"Why would we allow the official law enacted by a legislature…to be hidden behind a paywall?" asked Justice Neil Gorsuch at oral argument in the case of Georgia v. Public.Resource.Org.[ref]2020 WL 1978707 Supreme Court of the United States[/ref] While the Justices' query is fairly pointed, it misses the precise question at issue. It is not the copyright in the actual statutes of the State of Georgia that is in question, it is the copyright in the annotations to the statutes that was commissioned by the State that is the heart of the dispute.
Contrary to the headlines surrounding this decision, the SCOTUS did not rule that States cannot hold a copyright in the law.[ref]Supreme Court Affirms That No One Owns The Law[/ref] The State of Georgia never contended that they could. The SCOTUS also did not rule that one cannot have a copyright in an annotations to statutes and legal decisions, because it previously ruled that one could.[ref]Callaghan v. Myers, 128 U.S. 617, 9 S.Ct. 177, 32 L.Ed. 547, (1888)[/ref] What it did rule was that the State of Georgia could not have a copyright in the "Official" annotated statutes in which the State of Georgia was clearly the "author," under the "Government Edicts Doctrine."
"We hold that the annotations in Georgia's Official Code are ineligible for copyright protection, though for reasons distinct from those relied on by the Court of Appeals. A careful examination of our government edicts precedents reveals a straightforward rule based on the identity of the author. Under the government edicts doctrine, judges—and, we now confirm, legislators—may not be considered the ‘authors' of the works they produce in the course of their official duties as judges and legislators. That rule applies regardless of whether a given material carries the force of law. And it applies to the annotations here because they are authored by an arm of the legislature in the course of its official duties."[ref]2020 WL 1978707 at 5[/ref]
Never heard of the "government edicts doctrine?" Yeah, me neither. But it traces its roots back to a trio of 19th century rulings by the SCOTUS, in sum ruling that judicial opinions cannot be copyrighted, but that material created by 3rd parties "headnotes, syllabi, tables of contents, and the like"[ref]Id.[/ref] could be protected by copyright.
So, the crux of the issue is, who is the "author" of the Official Code of Georgia Annotated?
According to the Cornell Law School Information Institute:
"The Official Code of Georgia Annotated ("OCGA") is Georgia's official compilation of all its laws and has been published yearly since 1982. Both private and public entities wrote the OCGA. The OCGA contains both statutory text and annotations of the text, which help to explain the law. The OCGA's annotations include, among other things: (1) summaries of State Bar advisory opinions and opinions of the Attorney General of Georgia; (2) law review article excerpts; (3) editors' notes and commentaries; (4) history and repeal lines; and (5) cross references."[ref]State of Georgia, et al. v. Public.Resource.Org, Inc.[/ref]
So not only does the OCGA contain material that the SCOTUS has previously ruled can be copyrighted, but the State of Georgia is not the only entity making contributions. Indeed the "lion's share" of the work is done by legal publisher Matthew Bender (a subsidiary of Lexis/Nexis Group), in return for exclusive rights of publication.[ref]2020 WL 1978707 at 4[/ref] The result is a "work for hire" in which the State of Georgia is listed as the "author" and the State retains the final say over what will be included, according to the SCOTUS "in exacting detail."[ref]Id.[/ref] Since Matthew Bender does most of the work, and assumes the cost, the OCGA is made available for $412, and the statutes are made available online for free. In contrast, the "non-official" annotated statutes of Georgia by competitor WestLaw costs $2,750.[ref]Id. at 18 (Dissenting opinion of Thomas)[/ref]
This is not unusual. "25 other jurisdictions—22 States, 2 Territories, and the District of Columbia… rely on arrangements similar to Georgia's to produce annotated codes."[ref]Id. at 11 (Dissenting opinion of Thomas)[/ref]
But as with many things in the modern internet age, making a multiple volume set of books available for a greatly reduced cost is simply not good enough. Everything must be FREE. Thus enters Defendant/ Appellee Public.Resource.Org (PRO). "Without permission, PRO posted a digital version of the OCGA on various websites, where it could be downloaded by the public without charge. PRO also distributed copies of the OCGA to various organizations and Georgia officials."[ref]Id. at 4[/ref] This inevitable copyright infringement lawsuit followed. The District Court found infringement. The Eleventh Circuit reversed, leading us to the SCOTUS.
The decision shows a sharply divided Court, with a bare majority of 5-4 affirming. Interestingly enough, the divisions do not skew down the typical liberal/conservative lines. Roberts, Sotomayor, Kagan, Gorsuch, and Kavanaugh, make up the majority. Thomas, Ginsberg, Alito and Breyer make up the minority with Thomas and Ginsberg filing dissenting opinions.
The majority opinion engages in a bit of head spinning logic. It states that obviously the State of Georgia is the "author," but it can't be an author because the commission is composed (largely) of legislators and legislators can't be authors.
"[T]he annotations were prepared in the first instance by a private company (Lexis) pursuant to a work-for-hire agreement with Georgia's Code Revision Commission. The Copyright Act therefore deems the Commission the sole ‘author' of the work. 17 U.S.C. § 201(b). Although Lexis expends considerable effort preparing the annotations, for purposes of copyright that labor redounds to the Commission as the statutory author. Georgia agrees that the author is the Commission."[ref]Id. a 7[/ref]
But:
"Instead of examining whether given material carries ‘the force of law,' we ask only whether the author of the work is a judge or a legislator. If so, then whatever work that judge or legislator produces in the course of his judicial or legislative duties is not copyrightable."[ref]Id. at 11[/ref]
Or you're an author because the Copyright Act says you are, but you are not an author because we say so. In his dissent, Justice Thomas writes:
"Stripped of the fiction that this Court's 19th-century precedents clearly demonstrated that ‘authorship' encompassed all works performed as part of a legislator's duties, the majority's textual argument fails.
The majority does not confront this criticism head on. Instead, it simply repeats, without any further elaboration, its unsupported conclusion that "[t]he Court long ago interpreted the word ‘author' to exclude officials empowered to speak with the force of law, and Congress has carried that meaning forward in multiple iterations of the Copyright Act." Ante, at ––––. This wave of the ‘magic wand of ipse dixit' does nothing to strengthen the majority's argument, and in fact only serves to underscore its weakness."[ref]Id. at 17 (Dissenting opinion of Thomas)[/ref]
The majority's decision also ignores the salient facts of the case. Yes, absolutely, under the plain text of the Copyright Act the Commission is the author under the principles of "work for hire." Yet the reality is, the main author of the annotations, who the majority admits does the "lion's share" of the work is Matthew Bender, who is not in any sense a "legislator." So, the SCOTUS takes the copyrightable work of Matthew Bender and injects it into the public domain because of the simple fact that ownership of the work has been transferred to the Commission.
Add to this the fact that some of the annotations consist of excerpts from law review articles, which presumably Matthew Bender does not own the copyright thereto, instead of (most likely) the copyright being lodged in the authors or the institutions that hired them. Now these excerpts have been injected into the public domain as well.
Lastly, as Justice Thomas reasons in his dissent, the annotations are exactly the type of works that the Copyright Act seeks to encourage.
"[U]nlike judges and legislators, the creators of annotations are incentivized by the copyright laws to produce a desirable product that will eventually earn them a profit. And though the Commission may require Lexis to follow strict guidelines, the independent synthesis, analysis, and creative drafting behind the annotations makes them analogous to other copyrightable materials."[ref]Id. at 14 (dissenting opinion of Thomas)[/ref]
So, stripped of this incentive, will the 25 other jurisdictions with deals similar to Georgia' continue to produce annotated statutes? Maybe, but maybe not. They would somehow have to find the funding to pay for the "lion's share" of the work previously performed by Matthew Bender, taking this money away from other State resources.
So perhaps they just stop. What's the alternative, then? The non-official version produced by someone else? Recall that the cost of the non-official version is $2,750, an increase of $2,338 over the official version. So, while the Electronic Frontier Foundation and their friends take the victory lap, consider what they've really accomplished: increasing the cost to the consumer by $2,338.
A recent decision out of the Eastern District of New York featured a significant pushback on the theory that some works do not offer enough "creativity" to qualify for copyright protection. Coming just days before the reversal of the Katy Perry Dark Horse verdict on a similar theory,[ref]Judge Reverses Infringement Verdict Against Katy Perry, But If You're a Composer, Should You Be Happy About the Reason?[/ref] the case illustrates how litigants have started to misuse and distort the concepts of "originality" and "creativity" in order to attack the bedrock principles of copyright law.
The case, Cruz v. Cox Media Group,[ref]2020 WL 1234458. Page references are to the original order.[/ref] has all the marking of a true "David versus Goliath" tale, which ends, appropriately enough, with Goliath taking the fall.
The Plaintiff, Alex Cruz, works for a Brooklyn furniture store. The Defendant, Cox Media Group, is "a national media company with 13 television stations, 61 radio stations, four newspapers, and 72 websites."[ref]Id. at 2[/ref] You would think that a media company of this size would have a pretty good understanding of copyright law, and how it works. Yet, going through the opinion, one finds that Cox's arguments are extreme interpretations that garner little more than disbelief that they were seriously advanced.
Cruz was on his way to his girlfriend's apartment, when he stumbled upon a scene of the NYPD arresting a suspected terrorist. He took a picture with his iPhone of the scene, and sent the picture to a friend. His friend posted the picture to his own Instagram account and took credit for being the author of the photograph.[ref]Id. at 1[/ref] (Nice friends you've got there). When Cruz's girlfriend posted a correcting post on Instagram, media companies began contacting Cruz for a license for the photo. Cruz wound up entering into a license agreement with both CNN and NBC.[ref]Id.[/ref]
Guess who didn't ask for a license? Cox Media, of course. They posted the photo on their WSB-TV (Atlanta) website, as well as the station's Facebook and Twitter pages. They also failed to credit Cruz as the photographer in any of the postings of his photo.[ref]Id. at 2[/ref] I guess it must have slipped their minds.
In the inevitable infringement lawsuit that follows, Cox argues that despite the copyright registration obtained by Cruz, the photo is not copyrightable. "Cruz ‘did not make a single creative choice' in taking the Photograph … such that the Photograph does not possess the ‘modicum of creativity' required to receive copyright protection."[ref]Id. at 3[/ref]
At this point I will pause to remind you that the company making this argument owns 13 television stations and 4 newspapers. The case so heavily relied upon by Cox, Oriental Art and Printing, Inc. v. Goldstar Printing Corp.,[ref]175 F.Supp 2d, 542 S.D.N.Y. 2001[/ref] has been criticized by other Courts, and specifically this blog.[ref]Court Rules "Utilitarian Advertising" Photograph Not Protected by Copyright[/ref] In short, its a poorly reasoned decision that does not understand the concept of independent creation.
Fortunately, the Court flatly rejects this.
"This argument misses the mark. As with almost any photograph, the Photograph reflects creative choices, including Cruz's timing for when he took the Photograph. (Citation omitted) ‘[A] person may create a worthwhile photograph by being at the right place at the right time.' (citation omitted). Indeed, Cruz's recognition of what he considered a ‘big commotion' (Citation omitted) and his decision to take the Photograph when he did (i.e. as law enforcement closed in on Saipov after he had been shot and was lying on the ground) were sufficient creative choices to meet the low threshold required for copyright protection."[ref]Cruz v. Cox Media Group at 3[/ref] (emphasis added).
This argument being shot down, Cox's next defense is (all together now) "fair use" and that its use was "transformative" because it "added context" to the photograph.
Nonsense, says the Court.
"Cox forgets that ‘[d]isplay of a copyrighted image or video may be transformative where the use serves to illustrate criticism, commentary, or a news story about that work.' (emphasis original)… (‘[T]he use of an image solely to illustrate the content of that image, in a commercial capacity, has yet to be found as fair use.')."[ref]Id. at 6[/ref] (citation omitted).
"To nonetheless find that Cox's use of the Photograph was fair would ‘eliminate copyright protection any time a copyrighted photograph was used in conjunction with a news story about the subject of that photograph. That is plainly not the law."[ref]Id. at 6[/ref](citation omitted)
Thus, factor one, the purpose and character of the use runs "strongly" against Cox. Factor two, the "nature of the work used," leans in favor of Cox, as the photo is "factual" in nature.[ref]Id. at 7[/ref]
As to the third factor, the "amount and substantiality of the taking" also weighs against Cox. Hard to argue when the entire photograph was used. Cox counters that it had an "editorial need" to use all of the photo. Again, the Court is unpersuaded.
"[A]s explained above, Cox's use of the Photograph was not transformative—Cox simply thought (apparently like its competitors CNN and NBC) that the Photograph had certain qualities that would make it a good complement to the Article."[ref]Id. at 8[/ref]
Yet, it is the fourth factor, the "market effect," where Cox strikes its most tone deaf argument of the case.
"[P]ublic interest in receiving accurate information regarding [Saipov's] arrest ... outweigh[ed] the personal gain to Plaintiff of licensing a photo he did not even know was newsworthy until news organizations told him so."[ref]Id. at 9[/ref]
Remember, Cox owns 13 TV stations and 4 newspapers. So the wholesale swiping of someone else's copyrighted material is OK, because of the "public interest in receiving accurate information"?
Nothing like biting the hand that feeds you.
But in any event, "[i]f Cox could simply ‘use such images for free, there would be little or no reason to pay for works.' says the Court."[ref]Id.[/ref]
No fair use for Cox. Summary judgement for Plaintiff. Doubtlessly, a motion for attorneys fees will follow shortly.
So why go to the expense of a trial? You're a huge media company. You know how copyright works and you know how to license works. Did you really think these arguments were so persuasive as to warrant the expense of litigation? Cut Mr. Cruz a nice size check to license the photograph, include a few extra bucks for his trouble, and be done with it. Much simpler and cheaper than paying two lawyers to litigate this case all the way to summary judgement.
Copyright protects the works of everyone. Even if they're not a professional artist. Even if they work in a furniture store. Copyright is our Constitutional right.
As the Supreme Court of the United States held:
"[T]he promise of copyright would be an empty one if it could be avoided merely by dubbing the infringement a fair use ‘news report.'"[ref]Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539 (1985) at 557[/ref]
No Subjects
Most often, claims of copyright infringement go to the artistic expression contained in a story. Rare is the case that claims a copyright in a character itself. But this is what happened in the case of Daniels v. Walt Disney Company.[ref]952 F.3d 1149 9th Circuit Court of Appeals 2020, 2020 WL 1240915. Citations are to the original pagination.[/ref]
The plaintiff here claims to be an expert on "children's emotional intelligence."[ref]Id.[/ref] In the course of her work, she has created a group of colored anthropomorphic characters she has named The Moodsters. Each Moodster represents a different emotion. Pink = Love, Yellow = Happiness, Blue = Sadness, Red = Anger, and Green = Fear.[ref]Id.[/ref] If this sounds familiar, you might be thinking of the Disney animated film Inside Out where color-coded animated characters represented the emotions Joy, Fear, Sadness, Disgust and Anger. Especially, as here, the Plaintiff not only pitched the idea to Disney, but alleges she spoke on the phone with Pete Doctor, the director of Inside Out.[ref]Id. at 2[/ref]
Yet what makes this case stand out is the Plaintiff in not claiming copyright infringement over the plot of the Moodsters, she is claiming copyright infringement over the characters themselves. This is likely because the set-up has been used several times before, notably in the TV sitcom Herman's Head,[ref]Herman's Head[/ref] and Disney's animatronic theme park attraction Cranium Command which ran from 1989 to 2007.[ref]Cranium Command[/ref] Thus, many similarities that would result are most likely attributable to the treatment of a common idea.[ref]Surprise! Creative Works with Similar Plot Ideas Tend to Have Similar Plots[/ref]
The District Court dismissed the suit and the Plaintiff appealed. The result is a detailed opinion from the 9th Circuit on the parameters of copyright in a character. The 9th Circuit writes:
"A character is entitled to copyright protection if (1) the character has ‘physical as well as conceptual qualities,' (2) the character is ‘sufficiently delineated to be recognizable as the same character whenever (citation omitted) it appears' and ‘display[s] consistent, identifiable character traits and attributes, and (3) the character is ‘especially distinctive' and contain[s] some unique elements of expression."[ref]2020 WL 1240915 at 2[/ref]
Disney concedes that the Moodsters meet part one of the test. The problem for the Plaintiff lies in the second part. This is because the look and feel of the Moodsters changed drastically between the time they were created in 2005 and then "re-imagined" between 2012 and 2013.[ref]Id.[/ref] This becomes more important because Disney had commenced production on Inside Out in 2010[ref]Id.[/ref] and would have been 2-3 years into the production process by the time Plaintiff made the changes. The Court writes:
"[T] the physical appearance of The Moodsters changed significantly over time. (citation omitted) In the 2005 Bible and 2007 television pilot, the five Moodsters have an insect-like appearance, with skinny bodies, long ears, and tall antennas that act as "emotional barometers" to form a distinctive shape and glow when an emotion is strongly felt. By the second generation of toys, The Moodsters look like small, loveable bears. They are round and cuddly, have small ears, and each dons a detective's hat and small cape. This physical transformation over time was not insubstantial, and it would be difficult to conclude that the 2005 Moodsters are the same characters as those sold at Target in 2015."[ref]Id. at 4[/ref]
The Court acknowledges that the physical appearance need not be static, but one must recognize the character once it makes the stage. While the appearance of Godzilla has varied over the years, it is consistently a "pre-historic, fire-breathing, gigantic dinosaur alive and well in the modern world."[ref]Id. at 3[/ref] And while six actors have portrayed James Bond, the character has consistent traits"his cold-bloodedness; his overt sexuality; his love of martinis ‘shaken, not stirred;' his marksmanship; his ‘license to kill' and use of guns; his physical strength; his sophistication."[ref]Id.[/ref]
Also, Plaintiff's cases rests in large part to characters who reflect color-coded emotions, an unprotectable idea that is merged into the expression. "[T]hese principles mean that [Plaintiff] cannot copyright the idea of colors or emotions, nor can she copyright the idea of using colors to represent emotions where these ideas are embodied in a character without sufficient delineation and distinctiveness."[ref]Id.[/ref]
Lastly, the Moodsters identifying traits changed. In the first iteration, the Moodsters reacted to the emotions. In the later iterations they were "mood detectives."[ref]Id. at 4[/ref] And across every iteration, the names of the individual Moodster changed with each iteration.[ref]Id.[/ref]
"While a change of name is not dispositive in our analysis, these changes across the three iterations further illustrate that [Plaintiff] never settled on a well-delineated set of characters beyond their representation of five human emotions."[ref]Id.[/ref]
This is the danger of marking your characters indistinctly. Case in point is the famous (though somewhat apocryphal) conversation between Steven Spielberg and George Lucas, in which Spielberg expresses a desire to direct a James Bond film, which gives Lucas the chance to bring up the character of Indiana Jones. While James Bond and Indiana Jones share many of the same qualities (adventuresome ladies man who is good with his fists), Lucas outfits Indy with numerous distinct features: the hat, the whip, he's afraid of snakes, which set him apart from Bond.
The Court does note that a character might be protected if it qualifies as the "story being told" e.g. a character study.[ref]Id. at 5[/ref] Clearly the Moodsters falls way short of that mark.
The more distinctly a character is marked, the more "quirks" the writer imbues the character with, the more copyrightable the character becomes, and the less it becomes merely a "chessman in the game of telling the story."[ref]Id.[/ref]
No Subjects
On March 16, 2020, the trial judge in the Katy Perry Dark Horse case surprised a lot of people by outright reversing the jury's finding of infringement and resulting award of damages.[ref]Gray v. Perry 2020 WL 1275221 District Court for the Central District of California[/ref] Many commentators felt the verdict was eroding the lines between what is slightly similar and what is substantially similar, creating (ahem) "blurred lines."
This blog wrote about the verdict previously.[ref]The Katy Perry "Dark Horse" Verdict: End of the World or Hands Caught in the Cookie Jar?[/ref] Back then I wrote:
"…[O]ut of the 16 notes in each phrase, only three notes are different harmonically, and the rhythm of the notes is exactly the same. And in the third bar, while the final note in [Joyful Noise] is a minor 3rd apart (A), and while in [Dark Horse] a minor 6th apart in (F), in harmony terms, this is not a big difference. The 3rd or the 6th notes of a major scale are very similar in their harmonic effect and are considered "tonic substitutes."[ref]Id.[/ref]
And summing up:
"The problem here is that the songs, when taken at their totality, are very different and not substantially similar. After all, [Joyful Noise] is a rap song, and [Dark Horse] is most certainly not a rap song.
Yet, countering that, is that the parts that are similar, are nearly identical. To a jury's ears, this could easily tip the balance, much more so than the similarities that occur in the "Blurred Lines" case."[ref]Id.[/ref]
In reversing the jury's verdict, the Judge says that none of that matters. The reason is that the Judge rules that the four bar ostinato of Joyful Noise does not contain protectable expression. So even if copied, it could not support a finding of infringement.
"[T]he Court now turns to whether the musical elements that comprise the 8-note ostinato in ‘Joyful Noise' are ‘numerous enough' and ‘arranged' in a sufficiently original manner to warrant copyright protection. (citation omitted) The Court concludes that they do not. Although Swirsky contemplates the possibility that an 8-note musical phrase may be entitled to copyright protection pursuant to Satava, the parties have not cited any authority (let alone binding authority) holding that an otherwise unprotected musical phrase, isolated from the rest of a musical composition, in fact warranted copyright protection."[ref]Gray v. Perry 2020 WL 1275221 at 10[/ref]
And this:
"It is undisputed in this case, even viewing the evidence in the light most favorable to plaintiffs, that the signature elements of the 8-note ostinato in ‘Joyful Noise'—the 3-3-3-3-2-2 pitch sequence, the resolution of that sequence with a 3-2-1-5 sequence, the even rhythm without syncopation, and its development across a sparse texture—is not a particularly unique or rare combination, even in its deployment as an ostinato:…"[ref]Id.[/ref]
"The other elements present in plaintiffs' 8-note ostinato also do not bring the combination within the ambit of the copyright law's protection. The placement of the ostinato within the composition's verses does not make it so exceptionally original as to warrant protection…That the ostinato is phrased in minor scale also does not make the combination sufficiently original given the limited number of scales that exist."[ref]Id. at 11[/ref]
But this is not really the test for copyrightable protection, is it? The test is not whether someone came up with the same thing previously. The test is whether the musical phrase is original to you. As stated by the Supreme Court:
"Original, as the term is used in copyright means only that the work was independently created by the author (as opposed to copied from other works) and that it possesses at least some minimal degree of creativity."[ref]Feist Publishing, Inc. v. Rural Telephone Service Co. 499 U.S. 340 (1991) at 345[/ref]
Nowhere in the Copyright Act does it say that a musical phrase must be "unique," "rare" or "exceptionally original."
So, if you're a composer, reading those words might not make you feel so rosy about this decision.
Let's take as an example, Usher's Yeah!, my personal selection for worst popular song ever written. It has no chords, just a mind-numbing eight note ostinato that runs through the entire song. Further, amongst these eight notes, there are only three pitches, G, D and E. To create this, according to the sheet music, required the participation of 10 composers.[ref]Yeah! by Usher - Digital Sheet Music[/ref]
In case you've never heard it, or forgotten how it goes, here it is:
https://youtu.be/GxBSyx85Kp8
So how does this fare under the Court's reasoning? The entire song rests on a bed of a ostinato of G-D,G-E…G-E,G-D, which runs for the entire song. Would the Court find that this ostinato sequence does not contain sufficient protectable expression, as it contains only three distinct pitches? Could it be copied out of the song by someone else and not be an infringement? It seems that this is the logical conclusion under this Court's line of thinking.
Or for those of us old enough to remember the Bossa Nova craze of the 1960's, you might remember a song called the One Note Samba composed by Antonio Carlos Jobim (English lyrics by Jon Hendricks) and performed by Stan Getz. True to its title, the first 30 notes of the song are all the same note, "F". The next 15 notes are also all the same note, "B flat", before returning to "F". For the first 16 bars, there are only two notes played, "F" and "B flat". Does this render the "One Note Samba" unprotectable? Perhaps not, as in order to maintain the interest of the listener, the note is played with a highly syncopated rhythm.
Perhaps the Court would have been better served to rule that the ostinato phrase in Joyful Noise was so simplistic as to make independent creation highly likely. For example, sing Three Blind Mice and you have one song. Sing the words "love…love…love" to those same three notes and you have The Beatles All You Need is Love. But the Court affirms both the jury's finding of access and rejection of the defense of independent creation. This then requires the Court to declare that there is no protection for the copied portion.
Thus, it seems that the ostinato in Joyful Noise passes the test set out by the SCOTUS in Feist. Injecting the requirements of "unique," "rare" or "exceptionally original," as this Court does, pushes the test of copyrightability into uncharted waters that are not favorable to the composers who might sail on them.
No Subjects
"What the state decides to do with its own website, charging $5 or something, is to run Rocky, Marvel, whatever, Spider-Man, and perhaps Groundhog Day, all right? Now, great idea. Several billion dollars flows into the treasury. Okay? Now, if [The State of North Carolina] win[s], why won't that happen?"
This was the question posed by Justice Stephen Breyer at oral argument on November 5, 2019, in the closely watched case of Allen v. Cooper.[ref]2020 WL 1325815, Supreme Court of the United States. Page references are to original.[/ref] And now, we'll find out the answer. Because on March 23, 2020 the Supreme Court, with no dissents, ruled that States had sovereign immunity from being sued for damages flowing from copyright infringement.
The reason for this ruling has very little to do with the Copyright Act itself, and much to do with Constitutional law and the rule of stare decisis, the legal principle that previous decided cases control later decided cases, and should not be overturned unless serious doubts exist as to the correctness of the decision.
The case revolves around video footage of the efforts to salvage the wreck of Blackbeard's famous pirate ship, Queen Anne's Revenge. The QAR sank off the coast of North Carolina in 1718, with Blackbeard and most of his crew escaping. The QAR lay on the sea floor for over 300 years before being discovered in 1996 by the salvage company Intersal. The State of North Carolina then entered into a salvage agreement with Intersal in 1998.[ref]Id. at 2[/ref]
In turn, Intersal contracts with underwater videographer Frederick Allen (the Plaintiff here) to take exclusive video of the salvage process. He spends 10 years documenting the salvage process. Allen registered 13 separate copyrights to his work.[ref]Id.[/ref]
In 2013, the State started to make use of the video material online. Allen objected and the parties reached a settlement agreement, wherein the State paid Allen $15,000, and the parties' respective rights to the footage was established.[ref]Id.[/ref]
This should have settled things, but of course did not. This is why the case ends up with a SCOTUS opinion in 2020.
The State of North Carolina resumed online use of the video. Allen objected and commenced sending DCMA takedown notices to the State
The State responds by passing the following law:
"All photographs, video recordings, or other documentary materials of a derelict vessel or shipwreck or its contents, relics, artifacts, or historic materials in the custody of any agency of North Carolina government or its subdivisions shall be a public record pursuant to Chapter 132 of the General Statutes."
In other words, the State of North Carolina is not only a pirate, but has attempted to legislatively put all of Allen's copyrights in the public domain. As it was once famously observed: "just because you're paranoid doesn't mean they're not out to get you."
Allen, of course, sued the State of North Carolina for copyright infringement. The State defends on the grounds that it has sovereign immunity under the 11th Amendment.[ref]Id. at 3[/ref]
Allen in turn, advances two arguments:
The first is that the Copyright Remedy Clarification Act of 1990 removes sovereign immunity for cases of copyright infringement. It states:
"Any State, any instrumentality of a State, and any officer or employee of a State or instrumentality of a State acting in his or her official capacity, shall not be immune, under the Eleventh Amendment of the Constitution of the United States or under any other doctrine of sovereign immunity, from suit in Federal court by any person, including any governmental or nongovernmental entity, for a violation of any of the exclusive rights of a copyright owner provided by sections 106 through 122, for importing copies of phonorecords in violation of section 602, or for any other violation under this title."
The problem with this, as the State is quick to point out, is that the SCOTUS has already ruled that Congress cannot use Article 1 of the Constitution to abrogate sovereign immunity. This case is Florida Prepaid Postsecondary Ed. Expense Bd. v. College Savings Bank.[ref]527 U.S. 627, 119 S.Ct. 2199, 144 L.Ed.2d 575 (1999)[/ref]
Allen's second argument is the CRCA could have been validly passed using Section 5 of the 14th Amendment which allows Congress to pass laws designed to prevent State actions that "abridge the privileges or immunities of citizens of the United States" or "deprive any person of life, liberty, or property, without due process of law. . . ."
Justice Kagan, the author of the court's main opinion, has this to say:
"All this raises the question: When does the Fourteenth Amendment care about copyright infringement? Sometimes, no doubt. Copyrights are a form of property. (citation omitted). And the Fourteenth Amendment bars the States from ‘depriv[ing]" a person of property "without due process of law.' But even if sometimes, by no means always. Under our precedent, a merely negligent act does not "deprive" a person of property. (citation omitted) So an infringement must be intentional, or at least reckless, to come within the reach of the Due Process Clause."[ref]2020 WL 1325815, at 7[/ref]
Then the heavy hand of Florida Prepaid returns to doom Allen's case. What evidence did Congress have of widespread copyright infringement before it passed the CRCA?
"Before enacting the CRCA, Congress asked the then-Register of Copyrights, Ralph Oman, to submit a report about the effects of the Eleventh Amendment on copyright enforcement. Oman and his staff conducted a year-long examination, which included a request for public comments eliciting letters from about 40 copyright holders and industry groups…[T]he concrete evidence of States infringing copyrights (even ignoring whether those acts violate due process) is scarcely more impressive than what the Florida Prepaid Court saw. Despite undertaking an exhaustive search, Oman came up with only a dozen possible examples of state infringement. He listed seven court cases brought against States (with another two dismissed on the merits) and five anecdotes taken from public comments (but not further corroborated). (citation omitted) In testifying about the report, Oman acknowledged that state infringement is "not widespread" and "the States are not going to get involved in wholesale violation of the copyright laws."[ref]Id. at 8[/ref]
Finally, the coup de grace:
"And it gets only worse. Neither the Oman Report nor any other part of the legislative record shows concern with whether the States' copyright infringements (however few and far between) violated the Due Process Clause. Of the 12 infringements listed in the report, only two appear intentional, as they must be to raise a constitutional issue…Florida Prepaid all but prewrote our decision today."[ref]Id. at 8-9[/ref]
While it is nice to see judicial restraint, and adherence to stare decisis, it suffices to say "that was then, and this is now." Twenty years later, the modern internet makes infringement as easy as the click of a button. What is to stop the State of North Carolina, or any State from becoming the new Pirate Bay, with the added benefit of sovereign immunity? Injunctive relief would be available, but only long after the pirate's booty has been realized.
None of the opinions, including concurring opinions, discuss the question posed by Justice Breyer at the top of this post. Breyer himself, in a concurring opinion, only obliquely alludes to this huge potential problem.
"States, in other words, have ‘a specific duty' not to infringe that ‘is assigned by law' and upon which ‘individual rights depend.' One might therefore expect that someone injured by a State's violation of that duty could ‘resort to the laws of his country for a remedy,' … especially where, as here, Congress has sought to provide one. Or more concretely, one might think that Walt Disney Pictures could sue a State (or anyone else) for hosting an unlicensed screening of the studio's 2003 blockbuster film, Pirates of the Caribbean (or any one of its many sequels).
Yet the Court holds otherwise. In its view, Congress' power under the Intellectual Property Clause cannot support a federal law providing that, when proven to have pirated intellectual property, States must pay for what they plundered. (citation omitted) To subject nonconsenting States to private suits for copyright or patent infringement, says the Court, Congress must endeavor to pass a more "tailored statute" than the one before us, relying not on the Intellectual Property Clause, but on § 5 of the Fourteenth Amendment.(citation omitted) Whether a future legislative effort along those lines will pass constitutional muster is anyone's guess. But faced with the risk of unfairness to authors and inventors alike, perhaps Congress will venture into this great constitutional unknown.
That our sovereign-immunity precedents can be said to call for so uncertain a voyage suggests that something is amiss. Indeed, we went astray in Seminole Tribe of Fla. v. Florida, (citation omitted) as I have consistently maintained. (citations omitted) We erred again in Florida Prepaid… by holding that Congress exceeded its § 5 powers when it passed a patent counterpart to the copyright statute at issue here. (citation omitted) But recognizing that my longstanding view has not carried the day, and that the Court's decision in Florida Prepaid controls this case, I concur in the judgment."
These concerns are not merely academic (pun not intended but unavoidable). This is precisely the issue being played out in Cambridge University Press v. Becker,[ref]2020 WL 998763[/ref] a/k/a the "Georgia State" case. Here, Georgia State University made their own electronic "course packs" of various books and allowed students to access them for free, despite the fact that in many cases there were electronic excerpts available from the publishers. This case, which has bounced around the court system since 2008, consuming millions of dollars in attorney fees, now appears to be headed for its third appellate hearing at the 11th Circuit.
So, will Congress listen to the entreaties of the SCOTUS, and fix this problem?
No Subjects