The matter of implied copyright licence

In 1984, Jesus Muhammad‐Ali painted a portrait of the leader of the Nation of Islam, Louis Farrakhan. In 2013, Ali sued The Final Call, a newspaper that describes itself as the “propagation arm of the Nation of Islam,” for copyright infringement. The Final Call, it turned out, admittedly had sold over a hundred copies of Ali’s Farrakhan portrait. Ali nonetheless lost his case after a bench trial. He appealed, arguing that the district court misstated the elements of a prima facie copyright infringement claim and erroneously shifted to him the burden of proving that the copies were unauthorized.

Jesus Muhammad‐Ali is Elijah Muhammad’s grandson and a professional portrait painter. In 1984, Ali painted a portrait of Louis Farrakhan, then – and still – the leader of the Nation of Islam. On March 14, 1986, Ali registered and recorded a copyright in the painting, which is entitled “Minister Farrakhan.”

In 2013, Ali sued The Final Call, alleging that it had infringed on his copyrights in his depictions of Louis Farrakhan, Elijah Muhammad, and Khadijah Farrakhan, Louis Farrakhan’s wife. Ali later dropped the claims related to his portraits of Elijah Muhammad and Khadijah Farrakhan, but he continued to press his claim that the Final Call had distributed unauthorized copies of the “Minister Farrakhan” portrait.

In its answer, The Final Call admitted that it had sold 115 copies of the lithograph between 2010 and 2013. It maintained, however, that Ali had authorized it to produce and sell the copies. The copies it sold were titled “Allah’s Star of Guidance,” and featured a yellow border and text below the image reading: “Allah’s Star of Guidance, The Honorable Elijah Muhammad and His Servant Minister Louis Farrakhan.”

Ali moved for summary judgment, asserting that he had proved a prima facie case of copyright infringement and that The Final Call had raised no defences. The district court denied Ali’s motion for summary judgment, holding that “The Final Call has adduced evidence that would allow a reasonable factfinder to find that Farrakhan’s commission of ‘Minister Farrakhan Painting’ included lithographic copies, and therefore that Ali authorized the creation and sale of the copies.”

The Final Call presented no affirmative defenses in the district court. Although it originally asserted implied license and laches defenses, it waived them at a pretrial conference. There is no evidence of either a written or oral license in this case. Finally, there is no evidence that Ali intended that The Final Call copy and distribute his work. Even if Ali did grant such permission to Farrakhan – and there is no evidence that he did – nothing indicates that he granted it to The Final Call, or that Farrakhan attempted to transfer a license to The Final Call.

There is no evidence that Ali had any understanding with Farrakhan or The Final Call regarding the portrait at issue in this case. Even if Ali’s commission gave Farrakhan a right to make lithographs of the portrait, there is no evidence that Ali gave permission to Farrakhan to have The Final Call distribute them – or even that Farrakhan himself gave that permission. In addition, even if Farrakhan authorized a 1985–1986 distribution with Ali’s permission, there is no evidence that Farrakhan or Ali gave permission to The Final Call for the 2010–2013 distribution.

The court therefore reversed the judgment of the district court and remanded the case for the assessment of damages.