Disney had the right to synchronize the Compositions with videocassettes, Disney had no right to sell or publicly distribute the videocassettes that it produced. Bourne asserts that Disney needed two separate grants from Bourne to make and distribute videocassettes containing the synchronized Compositions: (1) the right to copy (or record) the Compositions in synchronization with Disney’s motion pictures; and (2) a separate right to sell or distribute the videocassettes. Since the grants to Disney do not specifically include the latter right, Bourne argues, Disney’s sale and distribution of its videocassettes constitute an infringement of Bourne’s copyrights in the Compositions, even if the license granted Disney the former right. Under the Copyright Act of 1909 (“the 1909 Act”),[1] the copyright holder has the exclusive right to “publish … and vend the copyrighted work.” 17 U.S.C. § 1(a) (1909 Act). Although Disney has been “vending” works without any express license from Bourne, Disney contends that its activities fall within the first sale doctrine. Section 27 of the 1909 Act provides:
The copyright is distinct from the property in the material object copyrighted, and the sale or conveyance … of the material object shall not of itself constitute a transfer of the copyright …; but noth-
- ↑ Since the copyrights at issue were registered during the 1930s, when the 1909 Act was in force, plaintiff’s claims must be analyzed under that act. See Playboy Enters., Inc. v. Dumas, 53 F.3d 549, 553 (2d Cir.1995).
