The 9th Circuit Court of Appeals issued a long-awaited decision in the case of Alaska Stock v. Houghton Mifflin that favors the “compilation” or “group” registration of digital images by large photo agencies. The decision, in its essence, states that provided the registrant owns the copyright in all of the images that make up the compilation registration, copyright registration also attaches to the individual images contained within the compilation or group- not just the whole group.
At issue was a conflict between the language of the Copyright Act and a memo issued to photo lobbying group by the US Copyright Office. Section 103(a) of the Copyright Act expressly provides that compilations are proper, lawful “subject matter of copyright[.]” 17 U.S.C. § 103(a). However, Section 103(b) provides that “[t]he copyright in a compilation … extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work, and does not imply any exclusive right in the preexisting material.” But In 1995, a trade association of stock agencies, Picture Agency Council of America, Inc., met with the Register of Copyright (the head of the Copyright Office), her Chief Examiner, and other Copyright Office staff, to work out how to register large catalogs of images. The Register agreed that a stock agency could register both a catalog of images and the individual photographs in the catalog in one application if the photographers temporarily transferred their copyrights to the stock agency for the purposes of registration. The trade association confirmed this with the Copyright Office in writing, and advised its member stock agencies.
The trial court in Alaska Stock ruled that the language of the Act was clear and could not be changed by the Copyright Office memo. The court concluded that the registrations of the compilations of photographs did not amount to the registration of the copyrights in the individual photographs. The 9th Circuit reversed that holding, finding that it would be unfair to those that relied upon the Memo stating:
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.
Apparently lost on the Court and not even remotely mentioned in the decision or in the oral arguments which I listened to, is how this will effect the many small businesses that could now be hit with statutory damages and even larger infringement claims based on registrations of thousands and even millions of digital images at a time. Most if not all of these stock agencies require the photographers to assign the copyrights in the image to them, making the agencies the “owners” of the works. Yet because of this compilation registration, it will be very difficult if not impossible for the targets of those claims to find out if the image complained of was part of the registration being relied upon by the stock agencies. The Copyright Office Memo only required the agencies to list three names of the individual authors an no titles of the works, so that for the vast majority of the works contained in the compilation, the only identifying mark is a random catalog number. In these claim letters (sent out in the thousands weekly) the agencies usually do not provide the actual copyright registrations or show you which image applies to which catalog number.So targets of these claims will have to “trust” that the registrations the agencies are sending them are the actual registrations that apply to the images they claim.
The 9th Circuit is the latest to rule this way. The Fourth Circuit recently confronted the question and adopted the position advocated by Alaska Stock and the government in Metropolitan Regional Information Systems, Inc. v. American Home Realty Network, Inc., which addressed whether a real estate listing service had properly registered the individual photographs of properties contained within their listings by registering their listings as a database. The court here also relied on a case from the The Fifth Circuit, Szabo v. Errison that held that a musician who filed a single registration for his collection of his “Songs of 1991” succeeded in registering individual songs within the collection. The Alaska Stock court quoted from that case stating: “Szabo rejected the argument that because he had not listed titles for each of the songs, he had not registered the constituent songs, the same argument Houghton Mifflin makes here. Szabo applies the rule that ‘when one copyrights a collection, the copyright extends to each individual work in the collection even though the names of each work are not expressly listed in the copyright registration.’” But if I am accused of infringing a song by Szabo, I would easily find the registration for his album; I would readily be able to tell if he owned the copyright to the songs listed on the albums by seeing if he is listed as a the author of those works; and I would only have to scroll through a few names of songs from the CD to find the one I am accused of copying. But if Szabo were one of a hundred photographers who were part of the compilation but was NOT one of the three photographers listed, I would not be able to find the offending photograph or even tell if his photography was part of the compilation registered under this method.
The Court here distinguished Morris v. Bus. Concepts, Inc a Second Circuit case holding that the registration of a collective work, Allure magazine, did not register the copyright in a component work where it did not own the copyright to the component work and failed to list its author or title finding that here Alaska Stock did own all the copyright by virtue of its agreement with its photographers. The Second Circuit is the federal appeals court that covers New York. Some New York trial courts and trial courts in other States have gone the other way on this issue. See Muench Photography, Inc. v. Houghton Mifflin Harcourt Publ’g Co.,712 F. Supp. 2d 84, 92–94 (S.D.N.Y. 2010); Muench Photography, Inc. v. Pearson Educ., Inc., 2013 WL 6185200, at 10–13 (N.D. Cal. Nov. 19, 2013); Bean v. Houghton Mifflin Harcourt Publ’g Co., 2010 WL 3168624, at 3 (D. Ariz. Aug. 10, 2010). The Second Circuit has not addressed this issue directly, nor does it have any similar case on its docket to my knowledge. The 9th Circuit is not binding on NY Federal courts though it does carry more weight than most Circuits on copyright issues due to California being within its jurisdiction.
I would expect this decision to embolden photo agencies in their quest for infringement dollars. Folks who are targets of these claims should make sure to ask for proof that the stock agency OWNS and not merely LICENSES the images. They should also ask for proof that the catalog numbers on the registration matches up to the image(s) at issue.
To say I am very disappointed in the decision is an understatement. I think the 9th Circuit got it wrong in part because it failed to see how this would be applied in the infringement scenario. Also, why would anyone now pay for individual registration when it could register all of its works at one time through this method? While I understand the deference the Court gave to the practice outlined by the Copyright Office, that deference should not extend to a practice that is in direct contradiction with the words of the Copyright Act itself.