9th Cir. Joins 4th, Finds Stock Agencies Need Not List All Authors Under Section 409

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By Tamlin H. Bason  

March 18 --The U.S. Court of Appeals for the Ninth Circuit on March 18 ruled that a stock photo agency is the valid owner of a compilation of photographs, and each photo contained in the compilation, even though the copyright application for the collection failed to identify the name of each author whose works were included in the compilation, (Alaska Stock, LLC v. Houghton Mifflin Harcourt Pub. Co., 9th Cir., No. 10-36010, 3/18/14).

The decision provides some certainty to an issue that has been muddled by a string of conflicting district court opinions, many of which--including the decision below--found that Section 409 of the Copyright Act requires that applications list all artists and works that are part of the compilation being registered.

In July, the Fourth Circuit became the first federal appeals court to address the issue. The Ninth Circuit here joined the Fourth Circuit in finding that Section 409 does not require an applicant seeking to register a compilation of photographs to list in its application all of the authors of the individual photographs. The Copyright Office filed an amicus brief in the instant case arguing in support of that conclusion, stating that it has always interpreted the 1976 Copyright Act as requiring only that the author of the compilation be listed on the application.

Copyright Office Intervenes

Section 409 requires that an application for copyright registration include “the name and nationality or domicile of the author or authors,” and “in the case of a compilation or derivative work, an identification of any preexisting work or works that it is based on or incorporates, and a brief, general statement of the additional material covered by the copyright claim being registered.” 17 U.S.C. §409.

In recent years there has been a rise in disputes between photographers and stock photo agencies against textbook publishers in which the latter are alleged to have used images beyond the scope of the applicable licenses. The litigation has resulted in a number of district courts, including the Southern District of New York, Muench Photography, Inc. v. Houghton Mifflin Harcourt Publ'g Co., 712 F. Supp. 2d 84, 2010 BL 251954, 95 U.S.P.Q.2d 1489 (S.D.N.Y. 2010) (87 PTD, 5/7/10), and the District of Arizona, Bean v. Houghton Mifflin Harcourt Publ'g Co., 2010 BL 184349, 97 U.S.P.Q.2d 1983 (D. Ariz. 2010) (155 PTD, 8/13/10), looking to Section 409 to find invalid registrations of compilations in which the names of all authors are not listed. The District of Alaska, too, determined that compilation applications need to list all authors when it dismissed the instant copyright infringement case that was asserted by a stock photo agency, Alaska Stock, against a publishing company, Houghton Mifflin. Alaska Stock, LLC v. Houghton Mifflin Harcourt Pub. Co., No 3:09-CV-0061(HRH) (D. Alaska Sept. 21, 2010).

However, the Copyright Office filed amicus briefs in the instant case and inBean v. Houghton Mifflin, stating that it had concluded that Section 409 did not require identification of the authors of all the individual works included in a compilation. Rather, the Copyright Office said that for over thirty years it has interpreted Section 409 as requiring only that the author of the collective work, not the individual authors of the separate works, be included in the application.

The Fourth Circuit referenced the Copyright Office's view when it affirmed a rejection of the argument that Section 409 requires that all authors be listed in an application for a compilation of works, Metro. Reg'l Info. Sys. Inc. v. Am. Home Realty Network Inc., 722 F.3d 591, 2013 BL 189636, 107 U.S.P.Q.2d 1487 (4th Cir. 2013) (139 PTD, 7/19/13).

Agency Owns Compilation, Individual Images

“We find the Copyright Office's interpretation persuasive,” Judge Andrew J. Kleinfeld said after noting that the court disagreed with the opinions requiring all authors be listed on the application.

“The procedure applied for over three decades by the Register of Copyrights to registration by stock photo agencies complied with the statutory requirements and did not violate any clear requirement to list individual authors and titles of the components within the work,” the court said.

Moreover, the court said that the registration was valid both for the compilation and for each separate photograph in the compilation. The court said:

Registration by a songwriter and singer of a CD of his songs registers both the collection and the individual songs, and registration by a stock photo agency of a CD collection of images the copyright to which the stock agency owns, registers both the collection and the individual images.  

 

The court accordingly reversed the district court's dismissal of the infringement claim and remanded for further proceedings.

Judges Consuelo M. Callahan and Diarmuid F. O'Scannlain joined the opinion.

Alaska Stock was represented by Maurice Harmon of Harmon & Seidman LLC, New Hope, Pa. Houghton Mifflin was represented by J. Russell Jackson of Skadden, Arps, Slate, Meagher & Flom LLP, New York.

 

To contact the reporter on this story: Tamlin Bason in Washington at tbason@bna.com

To contact the editor responsible for this story: Naresh Sritharan at nsritharan@bna.com


Text is available at http://www.bloomberglaw.com/public/document/Alaska_Stock_LLC_v_Houghton_Mifflin_Harcourt_Publ_et_al_Docket_No/2.