An erroneous copying of a judicial opinion led the Seventh Circuit to reverse a decision about an erroneous copying of a portrait.

Jesus Muhammad‐Ali, the grandson of deceased Nation of Islam leader Elijah Muhammad, painted a portrait of the current leader, Louis Farrakhan, at his request.  Ali registered a copyright of that commissioned portrait in 1986.

The Final Call, a publication affiliated with the Nation of Islam, sold more than one hundred lithographs of Ali’s portrait of Farrakhan over several years.  Ali eventually sued The Final Call for copyright infringement.  Before trial and in response to a motion to strike its affirmative defenses, The Final Call relinquished its affirmative defenses and advised the court it would argue that Ali could not “establish [his] own burden” of proving the copies were unauthorized.

At trial, The Final Call’s sole witness confirmed there was no corporate relationship between Farrakhan and The Final Call, that Farrakhan had not been acting on behalf of The Final Call in commissioning the portrait, and that The Final Call had no evidence that Ali authorized the creation or sale of the lithographs.

The United States District Court for the Northern District of Illinois concluded that, no matter which party had the burden of proving the prints were authorized, the facts demonstrated that Ali authorized the making of the lithographs.

The Seventh Circuit reversed.  That Court noted that, to establish copyright infringement, Ali was required to prove only two elements: “(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original.”  It cited Peters v. West, 692 F.3d 629, 632 (7th Cir. 2012) for this blackletter statement of law.  The parties did not dispute that Ali proved both elements, but Ali did not prove that the copying was unauthorized.

The district court had relied on the Seventh Circuit’s 2013 decision in Hobbs v. John, 722 F.3d 1089 (7th Cir. 2013), which misquoted the Seventh Circuit’s 2012 holding in Peters by adding an additional requirement to prove “unauthorized copying.”  Hobbs states:  “To establish his copyright infringement claim, Hobbs must prove ‘(1) ownership of a valid copyright; and (2) unauthorized copying of constituent elements of the work that are original.’  Peters, 692 F.3d at 632.”  Hobbs, 722 F.3d at 1094 (emphasis added).  The standard established in Peters did not contain the word “unauthorized.”  In reversing the district court’s decision, the Seventh Circuit acknowledged:  “We take some responsibility for the mix‐up here, in light of the mistranscription of the standard for a prima facie case of copyright infringement that appears in our opinion in Hobbs.”

The Seventh Circuit concluded that the district court also erred by crediting defenses that The Final Call had waived.  Since there was no evidence of a written or oral license, the district court considered the defense of an “implied license” to reproduce the lithographs.  The Seventh Circuit rejected that defense, primarily because there was no evidence that Ali intended The Final Call to copy and distribute his work.  The district court also considered the “first-sale” defense, according to which once a copy has been sold, the acquirer may sell it again without the permission of the copyright owner.  The Seventh Circuit rejected that defense because The Final Call did not assert it, much less provide any evidence support it.

This case is of interest to practitioners defending against copyright infringement claims.  In particular, if a party wishes to assert a valid defense against such a claim by alleging that it had a license – even an implied license – it must be prepared to meet the evidentiary burdens in asserting that defense.1  In order to make out a prima facie case of copyright infringement, a plaintiff need only prove that it owns a valid copyright in a work and that defendant copied constituent elements of the work.  The burden to prove that the copying was authorized – and therefore asserting an affirmative defense that a license exists – always lies with the defendant,2 despite the cases that characterize infringement as “illicit copying” or “improper appropriation.”

1. Although The Final Call ultimately asserted no affirmative defenses (as it waived its implied license defense at the pretrial conference), the court assessed the merits of the alluded-to defense, anyway.  In doing so, the court noted that The Final Call met none of the elements of alleging an implied license was present, even though the district court found that Ali had authorized the making of lithographs “no matter which side bore the burden of proof.”  Though the Seventh Circuit questioned the District Court’s rationale in reaching that finding, it reiterated that The Final Call did not present any evidence to satisfy the other two elements of an implied license defense.
2. In clarifying the district court’s reliance on an “unclear or erroneous” pattern jury instruction used in the Seventh Circuit, the Court of Appeals noted that there are two methods that a plaintiff can prove copying:  (1) “that defendant had the opportunity to copy the original” (i.e., “access”); and (2) “that the two works are ‘substantially similar,’ thus permitting an inference that defendant actually did copy the original.”  Peters, 692 F.3d at 633.   In this case, the district court relied on a Seventh Circuit pattern jury instruction which noted that the jury “may consider evidence that defendant’s work was created independently of Plaintiff’s copyrighted work [or that Defendant had authority from Plaintiff to copy Plaintiff’s work].”   The court criticized this pattern instruction as “either erroneous or at the very least misleading,” since it improperly places the burden of proving the existence of a license on the plaintiff.