Federal Court Disallows Improper Bulk Copyright Registrations by Joel L. Hecker, Esq. It is a regrettable fact that, for a variety of reasons, most photographers do not register their photographic images, thus depriving the photographers and their stock agencies of the right to obtain statutory damages and attorneys fees in connection with copyright infringement claims. In an attempt to remedy this situation, Corbis and other stock agencies began to offer their contributing photographers an option of transferring copyright to the agency for purposes of copyright registration. After the images were registered, the agency would then reassign the copyright back to the applicable photographers. To confirm that this practice would hold up, the Picture Agency Council of America (known as PACA) had a dialogue with the Copyright Office in early 2002 in an attempt to obtain official Copyright Office approval of this practice. On February 12, 2002, the Copyright Office’s Chief of the Examining Division confirmed in writing that the Copyright Office considered the copyright claim “to extend to the photographs themselves because, assuming that the claimant [owner of copyright] listed at space 4 is the author of the compilation [usually the stock photo agency], an acceptable transfer statement is also provided in space 4 of the form VA. Thus, the Office interprets the claim to extend to the individual photographic authorship for which the names indicated as space 2b of the form VA are the responsible authors.” The Copyright Office further wrote: “that the Copyright Office preferred, but did not require, the registration application to contain the names of all of the photographers on continuation sheets.” As a result, Corbis and other agencies continued the practice of registering hundreds of images as part of a single copyright registration application without always separately listing each individual photographer. Beginning in March 2001 and continuing through December 2006, photographers Marc and David Muench, doing business as Muench Photography, Inc. (“MPI”), licensed approximately 180 of MPI’s images to Houghton Mifflin Harcourt Publishing Company (“HMH”) through Corbis, its stock photo agency. In 2009, MPI sued HMH in the United States District Court for the Southern District of New York, alleging that HMH exceeded the scope and terms of the licenses granted, which acts constituted copyright infringement. On January 18, 1996, David Muench filed a copyright registration certificate for a collection of unpublished photos, covering 20 of the images at issue. Muench listed himself as the author. Since the individual author of each was listed on the copyright certificate the court found these 20 to be properly registered. On September 30, 1997, the Muench brothers transferred legal title in their other images at issue to Corbis, solely for the purposes of copyright registration. Corbis then submitted six copyright registration applications to the Copyright Office which registered several automated databases of photographs, including these Muench images. Each application form filed by Corbis, listed itself as one author, and listed the names of only three individual photographers “and others”, or “and (number) other photographers”. Corbis did not list MPI, Marc Muench or David Muench as an author of any of the photos contained in the automated databases. The Court’s Decision The defendants moved for summary judgment to dismiss the case on the grounds that the photos were not properly registered by MPI since the actual registration certificates did not list MPI as an author (it was one of the “others” listed by Corbis). The court framed the issue as follows: The Court is faced with the novel question of whether the registration of an automated database--here, a compilation of photographs by different photographers--by a third-party copyright claimant that has been assigned the rights to the individual works for the purposes of copyright registration registers the individual works thereby permitting the individual photographers to sue for copyright infringement. The court determined that the copyright registration procedure required information about the copyright claimant, the particular work, and the author of the work. Specifically,” said the court, “the application must include the name and nationality or domicile of the author or authors." When the work at issue is a compilation, the copyright, "extends only to the material contributed by the author of such work." MPI argued that the text of this section,103 of the Copyright Act, together with case law and the Copyright Office's letter, provide that the registration of a collective work covers the individual works even if the individual authors' names are omitted from the registration form. The Court rejected this reading of the statute as “misguided”. No Deference Given to the Copyright Office’s Interpretation Normally, a court will give deference to a government agency’s interpretation of a statute it is charged with administering. This judge, however, refused to extend deference in this situation since the Copyright Office’s interpretations were not “reasonable” because the court found that they were contrary to the plain language of the Copyright Act. According to the court’s decision, the Copyright Act “mandate[s] that every application for registration shall include the names of the author(s) of the work(s).” (The exact statutory language is “The application for copyright registration…shall include…(2) in the case of a work other than an anonymous or pseudonymous work, the name and nationality or domicile of the author or authors…”). Prior Case Law MPI relied primarily on a 2008 Arizona United States District Court holding, Bean v. McDougal Little et al., which had almost identical facts. The MPI Judge refused to follow that case, finding that it erroneously interpreted case law and plain reading of the statute. The MPI Judge was free to do so since Bean was not an appellate decision. The MPI Judge further concluded that the Corbis databases are in fact collective works (and therefore compilations). Since the plain language of the statute provides that "copyright in a compilation or derivative work extends only to the material contributed by the author", registration of a collective work (which includes these databases) only covers the authors actually named in the registration. As a result, since MPI was not named as an author, it therefore was not covered by the Corbis registrations. MPI raised the “doomsday scenario”; that by dismissing the case, “millions of copyright registrations will be voided”. The court did not buy it, determining that MPI could immediately register the photos in MPI’s name, thereby obtaining full copyright protection against future copyright infringements. In fact, Corbis and other agencies, which provide this type of bulk registration for contributing photographers, had already begun modifying their procedures to list every author in the registration certificate. Conclusion MPI’s case was dismissed (except for the 20 images previously registered by David Muench in his own name) even though it was not at fault. The court stated that it “does not fault MPI for its failed efforts to comply with the registration process. Indeed, from the record presented to the Court, it appears MPI's actions were completely appropriate--it sought the approval of the Copyright Office to ensure compliance with the statute. Unfortunately, MPI received poor advice and is now deprived, at least at this juncture, of the ability to seek statutory damages with respect to the Images not registered by MPI. The fault in this case lies solely with the Copyright Office and its relaxed interpretation of the statute.” The decision is being appealed with support from photography organizations who also acted in reliance upon the Copyright Office opinion. This is but another example of why the law never seems to be settled, and why, when I am asked for an opinion, my answer may be “it depends”! © Joel L. Hecker, 2010 Attorney Joel L. Hecker lectures and writes extensively on issues of concern to the photography industry. His office is located at Russo & Burke, 600 Third Ave, New York NY 10016. Phone: 1 212 557-9600. E-mail: HeckerEsq@aol.com.