Category Archives: Copyright Office

Is the registration backlog at the Copyright Office a recent occurrence?

1
Shourin Sen - 12 April 2010 – 12:00 pm
Filed under Copyright Office, Registration

  • Title: Copyright deposits in the basement before classifying
  • Date Created/Published: [1898?]
  • Medium: 1 photographic print.
  • Summary: Photographs shows interior view of hall with piles of copyright deposit materials on the floor in the Thomas Jefferson Building.
  • Reproduction Number: LC-USZ62-38245 (b&w film copy neg.)
  • Rights Advisory: No known restrictions on publication.
  • Call Number: U.S. GEOG FILE – Washington, D.C.–Library of Congress–Jefferson Building–Interior–Offices–Copyright Office [item] [P&P]
  • Repository: Library of Congress Prints and Photographs Division Washington, D.C. 20540 USA

Edit: A friend of the program sends word that the processing time, presumably for an online submission, is down to 30-45 days, which is welcome news.

Copyright Office requests comments on certain termination rights

1
Shourin Sen - 1 April 2010 – 9:00 am
Filed under Copyright Office, Termination

The Copyright Office has issued a formal comment request on the question of whether and how the Copyright Act provides a termination right to authors when a grant was made prior to 1978 and the work was created on or after January 1, 1978. As many of you may be aware, the Copyright Act allows authors and their heirs the right to terminate non-exclusive and exclusive licenses and transfers. The provisions do not apply to works made for hire or grants that are made via wills.

  • Section 304 (c) governs works in their first term or renewal term as of January 1, 1978, if the grant was made before January 1, 1978. Termination may be exercised during a five-year period beginning fifty-six years from the date copyright was secured.
  • Section 304(d) controls works in their first term or renewal term on January 1, 1978, if the termination right in 304(c) expired and was not exercised on or before October 27, 1998. Termination may be exercised during a five-year period beginning 75 years from the date copyright was secured.
  • Section 203 governs grants executed on or after January 1, 1978, regardless of whether the copyright was secured prior to or after 1978. Termination may be exercised during a five year period thirty-five years from the date of publication of the work under the grant, or forty years from the date of execution of the grant, whichever is earlier. Section 203 terminations may be exercised on January 1, 2013, provided that notice was served at least two years in advance.

The Copyright Office provided two examples of the situation:

Example 1: A composer signed an agreement with a music publisher in 1977 transferring the copyrights to future musical compositions pursuant to a negotiated fee schedule. She created numerous compositions under the agreement between 1978 and 1983, some of which were subsequently published by the publisher transferee. Several of these achieved immediate popular success and have been economically viable ever since. The original contract has not been amended or superseded.

Example 2: A writer signed an agreement with a book publisher in 1977 to deliver a work of nonfiction. The work was completed and delivered on time in 1979 and was published in 1980. The book’s initial print run sold out slowly, but because the author’s subsequent works were critically acclaimed, it was released with an updated cover last year and is now a best seller. The rights remained with the publisher all along and the original royalty structure continues to apply.

The Office’s request also contained a footnote that may be sexy to copyright wonks:

If a document is submitted as a notice of termination after the statutory deadline has expired, the Office will offer to record the document as a ‘‘document pertaining to copyright’’ pursuant to § 201.4(c)(3), but the Office will not index the document as a notice of termination. Whether a document so recorded is sufficient in any instance to effect termination as a matter of law shall be determined by a court of competent jurisdiction.

Copyright Office: Distribution of a work online is a publication

1
Shourin Sen - 27 January 2010 – 7:47 pm
Filed under Copyright Office, Distribution Right, Publication, Registration

The Copyright Office has adopted an interim regulation that alters the deposit exemption for works available only online. Previously, automated databases available only online were exempted from the mandatory deposit requirements. The exemption was implemented in 1989 because the Copyright Office “in the early 1990s had neither the intention nor the technology to collect such works.”

The Copyright Office has up until now interpreted the exemption to apply to all online-only publications because at the time the exemption was implemented, “for all practical purposes,” the only works being published online were the automated Westlaw and Nexis databases.

The new regulation

In the new regulation “electronic serials” (‘‘This class includes periodicals; newspapers; annuals; and the journals, proceedings, transactions, etc. of societies.’’) are subject to a qualified deposit requirement. Not all rights holders will be requested to deposit their works. The Copyright Office will make demands on authors, at its discretion. A rights holder will then have three months to deposit the work, barring the Office granting additional time in special circumstances.

The logistics for the submission of online–only works will be developed by the Office in consultation with content owners.The Office was not ready to adopt a policy where rights-holders could  by provide a website link so that the Office could download the works itself. The effective date for the new reg is February 24, 2010. It only applies to works published on or after the effective date.

Blogs

In comments, West publishing requested that the definition of serials be revised so that it could not be read to cover databases and blogs. The Office, in response, limited the definition of electronic serials to works “issued or intended to be issued on an established schedule, in successive parts bearing numerical or chronological designations, without subsequent alterations.’’ The Office noted it believed that this definition does not include blogs or databases that are publications with “no demarcations between particular, discrete issues of the publication.”

I’m not convinced the definition of electronic serials still doesn’t cover blogs. Many blogs, like mine, create posts that are automatically numbered by date or post number in the URL. Regardless, the Office’s comments imply that, at least for the time being, they are unlikely to make deposit demands upon blog owners.

Online distribution as publication

The deposit requirement enacted in 17 U.S.C. 402 only applies to works published in the United States. D.C. attorney Patrice Lyons queried whether the distribution of works only online constitutes a publication. Section 101 of title 17 defines ‘‘publication’’ as follows:

“Publication” is the distribution of copies or phonorecords of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending. The offering to distribute copies or phonorecords to a group of persons for purposes of further distribution, public performance, or public display, constitutes publication. A public performance or display of a work does not of itself constitute publication.
To perform or display a work “publicly” means—
(1) to perform or display it at a place open to the public or at any place where a substantial number of persons outside of a normal circle of a
family and its social acquaintances is gathered; or

(2) to transmit or otherwise communicate a performance or display of the work to a place specified by clause (1) or to the public, by means of any device or process, whether the members of the public capable of receiving the performance or display receive it in the same place or in separate places and at the same time or at different times.

It is possible to argue that the distribution of a work on the internet is not a publication because there is no “sale or other transfer of ownership, or by rental, lease, or lending.”

In mid-October, we encountered this issue in Moberg v. 33T LLC, 2009 WL 3182606 (D. Del. 2009). In the case, a defendant moved to dismiss a copyright action brought by a Swedish photographer. The defendant argued that the work was a U.S. work because it was published online concurrently in the US and abroad. As a U.S. work, the defendant argued, the photographer needed to register the works at issue before bringing suit. The Court sidestepped the question of whether a publication had occurred and found that, regardless of whether there was a publication, there was not concurrent publication in the United States and a foreign country.

The Copyright Office in the regulation found that the distribution of a work on the internet constitutes a publication:

Because ‘‘[u]nder the definition in section 101, a work is ‘published’ if one or more copies or phonorecords embodying it are distributed to the public,’’ H.R. Rep. No. 96–1976, at 138 (1976), it follows that the electronic transmission of copies of a work to the public, as addressed in the distribution context in Tasini and Grokster, constitutes publication of that work.

So what does this mean?

Statutory damages are not available under 17 USC 412 for (1) the infringement of copyrights in unpublished works commenced before the effective date of its registration, or (2) any infringement of copyright commenced after first publication of theve found work and before the effective date of its registration, unless such registration is made within three months after the first publication of the work.

Authors of domestic works should be aware that, if Courts adopt the language in the regulation as guidance, they have a three month window to register after they place a work on the internet. In this window an author can still seek statutory damages and attorneys’ fees, even if infringement occurs before the effective date of the registration. If a court were to find that the distribution of an online-only work does not constitute a publication there is no window.

The language in the regulation raises the importance of the Moberg decision for works created outside of the United States and first published online. Previously a court could have found that not all works first published on the internet are U.S. works (due to concurrent publication in the US and abroad) because an online distribution does not constitute a publication. If court’s adopt the Office’s analysis, the only way a work first published online is not a U.S. work is if a tribunal adopts the policy-based findings in Moberg.

An adept decision addressing the copyright registration backlog

0
Shourin Sen - 5 June 2009 – 9:00 am
Filed under Copyright Office, Jurisdiction, Registration

Tri-Marketing, Inc. v. Mainstream Marketing Services, Inc., 2009 WL 1408741 (D. Minn. 2009)

I’ve spent a couple of posts over the past few weeks discussing how courts are dealing with the registration backlog at the Copyright Office. To briefly review, due to what appear to be temporary troubles implementing a new electronic registration system, the backlog for paper registration at the Copyright Office has grown from six to eighteen months. There was a decision issued on May 19 by Judge Donovan W. Frank from the federal district court in St. Paul that adeptly dealt with this issue. Tri-Marketing and Mainstream Marketing are telemarketing companies that generate leads for the insurance industry.  Tri-Marketing alleged that Mainstream infringed its copyright in its website. Here’s the relevant passage dealing with the registration backlog (emphasis mine):

TRI operates a website that provides information about its business and allows for the purchase of its services. TRI updated its website in both 2004 and 2007. On April 3, 2008, TRI sought copyright registration for both the 2004 and 2007 websites by delivering a deposit of both websites, two corresponding Form TX applications, and two $45 fees to the Copyright Office. Bolder Calls updated its website in November 2005 and again in December 2007. According to TRI, Bolder Calls copied elements of TRI’s 2004 and 2007 websites. TRI notified Bolder Calls of its alleged infringement on February 19, 2008.

Why is this paragraph particularly notable? As we encountered in Facebook v. Power Ventures, the primary situation where a court risks running into a mudstorm by allowing a case to proceed after a copyright registration is filed, but before the Copyright Office has issued a ruling on the registration, occurs when there is a dispute about what rendition of a work is underlying an infringement claim.  This situation seems to me to arise most often with websites, where a plaintiff can make many amendments in a short period of time. To give a hypo for this problem, let’s say around the time a copyright holder files a registration for a website, she makes twenty different changes to the website. All of the versions of the website would of course be granted copyright, but the copyright owner can only bring suit for the portions of the work that she has registered. Without being able to resort to a copyright registration to see exactly what rendition of the website is underlying the claim, there is no way for the litigants or the tribunal to be sure of the boundaries of the suit.

So back to Tri-Marketing, Inc v. Mainstream Marketing Services: The Plaintiff claimed infringement of a website, the type of work that may cause trouble if the Court were to allow the case to proceed before the Copyright Office has issued a decision. By noting that all of the versions of the website were included in the registration application, the Court discounted the possibility that the suit would proceed without the parties being sure of the breadth of the copyright claim.

A second reason I like the above paragraph is that the Court didn’t shy away from the fact that the registration was filed thirteen months prior to the decision.  This is an important piece of information, I think, if this case were to head for appeal. The Court found that since there was no Eighth Circuit precedent directly on point, the interests of justice and judicial economy favored letting the litigation proceed sans Copyright Office determination:

The Court recognizes the split of authority on this issue and notes that it is aware of no Eighth Circuit case directly on point. After reviewing the relevant and persuasive case law and the reasons supporting the two separate approaches, this Court endorses the “application approach” to federal jurisdiction over copyright claims. First, the language used in Action Tapes by the Eighth Circuit suggests that it would adopt the application approach. See Action Tapes, 462 F.2d at 1013 (“However, the copyright owner may not sue for infringement under the federal Copyright Act until the owner has delivered ‘the deposit, application, and fee required for registration …’ ”). Second, the application approach promotes the interests of justice and judicial economy. See, e.g., Int’l Kitchen Exhaust Cleaning Assoc., 81 F.Supp.2d at 72. Because TRI alleges that it has properly delivered the deposit, application, and fee required for the registration of the asserted copyrights, the court finds that it has subject matter jurisdiction over TRI’s copyright claims.

In related news

The Copyright Office this past Friday issued a press release concerning its processing time.  This strikes me as a prudent move that allows courts to take judicial notice of an official release when determining whether to allow a claim to proceed without a copyright office determination.

Copyright Office Improves Processing Time and Service

A recent Washington Post article focused on the lengthy processing times the Copyright Office is experiencing in wake of its transition from a paper-based to an electronic processing environment. The Copyright Office is working diligently to improve processing times and service to the public in general. To clarify, current processing times by filing method are as follows:

  • E-Service with Electronic Deposit:  5 months for 90% to be completed; 33% completed in 2.5 months
  • E-Service with Physical Deposit: 6.5 months for 90% to be completed; 33% completed in 3 months
  • Paper Claims: 18 months for 90% to be completed; 33% completed in 12 months

You can save money and time and help us improve our services by filing claims online via eCO. Please visit www.copyright.gov for more information.