FOR PUBLICATION

UNITED STATES COURT OF APPEALS

FOR THE NINTH CIRCUIT

GREAT MINDS, a non-profit

organization,

Plaintiff-Appellant,

v.

OFFICE DEPOT, INC., a

Delaware corporation,

Defendant-Appellee.

No. 18-55331

D.C. No.

2:17-cv-07435-JFW-E

OPINION

Appeal from the United States District Court

for the Central District of California

John F. Walter, District Judge, Presiding

Argued and Submitted November 8, 2019

Pasadena, California

Filed December 27, 2019

Before: Jerome Farris and M. Margaret McKeown, Circuit

Judges, and Virginia M. Kendall,* District Judge.

Opinion by Judge Farris

*The Honorable Virginia M. Kendall, United States District Judge for

the Northern District of Illinois, sitting by designation.
2 GREAT MINDS V. OFFICE DEPOT

SUMMARY**

Copyright

The panel affirmed the district court’s dismissal for

failure to state a claim of a copyright infringement brought

by Great Minds, publisher of math curriculum Eureka Math.

The panel held that defendant Office Depot, Inc., did not

become a licensee of a Creative Commons license, and

become bound by its terms, or otherwise infringe Great

Minds’ copyright by making copies of Eureka Math materials

for a profit on behalf of school and school district licensees. 

There was no dispute that the school and school districts

licensees’ copying of Great Minds’ material was permitted

under the license. There also was no dispute that, if Office

Depot were itself a licensee, commercial copying of Great

Minds’ material would fall outside the scope of the license

and infringe Great Minds’ copyright. The panel held that,

under California law, the school and school district licensees’

exercise of their rights under the license through the services

provided by Office Depot did not result in Office Depot

becoming a licensee. The panel further held that the district

court did not abuse its discretion in denying leave to amend

the complaint.

** This summary constitutes no part of the opinion of the court. It has

been prepared by court staff for the convenience of the reader.
GREAT MINDS V. OFFICE DEPOT 3

COUNSEL

Christopher J. Sprigman (argued), Simpson Thatcher &

Bartlett LLP, New York, New York; Jeffrey E. Ostrow,

Simpson Thatcher & Bartlett LLP, Palo Alto, California;

Rhett O. Millsaps, II, Law Office of Rhett O. Millsaps II,

New York, New York; for Plaintiff-Appellant.

Jennifer A. Golinveaux (argued), Winston & Strawn LLP,

San Francisco, California; Diana Hughes Leiden, Winston &

Strawn LLP, Los Angeles, California; for DefendantAppellee.

Andrew M. Gass (argued) and Elizabeth H. Yandell, Latham

& Watkins LLP, San Francisco, California; Diane M. Peters,

Creative Commons Corp., Mountain View, California; for

Amicus Curiae Creative Commons Corporation.

OPINION

FARRIS, Circuit Judge:

Plaintiff-Appellant Great Minds, publisher of math

curriculum Eureka Math, appeals from the January 18, 2018

dismissal under Fed. R. Civ. P. 12(b)(6) of its copyright

infringement claim against Office Depot, Inc. in the United

States District Court for the Central District of California

(Walter, J.). We AFFIRM. Office Depot did not itself

become a licensee of the “Creative Commons AttributionNonCommercial-ShareAlike 4.0 International Public

License” (and become bound by its terms) or otherwise

infringe Great Minds’ copyright by making copies of Eureka
4 GREAT MINDS V. OFFICE DEPOT

Math materials for a profit on behalf of school and school

district licensees.

BACKGROUND

Great Minds is an education-based non-profit

organization. It created and copyrighted a math curriculum

called “Eureka Math” for grades PreK-12, which it publishes

and sells commercially in print form nationwide. It also

releases digital files of Eureka Math online for free download

to any member of the public under a limited public copyright

license template produced by Creative Commons.1 Under the

License, “[e]very recipient of [Eureka Math] automatically

receives an offer from [Great Minds] to exercise the Licensed

Rights.” License § 2(a)(5)(A).

The License grants “the individual or entity exercising

the Licensed Rights” a “worldwide, royalty-free, nonsublicensable, non-exclusive, irrevocable license to . . .

reproduce and Share [Eureka Math], in whole or in part, for

NonCommercial purposes only . . . .” License §§ 1(n),

2(a)(1). The License defines “Share” to mean, in pertinent

part, “to provide material to the public by any means or

process that requires permission under the Licensed Rights,

such as reproduction, public display, public performance,

distribution, dissemination, communication, or importation,

. . .” License § 1(l). “NonCommercial” means, in pertinent

1 Creative Commons is a non-profit organization that offers free

copyright license templates to be used to share and protect creative and

academic works. See What We Do, CREATIVE COMMONS, (Nov. 17, 2019,

3:23 PM), https://creativecommons.org/about/. The License at issue

here is available online at https://creativecommons.org/licenses/by-ncsa/4.0/legalcode.
GREAT MINDS V. OFFICE DEPOT 5

part, “not primarily intended for or directed towards

commercial advantage or monetary compensation.” License

§ 1(k).

But § 2(b)(3) of the License reserves Great Minds’ right

to collect royalties for commercial uses of Eureka Math:

To the extent possible, the Licensor waives

any right to collect royalties from [the

licensee] for the exercise of [these

NonCommercial] Licensed Rights, whether

directly or through a collecting society under

any voluntary or waivable statutory or

compulsory licensing scheme. In all other

cases the Licensor expressly reserves any

right to collect such royalties, including when

[Eureka Math] is used other than for

NonCommercial purposes.

If any individual or entity exercising the licensed rights

“fail[s] to comply with [the License], [their] rights under [the

License] terminate automatically.” License § 6(a). Great

Minds claims that this applies equally to every individual or

entity that possesses Eureka Math materials, including all

“downstream recipients.”

Office Depot provides copy services on request and

behalf of public schools and school districts. It charges a fee

for those services, and at times it makes copies of Eureka

Math materials for the schools’ use. It does not sell those

copies to the public in Office Depot stores. Great Minds

claims, and Office Depot does not dispute, that Office Depot

employs field representatives to advertise its copying services

to schools and school districts that use Eureka Math. In 2015,
6 GREAT MINDS V. OFFICE DEPOT

when Great Minds discovered that Office Depot was

reproducing Eureka Math on behalf of the schools, the parties

entered into a separate licensing agreement, whereby Great

Minds permitted Office Depot to make the copies in

exchange for royalty payments. After the Eastern District of

New York ruling in Great Minds v. FedEx Office and Print

Servs., Inc., No. 16-CV-1462 (DRH)(ARL), 2017 WL

744574, at *4 (E.D.N.Y. Feb. 24, 2017), aff’d, 886 F.3d 91

(2d Cir. 2018), which held that the License could not “be read

to preclude a licensee from hiring someone to make copies of

[Eureka Math] so the licensee can use them for a

‘noncommercial’ purpose,” Office Depot terminated the

royalty agreement.2

As a result, on October 11, 2017, Great Minds filed suit

against Office Depot in district court, alleging claims of

copyright infringement, 17 U.S.C. §§ 101 et seq., and breach

of contract. Great Minds does not dispute that the school

districts’ own use and distribution of Eureka Math materials

is “NonCommercial” and permitted by the License. Rather,

it alleges that Office Depot was “deliberately and willfully

infringing [Great Minds’ copyrights] by actively soliciting

customers for commercial reproduction of Eureka Math,” and

“by reproducing and distributing Eureka Math for profit

without Great Minds’ authorization.” Great Minds asserts that

the “NonCommercial” restriction in the License requires

commercial print shops like Office Depot to “negotiate a

2 The FedEx decision resulted from a separate suit, with virtually

identical facts, filed by Great Minds against a different copy services

company. See FedEx, 2017 WL 744574, at *1–2. In March 2018, the

Second Circuit affirmed the E.D.N.Y. dismissal on agency principles.

Great Minds v. FedEx Office and Print Servs., Inc., 886 F.3d 91, 95–96

(2d Cir. 2018).
GREAT MINDS V. OFFICE DEPOT 7

license and pay a royalty to Great Minds if they wish to use

or reproduce Eureka Math for commercial purposes—i.e.,for

their own profit.”

On December 6, 2017, Office Depot filed a motion to

dismiss the copyright infringement claim, which the district

court granted without leave to amend. Great Minds v. Office

Depot, Inc., No. CV 17-7435-JFW (EX), 2018 WL 4945643,

at *4–5 (C.D. Cal. Jan. 18, 2018). The court found that the

License did not prohibit the school districts from employing

third parties like Office Depot to make copies of the Eureka

Math curriculum on their behalf. Id. This appeal followed.

DISCUSSION

I. MOTION TO DISMISS

We review the district court’s Rule 12(b)(6) dismissal de

novo. UMG Recordings, Inc. v. Shelter Capital Partners LLC,

718 F.3d 1006, 1014 (9th Cir. 2013). To survive a motion to

dismiss, “a complaint must contain sufficient factual matter,

accepted as true, to ‘state a claim to relief that is plausible on

its face.’” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009)

(quoting Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570

(2007)). If the Court finds that the plaintiff did not allege

sufficient facts “to raise a right to relief above the speculative

level” and support a cognizable legal theory, it may dismiss

the complaint as a matter of law. Twombly, 550 U.S. at 555.

At this stage, the Court must take all well-pleaded allegations

of material fact as true and construe them in the light most

favorable to the non-moving party. Malibu Textiles, Inc. v.

Label Lane Int’l, Inc., 922 F.3d 946, 951 (9th Cir. 2019).
8 GREAT MINDS V. OFFICE DEPOT

A valid claim for copyright infringement requires

“(1) ownership of a valid copyright, and (2) copying of

constituent elements of the work that are original.” Feist

Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361

(1991) (citing Harper & Row Publishers, Inc. v. Nation

Enters., 471 U.S. 539, 548 (1985)). The claim fails if the

challenged use of the work falls within the scope of a valid

license. See S.O.S., Inc. v. Payday, Inc., 886 F.2d 1081,

1087–88 (9th Cir. 1989). A copyright license “must be

construed in accordance with the purposes underlying federal

copyright law.” Id. at 1088 (citing Cohen v. Paramount

Pictures Corp., 845 F.2d 851, 854 (9th Cir. 1988)). Federal

courts “rely on state law to provide the canons of contractual

construction, but only to the extent such rules do not interfere

with federal copyright law or policy.” Id. (citing Fantastic

Fakes, Inc. v. Pickwick Int’l, Inc., 661 F.2d 479, 482–83 (5th

Cir. 1981)).

Here, the parties agree that California law applies to the

construction of the License. Great Minds, 2018 WL 4945643,

at *4 n.7. “Under California law, the interpretation of contract

language is a question of law.” Atel Fin. Corp. v. Quaker

Coal Co., 321 F.3d 924, 925–26 (9th Cir. 2003). “[T]he terms

of a contract must be construed in a manner that takes into

account the context of the language and is consistent with the

contract as a whole.” Actuate Corp. v. Int’l Bus. Machs.

Corp., No. C-09-05892 JCS, 2010 WL 1340519, at *5 (N.D.

Cal. Apr. 5, 2010) (citations omitted); Cal. Civ. Code § 1641.

There is no dispute that the school and school district

licensees’ copying of Great Minds’ material is permitted

under the License. There also seems to be no dispute that if

Office Depot were itself a licensee, commercial copying of

Great Minds’ material would fall outside the scope of the
GREAT MINDS V. OFFICE DEPOT 9

License and infringe Great Minds’ copyright. The issue we

consider then is whether the school and school district

licensees’ exercise of their rights under the License through

the services provided by Office Depot results in Office Depot

becoming a licensee. We hold that it does not. A licensee’s

hiring of a third-party copy service to reproduce licensed

material strictly for the licensee’s own permitted use does not

turn that third party into a licensee that is bound to the

License terms. See Great Minds v. FedEx Office and Print

Servs., Inc., 886 F.3d 91, 96 (2d Cir. 2018) (“Great Minds’

licensees may rely on non-employee agents in carrying out

permitted uses without converting those agents into

independent licensees.”); Automation by Design, Inc. v.

Raybestos Prods. Co., 463 F.3d 749, 761 (7th Cir. 2006)

(affirming summary judgment for both licensee and third

party); Storage Tech. Corp. v. Custom Hardware Eng’g &

Consulting, Inc., 421 F.3d 1307, 1315 (Fed. Cir. 2005)

(independent repair company that copied protected work on

behalf of its customers-licensees was not liable for copyright

infringement); Hogan Sys., Inc. v. Cybersource Int’l, Inc.,

158 F.3d 319, 324 (5th Cir. 1998) (third-party contractor was

“sheltered under” the licensee’s rights); Marconi Wireless

Tel. Co. of Am. v. Simon, 227 F. 906, 910 (S.D.N.Y. 1915),

aff’d, 231 F. 1021 (2d Cir. 1916), reversed on other grounds,

246 U.S. 46 (1918) (third-party contractor was “not an

infringer because he [was] supplying lawful goods to a lawful

licensee”). See also Raymond T. Nimmer & Jeff C. Todd,

1 Modern Licensing Law § 6:28 (2018) (similarly describing

the consensus in courts).3

3 Even though Great Minds did not bring a suit against the licensees,

we also note that decisions that have addressed whether the licensee

violates the terms of the license by hiring third parties to exercise the

licensed rights are instructive. Those cases held, and we agree, that hiring
10 GREAT MINDS V. OFFICE DEPOT

Under Great Minds’ reading of the License, third party

contractors like Office Depot are “downstream recipients” of

Eureka Math as contemplated in § 2(a)(5)(A) of the License,

meaning they “automatically receive[] an offer from [Great

Minds] to exercise the Licensed Rights,” they accept that

offer the moment the copy store employee presses “copy” on

a machine, and they become bound to the terms of the

License. Office Depot is not a downstream recipient. That

Office Depot employed field representatives to advertise the

availability of copying services for schools and school

districts that use Eureka Math does not confer a licensee

status on Office Depot. Its activities remain within the ambit

of the schools and school districts’ license.

Great Minds also contends that the “volitional” element,

i.e., which entity’s employee does the copying, is

determinative in this case.4 But that argument produces the

a third party to exercise the licensee’s rights does not convert that third

party into an independent licensee. See, e.g., Estate of Hevia v. Portrio

Corp., 602 F.3d 34, 44–45 (1st Cir. 2010) (“When . . . there is no

indication that a license-granting copyright owner has restricted the

licensee’s ability to use third parties in implementing the license, the

license is generally construed to allow such delegation.”); Automation by

Design, 463 F.3d at 757–58 (licensee’s decision to hire a third party “to

manufacture parts for it” did not violate the license); Intel Corp. v.

Advanced Micro Devices, Inc., No. C-90-20237-WAI, 1994 WL 594041,

at *2–3 (N.D. Cal. Oct. 20, 1994).

4

 The Second Circuit effectively dismissed this “volition” argument

on appeal in FedEx as irrelevant. See 886 F.3d at 97 (“The relevant

question here, . . . is not whether [the third party] engaged in volitional

conduct when it photocopied the Materials at the school districts’ request,

but whether the License permits school districts to request those copies at

all. We conclude that it does, . . .”). We agree. Great Minds’ citation of

volition cases is not instructive. Those cases held that a party may be

liable for copyright infringement only if the infringing activity was
GREAT MINDS V. OFFICE DEPOT 11

following absurd results: (1) a teacher may copy Eureka Math

on an Office Depot-owned copy machine for a fee in-store,

but cannot hand the materials to an Office Depot employee to

be copied; (2) a school may pay a copy machine provider a

monthly fee to keep a machine on site to copy Eureka Math,

but cannot pay Office Depot employees to make the same

copies; and (3) a school may permit teachers to copy Eureka

Math on school-owned or leased machines, but cannot pay a

high school student to make the same copies.

Great Minds’ interpretation cannot be correct. The

License itself provides no basis to distinguish between

permitted copies of Eureka Math made by a licensee’s own

employees (e.g., school teachers or staff) versus those made

by a third-party contractor (e.g., Office Depot employees).

We decline to read such a distinction into the License.

Under the License, a non-commercial licensee may hire

a third-party contractor, including those working for

commercial gain, to help implement the License at the

direction of the licensee and in furtherance of the licensee’s

own licensed rights. The License extends to all employees of

the schools and school districts and shelters Office Depot’s

commercial copying of Eureka Math on their behalf. Holding

differently would prevent proper non-commercial licensees

from using relatively common means of reproduction to

share, engage with, and exercise their rights to the licensed

volitional conduct. They do not say the converse—as Great Minds

suggests—that with volition, a defendant is liable for copyright

infringement. See, e.g., Perfect 10, Inc. v. Giganews, Inc., 847 F.3d 657,

666 (9th Cir. 2017); Cartoon Network LP, LLLP v. CSC Holdings, Inc.,

536 F.3d 121, 131 (2d Cir. 2008); Religious Tech. Center v. Netcom OnLine Commc’n Serv., Inc., 907 F. Supp. 1361, 1370 (N.D. Cal. 1995).
12 GREAT MINDS V. OFFICE DEPOT

work in a way that would contravene the intent of the License

and undermine its utility. We conclude that the licensees’

contract with Office Depot to exercise the licensees’ rights

under the License does not impose an independent liability on

Office Depot. As a result, Great Minds has failed to state a

plausible claim to relief on its copyright infringement claim.

II. LEAVE TO AMEND

We review a district court’s denial of leave to amend for

abuse of discretion. Design Data Corp. v. Unigate Enters.,

Inc., 847 F.3d 1169, 1172 (9th Cir. 2017). Dismissal without

leave to amend is proper if it is clear that “allegation of other

facts consistent with the challenged pleading could not

possibly cure the deficiency.” Montz v. Pilgrim Films &

Television, Inc., 649 F.3d 975, 984 n.3 (9th Cir. 2011)

(internal quotations omitted). The district court denied leave

to amend because its interpretation of the License was a

question of law and “permitting Great Minds to amend would

be an exercise in futility.” Great Minds, 2018 WL 4945643,

at *5 n.8 (citing Rutman Wine Co. v. E. & J. Gallo Winery,

829 F.2d 729, 738 (9th Cir. 1987)). We agree.

Great Minds argues that the district court failed to

consider relevant extrinsic evidence showing that the License

is reasonably susceptible to Great Minds’ own interpretation.

See United States v. King Features Entm’t, Inc., 843 F.2d

394, 398 (9th Cir. 1988) (citing Brobeck, Phleger & Harrison

v. Telex Corp., 602 F.2d 866, 871 (9th Cir. 1979), cert.

denied, 444 U.S. 981 (1979)). But Great Minds alleged no

such extrinsic evidence in its complaint. On appeal, it now

offers three new pieces of evidence: a survey published by

Creative Commons and two third-party websites. None of

that evidence is relevant to the ultimate issue on appeal:
GREAT MINDS V. OFFICE DEPOT 13

whether Office Depot’s commercial reproduction of Eureka

Math on behalf and at the direction of proper non-commercial

licensees converted Office Depot into a licensee. The district

court did not abuse its discretion in denying leave to amend.

AFFIRMED.