A recent very well written and reasoned opinion from the Northern District of Iowa, International Motor Contest Association, Inc. v. Staley , 2006 WL 1667889 (MarkW. Bennett, J), provides an excellent discussion (in a 52 page opinion) for those interested in the copyright misuse and unclean hands defenses.
Plaintiff International Motor Contest Association claims to be the oldest sanctioned (an ambiguous word, and anyway sanctioned by whom?) automobile racing association in the U.S. It claims copyright in its rules. Defendant, an individual, also promotes race events. IMCA claims defendant copied its rules. Defendant asserted a number of affirmative defenses and counterclaims, including misuse and unclean hands. Plaintiff them filed a motion to dismiss based in part on the Noerr-Pennington doctrine. The court rightly held that that doctrine only gives plaintiffs (limited) immunity from tort actions arising from the filing of the suit; it does not knock out affirmative defenses like misuse and unclean hands.
A large part of the opinion is devoted to a survey of the misuse defense in the courts. Plaintiff's argument here was odd: the misuse defense was alleged to fail because it asserted only "antitrust and anticompetitive conduct." Usually it is claimed that the defense extends only to such behavior. As the court noted: "Indeed, the question has more often been whether the defense includes other kinds 'misuse' besides antitrust violations and anti-competitive conduct."
Judge Posner has been a vocal proponent of a misuse defense for such "other kinds" of misuse, such as asserting rights beyond what the Copyright Act grants and using rights for ulterior purposes. I share that view, but there are some conceptual questions that should be addressed, and the IMCA court may ultimately face them too: if it is held that the IMCA does not possess copyright in its rules or that Staley has not infringed them, there is no technical role for a misuse defense since it is an affirmative defense. In other words, where plaintiff overstates its rights, it loses on the merits.
If it is held that IMCA does have a valid copyright and that Staley has infringed it, affirmative defenses do come into play, but might not it be a a difficult row to hoe once defendant's conduct has been found to have violated plaintiff's rights? Where, in other words, is the "mis"use? One possibility is that copyright has been used to influence other, non-copyright behavior, but outside of antitrust and anti-competitive behavior, the types of such behavior that would be so egregious as to be struck down is less clear, hence the logical problem posed by the defense.