Category Archives: Publication

Copyright Office: Distribution of a work online is a publication

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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.

Court finds that putting photos on the internet doesn’t make them U.S. works

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Shourin Sen - 14 October 2009 – 9:00 am
Filed under Jurisdiction, Publication, Registration

Moberg v. 33T LLC, 2009 WL 3182606 (D. Del. 2009)

There was a relatively important decision issued in the federal District of Delaware last week that addressed whether posting unpublished photos on the internet made them U.S. works. The Plaintiff was a Swedish photographer who put up a series of photos on a German art gallery’s website. The Defendant ran a site that offered customizable website designs for sale. According to the complaint, at some point in December 2007, the Defendant used some of the Plaintiff’s photos as stock images in some of its web designs. The Plaintiff sent the Defendant a cease-and-desist, and when it was partially ignored, it filed suit alleging copyright infringement and violation of the DMCA.

The fireworks

The Defendant moved to dismiss the copyright claim on the grounds that the Court didn’t have subject matter jurisdiction. The omnipresent, omnipotent Section 411(a) of the Copyright Act states that “no 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.” 411(a) essentially creates a two-tiered structure, requiring that copyright owners of U.S. works must register their works prior to bringing suit; but allowing copyright owners of foreign works to bring suit without registration.

The Plaintiff had brought suit sans registration on the theory that its works were not United States works since they were first published on a German website. The Defendant argued that the Plaintiff’s photos were United States works:

Defendants contend that plaintiff’s photographs, which were created undisputably outside the United States, are United States works because when they were posted on a German website, they were “published” simultaneously in Germany and in the United States. 17 U.S.C. § 101 (“[A] work is a ‘United States work’ only if-(1) in the case of a published work, the work is first published-… (B) simultaneously in the United States and another treaty party or parties, whose law grants a term of copyright protection that is the same as or longer than the term provided in the United States.” FN7). Defendants argue that it is “well settled that Internet publications are published everywhere simultaneously, regardless of the location of the server hosting the website.” (Def. Br. at 7.) Therefore, because the posting of a photograph on a website simultaneously “publishes” the photograph “everywhere,” including the United States, it is a “United States work,” and as such, it must be registered prior to filing suit for infringement.

I’m aware of only one previous case where a court considered whether distributing a work on the internet constituted a publication, Getaped.com, Inc., v. Cangemi. In the case the S.D.N.Y. found that posting a website on the internet constituted a publication. Getaped may be of limited precidential value because the court seemed to use the concepts of distribution and publication interchangeably.

Back to Moberg: The Court rejected the easier out (a finding that the Plaintiff’s distribution didn’t constitute a publication) and instead found that treating the photos as United States works, and not foreign works, would “pervert” U.S. copyright law and “would be contrary to the Berne Convention.” The Court, thus, found that regardless of whether posting a work on the internet constitutes a publication, if a foreign author puts a work up on a foreign website, it’s not a publication in the United States.

The Court first stated that it would be contrary to the purpose of the Berne Convention to hold that publishing a work on the internet “automatically, instantaneously, and simultaneously causes that work to be published everywhere in the world.”:

“The overarching purpose of the Berne Convention is to provide protection to authors whose works will be published in many countries.” Christopher Sprigman, Reform(aliz)ing Copyright, 57 Stan. L.Rev. 485, 544 (2004). “Berne’s proscription of mandatory formalities is a rational response to the difficulty of complying (and maintaining compliance) with differently administered formalities that may have been, absent the Convention, imposed in dozens of national systems, some with registries, some without, and none of which shares information.” Id. (explaining that “[e]vidence for this view can be found in the origins of the Berne Convention”). Thus, if the publishing of plaintiff’s photographs on the German website simultaneously caused them to be published in the United States, and such publication transformed the work into a United States work, plaintiff would be subjected to the very formalities that the Berne Convention eschews. To hold otherwise would require an artist to survey all the copyright laws throughout the world, determine what requirements exist as preconditions to suits in those countries should one of its citizens infringe on the artist’s rights, and comply with those formalities, all prior to posting any copyrighted image on the Internet.

Next the Court noted that if posting a work on the internet made a work a United States work, American citizens  could infringe foreign works without fear of retribution:

While not all Americans would exploit such an advantage, the misappropriation of intellectual property remains a significant problem and there is no principled reason why domestic users should be able to act with such impunity.

Finally, the Court found that such a finding would be contrary to the policy underlying U.S. copyright law:

Third, the United States copyright laws, in accord with the Berne Convention, provide for protection of foreign works in the United States without requiring the artists to undertake any formalities in the United States. See 17 U.S.C. § 408(a) (2000) (“[R]egistration is not a condition of copyright protection.”); Kuklachev v. Gelfman, 600 F.Supp.2d 437, 473 (E.D.N.Y.2009) (citing Muchnick v. Thomson Corp., 509 F.3d 116, 133 (2d Cir.2007)) (“Under the clear language of the statute, which refers only to ‘any United States work,’ foreign works originating in countries party to the Berne Convention need not comply with § 411.”); Cotter, supra, at 1743-44, (explaining that “U.S. copyright subsists in unpublished works … from the moment of creation, wherever those works happen to be created. Upon publication, … U.S. copyright continues to subsist in the work … if, “on the date of first publication, one or more of the authors is a national or domiciliary of the United States, or is a national, domiciliary, or sovereign authority of a treaty party, or is a stateless person, wherever that person may be domiciled”). The adoption of defendants’ point of view would be contrary to that law.

Notes:

The proposition that all works become U.S. works under the Copyright Act if they are first published on the internet is somewhat strange, but the outcome created by such a reading is hardly onerous. Expedited “special handling” of copyright registration takes at most two weeks and is the same cost as regular registration if litigation is looming, under the new regulations established by the Copyright Office.