Petition for Writ of Certiorari — King for Congress, Petitioner v. Laney Griner, et al.

Supreme Court briefSep 5, 2024

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No. 24-___________

SUPREME COURT OF THE UNITED STATES

King For Congress and Steven King,

Petitioners,

vs.

Laney Griner and Sam Griner,

Respondents.

On Petition for a Writ of Certiorari

to the United States Court of Appeals

for the Eighth Circuit

PETITION FOR WRIT OF CERTIORARI

Michael Blankenship

Da Vinci's Notebook, LLC

9000 Mike Garcia Dr.

No. 52

Manassas, VA 20109

703-581-9562

keith@dnotebook.com

Patrick M. McSweeney

Counsel of Record

MCSWEENEY, CYNKAR &

KACHOUROFF, PLLC

13649 Office Place # 101

Woodbridge, VA 22192

(804) 937-0895

patrick@mck-lawyers.com

QUESTIONS PRESENTED

1. Does Fed.R.Civ.P. 68 allow a non-prevailing

judgment-defendant to recover attorneys’ fees under

this Court’s Marek decision pursuant to Copyright

Law, which simultaneously defines attorneys’ fees as

costs and awards costs to the prevailing party?

2. Does an implied license test that requires an

arms-length agreement between the copyright owner

and the potential licensee conflict with the implied

license test fashioned by this Court in De Forest?

CORPORATE DISCLOSURE STATEMENT

Petitioner King for Congress is a Federal Election

Commission registered sole proprietorship of, and

wholly owned by, Congressman Steven King.

iii

LIST OF PROCEEDINGS

This matter originated in the U.S. District court

for the Northern District of Iowa (21-CV-4024 CJWMAR, Laney Marie Griner and Sam Griner, Plaintiffs

v. Steven Arnold King and King For Congress,

Defendants). This district court reached a verdict on

November 18, 2022. The District Court’s final order,

January 18, 2023, and order on bill of costs, February

22, 2023, were appealed to the U.S. Court of Appeals

for the Eighth Circuit in the matter Nos. 22-3623

(Laney Marie Griner Plaintiff-Appellee Sam Griner

Plaintiff v. Steven Arnold King Defendant King for

Congress Defendant-Appellant) and 23-2117 (Laney

Marie Griner; Sam Griner Plaintiffs-Appellees v. Steven

Arnold King; King for Congress Defendants-Appellants).

Appellate judgment was entered on June 7, 2024.

TABLE OF CONTENTS

Page

QUESTIONS PRESENTED ........................................ i

CORPORATE DISCLOSURE STATEMENT ............ ii

LIST OF PROCEEDINGS ......................................... iii

TABLE OF AUTHORITIES ..................................... vii

OPINIONS BELOW ................................................... 1

JURISDICTION.......................................................... 1

STATUTORY PROVISIONS AND

JUDICIAL RULES INVOLVED .......................... 1

STATEMENT OF THE CASE .................................... 1

A. Factual Background ......................................... 1

B. Procedural Background ................................... 3

REASONS FOR GRANTING THE PETITION ......... 4

A. A Split Among the Circuit Courts Has

Developed on the Issue of Whether a NonPrevailing Party Who Has Made an Offer

Under Rule 68 Is Entitled to Attorneys’

Fees as Costs Pursuant to 17 U.S.C. § 505 ..... 4

1. The Public Policy of Rule 68 and the

Circuit Split................................................. 5

2. The Law of Rule 68 and Marek Redux:

This Court and the Circuit Paradigms ...... 8

B. A Split Exists Among the Circuit Courts

Regarding the Test for the Formation of an

Implied License and the Test As Applied

Conflicts with This Court’s De Forest

Decision .......................................................... 13

TABLE OF CONTENTS – Continued

Page

1. Laney Griner Granted a Direct Implied

License to Social Media Users to Use the

Work. ......................................................... 14

2. Recent Evolution of Implied License Law ... 16

CONCLUSION.......................................................... 18

TABLE OF CONTENTS – Continued

Page

APPENDIX TABLE OF CONTENTS

OPINIONS AND ORDERS

Opinion, U.S. Court of Appeals for the Eighth

Circuit (June 7, 2024) ......................................... 1a

Order On Costs and Attorney Fees, U.S. District

Court for the Northern District of Iowa

(February 22, 2023) .......................................... 17a

Order Denying Motions to Amend Judgment,

U.S. District Court for the Northern District

of Iowa (February 22, 2023) ............................. 51a

Order, U.S. District Court for the Northern

District of Iowa (August 9, 2022) ..................... 67a

Bench Ruling, Transcript Excerpts

(November 16, 2022) ...................................... 109a

STATUTORY PROVISIONS

Relevant Statutory Provisions ............................. 113a

OTHER DOCUMENTS

Joint Proposed Jury Instructions, U.S. District

Court for the Northern District of Iowa

(October 28, 2022) .......................................... 116a

Brief in Support of Defendants’ Motion for

Summary Judgment (April 15, 2022) ............ 121a

Defendants’ Undisputed Facts (April 15, 2022) .. 150a

vii

TABLE OF AUTHORITIES

Page

CASES

TABLE OF AUTHORITIES

Baker v. Urban Outfitters, Inc.,

431 F. Supp. 2d 351 (S.D.N.Y. 2006) ................ 10

Bathgate v. Haskins,

63 N.Y. 261 (1875) ............................................... 6

Crossman v. Marcoccio,

806 F.2d 329 (1st Cir. 1986) .............................. 11

De Forest Radio Tel. & Tel. Co. v. United

States, 273 U.S. 236 (1927) ................ i, 13, 14, 15

Delta Air Lines, Inc. v. August,

450 U.S. 346 (1981) ............................................. 9

Effects Associates, Inc. v. Cohen,

908 F.2d 555 (9th Cir. 1990) ............................. 14

Field v. Google, Inc,

412 F. Supp. 2d 1106, (D. Nev. 2006) ............... 17

John G. Danielson, Inc. v. Winchester-Conant

Props., Inc., 322 F.3d 26 (1st Cir. 2003) ........... 14

Johnston v. Penrod Drilling Co.,

803 F.2d 867 (5th Cir. 1986) ............................... 9

Jordan v. Time, Inc.,

111 F.3d 102 (11th Cir. 1997) ........................... 10

Korman v. HBC Florida, Inc.,

182 F.3d 1291 (11th Cir. 1999) ......................... 15

Leibowitz v. Galore Media, Inc.,

No. 18-CV-2626 (RA) (HBP), 2018 U.S.

Dist. LEXIS 161110, 2018 WL 4519208

(S.D.N.Y. Sept. 20, 2018) .................................. 11

viii

TABLE OF AUTHORITIES – Continued

Page

Marek v. Chesny,

473 U.S. 1 (1985) ..................................... 9, 11, 12

MG Recordings, Inc. v. Shelter Capital

Partners LLC,

716 F. 3d 1006 (9th Cir. 2013) .......................... 11

Midlevelu, Inc. v. ACI Info. Grp.,

989 F.3d 1205 (11th Cir. 2021) ......................... 15

Nelson-Salabes, Inc. v. Morningside Dev., LLC,

284 F.3d 505 (4th Cir. 2002) ..... 13, 14, 15, 16, 18

Payne v. Milwaukee County,

288 F.3d 1021 (7th Cir. 2002) ........................... 11

Rice v. Musee Lingerie, LLC,

2019 U.S. Dist. LEXIS 111487,

2019 WL 2865210 (S.D.N.Y. July 3, 2019) ....... 11

Thompson v. Looney’s Tavern Productions,

Inc., 204 Fed. Appx. 844 (11th Cir. 2006)......... 15

Wallert v. Atlan,

No. 14-CV-4099 (PAE), 2015 U.S. Dist.

LEXIS 13958, 2015 WL 518563

(S.D.N.Y. Feb. 5, 2015) ...................................... 11

Wilson v. Nomura Sec. Int’l, Inc.,

361 F.3d 86, 89 (2d Cir. 2004) ........................... 10

STATUTES

15 U.S.C. § 1117 ........................................................ 10

17 U.S.C. § 501(a) ....................................................... 1

17 U.S.C. § 505 .................................... 3, 4, 5, 7, 10, 12

28 U.S.C. § 1254 .......................................................... 1

TABLE OF AUTHORITIES – Continued

Page

35 U.S.C. § 285 .......................................................... 10

42 U.S.C. § 1983 ........................................................ 11

42 U.S.C. § 1988 .................................................. 11, 12

42 U.S.C. § 2000 ........................................................ 11

JUDICIAL RULES

Fed. R. Civ. P. 54(d) .......................................... 1, 5, 12

Fed. R. Civ. P. 68 ....... i, 1, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12

OTHER AUTHORITIES

3 NIMMER ON COPYRIGHT § 10.03[A][7] (2000) ......... 14

Claudius L. Monell,

A Treatise on the Practice of the Supreme

Court of the State of New York (1854) ................ 6

George Donworth et al.,

Changes Suggested in Washington

Practice and Procedure, 14 WASH. L. REV.

& STATE BAR J. 154 (1939) .................................. 6

RESTATEMENT (SECOND) OF CONTRACTS, § 29 ........... 16

Robert G. Bone,

To Encourage Settlement: Rule 68, Offers

of Judgment, and the History of the

Federal Rules of Civil Procedure,

102 NW. U. L. REV. 1561 (2008) ....................... 5, 6

OPINIONS BELOW

The decision of the U.S. District Court for the

Northern District of Iowa in Griner v. King is reported

at 2023 WL 2163994 (N.D. Iowa February 22, 2023).

The decision of the Eighth Circuit on appeal is

reported at 104 F.4th 1 (8th Cir. 2024).

JURISDICTION

The decision of the Eighth Circuit was entered on

June 7, 2024. The jurisdiction of this Court is invoked

under 28 U.S.C. § 1254(1).

STATUTORY PROVISIONS AND

JUDICIAL RULES INVOLVED

This petition involves Federal Rules of Civil Procedure 54(d) and 68, App.113a-114a. 17 U.S.C. §§ 501(a)

and 505. App.114a-115a. The relevant provisions of

the Federal Rules of Civil Procedure and the Copyright

Act of 1976 are reproduced in the appendix to this

petition.

STATEMENT OF THE CASE

Factual Background

Petitioner-Defendant Steven King was a Congressman from Iowa. He operated political campaigns

through the entity King for Congress. King for Congress

had a social media account that posted a popular

meme, the “Success Kid” meme. App.156a-157a.

Hours into King for Congress’ use of the Success

Kid meme, the copyright owner of “Success Kid,”

Laney Griner, sent King for Congress a take-down

notice. King for Congress complied immediately and

apologized. App.157a.

The Success Kid meme is one of the world’s most

popular and reproduced images. Many meme websites

exist to provide copies of popular memes, with functions

that allow a user to supply his/her own caption upon

the photograph, including the Success Kid image.

App.164a-165a. Some websites claim to have provided

millions of copies of the Success Kid meme, including

the website that Griner used to create and circulate

versions of the Success Kid meme. Griner publicly

boasted about the mass use of Success Kid. App.136a,

164a, pars. 52-54.

Through social media, Griner for a period of ten or

so years transmitted messages to the Internet population at large to create and copy versions of the

Success Kid meme. App.136a, 164a-166a. She scoured

the Internet and publicly posted on her social media

Success Kid meme versions created by others and

commented upon them. App.160a-166a. On her Success

Kid fan page, Griner provided links to meme websites

where fans could construct Success Kid meme versions.

App.165a, pars. 59-64. When Griner transmitted her

Success Kid meme versions, she included a link to the

meme website where she made it that allowed viewers

to create their own version. Griner displayed and

rated Success Kid memes that others had created.

App.160a-162a, 164a-165a. When Internet users

informed her of third party uses, she would tell them

‘to chill’ and that Success Kid was a phenomenon for

all. App.160a, par. 40; 164a-165a, pars. 52-58. Griner

posted and commented favorably on Success Kid

memes used by corporations. App.160a-162a, par. 42.

She begged producers to consider using Success Kid in

new media. App.164a, pars. 52-54. Such uses were

lengthy and continuous, and Petitioner-Defendants

showed the uses to the District Court.

Griner sued King and King for Congress for

approximately two years in response to King for

Congress’s hours of use.

Procedural Background

This case involves Griner’s use of lawfare, which

is the use of the legal system for the ulterior purpose

of draining the energy, time, and resources of a defendant, particularly when the return on investment of

the legal action is disproportionate to the action’s costs

and fees. When Griner occupied two years of the

judiciary’s time to sue King for Congress for its hourslong use of her copyrighted image, which is one of the

world’s most popular and circulated images, resulting

in the very rare finding of “innocent infringement” and

the minimum statutory award allowable, King for

Congress sought post-trial remedies. App.17a-50a; 51a66a.

King for Congress, in a bill of costs, sought attorneys’ fees from the Rule 68 offer of judgment date.

App.17a. The District Court denied attorneys’ fees as

Rule 68 costs, while recognizing that copyright law

(unlike patent and trademark law) explicitly defines

attorneys’ fees as “costs.” App.22a-24a. The District

Court echoed the opinion held by some courts that

attorneys’ fees can only be awarded to a prevailing

party when copyright and civil rights substantive

statutes use the “prevailing party” language, notwithstanding Rule 68. App.24a. There is a circuit split on

the issue of the availability of recovery of attorneys’

fees pursuant to 17 U.S.C. § 505 to a non-prevailing

party who has made an offer under Rule 68. The District

Court adopted the holding of the Ninth, Seventh, and

First Circuits, whereas Petitioner-Defendants urged

adoption of the holdings of the Eleventh and Second

Circuits.

The District Court invoked an implied license test

bearing an element that has never been recognized by

this Court, “delivery from the copyright holder to the

alleged infringer.” App.133a-134a. This element is the

product of decades of Circuit Court interpretations of

this Court’s implied license law for software licenses.

In the Internet Age, where Internet users willingly post

images for circulation to hordes of unseen, unidentified

users, the requirement of requests and delivery to a

known party cannot stand.

REASONS FOR GRANTING THE PETITION

A Split Among the Circuit Courts Has

Developed on the Issue of Whether a NonPrevailing Party Who Has Made an Offer

Under Rule 68 Is Entitled to Attorneys’ Fees

as Costs Pursuant to 17 U.S.C. § 505.

Prior to trial, Petitioner-Defendants made

Respondent-Plaintiff a $15,000.00 Rule 68 offer,

which Respondent-Plaintiff spurned. App.20a, 38a.

Petitioner-Defendant King for Congress was found to

be an innocent infringer for damages totaling $750.00.

App.54a. Copyright law has a peculiarity in that it

defines “costs” to include attorneys’ fees. PetitionerDefendants submitted their attorneys’ fees to the

District Court, and was denied them on the basis

that copyright law only affords attorneys’ fees to a

“prevailing party.” This logic is unsatisfactory as

“costs” as a matter of course are also only awarded to

a prevailing party. Rule 68 alters the award equation.

App.113a-114a.

1. The Public Policy of Rule 68 and the

Circuit Split

The Federal Rules of Civil Procedure generally

award “costs” to the prevailing party. Fed. R. Civ. P.

54(d). App.113a-114a. Rule 68 provides “costs” from

the date of the offer to the non-prevailing party.

Fed.R.Civ.P. 68. App.114a. Copyright Law provides

costs to the prevailing party, which in exceptional

circumstances may include attorneys’ fees. 17 U.S.C.

§ 505. App.115a. When the District Court held that

attorney’s fees as a matter of law could not be awarded

to a non-prevailing party, even under the auspices of

Rule 68, it disregarded the intent and purpose of Rule

68, which is to give the non-prevailing party benefits

normally reserved for the prevailing party.

Rule 68 springs from the common law concept of

right of tender.

The purpose of the common law right of

tender was not to encourage settlement. The

right applied to a very limited class of cases

[wherein] the plaintiff insisted on litigating

despite the defendant’s genuine efforts to pay

the amount in full. Under these circumstances, the plaintiff had no legitimate basis

for suing the defendant.

Robert G. Bone, To Encourage Settlement: Rule 68,

Offers of Judgment, and the History of the Federal

Rules of Civil Procedure, NORTHWESTERN UNIVERSITY

LAW REVIEW, at 28-29, Vol. 102, 2008. Once tender

occurred, any suit going forward was “obviously

frivolous.” Id. Contemporaneous to the drafting of Rule

68, litigation was a weapon of choice for the robber

baron to harass smaller competitors. Among the explanations and models for Rule 68, the “unreasonable

plaintiff” model most aptly fits. Id. at 37-39. The

drafting and early history of Rule 68 strongly indicates

that it was not drafted to promote settlement, but

rather to halt pointless litigation. Id. at 36-39 citing 1

Claudius L. Monell, A Treatise on the Practice of the

Supreme Court of the State of New York, 508-509

(1854).

The offer of judgment statute was written

with a paradigmatic situation in mind[: i]t

contemplated an offer that the plaintiff could

not reasonable reject [ . . . in that . . . ] it

offer[ed] everything that a plaintiff was

entitled to receive from trial. It was unreasonable or a plaintiff to push forward in the

face of such an offer. In effect, potential

liability for costs gave the plaintiff “a reason

to be reasonable.”

Id. at 39 citing George Donworth et al., Changes

Suggested in Washington Practice and Procedure, 14

WASH. L. REV. & STATE BAR J. 154, 175 (1939). In short,

Rule 68 was not drafted to settle cases, but rather to

combat unreasonable litigation behavior. Id. at 40

citing Bathgate v. Haskins, 63 N.Y. 261, 264 (1875).

Lawfare is manifestly unreasonable because the

case’s merits are incidental to the nuisance value.

Griner complained of unwanted exposure claiming

that in the minds of the public King for Congress

linked Success Kid with King, yet immediately reached

out to the world’s largest newspapers and magazines

to inform them of the association. App.167a-168a, par.

68. Griner complained of the hours of King for

Congress’s use of the image, but spent almost two years

litigating the issue. King for Congress accrued approximately $30.00 in total contributions on the social

media vehicle that posted the image; Griner demanded

$50,000.00 to cease the litigation. She complained of

negative aftereffects from King’s publication while

posting images of her infant son with marijuana and

masturbation themes. Griner complained of the Davidand-Goliath aspects of litigating against a congressman,

and then showed up to trial with a team of lawyers

from New York and Los Angeles.

For its hours of unnoticed trespass and $30.00 in

ill-gotten gains, King for Congress offered judgment in

the amount of $15,000.00 to end the litigation, which

Griner spurned. Griner never had a case for damages

in excess of $5,000.00 based on past licensing histories.

Griner sought more from Petitioner than from CocaCola Corporation for its Super Bowl advertisement

featuring Success Kid. Griner banked solely on the

nuisance value of a suit against a favorite target of the

media. Griner incorrectly gambled that this veteran of

media attacks tired of them and sought serenity; it was

to her great surprise that decades of media pressure

had not worn away King’s spirit, but rather hardened

and honed it.

and trademark laws offer attorneys’ fees in addition

to costs; Copyright Law offers costs, that include

attorneys’ fees. 17 U.S.C. § 505. Therefore Rule 68

cannot be invoked to claim attorneys’ fees for infringe-

ments of patent and trademark, but because the

68 can be so invoked. In other contexts, e.g., civil rights

litigation wherein attorneys’ fees are defined as costs,

Rule 68 provides attorneys’ fees as costs to the nonprevailing parties. The Eleventh and Second Circuits

adopted this view. Seemingly, copyrights should not be

an unexplained exception, but the Ninth, Seventh, and

First Circuits have so held – and now by implication,

the Eighth Circuit has joined them. This Court should

resolve this split among the circuit courts

2. The Law of Rule 68 and Marek Redux:

This Court and the Circuit Paradigms

Rule 68 states:

At least 14 days before the date set for trial,

a party defending against a claim may serve

on an opposing party an offer to allow judgment on specified terms, with the costs then

accrued. If, within 14 days after being served,

the opposing party serves written notice

accepting the offer, either party may then

file the offer and notice of acceptance, plus

proof of service. The clerk must then enter

judgment.

Fed.R.Civ.P. 68(a). App.114a. If unaccepted, there can

be dire consequences to the plaintiff.

If the judgment that the offeree finally obtains

is not more favorable than the unaccepted

offer, the offeree must pay the costs incurred

after the offer was made.

Fed.R.Civ.P. 68(b). App.114a.

Costs which may be awarded under Rule 68

include all costs properly awardable under the relevant

substantive statute. Marek v. Chesny, 473 U.S. 1, 15

(1985).

Marek instructs the federal courts that if costs

are “available” to a plaintiff, then it is available to a

Rule 68 judgment-defendant. Copyright law (along with

Civil Rights law) contains one of the few statutes that

defines attorneys’ fees as costs. The Eleventh and

Second Circuits allow a Rule 68 judgment defendant

to recoup attorneys’ fees under Copyright and Civil

Rights laws. The Ninth, Seventh, and First Circuits

do not, stating that the additional statutory language

in copyright law (and Civil Rights law) requiring

attorneys’ fees only to be awarded to a “prevailing

party” makes them unavailable to a Rule 68 judgmentdefendant because Rule 68 only applies to nonprevailing parties. Id., at 9.

Under Rule 68 a prevailing plaintiff is required to

pay litigation costs for spurned offers of judgment

when the offer is more favorable than the ultimate

judgment. Delta Air Lines, Inc. v. August, 450 U.S. 346,

348-49 (1981). The language of Rule 68 is mandatory;

where the rule operates, it leaves no room for district

court discretion. Id. at 354. The purpose of Rule 68 is

to encourage cessation of pointless litigation. Id. at

352. See also Johnston v. Penrod Drilling Co., 803

F.2d 867, 869 (5th Cir. 1986) (“When it is likely that

the plaintiff will obtain a judgment but the amount of

such judgment is uncertain, the rule provides the

plaintiff an additional incentive to settle the case by

creating the possibility that the plaintiff will ‘lose

some of the benefits of victory if his recovery is less

than the offer.’“) (quoting Delta, 450 U.S. at 351).

The underlying statutes for both patent and trademark infringement suits do not include attorneys’ fees

as “costs.” Instead, attorneys’ fees are recoverable as

a separate non-cost category under 35 U.S.C. § 285

and 15 U.S.C. § 1117(a), respectively, only by the prevailing party in “exceptional cases.” Because of these

definitions of “costs,” a party cannot recover attorney’s

fees by making a Rule 68 offer in patent or trademark

cases. Copyright law, however, categorizes “costs” as

including attorneys’ fees. 17 U.S.C. § 505. Subsection

505 provides:

In any civil action under this title, the court

in its discretion may allow the recovery of

full costs by or against any party other than

the United States or an officer thereof. Except

as otherwise provided by this title, the court

may also award a reasonable attorney’s fee

to the prevailing party as part of the costs.

Id. (emphasis added). Attorneys’ fees are properly

awardable to the Rule 68 offeror when the underlying

action awards them as costs. Jordan v. Time, Inc., 111

F.3d 102, 105 (11th Cir. 1997); See Baker v. Urban

Outfitters, Inc., 431 F. Supp. 2d 351, 361 (S.D.N.Y.

2006), aff’d, 249 F. App’x 845 (2d Cir. 2007).

There is, however, a circuit split. In contrast to the

Eleventh Circuit and Second Circuit1 (analogously in

1 Although the Second Circuit has not expressly held that under

68, it has expressly held that attorneys’ fees are awardable under

Rule 68 in the context of a statute that defines attorneys’ fees as

costs and are properly awardable to a “prevailing party.” Wilson

v. Nomura Sec. Int’l, Inc., 361 F.3d 86, 89 (2d Cir. 2004). “Where

the underlying statute defines ‘costs’ to include attorney’s fees,

therefore, such fees are ‘costs’ for purposes of Rule 68. In construing

the circuit court, and explicitly in its district courts2)

the Seventh, Ninth, and First Circuits hold that a nonprevailing defendant in this situation may recover its

post-offer costs, but may not recover post-offer attorneys’

fees, as it is not the “prevailing party” under the Copyright Act and similar statutes. MG Recordings, Inc. v.

Shelter Capital Partners LLC, 716 F. 3d 1006, 1034

(9th Cir. 2013) (Copyrights); Crossman v. Marcoccio,

806 F.2d 329, 334 (1st Cir. 1986) (Civil Rights); Payne

v. Milwaukee County, 288 F.3d 1021, 1023 (7th Cir.

2002) (Civil Rights).

The Ninth, Seventh, and First Circuits’ logic is

contrary to the purpose and nature of Rule 68 and the

reasoning of Marek. Marek discusses the comparable

treatment of attorneys’ fees as costs in the civil rights

litigation context:

Pursuant to the Civil Rights Attorney’s Fees

Awards Act of 1976 . . . 42 U.S.C. § 1988, a

prevailing party in a § 1983 action may be

awarded attorney’s fees “as part of the costs.”

Since Congress expressly included attorney’s

fees as “costs” available to a plaintiff in a § 1983

suit, such fees are subject to the cost-shifting

42 U.S.C. § 2000 e-5(k) (2001), the Second Circuit awarded

attorneys’ fees to a Rule 68 offeror based on the following statutory

text: “The court, in its discretion, may allow the prevailing

party . . . a reasonable attorney’s fee (including expert fees) as

part of the costs.” Id.

2 Rice v. Musee Lingerie, LLC, 2019 U.S. Dist. LEXIS 111487, *6,

2019 WL 2865210; Leibowitz v. Galore Media, Inc., No. 18-CV2626 (RA) (HBP), 2018 U.S. Dist. LEXIS 161110, 2018 WL

4519208, at *4 (S.D.N.Y. Sept. 20, 2018); Wallert v. Atlan, No.

14-CV-4099 (PAE), 2015 U.S. Dist. LEXIS 13958, 2015 WL

518563, at *1 (S.D.N.Y. Feb. 5,2015).

provision of Rule 68. This “plain meaning”

interpretation of the interplay between Rule

68 and § 1988 is the only construction that

gives meaning to each word in both Rule 68

and § 1988.

Marek, U.S. 473 at 9. Marek states that if the remedy

is “available” to a plaintiff, then it is available to the

judgment-defendant. Attorneys’ fees are available to

the copyright plaintiff, therefore they are available to

the judgment-defendant.

The contrarian circuits say that copyright law

mandates that fee awards are reserved only to a

“prevailing party,” yet this is exactly what the Federal

Rules of Civil Procedure generally says about “costs.”

Fed.R.Civ.P. 54(d) (“[C]osts shall be allowed as of course

to the prevailing party unless the court otherwise

directs.”). Fed.R.Civ.P. 54(d) and 17 U.S.C. § 505 allow

“costs” and “attorneys’ fees” to prevailing parties,

respectively. The contrarian circuits read Rule 68 to

stand in the shoes of the prevailing party for purposes

of Rule 54(d) but not for statutes similar to 17 U.S.C.

§ 505. This is logically flawed.

This Court should hold that Rule 68 means what

it says and ratify Marek: a non-prevailing party can

be awarded costs, and if those costs include attorneys’

fees, then attorneys’ fees can be part of the Rule 68

award. For Plaintiff-Respondent’s case that dizzyingly

cycled between publicity-stunt and political attack,

attorneys’ fees should be available.

A Split Exists Among the Circuit Courts

Regarding the Test for the Formation of an

Implied License and the Test As Applied

Conflicts with This Court’s De Forest

Decision.

The technology industries call it “scope creep.”

Scope creep happens when an initial directive is interpreted multiple times, each time based on the last

interpretation. When the result does not resemble the

initial directive, a company is the victim of scope creep.

Implied licenses began legal life as broad directive:

actions have consequences. Implied copyright licenses

evolved into more narrow affairs laden with factors.

These factors may be occasionally helpful; here there

is little relationship between these factors and social

media reality. Some circuits have prioritized the broad

directive over specificities, others not. The District

Court found the factors more persuasive than the

general directive to hold that the Petitioner-Defendants

lacked an implied license. The District Court should

have prioritized the general directive in the social

media context.

Since the dismissal stage of this matter’s litigation

Petitioner-Defendants pressed the District Court to

adopt this Court’s view concerning copyright implied

license scope. The District Court applied the Fourth

Circuit’s Nelson-Salabes standard in early rulings,

which requires ‘delivery from the copyright holder

to the potential licensee.’ On August 9, 2022 the

District Court in its Summary Judgment ruling officially

adopted the Nelson-Salabes factors over PetitionerDefendants’ protests. App.77a, 133a-134a. Once more

in requested jury instructions, Petitioner-Defendants

pressed for an implied license standard that did not

require an arms-length ‘delivery.’ App.116a. This was

denied; Nelson-Salabes would be the rule at trial.

Griner begged the world to copy the Success Kid

meme. She showed them how to copy the Success Kid

meme, and where copies could be found. There was

approximately an entire trial day’s worth of such ‘intent’

testimony, but when the District Court rigidly interpreted implied license law to require ‘delivery’ from

Griner to King for Congress, it diminished to a nullity

the significance of Griner’s intent. As there was no

delivery, the intent evidence was obviated. App.160a166a.

1. Laney Griner Granted a Direct Implied

License to Social Media Users to Use the

Work.

A nonexclusive license may be . . . implied from

conduct.” Effects Associates, Inc. v. Cohen, 908 F.2d

555, 558 (9th Cir. 1990)(J. Kozinski). An implied license

can be found where the copyright holder engages in

conduct “from which [the] other [party] may properly

infer that the owner consents to his use.” See De Forest

Radio Tel. & Tel. Co. v. United States, 273 U.S. 236, 241

(1927). “The touchstone for finding an implied license

. . . is intent.” John G. Danielson, Inc. v. WinchesterConant Props., Inc., 322 F.3d 26, 40 (1st Cir. 2003).

The court asks whether “the totality of the parties’

conduct indicates an intent to grant such permission.”

3 Nimmer on Copyright § 10.03[A][7], at 10-42 (2000).

The most common test to determine implied

license existence requires an arm’s-length transaction

and then proceeds to analyze whether the licensee

requested the work, whether the creator made and

delivered that work, and whether the creator intended

that the licensee would copy and make use of the

work. See e.g., Nelson-Salabes, Inc. v. Morningside

Dev., LLC, 284 F.3d 505, 514 (4th Cir. 2002). However,

creating material at another’s request is not the essence

of a license; an owner’s conduct is. Midlevelu, Inc. v.

ACI Info. Grp., 989 F.3d 1205, 1216 (11th Cir. 2021).

When an owner’s conduct “clearly” manifests “a consent

to . . . use” of copyrighted material, the owner impliedly

grants a nonexclusive license. Id. citing De Forest, 273

U.S. at 241.

The Nelson-Salabes arm’s length transaction or

meeting-of-the-minds test genre may have a utility for

occasions such as software licenses, but for social

media transactions numbering in the billions, a more

general, flexible test ought be considered. Korman v.

HBC Florida, Inc., 182 F.3d 1291, 1293 (11th Cir. 1999)

(“A nonexclusive license can be granted orally or can

be implied from the conduct of the parties.”). Thompson

v. Looney’s Tavern Productions, Inc., 204 Fed. Appx. 844,

850-851 (11th Cir. 2006) (statements by both plaintiff’s

counsel and co-owner of copyright, after reviewing

script, that it was noninfringing were sufficient to

create license to perform play based on scripts and

“nearly identical” scripts).

The district court rigidly adhered to the NelsonSalabes factors to hold that an implied license could

not exist because there was no arms-length relationship between the parties. At trial the District Court

granted the Plaintiff-Respondent’s motion to direct a

verdict ruling that Petitioner-Defendants’ implied

license defense failed. The jury instructions expressly

incorporated the Nelson-Salabes factors adopted at

the Summary Judgment. Griner’s myriad and lengthy

actions concerning her encouragement and propagation

of the meme should have been weighed under the

general directive, rather than Nelson-Salabes. When

Griner asks the social media universe to create the

Meme, and it does, her capacity to single out individual

copyists ought be severely curtailed.

When the King for Congress utilized the meme

the same ways as billions of others, she must have

blessed her lucky stars; but she didn’t know King very

well. Trolls may have an innate sense to detect

vulnerability, but not so with character. King would

pay no ransom.

The Appeals Court held that the implied license

issue had been ‘waived.’ App.7a. It had not, the District

Court ruled in Griner’s favor, and the Appeals Court

omitted key portions of Petitioner-Defendants’ statements that agreed with Respondent-Plaintiff that they

“could not meet the burden” of an arms-length delivery

test. App.111a-112a.

2. Recent Evolution of Implied License Law

mass transactions. Certainly, copyright is no stranger

to mass-viewing; but the transactions that allowed

them were select. The Internet is changing the licensing

landscape. Website “terms of use,” for example, tend

to be drafted to empower a class of users. Contract law

tells us that a party to a contract can be either an

identified person, or a class of persons. Restatement

2d of Contracts, §29. Comment b explains: “An offer

may create separate powers of acceptance in an

unlimited number of persons, and the exercise of the

power by one person may or may not extinguish the

power of another.” Copyright licenses are following suit.

See e.g., Field v. Google, Inc., 412 F. Supp. 2d 1106, 1116

(D. Nev. 2006).

Petitioners recommend the reasoning in the Field

opinion to this Court. This Court’s website allows

GOOGLE to use those website data to display results

in its search engine. This Court and GOOGLE do

not have an arm’s length relationship. GOOGLE feels

justified in scouring this Court’s website data because

this Court’s Internet-Technology provider has not3

specifically instructed GOOGLE otherwise. HTML,

which provides standards for website creation, adopts

the use of a Robots.txt file; and in this file, a website

in its HTML code can instruct search engines that the

website does not wish to be “spidered” (i.e., rendered

search-engine-indexable). Many websites don’t wish

to appear in search results. GOOGLE, though large and

oppressive, performs a significant service to humanity;

and in Field, a malcontent tried to use the rigid

interpretation of implied license to trap GOOGLE,

but that district court applied this Court’s broad

directive instead.

Pre-Field was probably the extent of the pendulum

concerning specific factors. When in doubt obey first

principles. This Court merely needs to identify the

self-evident principle that one cannot beg for, cheer

on, instruct, cajole, and fawn over very public uses of

copyrighted content in mass social media, only to demur

when someone that she finds “abhorrent” takes her at

her word.

3 This is important, and the district court in its analysis got this

wrong; you don’t ask a search engine to be spidered, you have to

instruct it to leave you alone.

If Nelson-Salabes prevails for image posts and

transmissions, this Court would be mass-producing

infringement on an inconceivable scale: a world of

infringers merely waiting to be sued.

CONCLUSION

For the foregoing reasons, the Court should grant

the Petition for Certiorari.

Respectfully submitted,

Patrick M. McSweeney

Counsel of Record

MCSWEENEY, CYNKAR &

KACHOUROFF, PLLC

13649 Office Place # 101

Woodbridge, VA 22192

(804) 937-0895

patrick@mck-lawyers.com

Michael Blankenship

Da Vinci's Notebook, LLC

9000 Mike Garcia Dr.

No. 52

Manassas, VA 20109

703-581-9562

keith@dnotebook.com

Counsel for Petitioners

September 12, 2024

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.