TAMU Copyright Infringement — No Liability

by Dennis Crouch

Canada Hockey LLC (Michael Bynum) v. Texas A&M University (Supreme Court 2022)

E. King Gill started the TAMU Aggie’s “12th Man” tradition back in 1921 by coming down from the stands back ready to step-in and play after a player injury.

Michael Bynum spent over 1,500 hours preparing a book on Gill.  The book included a short biography of Gill written by Whit Canning (under a work-made-for-hire agreement).  Bynum was seeking more materials from TAMU and sent a PDF draft version of the book to TAMU athletics publicity folks. The email and PDF included several statements indicating it was copyrighted and not for redistribution.

TAMU publicity liked the 1-page biography and so retyped it; changed the byline to “by Whit Canning, special to Texas A&M Athletics”; and sent it out electronically to 100,000+ folks (all without permission or notification).

Bynum sued for copyright infringement.  But, the action was stymied by the Supreme Court’s decision in Allen v. Cooper, 140 S. Ct. 994 (2020).  That case held that sovereign immunity protected states from copyright infringement liability despite direct Congressional statements otherwise.  In his new petition for certiorari, Bynum presents two end-runs around Allen:

  1. Actual Violation of the 14th Amendment.  Even if Congress did not have the power to entirely eliminate sovereign immunity for copyright infringement, a copyright holder still has an action if the infringement itself constitutes an actual violation of the 14th Amendment under United States v. Georgia, 546 U.S. 151 (2006).
  2. Taking. Although a state might not be liable under a copyright infringement theory, it may still be liable for a Fourteenth Amendment taking.

[Petition for Certiorari]

In rejecting the actual due-process violation claim, the 5th Circuit concluded that the plaintiff’s copyright claims were
“viable [as a] takings claim against TAMU for copyright infringement under the Texas Constitution.” Canada Hockey, L.L.C. v. Texas A&M U. Athletic Dept., 20-20503, 2022 WL 445172, at *8 (5th Cir. Feb. 14, 2022).  Since the state provided an adequate potential remedy, the 5th Circuit found no due process violation by the state of Texas. The court did recognize that the Texas Supreme Court recently rejected a copyright takings claim in Jim Olive Photography v. Univ. of Hous., ––– S.W.3d ––––, 2021 WL 2483766, at *9 (Tex. June 18, 2021).  But, the 5th circuit pointed to a concurring opinion that it is possible that – in some circumstances – the state might find copyrights to have been unduly taken.

Federal Takings Claim: Likewise, the 14th Amendment due process clause also makes the 5th amendment takings clause applicable to the states.  But, states retain sovereign immunity in this context if they provide an adequate remedy under state law.  Here, the 5th Circuit court found again that Texas takings law suffices and so no due process problem.

= = =

Background Law:

  • The Eleventh Amendment states that “The Judicial power of the United States shall not be construed to extend to any suit in law or equity, commenced or prosecuted against one of the United States by Citizens of another State, or by Citizens or Subjects of any Foreign State.”
  • The Copyright Remedy Clarification Act of 1990 (“CRCA”) indicates that individual states can be held liable for copyright infringement and “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 . . . for a violation of any of the exclusive rights of a copyright owner.”
  • In Allen v. Cooper, the Supreme Court held that congress lacked power to prophylactically abrogate sovereign immunity.
  • In United States v. Georgia, 546 U.S. 151 (2006), in the context of applying ADA to state prisons, the court held that Congress had power to apply the law to state prisons in situations where the conduct actually violates the 14th amendment on a claim-by-claim basis.  This is a distinct justification from the prophylactic approach discussed in Allen. The Allen court did not directly address the US v. Georgia arguments.

39 thoughts on “TAMU Copyright Infringement — No Liability

  1. 4

    oh, well, how original can a biography page be anyway ? If it is merely a listing of facts about a person’s life , it seems very little opportunity for unique expression in that. The Court apparently didn’t look at that, but had they could they have dismissed the biography page as being non-Copyright protectable, as in Feist re the phone books ? Comes to mind the specs on a chemical, say, propanol. A listing of the boiling point, m.w., auto-ignition temp., etc. Facts about a substance. Instantly, the football player of TAMU was the substance, and a listing of his life facts seems weak for copyright, absent more.

    1. 4.1

      You are aware that phone books carry some copyright protection, eh?

      (I do grant that as an agent, you may not in fact be aware of that)

      1. 4.1.1

        The context of my statements included Feist, (if you’re unfamiliar with that case I bet it is easy to find), and concerned a biography page, which is typically a mere listing of facts, any author of ordinary skill immediately recognizes a biography page does not lend itself to much creativity in expression as does the body of the literary work itself. Whether some phone books contain copyrighted material is wholly irrelevant. Are you upset at me for something ?

        1. 4.1.1.1

          No need to project any emotion my friend, I was picking up on your “ as in Feist re the phone books ?” comment, as you seemed not to carry the “phone books” angle through.

  2. 3

    “Despite this progress to achieve a more consistent examination under Section 101, there is more work to be done. Accordingly, we are revisiting our subject matter eligibility guidance.

    link to uspto.gov

    Get ready for the Vidal Test!

    1. 3.1

      The blog entry is titled “[p]roviding clear guidance on patent subject matter eligibility.” Now that is a laugh, or else a miracle of unprecedented proportion. “Clear guidance” on subject matter eligibility—how so? I expect that the PTO can provide guidance, but clear guidance seems rather a stretch.

      1. 3.1.1

        There’s at least one thing that’s getting clarified. This will clearly establish that every new director may twist the USPTO’s eligibility test according to their whims. Iancu opened the door to that possibility, but this guidance will settle the matter.

        1. 3.1.1.1

          Given Ben’s past recriminations against Iancu, my first thought was that this message was geared directly to changing what Iancu had wrought.

          Turns out not to be so.

          There is actually a sense of kudo’s to Iancu’s work (credit for “The guidance… produced a remarkable drop in the corps-wide eligibility rejection rate from about 25% in 2018 to about 8% today.”).

          Rather, this appears to reflect ongoing attempts and addresses two new and different factors:

          The Deployed DSMER pilot program (deferred, but only by Office Invite) and the outreach for public views on AI.

          As to DSMER, she shares that ONLY about 1/3 of those responding to 600 invites have elected the option. It appears that in five days the sending out of invites will sunset. Basically, this pilot is an abysmal failure.

          There did not appear to be any indication of possible directions from the AI inputs.

          But here, Ben is being Ben (and missing, as usual).

          1. 3.1.1.1.1

            Assuming it is true that Iancu’s 101 guidance for PTO examiners really “produced a remarkable drop in the corps-wide eligibility rejection rate from about 25% in 2018 to about 8% today.”: That certainly achieved the PTO self-interest goal of reducing PTO-work on an amorphous issue they are not well equipped to deal with anyway, and it got lots of patents issued faster. It might [maybe] even have improved some examinations by more examiner focusing on 103 issues? But it was made by effectively passing the 101 buck over to all those suing on such patents and all the U.S. companies sued on such patents, with a large increase in their patent litigation costs. And it was maintained in spite of express CAFC rejection of the validity of that guidance in subsequent such litigation.

            1. 3.1.1.1.1.1

              Iancu’s… remarkable drop in the corps-wide eligibility rejection rate from about 25% in 2018 to about 8% today… was made by effectively passing the 101 buck over to all those suing on such patents and all the U.S. companies sued on such patents, with a large increase in their patent litigation costs.

              Wait a minute. How do we know that Iancu’s guidance will produce a large increase in patent litigation costs? It will be a few years still before the data are in for that question. Meanwhile, there is no notable increase in lawsuits since Iancu’s guidance came online.

              1. 3.1.1.1.1.1.1

                “ It will be a few years still before the data are in for that question. ”

                Note for readers: Greg doesn’t care if the buck is being passed to those being sued (or threatened), which it obviously was (and is). Another friendly reminder : it’s not just lawsuits that raise costs.

                Iancu was a fraud and a liar.

                1. Greg doesn’t care if the buck is being passed…

                  Greg definitely does care about the buck being passed. Greg prefers, however, to base policy decisions on actual fact and not mere supposition.

                2. I really do wonder what the “clients you serve” would do if they realized how much you
                  H
                  A
                  T
                  E
                  patents, Malcolm.

                  That has got to be some SEVERE cognitive dissonance for you every time that you obtain a patent.

                  (if you ever do so, I suppose even counting nigh-worthless picture claim ones)

              2. 3.1.1.1.1.1.2

                Greg, that is statistically ignoring the many lawsuits that could not have even been brought to begin with if their very broad claims to end results had not been issued. Count the substantial number of patent suits ultimately decided on 101 issues. [Yes, we know most should theoretically have had better 103 or 112 exams anyway, but that is not what this potential PTO guidelines change is going to change, if anything.]

                1. Hypothesis 1) The rate limiting factor on how many patent suits get filed is the number of patents on which to bring suit.

                  Hypothesis 2) The rate limiting factor on how many patent suits get filed is the quantity of investor dollars available to finance patent suits.

                  To be sure, there is not an airtight separation between #1 and #2 above. Still and all, they are meaningfully distinct theses. In order for one to say with certainty that Iancu’s relaxation of examination standards for §101 necessarily raises litigation costs down the line, you need to eliminate #2 in favor of #1.

                  Are there data that enable us to eliminate #2 in favor of #1? Where would I find these data?

                2. Greg, there are more than the two factors contributing to the number of patent suits filed that you listed, and the total number of patents is not one. The larger factor, and the one in issue here, is the number of issued patents with claims issued broad enough to be read on major commercial products made, sold or imported into the U.S. Those are the ones that get litigation funding.

                3. [T]here are more than the two factors contributing to the number of patent suits filed that you listed…

                  To be sure. I was presenting a stylized model to simplify the discussion.

                  The larger factor… is the number of issued patents with claims issued broad enough to be read on major commercial products made, sold or imported into the U.S.

                  Where will I find the analysis that supports this conclusion about the rate limits on U.S. patent litigation spend?

                4. and the total number of patents is not one.

                  Oh really – you must have some swell data to prove that point, eh Paul?

                  Or did you really want to try to not be called out for such a farce?

                5. You can’t easily quantify factors like the reports of increasing amount of financial investments in PAEs for which data is not available, but, as note, one can count the number of patent suits decided on 101 issues.

                6. >The larger factor, and the one in issue here, is the number of issued patents with claims issued broad enough to be read on major commercial products made, sold or imported into the U.S.

                  The biggest driver of “litigation expense” is, by far, is legal uncertainty, and our judicial branch is clearly to blame there.

                  The “number of patents issued” creates slightly different problems e.g., the number of license a manufacturer will have to obtain, the possibility that those cumulative license fees will be too high, etc. While this later group of problems theoretically could be solved too, they are much, much harder than mere Section 101… so I don’t have much hope.

            2. 3.1.1.1.1.2

              Put the F N Pom Poms down with the, “ effectively passing the 101 buck over to all those suing on such patents and all the U.S. companies sued…

          2. 3.1.1.1.2

            >As to DSMER, she shares that ONLY about 1/3 of those responding to 600 invites have elected the option.

            I’m surprised it was that high. My take was that the program was pretty much all downside.

            1. 3.1.1.1.2.1

              Decent point OC, but it was probably that high based on some SERIOUS cherry-picking.

        2. 3.1.1.2

          This will clearly establish that every new director may twist the USPTO’s eligibility test according to their whims.

          In all fairness, the CAFC continues to churn out new eligibility precedents. It is not really reasonable to expect that the PTO’s training and guidance documents will remain frozen in amber even as the operative law continues to evolve.

          If the USPTO director with the tacit approval of the president were to declare that examiners are not to make rejections based on Mayo et al., what would happen?

          Good point. I do not see who would have standing to challenge such a policy, so it would last as long as political blowback failed to emerge. Of course, Google and Facebook both have pretty big megaphones, so a political blowback might emerge quickly. If not, though, the equilibrium of this grant-now-invalidate-later policy would be fairly stable.

          Seems like a good way to prompt congress to do something about 101.

          I do not know if you meant that as an optimistic thought, but I regard it as such. It would be nice to think that Congress could be prompted to address the issue.

          It is clear that Congress is interested in this subject (more than I would have expected). So far, however, there is no consensus reform that can garner enough support to get across the line in the face of opposition. Even in the face of a policy as you imagine above, I can imagine the lack of consensus leading Congress to ignore the issue.

          1. 3.1.1.2.1

            “It is not really reasonable to expect that the PTO’s training and guidance documents will remain frozen in amber even as the operative law continues to evolve.”

            Of course. But I don’t think fairness requires us to pretend that policy modifications publicly announced by the director on hot topics are just to conform with the law when the MPEP is routinely modified to conform with the law without director imprimatur.

            “I do not know if you meant that as an optimistic thought, but I regard it as such.”

            It didn’t seem especially optimistic to me. A rogue director could help congress overcome the static friction to doing anything about 101, and once they’re doing something a compromise could shakeout.

            1. 3.1.1.2.1.1

              when the MPEP is routinely modified to conform with the law without director imprimatur.

              I call B$ on this as the MPEP is routinely modified to NOT conform with the law.

              The MPEP is rife with plain errors of law – and one reason why it expressly states that it is NOT a body of controlling law.

          2. 3.1.1.2.2

            It is clear that Congress is interested in this subject (more than I would have expected).
            I think a better way of characterizing the situation is that Congress is gaslighting the IP community by pretending to be interested in the subject. They get the IP community to believe that some fix is forthcoming but in reality, they have no intention of changing anything.

            1. 3.1.1.2.2.1

              Thanks Wt – I mostly agree, but the cynical side of me tends to think that Congress will do just enough to gin up interest from the monied Voice$ that will then $peak to the Congressmen.

      2. 3.1.2

        If the USPTO director with the tacit approval of the president were to declare that examiners are not to make rejections based on Mayo et al., what would happen? Seems like a good way to prompt congress to do something about 101.

        Anyways, that would certainly be a “clear’ policy. At least in the short term.

        1. 3.1.2.1

          “ If the USPTO director with the tacit approval of the president were to declare that examiners are not to make rejections based on Mayo et al., what would happen?”

          A total pile of s—— application would be filed and there would be nationwide attention on the scumbags who post here and elsewhere crying about Mayo.

        2. 3.1.2.2

          declare that examiners are not to make rejections based on

          Someone who does not understand the role of the Executive Branch….

      3. 3.1.3

        I expect that the PTO can provide guidance, but clear guidance seems rather a stretch.
        I get where you are coming at, but I think you’ve worded it incorrectly.

        The USPTO is more than capable of provide clear guidance. Providing clear guidance is not particularly difficult — it merely requires the establishing of bright lines by which one can easily determine whether a claim is on one side of the bright line or the other side.

        For example, “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof” is a fairly bright line. The meaning of those terms have long been established, and it is relatively easy to determine whether one meets the plain language of 35 USC 101, and this determination was easily made by the USPTO for decades prior to Bilski/Mayo/Alice.

        The problem the USPTO has is not that they are incapable of providing clear guidance, it is that the Federal Circuit is incapable of providing clear guidance. As an exercise, I should create a list of terms contained within 101 jurisprudence that have been used by the Federal Circuit (and SCOTUS) but have no defined meanings. I suspect the list would number in the dozens. With so many undefined terms (and oftentimes inconsistent analysis), it is next to impossible to present clear guidance.

        If the USPTO (an agency tasked with implementing patent law and having more than 10,000 employees and probably hundreds of attorneys) cannot figure out how to interpret patent law and provide clear guidance about it, then who really can?

        The Federal Circuit only keeps making the mess bigger. SCOTUS has zero interest in providing clear guidance. Congress has abdicated its role in saying what the law is. The USPTO neither gets to make the law or interpret the law — they have little say in the matter despite the law impacting them the most. Looking to the USPTO for help is a lost cause. I can all but guarantee that whatever new guidance is provided by the USPTO will immediately get shot down by the Federal Circuit.

        Ultimately, this is what the anti-patent forces of the world want — a quagmire masquerading as a system for granting and enforcing patents.

        1. 3.1.3.1

          I get where you are coming at, but I think you’ve worded it incorrectly… The problem the USPTO has is not that they are incapable of providing clear guidance, it is that the Federal Circuit is incapable of providing clear guidance.

          Fair enough. We are definitely in substantive agreement here, and merely quibbling over phrasing.

          1. 3.1.3.1.1

            We are definitely in substantive agreement here, and merely quibbling over phrasing.

            I chuckle at Greg’s selective area of “substantive agreement.”

            Given that Greg’s Big Pharma mindset and past statements vis a vis support of the Trojan Horse of 112 “fix,” he is actually a part of Wt’s “Ultimately, this is what the anti-patent forces of the world want — a quagmire masquerading as a system for granting and enforcing patents.

        2. 3.1.3.2

          The USPTO neither gets to make the law or interpret the law

          Bingo.

          And as I have said before, Iancu attempted to help Examiners with viable “off-ramps” such that Examiners would not be trapped in the Gordian Knot that the Court(s) have created and exacerbated.

          And it should be pointed out (for the likes of Malcolm), that attempts to help Examiners existed prior to Iancu – and those attempts were ‘desecrated’ by the courts (a la Cleveland Clinic).

          1. 3.1.3.2.1

            And as I have said before, Iancu attempted to help Examiners with viable “off-ramps” such that Examiners would not be trapped in the Gordian Knot that the Court(s) have created and exacerbated.
            And Iancu did what he was supposed to do — find a way to help Examiners (who are non-attorneys for the most part) made sense of case law that is inherently nonsensical. The 2019 Patent Eligibility guidelines weren’t perfect because providing perfect guidelines from imperfect case law is impossible.

            1. 3.1.3.2.1.1

              Absolutely correct.

              Pay attention Ben.

  3. 2

    So….

    The takeaway is that Sovereign Immunity is a limited shield and that recompense under the Takings doctrine is the only avenue of legal remedy…

    Is that a fair summary?

  4. 1

    Notable that Ralph Oman is on the petition. That warrants a mention in the column.

Leave a Reply

Your email address will not be published. Required fields are marked *

You can click here to Subscribe without commenting

Add a picture