Wednesday, May 12, 2010

Crisis in Copyright Registration for Photographers: New SDNY Case Points Out Need For Reform

In Muench Photography, Inc. v. Houghton Mifflin, 2010 WL 1838874 (SDNY May 4, 2010) Chief Judge Loretta Preska made an unusual foray into the world of copyright registration.  The decision, although correct, points out a glaring problem in our current copyright registration system.  It is simply too expensive for photographers and freelancers to register their copyrights.  When they try to game the system to save fees, it blows up in their faces.

It is all well and good that post-Berne we all own our copyrights, but unless we register them, we don't get statutory damages and attorneys fees.  The practical underlying issue in the Reed Elsevier v. Muchnick case recently decided by the Supreme Court was that hundreds or thousands of freelancers whose works were infringed by the NY Times and other publishers by including them on electronic databases without permission hadn't registered copyrights to their individual articles.  Most journalists still think that their publisher's registrations cover them, and it is not necessarily the case.  If a commenter has the stats at hand (there are blogs devoted to that case), I'd appreciate them.  Something like over 80 or 90% of the freelance journalist would have been shut out of the settlement if the Supreme Court hadn't reversed.

Muench Photography deals with the photographic analogue.  Most photographers don't register their copyrights.  There is a group registration process for compilations of unpublished works, so for $35 photographers may register a group.

Corbis, the image database, thought it had found a workaround.  It put the photographs of numerous photographers into what it called an "automated database" then paid only one fee.  Corbis had an agreement with the photographers that it would reconvey the rights to the photographs once they were registered.  So Corbis could register 1,000 photos and pay only one filing fee.

But the problem is that Corbis registered under a provision that provided for the collective registration by a single author only.  Since group registration is limited to unpublished collections this was probably seen as a workaround that would save photographers a fortune and put a minimal burden on Corbis.

There are not so many cases out there discussing the degree of deference that must be given to the Copyright Office (the attorney for Corbis got a letter from the Copyright Office ok'ing the procedure), so Judge Preska's opinion is worth reading, here is a small sample.

Although both serials and automated databases are considered collective works,FN7 each is governed by separate registration requirements. Serials are governed by 37 C.F.R. § 202.3(b)(6) as well as Circular 62.FN8 Automated databases, on the other hand, are governed by 37 C.F.R. § 202.3(b)(5) and Circular 65. Neither Circular 65 nor § 202.3(b)(5) contains language similar to that found in Circular 62, i.e., that the copyright registration filed by the claimant extends to the independently contributed works if all of the rights in the work have been transferred to the claimant. Moreover, any argument that the registration of the automated databases, considered compilations, covers the individual works of the compilation pursuant to § 103 is belied by the text of § 103 which states that “copyright in a compilation or derivative work extends only to the material contributed by the author.” 17 U.S.C. § 103(b) (emphasis added). The cases MPI cites to support its reading of the statute only underscore the fact that the registration of a collective work reaches the individual works only when the author of the collective work authored each of the individual works. E.g., Szabo v. Errisson, 68 F.3d 940 (5th Cir.1995) (musician's registration of his collection covered each of his individual songs which comprised the collection); Educ. Testing Servs. v. Katzman, 793 F.2d 533, 539 (3d Cir.1986) (“[T]he fact that the registration was for compilations does not preclude protection for the material therein contributed by the author.”); Carell v. Shubert Org., Inc., 104 F.Supp.2d 236 (S .D.N.Y.2000) (group registration of makeup designs covered individual works, but copyright owner was designer of individual designs within the group); Woods v. Universal City Studios, Inc., 920 F.Supp. 62, 64 (S.D.N.Y.1996) (author who filed registration for collective work was the same author of the individual works that were the subject of the infringement). Accordingly, the Court rejects MPI's interpretation of the Copyright Act.

Judge Preska was constrained by the statute and regulations to make the decision she did and noted that it might not have been the wisest policy choice on Congress' part.

Photographers and freelance journalists need legislative relief to make registration affordable and sensible.  Paying $35,000 and filling out the paperwork to register 1,000 images is prohibitive and is not justifiable in today's digital economy.

1 comment:

Photo Attorney said...

Note that photographs may be registered in groups: While unpublished photos may be registered as a group using the eCO system (, published photos must be registered in groups by year of publication and using the paper forms at $60 each. It's still too complicated and expensive!