Photographer Can't Register All Her Works as Compilation

Bloomberg BNA’s Patent Trademark & Copyright Law Daily™is the IP industry’s premier news service, offering objective, timely,and reliable daily news coverage and commentary from leading IP law...

By Anandashankar Mazumdar

Dec. 1 — A photographer's attempt to register all of the images she created over a 17-year period in one registration with the Copyright Office does not result in a valid registration of a compilation, the U.S. District Court for the Southern District of New York ruled Nov. 30 (Senisi v. John Wiley & Sons, Inc., 2015 BL 392879, S.D.N.Y., No. 13CV3314-LTS-AJP, 11/30/15).

Neither does such registration qualify as a registration of a single work covering all 8,000 included photographs, the court said. Thus, it dismissed about 150 claims of infringement against educational publisher Wiley & Sons, which has lately been subject to frequent claims of infringement by photographers.

8,000 Pics from 1990-2007 Registered Together

Ellen Senisi of Schenectady, N.Y., is a photographer who licenses stock photographs through a photo licensing service operated by The ImageWorks Inc. of Woodstock, N.Y.

John Wiley & Sons Inc. of Hoboken, N.J., is an educational, academic, professional and business publisher originally founded in 1807, which makes extensive use of licensed images in its publications.

In recent years, Wiley and other major educational publishers have been subject to numerous lawsuits alleging that they have made uses of images beyond the terms of the applicable licenses.

Senisi sued Wiley, alleging that the publisher had infringed her copyright interest in numerous images. After determining that some subset of Senisi's infringement claims were subject to private arbitration, 153 instances of alleged infringement remained.

Wiley moved for summary judgment with respect to all but 10 of those instances, arguing that Senisi had failed to properly register the relevant works.

Not a Single Work, Nor a Compilation

The Copyright Act of 1976, 17 U.S.C. §411(a), requires that a copyright owner must register a work with the Copyright Office before bringing a claim of infringement under federal law.

Senisi asserted that one registration issued in May 2007 (Registration No. VA 1-429-916) covered 8,000 photographs created by Senisi between 1990 and 2007, including 37 of the relevant photographs and their associated 121 allegedly infringing uses by Wiley

But Wiley said that this registration was invalid.

The federal copyright statute does allow for multiple works to be included on one registration in certain instances.

For example, multiple creative works of expression might be registered as a single work under 37 C.F.R. §202.3(b)(4). Alternatively, a compilation of works may be registered together under 17 U.S.C. §103(a). Additionally, a group of photographs each of which has been published in the same year may be subject to a group registration of published photographs under 37 C.F.R. §202.3(b)(10).

Senisi conceded that the registration in question did not qualify as a group registration of photographs under Section 202.3(b), because the 8,000 photographs included had not been published in the same year. Instead., she argued that all the photographs were covered by the registration either as a single work or as a compilation.

First, the court said, the registration was not a valid single work registration, because under Section 202.3(b), “Multiple published works may be protected under a single registration only if they were published for the first time together as a ‘single unit of publication.' ” At least some of the works included in the May 2007 registration had first been published prior to 2007, according to Senisi's own admission, the court said. That meant that they were not all first published as a single unit.

Second, the registration did not constitute a compilation, which is defined by the copyright statute as being “selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship.”

The court rejected Senisi's assertion that the May 2007 registration was intended to reference “ ‘an aggregate compilation' for display on her website of all 8,000 photographs she created between 1990 and 2007.”

“There is nothing creative about this selection of photographs—Senisi simply consolidated all of the photographs she had created over the past seventeen years in a single place, and offers no evidence demonstrating that she took any further steps to imbue this collection with any sort of original or creative element,” the court said.

The court quoted from Silverstein v. Penguin Putnam, Inc., 522 F. Supp. 2d 579, 85 U.S.P.Q.2d 1559 (S.D.N.Y. 2007), for the proposition that “the collection of all is not a selection.”

There was no evidence that Senisi had employed some “minimal level of creativity” in creating the alleged compilation of images, the court said. Furthermore, this assertion was a “new-found theory” and “not only belated but without evidentiary support.”

Thus, the May 2007 registration was not a registration of a compilation that could be used as a basis for an infringement claim with respect to any of the 8,000 images included.

Several more of the infringement claims were based on images that were not listed in the May 2007 registration, but Senisi argued that this registration covered them as well.

Having found the May 2007 registration invalid, the court dismissed 140 of the 143 remaining claims of infringement. Of the remaining three, two were duplicates of claims already dismissed for arbitration and, with respect to the final one, Senisi admitted that Wiley had not exceeded the terms of its license.

The court's ruling was issued by Judge Laura Taylor Swain.

Senisi was represented by Nelson & McCulloch LLP, New York. Wiley was represented by Frankfurt Kurnit Klein & Selz P.C., New York.

To contact the reporter on this story: Anandashankar Mazumdar in Washington at amazumdar@bna.com

To contact the editor responsible for this story: Mike Wilczek in Washington at mwilczek@bna.com

For More Information 
Text is available at: http://src.bna.com/bjO.