by Dennis Crouch

On October 12, 2022, the Supreme Court will hear oral arguments in the fair use copyright case of Andy Warhol Foundation, Inc. v. Goldsmith, Docket No. 21-869 (2022).  Roman Martinez (Latham Watkins) is set to argue for Warhol and Lisa Blatt (Williams Connolly) for Goldsmith.  The Court is also giving 15 minutes to Yaria Dubin (USDOJ) who also filed a brief supporting Goldsmith.

Andy Warhol admittedly used Lynn Goldmith’s copyrighted photographs of Prince as the basis for his set of sixteen silkscreens. Warhol’s Estate argues that the artworks represent a commentary on the dehumanizing nature of celebrity whereas the Goldsmith photos merely reflect Prince in his unique human form.

The Supreme Court has taken-up the case to consider the extent that the doctrine of transformative fair use should value “differences in meaning or message,” especially in cases where the works share core artistic elements and have the same purpose.

Question presented: Whether a work of art is “transformative” when it conveys a different meaning or message from its source material (as the Supreme Court, U.S. Court of Appeals for the 9th Circuit, and other courts of appeals have held), or whether a court is forbidden from considering the meaning of the accused work where it “recognizably deriv[es] from” its source material (as the U.S. Court of Appeals for the 2nd Circuit has held).

Although Andy Warhol is dead, his art, legacy, copyrights, and potential copy-wrongs live on.  In the 1980s, Warhol created a set of silkscreens of the musician Prince. Prince did not personally model for Warhol. Rather, Warhol worked from a set of studio photographs by famed celebrity photographer Lynn Goldsmith. Vanity Fair had commissioned Warhol to make an illustration for its 1984 article on Prince. As part of that process, the magazine obtained a license from Goldsmith, but only for the limited use as an “artists reference” for an image to be published in Vanity Fair magazine. The published article acknowledges Goldsmith.  One reason why the magazine knew to reach-out to Goldsmith was that her photos had also previously been used as magazine cover-art. Warhol took some liberties that went beyond the original license and created a set of sixteen Prince silkscreens. Those originals have been sold and reproduced in various forms and in ways that go well beyond the original license obtained by Vanity Fair.  (Warhol was never personally a party to the license).

Warhol claimed copyright over his artistic creations and his Estate continues to receive royalty revenue long after his death in 1987. Goldsmith argues that her copyrighted photographs serve as the underlying basis for Warhol’s art and that she is owed additional royalties. After unsuccessful negotiations, Warhol’s Estate sued for a declaratory judgment and initially won. In particular, the SDNY District Court granted summary judgment of no-infringement based upon the doctrine of transformative fair use. The district court particularly compared the works “side-by-side” and concluded that Warhol’s creation had a “different character, a new expression, and employs new aesthetics with [distinct] creative and communicative results.”  This test quoted comes from another famous a photo-transformation case, Patrick Cariou v. Richard Prince, 714 F. 3d 694 (2d Cir. 2013).

Richard Prince had modified Cariou’s photographs of a Jamaican Rastafarian community and exhibited his work as “appropriation art.”  The copier eventually won, with an appellate holding that the majority of Richard Prince’s works were clearly transformative in their newly presented “aesthetic.” In that case, the 2nd Circuit also held that the new work can still be a transformative fair use even if not a “satire or parody” of the original work, or even be commenting on the original work in any way. That said, uses of someone’s copyright work for a the purpose of parody, news reporting, comment, or criticism make it much more likely that the use will be deemed a fair use.

After losing at the district court, Goldsmith appealed to the Second Circuit who reversed and instead concluded that Warhol’s art was “substantially similar to the Goldsmith Photograph as a matter of law” and “all four [fair use] factors favor Goldsmith.”  The appellate court warned against too broadly reading its prior Cariou decision.

Warhol’s key legal precedent on point is Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994).  Campbell involved 2 Live Crew’s parody of the famous Roy Orbison song “Oh, Pretty Woman.”  The unanimous decision by Justice Kennedy delves into the first statutory fair use factor (“purpose and character of the use”) and distinguishes between (a) uses that simply replace or supersedes the original work and (b) those that are transformative of the original work. The more transformative a work, the more likely that it will be deemed a fair use and thus not infringing.  Campbell goes further and explains that transformativeness is not solely about new expression—it is also focused on whether the new work has “a further purpose or different character, altering the first with new expression, meaning, or message.”

Goldsmith argues that transformative meaning is only one element of a wide-ranging fair use analysis appropriately conducted by the Second Circuit.  As the Supreme Court recently explained in Google v. Oracle decision, the process is a “a holistic, context-sensitive inquiry” operating without any “bright line rules.”

The Copyright Act promises the original creator some amount of control over similar and follow-on works. In fact, the copyright owner is given exclusive rights to control preparation of any “derivative works based upon the copyrighted work.” For Warhol to rely entirely upon transformativness for his fair-use defense, the use must be so transformative as to leap beyond these derivative use rights.  Still, Warhol argues that the Second Circuit erred by refusing to give weight to the transformed “meaning or message” even if underlying elements of his artwork were similar to elements of the original photographs. As the Court wrote in Campbell, transformative uses “lie at the heart of the fair use doctrine’s guarantee of breathing space within the confines of copyright.” Warhol’s particular complaint with the Second Circuit is its apparent ruling that “a new work that indisputably conveys a distinct meaning or message” will still not be deemed transformative if its expression unduly retains “the essential elements of its source material.” Warhol argues that legal conclusion was recently rejected by the Supreme Court  in Google. Goldsmith responds that Warhol is misreading the Second Circuit’s decision – making a caricature of its holding.  Rather, Goldsmith argues, the Second Circuit properly weighed all the fair use factors. Further, although “message and meaning” is an aspect of fair use, it not found in the statutory nor intended by its creator (Judge Leval) to fully explain fair use.

Goldsmith also cites a list of historic cases where “conveying new meanings or messages did not save infringers.” One famous case is the Supreme Court’s 1884 decision in Burrow-Giles Lithographic Co. v. Sarony involving a photograph and lithograph copy of the famous playwright Oscar Wilde. Sarony was the first Supreme Court case confirming copyright protection in photographs. Goldsmith notes that the lithographer made a number of stylistic changes to Wilde’s appearance—shifting Wilde’s gaze from a “thousand-yard stare [of a] calculated ennui” to a “soulful gaze and brooding eyebrows [of a] dashing poet.” Despite these shifts, everyone seemed to agree that infringement was clear: “the lithograph was so obviously nontransformative the lithographer did not even try to raise fair use.” Goldsmith’s description of the images of Wilde has the reverb of a pedantic academic art critic—and one may suspect that tone was strategic in order to demonstrate the potentially ridiculous nature of the inquiry into the “message and meaning” of artistic works.

A large number of amicus briefs were filed in the case. The most important of these is likely the brief of the Solicitor General filed on behalf of the U.S. Government (Biden Administration).  The government brief focuses on transformative-use and notes that the Goldsmith and Warhol works have been used for the same purpose (republication in magazine articles about Prince) and do not involve a parody. In this same-use scenario, fair use is much less likely because the new work can be seen as little more than a replacement of the original. Regarding the meaning or message intended by Warhol, the government argues that Warhol failed to explain why he needed to reproduce Goldsmith’s work in order for that expression to take place. Thus, the government is attempting to cabin-in the transformative meaning doctrines to areas where the copying is further justified by reasoning or evidence.

The case’s impact on appropriation art and documentary filmmaking is easy to see, but there are other areas that may also see some big shifts depending upon the Supreme Court’s outcome. Although Warhol used pre-computer technology for his screen printing, the case has important implications for online copyright protections in a world of digital cut-and-paste and fingertip access to AI tools to transform digital works. You may have even seen apps that automatically transform photos into a Warhol-style work. A simple and broad holding from the Supreme Court supporting fair use would give substantial space allow these creative activities (and app development) to expand. But, that would be to the detriment of original creators seeking to protect their copyrights. A win for Goldsmith may require a re-tooling of these apps in order to fit within the stricter fair use requirements.

In his amicus brief, Berkeley Professor Peter Menell argues for Goldsmith, writing that “the Prince series consists of unauthorized derivative works prepared for a commercial purpose and without substantial transformative qualities.” Although Warhol’s work has become iconic within our culture, classifying the work as a “derivative work” creates the quirky conundrum that Warhol’s estate holds no copyright at all. This ruling then might extend to other areas—such as museum exhibits (since Goldsmith would then own the right to public display). I will note that Warhol already paid licensing fees to the owner of the underlying work in a number of situations, including for his use of Henri Dauman’s photo of Jacqueline Kennedy that had appeared in LIFE magazine.

This is not exactly a free speech case, but “meaning and message” certainly seem like forms of protected speech. In earlier cases, the Supreme Court ruled that fair use is a stand-in for First Amendment protections in the copyright world. We have seen copyright used in ways akin to SLAPP actions as well as by artists who do not want their work used to support unworthy causes (such as by politicians they oppose). The outcome here will shift those activities, either in favor of control by the original copyright holder, or more liberty to the potential (unwanted) user.

by Dennis Crouch

The pending Supreme Court petition in ML Genius v. Google focuses on an important issue of copyright preemption.

The basic setup: Genius.com has lots of song lyrics, most of which were  posted by fans (i.e., “crowdsourced”). LyricFind scraped the data and then sold it to Google.  With the data in hand, Google now displays the lyrics in the search results rather than directing traffic to Genius.  Genius sued.

Contract not Copyright: Genius does not hold the copyright to the lyrics and so has no copyright infringement claim.  But, Genius does require its users to agree to an extensive contractual agreement that includes a promise that the user will not commercially reproduce, copy, or distribute any portion of the Genius service.  At some point, Genius began to suspect that Google was using the lyrics from its service and set-up some test cases that proved their suspicion.

After some back-and-forth, Genius eventually sued Google in New York state court, alleging that

Google LLC and LyricFind have been caught red-handed misappropriating content from Genius’s website, which they have exploited–and continue to exploit–for their own financial benefit and to Genius’s financial detriment.

Original NY Complaint.  The complaint asserts breach of contract based upon violation of its terms of service; unfair competition (based upon state law); and unjust enrichment.   Google removed the case to Federal Court and then sought dismissal of the case–arguing that all claims asserted in the case are preempted by Section 301(a) of the Copyright Act.

(a) … all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright as specified by sections 102 and 103 … are governed exclusively by this title. Thereafter, no person is entitled to any such right or equivalent right in any such work under the common law or statutes of any State.

17 U.S.C. § 301(a).  The district court found the claims preempted. Genius Media Group Inc. v. Google LLC, 19-CV-7279 (E.D.N.Y. Aug. 10, 2020). On appeal, Genius focused only on the contract claim, but the Second Circuit still affirmed–holding that the copyright act preempts state law contract claims. ML Genius Holdings LLC v. Google LLC, 20-3113, — F.4th — (2d Cir. Mar. 10, 2022).  Now Genius has brought its case to the US Supreme Court with the following question:

Does the Copyright Act’s preemption clause allow a business to invoke traditional state-law contract remedies to enforce a promise not to copy and use its content?

Petition for Cert.

The case ties in directly to lots of academic work on the topic.  Judge Easterbrook’s 1996 decision in ProCD v. Zeidenberg, 86 F.3d 1447 (7th Cir. 1996) was a flashpoint with its holding that contractual restrictions on the use of information was not  so preempted.  The ProCD approach has been adopted by a number of circuits, but not the Second Circuit.  Prior to its decision in this case, the Second Circuit appears to have not stated any clear precedent on the topic:

Considering the prominence of the S.D.N.Y. and how often and yet inconsistently it has ruled on the issue, it is truly remarkable that the Second Circuit has not yet delivered a binding precedent on this issue.

Guy A. Rub, Copyright Survives: Rethinking the Copyright-Contract Conflict, 103 Va. L. Rev. 1141, 1181 (2017).

The Genius brief was filed by Joshua Rosenkranz (Orrick) along with Christopher Cariello, Jennifer Keighley, Lauren Weber, and Emily Villano.  Briefs from Google and LyricFind are due September 8, 2022.

Guest post by Peter S. Menell, Koret Professor of Law; Director, Berkeley Center for Law & Technology; Faculty Director, Berkeley Judicial Institute; University of California at Berkeley School of Law, and Ella Corren, University of California at Berkeley School of Law, J.S.D. Candidate

In Design Patent Law’s Identity Crisis, presented at the Berkeley Center for Law & Technology’s February 2021 “Design Patents” symposium, we traced the origins of design patent law’s ornamentality/non-functionality doctrine and showed how the Federal Circuit, the nation’s de facto design patent emperor over the past four decades, has turned the doctrine on its head: it has upended the 1902 Act’s intent and reversed three-quarters of a century of regional circuit jurisprudence. So much so that the post-1902 Act regional circuit design patent cases invalidating design patents on functionality grounds would come out oppositely under the Federal Circuit’s lax standards. Those standards led to the absurd result that Apple could disgorge Samsung’s profits on its smartphones because they employed rounded rectangular shapes. We showed that the Patent Act limited design protection to original, ornamental articles of manufacture, and excluded protection for functionality.

BCLT invited practitioners and academics to comment on our analysis. While none of the commentators questioned, no less refuted, our core finding that the Federal Circuit has flipped the ornamentality/non-functionality doctrine, several offered fig leaves to clothe the Federal Circuit’s lax standards for design patent eligibility and infringement. In responding to our article, practitioner Perry Saidman and Professor Mark McKenna suggested that the design patent regime can be justified in part based on the tighter functionality screen that the PTO applies to design patents than the low threshold that the Copyright Office applies to copyright registrations to useful articles.

We found the suggestion that the PTO is more rigorous than the Copyright Office in applying the functionality screen intriguing and decided to test it out: Does the PTO or the Copyright Office apply a more rubbery stamp?. This commentary presents some of our findings.

Before turning to some illustrations, we note that the Compendium of U.S. Copyright Practices, in contrast to the Manual of Patent Examining Procedure, implements limiting doctrines in relatively clear and concise terms. As regards originality, the Compendium states that copyright law does not protect “words and short phrases,” “familiar symbols and designs,” “mere variations of coloring,” spatial format and layout design, blank forms, and common geometric shapes, either in two-dimensional or three-dimensional form.” The Patent Office applies no such limitations, notwithstanding that the design patent statute specifically requires that articles of manufacture be original to obtain design patent protection.

Turning to our findings, we begin with Universal Robots’ “UR5” robot arm. In 2015, it sought copyright registration of this useful article as a sculptural work.

The Copyright Office refused registration on the ground that UR5 “is a ‘useful article’ which does not contain any separable authorship.” Universal Robots appealed the decision to the Copyright Office, arguing that the UR5 contains conceptually separable artistic elements that are not necessary to its performance of its utilitarian function, namely its “raised circular caps containing the stylized ‘UR’ design,” and the ‘“T’ shaped, modular interlocking wrist.” The Copyright Office affirmed its rejection, explaining that the UR5 “does not contain any separable, copyrightable features” because “the caps and wrist of the arm are both integrated parts of the ‘overall shape’ of the arm.” In September 2016, Universal Robots filed a second appeal for reconsideration, in which it contended that since the blue caps are “capable of being physically removed from the robotic arm without altering the useful aspects of the article,” and “are not necessary to the utilitarian functioning of the device,” they are “conceptually separable, artistic and protectable.” Universal Robots also asserted that the T-shaped piece was “designed to achieve a sleek, modem and aesthetically pleasing appearance,” is “not necessary to the utilitarian function of the article,” and could have been designed in many other ways, rendering this part protectable as well. Universal Robots claimed that these elements of the Work “embody more than the mere ‘modicum’ of creativity that is required for copyright registration,” highlighting that the designers are Danish and inspired by the Danish Modem movement.

In rejecting the second appeal, the Copyright Office concluded “that the elements Universal Robots identifies as expressive—namely the plastic caps and the T-shaped piece—could be visualized as works of authorship separate and independent from the Work’s utility.” And that “[e]ven if those features could be deemed separable, however, they simply are not sufficiently original to warrant copyright protection.”

Universal Robots then filed a design application for the UR5 in January 2020. See U.S. Design Patent No. D915,487 (Apr. 6, 2021). The Patent Office granted the design patent in April 2021.

Robotic arms with similar functional configuration have long been the subject of utility patents. See, e.g., U.S. Patent No. 4,273,506 (Jun. 16, 1981) (“Industrial Manipulator for Placing Articles in Close Proximity to Adjacent Articles”).

This pattern of copyright registration refusal/design patent grant is a common occurrence. In another poignant example, the Copyright Office declined registration for the Purple® pillow, concluding that the overall shape of the pillow—featuring an interior grid of hollow triangles—is unprotectable and not capable of conceptual separation from the useful article. The Copyright Office explained that the triangles have an “intrinsic utilitarian function” and thus are useful articles themselves,” noting that Purple’s marketing materials make “clear that these triangles are wholly utilitarian,” including that the Work’s “hundreds of little triangles . . . give the core of the pillow lateral strength so it retains its oh-so supportive, head-cradling comfort all night” and emphasizing the word ‘SCIENCE!’ in all capital letters; and “[e]ven if the grid of triangular prisms was not functional, however, it would not be a basis for copyrightability. The Copyright Office’s refusal to register quoted the Compendium of U.S. Copyright Practices: ‘The Copyright Act does not protect common geometric shapes’ including triangular prisms.”

Nonetheless, the design patent application for the Purple Pillow sailed through the Patent Office. See U.S. Design Patent 909,790 (Feb. 9. 2021) (“Pillow”).

The design patentee continues to emphasize the ergonomic advantages of its pillow design: “Unique to the Purple Harmony Pillow, the Deluxe Hex Grid is specially formulated and engineered for head and neck support. The soft hexagon-shaped air channels optimize the dynamic response and airflow for unbelievable comfort.”).

We explore these and other examples in The Design Patent Emperor Wears No Clothes: Responding to Advocates of Design Patent Protection for Functionality.

These minimalist designs raise serious functionality and originality concerns. They demonstrate the rubber stamp quality of the Patent Office and that the design patent system as currently administered results in significant overprotection of functional features and designs. And even though design patents have “only” 15 years of duration, that length of time can be an eternity in some design markets and substantially diminish competition. The utility patent supremacy/channeling principle is about preserving competition in exactly the same way as trademark’s functionality doctrine—the channeling of functionality protection exclusively to utility patents is meant to subject all other, not sufficiently innovative, functional features to unimpeded market competition.

by Dennis Crouch

The next big software copyright case is before the Federal Circuit in the form of SAS Institute, Inc. v. World Programming Limited, Docket No. 21-1542.  The litigation has substantial parallels to Google v. Oracle, but might end up with a different outcome. In Google, the Supreme Court found fair-use but did not decide the issue of copyrightability. That issue is front-and-center in this case.

WPL is a UK based software company who obtained several copies of SAS statistical software and made a clone version. SAS sued in E.D.Tex for both copyright infringement and patent infringement.  The district court dismissed the copyright claims — holding that the software was unprotectable.

Plaintiff SAS showed that it holds a registered copyright, amply argued that its asserted works are creative, and presented repeated evidence of factual copying. … Defendant WPL then came forward with evidence showing that material within the copyrighted work was unprotectable. … SAS thereafter failed to show any remaining protectability, either by affirmatively showing some elements of the work to be protectable or by combatting Defendant’s showing of unprotectability.

Dismissal Memorandum.  SAS also stopped pursuing the patent allegations and they were dismissed with prejudice. Their inclusion in the case appears to have been enough to give the Federal Circuit jurisdiction rather than the Fifth Circuit, even though only copyright issues are on appeal.  I’ll note that a parallel copyright claim was rejected by the U.K. courts who determined that WPS had “reproduced only aspects of the program that are not protected by U.K. copyright law.”  Separately, SAS also previously litigated this copyright case in North Carolina federal court.  That court also granted summary judgment to the accused infringer on the copyright claim.  However, 4th Circuit vacated the copyright holding as moot and that claim was dismissed without prejudice.  Thus, as WPL writes in its brief: “This is the third time SAS Institute Inc. (“SASII”) has sued World Programming Limited (“WPL”) for copyright infringement. It is also the third time courts have rejected SASII’s copyright claims.”

SAS is hoping to change that outcome and has taken its appeal to the Federal Circuit with Dale Cendali (Kirkland & Ellis) leading the charge.  We shall see, but the Federal Circuit is likely one of the most pro-copyright courts in the country.  SAS’s primary arguments on appeal:

1. Copyrightability: The SAS Material should be deemed copyrightable as a matter of law because (1) of the plethora of creative choices; and (2) even if individual elements in formatting and design are unprotectable, the overall selection and arrangement is protectable.
2. Filtration Analysis Procedure: It is the defendant’s burden to show what aspects of a copyrighted work are not protectable; the district court flipped that around by requiring the plaintiff to show what is protectable.
3. Filtration Analysis Procedure: The district court appears to have held a bench trial on this issue, but called it a “copyrightability hearing.” Normally this is an issue for a jury (although the copyright holder does not raise a 7th Amendment challenge).
4. Filtration Analysis Procedure: The district court excluded SAS’s fact and expert witnesses in an improper manner.

WPL’s responsive brief was recently filed by Jeffrey Lamken (MoloLamken). The appellee restates the key copyrightability issue as follows: “Whether copyrights over a computer program protect (a) the functionality of executing programs written by users in a free-to-use computer language or (b) outputs dictated by user-written programs.”

A number of amicus briefs have already been filed in the case supporting the copyright holder.  The the deadline for briefs in support of WPL has not yet passed.

• Brief of Ralph Oman (former Register of Copyrights): Computer programs are literary works entitled to full copyright protection. Once registered, the copyrights are entitled to a presumption of validity.
• Author’s Guild (et al): Upsetting the burdens undermines copyright.  Although this is a software case, it has major spillover potential in other areas such as photography, writing, and music.
• Copyright Alliance: Software is protectable by copyright.
• Mathworks and Oracle: The court “flubbed its application of an otherwise sensible burden shifting approach.”

My favorite part of the appellee brief is that the redaction was done in MadLib format: 

Briefs filed so far:

• AppellantBrief
• AppelleeBrief
• OmanBrief – Supporting SAS
• AuthorsGuildBrief – Supporting SAS
• MathworksOracleBrief – Supporting SAS
• CopyrightAllianceBrief – Supporting SAS

by Dennis Crouch

The Supreme Court has granted certiorari in the procedural copyright case of Unicolors, Inc. v. H&M Hennes & Mauritz. Anyone who has registered copyrights know that the Copyright Office has a set of seemingly arcane and odd rules that often arise when registering a collection or series of works.  A copyright owner that fits within the rules can save quite a bit on copyright office fees. In this case, the copyright owner seemingly lied to get a lower fee. In particular, during January 2011 Unicolors created 31 different fabric designs.  It published 22 of those together as a collection, but the other 9 were not published by Unicolors.  It then submitted all 31 to the copyright office and indicated that they had all been first published as a bundle.  This saved them a few hundred dollars in governmental fees.  Although I do not know, I believe that many copyright holders have taken similar steps.

Later Unicolors sued H&M for copyright infringement and H&M was found liable.  H&M had unsuccessfully asked the district court to invalidate the copyright registration based upon inaccuracies in the registration. On appeal, the Ninth Circuit reversed — ordering the district court to refer the case to the Copyright Office under 17 U.S.C. § 411(b).  Section 411(b) begins with a statement that a copyright registration is generally valid as a precursor to enforcement except where the registrant knowingly included “inaccurate information” that “would have caused the Register of Copyrights to refuse the registration.”  A district court faced with this situation is instructed by the code to refer the case to the Copyright Office for advice.

In any case in which inaccurate information … is alleged, the court shall request the Register of Copyrights to advise the court whether the inaccurate information, if known, would have caused the Register of Copyrights to refuse registration.

17 U.S.C. § 411(b)(2).

But, as noted above, what have here is a relatively minor, but still knowing inaccuracy in the registration.  And the question for the Supreme Court is basically whether the statutory statement requiring referral “in any case in which inaccurate information” is submitted to the copyright office include some implicit materiality standard? Here is roughly the question presented:

Whether 17 U.S.C. § 411 requires referral to the Copyright Office where there is no indicia of fraud or material error as to the work at issue in the subject copyright registration?

[Petition, Granted as to Question 1 only].

Willowood, LLC v. Syngenta Crop Protection, LLC, Docket No. 19-1147 (Supreme Court 2020)

Syngenta sued Willowood for both patent and copyright infringement associated with its generic fungicide compound.  Willowood won at the district court, but that holding was overturned on appeal. Now Willowood is bringing it to the Supreme Court.

The copyright claim: Syngenta product “labels” have many pages of small-type that were registered with the US Copyright office.  Willowood apparently copied the labels for its competing generic product.  Because the fungicides are dangerous chemicals, these labels are required in order to sell the product.

The district court dismissed the copyright claims — holding that the Federal Insecticide, Fungicide, and Rodenticide Act (“FIFRA”) precludes the copyright claim because FIFRA requires a generic product to use “identical or substantially similar” labels that are typically mandated by EPA regulations.  On appeal, the Federal Circuit vacated — holding that statute does not allow thoughtless copying since “the text of FIFRA does not, on its face, require a me-too registrant to copy the label of a registered product.”  Rather, according to the court, the court must look at each copyrightable element of Syngenta’s label and consider whether that portion is “necessary” for the generic approval process.

In its petition for certiorari, Willowood asks for a blanket rule:

Whether, by requiring the EPA to grant expedited review and approval of labels for generic pesticides that are “identical or substantially similar” to the previously approved labels for the same product, Congress intended to preclude claims of copyright infringement with respect to generic pesticide labels.

Question presented in Petition for Certiorari.  This portion of the case could be a nice companion case to Google v. Oracle if certiorari is granted there.

The product label was apparently substantially copied, but without the TM, patent claims, or Syngenta name.

The Patent Claims: A portion of the infringement case turned on the court’s interpretation of 35 U.S.C. 271(g).

(g) Whoever without authority imports into the United States … a product which is made by a process patented in the United States shall be liable as an infringer, if the importation, offer to sell, sale, or use of the product occurs during the term of such process patent.

The district court ruled found no infringement because the product was purchased from a separate entity and that the single-infringer-rule requires “every step of a claimed process to be performed or attributable to a single entity.”

On appeal, the Federal Circuit also rejected this statement of the law — holding that importation is the act of infringement under 271(g) (or sale/offer).  The statute does not require that the accused infringer be the one performed the method.

This [statutory] language makes clear that the acts that give rise to liability under § 271(g) are the importation, offer for sale, sale, or use within this country of a product that was made by a process patented in the United States. Nothing in this statutory language suggests that liability arises from practicing the patented process abroad. Rather, the focus is only on acts with respect to products resulting from the patented process. Thus, because the statutory language as a whole is clear that practicing a patented process abroad cannot create liability under § 271(g), whether that process is practiced by a single entity is immaterial to the infringement analysis under that section.

Syngenta Crop Protec., LLC v. Willowood, LLC, 944 F.3d 1344, 1359–60 (Fed. Cir. 2019). In its petitition, Willowood asks that the Supreme Court step-in here as well:

Whether liability for patent infringement under 35 U.S.C. § 271(g) requires that all steps of a patented process must be practiced by, or at least attributable to, a single entity, a requirement that the Supreme Court previously recognized is a prerequisite for infringement under 35 U.S.C. §§ 271(a) and (b) in Limelight Networks Inc. v. Akamai Technologies Inc.

Petition.

by Dennis Crouch

Georgia v. Public.Resource.Org, Inc. (Supreme Court 2020)

The State of Georgia claims copyright to its Annotated Official Code (Official Code of Georgia Annotated (OCGA)).  The (e)book includes every Georgia statute and a set of annotations (including summaries of cases and articles discussing the statutes).  The OCGA is created by a state entity – the Code Revision Commission – directed by the state legislature.  LexisNexis actually did the work of writing the annotations, but copyright (if any) originated with Georgia as a work-made-for-hire.

Public.Resource.Org (PRO) is a nonprofit organization facilitates public access to government records. PRO copied the OCGA and began freely distributing it to the public. Georgia then sued for copyright infringement.

After some amount of litigation, Georgia eventually stopped arguing that the statutes themselves were protectable by copyright.  However, the state continued to argue that the annotations were copyrightable since they did not carry the force of law.

The Supreme Court has now sided with PRO and against the state – holding that the government edicts doctrine prohibit copyright on the annotations.

Over a century ago, we recognized a limitation on copyright protection for certain government work product, rooted in the Copyright Act’s “authorship” requirement. Under what has been dubbed the government edicts doctrine, officials empowered to speak with the force of law cannot be the authors of—and therefore cannot copyright—the works they create in the course of their official duties. . . .

[This doctrine] applies to non-binding, explanatory legal materials created by a legislative body vested with the authority to make law. Because Georgia’s annotations are authored by an arm of the legislature in the course of its legislative duties, the government edicts doctrine puts them outside the reach of copyright protection.

Slip Op.  Chief Justice Roberts penned the majority opinion that was joined by Justices Sotomayor, Kagan, Gorsuch, and Kavanaugh.  Two dissenting opinions: Justice Thomas (with Justice Alito, and Justice Breyer except FN6); and Justice Ginsburg (with Justice Breyer).  The split here does not fall along typical liberal-conservative grounds, but does suggest a generational shift — with the five youngest in the majority, and the four eldest siding with the State. (All of the justices are well over the median age of US citizens).

The majority opens with  a controversial statement linking copyright with monopoly: “The Copyright Act grants potent, decades-long monopoly protection for ‘original works of authorship.'”  Often, as here, courts refer to patents & copyrights as “monopolies” when they are ready to invalidate or weaken the rights granted. See also,  Sony Corp. of America v. Universal City Studios, Inc., 464 U. S. 417 (1984).

The majority opinion also disparages fair use as insufficient:

If Georgia were correct, then unless a State took the affirmative step of transferring its copyrights to the public domain, all of its judges’ and legislators’ non-binding legal works would be copyrighted. And citizens, attorneys, nonprofits, and private research companies would have to cease all copying, distribution, and display of those works or risk severe and potentially criminal penalties. §§501–506. Some affected parties might be willing to roll the dice with a potential fair use defense. But that defense, designed to accommodate First Amendment concerns, is notoriously fact sensitive and often cannot be resolved without a trial. Cf. Harper & Row, Publishers, Inc. v. Nation Enterprises, 471 U. S. 539, 552, 560–561 (1985). The less bold among us would have to think twice before using official legal works that illuminate the law we are all presumed to know and understand.

Id. According to its new reinvigoration, the government edicts doctrine does have some clear limits — it only applies to works created by those with “authority to make or interpret the law.”

In this case, the folks at Westlaw make their own annotated version that is likely protected by copyright (assuming originality).  As part of his dissent, Justice Thomas notes that Official Code (by LexisNexis) sells for $404 while WestLaw’s version is $2,570.  LexisNexis agreed to sell at its “low” price as part of the deal with the state, and the state argued that copyright is instrumental in facilitating creation of high-quality annotations.  Otherwise, it just won’t happen. Siri, follow up in two years to see whether this prediction turns out to be true.

Upcoming big issues on this front include the various building codes that are typically created by non governmental entities, but then adopted by various municipal governments.

By Dennis Crouch

This case is welcome news to state-employed teachers infringing copyrights like crazy as they post materials online. 

Allen v. Cooper (Supreme Court 2020)

Justice Kagan offered the US Supreme Court’s opinion siding with the State of North Carolina (Cooper) in a Copyright federalism question — holding that US Congress does not have the authority to abrogate State immunity from copyright infringement lawsuits.

The 11th Amendment (1795) provides that:

In this case, copyright holder Rick Allen sued the State of North Carolina (Cooper is the Governor) for copyright infringement in Federal Court after the state willfully and deliberately copied his works.   The videos and photos at issue here are ones that Allen captured as part of the recovery and exploration of the Pirate Blackbeard’s downed ship Queen Anne’s Revenge.  The state used his materials for various educational purposes and Allen sued.

At first glance, the text of the 11th Amendment appears to make this an open-and-shut case — US courts have no judicial power over a State in this situation.  Note here though that Allen is actually a citizen of North Carolina and so the law doesn’t directly apply because he is not fit the set of “Citizens of another State.”

The 11th Amendment is the touchstone of state sovereign immunity because it expressly remarks upon the issue. However, in several decisions over the centuries, the Supreme Court has noted that the 11th Amendment is not the limit or the whole. See, Hans v. Louisiana, 134 U.S. 1 (1890) and Alden v. Maine, 527 U.S. 706 (1999) as examples.  In Alden, the Supreme Court explained that nothing in the rest of the U.S. Constitution generally empowers Congress to subject the States to private lawsuits in Federal Court.  Alden though was a 5-4 decision not cited here in Allen v. Cooper.  That fact, along with Justice Kagan as author reflect that the unanimous decision here is a compromise judgment.

The intellectual property clause is also found in the Constitution — giving Congress power “To promote the progress of science and useful arts” by granting “exclusive rights” to authors and inventors.  U.S. Const. Art. I, Sec. 8, Cl. 8 (1789).  It is not clear from the text whether this clause creates an exception to the states-not-being-sued principle.  To make it clear, in 1990 Congress passed the Copyright Remedy Clarification Act (CRCA) that expressly removed States sovereign immunity in copyright infringement cases.   Subsequently, in 1999 the Supreme Court decided a parallel case involving a parallel Remedy Clarification Act for patents. Florida Prepaid Postsecondary Education Expense Board v. College Savings Bank, 527 U.S. 627 (1999). In Florida Prepaid, a 5-4 majority held that nothing in Article I (including the IP Clause) allowed Congress to abrogate state sovereign immunity.  The Court did explain that the 14th Amendment provides the mechanism for abrogating state sovereign immunity with the statement:

The Congress shall have power to enforce, by appropriate legislation, the provisions of this article.

14th Amendment, Section 5 (1868).  The 14th Amendment explains that no State may “deprive any person of life, liberty, or property, without due process of law; nor deny to any person within its jurisdiction the equal protection of the laws.” 14th Amendment, Section 1.   Here, Allen contends that his Copyright is a Property Right enabled and promoted by the US Constitution and Congress. And, that it is a violation of the 14th amendment to deprive Allen of his property rights without due process.

In reviewing the claim, the Supreme Court extended the patent discussion in Florida Prepaid to cover copyright as well — holding that Article I does not grant Congress power to limit state sovereign immunity.  In the process, the court distinguished Central Va. Community College v. Katz, 546 U. S. 356 (2006), limiting  that case to the “unique history of the Bankruptcy Clause.”  In interpreting the 14th Amendment, the Supreme Court repeated prior holdings that – in most instances – Congress must “identify a pattern of unconstitutional” activity by the states sufficient to require abrogation of sovereign immunity.  Here, the “thin evidence” of widespread state infringement was insufficient to open the door to 14th Amendment protections.

The court offers a bone to Congress — explaining that the Supreme Court’s approach to State sovereign immunity has changed since CRCA passed.  Since the decision the court had not yet explained its test, “Congress likely did not appreciate the importance of linking the scope of its abrogation to the redress or prevention of unconstitutional injuries—and of creating a legislative record to back up that connection.”  The court then notes that in the future Congress can likely create a “tailored statute” to “stop States from behaving as copyright pirates. Even while respecting constitutional limits, it can bring digital Blackbeards to justice.”

In the end, the majority opinion explained

Florida Prepaid all but prewrote our decision today. That precedent made clear that Article I’s Intellectual Property Clause could not provide the basis for an abrogation of sovereign immunity. And it held that Section 5 of the Fourteenth Amendment could not support an abrogation on a legislative record like the one here. For both those reasons, we affirm the judgment below.

Id.

The decision includes two additional opinions, both concurring in the judgment — agreeing that sovereign immunity protects the State in this case.

In his concurring opinion, Justice Thomas offers “two disagreements and one question open for resolution in a future case.”

• Stare decisis: The court does not need “special justification” to overrule precedent.  Rather the Court is obligated to correct prior errors.
• Opinion on Future Legislation: Justice Thomas argued that the Supreme Court has no role in advising Congress on “how it might exercise its legislative authority, nor give our blessing to hypothetical statutes or legislative records not at issue here.”
• Are Copyrights Property: Justice Thomas’s big final question is “whether copyrights are property within the meaning of the 14th Amendment’s Due Process Clause.” According to Justice Thomas, that question “remains open.”  In his opinion, Justice Thomas recognized that the court has previously identified copyrights as a form of property – even for Due Process considerations.  But, those statements were effectively dicta or without substantial analysis.

Finally, Justice Breyer – joined by Justice Ginsberg – offered a concurring opinion.  Effectively, the pair would dissent on the merits, but now recognize that their view of limited State sovereignty “has not carried the day.”

Joe Hand Promotions, Inc. v. Alburl (N.D. Ala. Feb. 20, 2020) [JoeHand v Barraza]

This short copyright decision has some interesting holdings regarding copyright infringement and LLCs.

The basics are that Sidelines Pub & Grub exhibited a PPV fight (2017 Mayweather vs. McGregor) without paying the license fee to the US promoter Joe Hand.

One of the defendants is Angie Barraza. Barraza was minority owner in the business (10%); was a daytime manager of the bar; but apparently had no knowledge of the alleged unlawful activity.

Barraza claims that all of the unlawful activity alleged in the complaint fell under the purview of Scott Alburl [Barraza’s husband at the time] and was orchestrated and carried out by him without her knowledge or assent. Barraza also stated that, even if she had known about her former husband’s activities with regard to the Program, she would not have been able to stop him because, she says, Alburl was abusive and deceitful towards her in their marriage.

The problem is that the ex-husband is in default.  Prior to the infringement another co-owner “sold” his rights to the business back to Alburl for “the amount of $0.00.”  The bar was never profitable and is now closed.  So . . . Barraza is the only one with money to pay.

Liability for Owner: Assuming that Barraza’s allegations are true, the Court must determine whether, despite her alleged limited ownership and control of Sidelines33, LLC, she can still be held vicariously liable for the infringing conduct of Alburl and Sidelines33, LLC.

• The question: Is Barraza personally liable for the (willful) copyright infringement?
• Answer: Yes, she is vicariously liable — even for the willful infringement.

In its opinion, the court appeared to have no concern regarding the role of “limited liability” or limits on officer liability. The court explains:

All business owners share in both the gains and losses of their businesses. Had the business been profitable, Barraza would have been entitled to a share of those returns. However, she can not now disclaim her interest in the business to avoid its liabilities.

The court went-on to explain that Barraza’s “level of influence” over the company activities is immaterial and irrelevant “for the purpose of determining whether she is jointly liable for the business’s copyright infringement.”

= = =

The statutory damage regime offers an award of $750 – $30,000 for each copyrighted work infringed.  That award can be increased to $150,000 for willful infringement, and lowered to $200 for innocent infringement.

(c) Statutory Damages.–

(1) … the copyright owner may elect … an award of statutory damages … for which any two or more infringers are liable jointly and severally, in a sum of not less than $750 or more than $30,000 as the court considers just.

(2) In a case where … the court finds, that infringement was committed willfully, the court in its discretion may increase the award of statutory damages to a sum of not more than $150,000. In a case where … such infringer was not aware and had no reason to believe that his or her acts constituted an infringement of copyright, the court in its discretion may reduce the award of statutory damages to a sum of not less than $200.

17 U.S.C. 504.

Joe Hand asked for $24,000 in statutory-damages — treble $8,000 standard license for this size of bar showing the fight.   Barraza asked that the court lower the damages to the $200 minimum for innocent infringement.

In its decision, the court found that willfulness damages would be appropriate even though Barraza may have acted be innocent herself.

The infringement at issue in this case was willful. . . .  Barraza appears to misunderstand the concept of vicarious joint and several liability. As noted above, the Plaintiff is not required to even prove that she had knowledge of or participated in the infringement. Rather, as an owner, the infringing actions of Sidelines are imputed to her.

Since the underlying infringement was willful — that willfulness can be imputed onto Barraza as the business owner. Accordingly, the amount of statutory damages is between $750 and $150,000.”

The statutory damages provision is written to suggest that the court (i.e., the judge) would set the amount of statutory damages “as the court considers just.”  However, the Supreme Court held in Feltner v. Columbia Pictures Television, Inc., 523 U.S. 340 (1998) that statutory copyright damages serve as substitute for regular damages in a way that preserves the Constitutional right to a Jury Trial. “[I]f a party so demands, a jury must determine the actual amount of statutory damages under § 504(c) in order to preserve the substance of the common-law right of trial by jury.” Id. (internal citations omitted).

Bottom line here – the jury gets to pick a number between $750 and $150,000.

by Dennis Crouch

On December 2, 2019, the Supreme Court is set to hear oral arguments in Georgia v. Public.Resource.org, Inc. 18-1150 on the question of whether the state of Georgia can obtain and protect a copyright on the “Official Code of Georgia Annotated.”  Or, is copyright protection prohibited by the government edicts doctrine as the 11th Circuit held.

Federal Statute provides that works by the U.S. Gov’t are not copyrightable. 17 U.S.C. 105.  However, that provision does not apply to state governments. Here, Georgia hired LexisNexis to annotate and then publish its code.  The contract included a work-made-for-hire agreement and so the state is legally the author and copyright holder (if copyright persists). 17 U.S.C. § 201(b).  Note here that Georgia is (no longer) claiming copyright in the statutes themselves, but is claiming that the annotations are protectable.

A leading case is Callaghan v. Myers, 128 U.S. 617 (1888) that allowed the official reporter to enforce copyright based upon materials added to state court decisions (head-notes, indices, arrangement of cases, and errors).

Even though a reporter may be a sworn public officer, appointed by the authority of the government which creates the court of which he is made the reporter, and even though he may be paid a fixed salary for his labors, yet, in the absence of any inhibition forbidding him to take a copyright for that which is the lawful subject of copyright in him, or reserving a copyright to the government as the assignee of his work, he is not deprived of the privilege of taking out a copyright which would otherwise exist.

Id.  The alleged infringer here argues, inter alia, that the “Official” gov’t sanctioned nature of the annotations distinguish this case from Callaghan.

Callaghan is the U.S. Supreme Court’s last entry into the government edicts doctrine until now. Since that case the copyright statute has been overhauled in several major ways, including creation of the work-made-for-hire doctrine (prior to that an employer was not seen as an “author”) as well as the aforementioned statutory prohibition on copyright where the U.S. Gov’t is the author.

Oral arguments are divided with Georgia splitting time with the U.S. Gov’t who also argues that copyright protects the annotated code.

Issues: (1) Whether copyright protection extends to a software interface; and (2) whether, as the jury found, the petitioner’s use of a software interface in the context of creating a new computer program constitutes fair use.