Category: Law & Policy

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

Second Circuit Soundly Denies Rehearing to Warhol Foundation

Many copyright observers, me included, believe the Supreme Court’s majority opinion in Google v. Oracle was deeply flawed because rather than answer the copyrightability question presented (i.e. whether APIs are properly a subject of protection), the Court instead deconstructed that analysis and spread it across the four factors of the fair use test. As a result of that decision, copyright case law was left with a fair use opinion so over-broad in some of its reasoning that it also explicitly stresses that its findings should be read as unique to that case and not interpreted to disturb fair use doctrine in general. Warhol

And rightsholders should be very glad the Court sought to limit that opinion because almost immediately on the heels of the decision, the Andy Warhol Foundation filed a petition for en banc rehearing at the Second Circuit, principally on the basis that Google v. Oracle had altered the fair use analysis in its favor. At issue is Warhol’s use of photographer Lynn Goldsmith’s unpublished photograph of Prince (see background below), and as stated in earlier posts, I would personally find non-infringement in the Warhol screens, but not for most of the reasons presented by AWF, and especially not for the reasons adopted in Google.

What was most concerning for creators about the Google decision was the very broad opinion (mostly discussed in the analysis of fair use factor four on potential market harm) that general social purpose may be served by finding fair use of even verbatim copying of protected works. Thus, AWF argued that, just like software innovation serves social purpose, so too, does fine art serve a social purpose, even where verbatim copying exists.. And while those generalizations are true, one can imagine how a too liberal reading of the “social benefit” premise might find fair use in almost anything.[1] Thus, AWF’s petition for rehearing was the first test of the Court’s stated limitations in Google, and here, the Second Circuit was unequivocal. In a withering 63-page opinion, it responded specifically to the argument that Google v. Oracle had changed the law thus:

In particular, the Supreme Court in Google took pains to emphasize that the unusual context of that case, which involved copyrights in computer code, may well make its conclusions less applicable to contexts such as ours. Thus, while Google did indeed find that the precise copying and incorporation of copyrighted code into a new program could (and did, on the particular facts of the case) constitute fair use, the opinion expressly noted that ‘copyright’s protection may be stronger where the copyrighted material . . . serves an artistic rather than a utilitarian function.’

And to further emphasize that the outcome in Google had not altered fair use doctrine as AWF asserted, the opinion states:

And indeed, the Supreme Court did not leave that conclusion to inference, expressly advising that in addressing fair use in this new arena, it ‘ha[d] not changed the nature of those [traditional copyright] concepts.’

So, this is an odd one to comment upon for me because I believe the fair use reasoning in Google v. Oracle is very bad law, while I find the Second Circuit’s analyses in Goldsmith to be generally good law, albeit arriving at a conclusion with which I disagree. Most importantly for rightsholders, though, is that the first attempt to exploit the Google decision beyond the limits of a certain type of computer code has failed. And that is certainly very good law.

Background on AWF v. Goldsmith (reprinted from earlier post)

Lynn Goldsmith captured the photograph at issue in 1981, during a truncated photo session with the semi-reclusive musical artist Prince Rodgers Nelson, who was then barely known to mainstream audiences as Prince. Goldsmith contends that she made certain creative choices resulting in an image of the “vulnerable human being” behind the persona. The photograph was never published but was licensed in 1984 (unbeknownst to Goldsmith) to Vanity Fair as a “reference photo” to produce an illustration to accompany a story about musician’s rise to stardom. In fact, the photo was used by Andy Warhol make a series of silkscreens similar to those he has made of Marilyn Monroe, Mao Zedong, etc., all using photographs as original sources.

Goldsmith was not aware of the existence of the Warhol screens until 2016 when, after Prince’s death, Vanity Fair published a special edition with one of the Warhol versions on the cover. At that time, Goldsmith communicated to the Andy Warhol Foundation (AWF) that the works may infringe the copyright on her still unpublished photo, and in response, AWF filed suit seeking a declaratory judgment of non-infringement or, barring that, a finding of fair use. The district court held the Warhol screens to be fair use, primarily by following the Second Circuit ruling in Cariou v. Prince, but on appeal, the court reversed, finding the Warhol screens are not fair uses.

[1] Notably, the Court could have served the same intent by finding APIs to be uncopyrightable, which would have been a cleaner ruling with respect to copyright law in general.