17.23 COPYRIGHT—AFFIRMATIVE DEFENSE—ABANDONMENT
The defendant contends that a copyright does not exist in the plaintiff’s work because the plaintiff abandoned the copyright. The plaintiff cannot claim ownership of the copyright if it was abandoned. In order to show abandonment, the defendant has the burden of proving each of the following by a preponderance of the evidence:
1. the plaintiff intended to surrender [ownership] rights in the work; and
2. an act by the plaintiff evidencing that intent.
Mere inaction [or publication without a copyright notice] does not constitute abandonment of the copyright; however, [this may be a factor] [these may be factors] for you to consider in determining whether the plaintiff has abandoned the copyright.
If you find that the plaintiff has proved [his] [her] [its] claim[s] in accordance with Instruction[s] [insert cross reference to the pertinent instructions on the plaintiff’s theory of infringement], your verdict should be for the plaintiff, unless you find that the defendant has proved each of the elements of this affirmative defense, in which case your verdict should be for the defendant.
Abandonment is an affirmative defense. See, e.g., A&M Records, Inc. v. Napster, Inc., 239 F.3d 1004, 1026 (9th Cir.2001); Abend v. MCA, Inc., 863 F.2d 1465, 1482 n.21 (9th Cir.1988). The bracketed portion of the penultimate paragraph pertaining to publication without copyright notice should be used if the copyright infringement action is brought under the 1909 Copyright Act.
Abandonment of a right secured by the Copyright Act must be manifested by an overt act indicating an intention to abandon that right. Micro Star v. Formgen, Inc., 154 F.3d 1107, 1114 (9th Cir.1998). A copyright owner may abandon some rights and retain others. Id. at 1114 (holding that license permitting creation of derivative works from software, but also providing that licensees not distribute derivative works commercially, did not abandon copyright holder’s rights to profit commercially from derivative works).