Decisions in Brief

• Author: John C. Gatz
• Position: John C. Gatz is a member of the firm Nixon Peabody in Chicago, Illinois. Column contributors include the following writers: Copyrights: Zachary J. Smolinski, Smolinski Rosario Law P.C.; Michael N. Spink, Brinks, Hofer, Gilson & Lione; and Mark R. Anderson, Akerman LLP. Patents: Cynthia K. Barnett, Johnson & Johnson; R. Trevor Carter, Daniel M. ...
• Pages: 61-66

Published in Landslide® magazine, Volume 11, Number 4, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2019 by the American Bar Association. Reproduced with permission. All rights reserved.

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Decisions in Brief

COPYRIGHTS By John C. Gatz

Government Oversight Makes Law Annotations

Unprotectable

Code Revision Commission ex rel. General Assembly of Geor-

gia v. Public.Resource.Org, Inc., 128 U.S.P.Q.2d 1338 (11th Cir.

2018). The plaintiff (Code Revision Commission) supervised

the work of a hired legal vendor for the ongoing publication

and maintenance of the Ofcial Code of Georgia Annotated

(OCGA). Annotations to the OCGA were prepared by the ven-

dor, approved by the Commission, and are a part of the ofcial

code. These annotations do not have the force of law.

Defendant Public.Resource.Org (PRO) is a nonprot

organization with a mission of improving public access to gov-

ernment records. In 2013, PRO purchased all 186 volumes of

the print version of the OCGA and its supplements, scanned

them, and uploaded them to its website to be freely acces-

sible to the public. It also placed digital copies of the OCGA

onto USB drives and mailed them to various Georgia legisla-

tors, among other digital distributions. The Commission le a

complaint seeking injunctive relief against PRO’s copying and

distribution of the copyrighted annotations in the OCGA.

The Eleventh Circuit concluded that no valid copyright

interest can be asserted in any part of the OCGA. In most

states, the ofcial code is comprised of statutory text alone,

and all agreed that a state’s codication cannot be copy-

righted because the authorship is ultimately attributable to

the people. Conversely, all agreed that annotations created

by a private party generally can be copyrighted because the

annotations are an original work created by a private pub-

lisher. Here, the Eleventh Circuit held that a determinative

factor was whether the work was attributable to the construc-

tive authorship of the people, which is to say whether it was

created by an agent of the people in the direct exercise of

sovereign authority. Of critical importance to the Eleventh

Circuit’s analysis was that the Georgia General Assembly

was the driving force behind the creation of the annotations,

and the Commission exerted direct, authoritative control over

the creation of the OCGA annotations at every stage of their

preparation. Moreover, the annotations were also subject to

the approval of the Georgia General Assembly.

Led Zeppelin Faces Further Legal Concerns on

“Stairway”

Skidmore v. Zeppelin, 905 F.3d 1116, 128 U.S.P.Q.2d 1206

(9th Cir. 2018). Randy Wolfe was a member of the rock band

Spirit, whose rst album, released in the late 1960s, contained

a song called “Taurus.” In late 1971, the band Led Zeppe-

lin released their album Led Zeppelin IV, which contained the

song “Stairway to Heaven,” one of the most popular rock songs

of all time. In light of similarities between the two songs, in

2014, Michael Skidmore, the trustee of a trust established in

Wolfe’s name following Wolfe’s death, sued the members of

Led Zeppelin and others for copyright infringement. At the dis-

trict court, a jury returned a verdict in favor of the defendants,

nding that the songs were not substantially similar under the

extrinsic test applied at trial. Skidmore appealed, challenging

several occurrences in the district court, including some jury

instructions and the types of recordings the jury was allowed

access to. The Ninth Circuit vacated the district court judgment

in part, and remanded for a new trial based on deciencies in

jury instructions. Among the instructions to be corrected were

that the jury should have been instructed that: (1) the selection

and arrangement of otherwise unprotectable musical elements

are protectable; and (2) the inverse ratio rule says that a lower

amount of proof of substantial similarity is required when

greater access to a work is shown.

NFL Can’t Sack Photographer’s Copyright Suit

Spinelli v. National Football League, 903 F.3d 185, 128

U.S.P.Q.2d 1069 (2d Cir. 2018). Paul Spinelli and a group of pho-

tographers sued the NFL for copyright infringement based on

the NFL using their photographs. The NFL claimed that it had a

license to use the photographs based on an agreement between the

Associated Press (AP) and the NFL. The district court dismissed

the case for failing to state a claim based on the license between

the NFL and AP, and the photographers appealed.

The Second Circuit reversed the dismissal. The Second Cir-

cuit began by evaluating the license agreements between the

NFL and AP. The NFL entered into a license with AP in 2009

for AP to be the exclusive agent and distributor of photographs

that contain NFL intellectual property, and AP granted that the

NFL had a complimentary license to AP-owned photographs.

In 2012, the NFL and AP renewed the agreement, and the 2012

agreement expanded the NFL’s complimentary license to include

AP-contributor photographs, such as those taken by Spinelli and

the other plaintiffs. AP was to pay royalties to the AP-contributor

photographers based on certain sales of the photos the photogra-

phers produced. The Second Circuit found that the 2009–2012

photos were not retroactively licensed to the NFL by the 2012

agreement, since the photographers had already accrued a cause

of action for copyright infringement before the 2012 agreement

between AP and the NFL was executed, and a co-owner may not

destroy an accrued cause of action with a license.

Turning to photographs taken after the 2012 agree-

ment, the Second Circuit determined that the intent of the

parties was not clear in the contract between AP and the

photographers, and therefore a dismissal on the pleadings

was improper. The Second Circuit found that the agree-

ment between AP and the photographers was ambiguous on

whether the NFL’s uses of the photographs were “qualify-

ing Event Photo Sales” under the agreement. Therefore, the

Second Circuit determined that discovery was required to

develop the arguments of the parties.