A recent opinion from the U.S. Court of Federal Claims highlights some of the difficulties that creative professionals may face when pursuing claims of copyright infringement against the federal government. Admittedly, though, it is doubtful that most such claimants would find themselves in the situation of pursuing such claims from a jail cell.
Robert James Walton v. The United States (opinion released January 23, 2008) involved the case of an individual (Walton) who, while serving a 17.5 years sentence at the U.S. Penitentiary at Leavenworth, Kansas, following his conviction on charges of bank robbery, performed professional graphic design services in the creation of several calendars under work detail for the federal government. (Prior to his incarceration, Walton received substantial graphic design training and had taught classes on the subject.) Following the creation of the calendars, Walton voiced concerns to prison officials regarding what he believed to be the government’s misappropriation of what he claimed to be his intellectual property rights in the calendars he created. Perhaps predictably, prison officials dismissed Walton’s concerns and informed him that all rights in the calendars belonged to the government (specifically, to UNICOR/Federal Prison Industries, Inc. (FPI), the non-appropriated fund instrumentality in charge of the work detail to which Walton was assigned). In response, Walton eventually filed suit against the federal government, alleging that FPI and the General Services Administration (GSA) infringed his copyrights in the calendars. Following several venue transfers as well as a stay to give the U.S. Copyright Office time to make a decision with regard to Walton’s application for registration of his copyrights, Federal Claims Court heard the U.S. government’s motion to dismiss and for summary judgment.
The government’s motion sought dismissal of Walton’s claims on essentially two grounds: (1) dismissal based on the court’s alleged lack of subject matter jurisdiction, because Walton’s failed to register his copyrights prior to filing suit; and (2) dismissal for Walton’s alleged failure to state a claim upon which relief can be granted, because Walton allegedly was an employee of the FPI and/or the federal government when he created the calendars.
The court did not grant the relief sought by the government for any of the reasons advanced in the government’s motion. With respect to the jurisdictional issue, the court held that Walton’s amended complaint, which Walton filed after he registered his copyrights in the calendars and while the alleged infringing activity was ongoing, served “…as a de facto supplemental complaint…analogous to a separate complaint distinct from the initial, November 21, 2001 complaint.” Thus, that jurisdictional issue could not serve as a basis for dismissal.
However, the court sua sponte raised a separate jurisdictional issue based on a statutory proviso to the federal government’s waiver of sovereign immunity in copyright infringement cases. 28 U.S.C. § 1498(b) reads as follows:
[W]henever the copyright in any work protected under the copyright laws of the United States shall be infringed by the United States, ... the exclusive action which may be brought for such infringement shall be an action by the copyright owner against the United States in the Court of Federal Claims ...: Provided, however, That this subsection shall not confer a right of action on any copyright owner ... with respect to any copyrighted work prepared by a person while in the employment or service of the United States, where the copyrighted work was prepared as a part of the official functions of the employee, or in the preparation of which Government time, material, or facilities were used....
The court first held that everything after the word “Provided” in the above passage is jurisdictional in nature, and thus constitutes matters that a plaintiff must prove (or disprove) in order for copyright claims against the government to move forward. The court then addressed the substance of the proviso and Walton’s relationship with the federal government, and noted the “absurdity” of trying to apply traditional, common-law agency factors to determine whether a prison inmate is an “employee” of the government (thereby effectively denying the other basis of the government’s motion, though the rest of the court’s opinion rendered moot both of the issues raised by the government). However, the court went on to hold that, at the time he created the calendars, Walton was “in the…service of the United States…” and that in the preparation of the copyright works, “…Government time, material, [and] facilities were used…” Because of this, and in light of the court’s prior holding regarding the nature of the proviso, the court found that it lacked subject matter jurisdiction over Walton’s claims, which it therefore had no alternative but to dismiss.
Most individuals or businesses performing creative work for the federal government will never find themselves in the sort of situation that Mr. Walton faced. However, the Walton opinion serves as a reminder of certain protections that you can take to ensure that you will retain rights in the works that you create. First, it is important to make explicit in a written agreement with the government that all works under the agreement are to be created in the individual’s or business’ status as an independent contractor of the government and also that those works are not “works for hire,” in which the government would hold the copyright. Second, to the extent possible, it is advisable to avoid using any government resources in the creation of the works, because the Walton analysis seems to make clear that a person working “in the…service of the United States” still may bring a claim for copyright infringement as long as he or she did not use “…Government time, material, or facilities…” in the creation of the works. Finally, as is true for any creative work, it is always very important to register that work as soon as possible following its creation, in order to avoid any potential jurisdictional problems.