The Obama “Hope” Poster Case — A Copyright Catch-22?

Posted on Categories Intellectual Property LawTags

(This is the third in a series of posts on Fairey v. Associated Press. See below for other posts in the series.)

Shepard Fairey has sued the Associated Press preemptively. Before the AP could sue him for infringement, he sued for a declaratory judgement under the Declaratory Judgment Act, 28 U.S.C. § 2201, that his poster does not infringe on any copyrights held by the AP, and in the alternative that his poster is a fair use. The advantage of bringing a declaratory judgement action, of course, is that the defendant, not the plaintiff, gets to pick the time and place of the suit.

But if the AP hasn’t yet registered the copyright in the photo, Fairey might be caught in what I’ve described previously as a “Copyright Catch-22“: unable to sue until the AP gets its registration, at which point they’ll promptly sue him rather than waiting around for his declaratory judgement action. In other words, the Declaratory Judgement Act may simply be unavailable, as a practical matter, for some copyright defendants. Assuming the AP hasn’t gotten a registration yet, is Fairey caught in this bind? Maybe, unless the Second Circuit decides to chart a new path on this issue.

Is Fairey’s suit doomed to fail before it even gets off the ground?

Why am I assuming that the copyright in the photo hasn’t been registered? For one thing, Jason Mazzone reports that he searched the online registration database for some evidence of registration without success. The registration could be hard to find, however; for example, the photo could have been included within a collection. But there’s also that whole ownership dispute between Garcia and the AP I discussed in my last post; that also suggests that no one has filed a registration, which requires a designation of the author. Finally, there’s the fact that the AP does not need to file a registration to receive copyright protection for its works; registration confers only a few benefits under the Copyright Act, including the ability to sue for infringement, and the ability to seek statutory damages and attorneys fees in some cases. 17 U.S.C. § 411.

That last provision is the source of the problem. Section 411(a) of the Copyright Act requires registration before a copyright owner can sue for infringement. Most courts have held that Section 411(a) is jurisdictional, that is, that the federal courts do not have federal question jurisdiction over a copyright claim involving an unregistered work. See In re Literary Works in Elec. Databases Copyright Litig., 509 F.3d 116, 122 (2d Cir. 2007). And recently, the Eleventh Circuit concluded that, as a result, a declaratory judgement action cannot be brought until the copyright is registered. The reason for that is that the Declaratory Judgment Act does not independently provide jurisdiction; subject-matter jurisdiction must come from some other federal statute. The test, according to the Eleventh Circuit, is whether “the plaintiff has alleged facts in a well-pleaded complaint which demonstrate that the defendant could file a coercive action arising under federal law.” Stuart Weitzman, LLC v. Microcomputer Resources, Inc., 542 F.3d 859, 862 (11th Cir. 2008); see also Standard Ins. Co. v. Saklad, 127 F.3d 1179, 1181 (9th Cir. 1997). But a copyright owner that has not received a registration cannot file a coercive action arising under federal law

It seems a rock-solid argument, albeit one that, as I’ve said previously, is “unsatisfying.” However, I’m not sure I see a way around it, as long as the test for jurisdiction is what the 11th Circuit says it is. In my previous post, I noted that copyright registration was a mere formality, like filing a complaint. But filing a complaint is different in two respects; first, the declaratory judgement plaintiff’s complaint substitutes for all of the notice and claim-stating work that would have been done by the declaratory judgement defendant’s hypothetical complaint. However, nothing in the declaratory judgement plaintiff’s complaint substitutes for the registration. Second, the presence or absence of a complaint affects only the parties and the court in that particular suit; it does not reach beyond the litigation to have an impact elsewhere. A registration, on the other hand, not only provides the declaratory judgement plaintiff and the court an indication of the scope and nature of the claimed copyright, but the world at large. Indeed, that was the original purpose behind requiring registrations, before the requirement was eliminated in 1976.

Still, as at least one district court has held, and as I expressed in my prior post, this appears to give a copyright owner control over when an alleged infringer can file a declaratory judgement action. And that would appear to defeat the purpose of declaratory judgement actions in cases where the owner has not yet registered the work. The Second Circuit has shown some willingness to bend procedural prerequisites in the past to allow declaratory judgement actions to go forward in intellectual property cases, however. In Starter Corp. v. Converse, Inc., 84 F.3d 592 (2d Cir. 1996), the Second Circuit allowed a declaratory judgement action for non-infringement of Converse’s trademark to go forward, even though Starter had not yet even begun manufacturing footwear with the disputed mark on it. It was close enough, the court held, that Starter had used the mark on other goods; that satisfied the “use in commerce” requirement under the Lanham Act. But Starter still had to show, in order to demonstrate an Article III “case or controversy” necessary to support jurisdiction, that it had “engaged in a course of conduct which has brought it into adversarial conflict with the defendant.” Converse argued that since Starter had not actually made or sold the shoes in question, no “adversarial conflict” yet existed.

The Second Circuit held that an actual case or controversy exists when the declaratory judgement plaintiff can show a “definite intent and apparent ability to commence use” of the disputed mark. That was close enough for a declaratory judgement action, even though it would not be close enough for a trademark infringement action. The court found persuasive:

the policy animating the Declaratory Judgment Act, which is to enable parties to adjudicate their disputes before either suffers great damage. Declaratory judgment actions are particularly useful in resolving trademark disputes, in order to promptly resolve controversies where the alleged owner of a trademark right threatens to sue for infringement. Accordingly, in such a case, the finding of an actual controversy should be determined with some liberality. A more restrictive view would in this case require Starter to go to substantial expense in the manufacture, marketing, and sale of its footwear, and subject itself to considerable liability for a violation of the Lanham Act before its right to even engage in this line of commerce could be adjudicated. We do not read the Act as requiring this.

If the Second Circuit adopts a similarly relaxed view of the copyright registration requirement, then even if the Garcia photograph has not been registered Fairey’s suit can go forward. If the 2nd Circuit follows the 11th Circuit, however, then Fairey may be caught in a copyright Catch-22 until the AP decides to finally register the work.

5 thoughts on “The Obama “Hope” Poster Case — A Copyright Catch-22?”

  1. I assume that if the AP owns the copyrights, they would claim registration under VA0001356885 in the Copyright Office’s database for “Group registration of an automated database entitled Associated Press news photographs published updates from 3/01/2006 to 4/30/2006.” (The image appears in the AP Images database.) My understanding of registrations of online materials is that it is not necessary to include an entire copy of the database in the application to be on file with the Copyright Office, but only 50 pages and/or records, and so it would be impossible to tell if the Obama image was actually part of the database registration.

    Whether it is legit to use database registration rather than group registration of photographs (which would have provided information on author, etc.) is another question.

  2. Thanks Peter, this is very helpful information. I figured something like this might be the explanation, but it’s interesting that the photos are getting registered as a compilation; that leaves me a little unclear on what the status of the underlying photos is. All I can see online is:

    Authorship on Application: photos: Yasmin Aboyter, Christian Abraham, Rich Abrahamson, and 1,478 others; photos, text & compilation: Associated Press, employer for hire.

    If I’m reading that right, Aboyter, Abraham, etc. are the authors of individual photos; AP is the author of the compilation, text, and perhaps other photos as works for hire. It will be interesting to see what AP submits with its answer and, I suspect, counterclaims.

  3. This question is a bit off topic — but still relates. I’ve seen alot of “HOPE” posters that have been changed to include a picture of someone other than Obama or to include a symbol, etc. Since Fairey has the copyrights for both the HOPE and PROGRESS posters, would this be considered copyright infringement? If so, why were so many allowed to be created?

  4. Fawn, great question. Jason Mazzone asked the same thing over on Concurring Opinions a little while ago.

    I haven’t thought this all the way through, but if Fairey’s poster is not infringing, I would think it’s because he didn’t borrow enough of the copyrightable expression from the photo — and relatedly, that the majority of the creative expression in the poster is Fairey’s own work. If that’s the case, then I think ironically Fairey might have a pretty good claim against at least some of the other HOPE posters, those that are not parodies. (Many of them probably qualify as parodies, however.)

    As for why he hasn’t sued, he may be waiting the outcome of the AP litigation to determine his own rights in the image. Also, litigation is expensive; it may simply not be worth the time and cost to him, even if he wins. Or, he may not care, although he has had lawyers send cease and desist letters in the past.

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