Factual Decisions Required Before Querying Register of Copyrights

Palmer/Kane LLC sued Gareth Stevens Publishing (Stevens) for infringing the copyrights on a number of photograph copyrights owned by Palmer/Kane. After substantially completing discovery, Stevens informed the district court that it intended to contest the validity of the copyright registration certificate for four photos. Stevens asked the district court to request the advice of the Register of Copyrights on whether it would have refused to register the copyrights due to inaccurate registration.

The district court denied Stevens’ request. On a motion for reconsideration, the district court again denied Stevens’ request. The district court ruled that it could not decide from the facts before it the question of whether Palmer/Kane knowingly provided inaccurate information to the Copyright Office in the registration application.

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Known Copyright Registration Inaccuracies Can Hurt Later

I’m going to ignore blog post best practices and start out with a statute:


(1) A certificate of registration satisfies the requirements of this section and section 412, regardless of whether the certificate contains any inaccurate information, unless—

(A) the inaccurate information was included on the application for copyright registration with knowledge that it was inaccurate; and

(B) the inaccuracy of the information, if known, would have caused the Register of Copyrights to refuse registration.

(2) In any case in which inaccurate information described under paragraph (1) is alleged, the court shall request the Register of Copyrights to advise the court whether the inaccurate information, if known, would have caused the Register of Copyrights to refuse registration.

17 U.S.C. §412(b).

Palmer/Kane sued Rosen Book Works for copyright infringement.  The district court granted Rosen’s motion for the district court to request the Copyright Office to advise the court on whether the Copyright Office would have refused registration if it knew that certain information included in the registration application was inaccurate.  Rosen argued that Palmer/Kane’s predecessor knowingly misrepresented to the Copyright Office that the photographs it applied to register as an unpublished collection had not been previously published.

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Copyright Preregistration Another Piece of the Registration Puzzle

I recently attended a Continuing Legal Education (CLE) seminar in which the presenter asserted that copyright owners who register their works within one month after the infringement occurs can still get attorney’s fees and statutory damages in litigation.  That assertion perplexed me, so I looked at the statute afterwards.  Perplexed, because, for the copyright owner to receive attorney’s fees and statutory damages, the statute requires that the work be registered either before the infringement occurs or within 3 months after the first publication.

Section 412 of the Copyright Act of 1976 indicates that statutory damages and attorney’s fees may be available for copyright owners of preregistered works when the registration occurs one month after the owner learns of the infringement. 

…an action for infringement of the copyright of a work that has been preregistered under section 408(f) before the commencement of the infringement and that has an effective date of registration not later than the earlier of 3 months after the first publication of the work or 1 month after the copyright owner has learned of the infringement…

17 U.S.C. §412.

The one month window applies only if the work is a) preregistered and b) the one month period occurs before 3 months after the first publication.

This leads to two questions:  1) What is preregistration? and 2) What is publication?

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Lanham Act Disparagement Provision Held Unconstitutional

Cutting to the chase, because this is a noteworthy decision, but many people are busy getting ready for the holidays and might appreciate receiving the result up front.

We hold that the disparagement provision of Lanham Act § 2(a) is unconstitutional because it violates the First Amendment. We vacate the Board’s holding that Mr. Tam’s mark is unregistrable, and remand this case to the Board for further proceedings.

(Opinion page 62).

The USPTO is prohibited from registering scandalous, immoral, or disparaging marks by the Lanham Act, §2(a), also known as 15 U.S.C. §1052(a).  Simon Shiao Tam leads the Asian-American dance-rock band The Slants.  Twice Tam filed a trademark registration application for the mark THE SLANTS and was twice refused by the USPTO on the basis that the USPTO examiner found the mark to be disparaging to people of Asian descent.  Tam appealed to the Trademark Trial and Appeal Board.  The Board affirmed the examiner’s refusal to register the mark.  Tam appealed to the Federal Circuit.  A Federal Circuit panel affirmed the Board’s decision.  On its own initiative, the Federal Circuit ordered a hearing en banc.  The Federal Circuit en banc ruled that §2(a) of the Lanham Act, relied on by the UPSTO and Federal Circuit panel in rejecting Tam’s trademark registration application, is unconstitutional.

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Stomping Out the Copyright Registration Challenge Varmint

Last week I gave a copyright registration presentation at the King County Bar Association Intellectual Property Section meeting:  Copyright Registration – Simple Forms Conceal Complex Legal Issues.

Copyright registration forms are designed so that they can be filled out without the help of an attorney.  We’re all adept at filling out forms.  But in the copyright registration context, I believe it’s important to take a long range view of the information we insert into the boxes.  Take authorship, for example.  If there’s a single author, authorship is not an issue.  But what happens when there are multiple authors, such as when an independent contractor creates code for a startup, but later becomes an employee of the startup?  Absent a written agreement addressing the issue, if the work being registered includes content from both the independent contractor period and the employee period, the person who wrote the code is a co-author with the startup.

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Availability to Provide Services is Not Trademark Use in Commerce

What is “use in commerce” for federal trademark registration application purposes?  David Couture filed a federal trademark application for PLAYDOM on May 30, 2008.  He submitted a screen shot of his single page website to demonstrate his use of the mark in commerce.  The website stated “welcome to PlaydomInc.com. We are proud to offer writing and production services for motion picture film, television, and new media. Please feel free to contact us if you are interested: playdominc@gmail.com.”  (Opinion pdf page 2).  The website also indicated that it was “under construction.” 

The U.S. Patent and Trademark Office (PTO) registered the PLAYDOM trademark on January 31, 2009.  Services were not provided under the PLAYDOM mark until 2010.  Is offering a service, without actually providing the service, use in commerce for the purpose of meeting federal trademark registration application requirements?

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Sports Tape Competitor Can’t Make Invalid Copyright Claim Stick

Lumos designed, developed and distributes KT Tape, its brand of kinesiology tape.  Lumos created and published a general instructional video describing the use of its tape in 2009.  Lumos published its collection of short instructional videos showing how to apply the tape for various conditions, such as finger jams and inner knee pain, in January 2012.  Lumos registered its copyrights in the videos with the U.S. Copyright Office on October 24, 2012.  Lumos filed a single work application for the collection of videos.  Lumos later filed a supplemental registration to remove the general instructional video from the copyright registration.  The Copyright Office granted both Lumos’ original and supplemental registration applications.

Lumos filed a copyright infringement suit against LifeStrength, the manufacturer of a competing kinesiology tape, for infringing Lumos’ instructional videos.  Lumos alleged that twenty of LifeStrength’s videos infringe by coping the organizational structure of Lumos’ videos; making identical use of non-essential and unique wording throughout the videos; listing nearly verbatim potential causes of injury found in the same order at the beginning of each video; using nearly identical disclaimer language; and suggesting nearly identical complementary treatments.  In response to Lumos’ motion for partial summary judgment, LifeStrength argued that Lumos’ copyright registration is invalid for failure to meet the single work registration requirements.  The district court agreed with Lumos that LifeStrength is an infringer and granted Lumos’ motion for partial summary judgment.

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No Copyright Infringement for Photos Registered After Suit Filed

Louis Psihoyos is a professional photographer.  John Wiley & Sons, Inc. is a textbook publisher.  Wiley discovered that it published some of Psihoyos’ photos in its textbooks without a license from Psihoyos.  Wiley requested licenses from Psihoyos after the fact.  Psihoyos sued Wiley for infringing the copyrights on eight photos.  Although Psihoyos won the case overall, some of the photos he alleged were infringed were excluded from consideration by the jury.

This case emphasizes the importance of making sure that the infringed works are registered before the complaint is filed, making sure that the infringed works identified in the complaint are the works that were actually infringed and making sure that the registration certificates provided to the court by the copyright owner are for the works that were actually infringed.

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Publisher Tanks in Taking on Established Copyright Group Registration Practice

Alaska Stock is a stock photography agency which specializes in Alaska photos and Alaska-themed photos.  Stock photography agencies register copyrights and license images to others on behalf of photographers.  Since photographers who shoot images for stock rely on being able to produce images in large volume, stock photography agencies provide a benefit to photographers by taking care of time consuming business and licensing details.  Likewise, stock photographers benefit stock photography agencies by providing a stream of new photographs so that the stock agencies don’t have to hunt for photographers and photographs.

The Copyright Office has an established practice of extending copyright registration to the individual components of a collective work, such as individual photographs, when the author of the collective work registers the collective work.  The copyright owner of the collective work must also own a copyright in each of the component works.  The author of the collective work is distinct from the author of an individual component contained in the work. The copyright owner and the author are often two different people or entities. The Copyright Office does not require listing the names of the individual authors or the titles of the individual components.  Publisher Houghton Mifflin recently challenged this Copyright Office practice, arguing that the statute requires listing both the individual authors and titles of the component works.  The district court agreed with Houghton Mifflin, dismissing Alaska Stock’s copyright infringement complaint against Houghton Mifflin.  The Ninth Circuit Court of Appeals reversed.

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Sound Recording Registration No Proxy for Musical Composition Registration

The First Circuit Court of Appeals couldn’t go wrong by quoting Mark Twain at the outset:

Over a century ago, Mark Twain lamented that ‘only one thing is impossible for God: to find any sense in any copyright law on the planet.’  We fear that Twain’s deity would fare little better with the tangled skein of copyright and contractual claims presented by the plaintiffs in this case. Confining our inquiry to the arguments seasonably raised before the district court and to the factual background at the time of summary judgment, we conclude that the district court did not err in granting the defendants’ motion for summary judgment and denying the plaintiffs’ subsequent motion for reconsideration.

(Opinion pdf page 2).

Although this case involved a convoluted fact pattern, what the case essentially comes down to is this:  The plaintiffs claimed copyright ownership of musical compositions, but registered sound recordings for the songs they claimed were infringed.  Further, even though the plaintiffs recorded the songs they claimed to own the musical composition copyrights for, the sound recording deposits the plaintiffs provided to the copyright office were made by others, not the plaintiffs.  It’s not surprising that the district court granted the defendants’ summary judgment motion, which was affirmed by the First Circuit.

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