IP Law Daily, COPYRIGHT—D. Or.: Equine legal services website states infringement claim for unauthorized use of legal forms, (Jul 12, 2022)

By Kevin M. Finson, J.D.

An individual agent of a corporate defendant could not dismiss copyright infringement claims because she was liable for her own torts

A corporate officer of an equine welfare organization was not entitled to dismissal of copyright claims brought by an equine legal services website, the federal district court in Portland, Oregon, has determined. The corporate officer—who allegedly exceeded the scope of the license in the website’s downloadable forms— was liable for her own torts, regardless of whether they were committed as part of the business of the corporation (Equine Legal Solutions, PC v. This Old Horse, Inc., July 5, 2022, Simon, M.).

Equine Legal Solutions, P.C. (Equine) was in the business of providing horse-related legal services to individuals in several states. Equine developed a series of copyrighted legal forms which it licensed through its website subject to contractual provisions that prevented editing or republishing. This Old Horse, Inc. (TOH) was a non-profit equine welfare organization, and Nancy Turner was its president. Equine alleged that Turner purchased a license to use its forms, signing the restrictive license agreement as any other customer, and then used those copyrighted materials to produce fillable forms through an online service of Jotform, Inc. (Jotform), which were made available to the public on Jotform’s website. Equine filed suit for copyright infringement against TOH, Turner, and Jotform, and also alleged breach of contract and conversion against TOH and Turner. Turner moved to dismiss all three claims against her.

Individual liability. After briefly reviewing that Equine had clearly stated the elements of ownership and violation of the exclusive rights with regard to the documents in question, the court turned to Turner’s argument that she was not individually liable because she had only acted as an agent of TOH. While a corporate officer may be shielded from liability for the ratification or approval of a tortious act, the court held that the allegations in this case were much more direct; Turner herself was alleged to have personally committed the tort in question by purchasing the license and creating and publishing the derivative fillable forms. The motion to dismiss on this ground was denied.

Contract. Turner argued that there was no ground pleaded to pierce the corporate veil and hold her liable for breach of the contract entered into by TOH. On this point the court agreed with her; Oregon law set out a requirement that the corporate veil could not be pierced for contract claims unless the person in question had abused the corporate form in order to avoid liability, and no facts were pleaded to suggest such abuse.

Conversion. Turner argued that the conversion claim was identical to the copyright infringement claim and therefore preempted by the Copyright Act. The court reviewed both claims and found that the conversion claim simply reasserted exactly the same facts covering exactly the same copyrighted material as had been addressed in the copyright claim. Because there were no additional elements specific to the conversion claim, the court held that it was preempted.

The court denied the motion to dismiss as to the copyright claim, and granted it, without prejudice, as to the breach of contract and conversion claims.

The Case is No. 3:22-cv-00269-SI.

Attorneys: Rachel E. McCart (Preserve Legal Solutions, PC) for Equine Legal Solutions, PC. William Wardlow (Wardlow Law, LLC) for This Old Horse, Inc. and Nancy Turner. William A. Drew (Elliott Ostrander Preston, PC) for Jotform Inc.

Companies: Equine Legal Solutions, PC; This Old Horse, Inc.; Jotform Inc.

Cases: Copyright OregonNews