David Newhoff, Author at The Illusion of More

Fifth Circuit Delivers Maddening Opinions in Bynum Copyright Suit

In the continuing saga of state actors getting away with copyright infringement, let’s look at the story of author/publisher Michael Bynum and his book about the legendary “12^th Man” of the Texas A&M University (TAMU) football team. The tale, which has been passed down through generations of Aggies and other football fans, describes the “Dixie Classic” of 1922, when the Texas A&M team sustained so many injuries that it faced a potential forfeit for lack of players. The Aggie coach called upon a sophomore basketball player named E. King Gill, who was watching in the stands, and asked him to suit up and be ready to sub in if needed. Gill did as the coach requested, and although he was never sent onto the field, his willingness to stand at the ready has fed Aggie lore, and Texas A&M marketing, for the past century.

Bynum, who has been a sports historian for 44 years, formed a collaborative relationship with the Texas A&M Athletic Department while working on the story, which he described in an email to me as “the first and only serious effort to tell the full story of E. King Gill.” In 2010, while seeking photographs for the project, Bynum sent a PDF “draft in progress” of his manuscript to TAMU’s Associate Director of Media Relations, Brad Marquardt. The PDF included a notice of copyright and a first chapter, created as a work made for hire (WMFH) by a writer named Whit Canning, whom Bynum had paid to write a short bio about Gill. Then in 2014, in connection with a fundraising campaign, Marquardt not only directed his secretary to retype the Gill Biography and omit the copyright information, but also to edit the byline in order to make it appear as though TAMU, rather than Bynum, had contracted Canning to write that material.

Bynum’s work was then published and distributed by Marquardt and others in the Athletic Department, both physically and online. “At this point the 12^th Man Book has not been published because Texas A&M University gave it away to more than 350,000 readers in 2014. The guts of this story has already been read by the key people who would have wanted to buy it (and read it properly),” Bynum says.

So, let’s jump to 2017, when Bynum and his publishing company Canada Hockey, LLC (D/B/A Epic Sports) filed suit against the TAMU Athletic Department, the TAMU 12^th Man Foundation, and employees of the Athletic Department, including Brad Marquardt. The allegations included direct copyright infringement, contributory and vicarious infringement, violation of DMCA §1202 for removal of copyright information, and violation of the Takings Clauses of both the Texas State and U.S. Constitutions.

Concurrent Takings Opinions Mired in Theory About the Nature of Copyright

Readers know by now that states and state actors are immunized by the Eleventh Amendment from federal suit and that, in Allen v. Cooper (2020), the U.S. Supreme Court affirmed that Congress lacked the authority to abrogate state immunity when it passed the Copyright Remedy Clarification Act (CRCA) of 1990. Thus, Bynum presently runs into the same wall as any other rightsholder when a state entity like a university commits infringement in violation of the federal statute. Proponents of sovereign immunity argue that denying a copyright owner the ability to bring federal infringement actions against states is not unconstitutional because “alternative” remedies are available, most notably takings claims. But, it is in the Fifth Circuit’s consideration of the takings claims where the court’s pair of recent opinions, both delivered on September 8 (here and here), is infuriating in several ways.

For context, a plaintiff may override sovereign immunity and sue a state or state actor in federal court, if he can demonstrate a constitutional violation and show that there is no remedy available in state court—which together would rise to a violation of due process. Thus, we see copyright holders, who are presently barred from pursuing statutory claims under the Copyright Act, allege that state infringements violate the Fifth Amendment’s prohibition against taking private property for public use without due process.

But in Bynum’s case, particularly because the Texas Constitution’s Takings Clause is more expansive than the Fifth Amendment, the Fifth Circuit opined that Bynum has a path to a remedy in state court and, therefore, TAMU’s immunity from litigation in federal court is not abrogated. This comes on the heels of photographer Jim Olive failing to plea a takings claim under that same clause, as discussed in this post. (Head spinning yet? Hold my beer.)

No person’s property shall be taken, damaged, or destroyed for or applied to public use without adequate compensation being made. – Takings Clause, Texas State Constitution –

In finding a path to state remedy for Bynum, the court refers to Olive, in which the Texas Supreme Court held that “copyrights are not property” subject to a per se takings claim. But the Fifth Circuit then avers that these plaintiffs could pierce the immunity bubble if, for instance, they were to argue the “damaged” or “applied” prongs of the Texas Takings Clause under the doctrine of a “regulatory taking.” What’s that? (Drink my beer and open another.)

A regulatory taking in a copyright context would theoretically apply where the plaintiff can show, through a multi-factor test, that the value of his property is either “damaged or destroyed” as a result of a state regulation. Not only is this highly speculative—especially after the highest court in the state has already said that copyrights are not property—but what, you might ask, would be the “regulation” in this case? Allegedly, it would be Texas’s own sovereign immunity doctrine in its state constitution. So, is it really plausible that a plaintiff can pursue a regulatory takings claim under any of the prongs of the Texas clause? And, of course, this supposed remedy would vary from state to state. (Skip the beer, open the bourbon).

But the appeals court did not end its analysis by pointing to a door Bynum cannot realistically walk through. Instead, it further observed that, “the Supreme Court has not ruled whether copyrights are property subject to a takings claim, but this is not a subject of first impression here.” What the Fifth Circuit is referring to is Porter v. United States, a 1973 case involving the widow of Lee Harvey Oswald and Oswald’s unpublished writings, in which the court held that “infringement of copyright, whether common law, or statutory, constitutes a tort.” [Citations omitted]. And, at the same time, the opinion in Bynum also mentions that nothing in Texas tort law provides a path to remedy. (Take a shot.)

So to recap, the Fifth Circuit told Mike Bynum that he is barred from a claim in federal court, in part because there is a state remedy available under Texas’s Takings Clause, but only under the doctrine of a “regulatory taking,” which is uncertain at best,[1] and then the court also affirms its jurisdictional position that copyrights are not property subject to a takings claim. Meanwhile, several court opinions since 1973, including SCOTUS in Allen, unequivocally describe copyrights as a form of property.

What is Copyright Anyway?

Now, for the bonus round, raise a glass, and let us consider the same court’s opinion regarding the qualified immunity of Mr. Marquardt pursuant to Bynum’s claim against him. Akin to state sovereign immunity, qualified immunity extends to government officials themselves, and in considering whether Marquardt retains his immunity in this case, the court recites the standard as follows: “To establish that qualified immunity does not apply, the plaintiff must prove that the state actor (1) violated a statutory or constitutional right, and (2) that the right was ‘clearly established’ at the time of the challenged conduct.”

The court here dismissed Marquardt’s plea for immunity, primarily on procedural and jurisdictional grounds, but I want to call reader’s attention to the use of the word right in both conditional clauses cited by the court. Because the statutory right which Marquardt allegedly violated (and had every reason to know he was violating) was Mr. Bynum’s right to exploit his copyrights.

So, are copyrights property subject to a takings claim? They should be held as such because a) this appears to be only potential remedy to state infringements at present (see Rick Allen v. North Carolina); and b) because copyrights share relevant qualities with other forms of property that can be transferred, protected, or effectively stolen from individuals. But …

Copyright law fundamentally protects an individual’s right to exploit a particular form of property (intangible property) in specific and limited ways. Thus, copyright is a little bit like any other civil right insofar as a court may apply very similar analysis as it would to find that a government official violated a speech or religious right of an individual and is, therefore, not immune from litigation. And, as discussed in my last post, state copyright infringement may also result in compelled speech.

So, it is little wonder the courts are in semantic knots over these matters. It is not uncommon in jurisprudence that copyrights are alternately described as property-like or rights-like in briefs and opinions, but when considering remedies for infringement under the federal statute, that dual identity does not tend to result in dismissal. It is only because SCOTUS held in the 1990s that state infringement claims lead to constitutional collisions that copyright owners today seek a workaround through takings claims, and the courts find themselves delving into the metaphysics of copyright to ask how property-like it is. But how could it be otherwise when considering a remedy most often applied to the taking of real estate for public use?

People of good intent may debate ad infinitum as to whether copyright is more akin to a civil right or more akin to personal property. But for the purposes of due process with regard to state infringements, assuming a claim like Bynum’s winds up at the Supreme Court, that Court should affirm that copyrights are property and that state infringements can be remedied by proving a taking has occurred. It may seem a bit like asking a basketball player to suit up for a football game, but creators deserve a solution when state actors deprive them of the fruits of their labor.

[1] Note that the Copyright Office report on state sovereign immunity also commented that takings claims and other alternatives are untested, and likely inadequate, remedies.

State Copyright Infringement Should Be About Justice

And it’s a shame that justice will not be the basis on which it is corrected. If it ever is.

Recently, the U.S. Copyright Office published its report on copyright infringement by states and state actors in response to the present circumstance whereby states are immunized against litigation for unlicensed use of protected works. As the Supreme Court held in the late 1990s, and affirmed in Allen v. Cooper (2020), Congress lacked the authority, under its Article I powers, when it explicitly abrogated Eleventh Amendment state sovereign immunity in federal suits against states for infringements of intellectual property.

I have written extensively on the background of sovereign immunity, and this post will provide a detailed account of where things stand and how they got that way. But the big bullet point of the moment is that the USCO was asked by Congress to report on the scope and nature of state infringements to discover whether a foundation exists for yet another run at legislative abrogation of state immunity for IP enforcement. The report was requested after the Supreme Court in Allen, even while acknowledging the injustice of the outcome, indicated that any new laws that set aside immunity would have to be based on evidence of widespread “intentional and reckless” infringement by state actors.

Intentional and reckless are evidentiary standards for which stakeholders representing state entities (e.g. university libraries) advocate a high bar that the alleged infringer must be proven to have knowingly made unauthorized use of a work. Conversely, entities like the National Press Photographers of America (NPPA) advocate the lower bar that the alleged infringer must act upon “something more than negligence.” Personally, I tend to think that unless one is somehow unaware that copyright law exists in the U.S., the default assumption should be that using a work without obtaining permission is most likely an infringement.

Too Much Focus on Volume and Frequency

Meanwhile, it seems that a significant injustice in this whole mess is the idea that Congress should be required to gather evidence of a large volume of state infringement presently occurring in order to meet what is called the “congruent and proportional” standard for abrogating Eleventh Amendment immunity in order to protect creators. The principle of the standard is sound enough. For a law to encroach upon a constitutional right, it must remedy a constitutional harm in a manner that is proportional to the injury being done to the first right. And in Allen, the Court held that when Congress abrogated immunity in 1990 for copyright infringement (with the CRCA), it failed to do so based on sufficient evidence of state infringements necessary to meet the “congruent and proportional” standard.

Consequently, it seems reasonable to worry that injustice may be perpetuated as a result of too much emphasis on the volume and frequency of measurable infringements because that is not how laws protecting individual rights are supposed to work. On the contrary, many laws of this nature are often meant to address minority interests in which individual rights may be infrequently yet substantially infringed—as is the case with laws mandating access to public facilities for persons with disabilities.[1] And in addition to the fact that a single copyright infringement by a state actor can do significant economic harm to an independent creator or small business (even causing self-inflicted harm to the state itself), the emphasis on quantity and frequency of infringements nationwide elides a principle beyond economics that has been woefully diminished in the whole state immunity narrative.

It is potentially regressive in many areas of national policy that the Supreme Court determined that Congress’s Article I powers do not extend to abrogating state immunity, even for the purpose of writing explicit and narrowly-tailored federal laws. And I would argue that state copyright infringement is a challenge that emphasized the nature of this dysfunction. Because of all the authorities granted to Congress in Article I, only the IP clause empowers it to pass laws with the express purpose of protecting a unique set of rights secured to individual citizens. And copyright is further distinguishable from its twin, patent law, because most of the works copyright protects are creative, personal expressions that are unavoidably intertwined with the authors’ speech rights.

So, when a state or state actor infringes copyrights, the implications are, of course, financial, but quite often much more than financial. They are acutely felt, unconstitutional violations of individual liberty. So, while I certainly hope that, for instance, Rick Allen prevails in his copyright takings claim in North Carolina, it is at the same time unfortunate that the sovereign immunity narrative is limited to treating copyright as strictly analogous to ordinary property because this view overlooks a fundamental injustice—one that is not ignored in the private sector.

Compelled Speech is an Inevitable Byproduct of Sovereign Immunity

To illustrate the point, imagine the following hypothetical that I wish we could call farfetched: Imagine a TV commercial or promo video produced by a state-funded entity that uses music without license, written and performed by feminist icon Beyoncé, to endorse Texas’s draconian anti-abortion law. Not only would the state actor have committed prima facie copyright infringement, but any reasonable observer would consider this use of the artist’s music to be an even greater crime of compelled speech. When creative works like music are used via compulsory license at political rallies, compelled speech may occur in those instances; but in a case in which a state-funded entity or state-employed individual uses a work to convey a specific message to which the creator(s) may be profoundly opposed, the speech infringement argument is even stronger.

As I say, I wish this was an unrealistic hypothetical, but the current state of our politics indicates that it is not. And I concocted the Beyoncé scenario to draw attention to the kind of personal, and not merely financial, injury that nearly any creator experiences when her work is misused. One could easily reverse the narrative and imagine a Christian rock band’s music appropriated to endorse abortion rights, and the principles would be the same.

But, of course, most creators are not Beyoncé. They are small, independent authors of works, and the more likely scenario is one in which, perhaps a photograph is used to endorse a message with which the photographer disagrees. Unless the photographer and photograph are quite well known, the compelled speech argument would be more difficult to make, though it would still be felt by the creator of the work. In fact, in the NPPA’s written comments of September 2 to the Copyright Office, the organization stated the following:

Simply put, with state sovereign immunity for copyright infringement, states are free to present and promote their messages by using copyrighted works against the wishes of the journalists and artists who created them. A state that opposes same-sex marriage, for example, could use the images taken by a wedding photographer to promote its position on “family values.” Each infringing use of imagery, if committed by a state actor, would amount to unconstitutional forced speech.

But in any similar circumstance other than a state infringement, the author is able to enforce her copyright rights to prevent a use of which she does not approve, whether for creative, cultural, financial, or political reasons. It is, in fact, not necessary for an owner of a work to provide a reason to take enforcement action against a clear case of infringement or to deny permission to use a work in a certain way.

As was widely discussed seven years ago, the Beastie Boys sued toy company GoldieBlox for using one of their songs for the simple reason that the band does not want its music used for advertisements of any kind.[2] And no further explanation is required. So, if a commercial entity can be prevented from using a protected work to engage in speech the author chooses to shun for any reason, it should be imperative that a state actor must be equally restricted from engaging in compelled speech, as this is an unequivocal violation of the First Amendment.

So, with regard to the congruent and proportional standard, copyright infringement should not be viewed solely in terms of financial harm or through the limiting metrics of volume and frequency. It should instead be understood that copyright is unique by conferring property-like ownership in the products of individual expression, which are simultaneously protected by another (and many feel the most sacred) constitutional right. Hence, any perceived injury to the Eleventh Amendment (historical debate on its meaning notwithstanding) should be substantially overwhelmed by the amount of constitutional heft embodied in the principles of copyright.

[1] The USCO report cites Tennessee v. Lane and the abrogation of immunity to enforce the Americans with Disabilities Act.

[2] At least it did not at the time. I have not checked to see if the Beasties have since changed their policy.

Copyright Scholars Urge Reversal in SAS v. WPL

Fundamental copyright doctrines and procedures are presently on trial in the case of SAS Institute v. World Programming Limited, now on appeal at the Federal Circuit. Suffice to say, U.S. software developer SAS alleges copyright infringement by UK developer WPL, and these entities have been litigating on both sides of the pond for many years. But it almost doesn’t matter, for the purposes of this post, which entity ultimately deserves to prevail on the actual merits. Because according to a brief filed by ten copyright scholars, the district court in the Fifth Circuit bollixed up procedure and doctrine so badly that, if allowed to stand, the ruling would be harmful to copyright creators everywhere. And, as usual, the precedent would be highly prejudicial to small business and independent authors who are always at a disadvantage vis-à-vis the cost of enforcement of their rights.

At issue is one matter of settled copyright doctrine and one matter of settled court procedure, both of which the SAS court in Texas undermined with an unprecedented procedure of its own that it called a “Copyrightability Hearing,” which the scholars’ brief describes as “foreign to copyright law and threatens to impose additional costs and burdens on parties, moving the costs of vindicating their rights further out of reach for many creators and copyright owners.”

Doctrine: Unprotectable Elements Do Not Deprive Whole Works of Protection

It is axiomatic that nearly all copyrightable works contain unprotectable elements. For instance, the scholars’ brief cites nonfiction books as an archetypal subject matter that is unquestionably granted protection as whole works, despite comprising many facts, which are unprotectable. But to further illustrate the point, I would note that the average motion picture or TV series contains hundreds, if not thousands, of protectable elements intermingled with unprotectable elements.

In fact, the motion picture industry thrives on copyright’s limiting doctrines like the idea/expression dichotomy, merger, short phrases, and scènes-à-faire. Consequently, no filmmaker gets an exclusive to produce scenes depicting heroes running with guns or that first kiss as the music swells and the camera adjusts to reveal a romantic setting. But these limitations do not obviate copyright attaching to each motion picture as a whole work, or even segments of each film as original expressions of common ideas, themes, tropes, etc.

Now, imagine a trial in which the filmmaker alleges copyright infringement of a whole movie, or a substantial portion of the movie, but the defendant argues, “Well, the motion picture is full of unprotectable elements and is, therefore, deprived of all protection as a complete work.” Because that is essentially what WPL argued in its lawsuit with SAS, and the district court agreed, thus, upending doctrine by voiding copyright in the entire work. As the amici state:

The Court’s stated basis for rebutting the presumption of validity and holding the SAS copyrights invalid, i.e., that “at least some of the material is not entitled to protection,” is not only wrong, it is exactly the opposite of the correct standard. [Citation omitted]

I use the motion picture example to emphasize the point that if the only response required of a defendant were to recite a litany (as WPL apparently did in this case) of copyright doctrines under which elements of a work may be unprotected,[1] much as I did a couple of paragraphs ago, in order to shift the burden to the plaintiff to re-prove protectability, that way lies madness. For instance, I happened to watch the new Suicide Squad this weekend and, even as a non-attorney, I could probably do ten pages or so breaking down the protectable and unprotectable elements just in Harley Quinn’s solo fight sequence.

But hypothetically placing the burden on the film’s producers to engage in such an exercise would be anathema to more than a century of legal doctrine and decades of court procedure. Yet, that is precisely what the court did in SAS when it found that, in general, the work at issue contained unprotectable elements and, therefore, the plaintiff bears the burden to re-prove copyrightability in that which is allegedly protectable.

Procedure: Registration as Proof of a Valid Copyright

So, it is settled law that copyrightable works may comprise even large volumes of non-protectable elements and still meet the standard of originality for protection. Moreover, once a copyright application is approved, a certificate of registration issued by the Copyright Office is considered prima facie evidence of a valid copyright as a matter of law. In fact, the efficiency of this longstanding precedent is one of the key incentives to authors provided by Congress (in §410(c) of the copyright act) to register their works with the USCO. Here, the scholars’ brief argues that by shifting the burden to the plaintiff to re-prove copyright in its work, the district court has disturbed a presumption of copyright validity, stating:

This presumption is of vital importance to copyright owners, and is frequently cited as an inducement to register works although copyright protection attaches automatically upon fixation. The presumption is particularly important to individual authors and small entities who struggle to afford the costs of federal litigation to adjudicate copyright claims. Imposing the costs of a Markman-like evidentiary showing of originality in every litigation would effectively render even their timely-registered works judicially unenforceable.[2]

The Abstraction-Filtration-Comparison Analysis

A court may certainly write an opinion finding that a registered copyright in a work to be invalid, but not without thorough analysis and clear articulation of its reasoning. Here, the scholars’ brief argues that the district court compounded its errors by engaging in an incomplete and improper analysis of the work at issue and then exacerbated harm, not only shifting the burden to the plaintiff to re-prove copyrightability, but to do so within the context of this court’s erroneous analysis.

Not unlike the analyses for “substantial similarity,” the Abstraction-Filtration-Comparison (AFC) test is a judicial review which examines the work by filtering out the unprotectable elements and then comparing the remaining protectable elements to the allegedly infringing work. But here, the scholars’ brief notes examples whereby the court misconstrued features of the SAS work as a foundation for finding non-protection. One example cited is “open source elements,” which tends to confuse a lot of people because “open source” generally refers to software that is made freely available, but this attribute does not alter the copyrightability of the work. Thus, the scholars’ brief states:

…the Court’s attack on the protectability of SAS works is predicated on an alleged characteristic of the works that has nothing to do with copyrightability. Thus, by its own terms, the District Court filtered out what should be presumed to be copyrightable elements of Plaintiff’s work. This alone is reversable error.

As stated above, whether SAS or WPL should ultimately prevail on the true merits of each claim is immaterial to the issues raised in the scholars’ brief. And to be honest, I am not about to crawl through the thicket of facts, allegations, and responses presented in what looks like more than a decade of these two companies duking it out with one another. Some have referred to this case as a Google v. Oracle light, but at least in context to the brief discussed in this post, I would disagree.

In Google, the core copyrightability question (which the Supreme Court failed to adequately answer) was solely based on the merger doctrine, and whichever view one held of that argument, either could find purchase in the law. In SAS, it appears that the district court simply abandoned any foundation in law whatsoever. And for the sake of rightsholders working in all media, the Federal Circuit must reverse.

[1] The amici scholars refer to this litany as “the List” in their brief.

[2] Markman refers to judicial interpretations of specific words used in a patent description pursuant to a patent litigation.

Also see brief co-author Steven Tepp’s piece at IPWatchdog.

Photo by: AndreyPopov

Author: David Newhoff