Court Rejects Federal Prisoner Worker’s Claim of Copyright Infringement
The U.S. Court of Federal Claims dismissed a prisoner’s copyright infringement suit for lack of jurisdiction; the dismissal was upheld on appeal.
Robert J. Walton, a federal prisoner, sued the United States for copyright infringement related to his creation of calendars for the General Services Administration (GSA) while working for Federal Prison Industries, Inc., commonly known as UNICOR. Walton alleged that the government never compensated him for use of the calendars, and that government officials were engaged in ongoing infringement.
While working at a UNICOR print factory at the U.S. Penitentiary in Leavenworth, Kansas from 1999 to 2001, Walton designed various calendars for the GSA. The designs were created at the instruction of his work supervisor and prepared with UNICOR equipment. Millions of calendars were produced by UNICOR using Walton’s designs, and shipped to the GSA.
At some point Walton expressed concern to his work supervisor that UNICOR was misappropriating his “original art, designs, images, words and phrases, and creations” in violation of his intellectual property rights. As a result, Walton requested permission to include his name and a copyright symbol on the calendars. Walton also requested permission to forward copies of the calendar proofs to his home. Both requests were denied.
Undeterred from protecting his alleged intellectual property, Walton marked his images with Adobe Photoshop’s internal copyright function and “hid” copies of the calendar files on hard drives and back-up drives on UNICOR computers. Walton was transferred from Leavenworth in May 2001.
On June 9, 2001, Walton filed a tort claim against the GSA seeking $500,000 in damages for alleged copyright infringement related to his calendars. The GSA denied Walton’s claim, noting that when Walton created the calendars he was “an inmate working for” UNICOR, and that unless Walton had an agreement with UNICOR that preserved his intellectual property rights, UNICOR owned the calendars pursuant to federal copyright law.
On November 21, 2001, Walton filed suit in U.S. District Court challenging the GSA’s denial of his claim. The suit was transferred three times before finally arriving in the Court of Federal Claims, which has exclusive jurisdiction over claims of copyright infringement against the federal government pursuant to 28 U.S.C. § 1498(b). The government moved to dismiss Walton’s complaint for lack of jurisdiction or, in the alternative, on summary judgment. Walton cross-moved for summary judgment.
The court began its analysis of the jurisdictional question with the text of the statute. Under § 1498, a party must show that the work that was allegedly infringed – calendars in this case – was not created during the course of “employment or service of the United States” for the court to have jurisdiction.
Turning to the “employment” issue, the court found that Walton was not employed by the United States when the calendars were created. Instead, Walton’s relationship with UNICOR was “part and parcel” of his incarceration. Nevertheless, the court agreed with the defendants that Walton created the calendars during the course of his “service” to the government. Walton worked for both UNICOR and the GSA and supplied them with the “output of his efforts.” Further, Walton used government time, materials and equipment to create the calendars. Finally, the court explained, the calendars that Walton created were not his original idea nor was such work an option, as “it was imposed on him as a prison work assignment.”
Accordingly, the court granted the government’s motion and dismissed Walton’s suit for lack of jurisdiction. The ruling was upheld by the Federal Circuit Court of Appeals on January 8, 2009, which found it was “not disputed that in the preparation of Walton’s calendar, ‘Government time, material, or facilities’ were used.” See: Walton v. United States, 80 Fed. Cl. 251 (Fed. Cl. 2008), aff’d, 551 F.3d 1367 (Fed. Cir. 2009).
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Related legal case
Walton v. United States
|Cite||80 Fed. Cl. 251 (Fed. Cl. 2008), aff?d, 551 F.3d 1367 (Fed. Cir. 2009)|
|Level||Court of Appeals|