By Robert E. Freeman, with Tara K. Wahl, Meredith A. Lipson and Caroline E. Rimmer
An Oregon district court recently saddled a Florida horse ranch with liability for copyright infringement after it repeatedly posted copyright-protected equine transaction legal forms it licensed from the Plaintiff, despite the license terms prohibiting such online posting. Although the copyright holder galloped to legal victory, the court reined in its damages claim, awarding just $400 in statutory damages, plus costs and the potential for attorney’s fees. (Equine Legal Solutions PC v. Fireline Farms, Inc., No. 22-01850 (D. Ore. Feb. 12, 2025)).
The Plaintiff, Equine Legal Solutions, PC (“Equine Legal” or “Plaintiff”), is an Oregon-based law firm specializing in legal services for the equestrian industry. Among its services are downloadable legal forms such as boarding agreements and visitor releases for use in the horse rental context. Plaintiff is the registered owner of several copyrights, including two legal forms at issue in this dispute. Buyers who pay a fee to download Plaintiff’s legal forms must agree to a license agreement before purchasing (the “License Agreement”), which allows licensees to copy, email and distribute the forms in connection with personal use of the forms or for horse-related business. The License Agreement, however, contains a key restriction: “You may not post any [Equine Legal] Materials to the Internet, including on your own website.”
The Defendant, Fireline Farms, Inc. (“Fireline” or “Defendant”), operates a horse ranch in Florida. Defendant is also a customer of Equine Legal, having purchased various forms in 2016 as part of the “Equine Boarding Forms Package” (the “Forms”) available on Plaintiff’s website. In doing so, Defendant accepted Equine Legal’s License Agreement.
Things went awry when Fireline hired a web developer to create its website. The developer uploaded various Fireline business documents, including the copyrighted Forms, in such a way that they were accessible at URLs connected to Defendant’s website and findable through an online search. For most, finding the Forms online would have been like finding a needle in a haystack (insofar as there was a dispute whether they were ever “published online”), but not for Plaintiff who routinely conducts online searches using horse-related phrases unique to its templates to police for infringement.
Equine Legal sent multiple DMCA takedown notices to Fireline and its internet service provider between 2021 and 2022 (note: Fireline’s website hosting provider, DigitalOcean, which had received several DMCA takedowns from Plaintiff, was originally a defendant in this suit, but the court dismissed the complaint against DigitalOcean in 2023 for lack of personal jurisdiction). After Fireline’s representative spoke with Plaintiff in 2021, the Forms were no longer accessible at the specific URLs. However, a month or so later, the Forms were again accessible at the same URLs. This bit of horseplay continued: the Forms were removed, apparently later became accessible again at a different URL, prompting Plaintiff to send more DMCA notices, and causing Fireline to remove the Forms again, much to the puzzlement of Fireline’s web developer and ISP. At one point, Fireline’s site was taken offline entirely. Eventually, Equine Legal decided it was time to get off the merry-go-round and sued Fireline in late 2022, alleging willful copyright infringement.
By the middle of 2024, both parties filed motions for summary judgment, arguing that there were no material facts in dispute. Fireline claimed that the forms were merely “utilitarian” and that Equine Legal therefore had no right under copyright law to restrict their use by claiming a limitation on online distribution. Equine Legal countered that it owns valid copyrights in the Forms, has the exclusive right to distribute and display them, and that Fireline distributed and displayed them in violation of the License Agreement.
Turning first to the question of copyright infringement, the court noted that to prevail on such a claim, Plaintiff must establish (1) that it owns the allegedly infringing material and (2) that Defendant violated at least one of Plaintiff’s exclusive rights afforded to it as a copyright owner.
On the threshold issue of ownership of valid copyrights in the Forms, it was an easy trot to the finish line for Plaintiff. The court noted that Fireline not only failed to challenge the validity of Equine Legal’s copyright registrations but had also expressly conceded that Plaintiff “has a valid copyright and a valid business in selling its copyrighted works.” In rejecting Fireline’s arguments about the utilitarian nature of the Forms and a related attempt at invoking the so-called “blank forms” doctrine, the court observed that these defenses were nonstarters once Fireline conceded validity.
The court then turned to whether Fireline had infringed any of Equine Legal’s exclusive rights, namely, distribution and public display.
The Copyright Act grants copyright owners the exclusive right to “distribute copies” of their works to the public. The court stated that under Ninth Circuit precedent the infringement of this right requires “actual dissemination” of the work in question, which, in the internet context, might mean the transfer of a file from one computer to another. While it was undisputed that Fireline caused the Forms to be accessible at specific URLs, the court noted that merely making available a copyright protected work to the public does not amount to a violation of the right of distribution. In this case, the court stated Plaintiff had the burden of proving there was actual dissemination but failed to offer evidence, beyond mere speculation, that users accessed and downloaded the Forms, thus sending the distribution claim out to pasture.
Next, the court examined whether Fireline infringed Equine Legal’s exclusive right to display its works publicly. Drawing on the Ninth Circuit precedent, the court found that posting the Forms online on a publicly available website (even in a temporary or buried link and only accessible through a specialized search) was still a public display. Contrasting its ruling on the distribution right, the court held that Plaintiff need not show any member of the public found or viewed the Forms to establish a prima facie case of infringement of the display right. Thus, the court ruled Fireline had violated Equine Legal’s exclusive display right, satisfying the second prong of infringement.
Fireline trotted out several defenses, all of which were easily overridden:
- License Defense: The court rejected Fireline’s argument that its use fell within the License Agreement’s permitted bounds, finding the “no internet posting” clause in the License Agreement was clear and unambiguous.
- First Sale Doctrine: The first sale doctrine provides that a copyright owner’s exclusive right of public distribution may terminate with respect to a particular copy of a work that has been lawfully made and sold. In its motion papers, Fireline hinted that its right to post stemmed from ownership of a copy. But the court clarified that this doctrine doesn’t apply to instances such as this, where the Forms were licensed, not sold outright. Moreover, Plaintiff did not show that Fireline violated its distribution right, so the court noted that the first sale doctrine is irrelevant anyway.
- DMCA Safe Harbor: The court rejected Fireline’s argument that promptly removing the Forms entitled it to safe harbor under the DMCA. Such protection generally extends only to service providers who host infringing content uploaded by third parties. Fireline, the court noted, uploaded the infringing material itself and was not a service provider under the DMCA’s definition.
Having established a claim of copyright infringement for two works, the court turned to damages. Equine Legal sought statutory damages of $75,000 for willful infringement or, failing that, $30,000; Defendant urged for a minimum award of $400 due to what it claimed were two “innocent” infringements. Overall, the judge found no evidence of bad faith on Fireline’s part. According to the court, Fireline consistently removed the materials once notified and there was no indication it had profited or otherwise used the forms in its business in an infringing manner. As such, the court found the infringement to be innocent, not willful, awarding the statutory minimum: $200 per work, or $400 total.
Under the order, Equine Legal is also entitled to seek attorneys’ fees and costs; likely a far bigger purse than the damages award itself (in a subsequent March 18, 2025 order, the court awarded Equine Legal over $1,600 in costs). Perhaps more significant, however, is the example established by the district court decision: copyright protection extending to industry-specific legal forms governed by restrictive license agreements.
However, hold onto your saddle horn, as this case may not be over yet. In April 2025, Equine Legal filed a notice of appeal to the Ninth Circuit challenging the judgment. Was it wise in this instance to look a gift horse in the mouth? Stay tuned!
