throbber

`
`No. 19-873
`================================================================================================================
`
`In The
`Supreme Court of the United States
`--------------------------------- ♦ ---------------------------------
`
`GEOPHYSICAL SERVICE, INCORPORATED,
`
`Petitioner,
`
`v.
`
`TGS-NOPEC GEOPHYSICAL COMPANY,
`
`Respondent.
`
`--------------------------------- ♦ ---------------------------------
`
`On Petition For A Writ Of Certiorari
`To The United States Court Of Appeals
`For The Fifth Circuit
`
`--------------------------------- ♦ ---------------------------------
`
`AMICUS CURIAE BRIEF
`IN SUPPORT OF PETITIONER
`
`--------------------------------- ♦ ---------------------------------
`
`THOMAS MADDREY
`Counsel of Record
`MADDREY PLLC
`901 Main St., Suite 6530
`Dallas, Texas 75202
`Tel: (214) 702-9862
`tbm@maddreypllc.com
`
`Counsel for Amicus American
` Society of Media
` Photographers, Inc.
`
`DARREN J. QUINN
`LAW OFFICES OF
` DARREN J. QUINN
`12702 Via Cortina, Suite 105
`Del Mar, California 92014
`Tel: (858) 509-9401
`dq@dqlaw.com
`
`Counsel for Amici American
` Photographic Artists
` and Association of Real
` Estate Photographers
`
`================================================================================================================
`COCKLE LEGAL BRIEFS (800) 225-6964
`WWW.COCKLELEGALBRIEFS.COM
`
`
`
`

`

`i
`
`TABLE OF CONTENTS
`
`Page
`TABLE OF CONTENTS ........................................
`i
`TABLE OF AUTHORITIES ...................................
`ii
`INTEREST OF AMICI CURIAE ...........................
`1
`SUMMARY OF ARGUMENT ................................
`2
`ARGUMENT ...........................................................
`6
`
`I. THIS COURT SHOULD RESOLVE THE
`CONFUSION AND CIRCUIT CONFLICTS
`REGARDING “IMPLIED LICENSE” COPY-
`RIGHT ISSUES ...........................................
`A. The Conflict Between Circuits Should
`Be Resolved In Favor Of Determining
`An “Implied License” Under Federal
`Law—Not State Law .............................
`B. The Conflict Between Circuits Should
`Be Resolved In Favor Of The Three-
`Element “Implied License” Test—Not
`The “Totality Of The Parties’ Conduct”
`Test ......................................................... 11
`C. The Conflict Between Circuits Should
`Be Resolved In Favor Of The Burden To
`Prove An “Implied License” Being On
`The Copier (Licensee)—Not The Crea-
`tor (Licensor) ......................................... 13
`D. Only Federal Courts Should Determine
`Copyright “Implied License” Defense Is-
`sues ........................................................ 14
`
`6
`
`7
`
`

`

`ii
`
`TABLE OF CONTENTS—Continued
`
`Page
` II. A LICENSE (IMPLIED OR EXPRESS)
`SHOULD NEVER APPLY WHEN A GOV-
`ERNMENTAL ENTITY REQUIRED DE-
`POSIT OF A COPYRIGHTED WORK ........ 14
` III. THE UNAVAILABILITY OF AN “IMPLIED
`LICENSE” DEFENSE DOES NOT PRE-
`CLUDE OTHER DEFENSES AND AT
`WORST WOULD LIKELY EXPOSE AN IN-
`NOCENT COPIER TO MINIMAL COPY-
`RIGHT LIABILITY REMEDIES ................. 17
`CONCLUSION ....................................................... 20
`
`
`

`

`iii
`
`TABLE OF AUTHORITIES
`
`Page
`
`CASES:
`Bandag, Inc. v. Al Bolser’s Tire Stores, Inc., 750
`F.2d 903 (Fed. Cir. 1984) ......................................... 12
`Bartsch v. Metro-Goldwyn-Mayer, Inc., 391 F.2d
`150 (2d Cir.), cert. denied, 393 U.S. 826, 21
`L. Ed. 2d 96, 89 S. Ct. 86 (1968) ............................... 8
`Bonito Boats v. Thunder Craft Boats, 489 U.S.
`141, 109 S. Ct. 971 (1989) ................................... 2, 10
`Diggan v. Cycle Sat, Inc., 576 N.W.2d 99 (Iowa
`1998) .................................................................... 4, 14
`Eastman Kodak Co. v. Ricoh Co., 2013 U.S. Dist.
`LEXIS 113204 (S.D.N.Y. Aug. 9, 2013) ................... 12
`Effects Associates, Inc. v. Cohen, 908 F.2d 555
`(9th Cir. 1990) ...................................................... 8, 15
`Fantastic Fakes, Inc. v. Pickwick Int’l, Inc., 661
`F.2d 479 (5th Cir. 1981) ........................................... 10
`
`Foad Consulting Grp., Inc. v. Musil Govan Az-
`zalino, 270 F.3d 821 (9th Cir. 2001) ............ 3, 8, 9, 10
`I.A.E., Inc. v. Shaver, 74 F.3d 768 (7th Cir.
`1996) .............................................................. 8, 10, 12
`Jacob Maxwell, Inc. v. Veeck, 110 F.3d 749 (11th
`Cir. 1997) ................................................................. 10
`Johnson v. Jones, 149 F.3d 494 (6th Cir. 1998) ............ 9
`Lucent Techs., Inc. v. Bd. of Equalization, 241
`Cal. App. 4th 19 (2015)........................................ 4, 14
`Lulirama Ltd., Inc. v. Axcess Broad. Servs., Inc.,
`128 F.3d 872 (5th Cir. 1997) .............................. 7, 8, 9
`
`

`

`iv
`
`TABLE OF AUTHORITIES—Continued
`
`Page
`
`MacLean Assocs., Inc. v. Wm. M. Mercer-Meidinger-
`Hanson, Inc., 952 F.2d 769 (3d Cir. 1991) ................. 9
`Muhammad-Ali v. Final Call, Inc., 832 F.3d 755
`(7th Cir. 2016) .......................................................... 13
`Pinkham v. Sara Lee Corp., 983 F.2d 824 (8th
`Cir. 1992) ................................................................... 9
`Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154, 130
`S. Ct. 1237 (2010) ...................................................... 2
`Sony Corp. of Am. v. Universal City Studios, Inc.,
`464 U.S. 417, 104 S. Ct. 774 (1984) ......................... 12
`Wang Labs., Inc. v. Mitsubishi Elecs. Am., Inc.,
`103 F.3d 1571 (Fed. Cir. 1997) ................................ 12
`
`
`STATUTES:
`17 U.S.C. § 106 .............................................................. 6
`17 U.S.C. § 201(e) .............................................. 5, 16, 17
`17 U.S.C. § 203(a)(4) ............................................... 3, 11
`17 U.S.C. § 204 ........................................................ 3, 11
`17 U.S.C. § 301 ........................................................ 2, 10
`28 U.S.C. § 1338(a) ........................................ 2, 4, 10, 14
`35 U.S.C. §§ 261-329 ................................................... 11
`
`FEDERAL RULES:
`Fed. R. Civ. Proc. 8(c)(1) .......................................... 4, 13
`
`
`

`

`v
`
`TABLE OF AUTHORITIES—Continued
`
`Page
`
`OTHER SOURCES:
`Copyright Licenses and Assignments, BITLAW.COM,
`https://www.bitlaw.com/copyright/license.html
`(last visited Feb. 10, 2020) ........................................ 6
`Melville B. Nimmer & David Nimmer, 3 NIMMER
`ON COPYRIGHT § 10.03[A] at 10-41 (2019) ............. 7, 9
`Melville B. Nimmer & David Nimmer, 3 NIMMER
`ON COPYRIGHT § 12.01[A] at 12-8 n. 19 (2019) ..... 8, 10
`Melville B. Nimmer & David Nimmer, 4 NIMMER
`ON COPYRIGHT § 13.05[D][5] (2019) ................... 18, 19
`Orit Afori, Implied License: An Emerging New
`Standard in Copyright Law, 25 SANTA CLARA
`HIGH TECH, L.J. 275 (2008), http://digitalcom-
`mons.law.scu.edu/chtlj/vol25/iss2/2 .......................... 6
`Permit Records and Mapping Information, CITY OF
`SAN DIEGO, https://www.sandiego.gov/sites/
`default/files/dsdib110.pdf ........................................ 15
`
`

`

`1
`
`INTEREST OF AMICI CURIAE
`American Society of Media Photographers,
`
`Inc. (ASMP) is a 501(c)(6) non-profit trade association
`representing thousands of members who create and
`own substantial numbers of copyrighted photographs.
`These members all envision, design, produce, and sell
`their photography in the commercial market to enti-
`ties as varied as multinational corporations to local
`mom and pop stores, and every group in between. In
`its seventy-five-year history, ASMP has been commit-
`ted to protecting the rights of photographers and pro-
`moting the craft of photography.1
`
`American Photographic Artists (APA) is a lead-
`
`ing national organization run by and for professional
`photographers. APA strives to improve the environ-
`ment for photographic artists and clear the pathways
`to success in the industry. Recognized for its broad in-
`dustry reach, APA continues to expand benefits for its
`members and works to champion the rights of photog-
`raphers and image-makers worldwide.
`
`Association of Real Estate Photographers
`
`(AREP) supports real estate photographers and photog-
`raphy companies by providing guidance on licensing,
`
`
`1 Pursuant to this Court’s Rule 37.6, counsel for amici curiae
`
`certifies that this brief was not authored in whole or in part by
`counsel for any party and that no person or entity other than
`amici curiae, its members, or its counsel has made a monetary
`contribution intended to fund the preparation or submission of
`this brief. All parties have consented to the filing of this brief. No-
`tice of intent to file this amicus brief was provided at least 10 days
`prior to the deadline to file the brief.
`
`

`

`2
`
`professional standards, business and photography ed-
`ucation, and homeowner, agent & broker education on
`the value of real estate photography.
`
`--------------------------------- ♦ ---------------------------------
`
`SUMMARY OF ARGUMENT
`
`The Constitution favors copyright creators/own-
`ers, not copyright copiers. Reed Elsevier, Inc. v. Much-
`nick, 559 U.S. 154, 157, 130 S. Ct. 1237, 1241 (2010)
`(“The Constitution grants Congress the power ‘[t]o pro-
`mote the Progress of Science and useful Arts, by secur-
`ing for limited Times to Authors . . . the exclusive Right
`to . . . their . . . Writings.’ Art. I, § 8, cl. 8.”).
`
`“One of the fundamental purposes behind the Pa-
`
`tent and Copyright Clauses of the Constitution was to
`promote national uniformity in the realm of intellec-
`tual property.” Bonito Boats v. Thunder Craft Boats,
`489 U.S. 141, 162, 109 S. Ct. 971, 983 (1989).
`
`In exercising this Constitutional power, Congress
`
`enacted a comprehensive statutory scheme that favored
`uniformity and certainty. For instance, Congress en-
`acted a broad preemption provision to promote uni-
`formity. 17 U.S.C. § 301. Congress also provided that
`federal district courts have exclusive jurisdiction of
`civil actions arising under copyright. 28 U.S.C. § 1338(a).
`
`To promote certainty with respect to copyright
`
`ownership, Congress requires “an instrument of con-
`veyance, or a note or memorandum of the transfer, to
`be in writing, and signed by the owner of the rights
`
`

`

`3
`
`conveyed or such owner’s duly authorized agent.” 17
`U.S.C. § 204 (emphasis added). Similarly, a termina-
`tion of a license or grant under 17 U.S.C. § 203(a)(4)
`“shall be effected by serving an advance notice in writ-
`ing. . . .” (emphasis added).
`
`Against this backdrop of Congress favoring the
`
`copyright creator, uniformity and certainty is the judi-
`cially imposed concept of “implied license.” Congress
`enacted no copyright provisions that refer to an “im-
`plied license.”
`
`The Petition should be granted because there is
`
`great confusion and conflict between the Circuits re-
`garding “implied license” in the copyright context.
`⬛ First, there is conflict and confusion as to
`“whether federal or state law determines
`whether a copyright holder has granted an
`implied, non-exclusive copyright license to
`another.” Foad Consulting Grp., Inc. v. Musil
`Govan Azzalino, 270 F.3d 821, 826 (9th Cir.
`2001) (collecting cases on three-way Circuit
`split). A biting concurring in result opinion by
`Judge Kozinski notes the “tension between
`state contract law and federal copyright laws”
`and faults the majority’s preemption analysis
`as “incomplete.” 270 F.3d at 834.
`⬛ Second, there is conflict and confusion regard-
`ing the standard to determine the existence of
`any “implied license.” The Ninth and Seventh
`Circuits apply a three-element test whereas
`
`

`

`4
`
`the Fourth and Fifth Circuits apply a “totality
`of the circumstances approach.”2
`⬛ Third, there is conflict and confusion as to who
`has the burden to prove (or disprove) an “im-
`plied license.” Fed. R. Civ. Proc. 8(c)(1) lists “li-
`cense” as an affirmative defense. But some
`courts treat an “implied license defense” as a
`kind of state law contract claim where the
`plaintiff has the burden to show breach.3
`⬛ Fourth, there is conflict and confusion as to
`whether state courts can adjudicate “implied
`license” copyright issues. Despite exclusive
`jurisdiction in federal court under 28 U.S.C.
`§ 1338(a), some state courts are deciding “im-
`plied license” copyright issues. See, e.g., Dig-
`gan v. Cycle Sat, Inc., 576 N.W.2d 99, 102
`(Iowa 1998) (“Because Diggan retained exclu-
`sive control over his copyrighted software,
`subject to the implied license, the terms of the
`license take on critical importance.”); Lucent
`Techs., Inc. v. Bd. of Equalization, 241 Cal.
`App. 4th 19 (2015) (“AT&T/Lucent did not re-
`fute the possible copyright defenses of implied
`license to make a single copy of computer pro-
`grams”).
`
`Consistent with the Constitution and the Copy-
`
`right Act’s purpose of uniformity, federal law should
`determine whether a copyright holder has granted an
`implied, non-exclusive copyright license to another.
`
`
`
`
`2 Petition, at 18-19.
`3 Petition, at 26.
`
`
`
`

`

`5
`
`The omission of any reference to “implied license”
`
`in the Copyright Act and requirement of a signed writ-
`ing by the copyright owner in other provisions to trans-
`fer or terminate a license suggests that any “implied
`license” must have narrow and clearly defined ele-
`ments. Therefore, when evaluating issues of “implied
`license,” a “totality of the circumstances” approach
`does not further the purposes of copyright because it
`lacks certainty and favors the copier, not the copyright
`creator.
`
`The copier asserting an “implied license” affirma-
`
`tive defense has the burden to prove it. A copyright
`owner/creator has no affirmative burden to negate an
`“implied license.” For the purpose of uniformity, only
`federal courts should determine “implied license” copy-
`right infringement defense issues.
`
`Implied licenses claimed by governmental entities
`
`in connection with a mandatory deposit of a copy-
`righted work are likely non-existent for failure to
`meet required elements or are invalid under 17 U.S.C.
`§ 201(e) that Congress enacted to protect copyright
`owners/creators from heavy-handed conduct by gov-
`ernmental entities.
`
`The unavailability of an implied license defense
`
`will not imperil innocent copiers who can assert other
`defenses, such as fair use, and are exposed to minimal
`copyright remedies (such as $200 innocent infringer
`statutory damages) at worst.
`
`--------------------------------- ♦ ---------------------------------
`
`
`

`

`6
`
`ARGUMENT
`I. THIS COURT SHOULD RESOLVE THE CON-
`FUSION AND CIRCUIT CONFLICTS RE-
`GARDING “IMPLIED LICENSE” COPYRIGHT
`ISSUES
`
`An “implied license” defense is typically only as-
`serted when a copier failed to obtain express permis-
`sion from the copyright owner/creator to exercise one
`or more of the copyright owner/creator’s exclusive
`rights under 17 U.S.C. § 106 (e.g., reproduce, distribute
`by sale, display).
`
`An express license (as simple as an email or text
`
`from the copyright owner/creator) promotes copyright,
`promotes certainty, seeks permission to exploit a copy-
`right before use, and prevents infringement.4 In con-
`trast, an “implied license” harms copyright by taking
`rights never expressly granted by the copyright owner/
`creator, thrives on confusion, retroactively seeks per-
`mission to exploit a copyright after use, and is an in-
`fringement defense.5
`
`Because “implied license” is not defined in the
`
`Copyright Act (or the analogous Patent Act), the Cir-
`cuits are in confusion and conflict about: (1) the source
`of the “implied license” defense (federal law or state
`contract law); (2) the elements to establish an “implied
`
`
`4 Orit Afori, Implied License: An Emerging New Standard in
`
`Copyright Law, 25 SANTA CLARA HIGH TECH. L.J. 275, 276 (2008),
`http://digitalcommons.law.scu.edu/chtlj/vol25/iss2/2.
`
`5 Copyright Licenses and Assignments, BITLAW.COM, https://
`www.bitlaw.com/copyright/license.html (last visited Feb. 10, 2020).
`
`

`

`7
`
`license” (3-element test vs. totality of the parties’ con-
`duct test); (3) the burden on proving an “implied li-
`cense” (burden on copier or owner/creator); and (4) which
`courts can determine copyright “implied license” issues
`(only federal courts or state courts as well).
`
`This Court should grant the Petition to eliminate
`
`the confusion and resolve the Circuit conflicts.
`
`
`
`A. The Conflict Between Circuits Should
`Be Resolved In Favor Of Determining An
`“Implied License” Under Federal Law—
`Not State Law
`
`This Petition arises from the Fifth Circuit deter-
`mining “whether an implied license exists based on
`‘the totality of the parties’ conduct.’ ” App. 6 quoting
`Lulirama Ltd., Inc. v. Axcess Broad. Servs., Inc., 128
`F.3d 872, 879 (5th Cir. 1997).
`
`In Lulirama Ltd., the Fifth Circuit noted two dif-
`
`ferent tests to determine whether an “implied license”
`was granted.
`
`“When the totality of the parties’ conduct in-
`dicates an intent to grant such permission,
`the result is a legal nonexclusive license. . . .”
`3 NIMMER, supra, § 10.03[A], at 10-41 (foot-
`notes omitted). Other circuits have held that
`an implied nonexclusive license arises when
`“(1) a person (the licensee) requests the crea-
`tion of a work, (2) the creator (the licensor)
`makes the particular work and delivers it
`to the licensee who requested it, and (3) the
`
`

`

`8
`
`licensor intends that the licensee-requestor
`copy and distribute his work.” I.A.E., 74 F.3d
`at 776 (citing Effects, 908 F.2d at 558-59).
`Lulirama Ltd., 128 F.3d at 879.
`
`The Fifth Circuit’s reference in Lulirama Ltd. to
`“[o]ther circuits” applying a three-part test cites a Sev-
`enth Circuit case that analyzed “implied license” under
`state law.
`
`When the defendants claim a license, as they
`have in this case, we may consider the validity
`or scope of that license and typically must
`apply the relevant state law in that de-
`termination. See 3 NIMMER § 12.01[A], at 12-
`8 & n. 19 (citing Bartsch v. Metro-Goldwyn-
`Mayer, Inc., 391 F.2d 150 (2d Cir.), cert. denied,
`393 U.S. 826, 21 L. Ed. 2d 96, 89 S. Ct. 86
`(1968)).
`
`I.A.E., Inc. v. Shaver, 74 F.3d 768, 774 n. 4 (7th Cir.
`1996) (emphasis added). The Ninth Circuit also deter-
`mines the existence of an “implied license” under state
`law. See Foad Consulting Grp., Inc., 270 F.3d 821, 827
`n. 10 (9th Cir. 2001) (“Since Effects Associates’ finding
`of an implied license is consistent with California law,
`it is consistent with our holding that state law gener-
`ally determines whether a copyright holder has
`granted an implied license.”) (emphasis added).
`
`On the other hand, the Lulirama Ltd. opinion sug-
`
`gests that it determined whether an implied license ex-
`ists under “federal law.” Id. (“As such, ‘under federal
`law, a nonexclusive license may be granted orally, or
`
`

`

`9
`
`may even be implied from conduct.’ 3 NIMMER, supra,
`§ 10.03[A], at 10-40 (footnotes omitted)”).
`
`The Ninth Circuit took note of this confusion and
`
`acknowledged a three-way conflict between the Cir-
`cuits when it considered “whether federal or state law
`determines whether a copyright holder has granted an
`implied, non-exclusive copyright license to another.”
`Foad Consulting Grp., Inc., 270 F.3d at 826.
`
`Cases from other circuits provide little
`guidance on this issue. Some recognize that
`the Copyright Act permits copyright holders
`to grant nonexclusive licenses by implica-
`tion but fail to discuss what law determines
`whether such a license has been granted.
`See, e.g., Johnson v. Jones, 149 F.3d 494, 500
`(6th Cir. 1998); Pinkham v. Sara Lee Corp.,
`983 F.2d 824, 830-31 (8th Cir. 1992); MacLean
`Assocs., Inc. v. Wm. M. Mercer-Meidinger-
`Hansen, Inc., 952 F.2d 769, 778-79 (3d Cir.
`1991).
`
`Others rely on a leading copyright trea-
`
`tise for the principle that a copyright holder
`grants another a nonexclusive license “ ‘when
`the totality of the parties’ conduct indicates
`an intent to grant such permission’ ‘but fail to
`explain the source of the principle.’ ” Lulirama
`Ltd., Inc. v. Axcess Broadcast Servs., Inc., 128
`F.3d 872, 879 (5th Cir. 1997) (quoting 3 Mel-
`ville B. Nimmer & David Nimmer, NIMMER ON
`COPYRIGHT § 10.03[A], at 10-41 (1997)).
`
`
`
`
`
`

`

`10
`
`Still others rely on the same treatise for
`
`the proposition that the validity and scope of
`implied copyright licenses are generally de-
`termined by state law but provide little or no
`analysis of the issue. See, e.g., Jacob Maxwell,
`Inc. v. Veeck, 110 F.3d 749, 752 n. 2 (11th Cir.
`1997) (citing Fantastic Fakes, Inc. v. Pickwick
`Int’l, Inc., 661 F.2d 479, 483 (5th Cir. 1981),
`and Nimmer & Nimmer, supra, § 12.01[A], at
`12-8 n. 19); I.A.E., Inc. v. Shaver, 74 F.3d 768,
`774 n. 4 (7th Cir. 1996) (citing Nimmer &
`Nimmer, supra, § 12.01[A], at 12-8 & n. 19).
`
`Foad Consulting Grp., Inc., 270 F.3d at 826 n. 9 (para-
`graphs and emphasis added). A biting concurring in re-
`sult opinion by Judge Kozinski notes the “tension
`between state contract law and federal copyright laws”
`and faults the majority’s preemption analysis as “in-
`complete,” stating other courts have “devoted consider-
`able discussion” to this issue in attempting to resolve
`this tension between laws. 270 F.3d at 834.
`
`“One of the fundamental purposes behind the Pa-
`
`tent and Copyright Clauses of the Constitution was to
`promote national uniformity in the realm of intellec-
`tual property.” Bonito Boats, 489 U.S. at 162. Congress
`enacted a broad preemption provision to promote such
`uniformity.6 Congress also provided that federal dis-
`trict courts have exclusive jurisdiction of civil actions
`arising under copyright. 28 U.S.C. § 1338(a).
`
`
`
`
`
`6 17 U.S.C. § 301.
`
`
`
`
`
`

`

`11
`
`A patchwork of different state law requirements to
`
`determine the existence of an “implied license” is con-
`trary to the Constitution and the Copyright Act’s goal
`to promote uniformity. Accordingly, the Supreme Court
`should establish a uniform federal standard to deter-
`mine the existence of an “implied license.”
`
`
`
`B. The Conflict Between Circuits Should Be
`Resolved In Favor Of The Three-Element
`“Implied License” Test—Not The “Totality
`Of The Parties’ Conduct” Test
`
`To promote certainty with respect to copyright
`ownership, Congress required “an instrument of con-
`veyance, or a note or memorandum of the transfer,
`[to be] in writing and signed by the owner of the
`rights conveyed or such owner’s duly authorized
`agent.”7 To favor copyright creators and certainty, Con-
`gress even allows a copyright creator to terminate an
`“exclusive or nonexclusive grant of a transfer or license
`of copyright or of any right under a copyright” under
`certain conditions, but the “[t]he termination shall be
`effected by serving an advance notice in writing. . . .”8
`
`The Copyright Act does not refer to an “implied li-
`
`cense” and neither does the Patent Act.9 There is a “his-
`toric kinship between patent law and copyright law.”
`
`
`
`
`
`7 17 U.S.C. § 204 (emphasis added).
`8 17 U.S.C.S. § 203(a)(4) (emphasis added).
`9 35 U.S.C. §§ 261-329.
`
`
`
`

`

`12
`
`Sony Corp. of Am. v. Universal City Studios, Inc., 464
`U.S. 417, 439, 104 S. Ct. 774, 787 (1984).
`
`In the analogous patent context, an “implied li-
`
`cense looks for an affirmative grant of consent or per-
`mission” from the copyright owner. Wang Labs., Inc. v.
`Mitsubishi Elecs. Am., Inc., 103 F.3d 1571, 1581 (Fed.
`Cir. 1997). “A court will imply a license only rarely.”
`Eastman Kodak Co. v. Ricoh Co., 2013 U.S. Dist. LEXIS
`113204, *23 (S.D.N.Y. Aug. 9, 2013) citing Wang, 103
`F.3d at 1581. “ ‘[A]n implied license cannot arise out of
`the unilateral expectations or even reasonable hopes of
`one party. One must have been led to take action by the
`conduct of the other party.’ ” Bandag, Inc. v. Al Bolser’s
`Tire Stores, Inc., 750 F.2d 903, 925 (Fed. Cir. 1984) (ci-
`tation omitted).
`
`The three-element “implied license” approach by
`
`the Seventh and Ninth Circuits is most consistent with
`the Copyright Act because it focuses on the intent of
`the copyright owner/creator. The three-element test re-
`quires:
`(1) a person (the licensee) requests the crea-
`tion of a work [from the creator (the licensor)],
`(2) the creator (the licensor) makes the par-
`ticular work and delivers it to the licensee
`who requested it, and
`(3) the licensor intends that the licensee-re-
`questor copy and distribute his work.
`
`I.A.E., Inc., 74 F.3d at 776 [pagination and bracketed
`language added].
`
`

`

`13
`
`In contrast, the “totality of the parties’ conduct”
`
`approach applied by the Fifth Circuit (App. 6) is incon-
`sistent with the Copyright Act because it could allow a
`determination of an “implied license” contrary to the
`copyright owner/creator’s intent—especially if there is
`no (or little) evidence of the copyright owner/creator’s
`intent.
`
`
`
`C. The Conflict Between Circuits Should
`Be Resolved In Favor Of The Burden To
`Prove An “Implied License” Being On
`The Copier (Licensee)—Not The Creator
`(Licensor)
`
`The Petition notes a conflict between the Circuits
`regarding the burden to prove an “implied license.”10
`
`Fed. R. Civ. Proc. 8(c)(1) lists “license” as an affirm-
`
`ative defense. This squarely puts the burden of proving
`an “implied license” defense on the copier. In the copy-
`right infringement context, “a plaintiff is not required
`to prove that the defendant’s copying was unauthor-
`ized in order to state a prima facie case of copyright
`infringement. Rather, the burden of proving that the
`copying was authorized lies with the defendant.” Mu-
`hammad-Ali v. Final Call, Inc., 832 F.3d 755, 760-761
`(7th Cir. 2016) (citations omitted, emphasis in origi-
`nal).
`
`
`
`
`
`10 Petition, § III, at 24-29.
`
`
`
`

`

`14
`
`D. Only Federal Courts Should Determine
`Copyright “Implied License” Defense Is-
`sues
`
`Because of the confusion and conflict as to whether
`a copyright “implied license” should be determined
`under state or federal law, some state courts ruled on
`copyright “implied license” issues. See, e.g., Diggan, 576
`N.W.2d at 102 (Iowa 1998) (“Because Diggan retained
`exclusive control over his copyrighted software, subject
`to the implied license, the terms of the license take on
`critical importance.”); Lucent Techs., Inc., 241 Cal. App.
`4th at 19 (California 2015) (“AT&T/Lucent did not re-
`fute the possible copyright defenses of implied license
`to make a single copy of computer programs”).
`
`As explained in § I.A above, the determination of
`
`whether a copyright “implied license” exists should be
`determined under federal, not state law. Accordingly,
`pursuant to 28 U.S.C. § 1338(a), federal district courts
`have original jurisdiction over all copyright “implied li-
`cense” issues.
`
`
`II. A LICENSE (IMPLIED OR EXPRESS) SHOULD
`NEVER APPLY WHEN A GOVERNMENTAL
`ENTITY REQUIRED DEPOSIT OF A COPY-
`RIGHTED WORK
`
`Under the facts in this Petition, a governmental
`entity required a deposit of plaintiff GSI’s copyrighted
`seismic surveys. The governmental entity made a copy
`of plaintiff GSI’s copyrighted work at defendant TGS’s
`
`

`

`15
`
`request (and TGS then imported the copy into the
`United States and exploited the copyrighted work).
`
`The factual situation is somewhat analogous to a
`
`governmental entity (e.g., a city or county) that re-
`quires the deposit of copyrighted architectural plans.
`In contrast to the facts in this Petition, other govern-
`mental entities have strict guidelines to prevent the
`copying of copyrighted architectural plans without the
`copyright owner’s consent.11
`
`The Petition succinctly explains why plaintiff
`
`GSI’s deposit of its copyrighted seismic surveys cannot
`support an “implied license” under the three-element
`test.
`
`If examined under the traditional three-ele-
`ment test of Effects Associates, it is apparent
`that the act of depositing these works does not
`support an implied license. The first element
`(“request”) is absent; the government did not
`commission this seismic survey. The second
`element (“delivery” of the work) was not some-
`thing done voluntarily but, instead, was com-
`pelled under Canadian law. Compliance with
`a mandatory deposit system does not, under
`
`
`11 See, e.g., Permit Records and Mapping Information, CITY
`
`OF SAN DIEGO (“You are not permitted to make copies, trac-
`ings or take photographs when viewing building plans. . . .
`Duplicates of plans may not be made except with: 1. The written
`permission, which shall not be unreasonable withheld, of the cer-
`tified, licensed or registered professional or his or her successor
`who signed the plans.”) https://www.sandiego.gov/sites/default/files/
`dsdib110.pdf.
`
`

`

`16
`
`the traditional framework, establish the gran-
`tor’s intent.12
`
`But what if a government entity requires the
`
`copyright owner/creator affirm that any “implied li-
`cense” elements are met in connection with the man-
`datory deposit of the copyrighted work? Or even
`stronger, what if the governmental entity purports to
`have the copyright owner/creator grant the govern-
`mental entity an “express license” in connection with
`the mandatory deposit of the copyrighted work? This
`Court should clarify that such purported licenses are
`invalid as involuntary transfers.
`
`Congress anticipated heavy-handed conduct by gov-
`
`ernmental entities when it enacted 17 U.S.C. § 201(e)
`to invalidate any involuntary transfers of exclusive
`copyrights to a governmental entity. Section 201(e)
`provides:
`
`When an individual author’s ownership of a
`copyright, or of any of the exclusive rights
`under a copyright, has not previously been
`transferred voluntarily by that individual au-
`thor, no action by any governmental body
`or other official or organization purport-
`ing to seize, expropriate, transfer, or exercise
`rights of ownership with respect to the
`copyright, or any of the exclusive rights
`under a copyright, shall be given effect
`under this title, except as provided under ti-
`tle 11 [relating to bankruptcy].
`
`
`
`12 Petition, at 21.
`
`
`
`

`

`17
`
`(emphasis added). The comments to § 201 illuminate
`that a governmental entity cannot purport to take
`some or all of the copyright owner’s exclusive rights.
`
`The purpose of this subsection is to reaffirm
`the basic principle that the United States
`copyright of an individual author shall be
`secured to that author, and cannot be taken
`away by any involuntary transfer. It is the in-
`tent of the subsection that the author be
`entitled, despite any purported expropri-
`ation or involuntary transfer, to continue
`exercising all rights under the United
`States statute, and that the governmental
`body or organization may not enforce or
`exercise any rights under this title in that
`situation.13
`
`
`III. THE UNAVAILABILITY OF AN “IMPLIED LI-
`CENSE” DEFENSE DOES NOT PRECLUDE
`OTHER DEFENSES AND AT WORST WOULD
`LIKELY EXPOSE AN INNOCENT COPIER
`TO MINIMAL COPYRIGHT LIABILITY REM-
`EDIES
`
`Assuming an “implied license” defense is unavail-
`able when a copyrighted work is deposited with a gov-
`ernmental entity, is copyright infringement liability
`certain? No, the copier may be able to successfully as-
`sert a “fair use” defense if the copyrighted work is not
`being exploited.
`
`
`
`13 17 U.S.C. § 201 (comments) (emphasis added).
`
`
`
`

`

`18
`
`An issue of recurring application is
`
`whether a governmental agency may photo-
`copy records within its possession—or author-
`ize members of the public to do so—without
`incurring infringement liability to the copy-
`right owner of the materials contained there-
`in. . . . It arises, instead, when copyrighted
`materials have been deposited in public
`files—often without consent of the copyright
`owner, but at least without that owner’s con-
`sent to further reproduction.
`
`Let us start with some hypothetical rumi-
`
`nations. Imagine that, as a condition to ob-
`taining a building permit, homeowner A had
`to deposit copyrighted architectural plans
`with the local zoning authority. Imagine fur-
`ther that neighbor B decided to procure a copy
`of those plans to evaluate whether they are
`consonant with the esthetics of the neighbor-
`hood and comport with set-back requirements.
`Under those circumstances, the fair use de-
`fense would appear overwhelmingly strong.14
`
`Even assuming the copier (B) was not successful
`
`on a fair use defense, any infringement remedies will
`likely be minimal because innocent statutory damages
`may apply and there are likely no revenues or damages
`to recover.
`
`
`
`
`
`
`
`14 4 NIMMER ON COPYRIGHT § 13.05[D][5] (2019).
`
`
`
`

`

`19
`
`The “fair use” defense, however, is likely unavaila-
`
`ble where the copier plans to exploit the copyright ob-
`tained from the governmental entity.
`
`Now, by contrast, imagine that

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