United States did not waive immunity for copyright infringement claim brought by prisoner
February 05, 2009

In a recent decision, the Federal Circuit held the Court of Federal Claims correctly dismissed a copyright infringement suit against the United States for lack of subject matter jurisdiction. The plaintiff is a federal prisoner who created various coyprightable works while in federal prison. He brought suit alleging copyright infringement after his works were distributed by Federal Prison Industries.

The Court of Federal Claims dismissed the case for lack of subject matter jurisdiciton, holding the government had not waived its sovereign immunity from suit in this context. The Federal Circuit affirmed, holding that because the calendars were created using government-furnished computers while the prisoner was in the "service" of the United States, sovereign immunity had not been waived under 28 U.S.C. § 1498(b). As a result, the Court of Federal Claims correctly held it lacked jurisdiction to hear the case.

Robert James Walton was incarcerated in federal prision at Leavenworth, Kansas. While there, he worked for Federal Prison Industries, and, using government computers, created desk-blotter calendars for 2000 and 2001-2002. A substantial number of these calendars were produced, and some were sold to private customers.

In 2001, Walton, pro se, sued the government for copyright infringement in district court. After the case was transferred to the Court of Federal Claims, the government moved to dismiss under 17 U.S.C. § 411(a) because Walton had not registered his coyprights. Walton then obtained legal representation, registered his copyrights, and filed an amended complaint in 2005. The Court of Federal Claims then dismissed the case for lack of subject matter jurisdiction, holding the government had not waived immunity from Walton's suit under 28 U.S.C. § 1498(b). Because immunity had not been waived, the court lacked subject matter jurisdiction. Walton appealed.

The Federal Circuit affirmed. The court noted that while § 1498 waives sovereign immunity for copyright infringement claims against the government, there are two provisos that, if met, negate the waiver. The relevant statutory language is as follows:

Provided, however, That this subsection shall not confer a right of action on any copyright owner or any assignee of such owner with respect to any copyrighted work prepared by a person while in the employment or service of the United States, where the copyrighted work was prepared as a part of the official functions of the employee, or in the preparation of which Government time, material, or facilities were used[.]

Accordingly, if the copyrighted work was created "(1) while in the 'employment or service' of the United States and (2) [either] (a) as part of the official functions of the employee or (b) in whose preparation government 'time, material[s], or facilities' were used," immunity is not waived. Here, it was undisputed that government computers were used, so the second prong was met. The dispute centered o whether Walton was "in the employment or service" of the United States.

Walton argued that "employment" and "service" are used interchangably in the statute and that prisoners have, in other contexts, been held not to be "employees" of the United States. The Federal Circuit declined to consider whether Walton was an employee as that term is used in 1498(b), instead holding Walton was in the "service" of the United States.

First, the court noted that the two terms are presumed to have different meanings in the statute under principles of statutory construction. Further, the court thought it unlikely "that if Congress had intended 'service' to mean the same thing as 'employment,' it would have continued for many years to use the two different and separate terms." As a result, it is possible to be in "service" without being "employed." Although the court did not explore the outer boundaries of a service relationship, the court concluded Walton's relationship with Federal Prison Industries fell into this category. As a result, the immunity exclusion of 1498(b) applied. When immunity has not been waived, courts lack subject matter jurisdiction to hear a claim, so the court affirmed the dismissal of Walton's case.

To read the full decision in Walton v. United States, click here.

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