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Postage Stamps Held Not a Fair Use Where Sculptor Is Sole Author of Depicted Memorial

February 25, 2010

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Last Month at the Federal Circuit - March 2010

Judges: Newman (dissenting), Mayer, Moore (author)

[Appealed from: Court of Federal Claims, Judge Wheeler]

In Gaylord v. United States, No. 09-5044 (Fed. Cir. Feb. 25, 2010), the Federal Circuit reversed a Court of Federal Claims decision that a stamp issued by the United States Postal Service (“USPS”) made fair use of Frank Gaylord’s copyright in the sculptures constituting part of the Korean War Veterans Memorial (the “Memorial”).  The Court also affirmed that the government was not a joint author in the copyrighted work and the Architectural Works Copyright Protection Act (“AWCPA”) was not a bar to the copyright infringement suit.  The Federal Circuit remanded for a determination of damages.

Cooper-Lecky Architects, P.C. (“Cooper-Lecky”) was selected as contractor for the Memorial to honor veterans of the Korean War, and Frank Gaylord was selected as the sculptor.  The process of creating Gaylord’s nineteen sculpted soldiers constituting the Memorial involved critiques and suggestions by Cooper-Lecky, the Korean War Veterans Memorial Advisory Board (“VAB”), and the Commission on Fine Arts (“CFA”).  The final Memorial design featured nineteen stainless steel statues representing a platoon of foot soldiers in a formation referred to as “The Column.”  Gaylord is the owner of five copyright registrations for the various stages of the sculpted soldiers from clay models to the completed sculptures as arranged in The Column.  After the Memorial was installed, a photographer, John Alli, took a photograph of the Memorial covered in snow.  Specifically, Alli’s photograph depicted fourteen of Gaylord’s nineteen sculpted soldiers as arranged in The Column.  Alli obtained permission to reproduce the photograph from Cooper-Lecky, which held itself out as the owner of the copyright.  Subsequently, the USPS paid Alli for use of this photograph on a 37-cent stamp commemorating the Korean War armistice and for retail goods such as commemorative panels and framed art.  The USPS did not obtain Gaylord’s permission to use the sculptures on the stamp or in any related goods.  Gaylord sued the government for copyright infringement.

At trial, the government argued that the stamp made fair use of the copyrighted work, it had rights to use the work as a joint author, and that the stamp fell under an exclusion from liability for copyright infringement for architectural works under the AWCPA.  The trial court held that Gaylord was the sole copyright owner of The Column, and The Column did not qualify as an architectural work under the AWCPA.  The trial court, however, found that the government was not liable for copyright infringement on the ground that its use of The Column on the stamp was fair use.  Gaylord appealed.

On appeal, the Federal Circuit first addressed whether the government established fair use, applying and weighing the four nonexclusive factors listed in the Copyright Act, 17 U.S.C. § 107.  The first factor—the purpose and character of the use—focuses on whether the government’s use of Gaylord’s work was transformative, meaning whether it transformed the character, meaning, or message of the copyrighted work.  Because the Federal Circuit found that the stamp and The Column shared a common purpose—to honor veterans of the Korean War—and that the stamp’s snowy, muted depiction of The Column did not transform the character of Gaylord’s work, the Court held that the government’s use of The Column was not transformative.  Moreover, the Court noted that the government’s use was clearly commercial, the USPS having received $17 million from the sale of nearly 48 million stamps, which weighed against a finding of fair use.  Slip op. at 13.

The Court found no clear error in the trial court’s conclusion as to the second factor—nature of the copyrighted work.  The Court found that Gaylord’s copyrighted work was of an expressive and creative nature, weighing against a finding of fair use.  The fact that The Column was published “as part of a national monument—perhaps the epitome of a published work,” did not detract from the Court’s ultimate conclusion that the second factor weighed against a finding of fair use.  Id.

Regarding the third factor—the amount and substantiality of the portion used—the Federal Circuit concluded that the stamp’s depiction of fourteen of the nineteen sculpted soldiers was substantial and weighed against a finding of fair use.  The Court found that “The Column constitutes the focus—essentially the entire subject matter—of the stamp,” and the presence of snow and muted colors in the depicted image on the stamp did not change the fact that the stamp clearly depicts an image of The Column.   Id. at 14.  Thus, the Court concluded that the third factor weighed against fair use.

With regard to the fourth factor—the effect of the use upon the potential market for or value of the copyrighted work—the Federal Circuit found that the government’s stamp would not be a suitable substitute for The Column itself for one seeking to photograph or to create a derivative work.  Thus, the Court found that the fourth factor favors fair use.

Weighing the factors, the Court found that, although the stamp did not harm the market for derivative works of The Column, “allowing the government to commercially exploit a creative and expressive work will not advance the purposes of copyright in this case.”  Id. at 15.  Accordingly, the Court held that the government’s use of a depiction of The Column was not fair use.

The Court next considered whether the government had an independent right to use the copyrighted work as a joint author through the contributions of Cooper-Lecky, the VAB, and/or the CFA.  The government argued that the trial court misread the certificates of registration, failed to treat the presumption of validity as rebuttable, and erred in concluding that The Column was not a joint work. 

The Court first considered language in the certificates of registration indicating that the underlying work was “[f]ully approved by all federal commissions.”   Id. at 16 (alteration in original).  The Court concluded that such notations did not undermine Gaylord’s assertions of sole authorship because “[a]pproval—much like comment and criticism—does not amount to authorship.  Id.

Reminding that joint authorship requires an original work of authorship from each author, the Court next considered contributions by Cooper-Lecky, the VAB, and the CFA.  The Court concluded that the contributions to The Column by these entities amounted to no more than merely describing to Gaylord what the commissioned work should look like, which is insufficient for joint authorship under the Copyright Act.  Further, the Court found no clear error in the trial court’s determination that Cooper-Lecky and Gaylord did not intend The Column to be a joint work. 

Finally, the Federal Circuit considered whether the sculptures were exempt from copyright protection under the AWCPA, which exempts the making of pictorial representations of architectural works from copyright infringement.  The Court found no clear error in the trial court’s determination that The Column is not an architectural work under the AWCPA. 

For these reasons, the Court reversed the trial court’s decision with respect to fair use, affirmed its conclusions regarding joint authorship and the AWCPA, and remanded for a determination of damages.

Judge Newman dissented, stating that the Court’s holding is “contrary to the contract provisions, contrary to statute for works done in the service of the United States, contrary to copyright law, and contrary to national policy governing access to public monuments.”  Newman Dissent at 1.  In Judge Newman’s view, the United States has the right to use the memorial for governmental purposes.  Judge Newman argued that a contract between the United States and Cooper-Lecky contained provisions barring Cooper-Lecky from authorizing others to assert any claim to copyrights, suggesting that this contract would preclude Gaylord’s authorship claims to The Column.  Judge Newman also found that 28 U.S.C. § 1498(b), the statute under which Gaylord brought suit, bars copyright enforcement against the United States for works prepared in the employment or service of the United States.  Judge Newman argued that both the statutory constraints of § 1498(b) and the contractual constraints under which Gaylord was hired, worked, and was paid by the United States, unambiguously bars any action by Gaylord against the United States.

Summary authored by Katherine L. Staba, Esq.