Georgia only occasionally on my mind

The blogosphere was awash last week in stories about a suit filed on April 15th by Oxford University Press against Georgia State University for digital course packs. On the same day the suit was filed, I did a blog about a California opinion, here. Unnoticed in the ensuing brouhaha about the Georgia course pack suit was a ruling on April 18th in an earlier Georgia suit involving the same issue. Here is a link to an April 23d story in the redandblack.com, an independent blog for the University of Georgia, as well as this excerpt:

A federal judge said two University pharmacy professors still are liable for copyright infringement but dismissed the suit against the Board of Regents and College of Pharmacy administrators.

U.S. District Judge Clay Land dismissed Friday charges of trade secret misappropriation - an accusation of stealing and disseminating test questions - and breach of contract against Flynn Warren Jr., part-time clinical professor, and a charge of trade secret misappropriation against Henry Cobb III, clinical associate professor.

The National Association of Boards of Pharmacy brought the case against Warren, Cobb, the Board of Regents and the College of Pharmacy administrators in August, claiming the two professors "copied its copyrighted pharmacy board exam questions and used them in materials for their pharmacy review course," according to court records.

….

Also in Friday's decision, Land dropped copyright infringement charges against the Board of Regents and College of Pharmacy administrators because they did not intentionally deprive property.

NABP said the college should have stopped Warren from producing review materials after he was investigated in 1995 and agreed to stop copying questions, but Land said the agreement "explicitly states that its prohibitions 'shall not prevent Warren from educational responsibilities associated with his teaching position.'"

Warren and Cobb have until May 8 to reply to the amended complaint by NABP that they can be sued for copyright infringement.

Judge Land’s 25 page opinion is available on Westlaw at National Association of Boards of Pharmacy v. Board of Regents of the University System of Georgia, 2008 WL1805439 (M.D. Ga. April 18, 2008), Docket No. 3:07-CV-084 (CDL). Here are his remarks rejecting the individual professors’ claims of sovereign immunity:

Warren and Cobb contend that although Plaintiff brought suit against them “individually,” Plaintiff's claims against them are actually official capacity claims and that they are entitled to sovereign immunity. Since the State is the real party in interest in a suit against its employees in their official capacities, state employees sued in their official capacities are entitled to sovereign immunity. … However, sovereign immunity “does not protect state employees sued in their individual capacity for employment-related acts.” …

As Warren and Cobb acknowledge, “[t]he general test for determining whether the state is the real party in interest, even though it is not a named defendant, is whether the relief sought against the nominal defendant would in fact operate against the state, especially by imposing liability damages that must be paid out of the public fisc.” …

Furthermore, sovereign immunity only applies “if the judgment must, under all circumstances, be paid out of state funds.” In contrast, the “essence of an individual capacity suit is that the plaintiff is seeking to recover from the individual defendant, who is personally liable for the judgment.” Thus, in Jackson, the Eleventh Circuit found that because the district court's judgment against state employees neither compelled the state to act nor imposed liability upon the state, the employees were not entitled to sovereign immunity. …

Here, Warren and Cobb focus on the fact that their allegedly infringing activities were done in the scope of their employment. As discussed above, however, the test is not whether the acts were done in the course of an employee's official duties but whether a judgment against the employee would in fact operate against the state. …Warren and Cobb baldly assert that relief sought against them would come directly from the State of Georgia, but they do not explain how. Warren and Cobb are both subject to the federal copyright laws. See 17 U.S.C. § 501(a) (“Anyone who violates any of the exclusive rights of the copyright owner ... is an infringer of the copyright.”). A judgment against them may be paid out of their personal funds-not necessarily State funds-because Plaintiff's claims against Warren and Cobb seek to hold Warren and Cobb individually liable for their conduct in violation of federal copyright law. And, to the extent that Georgia has voluntarily agreed to protect Warren and Cobb from liability here, such an agreement would not make Georgia a real party in interest in this action.

The Court concludes that Plaintiff sued Warren and Cobb in their individual capacities and that they are not entitled to sovereign immunity.

The court next rejected the professors’ claims of qualified immunity, holding their conduct was not fair use:

Taken in the light most favorable to Plaintiff, the facts alleged show that Warren and Cobb infringed Plaintiff's copyrighted materials. Plaintiff alleges that Warren and Cobb prepared materials for the PBR course, that the course materials contained 633 sample questions that were “verbatim, nearly verbatim, or substantially similar” to actual NAPLEX questions, which were proprietary and copyrighted, and that the materials were made available for purchase at a cost of $100.00 per set. …

The next question is whether Warren and Cobb's alleged conduct violated clearly established law. “ ‘Clearly established law’ is law that is sufficiently defined so as to provide public officials with ‘fair notice’ that the conduct alleged is prohibited.” … The unlawfulness of the conduct must be apparent in light of preexisting law, but the precise action in question need not have been previously held unlawful. …“Fair notice” of prohibited conduct may be provided in the words of a federal statute or in case law.


Warren and Cobb argue that their alleged conduct did not violate clearly established law because the line between copyright infringement and fair use of copyrighted material is not clear, so they could reasonably believe that the fair use affirmative defense applied to their alleged use of the NAPLEX questions. While the fair use doctrine may not be clear in all circumstances, it is clear-and was clear at the time of the conduct alleged here-that copying, distributing and selling large numbers of secure test questions, such as Plaintiff's NAPLEX questions, is not fair use.