Alleged Infringer Bears the Burden of Proving Authorized Copying

Jesus Muhammad-Ali painted a portrait of Louis Farrakhan, the leader of the Nation of Islam, in 1984.  Ali sued The Final Call for copyright infringement in 2013.  The Final Call is a newspaper that considers itself the “propagation arm of the Nation of Islam.”  Although The Final Call admitted to selling over one hundred copies of Ali’s portrait of Farrakhan, the district court ruled in favor of The Final Call. 

On appeal to the Seventh Circuit, Ali argued that “the district court misstated the elements of a prima facie copyright infringement claim and erroneously shifted to him the burden of proving that the copies were unauthorized. Ali is correct, and The Final Call proved no defense. We therefore reverse. (Opinion pdf page 2).

The district court held a one-day trial on the issue of whether Ali authorized The Final Call to sell the copies.  The Final Call admitted that it sold the copies of Ali’s painting, but claimed that Ali authorized The Final Call to produce and sell the copies.  However, The Final Call’s witness admitted that The Final Call did not possess documentary evidence showing that Ali authorized the creation or sale of the copies of the painting, documentary evidence of a transfer of rights or documentary evidence on how The Final Call acquired the copies of the painting.

The district court did not know which party had the burden of proof of proving the copies were authorized and decided it did not matter, anyway. 

The Seventh Circuit explained Ali’s burden of proof and why properly placing the burden of proof regarding the authorization issue does matter.

To establish copyright infringement, Ali was required to prove two elements: (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original. No one disputes that Ali proved both of these. The district court, however, added an additional element: that Ali had to prove that the copying was not ‘authorized.’

A plaintiff is not required to prove that the defendant’s copying was unauthorized in order to state a prima facie case of copyright infringement.  Rather, the burden of proving that the copying was authorized lies with the defendant.

This rule makes sense: proving a negative is a challenge in any context, and if there is evidence of a license, it is most likely to be in the possession of the purported licensee.

(Opinion pdf pages 7 -8).

The accused infringer’s claim of a license is an affirmative defense, not one of the two elements the copyright owner is required to prove.

It turns out that the district court relied on both an incorrectly transcribed quote from a previous Seventh Circuit case and an incorrect or unclear pattern jury instruction in deciding to place the burden of proving the lack of a license on Ali.  The Seventh Circuit took some responsibility for the mistranscription of the standard that appeared in its previous opinion, but also thought that the district court should have “realized that the burden of proof on authorization was a central issue in the case that had to be resolved.”  (Opinion pdf page 15). 

The Seventh Circuit determined that Ali proved what he needed to prove to establish copyright infringement and that The Final Call either waived or failed to establish its affirmative defenses.  The Seventh Circuit reversed the district court’s decision and remanded the case to the district court to assess damages in Ali’s favor.

This case is Ali v. Final Call, Inc., No. 15-2963, Seventh Circuit Court of Appeals.

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