September 18, 2020, saw the passing of a legal icon. Supreme Court Justice Ruth Bader Ginsburg was celebrated as a champion of women’s rights and a staunch advocate for the disadvantaged. She inspired a host of books, films, Saturday Night Live skits, exercise workouts, and novelty items. And although RBG is most known for her dissent collars, she is also recognized as a staunch defender of the rights of copyright owners, likely stemming from her profound admiration for the arts. Indeed, in 2015, Justice Ginsburg was inducted into the “Chiefs in Intellectual Property Hall of Fame” for her commitment to the advancement of women in intellectual property and technology careers. Some influence on her copyright law jurisprudence may have been provided around the holiday dinner table—RBG’s daughter, Jane Ginsburg, is a professor of literary and artistic property law at Columbia Law School and is an expert on copyright law. During her time on the Supreme Court, RBG authored several noteworthy opinions that strengthened copyright law and expanded protections for copyright owners.
August 04, 2021 Feature
RBG and ACB on Circle C: A Copyright Defender History and a Copyright Jurisprudence Mystery
By Lincoln Bandlow and Giselle M. Girones
On October 27, 2020, Associate Justice Amy Coney Barrett was sworn in to fill the seat vacated by Justice Ginsburg. Justice Barrett is the fifth woman to serve on the Supreme Court and comes to the court having served three years as a judge on the U.S. Court of Appeals for the Seventh Circuit. Before serving on the federal bench, she was a professor at Notre Dame Law School, teaching courses in civil procedure, constitutional law, and statutory interpretation. In her early years in the law, she practiced at a boutique law firm in Washington, DC, and prior to law firm practice, she clerked first for Judge Laurence Silberman of the U.S. Court of Appeals for the DC Circuit from 1997 to 1998 and then for Supreme Court Justice Antonin Scalia from 1998 to 1999.
In this article, we discuss some of Justice Ginsburg’s most notable majority opinions in copyright law: Eldred v. Ashcroft;1 Golan v. Holder;2 Petrella v. Metro-Goldwyn-Mayer, Inc.;3 and Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC.4 In addition, although Justice Barrett herself has not written any opinions dealing with copyright issues, we discuss two copyright decisions handed down while Justice Barrett was a clerk on the Supreme Court (Quality King Distributors Inc. v. L’anza Research International Inc.5 and Fletner v. Columbia Pictures Television, Inc.6) as well as three copyright decisions by the Seventh Circuit on which Justice Barrett was a member of the judicial panel that rendered the decision (Sullivan v. Flora, Inc.;7 Vernon v. CBS;8 and Rucker v. Fasano9). These decisions deal with such copyright issues as the first sale doctrine, jury trial on statutory damages, what constitutes a “work” for purposes of statutory damages, and the test for substantial similarity of protectable expression. As set forth below and in the title of this article, these decisions show that when it came to copyright, Justice Ginsburg had a long protection of creators and pro-copyright history, while Justice Barrett on copyright is, for now, a bit of a jurisprudential mystery.
Justice Ginsburg on Copyright
Extending Copyright Protection to “provide greater incentive[s] for American and other authors . . .”
The first two significant opinions authored by Justice Ginsburg undeniably established her as a copyright defender: upholding (1) the extension of the term of copyright protection and (2) the reinstituting of copyright protection for foreign works that had entered the public domain. The first decision, authored in 2002, is Eldred v. Ashcroft.10 This case involved a challenge to the constitutionality of the 1998 Sonny Bono Copyright Term Extension Act (CTEA), which extended existing copyright terms by an additional 20 years from the terms originally set in the 1976 Copyright Act. Thus, copyright protection was expanded from expiring 50 years after the death of the author to 70 years.11 The petitioners in Eldred consisted of several individuals and businesses that essentially were in the business of selling works that had entered the public domain by virtue of the works’ term of protection expiring.12 All of these businesses were set to publish oodles of works about to enter the public domain, but these petitioners had to put those plans on hold for another 20 years due to the CTEA. The petitioners did not per se challenge the “70 years” portion for any new works that would be created. Rather, they broadly challenged the constitutionality of extending the term for existing copyrights.13 Specifically, they argued that the extension violated the Copyright Clause’s “limited times” prescription and the First Amendment’s free speech guarantee.14
In her majority opinion upholding this extension, Justice Ginsburg quickly rejected the petitioner’s arguments, holding that the extension of the copyright term would “provide greater incentive for American and other authors to create and disseminate their work in the United States.”15 She held that Congress’s extension did not exceed its powers under the Copyright Clause because the 20-year extension was still a “limited” period and applying the extension equally to both existing and future works ensured that all copyright owners would be uniformly governed under the same set of rules.16 Thus, guided by “text, history, and precedent” there was no basis to conclude that “extending the duration of existing copyrights is categorically beyond Congress’ authority under the Copyright Clause.”17
Petitioners also argued that the CTEA was a regulation of speech that failed heightened judicial review under the First Amendment. Justice Ginsberg rejected that argument as well, holding that copyright law already has “its own speech-protective purposes and safeguards” that satisfied any First Amendment concerns.18 She noted that, as recognized by the Framers of the Constitution, “copyright’s purpose is to promote the creation and publication of free expression.”19 Moreover, First Amendment concerns are adequately addressed by (1) the requirement in copyright law that only unique expression, and not ideas, are protected and (2) the fair use doctrine, which allows even protected expression to be used in certain circumstance that somewhat mirror First Amendment interests.20 Thus, “the Copyright Clause empowers Congress to determine the intellectual property regimes that, overall, in that body’s judgment, will serve the ends of the Clause” and it was not within the province of the Court to “second-guess” the policies enacted by Congress.21
Ten years later, Justice Ginsburg rendered the majority decision in Golan v. Holder.22 This case arose from the United States’s implementation of the Berne Convention for the Protection of Literary and Artistic Works (Berne Convention) and Uruguay Round Agreements Act (URAA), which granted foreign works the same full term of protection available to domestic works and thus provided copyright protection to certain foreign works that had already entered the public domain in the United States.23 Petitioners were a group of orchestra conductors, musicians, and publishers who had used works in the public domain.24 As in Eldred, the petitioners argued the URAA violated the Copyright Clause and the First Amendment by preventing them from using once public domain works that were reinvested with copyright protection.25
Justice Ginsburg, writing for the majority of the Court, found that the URAA did not violate either the Copyright Clause or the First Amendment.26 She declined to question Congress’s authority in embracing the treaty and observed the various times that Congress had afforded copyright protection to public domain works.27 As to the First Amendment argument, the Court referred to its opinion in Eldred and held the URAA did not affect the idea/expression dichotomy or the fair use defense.28
Justice Ginsburg’s opinions in Eldred and Golan provided extensive and valuable protections to copyright owners by upholding the extension of the term of protection and the reinvesting of protection to works that had previously entered the public domain.
Taming the Laches Raging Bull of a Defense to Copyright Infringement Claims
A few years after Golan, Justice Ginsburg authored the opinion in Petrella v. Metro-Goldwyn-Mayer, Inc., which centered on the application of the doctrine of laches.29 There, the petitioner—the daughter of an author who wrote the Raging Bull screenplay registered in 1963 and subsequently renewed in 1991—waited 18 years to file a copyright infringement suit.30 Because the Copyright Act requires commencement of suit within three years after the claim has accrued, the petitioner recognized she could not be awarded any relief for infringing acts prior to January 2006 and only sought relief for infringement occurring on or after that date.31 The respondent argued that the doctrine of laches barred any recovery at all because the 18-year delay was unreasonable and prejudicial.32 In fact, the petitioner had conceded she purposefully waited to determine whether the infringement would result in profit.33 The Ninth Circuit, relying on a number of circuit court decisions that had been rendered over the years holding that the laches defense could act as a complete bar to purportedly untimely copyright infringement claims, affirmed the lower court’s decision.34 The Supreme Court, however, rejected this approach and held that the laches doctrine could not be invoked to summarily preclude adjudication of a claim brought within the three-year limitations period.35
In arriving at this holding, Justice Ginsburg engaged in a thoughtful discussion about the relationship between the doctrine of laches and the statute of limitations period proscribed by the Copyright Act.36 The three-year period served two purposes: (1) to proscribe a certain time within which claims could be pursued and (2) to prevent forum shopping invited by disparate limitations periods.37 The Court explained that the limitations period begins to run when the infringing act occurs.38 However, when a defendant commits successive violations, the limitations period runs separately from each violation, thereby insulating an infringer from liability for earlier infringements of the same work.39 Thus, where a defendant has engaged in a series of discrete infringing acts, the owner’s claim is timely with respect to acts within the three-year window and untimely with respect to prior acts.40
In essence, Justice Ginsburg concluded that the Copyright Act itself considers delay by limiting a plaintiff’s recovery to retrospective relief from, at most, three years in the past and ensuring that no recovery can be had for infringement in earlier years.41 Therefore, the profits made by the defendant in those earlier years remain the defendant’s to keep.42 Indeed, as Justice Ginsburg phrased it, “If the rule were, as MGM urges, ‘sue soon, or forever hold your peace,’ copyright owners would have to mount a federal case fast to stop seemingly innocuous infringements, lest those infringements grow in magnitude.”43 As a result, the Court found the petitioner’s suit—which solely sought relief for conduct occurring within the limitations period—was not barred because the doctrine of laches could not be invoked to preclude a claim for damages within the three-year window.44 In entitling copyright owners to relief for infringement even if the harm had become actionable years after the fact, Justice Ginsburg further established her status as a pro-copyright justice.
“Registration Certificates in Hand” to Commence Suit
Most recently, in 2019, Justice Ginsburg authored the opinion in Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, which resolved a long-time circuit split concerning whether a plaintiff could file suit after merely applying for a copyright registration but before the registration had been issued.45 Speaking for a unanimous court, Justice Ginsburg explained that the registration approach—that plaintiffs have registration certificates in hand before filing suit—is the proper analysis.46
In Fourth Estate, the petitioner sued its former licensee for the unauthorized display of its news articles outside the scope of its license.47 The case turned on whether the petitioner—which did not have finalized copyright registrations of its works—could file suit before the Copyright Office ruled on its pending applications.48 The respondent argued that section 411(a) of the Copyright Act, which required that “registration has been made,” barred the claim.49 The question became when “registration has been made” for purposes of the Act. That is, the Court was tasked with deciding whether registration is made when the application, fee, and deposit copies are submitted to the Copyright Office (the application approach), or when the Copyright Office issues a registration certificate (registration approach).50
Justice Ginsburg adopted the registration approach, settling the circuit split and unequivocally concluding a plaintiff cannot proceed without the issuance of a registration certificate.51 To arrive at this conclusion, Justice Ginsburg pointed to various provisions in the Copyright Act, such as the sections discussing the pre-registration option for works susceptible to pre-publication infringement, noting if the application approach were applied, it would render those provisions meaningless.52 She also examined a prior opinion authored by Judge Learned Hand in Vacheron & Constantin-Le Coultre Watches, Inc. v. Benrus Watch Co., which supported the registration approach.53 And she noted that the legislative history established that the legislature had previously rejected proposals to allow a plaintiff to sue immediately upon submission of a copyright application.54
Although Justice Ginsburg expressed sympathy for copyright owners who must wait “many months”55 to obtain a registration certificate, she did not allow that to effectively permit the revision of section 411(a)’s text. This opinion further reflected Justice Ginsburg’s approach of giving wide birth to Congress to decide copyright policy and procedure and not substituting the Court’s preferences for the text of the Copyright Act.
Aside from these majority opinions, Justice Ginsburg also authored various concurring opinions56 and dissents57 in the copyright realm. It is evident from all of Justice Ginsburg’s opinions that she was a strong advocate for copyright protection. Whether extending copyright terms, allowing copyright holders additional time to sue, or settling a circuit split, ensuring protection for all creators—whether large or small—is undoubtedly part of her legacy.
Justice Barrett on Copyright
In contrast to Justice Ginsburg’s long record of insights into her thoughts on copyright law, Justice Barrett has no record of her own personal opinions on the issue, and only a scant record of opinions on copyright in which she may have played a role. That role was either as a clerk for Justice Scalia when the Supreme Court rendered decisions on copyright or as a member of a three-judge panel on the Seventh Circuit that issued unsigned decisions involving copyright.
In 1998, the Supreme Court decided the Quality King Distributors Inc. v. L’anza Research International Inc. case, which related to how the first sale doctrine applies to the sale of goods that are sold internationally and then re-imported into the United States. The Court held that once a copyright owner sold its works to be exported from the United States, the first sale doctrine prevented the copyright owner from stopping the re-importation and sale of those works in the United States.58 This was, however, a unanimous decision and Justice Scalia did not write the opinion, nor did he write any concurrence.
Also in 1998, the Supreme Court decided the Feltner v. Columbia Pictures Television, Inc. case in which the Court held that the determination of an award of statutory damages under the Copyright Act was a question to be decided by a jury under the Seventh Amendment. Writing for the Court, Justice Clarence Thomas noted that section 504 of the Copyright Act itself, which provides for statutory damages in an amount “the court considers just” and which, depending on the defendant’s state of mind, allows for “the court in its discretion” to increase or decrease the amount of statutory damages, makes no mention of a right to a jury trial on those issues.59 He then turned to the constitutional issue of whether a jury trial was required. He noted that there was a long history, under both English and American law, of copyright claims being tried before juries.60 Defendants did not dispute this history, but merely contended that statutory damages were equitable in nature and thus were to be decided by a judge, not a jury.61 Justice Thomas rejected that contention, holding that the “right to a jury trial includes the right to have a jury determine the amount of statutory damages, if any, awarded to the copyright owner” based on the consistent practice at common law and in copyright cases for juries to award damages.62
Justice Scalia did file a concurring opinion, but he did not express any particular thoughts on copyright policy. Rather, he focused on statutory interpretation issues, holding that when section 504 references a determination of statutory damages that “the court considers just,” the word “court” can be read to include “a broader meaning, which includes both judge and jury.”63 Thus, Scalia would read the statute to include a right of jury trial on the issue and therefore “reserve the constitutional [Seventh Amendment] issue for another day.”64 To the extent Justice Barrett played a role in fashioning this concurrence, it does follow her penchant to focus heavily on statutory interpretation issues but does not provide any insight into her views on substantive copyright law.
As a judge on the Seventh Circuit, Justice Barrett was involved in three decisions that involved copyright issues. Only one of these decisions, however, was a published decision, and none of them were authored by her.
The two unpublished decisions involved somewhat similar cases of plaintiffs bringing “you stole my story” copyright infringement claims that were ultimately dismissed at the trial court level with the Seventh Circuit affirming the dismissal. Rucker v. Fasano involved two different romance novelists who “each wrote a tale of a wealthy teenage girl who falls in love with a boy of Native American heritage and becomes pregnant, before they are cruelly parted.”65 Rucker sued Fasano for copyright infringement, and the claims were dismissed on summary judgment. The Seventh Circuit affirmed. First, the evidence was undisputed that Fasano never had access to Rucker’s work. Rucker had submitted her work to a writing contest held by a company with which Fasano had once had a relationship. Rucker alleged that Fasano might have helped judge that contest or otherwise might have gotten a copy from the company. The Seventh Circuit held that “these hypothesized scenarios are not evidence and cannot overcome the defendant’s undisputed version of events,” in which Fasano stated unequivocally that she had never heard of Rucker or her work.66 Second, the evidence was undisputed that Fasano had independently created her work prior to Rucker creating hers. Although the district court appeared to also conclude that the works were not similar in protectable expression, the Seventh Circuit did not elaborate on that issue.67
The second case, Vernon v. CBS Television Studios, involved claims that defendant had stolen plaintiff’s “idea for a show called Cyber Police.”68 The claims were dismissed by the district court based on plaintiff’s failure to prosecute. Moreover, the district court denied plaintiff’s motion to file an amended complaint on a variety of grounds, including that it failed to state a copyright claim because plaintiff’s description of the supposedly “copied features of his work—agents fighting cybercrime, ‘romantic strife,’ and ‘computer hijacking’” were features that were “too common and standard to plausibly suggest that the defendant’s shows were ‘substantially similar’ to his.”69 The Seventh Circuit affirmed. Certainly, the doctrine of unprotectable scenes a faire poked its head up a little bit in this case, but its unclear if the court (and, more importantly, Justice Barrett) dug very deeply into the issue.
The only published decision on copyright involving Justice Barrett is Sullivan v. Flora, Inc.,70 but this one did involve an important copyright damages issue. In Sullivan, the plaintiff was a graphic artist who created 33 illustrations for the defendant to use in two advertising campaigns. After the plaintiff saw that the defendant was using these illustrations in other ads not part of the deal, she sued for copyright infringement. The plaintiff had registered these works in two copyright applications approved by the Copyright Office. One registration covered 17 separate illustrations and the other covered 16 separate illustrations. When the defendant used all 33 without permission, the plaintiff sued for copyright infringement and sought to recover statutory damages.71
Section 504 of the Copyright Act provides that a copyright holder may recover statutory damages “for all infringements involved in the action, with respect to any one work” and instructs that, in determining statutory damages, “all the parts of a compilation or derivative work constitute one work.”72 The defendant contended that the illustrations were part of two compilations (registered separately under two registrations) and, thus, if the plaintiff prevailed, she was only entitled to two statutory damages awards. The plaintiff contended that she was entitled to 33 separate statutory damages awards. The district court agreed with the plaintiff and jury ultimately awarded her statutory damages for 33 acts of infringement on 33 separate works, awarding $3.6 million in damages.73
The Seventh Circuit reversed, holding that the district court “committed error in permitting separate awards of statutory damages unaccompanied by any finding that each or any of the 33 illustrations constituted ‘one work’ within the meaning” of section 504.74 The Seventh Circuit delved into the issues of what constitutes “one work” and when the combining of multiple works constitutes a “compilation.” It noted that other circuits followed one of two approaches to these questions. The Second Circuit, in Bryant v. Media Rights Prods., Inc.,75 a case involving the infringement of songs from music albums, held that even though each song on the album had separate copyright protection and could be purchased individually (through, for example, iTunes), the songs were part of and were produced and marketed for an album, making it a compilation and “one work,” justifying one statutory damages award.76 In so holding, the Second Circuit distinguished its prior holding in Twin Peaks Productions, Inc. v. Publications International Ltd.,77 which involved the infringement of eight episodes of the same television series in which eight statutory damages awards were allowed because the episodes were aired separately and stood on their own enough to avoid being considered a compilation.78
The Seventh Circuit, however, approved of the approach of the First Circuit in Gamma Audio & Video, Inc. v. Ean-Chea79 in which the court adopted the “independent economic value test” to determine the statutory damages computation, a test adopted by the Ninth, Eleventh, and DC Circuits.80 Thus, the Seventh Circuit held that section 504 “requires courts confronted with circumstances with multiple works and multiple infringements to determine, or to charge a jury with fact finding tailored to answering, whether the protected works have value only in and through their composite whole (and thus meet the definition of a ‘compilation’ in § 101) or instead have standalone value at the level of ‘one work.’ A protected work has standalone value if the evidence shows that work has distinct and discernable value to the copyright holder.”81 The Seventh Circuit remanded the matter to the district court for this determination to be made.82
The decision was written by Seventh Circuit Judge Scudder and joined by Barrett and Seventh Circuit Judge Flaum. It does provide a broad view of potential statutory damages awards available to copyright holders. It also demonstrates a focus on statutory interpretation, a topic taught by Justice Barrett at Notre Dame Law School and one that may very well be a focus of Justice Barrett’s future dives into copyright law. But for now, copyright law is not a pool into which Justice Barrett has often dipped. It is worth noting that during her confirmation hearings, Justice Barrett was questioned by Senator Thom Tillis (R-NC) about copyright law and technology, and she responded that “[m]ost of the things you are identifying sound to me like matters of policy, so those seem like matters that are best addressed by the Legislature; the democratically elected body, not policy made by courts.” This echoes Justice Ginsburg’s holding in Eldred that it was not within the province of the Supreme Court to “second-guess” the copyright policies enacted by Congress.83 Only time will tell how Justice Barrett’s copyright law jurisprudence will take shape.
Endnotes
1. 537 U.S. 186 (2002).
2. 565 U.S. 302 (2012).
3. 572 U.S. 663 (2014).
4. 139 S. Ct. 881 (2019).
5. 523 U.S. 135 (1998).
6. 523 U.S. 340 (1998).
7. 936 F.3d 562 (7th Cir. 2019).
8. 763 F. App’x 574 (7th Cir. 2019).
9. 725 F. App’x 416 (7th Cir. 2018).
10. 537 U.S. 186, 186 (2002).
11. Id.
12. Id. at 193.
13. Id. at 193–94.
14. Id.
15. Id. at 206.
16. Id. at 199–212.
17. Id. at 204.
18. Id. at 219.
19. Id. (original emphasis).
20. Id. at 219–21.
21. Id. at 222.
22. 565 U.S. 302 (2012).
23. Id. at 306–07.
24. Id. at 307–08.
25. Id. at 316.
26. Id. at 318, 327, 335–36.
27. Id. at 318–27.
28. Id. at 327–33.
29. 572 U.S. 663, 663 (2014).
30. Id. at 673–74.
31. Id. at 674–75.
32. Id. at 675.
33. Id. at 682.
34. Id. at 675.
35. Id. at 687.
36. Id. at 677–82.
37. Id. at 670.
38. Id.
39. Id. at 671.
40. Id. at 671–72.
41. Id. at 677.
42. Id.
43. Id. at 682.
44. Id. at 686.
45. 139 S. Ct. 881, 886 (2019).
46. Id.
47. Id. at 887.
48. Id.
49. Id. at 888.
50. Id. at 888–90.
51. Id. at 892.
52. Id. at 888–92.
53. Id. at 890 (citing 260 F.2d 637 (1958)).
54. Id. at 891.
55. Id. at 892 (“True, the statutory scheme has not worked as Congress likely envisioned. Registration processing times have increased from one or two weeks in 1956 to many months today. . . . Delays in Copyright Office processing of applications, it appears, are attributable, in large measure, to staffing and budgetary shortages that Congress can alleviate, but courts cannot cure. . . . Unfortunate as the current administrative lag may be, that favor does not allow us to revise § 411(a)’s congressionally composed text.”).
56. See, e.g., Metro-Goldwyn-Mayer Studios Inc., v. Grokster, Ltd., 545 U.S. 913, 942 (2005) (Ginsburg, J., concurring); Star Athletica, L.L.C. v. Varsity Brands, Inc., 137 S. Ct. 1002, 1018 (2017) (Ginsburg, J., concurring).
57. Kirstaeng v. John Wiley & Sons, Inc., 568 U.S. 519, 557 (2013) (Ginsburg, J., dissenting); Georgia v. Public.Resource.Org, Inc., 140 S. Ct. 1498, 1522 (2020) (Ginsburg, J., dissenting).
58. 523 U.S. 135, 143–45 (1998).
59. 523 U.S. 340, 345–46 (1998).
60. Id. at 347–52.
61. Id. at 352.
62. Id. at 353 (original emphasis).
63. Id. at 356–57 (Scalia, J., concurring).
64. Id. at 359.
65. 725 F. App’x 416, 416 (7th Cir. 2018).
66. Id. at 416–17.
67. Id. at 417 (noting that the district court “found some similarities, but concluded they were not strikingly similar—Rucker’s book was a ‘highly sexualized romance,’ while Fasano’s was more of a ‘courtroom drama’”).
68. 763 F. App’x 574, 575 (7th Cir. 2019).
69. Id. at 576.
70. 936 F.3d 562 (7th Cir. 2019).
71. Id. at 565.
72. 17 U.S.C. § 504(c)(1).
73. Sullivan, 936 F.3d at 565.
74. Id. at 568.
75. 603 F.3d 135 (2d Cir. 2010).
76. Id. at 138.
77. 996 F.2d 1366 (2d Cir. 1993).
78. Id. at 1381.
79. 11 F.3d 1106, 1118 (1st Cir. 1993).
80. See VHT, Inc. v. Zillow Grp., Inc., 918 F.3d 723 (9th Cir. 2019); MCA Television Ltd. v. Feltner, 89 F.3d 766 (11th Cir. 1996); Walt Disney Co. v. Powell, 897 F.2d 565 (D.C. Cir. 1990).
81. Sullivan v. Flora, Inc., 936 F.3d 562, 571 (7th Cir. 2019).
82. Id. at 572.
83. Eldred v. Ashcroft, 537 U.S. 186, 222 (2002).