Tag: Supreme Court

Author Bynum Petitions SCOTUS for Remedy to State Copyright Infringement

I have written extensively about state sovereign immunity (a.k.a.,11th Amendment immunity) as it relates to copyright owners’ inability to hold states and state actors liable for recklessly and knowingly infringing protected works. State immunity for violations of federal statutes against persons is a maddening subject—rife with judicial and historical contradictions and implications that reach far beyond intellectual property. Among the many infuriating aspects of the immunity story is that, in theory, persons injured by state violations of their federal rights can pursue “other remedies” when they are barred from suit in federal court. In theory. But not in Texas.

Texas does not equivocate: it rejects any remedy for victims whose intellectual property is blatantly stolen—which even Texas cannot deny happened here.

That statement comes from sports author Mike Bynum’s petition for certiorari to the Supreme Court in response to Texas’s and the Fifth Circuit’s hard-to-follow rationales for denying Bynum any remedy whatsoever for the undisputed theft of his intellectual property. Specifically, Bynum was working on a book about the legendary “Dixie Classic” football game of 1922, during which the “12th Man,” E. King Gill who, though not a member of the team, suited up ready to play because so many members of the Aggie squad had been injured that day.

In my post published at this time last year, I detailed the facts of Bynum’s complaint and the Fifth Circuit’s ruling. In summary, parties at the university’s athletic department copied and distributed Bynum’s unpublished manuscript, removing his name and copyright notice in the process. The material was ultimately distributed to an estimated 350,000 readers—the same audience that would have been interested in buying the book.

With a built-in fanbase and potential long tail interest in the work, the financial damage to Bynum is arguably substantial—but at any valuation, it was surely total. While most piracies cause at least some harm to the copyright owner, TAMU’s wholesale destruction of Bynum’s first publication opportunity effectively killed all financial interest in the author’s work-in-progress.

If that sounds like an illegal “taking” by the state, that’s what Bynum and others think, too—especially when they are barred by sovereign immunity from enforcing their statutory copyright rights. In fact, takings, unfair competition, torts, etc. have long been speculated as alternative remedies in the debate about sovereign immunity. Even the Supreme Court, in affirming that Congress’s Article I powers were insufficient on their own to abrogate state immunity, argued that the possibility of state remedies had “barely been considered,” by Congress.[1] And, as noted in that post last year, the Court, in filmmaker Rick Allen’s case against North Carolina (Allen v. Cooper) indicated that a copyright owner may sue a state entity 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.”

But as Bynum’s petition describes, the Fifth Circuit decided that 1) copyright infringement is never a taking because copyright rights are not property; 2) that his due process claim is barred on the grounds that the state could hypothetically provide an avenue for state remedy at some point in the future; and 3) that takings claims are altogether barred by sovereign immunity despite the fact that the Supreme Court has held that the Takings clause requires some compensatory remedy in federal court.

The case law underlying these matters is expansive and, as stated above, tangled in contradictory opinions dating back to the ratification of the Constitution. Every time I return to the subject, I feel like I’m starting over, and I will do readers the favor of not attempting to unravel every nuance in a single post. I suspect the Court will grant cert here because of the constitutional questions presented; because circuit splits are argued; and because of the states’ rights implications.

But one aspect I hope the Court will emphasize in Bynum’s case is the thoroughness with which TAMU took the whole value of his property interest in the manuscript—and even went so far as to remove evidence of his authorship and copyright claim, which is reckless as well as illegal. As the petition cites, the Court in Allen v. Cooper held that “copyrights ‘are a form of property” under the Fourteenth Amendment and that an ‘intentional, or at least reckless’ copyright violation may violate due process rights.”

The holistic nature of the state theft in Bynum may be instructive to the extent that photographer Jim Olive’s case against the University of Houston is otherwise held to inform these considerations. Olive sued the University of Houston for infringement of his aerial photograph, but the Texas Supreme Court held that the complaint was not ripe for a per se Takings claim on the basis that the university had not fully deprived the photographer of his right to exploit his copyright rights in the image in other contexts.

Even if that theory has merit as a Takings consideration (because it is no way to look at copyright), the Supreme Court in Bynum should carefully consider the contrast of that reasoning against the utter destruction to Bynum’s property interest in his book. “TAMU’s copyright violation was flagrant, damaging, and largely undisputed. Texas’s legal position—and the Fifth Circuit’s—is that states simply can steal copyrighted material with impunity. As state copyright violations continue to proliferate nationwide, that warrants this Court’s intervention,” the petition argues.

Indeed it does.

[1] Florida Prepaid v. College Savings (Rehnquist, 1999)

Photo by: Angelstorm

Warhol Foundation v. Goldsmith at SCOTUS Part II: The Derivative Works Right

In Part I, I wrote that I hope the Court will find that AWF’s central argument fails on the “transformativeness” question presented and that it will reaffirm that this part of the fair use factor one inquiry must find at least some evidence of commentary upon the original work. Warhol’s Prince Series does not comment upon the photograph used, which is why the Court should also reject AWF’s allegations that the speech right is at stake in case:  because AWF wrongly applies the fair use exception in context to speech.

Once again, the implication that fair use evolved to protect all uses resulting in any form of protected speech (i.e., nearly all uses) is where the anti-copyright crowd would like to go, but it is an aberration of the doctrine. Instead, the speech right lives in fair use because, at its core, the exception prevents the copyright owner from prohibiting various uses that comment upon or criticize her work. Under AWF’s doctrine, everything that speaks is fair use, even Sen. Hawley’s recent defense that his unlicensed use of a photograph on campaign merch should be fair use because it is obviously political speech.[1] This is simply wrong as a matter of law.

Many follow-on works that legitimately fall within the correct doctrinal boundary of fair use will continue to be made if the Court rejects AWF’s over-broad claim to defend speech and the entire world of appropriation art. With regard to the latter subject, uses that do not meet a proper fair use standard may still be made through licensing, which brings us to the question overshadowed by the fair use inquiry, which is whether Warhol prepared derivative works that infringe Goldsmith’s exclusive right under Section 106(2) of the copyright law. I have said in earlier posts that my own view is that the Warhol screens do not sufficiently copy enough of Goldsmith’s expression to be infringing, but that’s a matter for lower courts and juries. More germane to the moment is whether the Supreme Court might reaffirm the importance of considering prima facie infringement before responding to a fair use defense and, thereby, reaffirm the derivative works right, which has been gnawed upon, if not occasionally consumed, by the fair use hydra.[2] After all, the right to prepare derivative works is statutory law, while the “transformative” doctrine is not.

Affirming Authorship in Photography

Oddly enough, my instinct here is that reasserting the value of the derivative works right in this case would, in addition to fostering better copyright law, possibly shore up the foundation of authorship in works like photographs. I say this regardless of the outcome for either party, and others may disagree, but I’ll do my best to explain.

Begin with the acknowledgement that nearly all photographs—and certainly many portraits—are a mix of unprotectable fact and protectible expression. In a photograph like Goldsmith’s 1981 portrait of Prince, the expression (i.e., Goldsmith’s authorship) is subtle in that we understand, as a matter of law and common sense, that she is obviously not the author of Prince’s face. This nuance in photographic authorship is a conceit the anti-copyright ideologues would like to obliterate, and quite often they attempt to do so by arguing a very broad interpretation of “transformativeness” that would swallow the author’s exclusive rights.

Copyrightability in the medium of photography rests substantially on two principles articulated in two Supreme Court cases—Sarony in 1884 and Bleistein in 1903. In Sarony, the case which challenged the constitutionality of protecting photographs at all, the Court had a relatively easy time identifying the photographer’s authorship in the observable creative choices he made to produce the resulting portrait of Oscar Wilde …

[“Oscar Wilde No. 18”] is a useful, new, harmonious, characteristic, and graceful picture, and . . . plaintiff made the same . . . entirely from his own original mental conception, to which he gave visible form by posing the said Oscar Wilde in front of the camera, selecting and arranging the costume, draperies, and other various accessories in said photograph, arranging the subject so as to present graceful outlines, arranging and disposing the light and shade, suggesting and evoking the desired expression, and from such disposition, arrangement, or representation, made entirely by the plaintiff.

But that same decision also theorized that an “ordinary” photograph—perhaps one of the many portraits typical of the day depicting regular folks posed in front of plain backgrounds—might not be protectable. But nine years later, although the Bleistein case did not involve photographs, Justice Holmes introduced the metaphysical notion of the “personality of the artist” as a foundation for authorship, an idea which prefaces the doctrines of “modicum of originality” and automatic copyright upon fixation. Holmes writes:

The [creative rendering] is the personal reaction of an individual upon nature. Personality always contains something unique. It expresses its singularity even in handwriting, and a very modest grade of art has in it something irreducible, which is one man’s alone. That something he may copyright unless there is a restriction in the words of the act.

In Bleistein, Holmes also famously cautioned courts to avoid playing the role of art critics …

It would be a dangerous undertaking for persons trained only to the law to constitute themselves final judges of the worth of pictorial illustrations, outside of the narrowest and most obvious limits. At the one extreme, some works of genius would be sure to miss appreciation. Their very novelty would make them repulsive until the public had learned the new language in which their author spoke.

If the Sarony Court might have found a portrait like Goldsmith’s of Prince too “ordinary” for copyright to attach, thankfully she and the rest of the photography world are rescued by Holmes’s “personality of the artist” principle. But to accept this principle, and continue to affirm it, we must acknowledge very subtle forms of authorship in works like photographs, which are always a paradoxical combination of truth and fiction, of human vision and mechanical reproduction.

Moreover, because many visual arts, are non-verbal works, they often defy any effort to describe what they are or what they communicate, much like a consideration of instrumental music. Hence, concepts like “meaning and message” are easily bent out of shape in cases like AWF v. Goldsmith, as was manifest in the Second Circuit’s efforts to square its decision with its prior holding in Cariou v. Prince, which failed to heed Holmes’s counsel to avoid art criticism

The “transformative” analysis invites meandering discussion about “meaning and message,” which is distracting to questions of law but also may not exist in the works at issue.[3]We must keep in mind that copyright is about expression—the subject matter of authorship—and not about meaning and message—the subject matter of audiences and critics. When inquiries become un-moored from this principle, fair use makes a hash of cases like this, and cases like this make a hash of fair use.

Where a secondary work is clearly based upon a primary work but does not meet the fair use qualification of commenting upon the primary work, the courts can agree that the derivative works right under Section 106(2) is implicated. Then, at trial, it may be determined whether the secondary work copies enough of the expression in the original to be infringing.

Observers of good intent will disagree as to whether Warhol copied more factual or expressive elements in Goldsmith’s photograph, but this inquiry under the light of Section 106(2) affirms the value of authorship in the former while allowing a reasonable consideration of possible non-infringement for the latter. In contrast to AWF’s sprawling view of fair use, the derivative works inquiry forces a court, or a jury, to begin with an analysis of the authorship in the work used with proper deference to the bundle of copyright rights attached to that authorship upon fixation.

[1] Not that this is the worst copyright mistake made by the senator. See Stephen Carlise and Aaron Moss.

[2] Recognizing that the Court failed to do exactly this in Google v. Oracle, and because only the fair use argument is presented in this case, copyright advocates have reason to be anxious about the outcome in AWF v. Goldsmith.

[3] Indeed, Richard Prince insisted that there was no meaning or message other than “art” in his works made from elements of Patrick Cariou’s photographs.

Decision in Unicolors v. H&M an Important Win for Creators

Justice Breyer, in the waning days of his tenure, wrote an opinion last week that will be of significant help to copyright owners. Historically a critic of copyright, it was Breyer who wrote the convoluted majority opinion in Google v. Oracle, which elided a core copyrightability question presented (the protection of APIs) by shoehorning the question into the second prong of a fair use analysis. But in Unicolors v. H&M, Breyer wrote the 6-3 opinion upholding a basic principle of justice and common sense—namely, that innocent, administrative mistakes should not void the ability to enforce one’s copyright rights.

For background, designer Unicolors sued retailer H&M for infringement of several of its protected textile designs. Unicolors prevailed in district court, but the Ninth Circuit Court of Appeals reversed, siding with H&M’s argument that Unicolors’s copyright registration was invalid because it contained inaccurate information—specifically a mix of “published” and “unpublished” works as a group of “unpublished” works.

Under §411 of the copyright law, an applicant who knowingly provides inaccurate information on an application may risk having that registration invalidated in the course of a lawsuit. But the statute also contains a safe harbor, expressing Congress’s understanding that non-expert applicants would make innocent errors and should not have their registrations invalidated as a result. To complicate matters, the Ninth Circuit “determined that it did not matter whether Unicolors was aware that it had failed to satisfy the single unit publication requirement, because the safe harbor excuses only good-faith mistakes of fact, not law,” states the SCOTUS opinion.

The reasons the Ninth Circuit’s finding was vexing is twofold. First, the meaning of “published” under the copyright law remains one of the more confusing definitions for many attorneys, let alone laymen authors of works. Second, even if the layman applicant is confident he understands the definition of “published,” is a statement about the publication status one of fact or law, as a layman would understand it? And all this for a purely administrative function at the Copyright Office. Fortunately, the SCOTUS opinion last week held that “411(b) does not distinguish between a mistake of law and a mistake of fact; lack of either factual or legal knowledge can excuse an inaccuracy in a copyright registration under §411(b)(1)(A)’s safe harbor.”

As stated at oral arguments by counsel for Unicolors, it was unreasonable to allege that the company had “knowingly” provided inaccurate information to the Copyright Office just to save $65 for an additional registration fee. But for the independent creator, like the photographer who makes an average $30,000/year for her photo work, those fees add up, and the ability to register a group of images on a single application makes a difference. And this same class of creators is even more likely than a big business to commit errors of law or fact. Consequently, the SCOTUS ruling in Unicolors provides significant relief to the same creators who are already at a disadvantage when enforcing their copyright rights.

One could delve a little deeper into this opinion (and the dissent) to unpack the distinctions among “actual knowledge,” “constructive knowledge,” and “intent to defraud,” but that’s an unnecessary slog. More importantly, these nuanced terms of art among legal professionals, in this case, amount to variations on the common understanding of lie versus mistake for us mortals. And the very mortal author, artist, or creator seeking to protect her work is lucky just to understand the basics of registration with the U.S. Copyright Office. (Is a play a “literary work” or a “work of the performing arts” and is it “published” if it has been performed on stage?). So, yes, the most liberal interpretation of the statutory safe harbor in the registration process is the only one which achieves both reason and justice.