Korean War Memorial Copyright Infringed By U.S. Postal Service

From 1990 to 1995, Gaylord received five copyright registrations relating to his soldier sculptures, each listing him as sole author. On May 1, 1995, shortly after the statues were installed, Gaylord received a copyright registration certificate for the soldiers as they appeared before and after casting, including photographs of the installed sculptures. Gaylord was paid $775,000 for the sculptures.

In 1995 and 1996, photographer John Alli took pictures of the Memorial at various times of year and day. In January 1996, after a snowstorm, Alli took numerous photographs of the Memorial and the soldiers. He chose one of those photos containing 14 of the 19 soldiers, depicted on a cold snowy day, as a retirement gift for his father. Because Alli wanted to sell prints of his photos, he sought out the copyright owner in the underlying work. He located Mr. Lecky of Cooper-Lecky, who told Alli that he was the “outright” owner of the copyright. Alli agreed to pay an entity established by Lecky a 10% royalty on the sales of the prints. Neither Alli nor Lecky notified Gaylord of this agreement.

In 2002, the Postal Service decided to issue a stamp commemorating the 50th anniversary of the Korean War armistice. It chose Alli's photograph for the stamp and paid him $1,500. Alli referred the Postal Service to Lecky for permission from the owner of the underlying work. The Postal Service did not seek Gaylord's permission. It produced about 87 million stamps, selling nearly 48 million stamps and receiving more than $17 million in revenue. It also sold the stamps to collectors and sold goods such as commemorative panels and framed art featuring the stamp.

When Gaylord sued Alli for copyright infringement in 2006, Alli settled with Gaylord for 10% of Alli's net sales. Gaylord also sued the government for copyright infringement in the Court of Federal Claims for the Postal Service's use of the image on the stamp and other goods. The court held that Gaylord was the sole author of the copyright to the sculptures and that The Column was not an architectural work under the Architectural Works Copyright Protection Act (“AWCPA”), which contains an infringement exemption for photographs of buildings located in or visible from a public place. 17 U.S.C. ' 120(a). However, the court agreed with the government that use of the image on the stamp was a “fair use” under copyright law and not an infringement. Gaylord v U.S., 85 Fed. Cl. 59 (2008).

On appeal, the Federal Circuit concluded that Gaylord's copyright was valid, he was the sole author of The Column, the stamp copied original elements of The Column, and the government could not establish that it had made fair use of the image on the stamp.

Evaluating a Claim of Fair Use

To evaluate a claim of fair use, courts weigh four factors from the Copyright Act: 1) the purpose and character of the use, whether it is commercial or for nonprofit educational purposes; 2) the nature of the copyrighted work; 3) the amount and substantiality of the copied portion to the copyrighted work as a whole; and 4) the effect of the copy on the potential market for or value of the copyrighted work. 35 U.S.C. ' 107. If a use is “transformative,” in that it alters the original work “with new expression, meaning, or message,” fair use is more likely to be found.

The Federal Circuit's Analysis

The Federal Circuit focused on the purpose and character of the stamp, not on Alli's photograph, in determining that the use was not transformative. As both the stamp and The Column shared the same purpose of honoring Korean War veterans, the stamp did not incorporate The Column into a larger commentary or criticism or biographical work and did not impart a different character to the work, the stamp was not transformative of The Column.

The court also found that the use was commercial in nature, the underlying work was expressive and creative, the work was published, and a substantial number of the soldiers in The Column were used in the stamp. The only factor not weighing in Gaylord's favor was the stamp's low impact on the value of The Column and potential market for derivative works, in that the stamp was not a suitable substitute for The Column itself. Accordingly, the court held that the stamp was not a fair use.

Furthermore, the government did not have a right to joint authorship of The Column through the contributions of Cooper-Lecky, the VAB and the CFA, whose suggestions, comments and criticisms did not amount to authorship because they were not independently copyrightable contributions to the work. None of the other features created by Cooper-Lecky for the Memorial appeared in Gaylord's copyright registrations or in the image on the stamp. Gaylord translated the competing and conflicting ideas, comments, and suggestions made by Cooper-Lecky, the VAB, and the CFA into his copyrightable expression of the soldiers. The Federal Circuit noted that merely describing to a sculptor what a commissioned work should look like is not an act of joint authorship.

Gaylord's copyright registrations were entitled to a prima facie presumption of validity that the government did not rebut. The fact that he included the language “fully approved” or “fully approved by all federal commissions” in his description of the nature of his authorship in some of his copyright applications did not undermine his sole authorship of The Column. Approval, like comment and criticism, is not authorship.

The Federal Circuit also noted that the parties never intended to create a joint work. Cooper-Lecky and Gaylord agreed prior to casting the statues in their final form that Gaylord was the copyright owner and that they would make a separate contract under which Cooper-Lecky would pay royalties for licensing rights to Gaylord's work. As Gaylord was not a party to Cooper-Lecky's contract with the government, The Column was not a work made for hire and Gaylord did not create the work using government time, material or facilities, the government did not have a contractual or statutory right to use Gaylord's work in the stamp.

Lastly, the Federal Circuit concluded that because it is not a “humanly habitable structure” The Column does not fall within the definition of an “architectural work” under the AWCPA, as it is not “a building, architectural plans or drawings.” 17 U.S.C. ' 120. The court sent the case back to the Court of Federal Claims to determine a damage award for Gaylord.

The Dissent

Judge Pauline Newman filed a lengthy dissent, contending that the stamp was a fair use of a photograph of “a public monument that was designed and built with public money” and was “unambiguously covered by the contract and statutes under which this Memorial was built.”

Gaylord brought his suit under 28 U.S.C. ' 1498(b), which provides that an action in the Court of Federal Claims can be brought “whenever the copyright in any work protected under the copyright laws of the United States shall be infringed by the United States.” That provision contains an exception “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. '” The statute requires both “employment or service” and a work prepared either in the employee's “official function” or for which government resources were used. The Federal Circuit majority appears to have interpreted “in the ' service of the United States” to be the equivalent of producing a work for hire. As none of the parties briefed or argued the issue of the coverage of ' 1498, the majority refused to consider the exemption issue.

The dissent relied on Walton v. United States, 551 F.3d 1367 (Fed Cir. 2009) for the conclusion that Gaylord was in the “service” of the United States when he created The Column and that such “service” was sufficient to exempt the government from infringement, whether or not government resources were used. However, in Walton, a federal prisoner was paid by a government corporation to create desk blotter calendars for government agencies, using government-furnished computers as part of his assigned duties within a government facility. As Gaylord did not use government resources to create his statues, the exception does not appear to apply here, whatever “service” means.

Judith L. Grubner, a member of this newsletter's Board of Editors, is a partner in the IP Practice Group of Arnstein & Lehr LLP and can be reached at [email protected].

The U.S. Court of Appeals for the Federal Circuit has held the U.S. Postal Service liable for copyright infringement for its use on a postage stamp of an image of a number of sculptures created by Frank Gaylord for the Korean War Veterans Memorial (the “Memorial”). Gaylord v. United States , 595 F.3d 1364 (Fed. Cir. 2010).

In 1986, Congress passed legislation to erect a memorial to honor Korean War veterans. The American Battle Monuments Commission sponsored a contest to select a designer for the Memorial. Although a team from Pennsylvania State University won the contest with its proposal to create 38 larger-than-life granite soldiers in formation, that team withdrew from the project. Cooper-Lecky Architects, prime contractor for the creation, construction, and installation of the Memorial, held a further competition to select a sculptor. Gaylord won that competition and began work in 1990 on the final design, featuring 19 stainless steel statues of foot soldiers in formation, known as “The Column.”

Gaylord created successively larger models of the soldiers, incorporating critiques and suggestions by Cooper-Lecky, members of the Korean War Veterans Memorial Advisory Board (“VAB”), and the Commission on Fine Arts (“CFA”). The finished Memorial also included landscaping, a mural, a reflecting pool, and granite plates representing the reflection of rice paddies at the soldiers' feet. Gaylord did not contribute to those aspects of the Memorial.

From 1990 to 1995, Gaylord received five copyright registrations relating to his soldier sculptures, each listing him as sole author. On May 1, 1995, shortly after the statues were installed, Gaylord received a copyright registration certificate for the soldiers as they appeared before and after casting, including photographs of the installed sculptures. Gaylord was paid $775,000 for the sculptures.

In 1995 and 1996, photographer John Alli took pictures of the Memorial at various times of year and day. In January 1996, after a snowstorm, Alli took numerous photographs of the Memorial and the soldiers. He chose one of those photos containing 14 of the 19 soldiers, depicted on a cold snowy day, as a retirement gift for his father. Because Alli wanted to sell prints of his photos, he sought out the copyright owner in the underlying work. He located Mr. Lecky of Cooper-Lecky, who told Alli that he was the “outright” owner of the copyright. Alli agreed to pay an entity established by Lecky a 10% royalty on the sales of the prints. Neither Alli nor Lecky notified Gaylord of this agreement.

In 2002, the Postal Service decided to issue a stamp commemorating the 50th anniversary of the Korean War armistice. It chose Alli's photograph for the stamp and paid him $1,500. Alli referred the Postal Service to Lecky for permission from the owner of the underlying work. The Postal Service did not seek Gaylord's permission. It produced about 87 million stamps, selling nearly 48 million stamps and receiving more than $17 million in revenue. It also sold the stamps to collectors and sold goods such as commemorative panels and framed art featuring the stamp.

When Gaylord sued Alli for copyright infringement in 2006, Alli settled with Gaylord for 10% of Alli's net sales. Gaylord also sued the government for copyright infringement in the Court of Federal Claims for the Postal Service's use of the image on the stamp and other goods. The court held that Gaylord was the sole author of the copyright to the sculptures and that The Column was not an architectural work under the Architectural Works Copyright Protection Act (“AWCPA”), which contains an infringement exemption for photographs of buildings located in or visible from a public place. 17 U.S.C. ' 120(a). However, the court agreed with the government that use of the image on the stamp was a “fair use” under copyright law and not an infringement. Gaylord v U.S., 85 Fed. Cl. 59 (2008).

On appeal, the Federal Circuit concluded that Gaylord's copyright was valid, he was the sole author of The Column, the stamp copied original elements of The Column, and the government could not establish that it had made fair use of the image on the stamp.

Evaluating a Claim of Fair Use

To evaluate a claim of fair use, courts weigh four factors from the Copyright Act: 1) the purpose and character of the use, whether it is commercial or for nonprofit educational purposes; 2) the nature of the copyrighted work; 3) the amount and substantiality of the copied portion to the copyrighted work as a whole; and 4) the effect of the copy on the potential market for or value of the copyrighted work. 35 U.S.C. ' 107. If a use is “transformative,” in that it alters the original work “with new expression, meaning, or message,” fair use is more likely to be found.

The Federal Circuit's Analysis

The Federal Circuit focused on the purpose and character of the stamp, not on Alli's photograph, in determining that the use was not transformative. As both the stamp and The Column shared the same purpose of honoring Korean War veterans, the stamp did not incorporate The Column into a larger commentary or criticism or biographical work and did not impart a different character to the work, the stamp was not transformative of The Column.

The court also found that the use was commercial in nature, the underlying work was expressive and creative, the work was published, and a substantial number of the soldiers in The Column were used in the stamp. The only factor not weighing in Gaylord's favor was the stamp's low impact on the value of The Column and potential market for derivative works, in that the stamp was not a suitable substitute for The Column itself. Accordingly, the court held that the stamp was not a fair use.

Furthermore, the government did not have a right to joint authorship of The Column through the contributions of Cooper-Lecky, the VAB and the CFA, whose suggestions, comments and criticisms did not amount to authorship because they were not independently copyrightable contributions to the work. None of the other features created by Cooper-Lecky for the Memorial appeared in Gaylord's copyright registrations or in the image on the stamp. Gaylord translated the competing and conflicting ideas, comments, and suggestions made by Cooper-Lecky, the VAB, and the CFA into his copyrightable expression of the soldiers. The Federal Circuit noted that merely describing to a sculptor what a commissioned work should look like is not an act of joint authorship.

Gaylord's copyright registrations were entitled to a prima facie presumption of validity that the government did not rebut. The fact that he included the language “fully approved” or “fully approved by all federal commissions” in his description of the nature of his authorship in some of his copyright applications did not undermine his sole authorship of The Column. Approval, like comment and criticism, is not authorship.

The Federal Circuit also noted that the parties never intended to create a joint work. Cooper-Lecky and Gaylord agreed prior to casting the statues in their final form that Gaylord was the copyright owner and that they would make a separate contract under which Cooper-Lecky would pay royalties for licensing rights to Gaylord's work. As Gaylord was not a party to Cooper-Lecky's contract with the government, The Column was not a work made for hire and Gaylord did not create the work using government time, material or facilities, the government did not have a contractual or statutory right to use Gaylord's work in the stamp.

Lastly, the Federal Circuit concluded that because it is not a “humanly habitable structure” The Column does not fall within the definition of an “architectural work” under the AWCPA, as it is not “a building, architectural plans or drawings.” 17 U.S.C. ' 120. The court sent the case back to the Court of Federal Claims to determine a damage award for Gaylord.

The Dissent

Judge Pauline Newman filed a lengthy dissent, contending that the stamp was a fair use of a photograph of “a public monument that was designed and built with public money” and was “unambiguously covered by the contract and statutes under which this Memorial was built.”

Gaylord brought his suit under 28 U.S.C. ' 1498(b), which provides that an action in the Court of Federal Claims can be brought “whenever the copyright in any work protected under the copyright laws of the United States shall be infringed by the United States.” That provision contains an exception “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. '” The statute requires both “employment or service” and a work prepared either in the employee's “official function” or for which government resources were used. The Federal Circuit majority appears to have interpreted “in the ' service of the United States” to be the equivalent of producing a work for hire. As none of the parties briefed or argued the issue of the coverage of ' 1498, the majority refused to consider the exemption issue.

The dissent relied on Walton v. United States , 551 F.3d 1367 (Fed Cir. 2009) for the conclusion that Gaylord was in the “service” of the United States when he created The Column and that such “service” was sufficient to exempt the government from infringement, whether or not government resources were used. However, in Walton, a federal prisoner was paid by a government corporation to create desk blotter calendars for government agencies, using government-furnished computers as part of his assigned duties within a government facility. As Gaylord did not use government resources to create his statues, the exception does not appear to apply here, whatever “service” means.

Judith L. Grubner, a member of this newsletter's Board of Editors, is a partner in the IP Practice Group of Arnstein & Lehr LLP and can be reached at [email protected].