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.

Alaska Stock sold limited licenses in a limited number of images to Houghton Mifflin and sued Houghton Mifflin when Houghton Mifflin exceeded the scope of the license.  Houghton Mifflin argued that the Copyright Office’s registration practice violates the statute.  Specifically, 17 U.S.C. §409(2) requires a copyright registration application to include “the name and nationality or domicile of the author or authors.”  Section 409(6) requires including “the title of the work, together with any previous or alternative titles under which the work can be identified.”  17 U.S.C. §408(c)(1) authorizes the Register of Copyrights to create regulations allowing “a single registration for a group of related works.”

According to the Ninth Circuit

The issue is whether the Register could prescribe a form and grant certificates extending registration to the individual photographs at issue where the names of each of the photographers were not provided, and titles for each of the photographs were not provided, on the applications.

(Opinion pdf page 12).

The exact process authorized by the Register of Copyrights for photo stock collections is to list on the application the names of three individual photographers and state how many other photographers there are.  Common copyright ownership of the collection and the individual components is also a requirement.  Alaska Stock’s photographers transferred copyright ownership to Alaska Stock for the limited purpose of copyright registration.  Copyright ownership was not an issue in this case.  The case focused on the copyright registration process.  Alaska Stock complied with the Copyright Office’s registration requirements.

Does the statute require listing the titles of the component parts?  The Ninth Circuit analyzed §409(9) regarding registering collective works and §409(6) regarding titles as follows:

For titles, the statutory text and administrative practice are easily reconciled. The statute does not say that the registration application must include a “title” for each constituent work, just an ‘identification’ of any ‘preexisting work or works’—Alaska Stock identified the contents with such phrases as ‘CD catalog of stock photos’ and with CDs showing each image, even though it did not give each image a title.

The requirement that the application must include the ‘title of the work’ refers to the collective work itself. The statute expressly requires only ‘identification,’ in the singular, not titles of preexisting works incorporated, and a ‘brief, general statement of the additional material being covered.’  The definitions section defines a ‘collective work’ in the singular, distinguishing it from ‘contributions’ therein.  Thus, the statute requires a title for ‘the work,’ in the singular, which would be the collective work in this case. There is no inconsistency between the statutory language and the Copyright Office procedure, allowing identification of the ‘work’ without requiring titles for each constituent of the work.

(Opinion pdf page 14-15).

The Ninth Circuit ruled that the same analysis applies to authors – that it is the collective work that needs an author to be designated.  The Court reached this conclusion, even though the portion of the statute addressing authors says “author or authors,” including a plural that is not included in the portions of the statute addressing the “title” of a collective work.

The Ninth Circuit expressed concern about the injustice of disturbing an established administrative practice that private parties rely on.

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.

(Opinion pdf page 27).

This case is Alaska Stock, LLC v. Houghton Mifflin Harcourt Publishing Company, No. 10-36010, Ninth Circuit Court of Appeals.

Leave a Reply

Your email address will not be published. Required fields are marked *