It Could Have Been Worse: The Relative Benefits Doctrine of Takings

Photo by Kelly Sikkema on Unsplash

J.P. Burleigh, Blog Editor, University of Cincinnati Law Review

I. Introduction

The Fifth Amendment guarantees that the government can only take private property for public use if the government justly compensates the property owner.[1] Courts use a variety of tests to decide if government action affects property so much as to be a “taking” requiring compensation to the owner.[2] The Supreme Court has recognized government-caused floods of private property as takings in certain circumstances.[3] But under a little-used theory called the relative benefits doctrine, the government can flood private property and avoid paying compensation if the flood is part of a program that provides more benefit than harm to the property.[4] This article explores the doctrine’s origins and a recent case showing the doctrine’s limits.

II. Background

The relative benefits doctrine emerged out of the Supreme Court’s 1939 decision in U.S. v. Sponenbarger.[5] In Sponenbarger, a woman alleged that the Mississippi Flood Control Act of 1928 was a taking of her property.[6] The Act aimed to limit seasonal flooding on the Mississippi River by building levees along the river.[7] Special diversion channels on the levees allowed flooding into certain areas.[8] Because the plaintiff’s property was within one of these floodways, she argued the government was causing floods on her property.[9]

In an opinion by Justice Black, the Court held that the government did not cause floods on the plaintiff’s property, because her land had always been subject to the “immemorial danger of unpredictable major floods.”[10] The Court found that the program “measured in its entirety greatly reduce[d] the general flood hazards [and was] highly beneficial” to her land.[11] Any increased risk or severity of flooding was minor compared to the benefit the plaintiff received from the Act, so the government owed her no compensation.[12] The opinion continued, providing language laying the groundwork for the relative benefits doctrine:

“The constitutional prohibition against uncompensated taking of private property for public use is grounded upon a conception of the injustice in favoring the public as against an individual property owner. But if governmental activities inflict slight damage upon land in one respect and actually confer great benefits when measured in the whole, to compensate the landowner further would be to grant him a special bounty. Such activities in substance take nothing from the landowner. While this Court has found a taking when the Government directly subjected land to permanent intermittent floods to an owner’s damage, it has never held that the Government takes an owner’s land by a flood program that does little injury in comparison with far greater benefits conferred.”[13]

Courts have applied Sponenberger’s reasoning to develop what is now called the relative benefits doctrine. Simply put, flood control programs do not constitute takings if, all things considered, the program benefits the property in question.[14] In analyzing whether a flood program benefits property, courts compare the program’s overall benefits and detriments to the property, including what would have happened if the government never acted at all.[15] Courts have used this doctrine to deny takings claims arising from dam and levee operation.[16] For example, in Hartwig v. U.S., plaintiffs argued that dams on the North Platte River caused flooding on their properties, but a court barred these claims because the dams actually decreased the risk of flooding and provided the added benefit of irrigation.[17]

In takings claims based on flooding of property, the relative benefits doctrine acts as a defense for the government to avoid paying compensation if the government can show the flood was part of a program that benefitted the property.[18] The judge-made policy behind the doctrine is based on the belief that property is not taken if that property ends up better off. But one recent case demonstrates the limits of this reasoning.

III. Alford v. United States

In 2010, the United States Army Corps of Engineers discovered a problem: a levee between the Mississippi River and Eagle Lake was failing because of pressure from the river.[19] If left alone, the levee would breach with over 95% certainty  and waters from the Mississippi River would flood about a million acres of land, including thousands of homes and businesses.[20]  The Corps studied what to do for over a year and ultimately decided to intentionally flood Eagle Lake. The Corps raised Eagle Lake’s water level about fifteen feet higher than normal, counteracting the pressure on the levee.[21] The Corps maintained this heightened water level for three months, then reduced the lake to its normal water level and spent $2.7 million to permanently reinforce the levee.[22] This plan successfully avoided a levee breach but wrecked many of the piers, boathouses, and docks on the lake, causing thousands of dollars of property damage.[23] 

Although the Corps gave claim forms to the affected property owners, the federal government denied compensation for the destroyed property.[24] The affected property owners argued the government had taken property without compensation in violation of the Fifth Amendment, and sued in the Court of Federal Claims, which awarded $168,000 plus interest for the collective damage.[25] But the Federal Circuit reversed, applying the relative benefits doctrine.[26] The court explained that “the properties would have been far worse off and suffered more serious damage if the government had not acted.”[27] In the eyes of the appellate court, the benefit of avoiding a massive flood from a levee breach outweighed any injury the property owners suffered.[28]

IV. Analysis

The Federal Circuit’s decision in Alford demonstrates a weakness of the relative benefits doctrine. In Sponenbarger, the government’s levee system minimized the number ofnatural floods on the plaintiff’s property; in that context, the few seasonal floods that still affected her property were not government-caused takings. But in Alford the only flood at issue was not natural at all; it was a man-made flood, resulting from a deliberate government decision. The Corps studied the endangered levee for over a year and knew that flooding Eagle Lake was less expensive than strengthening the levee. After weighing costs, the Corps chose to flood the plaintiff’s property, knowing that such a flood would cause property damage.

Fairness requires that the government compensate the property owners for the property losses they suffered at the hands of the Corps. Consider an example. What if one woman owned a 100-acre plot of land in a valley which had a thousand people, and the Corps erected a dam on 20 acres of her land? Even if she is safer from a flood, the government has obviously taken some of her property. She deserves compensation for bearing a disproportionate burden to keep the other residents of the valley safe. The plaintiffs in Alford suffered a similar fate: the Corps prevented a flood by reinforcing the levee with water and destroyed the plaintiffs’ property to do so.[29] Even if the plaintiffs avoided the hypothetically likely massive flood from the levee breaching, they still suffered from the real flood created to save everyone else.

The relative benefits doctrine should be phased out to allow property owners like those in Alford to be compensated for their losses. This does not mean that the government will be liable for a taking every time a dam or levee fails to prevent a flood; careful analysis of causation can supply the right answer. For instance, Sponenbarger’s language about “slight damage” and “great benefits” is unnecessary to its main holding: the government did not cause the Mississippi River to flood.[30] But failing to prevent a natural harm is different than creating a man-made one, and when the government intentionally harms property, the Fifth Amendment’s Takings Clause should come into play.

V. Conclusion

The relative benefits doctrine allows the government to avoid paying compensation for intentionally flooding property if the government can show the flood is part of a program that benefits the property overall. This doctrine sprang out of a case about a natural flood, but the Federal Circuit has applied it in Alford to protect the government even when it creates a man-made flood. The doctrine has outgrown its usefulness, and future courts should decline to use it. Careful attention to issues of causation will ensure that property owners do not receive windfalls and allow courts to better enforce the Fifth Amendment’s guarantee—private property shall not be taken for public use without just compensation.

[1] U.S. Const. amend. V.

[2] See generally Loretto v. Teleprompter, 458 U.S. 419 (1982) (permanent physical invasion); Lucas v. South Carolina Coastal Council, 505 U.S. 1003 (1992) (denial of all economically beneficial use); Dolan v. City of Tigard, 512 U.S. 374 (1994) (exactions); Penn Central Transportation Co. v. New York City, 438 U.S. 104 (1978) (regulatory takings).

[3] Arkansas Fish & Game Commission v. U.S., 568 U.S. 23, 32 (2012) citing Pumpelly v. Green Bay Co., 13 Wall. 166, 181 (1872).

[4] Herriman v. U.S., 8 Cl.Ct. 411, 418-19 (Ct. Cl. 1985).

[5] 308 U.S. 256 (1939).

[6] Id. at 260.

[7] Id. at 261.

[8] Id. at 261-62.

[9] Id. at 262.

[10] Sponenbarger, 308 U.S. at 265.

[11] Id. at 266.

[12] Id.

[13] Id. at 266-67.

[14] Alford v. U.S., 2020 WL 3393533, *2-*3 (Fed. Cir. 2020).

[15] Id. at *4.

[16] Hartwig v. U.S., 485 F.2d 615, 621 (Ct. Cl. 1973) (operation of dams on North Platte River was not a taking); Herriman v. U.S., 8 Cl.Ct 411, 422 (Cl. Ct. 1985) (operation of Eufaula Dam was not a taking); Laughlin v. U.S., 22 Cl.Ct. 85, 114 (Cl. Ct. 1990) (operation of Hoover Dam and surrounding dams was not a taking); Big Oak Farms, Inc. v. U.S., 105 Fed.Cl. 48, 57 (operation of a levee on the Mississippi River was not a taking).

[17] Hartwig, 485 F.2d at 616-17.

[18] Alford, 2020 WL 3393533 at *3.

[19] Alford v. U.S., 141 Fed.Cl. 421, 424 (Fed. Cl. 2019).

[20] Id. at 424-25.

[21] Id. at 424.

[22] Id. at 425.

[23] Id. at 424.

[24] Alford, 141 Fed.Cl. at 425.

[25] Id. at 427.

[26] Alford, 2020 WL 3393533 at *4.

[27] Id.

[28] Id.

[29] Id. at *1.

[30] Sponenbarger, 308 U.S. at 265-66.

A Textualist’s Dream: Reviewing Justice Gorsuch’s Opinion in Bostock v. Clayton County

Photo by Bill Mason on Unsplash

Hunter Poindexter, Articles Editor, University of Cincinnati Law Review

I. Introduction

Last week, the Supreme Court delivered a landmark decision for LGBTQ rights. In Bostock v. Clayton County, the Court held that Title VII of the Civil Rights Act of 1964 protects gay and transgender individuals from workplace discrimination. The Court’s decision was fairly surprising, as the Justices divided 6-3 in favor of the employees, with conservative Justice Neil Gorsuch authoring the opinion. The decision has, of course, brought forth some speculation on Justice Gorsuch’s ideological positioning on the Court. This article discusses Justice Gorsuch’s opinion in Bostock and how to reconcile that opinion with Justice Gorsuch’s conservative, textualist jurisprudence. 

II. Background

In relevant part, Title VII of the Civil Rights Act of 1964 (“Title VII”) makes it unlawful for an employer” to fail or refuse to hire or to discharge any individual, or otherwise to discriminate against any individual with respect to his compensation, terms, conditions, or privileges of employment, because of such individual’s race, color, religion, sex, or national origin[.]” [1]Facially, the statute reads clear in regard to sex discrimination: no employer can make discriminatory employment decisions because of an individual’s sex. However, the issue of what actions may constitute sex discrimination has been litigated since the enactment of the statute. As Justice Gorsuch noted in his Bostock opinion, the Court has historically applied a broad reading of the statute, encompassing a vast array of conduct.[2] For example, in 1971 the Court held that an employer discriminates on the basis of sex when it refuses to hire a woman with young children where it would nonetheless hire a man with young children.[3] In 1989, the Court ruled that an employer commits sex discrimination when it makes employment decisions based on an employee’s failure to conform to gender stereotypes.[4] Furthermore, in 1998 the Court held that Title VII protects an employee from sexual harassment by coworkers of the same sex.[5]

Prior to the Court’s Bostock decision, a number of circuits had already ruled on the matter of sexual orientation under Title VII. For example, in Blum v. Gulf Oil Corp.,[6] the Fifth Circuit held that Title VII does not protect an individual from discrimination on the basis of sexual orientation. Likewise, in Evans v. Ga. Reg’l Hosp.,[7] the Eleventh Circuit, relying on Blum, rejected the notion that sexual orientation fell within the protections of Title VII. Alternatively, both the Second and Seventh Circuits have held that Title VII’s sex discrimination protections necessarily encompass an employee’s sexual orientation.[8] Therefore, when the Court took up the matter on a grant of certiorari, it put itself in a position to resolve a rather significant split among several circuits.

III. The Consolidated Cases

The Bostock decision was a joint opinion comprised of three cases: Bostock v. Clayton County, Altitude Express, Inc. v. Zarda, and R.G. & G.R. Harris Funeral Homes Inc. v. Equal Employment Opportunity Commission. Both Bostock and Zarda dealt with the issue of sexual orientation, and were consolidated for briefing and oral argument. Alternatively, Harris Funeral Homes concerned employment discrimination for transgender employees. In each case, an employer fired an employee for seemingly no other reason than the employee’s sexual orientation or gender identity. 

A. Bostock v. Clayton County

The Bostock case was premised around the firing of a gay man in Clayton County, Georgia. Gerald Bostock was a highly regarded child services advocate in Clayton County for ten years until he was fired in 2013.[9] Bostock led the County’s Court Appointed Special Advocate program, and under his command, the program won several awards for excellence.[10]  In 2013, Bostock began participating in a gay softball league.[11]After several prominent members of the Clayton County community made disparaging remarks about Bostock’s participation in the league, the County conducted “an unwarranted ‘audit’” on Bostock’s child services program.[12] Shortly thereafter, Bostock was fired for “‘conduct unbecoming of a county employee.’”[13]

Bostock subsequently brought suit against the county for discrimination under Title VII.[14] At trial, the District Court dismissed Bostock’s complaint, citing Evans’s holding that Title VII’s bar on sex discrimination does not protect an individual from discrimination on the basis of sexual orientation.[15] Further, the Eleventh Circuit affirmed the District Court’s dismissal of Bostock’s claims. On April 22, 2019, the United States Supreme Court granted certiorari.[16]

B. Altitude Express, Inc. v. Zarda

The facts in Zarda were similar to those in Bostock. Donald Zarda worked as a skydiving instructor at Altitude Express.[17] Prior to a dive, Zarda mentioned to a customer that he was gay.[18] Within a few days of the comment, Zarda was fired for, as Altitude Express claimed, “‘sharing inappropriate information with [customers] regarding his personal life.’”[19] Zarda filed a complaint with the Equal Employment Opportunity Commission (“EEOC”) against Altitude Express, and then brought suit in federal court under Title VII and New York state law.[20] Prior to trial, the District Court granted Altitude Express’s motion for summary judgment on the Title VII claim, concluding that, under then-Second Circuit precedent, Title VII did not protect employees from discrimination for sexual orientation. [21] At trial for the state claim, a jury returned a verdict in favor of Altitude Express.[22] Donald Zarda passed away prior to the trial, but his estate executors were substituted in the litigation.[23]

On appeal, the Second Circuit initially affirmed the District Court’s grant of summary judgment; however, the Court of Appeals subsequently granted Zarda’s petition for an en banc hearing on the matter.[24] In its en banc decision, the Second Circuit reversed its prior ruling, holding instead that “sexual orientation discrimination is properly understood as ‘a subset of actions taken on the basis of sex.’”[25] Following the Second Circuit’s reversal, Altitude Express filed a petition for certiorari, which the Supreme Court granted on April 22, 2019.[26] The Court subsequently consolidated Zarda with Bostock for briefing and oral argument.[27]

C. R.G. & G.R. Harris Funeral Homes Inc. v. Equal Employment Opportunity Commission

Unlike Bostock and Zarda, the facts of Harris Funeral Homes were premised on gender identity. Aimee Stephens, who was assigned a male gender at birth, was a funeral director at R.G & G.R. Harris Funeral Homes (“Harris Funeral Homes”).[28] After working at the funeral home for close to six years, Stephens informed her employer that she intended to work and live as a woman.[29] Within two weeks of apprising her employer of her decision, Stephens was fired.[30] Following Stephens’s termination, her employer openly acknowledged that he fired Stephens because of her transgender identity, and not her job performance.[31]

Stephens brought a discrimination charge to the EEOC, who then brought suit against Harris Funeral Homes on Stephens’s behalf.[32] At the trial level, the District Court rejected Harris Funeral Homes’ motion to dismiss, concluding that Stephens could bring a sex discrimination claim if she was terminated for a failure to conform to gender stereotypes.[33] However, the District Court later granted summary judgment in favor of Harris Funeral Homes because the Religious Freedom Restoration Act exempted the funeral home from Title VII requirements.[34] On appeal, the Sixth Circuit reversed, holding that Stephens’s termination for her transgender status, was, indeed, sex discrimination.[35] Harris funeral homes petitioned the Supreme Court for certiorari, which the Court granted.[36]

IV. The Bostock Opinion

In Bostock, the Court divided 6-3, with Chief Justice Roberts and the Court’s four liberal Justices joining Justice Gorsuch’s majority opinion, in full.[37] Unsurprisingly, Justice Gorsuch’s opinion was rooted in textualist jurisprudence. First, Justice Gorsuch set out to determine the “ordinary public meaning” of the statute’s text at the time of its enactment in 1964.[38] After parsing through the language, Justice Gorsuch acknowledged that the statute provided a “straightforward rule,” that “[a]n employer violates Title VII when it intentionally fires an employee based in part on sex.”[39] Having established this rule through the statute’s text, Justice Gorsuch then went on to determine whether an employer violates the rule by firing employees for sexual orientation or gender identity.

In analyzing the issue of discrimination for sexual orientation, Justice Gorsuch posed a simple hypothetical: Two employees are virtually identical, except that one is a man and one is a woman. Both employees are attracted to men. When the male employee is fired for being attracted to men but the female employee is not, the male employee has been discriminated against on the basis of sex.[40] Justice Gorsuch then posed a similar hypothetical as it relates to gender identity: An employer fires a transgender employee who identifies as a female but was assigned a male sex at birth. If the employer then hires an identical employee who identifies as a female and was assigned a female sex at birth, “the employer intentionally penalizes a person identified as male at birth for traits or actions that it tolerates in an employee identified as female at birth.[41]” To that end, the majority held that “discrimination based on homosexuality or transgender status necessarily entails discrimination based on sex[.]”[42] Further, the majority opinion concluded that an employer cannot escape Title VII liability merely because it fires all gay or transgender employees, regardless of their sex.[43] Rather, in that case, the employer would “double[]” its liability under Title VII.[44]

The majority opinion also rejected an argument that, in 1964, Congress could not have intended for Title VII to encompass protections for gay and transgender employees.[45] Rather, Justice Gorsuch concluded that legislative history and intent should only be consulted when a statute is ambiguous, which was not the case here.[46] Because the text of Title VII is clear, “the limits of the drafters’ imagination supply no reason to ignore the law’s demands.”[47] For, as Justice Gorsuch wrote, “[w]hen the express terms of a statute give us one answer and extratextual considerations suggest another, it’s no contest. Only the written word is law, and all persons are entitled to its benefit.”[48]

Justice Gorsuch appears to have written Bostock with a broad audience in mind. Although the Court was tasked with analyzing the textual structure of Title VII, Justice Gorsuch drafted the opinion in a manner easily understandable by both the legal community and non-lawyers, alike. For example, in reviewing the “ordinary public meaning” of Title VII, Justice Gorsuch broke down the statute step-by-step, explaining throughout the opinion the meaning of certain legal phrases, such as “but-for causation.”[49] Additionally, as aforementioned, the opinion is teeming with hypotheticals and examples to help explain the Court’s rationale behind its decision. Admittedly, the opinion’s appeal to a broad audience is unsurprising; Bostock effectively protected the rights of millions of Americans from workplace discrimination, so the decision was sure to see heavy reader traffic.

V. Justice Gorsuch’s Jurisprudence

Let’s be clear about one thing early on: Bostock was a purely textualist decision. In briefing and oral arguments in the sexual orientation cases, Pamela Karlan, counsel for Bostock and Zarda, appealed to the Justices’ textualist nature. Chief among her arguments was that the language of Title VII, alone, properly encompassed sexual orientation, and that the Court had to play no activist role to find in favor of the employees. In fact, the sexual orientation hypothetical posed by Justice Gorsuch in the majority opinion was first posed by Karlan at oral arguments. With this in mind, Karlan was clearly making a textualist play, likely aimed at the Court’s more conservative members.

With this backdrop of textualism in mind, what does the majority opinion reveal about Justice Gorsuch’s jurisprudence moving forward? Likely not much. While Gorsuch admittedly wrote an historic opinion protecting the rights of the LGBTQ community, it is unlikely that we’ve seen the Court’s textual stalwart shift his ideological position. Justice Gorsuch is a self-proclaimed textualist, who often seeks to base his opinions in the written word of a statute.[50] As discussed above, Pamela Karlan played directly into Justice Gorsuch’s wheelhouse with arguments rooted in the express language of Title VII. Bostock was the perfect case for a textual jurist; the majority opinion was anchored in dictionary definitions and canons of statutory construction. Justice Gorsuch had to do no reaching here, as Karlan and the text of Title VII brought him to an answer. So, no, Justice Gorsuch is most likely not going to be the Court’s new John Paul Stevens. But even then, the impact of Justice Gorsuch’s opinion should not be relegated merely to a conversation about his potential shift in ideological positioning. Rather, it is important to recognize the Court’s momentous decision in Bostock and acknowledge Justice Gorsuch’s contribution.

VI. Conclusion

In sum, we are not likely seeing the evolution of Neil Gorsuch following the Court’s Bostock opinion. No doubt, Bostock is a landmark decision which effectively protects the rights of LGBTQ employees from discrimination in the workplace. However, Justice Gorsuch is not now, and likely never will be, a liberal jurist. Rather, the Bostock decision was the result of convincing statutory text and effective advocacy. Even then, it is important not to discount how momentous Bostock is for the nation. Although Justice Gorsuch has likely not shifted to the left of the Court, his opinion in Bostock has nonetheless made a meaningful contribution to the rights of the LGBTQ community.

[1] 42 U.S.C. § 2000e-2(a) (emphasis added).

[2] 2020 U.S. LEXIS 3252 at *37.

[3] Phillips v. Martin MariettaCorp. 400 U.S. 542 (1971).

[4] Price Waterhouse v. Hopkins, 490 U.S. 228 (1989).

[5] Oncale v. Sundowner Offshore Services, Inc., 523 U.S. 75 (1998).

[6] 597 F.2d 936 (5th Cir. 1979).

[7] 850 F. 3d 1248 (11th. Cir. 2017).

[8] Zarda v. Altitude Express, Inc., 883 F.3d 100 (2d Cir. 2018); Hively v. Ivy Tech Cmty. Coll. of Indiana, 853 F.3d 339 (7th Cir. 2017). Zarda would go on to be consolidated with Bostock at oral argument before the Supreme Court on a grant of certiorari.

[9] Brief for Petitioner at 4, Bostock v. Clayton County, No. 17-1618 (June 26, 2019).

[10] Id. at 5.

[11] Id.

[12] Id. 5-6.

[13] Id. at 6.

[14] Id.

[15] Id.

[16] 139 S. Ct. 1599 (2019). 

[17] Brief of Respondent at 3, Altitude Express, Inc. v. Zarda, No. 17-1623 (June 26, 2019).

[18] Id. at 4.

[19] Id. 

[20] Id. at 4-5.

[21] Id. at 5.

[22] Id. at 6.

[23] Id. at 5.

[24] Id. at 6.

[25] Id. at 6-7.

[26] 139 S. Ct. 1599 (2019).

[27] Id.

[28] Brief of Respondent at p.4-6, R.G. & G.R. Funeral Homes v. Equal Employment Opportunity Commission, No. 18-107 (June 26, 2019).

[29] Id. at 7-8.

[30] Id. at 9.

[31] Id. at 9.

[32] Id. at 11-12.

[33] Id. at 12.

[34] Id. at 12-13.

[35] Id. at 13-14.

[36] 139 S. Ct. 1599 (2019).

[37] 2020 U.S. LEXIS 3252 (2020).

[38] Id. at *12.

[39] Id. at *20.

[40] Id. at *21.

[41] Id.

[42] Id. at *36.

[43] Id. at *40.

[44] Id.

[45] Id. at *44-45.

[46] Id.

[47] Id. at *10.

[48] Id.

[49] Id. at *15.

[50] Neil M. Gorsuch with Jane Nitze & David Feder, A Republic If You Can Keep It 128-44 (2019).

Did the Ninth Circuit Create a Circuit Split? Analyzing Cedar Point Nursery v. Shiroma

Photo by Dan Meyers on Unsplash

Mike Chernoff, Blog Chair, University of Cincinnati Law Review

I. Introduction

The Fifth Amendment protects private property owners from their property being taken for public use, unless they are compensated sufficiently. California allows labor organizers to access agricultural employers’ properties to discuss labor issues, so long as certain conditions are met. This regulation was challenged by two agricultural employers that claimed it amounted to a taking. The Ninth Circuit upheld the dismissal of the claim, but the dissent claimed the majority’s decision created a circuit split. As this article will explain, the Ninth Circuit was correct to deny the Plaintiffs’ claim; in doing so, the court did not create a circuit split but instead followed established precedent.

II. Fifth Amendment Takings

The Fifth Amendment prevents private property from being taken for public use, unless there is “just compensation.”[1] The Supreme Court has recognized various categories of regulatory takings which apply to “regulatory actions that are functionally equivalent to the classic taking in which government directly appropriates private property or ousts the owner from his domain.”[2]

These regulatory takings include per se takings which include situations “where government requires an owner to suffer a permanent physical invasion of her property—however minor” and regulations that deprive an owner of “all economically beneficial us[e] of her property.”[3] A state law is determined to violate the Fifth Amendment if the regulatory restriction on private property “[forces] some people alone to bear public burdens which, in all fairness and justice, should be borne by the public as a whole.”[4] The Supreme Court provided an example of a permanent physical invasion in Loretto v. Teleprompter Manhattan CATV Corp., where a state law required landlords to allow cable television companies to install cable facilities on their property.[5] However, the Supreme Court also stated that “not every destruction or injury to property by governmental action has been held to be a ‘taking’ in the constitutional sense” in PruneYard Shopping Center v. Robins.[6] In PruneYard, the Supreme Court ruled that allowing the public to exercise the rights of free expression and petition on shopping center property was not an infringement of property rights under the Fifth Amendment.[7]

III. Cedar Point Nursery v. Shiroma

In 1975, California enacted the Agricultural Labor Relations Act which established the creation of the Agricultural Labor Relations Board (“the Board”) to “guarantee[] justice for all agricultural workers and stability in labor relations.”[8] The Board promulgated a regulation early in its existence that allows union organizers access to employees on their employers’ property in certain circumstances.[9] This regulation allows labor organizers to access an agricultural employer’s property for four days out of a 30 day period and limits how many hours the organizers can spend at the property.[10] The 30 day period begins after a labor organization has filed a notice.[11]

In 2015, Cedar Point, an Oregon corporation with a California nursery, and Fowler, a California shipper of grapes and citrus, each had separate incidents of organizers of the United Farm Workers Union seeking access to their employees.[12] In February 2016, Cedar Point and Fowler (“Plaintiffs”) filed a complaint for declaratory and injunctive relief against the Board, claiming the Board’s access regulation amount to a taking in violation of the Fifth Amendment and an unreasonable seizure in violation of the Fourth Amendment.[13] The District Court granted the Board’s motion to dismiss and the Growers sought an appeal to the Ninth Circuit Court of Appeals.[14]

On appeal, the Plaintiffs based their Fifth Amendment argument on the theory that the Board’s access regulation constituted a permanent physical invasion of their property.[15] The Plaintiffs argued that intermittent physical invasions can be permanent if there is no “contemplated end-date” to the intrusions.[16] The Ninth Circuit disregarded this argument, finding that the regulation did not create a permanent physical occupation because the Plaintiffs’ property could not be continuously traveled by the public at any time.[17] The Ninth Circuit further stated that the Board’s regulation did not constitute a taking because the only property right affected was the right to exclude.[18] The Ninth Circuit affirmed the dismissal by the District Court.[19]

The Plaintiffs petitioned for rehearing en banc, which the Ninth Circuit denied.[20] However, Judge Ikuta suggested in her dissent that the majority’s decision had created a circuit split.[21] Judge Ikuta believed that the Federal Circuit’s decision in Hendler v. United States provided an example which would make the labor organizers’ access a taking under the Fifth Amendment.[22] In Hendler, various government vehicles and equipment would enter the Plaintiff’s land without permission to install and service groundwater wells.[23] The Federal Circuit held this amounted to a taking despite only certain government vehicles entering the property.[24] Judge Ikola claimed an easement that allows entry onto private property is a taking and that the Ninth Circuit is the only Circuit that refuses this as a taking.[25]

Judge Paez’s concurrence with the majority refuted Judge Ikola’s claims of a circuit split.[26] According to Judge Paez, an easement does not create a permanent physical invasion in every situation.[27] The concurrence focused on the fact that the Board had not established a permanent physical structure on the Plaintiffs’ property.[28] Also, the organizers were only allowed on the property in specific situations under the regulation.[29] Due to these differences, Judge Paez argued that the majority held correctly and did not create a circuit split.[30]

IV. Analysis

This case brought to light the question of how much access is required to constitute a taking. The access regulation from the Board would have only allowed organizers to access the Plaintiffs’ properties a maximum of 360 hours per year with 120 of those hours only allowed during the workday.[31] These short timeframes also came with the requirement that the employers had received notice of the organizers intent to access the property.[32] These restrictions on the amount of time an organizer may access the property and the filing requirements prevent the access from becoming “permanent” which is needed for a taking. After the allotted amount of time has expired for the organizers’ access, the employer can exclude the organizers from the property. Similarly, the filing is only valid for 30 days. Once this time period has expired, the organizers do not have access to the property without another filing. Therefore, the Plaintiffs’ claim that the organizers’ access is a “permanent physical invasion” fails because the access is not “permanent.”

The dissent’s claim of a circuit split also does not stand against the concurrence’s argument. Disregarding the fact that the organizers’ access time is limited, there is no element of the access that is “permanent” as seen in prior cases. The organizers do not install equipment or invade any portion of the property, other than to discuss labor issues at specific times. The levels of access allowed by this regulation do not amount to the decisions that the dissent relies on when claiming the circuit split. The majority correctly held that this level of access did not satisfy the standard of a “permanent physical invasion” that is required for the claimed type of Fifth Amendment taking.

V. Conclusion

The Ninth Circuit considered what is the minimum amount of access to qualify as a taking under the Fifth Amendment. The Board’s access regulation greatly limits when labor organizers may access agricultural property and grants no permanent access for these organizers. Despite the dissent’s claim in Cedar Point Nursery v. Shiroma that this created a circuit split, the majority was correct that this case is distinguishable from the Hendler due to the lack of permanent access granted by the regulation.

[1] U.S. Const. amend. V.

[2] Cedar Point Nursery v. Shiroma (Cedar Point I), 923 F.3d 524, 530-531 (9th Cir. 2019), reh’g denied, 956 F.3d 524 (9th Cir. 2020) (citing Lingle v. Chevron U.S.A. Inc., 544 U.S. 528, 539 (2005)).

[3] Cedar Point I, 923 F.3d at 531 (citing Lingle, 544 U.S. at 538).

[4] PruneYard Shopping Center v. Robins, 447 U.S. 74, 83 (1980). (quoting Armstrong v. United States, 364 U.S. 40, 48 (1960).

[5] Cedar Point I, 923 F.3d at 531.

[6] Id. at 532; PruneYard, 447 U.S. at 82.

[7] PruneYard 447 U.S. at 82-83.

[8] Cedar Point I 923 F.3d at 526 (quoting Cal Lab. Code § 1140 note (West 2011) (Historical and Statutory Notes)).

[9] Cedar Point I, 923 F.3d at 527.

[10] Id. at 528.

[11] Id.

[12] Id. at 528-529.

[13] Id. at 529.

[14] Id. at 529-530.

[15] Id. at 531.

[16] Cedar Point I, 923 F.3d at 531.

[17] Id. at 532.

[18] Id.

[19] Id. at 534-536.

[20] Cedar Point Nursery v. Shiroma (Cedar Point II), 956 F.3d 1162, 1162 (9th Cir. 2020).

[21] Id. at 1165 (Ikuta, J., dissenting).

[22] Id. at 1170-71; Hendler v. United States, 952 F.2d 1364 (Fed. Cir. 1991).

[23] Hendler, 952 F.2d at 1377.

[24] Id. at 1377-78.

[25] Cedar Point II, 956 F.3d at 1171.

[26] Id. at 1162-63.

[27] Id. at 1164-65.

[28] Id. at 1165.

[29] Id.

[30] Id. at 1165.

[31] Cedar Point I, 923 F.3d at 536.

[32] Id. at 528.

A Call for the Expansion of the Visual Artists Rights Act

Photo by Erik Witsoe on Unsplash

Sam Berten, Blog Editor, University of Cincinnati Law Review

I. Introduction

United States (“U.S.”) copyright law provides substantial protections against copyright infringement; however, the U.S. does not adequately protect an author’s moral rights.[1] Moral rights protect an author’s reputation and allow authors to control their attributions.[2] The European legal system has stronger moral rights protections than the U.S. legal system, and France provides the most robust moral rights protections. The U.S. must adapt and current moral rights legislation to adequately protect American authors and provide them the same rights other countries vest in their authors.

II. Background

Moral rights come from the French term droit moral, which translates to “moral rights.”[3] Moral rights are included in international copyright law, including Article 6bis of the Berne Convention (the leading international copyright treaty).[4] Article 6bis states:

(1) independently of the author’s economic rights, and even after the transfer of the said rights, the author shall have the right to claim authorship of the work and to object to any distortion, mutilation or other modification of, or other derogatory action in relation to, the said work, which would be prejudicial to his honor or reputation.[5]

Because moral rights are included in 6bis, all 178 Berne Convention member states, including the U.S., have to meet the minimum moral rights protections stated in the convention. This means that each Berne member must “provide for at least the moral rights of paternity and integrity.”[6]

The right of paternity (droit de paternite) is often referred to as “attribution” and it gives an author the power to recognize their works and protect their name from being attached to a work they did not create.[7]  The right of attribution is not included in U.S. copyright law, but artists in the U.S. have benefitted from its protections. For instance, American film directors that are unhappy with how their films are edited can have their name replaced with “Allen Smithee.”[8]

The right of integrity (droit au respect de l’integrite de l’oeuvre) allows authors to object or approve of any changes to their works.[9] For example, “manipulating a scanned photograph may be a violation of moral rights (the right of integrity) if prejudicial to the honor or reputation of the author of the photograph.”[10] Additionally, many countries disallow certain kinds of changes. France and Belgium forbid any alternation not approved by the artist.[11] Germany, Denmark, and Italy, on the other hand, only disallow changes that affect the artist’s reputation or honor, consistent with Article 6bis.[12]

Some countries go beyond Article 6bis’s minimum requirements (the rights of integrity and attribution) and include the rights of repenting and disclosure. The right of repenting (withdrawal; droit de repentir) allows artists to remove a work from the public if it no longer reflects their interests.[13] For instance, under Italian Copyright Law, authors may remove the work from the market “for serious moral reasons . . . which include ethical, intellectual, political and religious reasons, and also such cases where the work is in contrast with the changed personality of the author.”[14] France and Germany have adopted the right or repentance, but this right is controversial because it “subordinates the public interest to the self-interest of individual authors.”[15]

The right of disclosure (droit de divulgation) allows an artist to choose when and how their works appear.[16] For instance, Charles Camoin, a French painter, threw away one of his works after cutting it apart and then discovered it had been reconstructed and put up for auction.[17] Camoin sued for the return of the work and damages, and the court held that he had renounced his physical claim to the work.[18] The court also held that Camoin’s moral right of disclosure still existed, and Camoin had the right to control if his work appeared in front of the public or not.[19]

These four rights are the foundation for moral rights claims; however, moral rights are nuanced in every country.[20] Berne Convention member states have a lot of discretion when it comes to implementing Article 6bis.[21] In France, for example, moral rights are perpetual and are not severed at the author’s death.[22] This means that heirs can posthumously invoke the author’s moral rights.[23] This perpetual protection, along with the stalwart protection of all four moral rights, makes France one of the strongest moral rights protectors in the European system.[24]

The U.S., on the other hand, is more restrictive. In 1989, the U.S. joined the Berne Convention and shortly after ratified the Visual Artists Rights Act of 1990 (“VARA”).[25] VARA expands the rights granted to American authors by adding the minimum requirements from Article 6bis of the Berne Convention, the moral rights of attribution and integrity.[26] VARA provides that an author who has created a visual work has the right to claim authorship of that work, prevent the use of their name for any work that they did not create, and/or prevent the use of their name as a creator of a work of art if it has been distorted, mutilated, or modified in a way that would be “prejudicial to his or her honor or reputation.”[27] Additionally, an author:

(2) shall have the right to prevent the use of his or her name as the author of the work of visual art in the event of a distortion, mutilation, or other modification of the work which would be prejudicial to his or her honor or reputation; and

(A) to prevent any intentional distortion, mutilation, or other modification of that work which would be prejudicial to his or her honor or reputation, and any intentional distortion, mutilation, or modification of that work is a violation of that right, and

(B) to prevent any destruction of a work of recognized stature, and any intentional or grossly negligent destruction of that work is a violation of that right.[28]

But, these rights are only extended to visual works of art. Under Section 101 of the Copyright code, a work of visual art includes “a painting, drawing, print or sculpture . . . or (2) a still photographic image produced for exhibition purposes only.”[29] A work of visual art does not include, “any poster, map, globe, chart, technical drawing, diagram, model, applied art, motion picture or other audiovisual work, book, magazine, newspaper, periodical . . . .”[30] Any works made for hire, or merchandise or promotional items, or any works not subject to copyright protection are also excluded.[31]

In 2017, the U.S. Copyright Office (“USCO”) undertook “‘a public study on moral rights for authors, specifically the rights of attribution and integrity.’”[32] This study examined whether the U.S. should expand moral rights protection.[33] On April 23, 2019, the USCO published its report, stating that “moral rights and contract law is ‘generally working well and should not be changed.’ At the current time, ‘there is no need for the creation of a blanket moral rights statute.’”[34] The report recommended three changes to VARA:

The first proposed change would clarify that VARA’s exclusion for “commercial art” is limited to artworks both created pursuant to a contract and intended for commercial use. The second proposed change would add language clarifying how courts should interpret the “recognized stature” requirement, requiring courts to consult a broad range of sources. The third proposed change would provide that no joint author could waive another joint author’s moral rights under VARA without the written consent of each affected author. These changes, taken together, would improve significantly the usefulness of VARA to protect artists’ attribution and integrity interests―addressing some of the limitations that have hampered successful VARA claims without expanding VARA’s scope beyond the sorts of works that Congress sought to protect.[35]

This report serves as a roadmap for Congress if Congress wishes to strengthen or streamline the U.S. moral rights framework.[36]

Additionally, U.S. courts have ruled on VARA claims. In Cohen v. G & M Realty L.P., colloquially called “5Pointz,” the Federal District Court for the Eastern District of New York held that the defendants had violated VARA and awarded multi-million dollar damages for copyright infringement.[37] 5Pointz was a compound known for the graffiti that covered its walls until the owner decided to destroy the compound in 2013.[38] Senior District Judge Block found the “Defendant liable for 45 out of 49 works of art [that were destroyed], stating that ‘given the abject nature of Wolkoff’s willful conduct, the Court awards the maximum statutory damages under VARA for each of the 45 works of art wrongfully and willfully destroyed.’”[39] Judge Block awarded the maximum statutory damages to the artists, $150,000 for each of the 45 works, for a sum of $6,750,000.[40] The Court did not award any actual damages because “‘the plaintiffs failed to establish a reliable market value for their works’ and that ‘the gain realized by Wolkoff [the owner] and his companies is best addressed in calculating an award under the statutory damages factors.’”[41]

III. Analysis

There is a distinct tension between the French and American approaches to moral rights. In France, “there is an attitude about protecting culture that seems to transcend plain legal logic . . . as French moral rights seem to operate antithetically to basic tenets of protecting the liberty of free market [sic] negotiations and upholding bargained-for exchanges.”[42] Meanwhile, “the notions of a free market may be too strongly entrenched in U.S. law to give way to an adoption of moral rights similar to the French.”[43]

Thus, there is a cultural reason for the differences between the French and American moral rights system. Because of this cultural difference, substantial changes to VARA may be difficult. However, some expansion is necessary.

For instance, VARA must expand its definition of a visual work of art. Movies and audiovisual productions can be mutated, just like a painting or any of the ‘approved’ forms of visual art. “Th[is] exemption was no accident. Before the enactment of the law, lobbies representing artists and producers [lobbied in D.C.] . . . [i]n the end, studios won the battle with the contention that ‘moral rights impeded the efficient exploitation of works of authorship and that this would discourage the investment in creation.’”[44] While the rights of attribution and integrity were implicitly granted in Gillian v. American Broadcasting Companies, Inc., there are still no codified rights for motion pictures (or music videos or songs, for that matter).[45] However, a unique threat to motion pictures and audiovisual materials exists now that did not exist in 1990 when VARA was written – deepfakes.

A deepfake is a new form of artificial intelligence (“AI”) created through a deep learning method called a “generative adversarial network” or “GAN” or through an AI encoder.[46] The GAN system creates realistic images of nonexistent people, which are then added into the ‘real’ video or image, while an AI encoder allows someone to swap an image from one source into another.[47] And there is plenty of evidence that deepfakes are here to stay. In January 2019, there were 7,964 deepfake videos online, and nine months later “that figure had jumped to 14,678.”[48]

This makes the expansion of VARA all the more critical because with the continual expansion of AI there is a huge quantity of authors who will not be allowed to raise claims under VARA if their work is manipulated or shown without their permission. Even without the threat of AI, many musical authors, such as Taylor Swift, have struggled to protect their works from being altered or produced without their consent.

Additionally, Congress should push for the three recommendations from the U.S. Copyright Office report, at a minimum, because those would at least clarify VARA and add some further protections to VARA. Finally, while “5Pointz” was a successful case, the limitations on who has standing to raise a VARA claim significantly limits the efficacy of VARA. Likewise, the success of “5Pointz” may convince lawmakers that VARA is fine as is, which could hinder VARA expansion.

IV. Conclusion

In light of the many changes brought by AI, and the stark contrasts between French and American law, the U.S. needs to adapt VARA. VARA was ratified two decades ago and the art world has changed in significant ways since the nineties. Additionally, the exclusion of motion pictures and audiovisual materials because of lobbyists shows that there was a question back in 1990 as to whether motion pictures and audiovisual materials were art forms. Now, Congress needs to see the other side of the argument and expand protections to all forms of artwork. The coming decade will raise new issues as technology continues to adapt, so technological growth should bring legal growth. It is time that Congress takes an in-depth look at VARA and expands the definition of works of visual art.  

[1] “Author” is a term of art specifically used in copyright statutes. It is a blanket term for artists, writers, etc. This term does not merely pertain to novelists or what might colloquially be called an “author.”

[2] Moral Rights in U.S. Copyright Law, (Jan. 10, 2020),

[3] Peter Baldwin, The Copyright Wars 28 (Princeton Univ. Press 2014).

[4] Moral Rights, supra note 2.

[5] Id.

[6] Moral Rights, supra note 2.

[7] Baldwin, supra note 3, at 31.

[8] Id. at 32. Film directors have also used the name ‘Alan Smithee’ which was likely a moniker created by the Directors Guild of America; see also Alison Cooper, Who is Alan Smithee? HowStuffWorks.Com (Sept. 12, 2014),   

[9] Baldwin, supra note 3, at 32.

[10] Moral Rights, supra note 2.

[11] Baldwin, supra note 3, at 32.

[12] Id.

[13] Id. at 34.

[14] Moral Rights, Società Italiana degli Autori ed Editori  (2020),,for%20serious%20moral%20reasons%20(art.&text=This%20right%20shall%20also%20apply,works%20derived%20from%20the%20original.

[15] Patrick Masiyakurima, The Trouble with Moral Rights,68(3) Modern L. Rev. 411, 424 (2005); Baldwin, supra note 3, at 35.

[16] Baldwin, supra note 3, at 30; Calvin D. Peeler, From the Providence of Kings to Copyrighted Things (and French Moral Rights), 9(2) Ind. Int’l. & Com. L. Rev. 423, 427 (1999).

[17] Baldwin, supra note 3, at 30.

[18] Id.

[19] Id.

[20] Id.

[21] United States Copyright Office, Authors, Attribution, and Integrity: Examining Moral Rights in the United States  15 (2019).

[22] Baldwin, supra note 3, at 37.

[23] Id. at 39.

[24] Id. at 5.

[25] The Visual Artists Rights Act,17 U.S.C. §106A (1990); United States Copyright Office, supra note 21, at 7.

[26] Cohen v. G & M Realty L.P., 988 F. Supp. 2d 212, 215 (E.D.N.Y. 2013).

[27] 17 U.S.C. §106A.

[28] Id.

[29] Copyright Definitions, 17 U.S.C. §101. (2010).

[30] Id.

[31] Id.

[32] Marley Nelson, Moral Rights in the United States, The Ohio State University Copyright Corner (July 21, 2017),

[33] Moral Rights, supra note 2.

[34] Id.

[35] United States Copyright Office, supra note 21, at 5.

[36] Id. at 6.

[37] Lise Berichel, Around the Block Ruling in 5Pointz, The Center for Art Law (Apr. 10, 2018),

[38] Id.

[39] Id.

[40] Cohen v. G & M Realty L.P., 988 F. Supp. 2d 212, 421, 447 (E.D.N.Y. 2013).

[41] Lise Berichel, supra note 37.

[42] Calvin D. Peeler, supra note 16, at 452-453.

[43] Id. at 455.

[44] Julia Mas-Guindal, The Motion Picture Industry: Critical Issues Concerning Moral Rights and Authorship, Harv. J. L. & Tech. (Dec. 31, 2011),

[45] Id.

[46] Rob Toews, Deepfakes Are Going to Wreak Havoc on Society. We are Not Prepared., Forbes (May 25, 2020),

[47] Ian Sample, What are deepfakes – and how can you spot them?, The Guardian (Jan. 13, 2020),

[48] Id.

Cookie Monster: Facebook Sued Under Wiretap Act

Photo by Kon Karampelas on Unsplash

Brianna Vollman, Blog Editor, University of Cincinnati Law Review

Facebook has occupied news headlines for years due to the site’s less-than-perfect protection of user privacy. As recently as a month ago, Facebook’s new “Messenger Rooms,” a video chat app, were criticized for lack of privacy protection.[1] Years before, in 2014, Cambridge Analytica, a British political consulting firm, acquired the data tens of thousands of Facebook users with intent to sell acquired data.[2] Privacy expert Rowenna Fielding went so far as to say, “Data mining and profiling are the core of their business model–governance and ethics have been notably absent from the start and continue to be so.”[3] The constant scrutiny prompted Facebook leaders to recently appoint a privacy committee to prevent misappropriation of user data.[4]

The mentioned privacy scandals and many others have landed Facebook in federal court. The most recent court decision impacting Facebook came from the Ninth Circuit in April 2020.[5] In a punitive class action, a group of Facebook users filed a consolidated complaint, alleging primarily a violation of the Wiretap Act.[6] The complaint alleged that Facebook “cookies,” small text files stored on the user’s device, continued to capture information even after a user logged out of Facebook and visited other websites.[7] Specifically, the lawsuit involved Facebook plugins that are embedded on third party websites and contain a small portion of Facebook code.[8] When a user visits a third party website, the user’s browser sends a “GET request” to the web page’s server, which then sends back the requested information to the user.[9] When the third party website contains a Facebook plugin, the code sends a separate but identical request to Facebook’s servers.[10] Facebook allegedly tracks users across the internet in this way, collecting the data into personal user profiles, which Facebook allegedly intended to sell.[11] The district court granted Facebook’s motion to dismiss.[12] The appeal followed.[13]

The Wiretap Act (“the Act”) prohibits the unauthorized “interception” of an “electronic communication.”[14] Case law has interpreted the meaning of “interception.”[15] The Ninth Circuit has held that an interception is an “acquisition contemporaneous with transmission.”[16] The statute contains an exemption for a person who is a “party” to the communication or the interception has been consented to, which is where the crux of the litigation lies for the Ninth Circuit and where an implied circuit split is revealed.[17] The Act does not solely apply to social media platforms but to any situation where a GET request is duplicated and contemporaneously sent to an entity other than the website being accessed by the user. The question faced by the Ninth Circuit is whether the entity other than the website being accessed is considered a “party” to the communication and is thus not liable due to the exemption contained in the Act. The First, Seventh, and Third Circuit faced related questions previously.

The First Circuit implicitly dealt with the party exemption in 2003.[18] Pharmatrak, an enterprising company, sold a service to pharmaceutical companies that collected user information from the companies’ websites and created intra-industry comparisons of website traffic.[19] Buyers of the service were assured that no personal information would be collected in this process.[20] Despite this assurance, Pharmatrak collected personally identifiable information from some users, which prompted a class action to be filed under the Electronic Communications Privacy Act (an amendment to the Wiretap Act).[21] The lower court held that since the pharmaceutical companies were in a contractual relationship with Pharmatrak, they had consented to the collection of their personal data and thus was a party to the communication.[22] The First Circuit disagreed.[23] The court held that the information acquisition committed by Pharmatrak constituted an interception and “was contemporaneous with the transmission by the internet users to the pharmaceutical companies.”[24] For these reasons, the Ninth Circuit explained that the First Circuit implicitly rejected the argument that Pharmatrak was a party to the communication.[25]

The Seventh Circuit faced different facts but reached a similar conclusion.[26] The defendant was being accused of violating the Wiretap Act by using software that duplicated his employer’s emails and sent them to the defendant’s own email address.[27] The court focused on whether the duplicated emails were sent off contemporaneously to determine whether these actions constituted an interception.[28] The court determined that because the duplicate emails indeed were sent contemporaneously, the case was reversed and remanded.[29] For similar reasons to the First Circuit, the Ninth Circuit opinion in In re Facebook explained  that the Seventh Circuit does not believe the defendant was a party to the communication and did not receive protection of the enumerated exemption.[30]

The Third Circuit reached the opposite conclusion.[31] In In Re Google Cookie, the court determined that defendants, internet advertising companies, that placed cookie blockers on users’ browsers to facilitate online advertising were parties to the communication and thus were not liable under the Act.[32] This case dealt with duplicate GET requests being sent to advertising companies.[33] The court opined that because a communication necessarily has two parties, here the user’s browser and the defendants, the defendants were the intended recipients of the communication.[34] Thus, the case was vacated and remanded in part to the lower court. [35]

The Ninth Circuit followed the reasoning of the First and Seventh Circuits.[36] The courtexplained that the First and Seventh Circuit had “implicitly assumed that entities that surreptitiously duplicate transmissions between two parties are not parties to communications within the meaning of the Act.” [37] The Ninth Circuit further delved into the Wiretap Act’s legislative history, which “evidences Congress’s intent to prevent the acquisition of the contents of a message by an unauthorized third-party or ‘an unseen auditor.’”[38] The Ninth Circuit summarized in stating, “Permitting an entity to engage in the unauthorized duplication and forwarding of unknowing users’ information would render permissible the most common methods of intrusion, allowing the exception to swallow the rule.”[39] The case was remanded for further consideration.[40]

The First, Seventh and Ninth Circuits properly held that sending a duplicate GET request to an unseen entity is an interception under the Wiretap Act. To hold any differently would allow sites like Facebook to invisibly track their users around the internet. The Ninth Circuit properly explained that the party exception does not apply in these sorts of electronic interception situations because the user and the third party website are communicating with one another, while the third party merely receives a contemporaneous duplication of that communication.[41] This holding is consistent with the legislative purpose of the Wiretap Act and would further protect internet users from being tracked across the web. This holding is also consistent with the First and Seventh Circuit’s related cases, which although didn’t explicitly focus on the party exemption, still made clear that contemporaneous communication to an unauthorized third party is an interception in violation of federal law.  

In re Facebook has been remanded for further consideration by the district court, but the circuit split remains. Facebook’s privacy scandals are ongoing, which may gain the attention of the Supreme Court. Should the Supreme Court take a case involving liability under the Wiretap Act for tracking site users across the internet, the resolution of the circuit split will have major implications for Facebook, as it has profited from sharing data collected from tracking.[42] The Supreme Court should follow the decisions of the First, Seventh, and Ninth Circuit, which would appropriately hold Facebook accountable for tracking its users across the web.

[1] Kate O’Flaherty, Facebook Users Beware: Here’s Why Messenger Rooms Is Not Actually That Private, Forbes (Apr. 26, 2020, 3:50 AM),

[2] Nicholas Confessore, Cambridge Analytica and Facebook: The Scandal and the Fallout So Far, New York Times, (March 17, 2020),

[3] Id.

[4] Rob Price,  Facebook has appointed the ‘privacy committee’ on its board designed to prevent another Cambridge Analytica scandal, Business Insider, (May 13, 2020 8:06 PM),

[5] In re Facebook, Inc. Internet Tracking Litig., 956 F.3d 589, 601 (9th Cir. 2020).

[6] 18 U.S.C. § 2511 (West); In re Facebook, Inc. Internet Tracking Litig., 956 F.3d 589, 601 (9th Cir. 2020).

[7] In re Facebook, 956 F.3d at 596.

[8] Id. at 607.

[9] Id.

[10] Id.

[11] Id. at 599.

[12] Id. at 597.

[13] Id.

[14] 18 U.S.C. § 2511(1)(a)–(e) (2020).

[15] While case law interprets the meaning of “interception,” the term “electronic communication” is defined in 18 U.S.C. § 2510(12) (2020), and takes on a plain meaning of “any transfer of signs, signals, writing, images, sounds, data, or intelligence of any nature transmitted in whole or in part by a wire, radio, electromagnetic, photoelectronic or photooptical system that affects interstate or foreign commerce.”

[16] Konop v. Hawaiian Airlines, Inc., 302 F.3d 868, 878 (9th Cir. 2002).

[17] 18 U.S.C. § 2511(2)(c)-(d) (2020). The statute reads: “It shall not be unlawful under this chapter for a person acting under color of law to intercept a wire, oral, or electronic communication, where such person is a party to the communication or one of the parties to the communication has given prior consent to such interception.”

[18] In re Pharmatrak, Inc., 329 F.3d 9 (1st Cir. 2003).

[19] Id. at 12.

[20] Id. at 15.

[21] Id. at 16.

[22] Id. at 17. Arguing that the plaintiff consented to the communication is another way to avoid liability under the Wiretap Act. See 18 U.S.C. § 2511(2)(c)-(d) (2020).

[23] Id. at 22.

[24] Id.

[25] In re Facebook, 956 F.3d at 607.

[26] United States v. Szymuszkiewicz, 622 F.3d 701 (7th Cir. 2010).

[27] Id. at 703.

[28] Id. at 706.

[29] Id.

[30] In re Facebook, 956 F.3d at 607.

[31] In re Google Inc. Cookie Placement Consumer Priv. Litig., 806 F.3d 125, 142-43 (3d Cir. 2015)

[32] Id. at 132, 142-43.

[33] Id. at 130-31.

[34] Id. at 142-43.

[35] Id.

[36] In re Facebook, Inc. Internet Tracking Litig., 956 F.3d 589, 608 (9th Cir. 2020).

[37] Id. at 607.

[38] Id. at 608; See S. Rep. No. 90-1097.

[39] In re Facebook, 956 F.3d at 608.

[40] Id. at 611.

[41] Id. at 607.

[42] Gabriel J.X. Dance, Michael LaForgia and Nicholas Confessore, As Facebook Raised a Privacy Wall, It Carved an Opening for Tech Giants, New York Times, (Dec. 18, 2018)

The Long Game: Justice Kagan’s Approach in Ramos v. Louisiana

Photo by Anne Sullivan on Unsplash

Sam Berten, Associate Member, University of Cincinnati Law Review

I. Introduction

Justices on the Supreme Court are protectors of precedent, and experts in the law. However, Justices are also strategic in their decisions and opinions because they are aware of the effect one decision can have on other decisions, and the importance of integrity.

In Ramos v. Louisiana, the Supreme Court held that the Sixth Amendment requires that a jury find a criminal defendant guilty by a unanimous verdict.[1] Justice Kagan dissented in Ramos, which at first could be confusing because Kagan’s liberal colleagues largely agreed with the majority opinion written by Justice Gorsuch. However, a more detailed analysis of Justice Kagan’s history on the Supreme Court shows that Ramos is the next in a line of key cases wherein Justice Kagan has solidified her position as a protector of precedent on the Court. Justice Kagan is likely keenly focused on reiterating the importance of precedent to protect Roe v. Wade, affirmative action, and other key decisions, which may explain Kagan’s dissent in Ramos.

II. Background

In 1972, the Court in a plurality decision found in Apodaca v. Oregon that the “Sixth Amendment does not require unanimous jury verdicts in state criminal convictions.”[2] Four Justices dissented in Apodaca – Stewart, Brennan, Marshall, and Douglas – believing that the Sixth Amendment guaranteed unanimity as one of the core rights of a jury trial.[3] On the other hand, in the plurality opinion, Justices White, Burger, Blackmun, and Rehnquist held that the Sixth Amendment did not guarantee unanimity.[4] Justice Powell concurred with the plurality but separately found that “the Sixth Amendment does require a unanimous verdict in criminal cases, but only in federal court.”[5]

Despite the confusion on the guarantees of the Sixth Amendment, Apodaca remained good law for almost fifty years.[6] Only two states, Louisiana and Oregon, allowed convictions by non-unanimous verdicts, but both states have expressed a change of tactic.[7] Louisiana has since abolished non-unanimous verdicts and “Oregon . . . was considering doing the same until the Supreme Court took up the case.”[8]

On April 20, 2020, the Supreme Court decided Ramos v. Louisiana, and resolved the remaining issue after Apodaca of whether the Sixth Amendment requires a unanimous jury verdict for a criminal conviction for a serious crime.[9] The Court held, in a fractured opinion, that the Sixth Amendment requires a unanimous jury verdict to convict a defendant of a serious offense.[10]

Justice Gorsuch wrote the principal opinion, which Justices Breyer and Ginsburg joined with respect to Parts II-B, IV-A, IV-B-2, and V.[11] Justices Sotomayor and Kavanaugh “joined most of Gorsuch’s opinion but rejected some key aspects of it.”[12] Meanwhile, Justice Thomas concurred but declined to join any of Gorsuch’s opinion.[13] Finally, Justice Alito wrote a dissenting opinion which Chief Justice Roberts joined and Justice Kagan joined except for Part III-D.[14] All in all, the Court issued five opinions on Ramos, but the principal opinion and the dissent will be the focus of this article.

Justice Gorsuch wrote that trial by an impartial jury, no matter where you look to determine the phrase’s meaning – “whether it’s the common law, state practices in the founding era, or opinions and treatises written soon afterward,”[15]  – the answer was the same: “[a] jury must reach a unanimous verdict in order to convict.”[16] When the Sixth Amendment was ratified, the common law required jury unanimity in criminal cases, continuing that practice for close to 400 years with only a few exceptions.[17] Gorsuch explained the absence of explicit unanimity in the Sixth Amendment by stating that the right of unanimity was “so plainly included in the promise of a ‘trial by an impartial jury’ that the [Framers] considered the language surplusage.”[18]

Justice Gorsuch then in Part IV-A argued that Apodaca was never binding precedent because Justice Powell agreed that the Sixth Amendment required unanimity but only in federal court, which a majority of the court rejected.[19] Justice Gorsuch claimed that accepting Justice Powell’s reasoning and Apodaca as precedential would lead to the conclusion that “a single Justice writing only for himself has the authority to bind this Court to propositions it has already rejected.”[20] Justices Ginsburg and Breyer agreed with this portion of Justice Gorsuch’s reasoning while Justices Sotomayor and Kavanaugh did not.

The Court has established several factors when analyzing precedent: “(1) the quality of the decisions’ reasoning; (2) its consistency with related decisions; (3) legal developments since the decision; and (4) reliance on the decision.”[21] Applying these four factors to Apodaca, all five Justices in the majority opinion concluded that Apodaca was not binding precedent.[22]

The dissent, written by Justice Alito, and joined by Chief Justice Roberts and Justice Kagan (except for part III-D), stressed the importance of reliance interests which required adherence to Apodaca.[23] Justice Alito then discussed the myriad of issues that might arise with respect to retrying criminal defendants, habeas petitions, and the fact that the Court repeatedly denied cert for petitions brought by inmates in Louisiana and Oregon, which made Louisiana and Oregon conclude that they were not acting improperly by allowing non-unanimous verdicts.[24]

III. Analysis

Justice Elena Kagan was nominated by President Obama in May, 2010, and was confirmed by the Senate in August, 2010.[25] Because of Justice Kagan’s liberal leanings, Kagan’s choice to dissent from a majority opinion focusing on justice within the criminal justice system may seem strange at first. In fact, many were “disappointed, baffled, angry, skeptical, and saddened.”[26] However, Kagan has likely positioned herself as a protector of precedent as part of a strategic, long-term approach to protect Roe v. Wade.[27] And precedent is what Ramos is truly about, “when to honor it, when to discard it and how to shape public perceptions of doing the latter.”[28]

On June 22, 2015, Kagan wrote the majority opinion in Kimble v. Marvel Entertainment, LLC, which was a patent dispute. Kagan wrote that “[w]hat we can decide, we can undecide. But stare decisis teaches that we should exercise that authority sparingly.”[29] Kagan then quoted Spider-Man, stating, “(‘[i]n this world, with great power there must also come – great responsibility’). Finding many reasons for staying the stare decisis course and no ‘special justification’ for departing from it, we decline Kimble’s invitation to overrule Brulotte.”[30]

On June 21, 2019, Kagan wrote in her dissent to Knick v. Township of Scott, Pennsylvania, et al., that Knick “smashe[d] a hundred-plus years of legal rulings to smithereens.”[31] Knick was a case about a property owner fighting the government in a constitutional “takings” claim.[32] However, Kagan was likely not focusing just on the issues at hand in Knick. Kagan indicated worry that the “conservative majority may be similarly dismissive of precedent in other areas. Those areas could include access to abortion, affirmative action and LGBT[sic] rights – all issues making their way up to the high court.”[33]

Thus, Justice Kagan’s dissent in Ramos is likely a reiteration of Kagan’s position as “the Court’s leading proponent of respect for precedent.”[34] Since “Chief Justice John G. Roberts Jr. and Justices Samuel A. Alito Jr. and Elena Kagan — dissented [in Ramos], not necessarily because they thought the Constitution permits non-unanimous juries but because they thought the 1972 case should not be so lightly overruled.”[35] Justice Kagan is likely preparing for the day when a case reaches the Court that challenges Roe v. Wade. Indeed, “[f]or Kagan, who clearly sees the writing on the wall not just for Roe but for other rulings as well, the importance of adhering to precedent has been a continuing theme. The more she can get conservative colleagues on the record resisting overturning cases, and the more she demonstrates her own willingness to stick with cases she dislikes, the stronger her hand down the road.”[36]

Therefore, Kagan’s choice to consistently be the resounding voice of respect for precedent may allow Kagan, down the line, to insist her fellow justices respect the precedent established in Roe. “She is playing the long game in two related ways: establishing herself as the court’s fiercest defender of precedent and sacrificing ideological purity in favor of compromise with her conservative colleagues. But that is no guarantee that she will prevail, or that any of her compromises will actually pay off.”[37]

Thus, Justice Kagan is likely trying to build a record to encourage her conservative colleagues to respect precedent down the road when it is time to decide on an abortion issue. And sooner rather than later, we will know if Kagan’s strategy succeeded. On March 4, 2020, the Court heard oral arguments for June Medical Services LLC v. Russo, which asks whether Louisiana’s law requiring physicians who perform abortions to have admitting privileges at a local hospital conflicts with Whole Woman’s Health v. Hellerstedt, which is binding precedent.[38]

If Justice Kagan’s approach wins the day, her protection of precedent during her tenure on the Court will encourage her conservative colleagues to adhere to the binding precedent established in Roe and Whole Woman’s Health. Thus, Ramos was likely yet another example of Justice Kagan reiterating the importance of precedent, while keenly aware of the threat to Roe and other key decisions if the Court turns away from stare decisis.  

IV. Conclusion

It is surprising to see a liberal justice dissenting from a case protecting the rights of criminals and dissenting away from her fellow liberal justices. Thus, Justice Kagan’s dissent in Ramos may be initially confusing. However, understanding Justice Kagan’s perspective and position on the Court allows a deeper analysis of Kagan’s alliance with Justice Alito in Ramos. For Justice Kagan, Ramos is likely another opportunity to highlight to the Court the importance of precedent, and to signal to her conservative colleagues that she is able to join an opinion that diverts from that of the liberal Justices in order to protect precedent.

Justice Kagan is approaching this case, and likely all the cases that appear before the Court, with a keen eye for stare decisis and precedent in order to later use those cases to demonstrate to the conservative justices on the Court that cases such as Roe cannot be overturned lightly. June Medical Services LLC v. Russo will presumably be a key case that will likely show whether Justice Kagan’s approach over her tenure has paid off, and whether her stead as protector of precedent can convince other justices to be similarly concerned.  

[1] “So if the Sixth Amendment’s right to a jury trial requires a unanimous verdict to support a conviction in federal court, it requires no less in state court.” Ramos v. Louisiana, 140 S. Ct. 1390, 1397 (2020).

[2] Tadhg A.J. Dooley & David Roth, Supreme Court Update: Ramos v. Louisiana (No. 18-5924), Atlantic Richfield v. Christian (No. 17-1498), Thryv, Inc. v. Click-to-Call Technologies (No. 18-916), The National Law Review (Apr. 27, 2020),

[3] Id.

[4] Id.

[5] Id.

[6] Id.

[7] Id.

[8] Id.

[9] Id.

[10] Id.

[11] Id.; Ramos v. Louisiana, 140 S. Ct. 1390, 1393 (2020).

[12] Dooley & Roth, supra note 2.  

[13] Id.

[14] Id.; Ramos, 140 S. Ct. at 1393.

[15] Id. at 1395.

[16] Dooley & Roth, supra note 2.; Ramos, 140 S. Ct. at 1395.

[17] Dooley & Roth, supra note 2: “a common-law requirement of jury unanimity in criminal cases had existed (with a few sporadic interruptions) for about 400 years.”

[18] Dooley & Roth, supra note 2.; Ramos, 140 S. Ct. at 1400.

[19] Dooley & Roth, supra note 2; Ramos, 140 S. Ct. at 1402.

[20] Id.

[21] Dooley & Roth, supra note 2; Ramos, 140 S. Ct. at 1405.

[22] Id.

[23] Id.

[24] Id.

[25] CNN, Elena Kagan Fast Facts, CNN (Apr. 22, 2020),

[26] Mark Joseph Stein, Everyone is Mad at Elena Kagan, The Slate (Apr. 22, 2020),

[27] Richard Wolf, Casting aside its precedents, Supreme Court moves inexorably toward those on abortion rights, USA Today (Apr. 27, 2020),

[28] Linda Greenhouse, A Precedent Overturned Reveals a Supreme Court in Crisis, The New York Times (Apr. 23, 2020),

[29] Kimble v. Marvel Entm’t, LLC, 135 S. Ct. 2401, 2415 (2015).

[30] Id.

[31] Knick v. Twp. of Scott, Pennsylvania, 139 S. Ct. 2162, 2183 (2019).

[32] Ariane de Vogue, Elena Kagan becomes latest liberal justice to sound alarm on precedent, CNN (Jun. 21, 2019),

[33] Id.

[34] The Supreme Court Rules from Home, Michael Davis Barbaro & Adam Davis Liptak, The Daily, The New York Times (M.J. Davis Lin & Lisa Davis Chow eds., Apr. 21, 2020),

[35] Ruth Marcus, Why a case about jury verdicts could spell trouble for Roe v. Wade, The Washington Post (Apr. 24, 2020), [emphasis added].

[36] Id.; additionally, “it is impossible to read Kavanaugh’s concurrence without trying to discern what it foretells about his approach to Roe, and, if you support abortion rights, without apprehension. Kavanaugh pointedly noted that ‘in just the last few terms, every current member of this court has voted to overrule multiple constitutional precedents.’ Indeed, he added, ‘some of the court’s most notable and consequential decisions have entailed overruling precedent,’ citing 30 cases to prove the point. Kavanaugh then sketched out a three-part approach to deciding when a case should be overruled: First, ‘is the prior decision not just wrong, but grievously or egregiously wrong,’ including ‘the quality of the precedent’s reasoning.’ Second, ‘has the prior decision caused significant negative jurisprudential or real-world consequences,’ including ‘real-world effects on the citizenry.’ Third, ‘would overruling the prior decision unduly upset reliance interests’— how much people have based their arrangements on it and how long it has been in place. It is not hard to imagine that Kavanaugh, if called on to weigh the future of Roe, would find the first two criteria — egregiously wrong and causing significant negative consequences — easily satisfied. Must all three be present for a case to be overruled? On that he is not clear.”

[37] Stein, supra note 26; additionally, “[i]t is notable, though, that Kagan’s vote was not decisive in any of these decisions. In most cases, Kagan simply assented to precedent that, whatever its merits, is now firmly entrenched in the law.”

[38] June Medical Services LLC v. Russo, Oyez, (last visited May 25, 2020).

Timbs v. Indiana: A Shift Toward Reviving the Privileges or Immunities Clause

“We the People”by StevenANichols is licensed under CC BY-NC-SA 2.0

Hunter Poindexter, Associate Member, University of Cincinnati Law Review

I. Introduction

Among other things, the Fourteenth Amendment of the Constitution proclaims, “No State shall make or enforce any law which shall abridge the privileges or immunities of citizens of the United States.” For decades, legal scholars have debated the true intention and meaning of the Privileges or Immunities clause.[1] While a number of scholars argue that the clause was established to incorporate the Bill of Rights against the states, others contend that the clause was intended to protect unenumerated fundamental rights, such as those laid about by Justice Washington in Corfield v. Coryell.[2] Regardless of the numerous interpretations asserted by scholars, the Supreme Court definitively ruled on the issue with the infamous Slaughter-House Cases.[3] Writing for the majority, Justice Miller held that the Privileges or Immunities clause only protected rights relating to federal citizenship from infringement, and that other privileges and immunities were “left to the State governments for security and protection . . .”[4] The dissent noted that the majority’s interpretation only protected rights which had already been secured by the Constitution, essentially ridding the Privileges or Immunities clause of all meaning.[5] Since the Slaughter-House Cases, the Court has seldom mentioned or implicated the Privileges or Immunities clause in its opinions. However, on a handful of occasions, the Justices have shown a renewed interest in the provision. Part II of this post discusses the recent background of the Privileges or Immunities clause in the Court’s decisions. Part III focuses on the concurrences of Justices Thomas and Gorsuch in Timbs v. Indiana,[6] and Part IV analyzes whether these concurrences signal a revival of the Privileges or Immunities clause in American jurisprudence.    

II. Background

In Saenz v. Roe,[7] the Court held that the Privileges or Immunities clause protects an individual’s right to travel from one state to another. [8] Interestingly, this interpretation does not conflict with the majority or dissenting opinions of the Slaughter-House Cases, as each opinion acknowledged that the Privileges or Immunities clause protects a citizen’s right to travel.[9] In his dissenting opinion in Saenz, Justice Thomas contended that the majority placed a meaning on the Privileges or Immunities clause that was unintended by the framers.[10] Moreover, Justice Thomas acknowledged that he would “be open to reevaluating” the interpretation of the Privileges or Immunities clause in a future case, but only with a proper evaluation of the framers’ intent.[11] Eleven years later, Justice Thomas’s willingness to look back into the Privileges or Immunities clause rang true with his concurring opinion in McDonald v. City of Chicago.[12]

In McDonald, the Court held that the Due Process clause of the Fourteenth Amendment incorporates the Second Amendment’s right to bear arms against the states.[13] Notably, the plurality in McDonald explicitly declined to overrule the Slaughter-House Cases, and thus refused to use the Privileges or Immunities clause as a vehicle for incorporation.[14] On the other hand, Justice Thomas, concurring in the judgment, argued that the Privileges or Immunities clause was indeed the correct mechanism for incorporating the Second Amendment.[15] Justice Thomas rejected the Court’s interpretation of the Privileges or Immunities clause in the Slaughter-House Cases, and contended that the clause should be interpreted by “what ‘ordinary citizens’ at the time of ratification would have understood the Privileges or Immunities Clause to mean.”[16]

III. Timbs v. Indiana 

Prior to the 2018-2019 term, Justice Thomas appeared to be alone in his Privileges or Immunities jurisprudence. However, in Timbs, Thomas found an ally in Justice Gorsuch. Timbs revolved around the issue of whether the Excessive Fines clause of the Eighth Amendment may be incorporated against the states. The appellant in Timbs was arrested for dealing a controlled substance, and the State of Indiana attempted to seize the appellant’s $42,000 SUV because it was used to transport heroin.[17] In a majority opinion drafted by Justice Ginsburg, the Court held that the Due Process clause of the Fourteenth Amendment incorporates the Excessive Fines clause against the states.[18] In his opinion concurring in the judgment, Justice Thomas again analyzed the issue under the Privileges or Immunities clause, criticizing the majority for its use of the Substantive Due Process doctrine.[19] Under his analysis, Justice Thomas acknowledged that the ratifying public would have understood the Privileges or Immunities clause to protect against excessive fines imposed by the states.[20] While Justice Thomas’s reliance on the Privileges or Immunities clause was not particularly notable given his opinion in McDonald, this time he managed to receive support from a colleague. Writing separately, Justice Gorsuch agreed with the majority opinion in using the Due Process clause to incorporate the Excessive Fines clause.[21] However, Gorsuch also acknowledged that if the case had turned on the issue, “the appropriate vehicle for incorporation may well be the Fourteenth Amendment’s Privileges or Immunities Clause . . .”[22] With this nod of approval, Justice Gorsuch opened the door for a potential revival of the Privileges or Immunities clause. 

IV. Discussion

For nearly 150 years, the Privileges or Immunities clause has played virtually no role in American jurisprudence; rather, the Supreme Court has relied heavily on the Due Process clause to protect fundamental rights.[23] The issue with this reliance, however, is that it has drawn the ire of scholars insistent on an originalist construction of the Constitution. Numerous scholars, most notably Justice Thomas, view the Due Process clause to refer to procedure as opposed to substance. With this originalist interpretation in mind, the Privileges or Immunities clause appears to be an alternative mechanism for the protection of fundamental rights. 

With the addition of Gorsuch to the bench in April 2017, conservatives anticipated a highly-originalist jurisprudence from the Justice.[24] After all, Gorsuch was replacing the Court’s premier advocate for originalism, Antonin Scalia. It should be noted, however, that Justice Scalia never elected to utilize the Privileges or Immunities clause in his decision-making. In fact, in McDonald, Justice Scalia chose to join the majority opinion rather than Justice Thomas’s concurrence, although he expressly acknowledged that he was troubled by the majority’s use of the Due Process clause.[25] Thus, even with an originalist approach to rival that of Scalia, Justice Gorsuch’s acknowledgment of the Privileges or Immunities clause was not necessarily expected. 

For what it’s worth, Timbs holds no real precedential weight. Because the opinions of Justices Thomas and Gorsuch were merely concurrences, the Court has no obligation to follow their interpretations in future cases. However, Timbs does provide an interesting look into the potential future of constitutional law. As of right now, the Court has two Justices who acknowledge a possible revival of the Privileges or Immunities clause. In 2018, the Court added another conservative member in Brett Kavanaugh. While Kavanaugh did not join Justices Thomas or Gorsuch in Timbs, he is nonetheless expected to have a textualist jurisprudence during his tenure on the Court. As such, it is conceivable that Justice Kavanaugh’s approach could develop over time to match that of Justices Thomas and Gorsuch. If one-third of the Court were to use the Privileges or Immunities clause as a vehicle to protect rights, the remainder of the Court would at least have to acknowledge the possibility of breathing new life into the provision. 

Furthermore, Justice Ginsburg and Justice Breyer are anticipated to end their tenure on the Supreme Court within the next decade or so. If conservatives maintain control of the White House during the times of these nominations, the new Justices will almost certainly maintain an originalist jurisprudence. If, at that time, Justices Thomas, Gorsuch, and Kavanaugh are willing to utilize the Privileges or Immunities clause, the new Justices would likely also consider adhering to this methodology.  The Court would then have a majority of its members implicating the Privileges or Immunities clause to protect fundamental rights, therefore creating precedent for the Court. While this revival is far from certain, its potential is nonetheless significant. 

V. Conclusion

The Slaughter-House Cases essentially stripped the Privileges or Immunities clause of all meaning. Within the past ten years, Justice Thomas has asserted that the clause should be implicated in lieu of the Due Process clause to protect fundamental rights; however, until Timbs, Thomas was alone in his analysis. With Justice Gorsuch’s concurrence in Timbs, Justice Thomas has been somewhat vindicated in his methodology. As Justice Kavanaugh’s jurisprudence evolves, and as new Justices are welcomed to the bench, the Court faces the real possibility of a revival of the Privileges or Immunities clause. 

[1]Douglas G. Smith, The Privileges and Immunities Clause of Article IV, Section 2: Precursor of Section 1 of the Fourteenth Amendment, 34 San Diego L. Rev. 809, 812. 

[2]6 F. Cas. 546, 551 (C.C.E.D. Pa. 1823) (asserting that the privileges or immunities of citizenship would fall under several “general heads,” including governmental protection, enjoying life and liberty, owning property, and pursuing happiness). 

[3]83 U.S. 36 (1873). 

[4]Id. at 78. 

[5]See id. at 96 (Field, J., dissenting). 

[6]139 S. Ct. 682.

[7]526 U.S. 489 (1999). 

[8]Id. at 503-04. 

[9]Id. (citing Slaughter-House Cases, 83 U.S. at 80, 112). 

[10]Id. at 521 (Thomas, J., dissenting). 

[11]Id. at 528. 

[12]561 U.S. 742 (2010). 

[13]Id. at 791.

[14]Id. at 758. 

[15]Id. at 806 (Thomas, J., concurring in part and concurring in judgment). 

[16]Id. at 813, 852.

[17]Timbs, 139 S. 686. 

[18]Id. at 687. 

[19]Id. at 691-92. 

[20]Id. at 693.

[21]Id. at 692. 


[23]See Griswold v. Connecticut, 381 U.S. 479 (1965); Roe v. Wade, 410 U.S. 113 (1973); Meyer v. Nebraska, 262 U.S. 390 (1923). 

[24]See Lauren Russell & Nina Totenberg, Trump’s Supreme Court Pick is a Disciple of Scalia’s ‘Originalist’ Crusade, NPR (Feb. 2, 2017, 6:00 AM), [].

[25]McDonald, 561 U.S. at 791 (Scalia, J., concurring).

Which Ohio Commission Should Regulate Gambling Within the State?

“Roulette table gambling”by Best Free Bets is licensed under CC BY 2.0

Theron Anderson, Associate Member, University of Cincinnati Law Review

This is the second article in a two-part analysis on sports betting. Click here to read an in-depth discussion of Murphy v. NCAA.


After being granted the discretion to authorize sports betting within its jurisdiction, Ohio has undertaken the burden to exercise that discretion. After one orbit around the Sun, Ohio seemed to be in agreement that sports betting was the rational move for the state. But the decision to delve deeper into the matter developed an impasse that has not ceased to let up. The issue has become whether sports betting legislation could fit within the current statutory framework without amendments and which existing state commission is best fit to regulate the activity. 

First, this article will present a background of the landmark Murphy v. NCAA case which brought Ohio to this point.[1] Second, it will consider whether the current statutory framework of the state prohibits sports betting, therefore requiring an amendment. Next, this article will outline the bills currently on the state legislature’s to-do list, and the hurdles it faces in accomplishing its legislative goals. Finally, this post interprets the sports betting statutes and analyzes the validity of each argument supporting a particular commission.


In the year following the landmark case of Murphy v. NCAA[2], states reacted to capitalize on their new discretionary authority to legalize sports betting, leading to the legalization of sports betting in eight states.[3] In Murphy, the Supreme Court ruled that the prohibitions imposed by the Professional and Amateur Sports Protection Act (“PASPA”), preventing States from authorizing sports gambling within their respective jurisdictions, violated the constitutional law doctrine of anticommandeering.[4] This doctrine protects the states from the encroachment of the Federal Government on their powers. The Court believed that the issue of gambling fell within the province of the states due to the issue of sports gambling being a controversial subject concerning citizens within their jurisdictions.[5] Therefore, Congress should not be able to exercise power regarding that issue.[6]

Legality of Sports Betting in Ohio

Similar to states throughout the country, Ohio identified Murphy as an opportunity to capitalize on potential revenue for the State.[7] The question of whether states can authorize sports betting was answered affirmatively in Murphy, but that presented a subsequent question of whether sports betting is prohibited by the current laws of the state. Those leading the push in the Ohio legislature have proceeded on the assumption that sports betting legislation can operate within the existing laws.[8]

Three arguments can be made as to why sports gambling is not prohibited under the current laws of the state. First, one could argue that sports betting falls within the definition of “casino gaming” found within the 2009 amendment to the Ohio Constitution.[9] One could also argue that sports betting falls within the lottery language as a “game of chance.”[10] Finally, sports betting can be analogized to horse racing.[11] In the early 20th century, horse betting was permitted even though it was not specifically authorized by the Constitution.[12] Legislatures argue that they possess the power to “simply set laws to regulate sports gambling as it wishes, as it did with horse racing.”[13]

With the creation of legislation regarding the legalization of sports betting, the proponents of legalized sports betting should be able to pass it through without statutory hurdles. If the legislature were to meet civil opposition after the legislation’s passing, the Ohio courts should have many avenues at their disposal to rule in favor of the legislation’s validity.[14]

Pending Legislation Halts over Regulators

Currently, two sports betting bills are working their way through the Ohio legislature.[15] These bills were introduced in March and April of this year.[16] One of the bills is House Bill 194 (“HB194”).[17] HB194 is led by Representatives Dave Greenspan and Brigid Kelly.[18] This bill is the “more robust of the two bills.”[19] The purpose of the bill is to “legalize, regulate and tax sports wagering businesses.”[20] The betting would be regulated by the Ohio Lottery Commission (“OLC”) and permitted at “neighborhood veterans and fraternal organization halls licensed by the lottery” as well as casinos.[21]

The other is Senate Bill 111 (“SB111”).[22] This bill is led by Senators John Eklund and Sean O’Brien.[23] Because SB111 assigns the regulation of sports betting to the Ohio Casino Control Commission (“CCC”), sports betting would only be permitted in the casinos and racinos of Ohio.[24]

The two major differences with the bills are the commission tasked with regulating the betting and where the betting will be allowed.

A stalemate has formed in the legislature due to disagreement over which commission is more fit to regulate sports betting within the State. Those in favor of the House’s bill raise the argument that the CCC cannot legally regulate sports betting.[25] Rep. Greenspan went as far as to say that the House proposal with the OLC in charge is “the only legal option.”[26] The argument against the CCC leans on two points. First, opponents of CCC regulation believe that “the CCC would not have the authority to oversee OH sports betting unless it were considered a casino game.”[27] Second, CCC authority is limited to Ohio casinos; therefore, sports betting would be limited to those casinos.[28]

Sen. Eklund, in support of CCC regulation, rebutted by pointing to the Ohio Constitution omittance of a clear prohibition of the CCC from regulating sports gambling.[29] Sen. Eklund also countered that there is no stipulation that the OLC should regulate sports betting either.[30] If one was to label sports betting as a game of skill rather than a game of chance, it would support the argument of Sen. Eklund that sports betting falls outside of the OLC’s purview.[31]

Sen. William Coley, President of the National Council of Legislators for Gaming States, continued the suspicion of CCC’s aptitude to regulate sports betting by questioning its availability of funds.[32] Sen. Coley supported his suspicion by highlighting the constitutional limitations placed on the CCC for raising funds.[33] Sen. Eklund’s response to this scrutiny was less than persuasive. He stated that “he spoke with the leadership of the CCC and they have every confidence that they have the resources to regulate Ohio sports betting.”

It may seem like this drama should be titled “Eklund vs. the World,” but in the early summer, his bill received encouragement from a major player. Governor Mike DeWine publicly expressed his support for the bill crowning the CCC as the regulator over Ohio sports betting.[34] The support of the governor displays a favorable signal to proponents of a general sports bill, but for those in support of an OLC regulator will have some convincing to do in the near future.[35]

Recently, the HB194 has picked up more traction than the Senate bill. Even though the House bill was delayed due to an unrelated budget discussion this past June, the bill has undergone three hearings in the Finance Committee, with the House expecting to resume discussion after its recess which was scheduled to end in early September.[36] Even considering the current stalemate, proponents of the both bills are expecting a passed bill in the summer of 2020.[37]

What Does the Law Say?

The CCC acquires its authority from Article XV, Section 6 of the Ohio Constitution.[38] The CCC “shall license and regulate casino operators . . . and all gaming authorized by section 6(C).”[39] Section 6(C) states “[c]asino gaming shall be authorized at four casino facilities.”[40] Casino gaming is defined as “any type of slot machine or table game wagering . . . authorized in any of the states of Indiana, Michigan, Pennsylvania, and West Virginia.”[41] Casino gaming is defined as games involving skill or chance.[42]

The OLC acquires its authority from Section 6 of the Ohio Constitution as well as Title 37, Section 3770.03 of the Ohio Revised Code.[43] Within Section 6, the legislature is given the discretionary authority to allow “an agency of the state to conduct lotteries . . . and to award prizes by chance to participants.”[44] The OLC is created by the legislature and given the authority to “promulgate rules under which a statewide lottery may be conducted.”[45]

So…Who Should Regulate?

Sports betting does not adequately fit within the purview of the CCC nor the OLC. For the CCC to be granted the expressed authority to regulate, sports betting must be a casino game. Casino games are defined as slot machines or table games. At first blush, one might attempt to place it within the category of table games, but the category is defined as “any game played with cards, dice, or any mechanical, electromechanical, or electronic device or machine.”[46] A creative argument could be made to fit sports games within that, but it is not convincing considering the fact that some sports betting does not require any “mechanical, electromechanical, or electronic device.”[47] Therefore, the CCC would not be the appropriate commission to regulate sports betting. 

OLC becoming the regulator would depend on one question: does sports gambling fall within the category of a lottery? From the language “promulgate rules under which a statewide lottery may be conducted,” lottery is narrower than Rep. Greenspan and his proponents are willing to admit.[48] The provision does not give much latitude allowing the OLC to dabble in other ventures, such as sports gambling, because it focuses on a single statewide lottery.

The elimination of the two commissions would lead to the sound alternative voiced by Matthew Kredell of the Legal Sports Report.[49] He considered “creating a third regulatory body to handle sports betting.”[50] This design would mirror the response of the Ohio legislature to the similar issue of horse race betting in the early 20thcentury.[51] In that situation, the legislature created the Ohio Racing Commission to regulate the bets on horses.[52]

The practicality of this alternative could be lacking due to how much activity the House’s bill is collecting and the potential issues with funds, but it remains a healthy alternative that should be considered if the legislative stalemate refuses to subside. 


Because this issue of who should regulate presents a moderate amount of ambiguity, the split within the legislature is not a surprise. The House bill has received the most attention, while the Senate bill has received support from the gatekeeper of bills, creating a mystery of what the future holds for sports betting in Ohio. The fierce stalemate should turn the government’s attention to a blueprint of the past, making a specialized commission for sports betting the legitimate course of action. 

[1]Murphy v. NCAA, 138 S. Ct. 1461 (2018).


[3]Rich Exner, Ohio heads towards legalizing sports gambling: Q&A of how, when and issues in play, (May 9, 2019),

[4]Murphy, 138 S. Ct. 1461 at 1468, 1481.

[5] 1484.


[7]Exner, supra note 3.

[8]Matthew Kredell, Argument Bubbles Over Who Should Regulate Ohio Sports Betting, Legal Sports Report (July 25, 2019),

[9]Exner, supra note 3.






[15]The Lines, Ohio Sports Betting, Ohio Sports Betting News and Information,



[18]Exner, supra note 3.

[19]The Lines, supra note 15. 


[21]Exner, supra note 3.

[22]The Lines, supra note 15. 

[23]Exner, supra note 3.

[24]The Lines, supra note 15. 

[25]Matthew Kredell, Opinion On Overseeing Ohio Sports Betting Offers Obstinate Obstacle, Legal Sports Report (July 5, 2019),




[29]Kredell, supra note 7.


[31]Kredell, supra note 24.

[32]Kredell, supra note 7.





[37]The Lines, supra note 15.

[38]Ohio Const. art. XV, § 6.

[39]Id. art. XV, § 6(C)(4).

[40]Id. art. XV, § 6(C)(1).

[41]Id. art. XV, § 6(C)(4).

[42]Id. art. XV, § 6(C)(9).

[43]Ohio Const. art. XV, § 6, Ohio Rev. Code Ann. §3770.03 (LexisNexis 2017).

[44]Ohio Const. art. XV, § 6.

[45]Ohio Rev. Code Ann. §3770.03(A) (LexisNexis 2017).

[46]Id. art. XV, § 6(C)(9).


[48]Ohio Rev. Code Ann. §3770.03(A) (LexisNexis 2017).

[49]Kredell, supra note 24.


[51]Exner, supra note 3.


The Expanding Blocking Patent Doctrine: a Reversal of Burden of Proof?

Patents, Pez #1” by etorov is licensed under CC BY-SA 2.0.

Nathan Potter, Blog Editor, University of Cincinnati Law Review

I. Introduction

Overcoming obviousness is becoming increasingly difficult in some industries due to competitors seeking “blocking” patents.[1] A blocking patent is obtained by one patentee to restrict the make, use, sale, and/or export of an earlier patent owned by a different patentee. This may prohibit both patentees’ use of their respective patents due to the likelihood of infringement. Because a blocking patent may dissuade a competitor from pursuing innovation, it can be difficult to apply the objective indicia of nonobviousness (including commercial success, long felt but unsolved needs, and failure of others) listed in Graham v. John Deere Co.[2] This conflict has been brought to the Supreme Court of the United States in Acorda Therapeutics, Inc. v. Roxane Laboratories, Inc.[3] This petition has been distributed for conference on October 1, 2019.[4]

II. Background

A patent must be a nonobvious invention over prior art.[5] 35 U.S.C. § 103 evaluates nonobviousness from the perspective of a person having ordinary skill in the art (a “PHOSITA”). If a PHOSITA would determine that a potentially patentable invention is an obvious variation or addition to prior art, then the invention is not patentable. When determining whether a potentially patentable invention is obvious, the PHOSITA will use the four Graham factors: (1) the scope and content of the prior art; (2) the differences between the prior art and the claims at issue; (3) the level of ordinary skill in the art; and (4) secondary considerations (or the indicia of nonobviousness).[6]

These “secondary” considerations have become increasingly important since Graham. The Federal Circuit has emphasized the importance of secondary considerations in “guard[ing] as a check against hindsight bias.”[7] The Federal Circuit has also used secondary considerations to reverse district courts’ findings of obviousness.[8] The Federal Circuit has even commented on the necessity of analyzing secondary considerations before pronouncing an invention at issue in a case as obvious.[9]

III. Acorda Therapeutic, Inc. v. Roxane Laboratories, Inc., et al.

Acorda centers on four patents that claim the administration of a medication that is used to improve walking in individuals with multiple sclerosis.[10] Acorda was granted an exclusive license for another patent (the Elan patent) from Elan Corporation.[11] The Elan patent discouraged other companies from researching the administration of medication as detailed in the Acorda patents because of the likelihood that those developments would infringe the Elan patent.

One of Acorda’s arguments was “that the district court improperly applied a categorical rule that a blocking patent (the Elan patent) negates any findings in favor of Acorda on the objective indicia of commercial success, failure of others, and long felt but unmet need.”[12] The Federal Circuit sided with the district court, stating the ruling was based on the factual findings of the case, not a categorical ban.[13] The Federal Circuit continued, stating that a blocking patent, by itself, does not discount evidence of commercial success as a secondary consideration, but it requires a more fact-specific inquiry.[14] However, the existence of a blocking patent does lead to the logical conclusion that competitors may be less commercially motivated to pursue similar research.[15] After losing its appeal to the Federal Circuit, Acorda raised its case to the Supreme Court.

A. Petitioner’s Brief

Acorda’s brief asks whether objective indicia of nonobviousness may be partially or entirely discounted by the existence of a blocking patent, and, if so, whether the defendant must prove implicit or actual blockage.[16] The brief alleges that the Federal Circuit’s opinion is in direct conflict with Graham and opens the obviousness inquiry to hindsight bias.[17] The brief also alleges that the Federal Circuit has overridden the Supreme Court’s decision in Microsoft Corp. v. i4i Limited Partnership, which said that patents are presumed valid under 35 U.S.C. § 282(a) and that it is up to the challenger to prove invalidity, based on obviousness, by clear and convincing evidence.[18]

Acorda argues three key points against the concept of blocking patents within the pharmaceutical industry.[19] First, that 35 U.S.C. § 271(e)(1)’s safe harbor provision will protect researchers from being accused of infringement.[20] Second, that the defendants were capable of researching the art in the Elan patent outside the U.S.[21] And third, that the blocking patent could have been licensed to the defendants for a share of the profits.[22] Acorda then concludes, under these points, that any finding of blockage would have to be implicit.[23]

Acorda also argues that the Federal Circuit improperly applied the “clear and convincing evidence” standard.[24] Further, Acorda stated that the defendants did not have to overcome this standard because the Federal Circuit negated Acorda’s evidence of commercial success and other indicia of nonobviousness.[25] Acorda concludes that the blocking patent doctrine improperly shifted the burden of proof to Acorda.[26]

B. Respondents’ Brief

The Respondents’ brief alleges that the district court correctly found Acorda’s patents to be obvious in light of published studies and other evidence.[27] Respondents also point out that the Federal Circuit’s review was to consider whether the district court’s factual findings were clearly erroneous.[28] They stated that the Federal Circuit correctly sided with the district court while also rejecting any categorical rules regarding blocking patents.[29]

The Respondents’ brief argues that Acorda’s accusation of the creation of a categorical rule in the blocking patent doctrine is incorrect and “illusory.”[30] The brief goes on to say that there is no conflict between the outcome in the present case and any decision by the Supreme Court.[31] In this fact-specific inquiry, the Court must consider that the long felt need and commercial success are due to the blocking patent preventing competitors from devoting resources to do research based off the claimed invention.[32] Finally, Respondents surmise that even with the evidence of objective indicia of nonobviousness, Acorda’s patents would be held obvious under the prior art.[33]

IV. Discussion

The Petitioner and the Respondents both presented compelling arguments. There is no evidence of actual blockage. Licensing is common in the pharmaceutical industry. The Respondents never said they sought a license from Elan or Acorda of the Elan patent. Acorda admits that it was given an exclusive license, but there is no mention whether Acorda was permitted to assign that license. But, is it necessary to show actual blockage when the facts of a case strongly lead to an implicit conclusion?

The standard is clear and convincing evidence, not actual proof. The Respondents provided several secondary sources which backed their opinion that a blocking patent severely inhibits the commercial incentive for the Respondents to have pursued invention based on the Elan patent. However, this is still not concrete proof that the Elan patent actually blocked the Respondents’ research in the area.

Secondary considerations, or the indicia of nonobviousness, carry more weight today than they did in 1966, when Graham was decided. This was due to the recognition that those factors are best suited to tipping the scales on whether a patent is invalid due to obviousness. However, when there is significant research in the field and a patent which blocks others’ commercial viability, the court must view any secondary considerations in the light of the facts surrounding a case. To do otherwise, would allow one patentee to dominate a particular area of a field of research. Therefore, the existence of a blocking patent will almost always negate the effectiveness of secondary considerations in an obviousness analysis.

Acorda understates the importance of Federal Circuit’s standard of review. The Federal Circuit could only overturn the district court if it found the ruling to be clearly erroneous. This provided a great deal of deference to the district court, which tried the case based on the facts. Even though the Federal Circuit reviewed those facts, they came to the same conclusion. 

V. Conclusion

Acorda lost its appeal to the Federal Circuit on the facts of the case. It is undeniable that a blocking patent heavily weighs against a court’s consideration of the indicia of nonobviousness. This is the correct approach. Requiring a defendant to show proof of actual blockage is unrealistic in the world of pharmaceuticals. To suggest that a company is welcome to research the claimed invention outside the U.S. is a weak argument. The district court gave the Acorda patents their presumption of validity; however, the respondents overcame this presumption. Acorda relied too heavily on the indicia of nonobviousness to prove their patents were valid, and so those patents were found invalid. The Supreme Court does not need to grant certiorari on this issue because the Federal Circuit has already provided a correct decision. Requiring a defendant to show proof of actual blockage is too heavy a burden and potentially impossible.

[1] 35 U.S.C. § 103. A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.

[2] 383 U.S. 1, 17 (1966).

[3] 903 F.3d 1310 (Fed. Cir. 2018, cert. pending, Apr. 8, 2019).

[4] Acorda Therapeutics, Inc. vs. Roxane Laboratories, Inc., No. 18-1280 (U.S. Apr 08, 2019).

[5] Prior art is any evidence that your invention is already disclosed to the public. Prior art could be disclosed by the inventor or someone else and does not need to be fixed in a tangible medium.

[6] Graham, 383 U.S. at 17.

[7] In re Cyclobenzaprine Hydrochloride Extended-Release Capsule Patent Litig., 676 F.3d 1063, 1079 (Fed. Cir. 2012). See also Apple Inc. v. ITC, 725 F.3d 1356, 1365 (Fed. Cir. 2013).

[8] See Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc.,699 F.3d 1340 (Fed. Cir. 2012); Plantronics, Inc. v. Aliph, Inc., 724 F. 3d 1343 (Fed. Cir. 2013); Leo Pharm. Prods., Ltd. v. Rea, 726 F.3d 1346 (Fed. Cir. Aug. 12, 2013).

[9] Apple, 725 F.3d at 1365.

[10] Acorda, 903 F.3d at 1313.

[11] Id.

[12] Id. at 1328.

[13] Id. at 1337.

[14] Id. at 1338 (citing Merck Sharp & Dohme Corp. v. Hospira, Inc., 874 F.3d 724 (Fed. Cir. 2017).

[15] Id

[16] Brief for Petitioner at i, Acorda Therapeutics, Inc. vs. Roxane Laboratories, Inc., No. 18-1280 (U.S. Apr. 8, 2019) (

[17] Id. at 2.

[18] Id. at 3.

[19] Id. at 20.

[20] Id.

[21] Id.

[22] Id.

[23] Id.

[24] Id. at 22.

[25] Id.

[26] Id. at 23.

[27] Brief for Respondents at i, Acorda Therapeutics, Inc. vs. Roxane Laboratories, Inc., No. 18-1280 (U.S. Apr. 8, 2019) (

[28] Id.

[29] Id.

[30] Id. at 1.

[31] Id.

[32] Id. at 14.

[33] 18.

Impacts of the Fourth Estate v. on the Copyright Office

Nathan Potter, Associate Member, University of Cincinnati Law Review

            The Supreme Court of the United States (SCOTUS) has unanimously concluded that a copyright must be registered by the Copyright Office before an infringement action can be brought.[1] This guidance resolves a long-standing split among U.S. Circuit Courts. Some courts considered a copyright as “registered” once the application was filed with the U.S. Copyright Office, while other courts determined that the copyright was not registered until it was approved by said office. SCOTUS relies on the text of 17 U.S.C. § 411(a) as the basis of their decision, writing: “[the statute] states that ‘no civil action for infringement of the copyright in any United States work shall be instituted until . . . registration of the copyright claim has been made in accordance with this title.’”[2] This quoted portion of the statute appears to plainly state that registration must occur before any civil action for infringement upon the copyrighted work. How could circuit courts have misinterpreted such an unambiguous statute? The possibility seems almost silly.

The answer may reside in the omitted portion of SCOTUS’s quote from 17 U.S.C. 411(a). “[N]o civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title.”[3] “Preregistration” is omitted because it does not mean “time prior to registration,” but is its own application with the Copyright Office. It is meant to be a placeholder for applicants who are concerned with pre-release infringement.[4] And no, “preregistration” is not a reason some courts do not require action by the Copyright Office prior to bringing an infringement claim. However, it is an interesting pitfall for those unaware of “preregistration’s” meaning.

Justice Ginsberg’s opinion focuses on reading 17 U.S.C. § 411(a) as a whole, instead of individual pieces having different requirements for the grant of rights.[5] Overall, the opinion heavily emphasizes the way that Congress wrote the statute. 17 U.S.C. § 411(a) focuses on actions taken by the Copyright Office; it does not dictate that the applicant is granting their own right by mere submission of a document to the Copyright Office. This premise is reinforced in 17 U.S.C. § 411(b), which states that the Copyright Office will review the information presented in the application and has the right to refuse registration based upon inaccuracies. The requirement of completed registration by the Copyright Office was previously considered to be the “Registration Approach.” The other ideology was referred to as the “Application Approach.” Even though the Application Approach has been invalidated by SCOTUS, it is still worthwhile to understand the rationales of its followers.[6]

The Application Approach

            Cosmetic Ideas, Inc. v. IAC, et al., which has been overruled due to SCOTUS’s holding in Fourth Estate, provides the rationale behind the Application Approach.[7] In Cosmetic Ideas, the plaintiff asserted that it had fulfilled its obligations under 17 U.S.C. § 411(a) because the plaintiff had submitted a completed application for registration with the Copyright Office.[8] The Ninth Circuit pondered the question of “what it means to ‘register’ a copyrighted work?”[9] And, referring back to the Supreme Court’s decision in Reed Elsevier, Inc. v. Muchnick, the Ninth Circuit stated that the Supreme Court did not intend for a lack of a completed registration to be a subject-matter jurisdiction bar to a federal court.[10] And, the Ninth Circuit assumed that if it has jurisdiction, then the plaintiff must have a valid complaint even with an incomplete registration. The Ninth Circuit also points out that several other circuits, including the Fifth and Seventh Circuits, have adopted this Application Approach.[11] All like-minded circuits state that the application to the Copyright Office is enough to create standing to bring a claim because the Copyright Office will perform the gatekeeping function of removing invalid copyrights.[12]

The Registration Approach

            The Registration Approach resolves the glaring problem of the Application Approach. Specifically, it stops a plaintiff from asserting a claim and then having the plaintiff’s copyrighted work be denied by the Copyright Office. This results in a protection for defendants against frivolous litigation and expenses. It also provides the courts with the confirmation from the Copyright Office’s that the plaintiff holds a valid copyright.[13]

Additionally, as Justice Ginsberg pointed out in Fourth Estate, the text of 17 U.S.C. § 411(a) focuses on the actions of the Copyright Office, not the actions of the applicant.[14] To hold otherwise would mean that Congress used the term “registration” in the context of two different meanings within consecutive sentences: (1) the applicants act of filing an application; and (2) the Copyright Office’s review of an application.[15] Justice Ginsberg also points out that if the Application Approach was the correct approach, then there would be no reason for an applicant who fears prepublication infringement to apply for preregistration.[16] Doing so would be a wasted effort because the applicant could simply apply for registration and commence with the claim of infringement.

Outcomes of Fourth Estate v.

Fourth Estate’s holding does not prevent a plaintiff from recovering damages prior to the Copyright Office’s receipt of the plaintiff’s application or the office’s grant of the plaintiff’s copyright. If infringement occurs before a plaintiff’s application to the Copyright Office or before a grant from that office, the plaintiff may still recover damages for the past infringement; he may also recover the infringer’s profits.[17] Section 504 of the Copyright Act relaxes the need for an expedient application and grant of a copyright. This section also means that the Application Approach is about the plaintiff’s judicial expediency and has little bearing on remedies for infringement. However, Congress has recognized that there are some mediums, susceptible to prepublication infringement, which may need to file an infringement claim prior to registration. One example is live broadcasts, which have an exception to the registration requirement of 17 U.S.C. § 411(a).[18] The conclusion may be drawn that the Application Approach lacks practical merit and it only serves to expedite the judicial process for the plaintiff, while potentially resulting in a refused copyright and thousands of dollars of legal work (and the court’s time).

Fourth Estate could cause the floodgates to open at the Copyright Office. In the aftermath of Fourth Estate, it is possible there will be a surge of applicants either seeking to receive a copyright registration for the purpose of infringement proceedings or in preparation of anticipated infringement. No doubt, there will also be creators of copyrightable works who seek legal advice, and that advice will almost always be to file as soon as possible.[19] According to the Copyright Office’s statistics, copyright registration is currently taking an average of sixth months for copyright claims without correspondence through internet filing and hardcopy filing is taking an average of thirteen months without correspondence.[20] Claims which require correspondence between the office and the application take an average fifty percent longer (nine months for internet filing and twenty months for hardcopy filing).[21] The question that needs to be asked isn’t if Fourth Estate will increase the processing time of a copyright application, the proper question is how much this ruling will increase the processing time. Justice Ginsberg even noted that this issue is bound to occur; however, she asserted that delays in the Copyright Office are due to staffing and budgetary shortages and that Congress, not the courts, are the proper avenue of alleviating this burden.[22] This statement is true; however, it is very likely that Congress will be unable to address the surge of copyright applications swiftly enough to prevent a large growth in the processing time required by the office.


The Application Approach has been invalidated by the holding in Fourth Estate. Congress wrote the Copyright Act in such a way that they intended for registration to be granted before a plaintiff may bring a copyright infringement suit. The inclusion of the ability for a plaintiff to recover damages prior to their grant of registration and for the infringer’s profits supports this conclusion. Additionally, Congress has already addressed the issue of copyrighted works, such as live broadcasts, which are highly susceptible to prepublication infringement in 17 U.S.C. § 411(c). It currently takes an average of six to nine months for internet filing and thirteen to twenty months for hardcopy filing; these times will go up in the wake of Fourth Estate. If a client anticipates infringement of an unregistered copyright, it would probably be best for the client to file as soon as practicable.

[1] Fourth Estate Public Benefit Corp. v., LLC, 586 U.S. *12 (Mar. 4, 2019).

[2] Id. at 1 (omissions in the original).

[3] 17 U.S.C. § 411(a) (Emphasis added).

[4] Preregistration,, (accessed Mar. 14, 2019).

[5] Fourth Estate, No. 586 U.S. *4.

[6] Id.

[7] 606 F.3d 612 (9th Cir. 2010).

[8] Id. at 613.

[9] Id. at 615.

[10] Id.

[11] Id.

[12] See generally Chi. Bd. of Educ. v. Substance, Inc., 354 F.3d 624 (7th Cir. 2003); Apple Barrel Prods. v. Beard, 730 F.2d 384 (5th Cir. 1984).

[13] Fourth Estate, 586 U.S. at 6.

[14] Id. at 5.

[15] Id.

[16] Id. at 7.

[17] 17 U.S.C. § 504(b).

[18] 17 U.S.C. § 411(c).

[19] Genevieve E Charlton & Philip A. Jones, U.S. Supreme Court Rulings Impact Two Critical Copyright Issues: Application not Sufficient to Bring a Claim and Meaning of ‘Full Costs’ to a Prevailing Party, Lexicology, (Mar. 12, 2019).

[20] Registration Processing Times, U.S. Copyright Office, (accessed Mar. 14, 2019).

[21] Id.

[22] Fourth Estate, 586 U.S. at *12.