Can Hockey v. Marquardt ( 2021 )

Case: 20-20530 Document: 00516006641 Page: 1 Date Filed: 09/08/2021
United States Court of Appeals
for the Fifth Circuit
United States Court of Appeals
Fifth Circuit
FILED
September 8, 2021
No. 20-20530 Lyle W. Cayce
Clerk
Canada Hockey, L.L.C., doing business as Epic Sports;
Michael J. Bynum,
Plaintiffs—Appellees,
versus
Brad Marquardt,
Defendant—Appellant.
Appeal from the United States District Court
for the Southern District of Texas
USDC No. 4:17-CV-181
Before Owen, Chief Judge, Smith and Graves, Circuit Judges.
James E. Graves, Jr., Circuit Judge:*
Michael J. Bynum and his publishing company sued Texas A&M
University and its employees after they published a part of Bynum’s
forthcoming book without permission. Relevant here, the district court
*
Pursuant to 5th Circuit Rule 47.5, the court has determined that this
opinion should not be published and is not precedent except under the limited
circumstances set forth in 5th Circuit Rule 47.5.4.
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No. 20-20530
denied summary judgment for Brad Marquardt, a Texas A&M employee. We
DISMISS for lack of jurisdiction.
I. Background
Michael J. Bynum is a sportswriter and editor that operates his own
publishing company, Canada Hockey LLC d/b/a Epic Sports (“Epic
Sports”). In 1980, Bynum became interested in the “12th Man” lore while
working on his first book about Texas A&M University’s (TAMU) football
program. Plaintiffs describe the 12th Man story as follows:
The University’s now famous 12th Man tradition was inspired
by the actions of E. King Gill at the 1922 football game known
as the “Dixie Classic.” Gill, a squad player for A&M’s football
team, who was already training with the university’s basketball
team, was up in the press box watching his team face the then
top-ranked Prayin’ Colonels of Centre College, when he was
waved down to the sideline before halftime to suit up in case
his injured team ran out of reserve players. Gill stood on the
sideline, ready to play, for the remainder of the game.
Gill's commitment to step up for his team when in need later
became a legend that was passed down from generation to
generation of Aggies. Today, the 12th Man tradition is a symbol
of the Aggies’ unity, loyalty, and willingness to serve when
called upon to do so, and is woven into many aspects of life at
A&M.
In 1990, TAMU registered “12th Man” as a trademark and has since
aggressively enforced it.
Intrigued by the story, Bynum decided to write about Gill and his
impact on TAMU’s football program for a forthcoming book titled 12th Man.
For many years, Bynum researched Gill and the 12th Man story, including
reviewing primary documents, visiting relevant locations, and conducting
interviews with personnel in TAMU’s Athletic Department, including Brad
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Marquardt, an Associate Director of Media Relations. Eventually, Bynum
hired Whit Canning to write a short biography about Gill (the “Gill
Biography”), titled “An A&M Legend Comes to Life,” which Bynum
planned to use as the opening chapter of his book.
In June 2010, Bynum emailed Marquardt seeking photographs to
include in his book, sending along a draft of the book in PDF form. In the
email, Bynum specified that the PDF was “a draft version of the 12th Man
Book” and “a work in progress . . . not in final form yet.” The draft contained
Bynum’s name, copyright date, an indication that Epic Sports owned the
copyright to the book, and a statement that “no part of the book may be
reproduced or used in any form or by any means . . . without the permission
of the publisher.” The Gill Biography was the opening chapter of the book.
Bynum continued to email Marquardt as late as December 2013, asking
questions related to the book. Bynum planned to publish his 12th Man book
in the fall of 2014.
In January 2014, TAMU’s Athletic Department directed its staff to
find background information on Gill that could be used to promote the 12th
Man story and raise money. Marquardt directed his secretary to retype the
Gill Biography that Bynum sent to Marquardt in 2010; remove any references
to Bynum or Epic Sports; rewrite the byline to read “by Whit Canning,
special to Texas A&M Athletics” to suggest that Canning was commissioned
to write the Biography exclusively for the Athletic Department; and change
the original title of the Biography from “An A&M Legend Comes to Life” to
“The Original 12th Man.” Marquardt provided the retyped Biography to his
work colleagues.
Soon after, the Athletic Department published the contents of the Gill
Biography as an article on its website. Then, on January 19, 2014, both
TAMU and its Athletic Department tweeted a link to the article on their
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respective Twitter accounts. The posts were retweeted and discussed by
news sources. The article was also featured on the TAMU Times’ e-
newsletter and website.
On January 22, 2014, Bynum emailed Marquardt and another
employee of the Athletic Department requesting immediate removal of the
article. Several hours later, Marquardt responded that the article was no
longer on the website, apologized for the “mix-up,” and asked whether it
would “be possible to post the story as an ‘excerpt’ to [his] book.” He also
stated: “I asked my secretary to key [the Biography] in for me which she
did.” Though the article was removed, it was shared by others and reposted
on various online forums. The book remains unpublished.
In 2017, Bynum and Epic Sports filed suit against the TAMU Athletic
Department, the TAMU 12th Man Foundation, and employees of the
Athletic Department, including Marquardt. Relevant here, Plaintiffs assert
against Marquardt direct and contributory copyright infringement claims
under the Copyright Remedy Clarification Act (CRCA), 17 U.S.C. § 501, 1 as
well as a claim under the Digital Millennium Copyright Act (DMCA), 17
U.S.C. § 1202.
Marquardt moved to dismiss the claims on qualified immunity
grounds, which the district court denied. After discovery, Marquardt moved
for summary judgment, as did Plaintiffs. The district court denied both
motions for summary judgment, concluding that genuine issues of material
1
A direct copyright infringement claim stems directly from the CRCA, but a
contributory claim does not. Nevertheless, though “[the CRCA] does not expressly render
anyone liable for infringement committed by another, these doctrines of secondary liability
emerged from common law principles and are well established in the law.” Metro-Goldwyn-
Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913, 930 (2005) (internal quotation marks and
citations omitted).
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fact exist as to whether Plaintiffs obtained a valid copyright in the Gill
Biography. Marquardt appeals. The district court certified the appeal as
frivolous.
II. Jurisdiction
Ordinarily, we do not have jurisdiction to review a denial of a summary
judgment motion because such a decision is not final within the meaning of
28 U.S.C. § 1291. Gobert v. Caldwell, 463 F.3d 339, 344 (5th Cir. 2006).
However, a district court’s denial of summary judgment on the basis of
qualified immunity is immediately appealable under the collateral order
doctrine, to the extent that it turns on a matter of law. Trent v. Wade, 776 F.3d
368, 376 (5th Cir. 2015). “When a district court denies an official’s motion
for summary judgment predicated upon qualified immunity, the district court
can be thought of as making two distinct determinations, even if only
implicitly.” Heaney v. Roberts, 846 F.3d 795, 800 (5th Cir. 2017) (internal
quotation marks and citation omitted). These determinations are: (1) a
certain course of conduct would, as a matter of law, be objectively
unreasonable in light of clearly established law; and (2) a genuine issue of fact
exists regarding whether the defendant did, in fact, engage in such conduct.
Id. We lack jurisdiction to review the second type on interlocutory appeal. Id.In other words, “we cannot challenge the district court’s assessments
regarding the sufficiency of the evidence—that is, the question whether there
is enough evidence in the record for a jury to conclude that certain facts are
true.” Trent, 776 F.3d at 376 (quoting Kinney v. Weaver, 367 F.3d 337, 347
(5th Cir. 2004) (en banc)).
Although we lack jurisdiction to resolve “the genuineness of any
factual disputes,” we do have jurisdiction to determine “whether the factual
disputes are material.” Kovacic v. Villarreal, 628 F.3d 209, 211 n.1 (5th Cir.
2015). “So, we review the complaint and record to determine whether,
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assuming that all of [the plaintiff’s] factual assertions are true, those facts are
materially sufficient to establish that defendants acted in an objectively
unreasonable manner. Even where . . . the district court has determined that
there are genuine disputes raised by the evidence, we assume plaintiff’s
version of the facts is true, then determine whether those facts suffice for a
claim . . . under these circumstances.” Wagner v. Bay City, 227 F.3d 316, 320
(5th Cir. 2000).
We give de novo review to the legal issues relating to qualified
immunity. King v. Handorf, 821 F.3d 650, 653 (5th Cir. 2016).
III. Qualified Immunity
“The doctrine of qualified immunity protects government officials
‘from liability for civil damages insofar as their conduct does not violate
clearly established statutory or constitutional rights of which a reasonable
person would have known.’” Pearson v. Callahan, 555 U.S. 223, 231 (2009)
(quoting Harlow v. Fitzgerald, 457 U.S. 800, 818 (1982)). To establish that
qualified immunity does not apply, the plaintiff must prove that the state
actor (1) violated a statutory or constitutional right, and (2) that the right was
“clearly established” at the time of the challenged conduct. King, 821 F.3d
at 653. “The relevant, dispositive inquiry in determining whether a right is
clearly established is whether it would be clear to a reasonable [official] that
his conduct was unlawful in the situation he confronted.” Porter v. Epps, 659
F.3d 440, 445 (5th Cir. 2011) (quoting Saucier v. Katz, 533 U.S. 194, 202
(2001)).
Marquardt argues that the district court erred in denying summary
judgment on the basis of qualified immunity for both the copyright
infringement and DMCA claims. We address each claim in turn.
A. Copyright Infringement
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In denying Marquardt’s motion for summary judgment, the district
court rejected his qualified immunity defense to the copyright infringement
claims, concluding that a genuine issue of fact exists as to the ownership of
the copyright in the Gill Biography. On appeal, Marquardt argues that he is
entitled to qualified immunity because Plaintiffs cannot prove that he
violated their statutory right—that is, Plaintiffs cannot show that they owned
the copyright at the time of the alleged violation.
A copyright vests initially in the author of the work, unless the work is
“made for hire,” in which case the ownership of the copyright vests initially
in the employer or commissioner of the work. 17 U.S.C. § 201(a) & (b).
According to Marquardt, Plaintiffs did not enter a valid work for hire
agreement with Canning and therefore did not own the copyright when the
violation occurred. He contends that Bynum’s declaration averring
otherwise is not sufficient to prove that the arrangement was a work for hire.
Further, because Plaintiffs cannot produce the original contract from 1997
(when the agreement was allegedly made) and have only produced a written
agreement created a month after the copyright violation occurred, no
reasonable factfinder could find a work for hire relationship in which the
copyright initially vested in Bynum.
This is a classic argument that the factual dispute is not genuine, over
which we lack jurisdiction. Indeed, Marquardt’s attack on the district court’s
conclusion that a genuine issue of fact exists over the ownership of the
copyright mirrors his arguments made before the district court, which held:
Defendant’s motion [for summary judgment], which is based
on his contention that Plaintiffs did not acquire the rights to the
Canning article (the subject matter of this suit) until February
5, 2014—a month after the alleged infringement—is
controverted by Bynum’s own declaration that he had obtained
those rights years earlier. Bynum avers that Canning was hired
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to write the article about E. King Gill in the late 1990s and that
he or his company have always owned the rights to it since as
early as 1997 or 1998. This raises a fact issue. The fact that
Bynum cannot locate the actual written contract may prove
fatal in front of the jury, but it does not diminish the fact that
his own declaration raises a fact issue. Additionally, a copy of
the actual Canning article that Defendant possessed is attached
to his declaration and it demonstrates on the first page that one
of the Plaintiffs has a 1998 copyright. While the Canning
affidavit would provide additional support for this claim, an
issue of material fact exists with it or without it.
Marquardt’s challenge of the denial of summary judgment on the copyright
infringement claims goes to the genuineness of the factual dispute, not its
materiality, and we therefore dismiss this part of the appeal for lack of
jurisdiction.
B. DMCA
Next, Marquardt argues that he is entitled to qualified immunity with
respect to the DMCA claim because Plaintiffs’ statutory right was not
“clearly established” at the time of the alleged violation. The DMCA
prohibits unauthorized removal or alteration of “copyright management
information,” such as the title, the author, or copyright owner of the work.
17 U.S.C. § 1202(c). Marquardt contends that it was not clearly established
at the time of the alleged violation that the information removed from the Gill
Biography was “copyright management information” protected by the
DMCA.
We decline to consider the merits of Marquardt’s qualified immunity
defense against the DMCA claim because it is untimely. Marquardt first
raised his defense in a motion to dismiss, which was rejected by the district
court. Marquardt did not appeal the ruling nor raise this defense again in his
motion for summary judgment. Now, in the instant appeal of the denial of
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summary judgment, he seeks appellate review of the district court’s prior
ruling on his motion to dismiss, contending that the motion-to-dismiss denial
is “merged into” the summary judgment denial.
Not so. A district court’s denial of a motion to dismiss on the basis of
qualified immunity is a final appealable decision within the meaning of 28
U.S.C. § 1291. Mitchell v. Forsyth, 472 U.S. 511, 530 (1985); see Behrens v.
Pelletier, 516 U.S. 299, 308 (1996) (making clear that an appeal is available
from denials of an immunity defense at both the pleading and summary
judgment stages). The denial is subject to the 30-day time limit for appeal.
Fed. R. App. P. 4(a)(1)(A). Therefore, Marquardt had 30 days after the
district court denied his motion to dismiss to file a notice of appeal. Having
failed in this, Marquardt now attempts to sneak in his qualified immunity
argument on appeal, which was not even raised in his motion for summary
judgment. Cf. Armstrong v. Tex. State Bd. of Barber Examiners, 30 F.3d 643,
644 (5th Cir. 1994) (dismissing as untimely appeal of summary judgment
denial, where defendants raised the same pleadings-based qualified immunity
defense in both the motion to dismiss and motion for summary judgment, but
failed to appeal prior denial of the motion to dismiss).
We conclude that Marquardt lost his right to challenge the denial of
qualified immunity against the DMCA claim, and any later effort to appeal
would not be timely. Accordingly, we dismiss this part of the appeal for lack
of jurisdiction due to untimeliness. See Sudduth v. Tex. Health & Human
Servs. Comm’n, 830 F.3d 175, 177 (5th Cir. 2016) (“It is well established ‘that
the timely filing of a notice of appeal in a civil case . . . is a jurisdictional
requirement.’”) (quoting Bowles v. Russell, 551 U.S. 205, 214 (2007)).
IV. Conclusion
For the foregoing reasons, we DISMISS the appeal for lack of
jurisdiction.
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