Copyright Misuse Defense Fails As Claim in Declaratory Judgment Case

The Nielsen Company, LLC v. Truck Ads, LLC (Jan. 24, 2011)

This dispute began as a feud between two trucking companies regarding maps depicting marketing areas. Neilsen sued claiming that the Neilsen maps were protected by copyright as compilations; and, that Truck Ads’ display of those proprietary ads on their website was copyright infringement.

Truck Ads denies that it has posted the Nielsen ads on their website; and, in the alternative, if they did that the Nielsen maps are uncopyrightable.

The parties were focusing their dispute on whether the maps were copyrightable, but then Truck Ads took an unescalating step of filing a declaratory judgment counterclaim asserting that Nielsen is misusing their copyrights against Truck Ads.

Nielsen moved for summary judgment on the grounds that copyright misuse is a defense and not a cause of action.

Judge Rebecca Pallmeyer of The Eastern Division of the Northern District of Illinois rejected the copyright misuse defense as a vehicle for affirmative relief for the reason that the condition precedent to a copyright misuse arising is absent. The court held that there is no claim that the underlying infringement claim is wholly lacking in merit. “Plaintiff’s allegation that Defendant acted unlawfully when it chose to copy Plaintiff’s maps is not frivolous, unsupported by law, or clearly contradicted by the facts in the record, as it must be to constitute copyright misuse.”

Plaintiff’s motion to dismiss was granted.



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