Registration of Collective Work Registers Component Works, Says Ninth Circuit

n March 14, the U.S. Court of Appeals for the Ninth Circuit, in Alaska Stock, LLC v. Houghton Mifflin Harcourt Pub. Co., 110 U.S.P.Q. 2d 1062 (9th Cir. 2014), determined that registration of a database of stock photographs as a collective work registered the component photographs within.

 Background of the Appeal:

The plaintiff-appellant, Alaska Stock, is a stock photography agency. It registered with the U.S. Copyright Office 13 databases of stock photographs, each as a collective work. The databases contained between 500 and 6,000 photographs (taken by between 32 and 106 photographers). When registering the databases, Alaska Stock followed a procedure worked out in 1995 between the Copyright Office and the Picture Agency Council of America, Inc. (PACA), a trade association of stock agencies. Following this procedure, photographers granted Alaska Stock “the right to register for copyright [their] photographs…solely for the purpose of catalog registration”. This provided Alaska Stock with ownership of the photographs, for purposes of copyright registration. Alaska Stock then filed copyright registration applications listing, pursuant to the Copyright Office-approved procedure, the name of each database/collective work (e.g., “Alaska Stock CD catalog 4”), Alaska Stock as copyright claimant, and, for “name of author”, three of the authors of the many photographs in each database (e.g., in the form of “John Doe, Mary Doe, Kate Doe & 103 others”). The Copyright Office approved Alaska Stock’s applications and issued to it certificates of registrations.

Alaska Stock licensed photographs covered by these registrations to defendant Houghton Mifflin, a publisher, for a limited number of publications. When Alaska Stock discovered that Houghton Mifflin exceeded its license by publishing the photographs in a much greater number of publications than permitted, Alaska Stock  commenced a copyright infringement action and sued for injunctive relief, actual and statutory damages, attorneys’ fees, and costs.

Houghton Mifflin moved to dismiss Alaska Stock’s infringement claims, claiming that the database copyright registrations were defective and did not register the individual photographs within each database (and only registered the databases as a compilation). The district court agreed and granted Houghton Mifflin’s motion to dismiss. However, the Ninth Circuit reversed in March 2014.

Primary Issue:

At issue was whether Alaska Stock’s database copyright registrations covered the component elements (the individual photographs) without providing the name of each photographer and the title of each photograph. The Ninth Circuit said “yes”, upholding the Copyright’s Office interpretation of the statute and disagreeing with several district court decisions that have held otherwise.

Pursuant to 17 U.S.C.  411(a) (the “Copyright Act”), a plaintiff must have obtained a copyright registration to sue for infringement. The issue here arises because Section 409 of the Copyright Act, delegating authority to the Register of the Copyright Office to prescribe forms to be used for registration, says that each application must include, among other things: (i) “the name…of the author or authors”; and (ii) “the title of the work”. Houghton Mifflin argued that this required registrations of collective works to include the title and author of each individual component work- each photograph, or otherwise the registration would be defective.

The Ninth Circuit disagreed and supported the Register of Copyrights longstanding practice to permit copyright registrations of collective works to cover the underlying contributions where rights in those contributions belong to the claimant even though the individual contributors are not named in the registration.Consequently, the statutory name/title requirements would be met if the claimant provided only its name (as author of the collective work) and the title of the collective work. According to the court, the statute does not require the title and name of each component photograph to be listed, for each component photograph to be properly registered. The court found the Copyright Office interpretation of the statute reasonable and that the reliance by stock agencies on the advice of the Copyright Office should be honored.

Since Alaska Stock listed both the title of the databases it registered and itself as the author, and otherwise followed the recommended procedures of the Copyright Office, the Ninth Circuit found Alaska Stock’s copyright registrations to be valid. The court therefore allowed Alaska Stock’s infringement action against Houghton Mifflin to proceed.

The Takeaway:

This decision, in line with decisions of the Third, Fourth, and Fifth Circuits, holds that registration of a database of stock photographs as a collective work validly registers the component photographs within, regardless of whether the title/author of each component photograph is listed in the copyright registration application. This holding is also not inconsistent with current decisions of the Second Circuit. However, clients and practitioners in New York should be aware that the decision is directly at odds with a district court holding in Muench Photography, Inc. v. Houghton Mifflin Harcourt Pub. Co., 712 F. Supp. 2d 84 (S.D.N.Y. 2010). In addition, those registering large amount of photographs today should refer to the current rules and regulation of the Copyright Office. The Copyright Office has been modifying its registration practices and offering new beta programs for registering large numbers of photographs as part of its electronic online system which may require more information to be listed than  required in the Alaska Stock application. The database registration was primarily devised to assist photo libraries that acquired copyright to the images through contributor agreements. The Copyright Office has separate regulations for photographers that allow them to file group registration of published works published in the same year. In addition, collections of unpublished works can always be filed in one application by a single author.