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Allen v. Cooper, 589 US, 140 S. Ct. 994 (2020)

Sovereign Immunity and Copyright Infringement

On 23 March 2020, the US Supreme Court unanimously ruled that Congress lacked the authority to do away with state-level sovereign immunity against a copyright infringement lawsuit.  Background on the case, and implications of the ruling, follows.

Background & Facts:

In 1996, Frederick Allen (the petitioner) was hired to document a shipwreck off the coast of North

Carolina. Allen spent 20 years taking photographs and videos of the shipwreck, Queen Anne’s Revenge,

one of Blackbeard’s pirate ships which sank in the early part of the 18th century. He registered the

copyrights in the photographs and videos with the US Copyright Office. The State of North Carolina

began using his photographs and videos online without obtaining his permission. In 2013, North Carolina

entered into a settlement with Allen. However, the parties soon found themselves embroiled in a new

dispute when North Carolina posted five of Allen’s videos online and used one of his photos in a

newsletter without his permission.  He then filed a copyright infringement lawsuit against the state.

The Decision: North Carolina moved to dismiss the suit on the grounds of sovereign immunity,

namely “the general rule that federal courts cannot hear suits brought by individuals against

non-consenting States”. Notably, North Carolina’s legal argument directly challenged an early 1990s

federal law called The Copyright Remedy Clarification Act (CRCA). The CRCA removed state-level

sovereign immunity for acts of copyright infringement. In a 9-0 decision the Supreme Court found the

CRCA unconstitutional, thereby ruling in favor of the State of North Carolina and against Mr. Allen.  

The Implications: The decision has significant implications for copyright holders. At the current time,

creators and copyright holders have few to no remedies to challenge infringement by state governments,

local governments, and government entities. In its decision, the Supreme Court noted that it is possible

Congress could pass a new version of the CRCA that could stand up to a constitutional challenge—but

it remains to be seen whether that will happen.

Georgia v. Public.Resource.Org Inc., 590 US, 140 S. Ct. 1498 (2020)

Government Edicts and Copyright Protection

On 27 April 2020, the US Supreme Court ruled 5-4 that legal annotations created by state or federal legislatures are not eligible for copyright protection. Background on the case, and implications of the ruling, follows.

Background & Facts: The State of Georgia operates under an official code called the Official Code of

Georgia Annotated (OCGA). This code contains both the actual text of the statute as well as

annotations that help to explain the law. In some cases, the annotations add a considerable amount of

context. In producing and maintaining the OCGA, Georgia works directly with a private company called

LexisNexis. Notably, Georgia’s agreement granted LexisNexis the exclusive right to “publish, distribute,

and sell” the OCGA. The copyright infringement dispute arose when a private organization called

Public.Resource.Org (PRO) started reproducing and distributing the OCGA to the public free of charge,

both online and in print.  The State sued.

The Decision: In defending the suit and in its counterclaim for declaratory judgment, PRO relied upon

the government edicts doctrine, which rendered the official code ineligible for copyright protection. The

Court’s majority agreed. Chief Justice John Roberts wrote that copyright protection cannot extend to

content prepared by a legislative body because, under the  government edicts doctrine, such a body is

not an “author” of the works it creates in its official capacity—even if the content is published under

contract with a private party. Notably, the court’s decision clarified that government edicts doctrine

applies to both the text of the statute and to official annotations.

The Implications: In taking an expansive view of the government edicts doctrine, the Supreme Court

has made it far more difficult for state and local governments to obtain and maintain intellectual property

protection for any work embodying statutory, regulatory or judicially created content. In addition, the

decision extends to private companies that enter into commercial contracts to create or reproduce

official government codes.

Dr. Seuss Enterprises v. ComicMix,

Case No. 19-55348 2019 WL 5149913 (9th Cir. Dec. 18, 2020)

The Fair Use Doctrine

In yet another appeals court ruling in a case that may be well headed to the US Supreme Court, on 18 December 2020, the United States Court of Appeals for the Ninth Circuit found that a so-called “mash-up” book was not covered by the fair use doctrine. Background on the case, and implications of the ruling, follows.

Background & Facts: The book “Oh, the Places You’ll Boldly Go!” was authored by  Star Trek

episode writer David Gerrold, illustrated by Ty Templeton, edited by fellow Trekkie Glenn Hauman and

published by ComicMix (collectively, “ComicMix”). The ComicMix book was inspired by the similarly

named Dr. Seuss' work “Oh, the Places You'll Go!” The ComicMix book contained many elements

readily recognizable from the Dr. Seuss original and combined them with well-known elements of the

Star Trek television series. Dr. Seuss Enterprises L.P., which holds the copyrights in and to the works

authored by the famous children’s author, filed a copyright infringement claim against Gerrold and his


The Decision: As we reported last year, in 2019, the US district court for the Southern District of

California  dismissed the copyright infringement lawsuit on the grounds that the work was clearly fair

use. Dr. Seuss Enter. v. ComicMix, LLC, 372 F. Supp. 3d 1101 (S.D. Cal. 2019). Taking an expansive

view of the fair use doctrine, the court found that the ComicMix book was sufficiently transformative.

However, on appeal, a Ninth Circuit panel reversed the decision. The panel found that the four factors

underpinning the fair use doctrine all weighed against ComicMix. The ComicMix mash-up work was

“primarily commercial,” borrowed heavily from the original, was not a parody, in that it did not critically

comment on the original, and was not otherwise transformative in that it did not alter the original with a

new expression, meaning or message.  Therefore, it was infringing.

The Implications: This case illustrates that the fair use doctrine is a fact-specific one and that

judicial opinions on fair use can be somewhat subjective, given the lower court’s and appeals court’s

divergence. However, the Ninth Circuit appears to have taken a somewhat limited view of the works”

covered by the fair use doctrine—at least in the context of so called “mash-ups.” Also notably, the Ninth

Circuit gave significantly less leeway to the defendants because it determined that their work was

fundamentally a commercial product and not a parody.

Google LLC v. Oracle America Inc.

Appeal from 886 F.3d 1179 (Fed. Cir. 2018), US Supreme Court Docket No. 18-956

Copyright Protection and Software Interface

Oral arguments were finally heard in October, 2020 after several COVID-19-related delays in this case, in which the Supreme Court’s highly anticipated decision is expected to shed light on  the scope of copyright protection for a software interface.  As of early 2021, we are still waiting for a decision. Background on the case, and  implications of the ruling, follows.

Background: The computer language Java was originally developed by employees of Sun

Microsystems in 1990. The company was subsequently acquired by Oracle. When Google created its

Android Operating System (Android OS), it did so using its own computer language based on Java. In

other words, Google’s Android OS software interface used material elements of the Java language.

Eventually, Oracle filed a copyright infringement lawsuit against Google for the alleged unauthorized and

improper use.

The Legal Issue: The copyright dispute has been making its way through the US court system for

several years. The Supreme Court is being called on two resolve two vital questions: Does copyright

protection extend to a software interface? If not, then Oracle has no further claim. If so, then the court

must answer a second question: Does Google’s use of Oracle’s Java code to create a new language

constitute fair use under federal copyright law? It is possible that the court could issue a split

decision, finding that Oracle can own the copyright in a software interference, but that Google acted

properly under the fair use doctrine.

Implications. The stakes in this care are enormous, both for the parties, and the tech sector as a

whole. Oracle is seeking nearly $9 billion in damages from Google. Beyond that, the verdict will have

major ramifications for companies and entrepreneurs in the tech industry. Many computer programs,

software products, and software libraries are developed using existing commercial interfaces. Thus far,

two district courts have ruled in favor of Google. However, in both cases, a federal court reversed the

initial ruling and found in favor of Oracle on appeal. A decision is expected in 2021.

Hachette Book Group v. Internet Archive

Digital Library’s Right to Publish Copyrighted Content

Case No. 1:20-cv-0-4160-JGK (S.D.N.Y. 2020)

In this case, pending in the US District Court for the Southern District of New York, four major book publishers instituted a copyright infringement action against a US-based digital library. Background on the case, and implications of the ruling, follows.

Background: The Internet Archive is a major digital library. As of early 2021, the Internet Archive

hosted 28 million books, nearly 16 million audio files, 9 million shows/movies, and hundreds of billions of

web pages. It states its mission as providing “universal access to all knowledge.” Four book

publishers—the Hachette Book Group, HarperCollins, John Wiley & Sons, and Penguin Random

House— brought legal action alleging the Internet Archive is engaging in mass copyright infringement.

The complaint specifically highlights the ‘National Emergency Library’ launched by the organization in

early 2020.

The Legal Issue: The question at stake before the New York federal court is whether or not the

Internet Archive is engaged in legitimate library service. The New York book publishers are aggressive in

their complaint, they contend that the Internet Archive services “grossly exceed legitimate library

services” and that the organization’s conduct constitutes “willful digital piracy on an industrial scale.” For

its part, the Internet Archive strongly denies that its digital library violates copyright law.

The Implications:  Beyond its ‘Open Library’, the Internet Archive also announced its intention to

launch a ‘National Emergency Library’ in early 2020. The National Emergency Library was promoted as

a response to the COVID-19 pandemic. Notably, the Internet Archive decided to cease the operation of

the National Emergency Library in response to the copyright infringement lawsuit. The case has very

important implications for authors, publishers, digital library operators, and consumers in balancing the

need of copyright owners with the public’s access to content.

More information

You may learn more about the Norris McLaughlin Intellectual Property Practice Group. Should you have any questions about copyright law, or any other intellectual property needs, please contact Jeanne Hamburg, at jhamburg@norris-law.com.


2020 Year in Review: Significant US Copyright Court Rulings

Written by Jeanne Hamburg  

Norris McLaughlin, P.A.

In 2020, the Supreme Court issued two copyright opinions, and several other important cases are winding their way through the courts. The high court  ruled in favor of sovereign immunity for states, and that legal annotations were not protectible under the copyright law, decisions that we reported last year were highly anticipated. We will have to wait another year for the Supreme Court’s decision on the scope of copyright protection for a software interface. In a closely watched case which we also reported on last year, an appeals court found that a derivative work combining elements of Dr. Seuss’ famous children’s storybook with the Star Trek series was not covered by the fair use doctrine. Finally, a closely watched suit involving publishers’ copyright claims against a US based digital library was filed and is pending in the US district court for the Southern District of New York. A summary of these cases follows.


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Jeanne Hamburg


Jeanne Hamburg Jeanne Hamburg concentrates her practice in all aspects of copyright and trademark law. Resident in Norris McLaughlin’s New York City office, she assist clients in a broad range of industries with her intellectual property needs, but most notably in the media, entertainment, and publishing fields. In each year since 2009, Jeanne has been recognized as a New York Super Lawyer. The firm is ranked in the Media Law International 2021 United States Tier 1 List, the comprehensive guide of leading media law firms and practitioners across 56 jurisdictions. In the transactional area, Jeanne is experienced in trademark and copyright licensing, traditional print and online publishing, software development, website developments, content licenses, and electronic subscriptions. She has litigated high-profile copyright cases, including on that attracted the attention of the US Copyright Office and one involving the claims of a world-renowned artist seeking to prevent the sale of her incomplete works by a major New York auction house. In both intellectual property and media law matters, Jeanne represents or has represented the largest online publisher of Jewish content  in North America, several magazine and newspaper publishers, a well-known university press, a large STM publisher, the owners of a world-famous video game, and a New York-based creative agency collaborating on an immersive project with a renowned photographer.


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