Category Archives: Registration

The mystery of the copyright deposit piles

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Shourin Sen - 26 July 2010 – 9:00 am
Filed under Registration

A couple of months ago, I posted a picture from the  Library of Congress Prints and Photographs Division. The picture, from the late 1800s, shows piles of copyright deposit materials on the floor in the Thomas Jefferson Building.

At the time, I joked about whether this was evidence of a registration backlog at the Copyright Office from a century ago. This turns out (drum roll) not to be the case.

I had the good fortune to be in Washington, DC for a short stretch this month. I took a brief trip to the National Archives in College Park, MD to look over some of the old files on Department of Justice copyright prosecutions. Among the various documents was a memo from H.L. Godfrey, an attorney at the DOJ in the late ’40s  and early ’50s. I’ve included the memo below, which is somewhat interesting in it’s own right. The real gem, at least for solving this mystery, was the memo’s citation to hearings by the Librarian of Congress from early in the 1900s.

Librarian Of Congress from “Copyright Hearings — Bills S. 6330, S. 2499,  S. 2900, H.R. 19853, H.R. 243, H.R. 11794–June 1906, December, 1906, March 1908,” pages 14 and 15:

The other matter is that of’ copyright deposits, the volume of these is now prodigious. During the last year alone the articles deposited exceeded 200,000 in number. A large proportion of these are of great value to the library and are drawn up into it. The rest remain in the cellar. The accumulations in the cellar now number a million and a half items. Many of these would be useful in other Government libraries; for instance, medical books in the library of the Surgeon General’s Office. Some of them might be useful in exchange with other libraries. A few might have value in exchange with dealers. The remainder are a heavy charge upon the Government for storage and care. The ought to be returned to the proprietors of the copyright if they want them, or, if not wanted, destroyed. [Emphasis added.]

So there we have it. The piles of deposits were apparently post-registration documents in which the Library of Congress had no interest — a turn of the century collection of bad art that wasn’t quite good enough to make the cut. So, so sad.

The solving of one mystery just leads to another. What happened to all of the works?

This has to be the greatest collection of bad art in the history of humankind. Did the Library light a giant bonfire and dance around the works bidding them adieu? Did they carry them to the trash in bags, one by one. Did it take years, months, decades?

Are they still there?

Someone out there must know the answer to this little mystery.

Inquiring minds want to know.

Download (PDF, 3.41MB)

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.

§411(a) does not restrict a federal court’s subject-matter jurisdiction, Supreme Court

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Shourin Sen - 3 March 2010 – 9:00 am
Filed under Jurisdiction, Registration, Supreme Court

On Tuesday, the Supreme Court reversed the Second Circuit and found that 17 U.S.C. 411(a) is merely a claim-processing rule, not a restriction on a federal court’s subject matter jurisdiction. I’ve discussed the background on this case a couple of times previously. The opinion was some of what I expected (very short, unanimous judgment, no ruling on whether district courts should or must dismiss an infringement claim brought on an unregistered work sua sponte, no discussion of the role of registration, no statement on the merits of the settlement) and some of what I didn’t expect (Thomas writing for the Court, joined by Roberts, Scalia, Kennedy and Alito, with a Ginsburg concurrence, joined by Stevens and Breyer.) Sotomayor recused herself from the case because she was the presiding district court judge in NY Times v. Tasini, the dispute underlying Reed Elsevier v. Muchnick.

This could have been a landmark copyright case if the Court had delved into a description of copyright registration or tried to answer whether registration was a hard-line requirement or more malleable. The Court avoided these evaluations, wisely in my humble opinion, and constrained its background discussion and analysis. Registration plays such a foundational role on so many issues in copyright that dicta and ancillary findings probably would have been twisted in all types of ways downstream. It  seems better to leave play in the joints on many of the ancillary issues and push them to district and appellate courts, even if the outcomes will sometimes be inconsistent.

William & Mary Professor Scott Dodson on the civil procedure aspects of the case at Civ Pro and Federal Courts Law Blog. The majority and concurring opinion agreed that the two integral cases were Arbaugh v. Y & H Corp., 546 U. S. 500 (2006) and Bowles v. Russell, 551 U.S. 205 (2007). Both agreed that a passage from Arbaugh was controlling:

If the Legislature clearly states that a threshold limitation on a statute’s scope shall count as jurisdictional, then courts and litigants will be duly instructed and will not be left to wrestle with the issue. But when Congress does not rank a statutory limitation on coverage as jurisdictional, courts should treat the restriction as nonjurisdictional in character. Applying that readily administrable bright line to this case, we hold that the threshold number of employees for application of Title VII is an element of a plaintiff’s claim for relief, not a jurisdictional issue.” 546 U. S., at 515–516 (citation and footnote omitted). [Italics added.]

The majority opinion and concurring opinion, however, conspicuously differed in their quotations from Arbaugh. Justice Thomas, writing for the majority, did not include the “bright line” language from Arbaugh that I italicized above. Justice Ginsburg, concurring, embraced the phrase “bright line” in four different places.  Linguistics aside (but words matter) both the majority and concurring opinion seemed to apply the test from Arbaugh as the first and primary benchmark.

The second case both the majority and concurring opinion used prominently was  Bowles v. Russell, 551 U.S. 205 (2007). Justice Thomas characterized Bowles as standing for the proposition that “context, including this Court’s interpretation of similar provisions in many years past, is relevant to whether a requirement as jurisdictional.” Applying Bowles to Reed, the majority found that  §411(a)’s historical treatment was “jurisdictional,” and a “factor in the analysis,” but “not dispositive.” Found Justice Thomas, “The other factors discussed above demonstrate that §411(a)’s registration requirement is more analogous to the nonjurisdictional conditions we considered in Zipes and Arbaugh than to the statutory time limit at issue in Bowles.”

Justice Ginsburg, concurring, viewed Bowles as conflicting with Arbaugh, but found that it was possible to reconcile the case if it’s read as ” relying on a long line of this Court’s decisions left undisturbed by Congress.” Union Pacific R. Co. v. Locomotive Engineers and Trainmen Gen. Comm. of Adjustment, Central Region, 558 U. S. ___, ___ (2009) (slip op., at 13) (citing Bowles, 551 U. S., at 209–211).” Noted Ginsburg, “The same is true of our decision, subsequent to Bowles, in John R. Sand & Gravel Co. v. United States, 552 U. S. 130 (2008).”

Justice Ginsburg found that the judicial history interpreting 411(a) did not satisfy a Bowles analysis. Justice Ginsburg noted that the two hundred opinions on the topic were almost all “‘drive-by jurisdictional rulings’ thatshould be accorded ‘no precedential effect,’” Arbaugh, 546 U. S., at 511 (quoting Steel Co. v. Citizens for Better Envi-ronment, 523 U. S. 83, 91 (1998)); see Arbaugh, 546 U. S., at 511–513; ante, at 5–6.

So, it would appear that the majority and concurring opinions were distinguishable along a couple of fronts:

  • The majority opinion rejected the phrase “bright line” rule from Arbaugh to describe the case’s test, while the concurring opinion embraced it.
  • The majority opinion seemed to imply that all context (“context, including this Court’s interpretation of similar provisions in many years past”) should be taken into consideration under a Bowles analysis, while the concurring opinion could be read as limiting Bowles to narrowly applying only to long lines of Court decisions left untouched by Congress.
  • The majority opinion found that the historical legacy of 411(a) was that it was a jurisdictional requirement but that when all factors were considered, the provision did not restrict a federal court’s subject matter jurisdiction. The concurring opinion found that the cases interpreting 411(a) were merely drive-by jurisdictional rulings, and did not weigh in favor of a finding that 411(a) restricted a federal court’s subject matter jurisdiction.

Earlier posts on Reed Elsevier v. Muchnick:

  • Supreme Court grants cert in Reed Elsevier, et al., v. Muchnick, et al. (March 3, 2009)
  • Judge Posner weighs in on Reed Elsevier v. Muchnick (April 17, 2009)
  • Breaking News: Every pending copyright case lacks jurisdiction (May 20, 2009)
  • Merit briefs posted for Reed Elsevier v. Muchnick (May 27, 2009)
  • Solicitor General files amicus in Reed Elsevier arguing that 17 U.S.C. 411(a) is a rigid claim processing rule (June 17, 2009)
  • AIPLA files amicus in Reed Elsevier v. Muchnick (June 19, 2009)
  • Supreme Court docket roundup of copyright cases (June 30, 2009)
  • Copyright at the Supreme Court this week (Oct 5, 2009)
  • Supreme Court hears oral arguments in Reed Elsevier (Oct 8, 2009)
  • Form 19 and oral arguments in Reed Elesevier v. Muchnick (Nov 16, 2009)

Breaking news: Supreme Court overturns 2d Cir. in Reed Elsevier

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Shourin Sen - 2 March 2010 – 1:51 pm
Filed under Google Books Settlement, Jurisdiction, Registration, Supreme Court

Here’s the slip opinion. Thomas wrote the majority. Ginsburg concurred in part and concurred with the judgment, joined by Breyer and Stevens. A full discussion of the opinion will come tomorrow morning. (H/t Irv Muchnick.)

__

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.

Form 19 and oral arguments in Reed Elesevier v. Muchnick

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Shourin Sen - 16 November 2009 – 8:55 am
Filed under Registration, Supreme Court

There’s a section of last month’s Supreme Court oral arguments in Reed Elsevier v. Muchnick that I’ve been meaning to point to for a while. Counsel for the Petitioners, when arguing that registration is a case processing rule and not jurisdictional, raised Form 19:

MR. SIMS: . . . This Court’s own forms for copyright infringement, which were first promulgated in the 1930s, have patterned our argument and are contrary to the amicuses’. They have always treated the registration provision of the model complaint differently from the jurisdictional provisions. Those are in separate sections, not next to each other even.
CHIEF JUSTICE ROBERTS: We have forms for copyright infringement actions?
MR. SIMS: You do. The Federal Rule –
(Laughter.)
CHIEF JUSTICE ROBERTS: Live and learn.
MR. SIMS: And because they haven’t changed very much in 70 years, you probably haven’t spent much time with them.
JUSTICE GINSBURG: It’S Form 19.
MR. SIMS: Yes. It was originally Form 17. We have gone through the history. But I think there is really only one change and in every respect it is identical to what it was in 1938. And, again, as I say, it separates out the registration provision from the jurisdictional provision.

The federal Forms are adopted under Federal Rules of Civil Procedure Rule 84, which states that they are “sufficient under the [F.R.C.P.] and are intended to indicate the simplicity and brevity of statement which the rules contemplate.” (I like Chief Justice Roberts was unaware of Form 19.) Petitioners made the rather clever argument that registration was historically not a jurisdictional requirement through the fact that registration wasn’t included in the Form’s jurisdiction section:

COMPLAINT FOR COPYRIGHT INFRINGEMENT

AND UNFAIR COMPETITION

1.         <Statement of Jurisdiction.  See Form 7.>

<a.  For diversity-of-citizenship jurisdiction.> The plaintiff is [a citizen of State A] [a corporation incorporated under the laws of State A with its principal place of business in State A].  The defendant is [a citizen of State B] [a corporation incorporated under the laws of State B with its principal place of business in State B].  The amount in controversy, without interest and costs, exceeds the sum or value specified by 28 U.S.C. § 1332.

<b.  For federal-question jurisdiction.> This action arises under [the United States Constitution; specify the article or amendment and the section] [a United States treaty; specify] [a federal statute, ___U.S.C. § ___].

<c.  For a claim in the admiralty or maritime jurisdiction.> This is a case of admiralty or maritime jurisdiction.  <To invoke admiralty status under Rule 9(h) use the following:  This is an admiralty or maritime claim within the meaning of Rule 9(h).>

2.         Before <Date>, the plaintiff, a United States citizen, wrote a book entitled ____________ _________________________________________________.

3.         The book is an original work that may be copyrighted under United States law.  A copy of the book is attached as Exhibit A.

4.         Between <Date> and <Date>, the plaintiff applied to the copyright office and received a certificate of registration dated <Date> and identified as <Date, Class, Number>.

5.         Since <Date>, the plaintiff has either published or licensed for publication all copies of the book in compliance with the copyright laws and has remained the sole owner of the copyright.

6.         After the copyright was issued, the defendant infringed the copyright by publishing and selling a book entitled <______________>, which was copied largely from the plaintiff’s book.  A copy of the defendant’s book is attached as Exhibit B.

7.         The plaintiff has notified the defendant in writing of the infringement.

8.         The defendant continues to infringe the copyright by continuing to publish and sell the infringing book in violation of the copyright, and further has engaged in unfair trade practices and unfair competition in connection with its publication and sale of the infringing book, thus causing irreparable damage.

Therefore, the plaintiff demands that:

(a)        until this case is decided the defendant and the defendant’s agents be enjoined from disposing of any copies of the defendant’s book by sale or otherwise;

(b)        the defendant account for and pay as damages to the plaintiff all profits and advantages gained from unfair trade practices and unfair competition in selling the defendant’s book, and all profits and advantages gained from infringing the plaintiff’s copyright (but no less than the statutory minimum);

(c)        the defendant deliver for impoundment all copies of the book in the defendant’s possession or control and deliver for destruction all infringing copies and all plates, molds, and other materials for making infringing copies;

(d)       the defendant pay the plaintiff interest, costs, and reasonable attorney’s fees; and

(e)        the plaintiff be awarded any other just relief.

Date:  <Date> <Signature of the attorney or unrepresented party>

________________________________________

<Printed name>

<Address>

<E-mail address>

<Telephone number>

Motion to reconsider denied in Superman termination dispute

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Shourin Sen - 4 November 2009 – 9:00 am
Filed under Registration, Termination

Siegel v. Warner Bros. Entertainment Inc., 2009 WL 3526576 (C.D. Cal. 2009)

The Central District of California denied Warner Brothers’ motion to reconsider its decision from late August construing 37 C.F.R. § 201.10(e)(1), the harmless error rule that comes into play when an author makes a mistake when filing a notice of termination. To briefly review, the heirs of the co-creator of Superman failed to identify two weeks of early comic strips in its notice of termination to the Copyright Office, which included tens of thousands of other works and stretched five hundred and forty-six pages.  The termination filing, however, included a catch all provision:

[E]ach and every work (in any medium whatsoever, whenever created) that includes or embodies any character, story element, or indicia reasonably associated with SUPERMAN or the SUPERMAN stories, such as, without limitation, Superman, Clark Kent, Lois Lane, Perry White, Jimmy Olsen, Superboy, Supergirl, Lana Lang, Lex Luthor, Mr. MXYZTPLK . . ., Ma and Pa Kent, Steel, the planet Krypton, Kryptonite, Metropolis, Smallville, or the Daily Planet. Every reasonable effort has been made to find and list herein every such SUPERMAN-related work ever created. Nonetheless, if any such work has been omitted, such omission is unintentional and involuntary, and this Notice also applies to each and every such omitted work.

The Court decided not to reverse its previous finding that the omissions did not invalidate the termination for the two weeks of the strip.  A taste from the decision:

[The] “constructive notice” effect so touted by defendants is not a concept to be bandied about in the abstract, as if it were an end unto itself. Such notice is informed largely by its purposes-it is a means to an end. To posit that any member of the public who was interested in exploiting Superman would somehow confine their review of the lengthy registration of the works in that character in the records of the Copyright Office to but a couple weeks’ worth of newspaper strips in January, 1939, is, from a practical business perspective, nonsense. Instead it would transform the harmless error inquiry into an entirely wooden enterprise, shaped entirely by and made subservient to the formalities of the rule itself. Should any third party be interested in exploiting those original copyrightable elements found in those strips, they would have also searched other works to successfully utilize them (works that were in fact listed in the termination notices), and upon doing so discover the termination notice (and the catch-all clause contained therein), putting them on inquiry notice that the termination notice also applied to those strips. The valuable copyrightable story elements to the Superman character contained in those strips (Krypton, Jor-L, etc.) do not exist in a vacuum. As defendants have repeatedly noted to the Court throughout this litigation, Superman is comprised of many different elements which, but for the results of this litigation itself, are considered and marketed part of an aggregate whole, not as tiny individual copyrightable bits (a red cape here, a particular villain there, x-ray vision and the ability to fly over here, an alter ego personality to peruse around the corner, or a far away doomed planet over the horizon). The copyright in the Superman character exists as a conglomerate representing the story that has been told of him through seventy years of exploitation.

The Copyright Act as a race-notice statute

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Shourin Sen - 20 October 2009 – 9:00 am
Filed under Registration, Transfers

Banco Popular de Puerto Rico v. Latin American Music, 2009 WL 3294789 (D. P.R. 2009)

What happens if a party purchases a copyright from a copyright owner, and then the now former copyright owner turns around and sells the copyright again to a third-party? 17 U.S.C. 205 governs these situations and all of their messiness:

As between two conflicting transfers, the one executed first prevails if it is recorded, in the manner required to give constructive notice under subsection (c), within one month after its execution in the United States or within two months after its execution outside the United States, or at any time before recordation in such manner of the later transfer. Otherwise the later transfer prevails if recorded first in such manner, and if taken in good faith, for valuable consideration or on the basis of a binding promise to pay royalties, and without notice of the earlier transfer.

This provision essentially makes the Copyright Act a modified race-notice statute. If there are conflicting transfers, the person who first recorded their acquisition with the Copyright Office prevails provided that they were a bona fide purchaser for value, and they had no notice of the previous transfer.

There was a case in the federal district court in Puerto Rico on October 8 that addressed what happens when a person’s notice of transfer to the Copyright Office is defective. UMG acquired a copyright, that was later also assigned to Latin American Music. LAM provided notice of the transfer to the Copyright Office before UMG did, but, perhaps trying to save money on the Copyright Office fees, its notice covered a group of songs, not just one song. UMG cried foul, arguing that the notice was invalid. The Court rejected the argument finding that the Latin American Music’s filing gave it priority, even if it didn’t meet the specificity requirements set forth in 205(c):

Universal also points out that the recorded document in this case lists too many songs for it to conform with the specificity requirements of 17 U.S.C. § 205(c). However, that disposition merely deals with whether or not a recordation document in the Copyright Office may give constructive notice of the facts stated therein. Such disposition is inapposite as to whether or not LAMCO’s transfer takes priority over EMLASA’s, an issue that is governed by 17 U.S.C. § 205(d).

It may be difficult to reconcile the Court’s finding with a plain language reading of Section 205, but the Court’s finding is hardly surprising. The federal courts don’t take kindly to the Copyright Act’s paperwork requirements. This is but one instance forming a broader trend of federal courts looking past paperwork provisions so as to achieve what they see as just decisions.

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

1
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.

Copyright at the Supreme Court this week

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Shourin Sen - 5 October 2009 – 9:00 am
Filed under Academia, Complete Preemption, Importation, Jurisdiction, News, Registration, Supreme Court

This is big week for copyright at the Supreme Court. The Court will hear oral arguments in the twenty-year legal saga Reed Elsevier v. Muchnick on Wednesday. On that note, Emily M. Bass, the attorney who represented one of the two plaintiff groups in Tasini, has passed along word about an article she has posted at SSRN. The abstract:

‘Catch 411:’ Does Section 411 of the Copyright Act Restrict the Subject Matter Jurisdiction of Federal Courts Over Copyright Actions?

This commentary examines an issue that will soon be argued before the United States Supreme Court: whether 17 U.S.C. §411′s registration requirement restricts the subject matter jurisdiction of the federal courts over copyright infringement actions. The Second Circuit found that courts lack jurisdiction to adjudicate claims alleging the infringement of unregistered works. The issue of whether courts have jurisdiction over such claims is of tremendous importance: The U.S.’s collective intellectual product is perhaps its greatest asset. Since unregistered works are as susceptible to mass electronic infringement as registered works, and arguably much more numerous, a decision affirming the Second Circuit would deny the country effective means of defending key IP. This commentary examines the statutes involved, arguments that have been made and the Second Circuit Opinion. It poses four solutions to §411′s supposed jurisdictional conundrum and concludes that federal courts unquestionably possess jurisdiction over unregistered claims.

I will post a longer writeup tomorrow that I have been sitting on for the last couple of months. The post will look at how complete preemption should color our view on whether registration is a jurisdictional requirement. I know what all of you (or at least six of you) are thinking: the only way to kick a discussion of obscure jurisdictional issues up to eleven is to talk about complete preemption. It’s like adding bacon.

Today may be the day we hear whether the Supreme Court will grant cert in Omega SA et al v. Costco Wholesale Corporation. The Supreme Court has in the past released cert decisions for cases they consider during their fall long conference on the following Monday. The appeal was scheduled for conference on September 29, so that would put today as the date we would be likely to hear.

Costco filed a supplemental brief on September 28 (that addressed the S.D.N.Y.’s September 25 decision in Pearson Education, Inc. v. Ganghua) so the cert decision could be delayed.