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 “12th 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 12th 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 12th 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, 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.
 Note that the Copyright Office report on state sovereign immunity also commented that takings claims and other alternatives are untested, and likely inadequate, remedies.