A recent decision from the Southern District of New York should be of interest to anyone responsible for registering the copyright in compilations or collective works. In Muench Photography, Inc. v. Houghton Mifflin, 09-CV-2669 (S.D.N.Y. May 4, 2010) (PDF), the court ruled that the plaintiff, which owned the copyright in certain photographs that defendant Houghton Mifflin had licensed through a stock photo company called Corbis, did not hold valid registrations and therefore had not fulfilled the 17 U.S.C. § 411 prerequisite to suit. Plaintiff MPI claimed that Corbis had registered the copyright in its photographs when it had registered an automated database containing images by many different photographers.
The court held that Corbis’s registration of its automated databases was insufficient to register the copyright in the individual photographs contained therein because it had failed to list the names of the individual authors as required by 17 U.S.C. § 409. Troublingly, however, the opinion also contains some broader statements that make the basis for the court’s holding somewhat unclear. In particular, the court stated 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.” Slip Op. at 20. If this statement is true, it would mean that Corbis could not have registered the copyright in the individual photographs even by listing all of their separate authors, since Corbis (the author of the collective work, i.e., the database) was the owner and claimant – but not the author – of the photographs.
The court and the parties looked primarily to two earlier cases as precedent. In Morris v. Business Concepts, Inc., 283 F.3d 502 (2nd Cir. 2002), the Second Circuit held that registration of a magazine issue did not cover an individual article included in the issue because the copyright claimant (publisher of the magazine) had obtained only some, not all, of the rights to the article at the time of registration. Conversely, the court suggested that if the publisher had obtained all rights, its registration would have covered the article. In Bean v. McDougal Littell, No. 07-8063-PCT-JAT (D. Ariz. July 28, 2008), the Arizona district court confronted facts nearly identical to those presented in Muench. Defendants argued that Corbis did not have all rights to the photographs in its database because it had obtained assignment of legal title solely for the purpose of registering the copyrights, and was required to reassign all rights to the original authors after registration. The court disagreed, however; it found the assignment sufficient to transfer all rights to Corbis and, relying on Morris, held that Corbis’s registration therefore covered the individual photographs.
The Muench court distinguished Morris by finding that “automated databases and serials are separate forms of copyrightable works and are thus subject to separate copyright regulations.” Slip Op. at 18. It therefore declined to follow Bean because Bean relied on Morris, and because the defendants Bean had not pursued an argument based on § 409. Interestingly, in Bean the plaintiff’s name had been included in the Corbis registration application, thereby fulfilling the § 409 requirement, but the Muench court did not distinguish the case before it on this fact.
The distinction the Muench court drew between serials and automated databases is somewhat problematic because both types of works are collective works, and both are subject to the requirements of § 409. Although the Muench court looked to Copyright Office Circulars as persuasive authority, it failed to acknowledge or address the fact that Circular 62 (PDF), covering serials and relied on by the Second Circuit in Morris, explicitly states that “it is not necessary to include the names of the contributors” in order to obtain copyright registration for the individual works included in a collective work.
Setting aside this disconnect, the clearest lesson of Muench is that copyright claimants seeking to protect a collective work and the individual works that constitute it should always play it safe by listing all authors of the constituent works on the registration application form. As noted, some language in the opinion suggests that even this will not be enough if the individual works were not authored by the author of the collective work. For this reason, it may be wise for companies commissioning contributions to a project to structure the contributions as works made for hire, so that the company is in fact the author of the entire project. Where this is not possible, Muench does create some uncertainty. However, given the court’s predominant emphasis on § 409, and the stark conflict with Morris (not to mention with longstanding copyright practice) that would be created by a holding that collective work registrations can never cover separately authored contributions, it seems reasonable to conclude that the court’s statement on this point is dicta and unlikely to be followed. In addition, copyright owners facing infringement of an individual work that was registered as part of a collective work might consider, if there is any question about the validity of the registration, taking the extra precaution of applying separately to register the individual work before bringing suit.
Finally, it is worth noting that an affiliate of the plaintiff in Muench had actually written to the Copyright Office and obtained a response blessing Corbis’s registration strategy as sufficient. The court declined to defer to the agency’s interpretation of the Copyright Act contained in that response because, the court concluded, it conflicted with a plain reading of § 409. Slip Op. at 14. At the end of its opinion, the court expressed regret for the harsh result faced by a plaintiff who had made every effort to comply with the Act under specific guidance from the Copyright Office, and noted that “[t]he fault in this case lies solely with the Copyright Office” and the “poor advice” it had offered the plaintiff. Slip Op. at 23-24. Registrants would do well to keep in mind that even specific approval from the Copyright Office itself is no guarantee that a particular approach to registration will ultimately be found sufficient under the statute.