Can Hockey v. Marquardt

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opinion should not be published and is not precedent except under the limited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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