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This seems like a silly question to me, and only a hypothetical at the moment, but I needed to ask! It's specific to United States copyright law, just to be clear.

Let's say an app author builds a solution that's only to be used by a small, internal group of users. Is it legally possible for the app to have a EULA upon entering the experience that requires any viewer to surrender the rights they may have to any of the content inside the app, if that content is prospectively owned by the user themselves?

More specifically, I'll pose a scenario: let's say we're talking about a free app for a private audience, which includes training for the Praxis exam, but potentially also includes example questions taken from official Praxis training materials. Is it possible to have the user agree to a EULA that states they will not file a copyright claim around any content they may discover they actually own rights to, when using the app?

If this is indeed legally possible, this seems like a very sticky situation that could open a can of worms: how do you maintain copyright status against media that was stolen, if you can't verify ownership of that media without agreeing to a EULA that nullifies your claim to the rights of said media?

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  • Are you asking: If the user does not own the IP rights to the content, it is possible for the user to grant license to use IP to a third party? – gatorback Dec 28 '20 at 19:05
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A user's rights to intellectual property can be bargained away to various extents. In general, a user either has a right to IP because they created the IP, or because they acquired a right via a license and in exchange for consideration (e.g. a license to use MS Word, in exchange for money). Your app grants permission to use your IP (in exchange for something of value), subject to some conditions. A possible condition is "you transfer your right to IP created here to The Company" (not a popular option). A more popular option is "You grant The Company a perpetual irrevocable for-free license to use your IP". The wording of that grant has to harmonize with the wording of the permission that you give to users to copy your IP, for example "you may not quote text owned by The Company from the app except within the app", or "you may freely copy text outside the app for educational purposes". The harmonization part is that you cannot license a user to redistribute another user's text unless the other user has granted you the right to sub-license. Licenses typically include indemnification clauses, which say that user warrants that they have to right to upload such-and-such material, and that user will indemnify The Company against legal action for illegal uploading (i.e. if you upload pirated material and we get sued, you bear legal responsibility).

As I understand your question, you are envisioning a situation where a user discovers that someone else uploaded their IP, so naturally they want to sue somebody, and you want a clause that prohibits them from suing you (the reasoning being, you never have known of the infringement if we hadn't let you into this program). There is no chance that such a clause would be enforceable if The Company knowingly and willfully pirated the content. What you want is protection against vicarious liability, where you are unaware that another user has uploaded pirated content. DMCA is designed to protect The Company, to some extent, but it is not clear that you are a "service provider". Therefore, your main legal recourse lies on shifting the burden to the infringing uploader, via the indemnification clause. Perhaps (remotely possible) you can show that you have no direct financial interest in the infringing activity, which plaintiff would have to prove in order for you to be vicariously liable. See Erickson v. Kast for the relevance of direct financial interest in a copyright case.

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  • Would it not be IP recipient's responsibility to verify that the uploader has standing to negotiate any IP lincesing? – gatorback Dec 28 '20 at 19:08
  • That is where the warranty and indemnification clauses kick in. Positive verification is impossible and the law does not require a publisher to do the impossible. – user6726 Dec 28 '20 at 19:25
  • Apologies if this kind of comment isn't allowed or appreciated, but I just noticed how much @user6726 is contributing to the law and linguistics communities and wanted to voice my support and thanks. People like you are the reason the Internet works as well as it does. We're all tremendously obliged for your thoughtful, thorough and consistent contributions to answering an average of two questions every single day for the last five years... over 3,000 questions so far. Seriously man, thank you! – Crates Dec 29 '20 at 16:23

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