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Prisoner Can’t Sue US for Copyright Infringement (Contractors Beware)

By Elizabeth T. Russell • Jan 12th, 2009 • Category: Intellectual Property Law, Newest Post

Robert W. was an inmate at the United States Prison Leavenworth. While there, he was assigned to work for Federal Prison Industries, Inc. (FPI), a US government-owned corporation that produces, sells and distributes various products. In the course of his duties for FPI, and using government-furnished computers, Robert W. developed and produced desk-blotter calendars for the years 2000 and 2001-2002.

In 2001, Mr. W. sued the government for infringing his copyright in the calendars. The lawsuit was initially dismissed because he had not registered his copyright with the US Copyright Office. (Remember: registration is a prerequisite to bringing suit [17 USC sec. 411(a)].

Mr. W obtained counsel, registered, and tried again in 2005.

This time, the suit was dismissed (United States Court of Appeals for the Federal Circuit, January 8, 2009) under a provision of law that prohibits copyright suits against the government by certain persons. The statute in question is 28 USC sec. 1498(b), and the provision that ultimately kicked Mr. W out of court states:

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

Mr. W said this statute shouldn’t apply to him, since it’s been clearly established that prisoners are not “employees” of the US government. The court acknowledged that in other contexts (e.g., the Clean Air Act and the Fair Labor Standards Act), prisoners are not employees. Nonetheless, the court noted, “[i]t does not automatically or necessarily follow, however, that prisoners are not ‘employees’ under [section] 1498(b) for purposes of suing the United States for copyright infringement.” Having raised it, the court then sidestepped that question, finding that whether or not he was an “employee,” Mr. W was indisputably in the “service” of the United States.

Mr. W argued that “employment” and “service” mean the exact same thing in this statute, in part because the second clause (after the clause highlighted in red, above) refers to “the employee.” The Federal Circuit disagreed, reminding us that, “[w]hen Congress uses different parallel words in the alternative in the same statutory provision, it is reasonable to assume that the words have different meanings.”

So the court concluded that Congress intended the two terms (”employment” and “service”) to have “different, although related, meanings.” Mr. W was clearly in the “service” of the United States; therefore his lawsuit failed.

OK, so not good news for prisoners — but what effect might this decision have on artists and others who perform work for the United States as contractors?

The intent of this court, clearly, is to limit infringement suits against the government. The door is now wide open for a future holding that prisoners are, in fact, “employees” in the copyright context. As for non-prisoners, this decision drops a one-sentence bomb that similarly leaves the door open for limiting one’s right to sue the government for infringement: on page 5 the Federal Circuit states, “[o]ne may have a ’service’ relationship with the federal government that does not constitute an ‘employment’ relationship.

Danger, contractors. Danger.

Elizabeth T. Russell is a solo practitioner with her own firm, Russell Law. Attorney Russell self describes her firm as "Legal Services for Creative People" focusing on Intellectual Property issues, specifically Copyright and Trademark law for businesses and individuals. You can contact Beth at: Phone: (608) 833-1555 E-mail: Website: www.erklaw.com Address: 402 Gammon Place, Suite 270, Madison, WI 53719
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