Tag Archives: registration

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.

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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!