Tag Archives: copyright office

Maria Pallante Removed as Head of Copyright Office

Horrible news emanated from the Library of Congress on Friday morning when the notice of the firing of Maria Pallante was made public. This move is unheard of for the position of the US Register of Copyrights where historically the Register has stepped down or retired. Pallante was informed of her change in roles by being locked out of her computer.

Maria is a huge advocate for the rights of Creators and has been instrumental in the industry’s efforts for modernizing the Copyright Office and the creation of a Small Claim’s Court for Creators.  She is seen as being fair and unbiased by all who know her.

This move by the the newly appointed Librarian of Congress, Carla Hayden, is seen by many as a line in the sand as to how the Library of Congress want creators to be treated.  Here are a few articles on the firing.  Look for more information here as this issue evolves.

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U.S. Copyright Office Releases the Compendium of U.S. Copyright Office Practices, Third Edition

Register of Copyrights Maria A. Pallante today released the official version of the Compendium of U.S. Copyright Office Practices, Third Edition (the “Third Edition”). It is available on the Office’s website at http://copyright.gov/comp3/. The Third Edition is effective as of today’s date and is the governing administrative manual for registrations and recordations issued by the Office on or after December 22, 2014. It may be cited as follows:

  • Full citation:  U.S. COPYRIGHT OFFICE, COMPENDIUM OF U.S. COPYRIGHT OFFICE PRACTICES § 101 (3d ed. 2014).
  • Short form citation: COMPENDIUM (THIRD) § 101.1(A).

The Compendium serves as a technical manual for the Office’s staff, as well as a guidebook for authors, copyright licensees, practitioners, scholars, the courts, and members of the general public. More than three times the size of the previous edition, the Third Edition represents a comprehensive overhaul and makes the Office’s practices and standards more accessible and transparent to the public. As in the past, it addresses fundamental principles of copyright law, such as creation, publication, registration, and renewal. It addresses routine questions such as who may file an application and who may request copies of the Office’s records. It describes recent changes to the Office’s recordation practices, such as the new option for submitting titles and registration numbers in electronic form. It also contains a new Table of Authorities that lists the cases, statutory provisions, and other legal authorities cited in the Third Edition and the relevant section where each citation may be found.

In the years ahead, the Copyright Office will introduce a number of public discussions regarding the application and deposit requirements for many digital works, including websites, software, photographs, e-books, audiovisual works, and musical works, many of which have multiple authors, multiple dates of creation, and multiple dates of publication. A key objective will be creating digital copyright records that are accurate, affordable, and as useful as possible when it comes to the identification of ownership and copyrighted works.

The Compendium, Third Edition is the result of more than two and a half years of work. Read acknowledgements. Members of the public may provide feedback on the Third Edition at any time. See www.copyright.gov/comp3/ for more information.

Digital Media Licensing Association Submits Comments to Copyright Office On Making Available Right

 by Nancy Wolff, PACA Counsel

On September 15, 2014, Nancy Wolf, on behalf of the Digital Media Licensing Association, Inc., together with various visual arts associations (The National Press Photographers Association (“NPPA”), American Society of Media Photographers, (“ASMP”), Graphic Artists Guild (“GAG”)) who signed on to the letter, responded to the Copyright Office’s Notice of Inquiry concerning its study on the right of making available.

Congress asked the Copyright Office to study whether the United States meets its obligations under various copyright treaties that require members to provide authors certain exclusive rights, including the exclusive right to make a work available to the public and to communicate to the public, including on the internet. For those of you that are familiar with the exclusive rights a copyright owner has under US law, you will say,” but I never heard of that right!”. You would be correct. The Copyright Act under 17 U.S.C. § 106 provides an author with various exclusive rights such as the  right to reproduce a work, to distribute a work publicly, to display a work publicly, to transmit or perform a work publicly and to make or authorize derivative works. But the Copyright Act has no express making a work available or communicating a work to the public right.

What the Copyright Office and others have maintained is that the making available right is implicitly included in the bundle of exclusive rights provided in 17 U.S.C. § 106.  The comments submitted specifically focused on the making available right and communication to the public right in connection with displaying images on the internet.

In sum, the comments raised a concern that some courts have misinterpreted the display right in such a way that effectively swallows up visual artists’ making available right and communication to the public right online and that this interpretation is inconsistent with Congress’ intent. In particular, the comments focused on the “server test,” established by the Ninth Circuit in Perfect 10, Inc. v. Amazon, which coupled the display right with the reproduction right.  A series of court decisions adopting the server test, hold that a website only infringes the display right if the copyrighted image is stored on the website’s server, and then displayed using that stored copy.  Under the Copyright Act, however, the display right and reproduction right are independent and, as such, it should be irrelevant whether the one possesses or controls the physical copy from which the display or communication is made.

One of the unfortunate results of these recent decisions is that a website can circumvent the need to obtain a license to use a copyrighted image by implementing certain technological processes that enable a website to display an image without storing a copy on its server.  As this technological slight-of-hand, used to circumvent licensing requirements becomes more prevalent, the loss of control by visual artists over their images increases exponentially. The comments conclude that the courts’ interpretation of the display right eviscerates visual artists’ right to make their images available online and their parallel right to prevent others from doing so.  Websites can circumvent licensing which in turns is causing real economic harm to image libraries and individual creators who rely on the ability to license their works to earn a living.

The recommendations include having the Copyright Office draft guidelines regarding the interaction between the rights of communication to the public and making available, and the exclusive rights set forth in the Copyright Act.  Importantly,  the guidelines should clarify that each of the exclusive rights are distinct – that there can be a violation of the public right to display without also having a reproduction.  The guidelines should further articulate the definition of “display” to include new technological ways of displaying images online.  Lastly, if the courts’ misinterpretation of the display right for visual artists persists, the response supports Congressional action.

The complete response is available here 

 

PACA Participates In Copyright Office Roundtable

PACA Participates In Copyright Office Roundtable On State of U.S. law recognizing and protecting “making available” and “communication to the public” rights for copyright holders. 

On May 5, Nancy Wolff attended a Copyright Office roundtable hearing on behalf of PACA. The subject of the hearing was US compliance with two international treaties– the WIPO Copyright Treaty and the WIPO Performances and Phonograms Treaty (collectively, the “WIPO Internet Treaties”).  Both require member states to recognize the rights of making available and communication to the public. These rights give authors of works, producers of sound recordings, and performers whose performances are fixed in sound recordings the exclusive right to authorize the transmission of their works and sound recordings, including through interactive platforms such as the Internet. In other words it give authors the right to authorize how the  public can view and or hear  music, videos and images online.

The United States implemented the WIPO Internet Treaties through the Digital Millennium Copyright Act (“DMCA”) in 1998. Congress did not amend U.S. law to include explicit references to “making available” and “communication to the public” rights, concluding that these rights were already available by combining the bundle of exclusive rights under the US Copyright Act. Recently some courts and commentators have expressed uncertainty over how the existing rights may apply to various methods of making of copyrighted works available to the public, including in the digital environment.

Congress requested that the Copyright Office review and assess how the existing bundle of exclusive rights under Title 17 covers the making available and communication to the public rights in the context of digital on-demand transmissions such as peer-to-peer networks, streaming services, and music downloads, as well as more broadly in the digital environment. One aspect was the feasibility and necessity of amending U.S. law in this area.

PACA’s interest specifically focused on the making available and communication to the public rights involving images in the Internet environment. While the bundle of exclusive rights under Section 106 of the Copyright Act, including the exclusive right to reproduce, distribute and display publicly, should support the making available right in the Internet context, court decisions have weakened the exclusive right to make a work available or communicate it to the public in the Internet environment. Specifically, a series of court decisions in the 9th circuit including Perfect 10 v Amazon, have permitted Internet search companies to publicly display images without any risk of copyright infringement based on the courts interpretation of the exclusive rights under the Copyright Act. For example, Google was found not to violate Perfect 10’s copyright in its images even though it displayed full size images in its image search results, because the images were “framed” by using “in-line linking” from the source website, even though the images look like they are being displayed by Google. Because no copy of an image resided on a Google server, the court found that there could be no direct copyright infringement, requiring for the first time that the exclusive right to display publicly a work was linked to the reproduction of the work by the alleged infringer. At the time, PACA supported the position of Perfect 10 in an amicus brief arguing that under the definition of display found in the Copyright Act, a display only requires that a copy be shown by means of a process and does not require that the copy be physically stored on the search engine’s server. Instead, the court adopted the server test, which limits copyright infringement to works reproduced and stored on a server, and then displayed based on that stored copy.

This is a clear example of form over function. An image search communicates the visual work to the public, regardless where it is stored. By framing, the public believes Google, or other similar search engine is providing the image, and Google can sell advertising adjacent to the “framed” image. It receives the benefit of the display right, but without any obligation to license or compensate the image owner, and without any risk of direct infringement.

Since the P10 case, image search has evolved to be even less favorable to the rights holder. Initially when a viewer clicked on the framed image, it was taken directly to the source website. Now the source website is greyed-out and only the large resolution image is visibly displayed. By using in-line framing and linking, and not displaying the image on a server, anyone can use technological measures to avoid direct infringement. If this technological circumvention becomes prevalent it could drastically reduce or eliminate the need to license visual works in an Internet environment. The message to the Copyright Office was that if this interpretation by the courts of the display right for visual copyright owners continues, Congress may need to clarify that a display right can be violated by any process and is not contingent upon a reproduction residing on a server of the entity that is receiving the functional benefit of the visual display. In sum, the US treaty obligations with respect to the communication to the public and the make available rights of visual works in an Internet environment is not being met based on court interpretations of the exclusive rights under Section 106.

The testimony was videoed and should be available on the Copyright Office website

FROM THE COPYRIGHT OFFICE

Movies: A Global Passion

The U.S. Copyright Office will present a Copyright Matters program in connection with World Intellectual Property Day on Wednesday, April 23, at 1:45 p.m. This year’s theme, as announced by the World Intellectual Property Organization, is “Movies: A Global Passion.”

The program will feature remarks from Francis Gurry, Director General of the World Intellectual Property Organization, and presentations about the many creative components of film and other audiovisual works from members of the Copyright Alliance. The Copyright Alliance is a nonprofit, nonpartisan public interest and educational organization representing artists, creators, and innovators across the spectrum of copyright.

World Intellectual Property Day, internationally observed on April 26, marks the date in 1970 when the World Intellectual Property Organization Convention came into force. The anniversary of this occasion is observed as a way of promoting and increasing general understanding of intellectual property.

The program will be held in historic Coolidge Auditorium of the Library of Congress on Capitol Hill in Washington, D.C., and is free and open to the public.

Calendar

April 23, 2014: World Intellectual Property Day celebration at Library of Congress, Washington, D.C.

May 1, 2014: Effective date of new Copyright Office fee schedule

May 5, 2014: Public roundtable on “making available” study


May 16, 2014: Due date for comments on current state of the music licensing marketplace

May 21, 2014: New due date for comments on orphan works and mass digitization and responses to public roundtables

Visual Connections Interview with Cathy Aron, PACA Executive Director

Courtesy of Visual Connections.  Originally published on Visual Connection’s Blog: http://www.visualconnections.com/blog

Michael Masterson and I ( Ellen Herbert) were speaking about the history of our industry. Again and again, one name came up as a leader and advocate for all things stock photography. And as a result, I asked Michael to interview Cathy Aron.

Cathy Aron has been the Executive Director of PACA, the Digital Licensing Media Association, since 2006. Prior to that she was a longtime member as well as the president. Her involvement in the image industry goes back to her childhood – literally. Cathy and I talked recently about her background and where she sees PACA and the industry today.

Michael Masterson: You basically grew up in this industry. Tell me about your father and how he, and later you, got involved.

Cathy Aron: Actually, my father, Nat Harrison, was a jeweler, but he was a frustrated photographer and had done photography during the war and after. He even had a dark room built at the back of our house. When he and my mother started traveling around the world, he took photos and would do slide shows at schools. When he needed fill-in and title slide images he used a place called Wolfe Worldwide Films in Santa Monica. They specialized in selling duplicate slides inexpensively to schools and individuals.  In 1978, WWF was for sale and my dad decided to buy it for something to do in his retirement (which was a few years off) and he asked if I wanted to run it. I was raising my children at the time, looking at for a part-time something to do. So I traveled to Santa Monica everyday from Mission Viejo (about 60 miles and in California that can be forever!) for a few months learning the photography business before moving it to Mission Viejo. A few months after we took over the business, my dad suddenly passed away at 60 leaving a mortgage on WWF, a jewelry business, and a devastated family. I didn’t want my mom to be burdened with the business loan, so I took over WWF and realized that there was something else that you could do with the originals and I began learning all I could about the stock photo end of the business.

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Michael: You had your own agency, Photo Network, for a long time. How did it get started?

Cathy: I found a partner, Gerry McDonald, who knew more than I did about the rights management part of the business and together we formed Photo Network. We built a nice general stock agency. She had a collection of images from a multimedia company called Pix Productions she and her husband had plus I had the travel images from WWF. Then we began representing photographers, selling mainly to ad agencies and developers. My partner died after about fifteen years, but I continued with Photo Network for 27 years.

Michael: You came to PACA at a very turbulent time in its history. How did you become the executive director?

Cathy: I was president of PACA after we fired our executive director in 2002. We realized she had embezzled a lot of money from the association. So, for two years I served as the president without an ED. It was a tough time for the organization but also an amazing time as everyone pitched in to save PACA, both monetarily and with their time and efforts.  It did, however, take an incredible amount of time from my business. When it was feasible to hire an executive director again, I had just made the decision to sell Photo Network, so I applied for the job along with many others and was lucky to get it.

Michael: What are some of the things you’re proudest of during your time as ED at PACA?

Cathy: One would certainly be the organization, with Cathy Sachs, then executive director of ASPP, of the associations group. It was originally over the proposed Orphan Works Legislation, but we still continue to meet today. When we brought everyone together back in 2006 (I think that’s right) it was the first time we had gathered all the visual arts associations together in one room to discuss mutual interests. The participation and co-operative outreach of this group has enabled us to gain much more impact that each association would have individually. We have worked together on amicus briefs, statements for the copyright office and lobbying to the congress for legislation favorable to our industry.

I’m also very proud of pacaSearch that is the one benefit of our organization which directly benefits the business of our members. It’s the mega search engine that helps to level the playing field between large and small agencies allowing buyers to find the library that has the best images for theirs needs. It’s free to all PACA members. A recent survey by Visual Steam showed it came in as the fifth most-used site for buyers.

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It’s also been wonderful working with Nancy Wolff and getting a much broader understanding of all the copyright issues and knowing that we have the best possible representation with her at the helm. Her expertise and standing in the copyright community gives PACA it’s best chance to make an impact.

 Michael: What are some other PACA highlights during your tenure?

Cathy: Our PACA Conferences would be definite highlights. We have had some amazing meetings over the last few years and we’ve provided our members with excellent opportunities to learn and grow their businesses with the information provided at these events. Moving out of a hotel last year and teaming up with Visual Connections has given a new spark to the meeting and we are looking forward to even more exciting innovations this year.

Our efforts in copyright education and outreach to schools and the community have and remain a priority for PACA.  Colleges and universities throughout the country as well as many high schools use our Power Point presentation.

Also, our efforts with the publishers to work on contracts that are equitable to both sides was rewarded this year with a contract with Cengage that we feel has great language and terms for agencies.

It’s also been great getting new people involved in the industry. I have always been a firm believer that you get back more than you give.

Michael: What issues is PACA addressing right now and what other major industry issues do you see?

Cathy: We’re still on top of the copyright office’s debate on a Copyright Small Claims.  This is a vital discussion for the industry and we’ve responded to the Copyright Office’s three requests for comments on remedies with many of our suggestions included in their report.

We are also a complainant in the ASMP vs. Google Books case.  We will be part of an amicus brief for the Authors Guild appeal vs. Google Books. We are working right now on Patent Trolling and engaging the agencies that have been sued by Uniloc.  This is a very serious problem for our members and non-members alike and we are actively perusing ways to help them collectively find materials to fight these claims.

I think that piracy and copyright infringement continue to be the biggest issues facing our industry. Upholding copyright is the biggest challenge to all of us.

Michael: The organization has changed like so many other industry trade associations. Talk about the challenges it’s facing and how you and your board are dealing with them.

Cathy: Buy-outs and consolidations have been the biggest challenges to PACA in the last 5-10 years. Our association has definitely felt the impact of the closure of many of the smaller agencies. Newer tech companies don’t always feel the value of an association, but the board is trying to reach out to the newer players and give them benefits that will appeal to them. The issues that face our industry will impact all the people in the industry, no matter what their structure is, so it is important that we work together to protect copyright or there will be no business.

Michael: One last question. As someone who obviously loves photography, if you could choose one photograph to hang in your living room, what would it be?

Cathy: This is an impossible question. As Ron [Cathy’s husband] will tell you, I have a very eclectic taste in art. I love the photographs of Ansel Adams and Arnold Newman, Annie Leibowitz, Art Wolff, etc., etc.  But I’m also drawn to the work of new artists.  I love beautiful scenics and graphic black and whites. I could never choose just one!

(c) Christina Gandolfo

© Christina Gandolfo

More about PACA here: pacaoffice.org

Cathy can be reached here: execdirector@pacaoffice.org

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Michael Masterson has a broad range of experience in marketing, business development, strategic planning, contact negotiations and recruiting in the photography, graphic design and publishing industries. In addition to his long experience at the Workbook and Workbookstock, Masterson owned and was creative director of his own graphic design firm for several years. Masterson has been a speaker or panelist at industry events such as Seybold, PhotoPlus Expo, Visual Connections and the Picture Archive Council of America (PACA) national conference. He is past national president of the American Society of Picture Professionals (ASPP). He currently heads Masterson Consulting, working on projects ranging from business development for creative companies and sourcing talent for them to promoting and marketing industry events as well as providing resume and professional profile services for job-seekers. He can be reached at michaeldmasterson@gmail.com.

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Copyright Office: Notice of Public Roundtables and Request for Additional Comments

The Copyright Office will host public roundtable discussions and seeks further comments on potential legislative solutions for orphan works and mass digitization under U.S. copyright law. The meetings and comments will provide an opportunity for interested parties to address new legal developments as well as issues raised by comments provided in response to the Office’s previous Notice of Inquiry.

The public roundtables will take place on March 10-11, 2014, in the Copyright Office Hearing Room, LM-408 of the Madison Building, Library of Congress, 101 Independence Ave. SE, Washington, D.C. 20559. The roundtable discussions will be held from 9:00 a.m. to 5:00 p.m. on both days.

The schedule for the roundtables, which includes the dates and times for specific topics, is set forth below. As shown in the schedule, the roundtables have been divided into nine distinct sessions. If you are interested in participating in one or more of the roundtable sessions, please complete and submit the participation form no later than February 24, 2014.

Due to space constraints, the Office cannot guarantee that it will be able to accommodate every request. To maximize the number of viewpoints presented, the Office will accept only one representative per entity as a participant in a particular session (but an entity may request to have different representatives in different sessions).

The Office also will provide members of the public with the opportunity to observe the hearings. Note, however, that space is limited due to the size of the hearing room. The Office will admit observers on a first come, first serve basis.  To allow for a diverse audience, we ask that entities limit any observers to one per session.

The Office is making arrangements to transcribe the proceedings and will post the transcripts on the Office website. Additionally, the Office is seeking further public comments on orphan works issues, including those to be discussed at the public roundtables. A comment form will be posted on this site no later than March 12, 2014.  Comments must be submitted no later than April 14, 2014.

Sessions and hearing schedule

The public roundtable discussions will be divided into nine sessions addressing distinct topics. Below is the schedule and information as to which topics will be discussed at particular sessions.

TIME

DAY ONE (MARCH 10, 2014)

9:00 – 10:15 Session 1: The need for legislation in light of recent legal and technological developments
10:15 – 10:30 Break
10:30 –  11:45 Session 2: Defining a good faith “reasonably diligent search” standard
11:45 – 12:45 Lunch
12:45 – 2:00 Session 3: The role of private and public registries
2:00 – 2:15 Break
2:15 –  3:30 Session 4: The types of works subject to any orphan works legislation, including issues related specifically to photographs
3:30 – 3:45 Break
3:45 – 5:00 Session 5: The types of users and uses subject to any orphan works legislation

 

TIME

DAY TWO (MARCH 11, 2014)

9:00 – 10:15 Session 6: Remedies and procedures regarding orphan works
10:15 – 10:30 Break
10:30 –  11:45 Session 7: Mass digitization, generally
11:45 – 1:00 Lunch
1:00 –  2:15 Session 8: Extended collective licensing and mass digitization
2:15– 2:30 Break
2:30 –  5:00 Session 9: The structure and mechanics of a possible extended collective licensing system in the United States

Background

The Copyright Office is reviewing the problem of orphan works under U.S. copyright law in continuation of its previous work on the subject and to advise Congress on possible next steps for the United States. The Office has long shared the concern with many in the copyright community that the uncertainty surrounding the ownership status of orphan works does not serve the objectives of the copyright system. For good faith users, orphan works are a frustration, a liability risk, and a major cause of gridlock in the digital marketplace. The issue is not contained to the United States. Indeed, a number of foreign governments have recently adopted or proposed solutions.

Nancy Wolff, PACA Counsel, will represent PACA at all sessions.

Copyright Office Releases Report on Copyright Small Claims

By Nancy Wolff, Esq., PACA Counsel

On September 30, the Register of Copyrights at the United States Copyright Office published its report on Copyright Small Claims that it delivered to the House Committee on the Judiciary. The report is extensive and reflects the comments of many organizations, the results of public hearings in New York and Los Angeles, a review of legal issues and legislative recommendations. PACA actively participated and responded to three separate Copyright Office Notice of Inquiries addressing specific questions posed by the Copyright Office over the past two years, and participated in two full days of hearings at Columbia University held by the Copyright Office.

PACA strongly supported the study by the Copyright Office and believes that an alternative system is presently needed to ensure that the rights and remedies provided in our copyright regime are available to all copyright owners.

While PACA responded on behalf of its membership, we worked closely with an ad hoc committee of visual arts organizations, including the American Society of Media Photographers (ASMP); Graphic Artists Guild (GAG); Professional Photographer of America (PPA), National Press Photographers Association (NPPA), North American Nature Photography, Association (NANPA), and American Photographic Artists (APA). In general, we all support an alternative forum for claims of lesser economic value that provides fair, timely and economically affordable access to a legal forum.

I am pleased that our comments are reflected in this report and that many recommendations are included in legislative proposal.

While the report is available at the Copyright Office website, the website is currently down due to the closing of the federal government.

“The U.S. Copyright Office today released the findings of its two-year study on copyright small claims. The report documents the significant costs and other challenges of addressing copyright claims that have a relatively low economic value in the current federal system, and recommends the establishment of an alternative voluntary system of adjudication to be housed within the Copyright Office.

In a letter to the House Judiciary Committee, which requested the Report, Register of Copyrights Maria A. Pallante expressed appreciation for the many stakeholders who participated in the Office’s public process and noted the particularly acute impact of small claims issues with respect to individual creators.

For example, in formal comments to the Office, the American Photographic Artists wrote, “the current system deters authors from asserting their rights, renders these cases difficult for any attorney to take on, and encourages copyright infringement by all phases of society.” The Songwriters Guild of America stressed the combined impact of small claims on the livelihoods of individual creators, likening the challenges to “death by a thousand cuts.” Organizations that provide pro bono assistance to lower-income artists, such as California Lawyers for the Arts and the New York-based Volunteer Lawyers for the Arts, emphasized a pressing need for alternatives to federal litigation.

Although the Copyright Office recommends a streamlined approach for small claims, it also underscores that “alleged infringers must be allowed to defend themselves vigorously.” The Report cites the legitimate frustrations of those responding to such claims, who in some circumstances may themselves be smaller actors facing high litigation costs.

In sum, the Office makes the following recommendations:

• Congress should create a centralized tribunal within the Copyright Office, which would administer proceedings through online and teleconferencing facilities without the requirement of personal appearances. The tribunal would be staffed by three adjudicators, two of whom would have significant experience in copyright law – together having represented or presided over the interests of both owners and users of copyrighted works – with the third having a background in alternative dispute resolution.

• The tribunal would be a voluntary alternative to federal court. Its focus would be on small infringement cases valued at no more than $30,000 in damages. Copyright owners would be required to have registered their works or filed an application before bringing an action. They would be eligible to recover either actual or statutory damages up to the $30,000 cap, but statutory damages would be limited to $15,000 per work (or $7,500 for a work not registered by the normally applicable deadline for statutory damages).

• Claimants who initiated a proceeding would provide notice of the claim to responding parties, who would need to agree to the process, either through an opt-out mechanism or by affirmative written consent. Respondents would be permitted to assert all relevant defenses, including fair use, as well as limited counterclaims arising from the infringing conduct at issue. Certain DMCA-related matters relating to takedown notices, including claims of misrepresentation, could also be considered, and parties threatened with an infringement action could seek a declaration of noninfringement.

• Parties would provide written submissions and hearings would be conducted through telecommunications facilities. Proceedings would be streamlined, with limited discovery and no formal motion practice. A responding party’s agreement to cease infringing activity could be considered by the tribunal and reflected in its determination. The tribunal would retain the discretion to dismiss without prejudice any claim that it did not believe could fairly be adjudicated through the small claims process.

• Determinations of the small claims tribunal would be binding only with respect to the parties and claims at issue and would have no precedential effect. They would be subject to limited administrative review for error and could be challenged in federal district court for fraud, misconduct, or other improprieties. Final determinations could be filed in federal court, if necessary, to ensure their enforceability.”

http://www.pacaoffice.org/pdfs/usco-smallcopyrightclaims.pdf

Fourth Circuit Upholds Registration of Database Collection of Photographs

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Metropolitan Regional Information Systems, Inc., v. American Home Realty Network, Inc., U.S. Ct. Appeals for the Fourth Circuit, July 17, 2013

By Nancy Wolff Esq., PACA Counsel

For those image libraries that relied on instructions from the Copyright Office on how to register images uploaded to a website, only to have various lower level federal courts invalidate the process over the past few years, there is some good news. The first federal appellate court has upheld the use of database registrations for individual photographs owned by the copyright claimant.

The Fourth Circuit, covering Maryland, Virginia, West Virginia, North and South Carolina recently upheld an injunction against American Home Realty Network, Inc. (“AHRN”), prohibiting them from displaying Metropolitan Regional Information Systems, Inc.’s (“MRIS”) photographs on its real estate referral website. The Court held that where owners of photographs assent to transfer their copyright interest to another by way of clicking on Terms of Use, that “click” counts as being “in writing” and “signed” per the language of the Electronic Signature in Global and National Commerce Act (“E-Sign Act”) and is a valid assignment of copyright. By finding that MRSI had been lawfully assigned the copyright interest in the photographs at issue, the Court held that by registering the MRSI database as a collective work with the Copyright Office, MRSI was entitled to copyright protection for all the photographs contained in the database. MRIS could rely on this registration and prevail on an infringement claim against AHRN for its unauthorized display of the photographs.

BACKGROUND

For a fee, MRIS aggregates real estate listings and offers them to real estate brokers and agents online. Subscribers upload their own real estate listings to the MRIS Database, which include photographs of each particular listing. Before they are allowed to submit any photograph to the Database, subscribers must assent to the MRIS’s Terms of Use Agreement. Those Terms state that all images submitted to the MRIS Database become the exclusive property of MRIS. In exchange, subscribers who agree to the Terms are granted access to all the real estate listings in the MRIS database as well as a non-exclusive license to display those listings on their own websites. Each quarter, MRIS registers its newly updated Database with the Copyright Office, seeking to protect the “collection and compilation” of the real estate listings in the MRIS Database, as well as the expressive contributions created by or acquired by MRIS, including subscriber’s uploaded photographs.

AHRN, on the other hand, is a California real estate broker that owns a national, online real estate search engine and referral business. AHRN acquires the data to display on its site from a range of sources, including MRIS’. AHRN explicitly states that they acquire their data from multiple sources and databases and that AHRN does not alter any of the displayed information.

THE CLAIMS

The dispute over AHRN’s use of MRIS’ photographs arose in 2011 ad MRIS filed suit against AHRN to stop any future infringement of their photographs. The District Court granted MRIS’s preliminary injunction, prohibiting AHRN from using MRIS’s photographs, and on appeal, the Fourth Circuit affirmed, rejecting AHRN’s argument that 1) MRIS did not possess any copyright in the photographs because the subscriber’s electronic agreement to MRIS’ terms failed to actual transfer those rights to MRIS and 2) when MRIS registered its Database, it failed to properly register its copyright in the individual photographs.

AHRN first argued that a subscriber’s electronic agreement to MRIS’s Terms of Use did not suffice as an “assignment” of their rights in the photograph. But, the E-Sign Act permits an electronic transfer of copyright ownership if signed and written. The E-Sign Act defines an “electronic signature” as an electronic sound, symbol or process attached to, or logically associated with a contract and executed by a person with intent to sign. In turn, the Fourth Circuit upheld the notion that electronic agreements may be made to validly transfer copyright interests.

The Court then rejected AHRN’s second claim and clarified whether collective work registrations are sufficient to permit an infringement action on behalf of the individual component parts of the collective work. The Register of Copyrights has issued regulations to facilitate the confusion and allow, in some instances, a single registration for certain categories of collective works, including automated databases like MRIS’. This allows authors of automated databases like MRIS to file a single application covering up to three months’ worth of updates and revisions, as long as the revisions are 1) owned by the same claimant (i.e. MRIS), 2) have the same general title, 3) have a similar general content, and 4) are similar in their organization. Nothing in the regulations explicitly require MRIS to list the name and author or every component photograph it wishes to register as part of an automated database registration in order to seek protection for each of the component parts. The regulations seek to make the registration process more efficient for those registering hundreds or thousands of component parts like photographs. Indeed, by requiring a list of each author would only serve as an impediment to registration, said the Court. As MRIS did, in fact, own the copyrights of the individual components because of the express “click-through” transfer made by subscribers the Court held that MRSI complied with the registration process and had the right to bring an infringement action.

TAKEAWAY

In addition to affirming that “click assignments” are valid, this decision is significant and a long awaited relief for the stock photo industry that historically acquired copyright in submitted photographs for purposes of registration, initially published in print catalogs and subsequently in on-line web databases as technology advanced. By registering the individual works as well as the collection, relying on the Copyright Office’s instructions for automated databases, large collections of photographs could be registered which would otherwise be administratively as well as financially prohibitive if each image was required to be registered separately. This decision is in direct conflict with a prior holding in Meunch Photography, Inc. Houghton Mifflin Harcourt Publ’g Co. (SDNY 2010), (in which is part of the Second Circuit) where the court held that an author of a collective work may not assert rights in the individual photographs, despite them having being assigned to the author, since the name of author of the individual photos in the single registration were not included. Other lower courts in various federal districts followed this reasoning and an appeal of a case involving Alaska Stock is still pending in the Ninth Circuit, covering the west coast states (for two years now). Hopefully this appellate decision is a signal that copyright owners are entitled to rely on instructions from the Copyright Office and should not have to guess that many years later, a court might disagree with the Copyright Office’s advice. As there is no real practical way photo libraries seeking to register multiple works by multiple creators can accomplish the goal of registering individual images without acquiring rights and subsequently registering them under a database like process, this decision is reassuring. Now we can only hope the Ninth Circuit agrees!