“12th Man” lawsuit may reveal if states are ever liable for copyright infringement. CANADA HOCKEY v. TEXAS A&M

United States copyright law grants the creator of a new work the exclusive right to reproduce, distribute, perform, display, transmit and prepare derivative works based on the copyrighted work. A creator is granted a copyright when they create a copyrighted work. A copyright can be registered with The United States Copyright Office to strength the rights associated with it, however registration is not required for a copyright to be granted. If someone other than the copyright owner attempts to exercise one of the exclusive rights granted by copyright law, that can be considered copyright infringement. A copyright owner can file a complaint with a court to stop copyright infringement with an injunction and to get monetary damages for infringement which has already occurred.

In the United States a copyright is one of several legal concepts which shape the outcome of lawsuits. Another important legal concept is sovereign immunity. Sovereign immunity is the principle that a government cannot be sued unless the government consents to be sued. In the case of copyright infringement, the federal government has specifically waived its immunity from copyright infringement lawsuits under 28 USC 1498(b), but the penalties a copyright plaintiff can recover are extremely limited. When state governments are involved the answer is not so clear. The Copyright Remedy Clarification Act (“CRCA”), at 17 U.S.C. 511(a) tries to make state governments liable for copyright infringement. The United States Supreme Court held in ALLEN v. COOPER, GOVERNOR OF NORTH CAROLINA, 18-877 (U.S. 2020) that the CRCA had not validly abrogated state actors’ Eleventh Amendment sovereign immunity for all instances of copyright infringement. While the Supreme Court’s opinion did confirm that states are not always liable for copyright infringement, it stopped short of saying that states are never liable for copyright infringement. The question then becomes can a state ever be liable for copyright infringement?

The question of whether states can ever be held liable for copyright infringement is a central point in CANADA HOCKEY v. TEXAS A&M UNIVERSITY, 4:20-cv-03121 (5th Cir 2021).

Plaintiff in this case is a prolific creator of sports related biographies. Plaintiff was particularly fascinated with the “12th Man” of the Texas A&M University (TAMU) football team. The story of the “12th Man” focuses on a man named E. King Gill who was a “squad player” in 1922 for TAMU —a player who helps the members of the team practice, but does not himself play in games. During a pivotal game, a key player was injured, Gil came down from the bleachers to stand in for that player. TAMU won the game and Gil became a hero. Plaintiff devoted over 1,500 hours to researching, writing, and editing a book about Gil. In that time Plaintiff interacted frequently with members of Defendant’s Athletic Department. At some point employees of Defendant were given a pre-publication copy of Plaintiff’s book. Defendant took its copy of the book, changed the title, removed any mention of Defendant’s copyright to the book and made it available on the internet for a fee. The market for Plaintiff’s unpublished book essentially evaporated.

On January 19, 2017, Plaintiffs sued Defendant for a variety of claims including direct copyright infringement. Defendant moved to dismiss based on a number of theories. The District Court dismissed the case on the basis that TAMU was entitled to sovereign immunity as an arm of the State of Texas. Plaintiff appealed that decision to the Court of Appeals for the Fifth Circuit.

Plaintiff’s main argument on appeal is that this is not merely copyright infringement. Plaintiff’s work was unpublished. Defendant’s publication of the book to the target consumer for the book (i.e. TAMU fans) destroyed any market for Plaintiff’s work. Because of these facts, Plaintiff argues that Defendant’s action should be considered a governmental taking, or something beyond mere copyright infringement.

Plaintiff makes a strong argument in its favor. Whether or not the argument is strong enough to persuade the Fifth Circuit has yet to be seen.

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