Burden of Proof for Authorization of Copying on Defendant: Seventh Circuit | Practical Law

Burden of Proof for Authorization of Copying on Defendant: Seventh Circuit | Practical Law

In Muhammad-Ali v. Final Call, Inc., the US Court of Appeals for the Seventh Circuit reversed the district court's judgment of non-infringement and held that the district court erroneously shifted to the plaintiff the burden of proving that copies were unauthorized.

Burden of Proof for Authorization of Copying on Defendant: Seventh Circuit

Practical Law Legal Update w-003-1134 (Approx. 3 pages)

Burden of Proof for Authorization of Copying on Defendant: Seventh Circuit

by Practical Law Intellectual Property & Technology
Published on 16 Aug 2016 • USA (National/Federal)
In Muhammad-Ali v. Final Call, Inc., the US Court of Appeals for the Seventh Circuit reversed the district court's judgment of non-infringement and held that the district court erroneously shifted to the plaintiff the burden of proving that copies were unauthorized.
On August 10, 2016, in Muhammad-Ali v. Final Call, Inc., the US Court of Appeals for the Seventh Circuit reversed the US District Court for the Northern District of Illinois, holding that the district court misstated the elements of a prima facie copyright infringement claim and erroneously shifted the burden of proving the copies at issue were unauthorized to the plaintiff ( (7th Cir. Aug. 10, 2016)).
This case involved a copyright infringement suit brought by Jesus Muhammad-Ali—an artist who painted a portrait of the leader of the Nation of Islam, Louis Farrakhan—against The Final Call, Inc., a newspaper that admitted it had sold over a hundred copies of Ali's painting in the form of poster lithographs. Ali argued in his district court action that although he had an agreement with The Final Call regarding the original painting, the lithographs were unauthorized. Final Call denied this allegation, stating that Ali had authorized it to produce and sell the copies.
After a bench trial, the district court ruled on the sole issue in the case, finding that although it was unclear which party had the burden of proving that the prints were authorized, this did not ultimately matter because the facts clearly demonstrated that the lithograph copies were authorized.
On appeal, the Seventh Circuit reversed the district court, holding that:
  • Ali proved the two elements of prima facie copyright infringement—ownership of a valid copyright and copying of original elements of the work—but the district court erroneously added an additional element, proof that the copying was not authorized. The error stemmed from the district court's reliance on a Seventh Circuit case that contained a transcription error.
  • The district court's jury instruction on copying, though based on a Seventh Circuit pattern instruction, was either unclear or erroneous.
  • There was no merit to The Final Call's argument that Ali admitted in his pleadings that the burden of proving authorization was his.
  • Authorization or license is an affirmative defense, and the burden of proving it lies with the defendant.
The Seventh Circuit also found that although The Final Call originally asserted implied license and laches as defenses earlier in the litigation, it waived them at a pretrial conference and therefore had no affirmative defenses at trial. Even if such defenses had not been waived, The Final Call presented insufficient evidence to prove the elements of the defenses.