For many copyright owners, especially those attempting to register works of visual arts, determining whether a work is published or unpublished for registration purposes is one of the more challenging issues and an impediment to registration. The U.S. District Court for the Southern District of New York, in Archie MD, Inc. v. Elsevier, Inc., No. 16-CV-6614 (JSR), 2017 WL 3601180 (S.D.N.Y. Aug. 20, 2017) recently clarified the standard by which a copyright registration may be considered valid despite containing inaccurate information.
In 2005, Archie MD, Inc. entered into an Animation License Agreement (“ALA”) with the publisher Elsevier, Inc., under which Elsevier would license Archie’s library of 3-D medical animations for use in its various publications. About two weeks after entering into the ALA, and after Archie had delivered the works to Elsevier, Archie submitted a single copyright registration application for a group of unpublished works. This registration included the work at issue in this case, an animation entitled “Cell Differentiation.” The Copyright Office eventually registered the group of works on August 15, 2005.
In 2014, Archie gave Elsevier notice that it did not intend to renew the ALA, and the ALA expired on July 1, 2015. Archie subsequently file a copyright infringement action against Elsevier, alleging that after the expiration date, Elsevier continued to use hundreds of previously licensed animations under the ALA and created unauthorized derivative works.
Both parties filed motions for summary judgment, and the court granted Elsevier’s motion as to all but two of Elsevier’s new animations, on the ground that Elsevier’s continued use of previously licensed animations did not constitute unauthorized use under the ALA and because most of the new animations by Elsevier were not substantially similar to Archie’s animations. As to the remaining claims based on the “Cell Differentiation” animation, Elsevier contended that Archie’s copyright registration in unpublished works was invalid because the work was in fact published, and so Archie’s claim should fail for lack of a proper registration (a prerequisite to filing a copyright infringement lawsuit). The court denied Elsevier’s motion for summary judgement as to “Cell Differentiation” on the basis that, while the registration for “Cell Differentiation” contained an inaccuracy (namely that the work was unpublished, when it in fact was), this mistake was not fatal to the registration under 17 U.S.C. § 411(b)(1).
Section 411(b)(1) of the U.S. Copyright Act explains that a certificate of registration issued by the Copyright Office satisfies the registration prerequisite for filing a copyright infringement action regardless of the existence of inaccurate information in the certificate “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.” To determine whether Archie’s registration failed to satisfy this prerequisite, the court had to answer two questions: first, whether “Cell Differentiation” was published or unpublished, and second, if it was published, whether the inaccuracy on the certificate of registration was fatal to the registration’s validity under the two-part test set forth by the Copyright Act.
As to the first question, the court held that “Cell Differentiation” was in fact published when Archie licensed and delivered the file to Elsevier. The court explained that Archie’s delivery of the “Cell Differentiation” digital file pursuant to worldwide license to, among other things, distribute “Cell Differentiation” to the public, satisfies the Copyright Act’s definition of publication under 17 U.S.C. § 101 because it constitutes an “offering to distribute copies . . . to a group of persons for purposes of further distribution.” That Elsevier had not yet made any further distributions of “Cell Differentiation” at the time the copyright registration application was filed was irrelevant because the licensing and delivery of the files was itself an offering.
Because the certificate of registration incorrectly listed “Cell Differentiation” as unpublished, the court turned to the statute to answer the second two-part question: whether Archie knew its application contained inaccurate information, and if the Register of Copyrights would have refused registration had she known of this inaccurate information. Section 411(b)(2) of the Copyright Act requires that when an inaccuracy on a certification of registration is discovered, a court must ask the Register of Copyrights “whether the inaccurate information, if known, would have caused the Register of Copyrights to refuse registration.” Here, the Register advised the court that she would have denied the application had she known of the inaccuracy in labeling “Cell Differentiation” unpublished. The key issue was therefore whether Archie knew of the inaccuracy. Because the question of whether licensing a work constitutes publication was “an unsettled legal question at the time” Archie filed its copyright registration application in 2005, the court reasoned that Archie did not know of the inaccuracy. As a result Archie’s application was not invalid and it was able to proceed on its copyright claim for the work “Cell Differentiation.”
The issue of publication remains a thorn in a copyright owner’s side. While the plaintiff in this case was not considered to have knowledge that its works were published at the time of registration, those filing registrations after cases such as this one (clarifying what is considered published) will no longer have the benefit of this uncertainty. In light of the Copyright Office’s indication that it would deny registration of an application with inaccurate information as to the works’ publication status, it is highly recommended that creators register works of visual art before any licensing agreements are signed or any digital files are delivered for further distribution. In the case of published photographs, multiple works can be registered by the photographer under a group registration of photographs application, but published and unpublished works are still required to be filed separately. Until the time comes to revise the requirement to distinguish between published and unpublished works, visual artists will continue to face the burden of parsing the sometimes subtle question of publication status for their individual works when seeking copyright registrations.