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United States Court Of Appeals Decision For Copyright Registration

After many years, the Ninth Circuit finally entered a decision in the Alaska Stock, LLC v. Houghton Mifflin Harcourt Publishing Company case.  Reversing the district court’s dismissal of Alaska Stock’s copyright infringement claim, the court definitively held that Alaska Stock had “successfully registered the copyright both to its collections and to the individual images contained therein” despite the fact that the name of the photographer and title of each component work was not included in the registration.

In doing so, the Court gave deference to the long-standing Copyright Office registration procedures that had been created in 1995 in conjunction with PACA.  Further, the Court specifically rejected the decisions in other courts that refuse to honor registrations because they fail to name all of the photographers and titles of each photograph in a collective work.

It is clear that the Ninth Circuit understood the repercussions of its decision.  In conclusion, the Court stated:

We are not performing a mere verbal, abstract task when we construe the Copyright Act. We are affecting the fortunes of people, many of whose fortunes are small. The stock agencies through their trade association worked out what they should do to register images with the Register of Copyrights, the Copyright Office established a clear procedure and the stock agencies followed it. The Copyright Office has maintained its procedure for three decades, spanning multiple administrations. The livelihoods of photographers and stock agencies have long been founded on their compliance with the Register’s reasonable interpretation of the statute. Their reliance upon a reasonable and longstanding administrative interpretation should be honored. Denying the fruits of reliance by citizens on a longstanding administrative practice reasonably construing a statute is unjust.


By Nancy Wolff, Esq., PACA Counsel


In 2004 Google entered into an agreement with a number of libraries to scan their book collections and in return provide them with digital copies of the scanned versions. Since then, Google has scanned over 20 million books and has made “snippets” of those still under copyright available to the public via search. This wholesale scanning of books resulted in a class action lawsuit brought in 2005 by The Authors Guild, and a few named authors, asserting that verbatim copying of books in their entirety by Google infringed the authors’ copyright in the books. The case was assigned to Judge Chin in the Southern District of New York. Google ‘s defense was fair use, an exception under the Copyright Act that permits certain uses of works in copyright without consent from the owners.

Initially the Authors Guild, and a group of publishers, who had also brought copyright claims against Google, and Google entered into a settlement agreement in 2008 that would create a registry and a way to monetize works as well as exploit orphan works, both from past scanning and on a going forward basis. Judge Chin refused to approve the settlement as unfair.

In 2012, Judge Chin did certify the class action, and Google appealed. The Second Circuit stayed the action and in 2013 denied class certification and directed that the issue of fair use be addressed by the district court before class certification. Judge Chin had since moved from the District Court to the Second Circuit but retained the case.  The publishers were no longer in the case, and Google brought a motion to dismiss the case based on fair use; the Authors Guild moved for summary judgment as to infringement.

On November 14, 2013, eight years after first being assigned this case, Judge Chin ruled in Google’s favor finding fair use and against the Authors Guild and authors, dismissing the copyright claim in its entirety.  The court listed all the benefits of the book-scanning project, including search, data mining, preservation, and making works easier to find for scholars and for users to purchase and find books. Judge Chin found that the use of the copyright works by Google served the purpose of copyright, by advancing the progress of the sciences and useful arts.

As fair use must be determined on a case by case basis, Judge Chin went through the traditional fair use analysis, weighing the four factors as outlined in Section 107 of the Copyright Act.

(1) The purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;

2) The nature of the copyrighted work;

(3) The amount and substantiality of the portion used in relation to the copyrighted work as a whole; and

(4) The effect of the use upon the potential market for or value of the copyrighted work.

Over the years, courts have placed greater emphasis on the first and fourth factors. In looking in at the first factor, the purpose and character of the use, courts ask whether the second use is transformative, even though that term does not appear in the statutory language. It derives from a 1990 Harvard Law Review article written by Judge Pierre Leval on the nature of fair use and has been instructing courts ever since. The courts looks at whether the new work merely “supersedes” or “supplants” the original creation, or whether it:  “instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message; it asks, in other words, whether to what extent the new work is “transformative.”(Quoting Leval)

According to Judge Chin  “Google’s use of the copyrighted works is highly transformative.  Google Books digitizes books and transforms expressive text into a comprehensive word index that helps readers, scholars, researchers, and others find books.  Google Books has become an important tool for libraries and librarians and cite-checkers as it helps to identify and find books.  The use of book text to facilitate search through the display of snippets is transformative.”

Judge Chin relied in part on Bill Graham Archives v. Dorling Kindersley Ltd., which held that small-size reproductions of concert posters as part of a historic timeline in a book on the history of the Grateful Dead was transformative. “The display of snippets of text for search is similar to the display of thumbnail images of photographs for search or small images of concert posters for reference to past events, as the snippets help users locate books and determine whether they may be of interest.  Google Books thus uses words for a different purpose — it uses snippets of text to act as pointers directing users to a broad selection of books.

Further, Judge Chin found that the use was “transformative in the sense that it has transformed book text into data for purposes of substantive research, including data mining and text mining in new areas”.

Although Google is a for profit company which would disfavor fair use under the first factor, the fact that Google did not sell the copies to the libraries, no longer sells ads on book pages, nor sells the snippets or books, did not tip the balance against fair use on this factor.

The second factor, the nature of the work, which looks at whether the underlying work is factual and less deserving of fair use, or creative and favoring fair use, did not play a significant role in the analysis and in fact has not been given much weight by the courts. The court noted that 93% of the works were non- fiction.

The third factor, the amount and substantially of the portion used was also insignificant in the court’s analysis and only weighed slightly against fair use. Admittedly Google scanned the entire works but the court noted that full scanning was functionally necessary to provide search and that only snippets were made available of copyright works.

The fourth factor addresses market harm as a result of the unauthorized use. The Authors Guild argued that Google’s scanned works replaced the market for the books and users could obtain what they needed through numerous snippets searches of the same work. Judge Chin did not find this argument persuasive and stated  “To the contrary, a reasonable fact finder could only

find that Google Books enhances the sales of books to the benefit of copyright holders. ” He noted that it would be impossible to piece together an entire book by snippets as Google’s technology prohibits it and that the search tools and links to where you can purchase books assists in making online sales of books easier.

Overall Judge Chin found that the Google Book project provided a significant benefit to the public: “It advances the progress of the arts and sciences, while maintaining respectful consideration for the rights of authors and other creative individuals, and without adversely impacting the rights of copyright holders.”

In addition to dismissing the direct copyright claim, it dismissed the Authors Guild claim against Google for delivering the scans to libraries, citing the previous decision in the HathiTrust case finding that the libraries use of the works to be fair use, in part by assisting the visually impaired. If the library use was fair use, Google’s use was also fair use and it could not be liable for providing them with the digital scans.

This case is a significant win for Google and a substantial broadening of the fair use doctrine. It permits a for profit company to mass digitize works without permission and reap many benefits in terms of search advantage, driving traffic to its site and the fact that it possesses the corpus, copies of 20 million books. While this decision is still a district court decision and will likely be appealed, many will rely upon the language in this decision, regarding fair use. Having all works available is certainly a benefit to society but the Copyright Act is intended to balance this benefit with incentives to creators and to offer exclusive rights for a period of time with limited exceptions. The exceptions have been expanding and this case is such an example with a balance tipping in favor of users.

Associations representing visual artists were excluded from the Authors Guild case and they, led by ASMP, have a separate class action against Google for the use of images scanned in the book project. In particular, this action was commenced when the settlement created a registry that excluded any compensation for images.   PACA is one of the associations that joined the action. While there are clearly differences between the image case and the text based case (the search benefits, data mining and directing users to purchase books do not benefit visual artist in the same way), which will require a different fair use analysis, this expansive interpretation of fair use is troubling for this case as well as other matters.

Panoramic Images Copyright Claims Against Textbook Publishers Permitted To Proceed

By Nancy Wolff Esq., PACA Counsel


Panoramic Images (Panoramic) successfully defeated two separate motions to dismiss copyright claims it brought against textbook publishers, McGraw-Hill Companies, Inc. (McGraw-Hill) and John Wiley & Sons, Inc. (Wiley) for uses of photographs in excess of license agreements. Both cases were in the Federal District Court of the Northern District of Illinois, in front of two different judges and in each instance the court upheld Panoramic’s compilation registration of photographs and refused to follow the line of cases that restricted these registrations to the compilation and not the underlying photographs, granting deference to the Copyright Office.

170 photographs were at issue in the action against McGraw-Hill. All licenses contained restrictions with limitations based on the number of copies, territory, image size, language, duration, and nature of the media exceeded the permitted uses. According to the complaint Panoramic provided McGraw-Hill with a list of limited licenses that it believed had been exceeded. When McGraw-Hill failed to respond, Panoramic instituted an action for direct and contributory copyright infringement. McGraw-Hill did not dispute the claims against them with respect to 69 of the images, but asserted that Panoramic lacked valid copyright registrations for 101 of the 170 photographs at issue.

First, McGraw-Hill asserted that Panoramic should be barred from bringing an action on 52 photographs because they were registered as part of various compilations and collective works and that these registrations failed to list the title of each photograph with an individual author citing 17 U.S.C. §409(2)— that states an application must include the “author or authors” and “title of the work”. McGraw argued that the statute intends that each component of a collective work must individually be listed with an author and title and ignoring this requirement would render the law “meaningless,” allowing claimants to bring infringement suits on works that had not been individually registered, a mechanism that provides public notice of a work’s registration. McGraw-Hill relied on several recent cases to support this view, including Muench v. Houghton-Mifflin, Bean v. Houghton Mifflin, and Alaska Stock LLC v. Houghton Mifflin Harcourt Publ’g. Co., in which the courts determined that the plain language of §409 required each component photograph in a collective work to be listed with copyright registration in order for the plaintiff to bring an infringement action. In response, Panoramic noted that the United States has filed amicus briefs in support Alaska Stock and Bean, arguing that the Copyright Office has permissibly interpreted §409 to not require a registration application to identify the author of all claimed component works and that the court should defer to that interpretation. Panoramic also relied on Metropolitan Regional Info. Sys. V. American Home Realty Network Inc. a recent Fourth Circuit decision, which stated that §409 should not be interpreted to require that the copyright registrant identify each individual author and title in a collective work. Metropolitan further stated that reading §409 to mean that registration of a collective work also protects each component work is “more consistent with the statutory and regulatory scheme” because individually listing huge numbers of photographs would add excessive impediments to the registration process.”

The court rejected McGraw-Hill’s arguments concerning publication notice, pointing out that this apparent lack of notice did not prevent McGraw-Hill from knowing that Panoramic claimed copyright in the images and entering into licensing agreements with Panoramic. The court acknowledges that this is a developing issue in various district and circuit level courts and chooses to permit the action to continue, rather than barring the infringement suit at the pleadings stage. The court further states because the Seventh Circuit had not yet ruled on this issue, it preferred to grant deference to the Copyright Office’s reasonable interpretation of the statute, which “has directed that registration of a collective work “may cover (a) the collective work authorship, (b) any contribution created by the employee or other party commissioned by the author of a work made for hire, and (c) any other contributions that the claimant of the collective work obtained by transfer.” The Copyright Office further provides that where, as in this case, “the work being registered was created by a large number of authors, the application will be considered acceptable if it names at least three of those authors, followed by a statement such as ‘and [number] others.”

McGraw-Hill challenged the registration on an additional 49 of the photographs based on pending copyright registrations, and asserted that the action should not be permitted to proceed without a registration certificate from the Copyright Office. The court observed that there is a circuit split on the question of whether a pending copyright application is a sufficient basis for filing a copyright infringement suit (the application approach) or whether a copyright registration must be completed first (the registration approach). Courts that follow the registration approach urge that it follows the plain meaning of § 411(a), which states “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.” Advocates of the application approach contend that statute is ambiguous and permitting a claimant to bring a copyright infringement action on a work that has a pending application would better carry out the purpose of the statute by providing broad copyright protection without undue delay. The court found the application approach to be the most logical one following the Seventh Circuit case of Chicago Bd. of Educ. v. Substance, Inc., which stated that “although a copyright no longer need be registered with the Copyright Office to be valid, an application for registration must be filed before the copyright can be sued upon.”

Panoramic Images action against the publisher Wiley similarly alleged direct and contributory copyright infringement and common law fraud for exceeding the scope of the licenses. In addition to disputing the registrations based on compilation registrations and pending applications, Wiley brought a partial motion for dismissal arguing that litigation was improper because the arbitration clause in some of the license agreements precluded court proceedings.
Twenty photographs were at issue in the Wiley matter and as in the McGraw-Hill matter, limited licenses were issued to Wiley for use in in educational publications over the course of a number of years. The licenses expressly limited the number of copies, distribution area, language, duration, and media and Panoramic alleged that Wiley continually exceeded the limited grant of rights without securing additional permission. Further, it alleged that Wiley reproduced and distributed the photographs to third parties in the United States for profit, who translated the publications into different languages or published them in local adaptations or reprints all without Panoramic’s permission.

Nine of the 20 photographs were licensed by Panoramic’s distributor Getty Images through a series of Master License agreements that contained arbitration clauses. The court noted that a motion to dismiss was not the appropriate vehicle under which to enforce an arbitration clause, and a party must seek a stay under §3 of the Federal Arbitration Act. The court reviewed the arbitration provision and noted that it provided a “carve-out” option to litigate in court and that Panoramic may exercise its right to litigate in court, as it was “standing in Getty’s shoes”. Further, because Wiley’s reply brief did not address the scope and effect of the arbitration carve-out, it forfeited its ability to compel arbitration arising from the Getty Images agreements.

Similarly to the McGraw-Hill case, the court reviewed the current circuit split on whether “preregistration or registration” is required for purposes of filing a copyright and ultimately favored the application approach. The court preferred this approach because it avoided unnecessary delay by keeping claimants in “legal limbo,” waiting for their applications to be approved prior to bringing a legal action.

With respect to certain photographs that were registered as part of compilations, rather than individually, the court again referred to a split among district courts, and just as the court in the McGraw case, it looked to the Fourth Circuit’s in Metropolitan Regional Information Systems, stating that “where, as here, the copyright holder of a registered compilation owns the components at issue in a copyright suit, the registration suffices to permit filing of a suit.” The court stated that because the case was only at the pleading stage, it would permit Panoramic to proceed with its claims, but specifically stated that Wiley should be permitted to renew this argument later, if another Appeals Court departs from the Fourth Circuit.

There is still no new news from the Ninth Circuit on the appeal in Alaska Stock and Bean which was argued more than 2 years ago. It is clear that subsequent courts are more comfortable in giving deference to interpretation of section 409 by the Copyright Office, upholding the form of copyright registrations recommended to the industry by the Copyright Office.

Other courts depart from the view of the Fourth Circuit.

Fourth Circuit Upholds Registration of Database Collection of Photographs


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.


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 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.


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!