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Nick added a comments feature to this blog. Feel free to take advantage of your opportunity to talk to us. Thanks, Nick.


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We return to our interview with Jonathan Pink>, partner at Lewis Brisbois Bisgaard & Smith. Jonathan Pink represented the defendants in Marketing Information Masters, Inc. v. The Board of Trustees of the California State University System, et. al. (06cv 1682 JAH, SDCA February 5, 2008).

Minow: Your case about the copyright immunity of a state university has attracted a lot of attention (see Slashdot).

Here are a couple of follow up questions. When is a state employee acting in an “official” capacity (and thus enjoying state immunity) versus an “individual” capacity (and thus facing copyright liability)?

Pink: The Supreme Court has said that a state official who violates federal law “is in that case stripped of his official or representative character and is subjected in his person to the consequences of his individual conduct.”  Ex parte Young, 209 U.S. 123, 160 (1908).  Translated, this means that where the actions undertaken by the state official violated the plaintiff’s federally protected rights, the official may be held personally liable in his or her individual capacity. 

In Marketing Information Masters, I intend to establish that the professor never violated the plaintiff’s federally protected rights, and thus cannot be held individually liable for the claims asserted.  The Court has not yet ruled on this issue.  It has only ruled that the University and the professor acting in his “official” capacity are entitled to immunity under the 11th Amendment. 

The fact that the Court left open the question of whether the professor can be held liable in his “individual” capacity, however, highlights what I believe is a logical flaw in applying Ex Parte Young to a case such as this one. It makes no sense to say that a professor acting within the course and scope of his or her employment may be stripped of 11th Amendment protection anytime the underlying claim is established, and that protection exists only where the underlying claim fails.  That would effectively render meaningless the protection afforded a professor in his or her “official” capacity, and would run contrary to established agency law.  I can’t imagine any policy underpinning that would support such a ruling.

Moreover, most of the cases that followed Ex Parte Young are factually distinct from the Marketing case.  Most of those cases involved Civil Rights actions where there is sound public policy in favor of  protecting the public from, say, rogue police officers.  The one case to discuss the Ex Parte Young rule in a copyright context (Richard Anderson Photography v. Brown, 852 F.2d 114 (4th Cir.1988)) provided little-to-no analysis on this issue, and is of little help in navigating these waters. Because of this, I’ll argue that Ex Parte Young and its progeny should not apply here.  I suspect this will be the next big fight in this case. 

Minow: Assuming agency law prevails, is it not best for the university to have a generous policy, if they want to shield their employees?

On the other hand, it seemed the court was influenced by the overall university’s lack of record of infringement… so if a university had an irresponsible (where’s the line between generous and irresponsible?) copyright policy that allowed too much, could that tip the other way?

Pink: Many states, including California, have statutes requiring the state to pay damage awards levied against state officials for acts performed in the course of their official duties. (Calif. Gov. Code Section 825.)

It does appear that the Court considered the absence of any pronounced history of State-sanctioned infringement when ruling that the Copyright Remedy Clarification Act of 1990 was unconstitutional.  While the plaintiff asked the Court to imagine a world where State-operated academic institutions transgressed copyright laws with complete impunity, I think the Court recognized that this was not the reality.  The Court also recognized that Congress apparently had little evidence of such abuse when it decided to enact the CRCA.  

Minow: Do local government and its employees enjoy copyright immunity?

Pink:  By enacting the CRCA, Congress intended to subject States to suit for copyright infringement.  If the CRCA is invalidated, the Eleventh Amendment would again bar a suit for copyright infringement against the States and their officials when acting in their official capacity.  If a local government can be categorized as an instrument of the State, I would suspect that a good argument could be made that it too enjoys the same immunity.  

Minow: Do you know if the case will be appealed?

Pink: The plaintiff has promised to appeal the Court’s invalidation of the CRCA.  From my perspective, this would be a waste of time, money and judicial resources.  While the Supreme Court has never directly ruled on this issue, the Court has already invalidated Congress’ efforts to subject the States to patent and trademark infringement claims based on statutes nearly identical to the CRCA. These are Florida Prepaid v. College Savings Bank, 527 U.S. 627 (1999)and College Savings Bank v. Florida Prepaid Postsecondary Education Expense Fund, 527 U.S. 666 (1999). The Court has also intimated that the CRCA does not pass constitutional muster when remanding Chavez v. Arte Publico Press, 517 U.S. 1184 (1996) for a ruling consistent with the holdings in Florida Prepaid and College Savings Bank.   

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Minow:What recommendations by the Section 108 Study Group would really help libraries, museums and archives if adopted into law?
Hirtle: Most of the recommendations from the group could help libraries, archives, and museums, but four stand out to me.
First, the report argues that at least some museums should be included in the section.That is not currently the case.
Second, the report proposes that there be a broad preservation exemption for published materials.It is possible that having explicit permission to preserve in Section 108 might reassure some libraries that are reluctant to preserve under the more ambiguous provisions of fair use.
Third, the provisions that grant libraries, archives, and museums explicit permission to do some of the things that the Internet Archive does under the umbrella of fair use may also be helpful.
Lastly, the recommendations address many of the absurdities in the current law.Here are two examples:
*Under current law, if a library made a replacement copy of an audio CD, it would no longer be able to loan that CD to its patrons (because digital replacement copies are restricted to the premises of the library – and audio CDs are digital).
*Certain preservation and replacement provisions limit the library to making three copies.This makes sense when you are talking about microfilm, but doesn’t make much sense when you are dealing with digital copies.
Minow: Anything that could hurt libraries, museums and archives?
Hirtle: There is always the danger that providing explicit permission for certain actions could imply that other actions outside the scope allowed in the section are suspect.Section 108 should never be a ceiling on what is acceptable except in those cases where it goes beyond what other sections, such as fair use, would allow.
The biggest threat will occur when 108 is opened for legislative amendment.The Study Group received proposals from many interest groups that would be very problematic for libraries, archives, and museums.I am thinking in particular of the suggestions that international ILL be banned and that libraries would need to determine if an article was available for sale from the publisher prior to making an ILL request.Most libraries would welcome the opportunity to purchase copies of articles from publishers rather than having to go through the ILL system if the cost was roughly comparable, but few I suspect would like to have it as a legal requirement.While these recommendations were not included in the final report, interest groups that know how to work the system may try to add them to 108 during the legislative process.
Minow:Tell us about the process the Committee went through. Was there screaming?
Hirtle: No screaming, though there were often strong differences of opinions.I was particularly impressed by the participation of the rights holders.It would have been very easy for them to have turned their back on the whole process and not consider at all any expansion of actions that could be interpreted as infringing on the exclusive rights of the copyright owner.They, however, recognized that the preservation and the maintenance of the historical record are very important and worked hard to try to identify those areas where libraries, archives, and museums could take action in a manner that would not hurt their interests.The future markets for digital delivery are so uncertain, however, that it was difficult to reach agreement on broad terms – there was an understandable fear of possible unintended consequences of any change to copyright law.
In the end, the 108 process for me confirmed Jessica Litman’s conclusions from her study of previous copyright revisions.Negotiated agreements among current stakeholders, she noted, while producing legislation that can be implemented, are unlikely to produce statutes that are flexible enough that they improve with age.
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Hi Friends,

The state of Oregon has claimed copyright on the Oregon Revised Statutes and sent a cease and desist letter to Justia, with a threat of litigation if they were not removed or licensed. You can read more about this on the Justia Blog “Cease, Desist & Resist – Oregon’s Copyright Claim on the Oregon Revised Statutes” as well as Tim Armstrong’s post “Can States Copyright Their Statutes?” on Info/Law and William Patry’s post “Oregon goes wacka wacka huna kuna” on the The Patry Copyright Blog and Sam Bayard’s post “Oregon Claims Copyright in Its Statutes — Well, Sort Of” on the Citizen Media Law Project Blog. And there have been a additional posts on other blogs.
We are talking with Oregon early next week and will let you know how it goes. 
Onward & Peace,
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Quick conversation with Jonathan Pink, partner at Lewis Brisbois Bisgaard & Smith

Minow: Could you tell us about the new decision about the state university professor who was sued for copyright infringement?

Pink: The case is Marketing Information Masters v. The Trustees of the California State University.[.pdf] For several years prior to the suit, the Pacific Life Holiday Bowl had hired Marketing Information to calculate the fiscal impact the Holiday Bowl (college football game) had on the City of San Diego. When Marketing Information tripled its fee, the Holiday Bowl hired San Diego State University to conduct the 2004 survey, but instructed the school to follow the format of earlier years.

When San Diego State delivered its 2004 report to Pacific Life, Marketing Information obtained a copy and cried foul. Marketing Information alleged that in creating the 2004 report, the school and one of its professors had copied large portions of Marketing Information’s 2003 report.

The Trustees and the professor filed a motion to dismiss, claiming that the Eleventh Amendment provided them with immunity to a claim for copyright infringement. While Marketing Information argued that the Eleventh Amendment did not apply because Congress passed the Copyright Remedy Clarification Act which expressly provided that “[a]ny State, instrumentality of a state… or employee of a State or instrumentality of a State… shall not be immune, under the Eleventh Amendment” to a suit for copyright infringement. 17 U.S.C. section 511(a), the defendants argued that the Clarification Act was an invalid exercise of Congress’s power.

The District Court agreed with the defendants, finding that the Copyright Remedy Clarification Act “was not passed pursuant to a valid exercise of [Congress’s] Fourteenth Amendment enforcement powers,” and “does not constitute a valid abrogation of state sovereign immunity.”

In short, the Court invalidated the Copyright Remedy Clarification Act as unconstitutional, thus ruling that a State, employee of a State (acting within his or her official capacity) or instrumentality of a State cannot be held liable for copyright infringement.

Minow: Do all state employees have immunity for copyright infringement?

Pink: No. The Court’s ruling only applies to state employees acting within their “official capcity.” This gets a little tricky because a state official who has acted in violation of federal law will be stripped of his or her “official” character and will not be immune to suit under the 11th Amendment. Thus, for example, in the Marketing case, plaintiff may not seek damages against the professor in his official capacity as that it would violate the state’s sovereign immunity under the 11th Amendment, but the professor likely would be “stripped of his official or representative character” and would be “subjected in his person to the consequences of his individual conduct” if plaintiff can show that the professor violated plaintiff’s federally protected copyright. In other words, a state employee will be subjected to suit in his or her individual capacity even though he or she had been acting as an agent of the State if it is shown that the employee’s conduct was ultra vires his or her delegated authority, e.g. by violating a federal law.

Note: Justia is sponsoring Marketing Information Masters as a featured case. (Thanks, Nick.) 

UPDATE: Interview Follow-Up with Jonathan Pink HERE


Jonathan Pink represented the defendants in Marketing Information Masters, Inc. v. The Board of Trustees of the California State University System, et. al. (06cv 1682 JAH, SDCA February 5, 2008). Pink is a partner at Lewis Brisbois Bisgaard & Smith.

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Quick conversation with Erika V. Wayne, Deputy Director of the Stanford Law Library and Lecturer in Law.
Minow: Erika, what are your thoughts as a law librarian about the role of law students in suppressing the use of free legal sources, such as court cases and laws that are clearly in the public domain.
Wayne: Authors of law journal articles, like many authors, rely on the vast array of online resources to write and research their works. Yet the student editors on law school journals typically insist on citing to the hard copy of the commercial sources. This is due to the preferences laid out in the Bluebook.
So silly really — student editors insisting on getting their hands on paper copies of sources that the original authors almost certainly only used in e-form — a fiction. What is so tricky and painful for a lot of law libraries is that we end up purchasing certain sources in hard copy only to support this. Indeed, our own faculty and students, when not wearing their editor-hats, will almost all go to the online versions for their own research.
Minow: Who actually writes the Bluebook that imposes the print sources requirement?
Wayne: It’s the students who create the Bluebook – that is the law journal editors at a few top schools.
Minow: What would be your recommendation to law students, and Bluebook editors in particular?
Wayne: The editors could easily loosen the citation preferences and give equal weight to online sources.
All of this being said: the Bluebook isn’t a court’s citation guide. Lawyers practicing in a given court need to comply with a court’s citation rules. The Bluebook is really just a guide or standard for law journals.
But if we talk about changing the way courts and legislatures open up, accept and provide free legal information — about providing new lower cost alternatives for research — the student editors of the Bluebook could lead the charge and rewrite the fiction of citing to paper sources and help train the next crop of lawyers to look to the newer or free legal resources, by giving them the same authority as the traditional commercial research services.