Metropolitan Regional Informat v. American Home Realty Network

Filing

PUBLISHED AUTHORED OPINION filed. Originating case number: 8:12-cv-00954-AW. [999152093]. [12-2102, 12-2432]

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PUBLISHED
UNITED STATES COURT OF APPEALS
FOR THE FOURTH CIRCUIT

No. 12-2102

METROPOLITAN REGIONAL INFORMATION SYSTEMS, INC.,
Plaintiff - Appellee,
v.
AMERICAN HOME REALTY NETWORK, INC.,
Defendant – Appellant,
and
JONATHAN J. CARDELLA; NATIONAL ASSOCIATION OF REALTORS,
Defendants.
------------------------CONSUMER ADVOCATES IN AMERICAN REAL ESTATE,
Amicus Supporting Appellant.

No. 12-2432

METROPOLITAN REGIONAL INFORMATION SYSTEMS, INC.,
Plaintiff – Appellee,
v.
AMERICAN HOME REALTY NETWORK, INC.,
Defendant – Appellant,
and

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JONATHAN J. CARDELLA; NATIONAL ASSOCIATION OF REALTORS,
Defendants.
------------------------CONSUMER ADVOCATES IN AMERICAN REAL ESTATE,
Amicus Supporting Appellant.

Appeals from the United States District Court for the District
of Maryland, at Greenbelt.
Alexander Williams, Jr., District
Judge. (8:12-cv-00954-AW)

Argued:

May 15, 2013

Decided:

July 17, 2013

Before TRAXLER, Chief Judge, and GREGORY and DUNCAN, Circuit
Judges.

Affirmed by published opinion. Judge Duncan wrote the opinion,
in which Chief Judge Traxler and Judge Gregory joined.

ARGUED: Peter Farkas, FARKAS & TOIKKA LLP, Washington, D.C., for
Appellant.
Margaret Aldona Esquenet, FINNEGAN, HENDERSON,
FARABOW, GARRETT & DUNNER, LLP, Washington, D.C., for Appellee.
ON BRIEF: Richard S. Toikka, FARKAS & TOIKKA LLP, Washington,
D.C.; Christopher R. Miller, Chief Legal Officer and General
Counsel, AMERICAN HOME REALTY NETWORK, INC., San Francisco,
California, for Appellant.
John T. Westermeier, FINNEGAN,
HENDERSON, FARABOW, GARRETT & DUNNER, LLP, Reston, Virginia, for
Appellee.
Douglas R. Miller, Executive Director and Attorney,
CONSUMER ADVOCATES IN AMERICAN REAL ESTATE, Navarre, Minnesota,
for Amicus Supporting Appellant.

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DUNCAN, Circuit Judge:
Appellant American Home Realty Network, Inc. (“AHRN”) and
Appellee

Metropolitan

Regional

Information

Systems,

Inc.

(“MRIS”) are competitors in the real estate listing business.
MRIS offers an online fee-based “multiple listing service” to
real estate brokers and agents, while AHRN circumvents those
brokers and agents by taking listing data from online database
compilers

like

MRIS

and

making

it

directly

available

to

consumers on its “real estate referral” website.
In this action, MRIS contends that AHRN’s unauthorized use
of its copyrighted material constitutes infringement under the
Copyright

Act.

injunction

order

The

district

court

prohibiting

entered

AHRN’s

a

display

preliminary
of

MRIS’s

photographs on AHRN’s referral website, and AHRN appealed.

For

the reasons that follow, we affirm.

I.
A.
MRIS operates an online multiple listing service, commonly
known as an “MLS,” in which it compiles property listings and
related

informational

content

(the

“MRIS

Database”).

MRIS

offers this service to real estate broker and agent subscribers
in Maryland, Virginia, the District of Columbia, and parts of
Delaware, West Virginia, and Pennsylvania.
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Upon payment of a subscription fee to MRIS and assent to
terms, subscribers upload their real estate listings to the MRIS
Database and agree to assign to MRIS the copyrights in each
photograph included in those listings.

In relevant part, the

MRIS Terms of Use Agreement (“TOU”) reads as follows:
All images submitted to the MRIS Service become the
exclusive property of [MRIS]. By submitting an image,
you hereby irrevocably assign (and agree to assign) to
MRIS,
free
and
clear
of
any
restrictions
or
encumbrances, all of your rights, title and interest
in and to the image submitted.
This assignment
includes, without limitation, all worldwide copyrights
in and to the image, and the right to sue for past and
future infringements.
J.A. 464 1 (emphasis added).

In order to submit photographs to

the MRIS Database, the subscriber must click a button to assent
to the TOU. 2

In exchange, subscribers are granted access to all

of

estate

the

real

competitors’

listings

listings)

and

a

in

the

MRIS

nonexclusive

Database
license

(including
to

display

those listings on their own brokerage and/or agency websites via
data feed.
To protect its claims of copyright ownership in the MRIS
Database, MRIS affixes its mark and copyright notice--e.g., “©
1

Citations to “J.A.” throughout this opinion refer to the
Joint Appendix filed in the initial appeal, while “S.J.A.”
refers to the Supplemental Joint Appendix filed in the second,
consolidated appeal.
2

The record is not clear as to the precise manner in which
the TOU appears to subscribers.

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2012 MRIS”--to all photographs published in the MRIS Database,
and registers the MRIS Database with the Copyright Office each
quarter

under

automated

the

registration

databases.

See

J.A.

procedures
460. 3

For

applicable

to

example,

one

application from 2008 reads, in pertinent part:
Type of Work:

Computer File

Application Title:
Group registration for automated
database
titled
Metropolitan
Regional
Information
Systems, Inc. MRIS Database; unpublished updates from
September 1, 2007 to December 31, 2007.
Authorship
hire[.]

on

Application:

[MRIS],

employer

for

Pre-existing
Material:
Previous
versions
of
unpublished automated database updated and revised
from September 1, 2007 to December 31, 2007.
Basis of Claim:
Daily updated and revised text and
images and new text and images.
Copyright Note: Regarding deposit: Application states
that
ID
material
(database
records)
from
representative date December 31, 2007.
J.A.

426.

Other

photographs,”
claim.
quarterly

See,

as

applications

pre-existing

e.g.,

J.A.

registrations

of

list

material

“text,”
or

the

428-30.

According

the

Database

3

MRIS

or

basis
to

“text,
of

the

MRIS,

its

“extend

to

the

See also J.A. 158-67, 426-30 (copies of registration
applications spanning the period from October 1, 2003 to
December
31,
2011);
J.A.
406-25,
431-58
(corresponding
certificates
of
registration).
As
AHRN
notes,
these
registration certificates do not identify the names of any of
the
authors
or
titles
of
individual
photographs.
See
Appellant’s Br. at 42.
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collection and compilation of the real estate listings in the
MRIS Database and to expressive contributions created by MRIS or
acquired

by

listings.”
AHRN

MRIS,

including

the

photographs

included

in

the

owns

and

J.A. 460.
is

a

California

real

estate

broker

that

operates the website NeighborCity.com, a national real estate
search engine and referral business.

Among other sources, AHRN

acquires the data displayed on NeighborCity.com from real estate
brokers

and

agents,

county

tax

assessors’

offices

and

other

public records, foreclosure data providers, and multiple listing
services such as the MRIS Database.

AHRN expressly disclaims

any role in the creation of the data it makes available: the
terms

of

use

for

NeighborCity.com

provide

that

the

user

understands “all the data on properties available for sale or
rent is maintained by various . . . MLSs” and that AHRN “does
not alter or add to this information on the properties in any
way.”
real

J.A. 360.
estate

That AHRN has displayed on NeighborCity.com

listings

containing

copyrighted

photographs

taken

from the MRIS Database is not presently disputed.
B.
On November 18, 2011, MRIS sent AHRN a cease and desist
letter.

In

response,

AHRN

suggested

the

parties

develop

a

“custom license” whereby AHRN could continue to use the listing
data

to

which

MRIS

claimed

a
6

proprietary

interest.

MRIS

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rejected that idea and, on March 28, 2012, filed suit against
AHRN and its CEO, Jonathan Cardella, 4 alleging various claims
related

to

copyright

infringement.

A

few

days

later,

MRIS

sought a preliminary injunction under the Copyright Act, which
authorizes

a

federal

court

to

“grant

temporary

and

final

injunctions on such terms as it may deem reasonable to prevent
or restrain infringement of a copyright.”
AHRN

moved

to

dismiss

for

lack

of

17 U.S.C. § 502(a).

personal

improper venue, and failure to state a claim.

jurisdiction,
The district

court denied AHRN’s motion to dismiss, and granted MRIS’s motion
for preliminary injunction.
2012).

See 888 F. Supp. 2d 691 (D. Md.

AHRN timely appealed.

In response to motions filed by the parties, the district
court revised its preliminary injunction order while the appeal
was still pending. 5
enjoins

only

compilation
considered

The revised order specifies that the court

AHRN’s

itself
part

of

use

or

of

any

the

MRIS’s

textual

photographs--not

elements

compilation--and

that

also

might

renders

the
be
the

injunction’s effect conditional upon MRIS’s posting of security.

4

The district court dismissed Cardella from the action for
lack of personal jurisdiction. He is not party to this appeal.
5

Specifically, the district court granted AHRN’s motion for
clarification, granted in part MRIS’s motion for modification,
and denied AHRN’s motion for reconsideration or suspension.

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See 904 F. Supp. 2d 530 (D. Md. 2012).

AHRN again appealed, and

the

We

two

appeals

were

consolidated.

thus

review

AHRN’s

remaining challenges to the district court’s revised preliminary
injunction order. 6

II.
We

review

the

district

court’s

decision

to

grant

a

preliminary injunction for abuse of discretion, assessing its
factual determinations for clear error and its legal conclusions
de novo.

Pashby v. Delia, 709 F.3d 307, 319 (4th Cir. 2013)

(citing Aggarao v. MOL Ship Mgmt. Co., 675 F.3d 355, 366 (4th
Cir.

2012)).

Parties

seeking

a

preliminary

injunction

must

demonstrate that (1) they are likely to succeed on the merits,
(2) they are likely to suffer irreparable harm, (3) the balance
of hardships tips in their favor, and (4) the injunction is in
the public interest.

Winter v. Natural Res. Def. Council, Inc.,

555 U.S. 7, 20 (2008).
AHRN argues that MRIS has failed to show a likelihood of
success on its copyright infringement claim primarily for two
reasons:

(1)

when

MRIS

registered

6

its

Database

it

failed

to

Following the district court’s entry of the revised order,
AHRN withdrew the objections raised in its first appeal to the
order’s lack of specificity and failure to require security.
See Appellant’s Supp. Br. at 2.

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properly register its copyright in the individual photographs;
and

(2)

MRIS

photographs

does

not

possess

copyright

because

the

subscribers’

interests

electronic

in

agreement

the
to

MRIS’s terms of use failed to transfer those rights. 7
We
parties’

note

at

the

arguments

outset

is

that

complicated

our

consideration

by

their

of

conflation

the
of

copyright protection and copyright registration. These are two
entirely distinct matters, governed by separate sections of the
Copyright Act.
412.

Compare 17 U.S.C. § 102, with 17 U.S.C. §§ 408-

Unlike registration, which we discuss at length below, the

scope of copyright protection is not at issue in this appeal.
The

district

court’s

revised

order

enjoins

only

the

use

of

photographs uploaded by MRIS’s subscribers, and AHRN does not
contest

that

these

photographs

worthy of copyright protection. 8

of

homes

and

apartments

are

To the extent AHRN argues that

7

AHRN also challenges the district court’s evaluation of
the second, third, and fourth prongs of the preliminary
injunction analysis.
Because we find AHRN’s arguments in this
regard to be without merit, and because they are largely factual
inquiries to which we afford substantial deference to the
district court, we reject them without further discussion here.
8

Nor could it reasonably do so. “For more than a century
photographs have been held to be copyrightable ‘writings’ under
Article I, § 8 of the Constitution.” Rogers v. Koons, 960 F.2d
301, 306 (2d Cir. 1992) (citation omitted).
This is so even
when they are largely “factual,” rather than artistic, in
nature.
See Burrow-Giles Lithographic Co. v. Sarony, 111 U.S.
53, 60-61 (1884) (recognizing wide copyright protection over
photographs in holding that a photograph of Oscar Wilde was an
(Continued)
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the MRIS Database itself fails to merit copyright protection in
its originality as a compilation, we reject this contention as
well. 9
In

the

following

discussion,

we

first

set

forth

the

necessary statutory framework, and then consider each of AHRN’s
arguments

in

turn.

Although

the

arguments

present

novel

questions, we ultimately reject both.
A.
In general, the Copyright Act protects “original works of
authorship

fixed

U.S.C. § 102.

in

any

tangible

medium

of

expression.”

17

This protection commences as soon as the original

work is created and fixed in some tangible form, becoming the

original work of art because the author was required to make
such creative decisions as placement of Oscar Wilde in front of
the camera, selection of the angle, light and shade, etc.).
9

As the Supreme Court has made clear, it is only a “narrow
category of works in which the creative spark is utterly lacking
or so trivial as to be virtually nonexistent” so as to render
the work “incapable of sustaining a valid copyright.”
Feist
Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 359 (1991).
Furthermore, originality is usually considered a question of
fact, Craigslist, Inc. v. 3Taps Inc., 2013 WL 1819999, at *6
n.11 (N.D. Cal. April 30, 2013) (citations omitted); thus, we
may reverse the district court’s finding here only if it is
clearly erroneous--which it is not.
We also question the relevance of this issue to our present
inquiry.
Our review is limited by the scope of the revised
preliminary injunction order, which reaches the issue of
copyright infringement only as to the photographs contained in
the database.

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author’s property immediately upon fixation.

See id. § 201(a).

Copyright ownership takes the form of several exclusive rights,
such as the right to reproduce the work.
ownership

vests

initially

with

the

Id. § 106.

author

of

the

Although
work,

the

author may transfer any of the exclusive rights attendant to
copyright

ownership

license.

Id. § 201(d).

enforcement
infringers,
Copyright
action.

of
so

by

his
long

Office

granting

an

assignment

or

exclusive

A copyright owner may seek judicial
property

rights

as

he

has

prior

to

filing

against

registered
the

the

subsequent

work

copyright

with

the

infringement

Id. § 411(a).

One type of “original work of authorship” protected under
the Copyright Act is a “compilation,” which is “formed by the
collection and assembling of preexisting materials or of data
that are selected, coordinated, or arranged in such a way that
the resulting work as a whole constitutes an original work of
authorship.”
compilation

Id.
is

§

101.

independent

The
of

any

protection
protection

afforded to its individual components.

afforded
that

to

might

a
be

Thus, ownership of the

copyright in a compilation, standing alone, “extends only to the
material contributed by the [compilation’s author] . . . and
does not imply any exclusive right in the preexisting material.”
Id. § 103(b).

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As

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relevant

components

here,

which

are

“collective works.”

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compilations
themselves

made

up

of

copyrightable

individual
are

called

A collective work is:

a work, such as a periodical issue, anthology, or
encyclopedia, in which a number of contributions
constituting
separate
and
independent
works
in
themselves, are assembled into a collective whole.
Id. § 101.

The copyright in individual component works need not

be owned by the author of the collective work.

See id. § 201(c)

(“Copyright in each separate contribution to a collective work
is distinct from copyright in the collective work as a whole,
and

vests

initially

in

the

author

of

the

contribution.”).

Indeed, the Copyright Act establishes a default presumption that
the author of a collective work does not own the copyright in
any component part:
In the absence of an express transfer of the copyright
or of any rights under it, the owner of copyright in
the collective work is presumed to have acquired only
the privilege of reproducing and distributing the
contribution as part of that particular collective
work, any revision of that collective work, and any
later collective work in the same series.
Id. § 201(c) (emphasis added).

However, this statutory language

clearly states that where, as MRIS alleges here, the author of a
collective

work

copyrights

in

has

each

obtained
separate

the

express

contribution

to

transfer
that

of

the

collective

work, Section 201(c)’s presumption of distinct ownership in the
collection’s component works does not apply.

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B.
We turn now to the first question presented: whether MRIS
has

failed

to

register

its

interest

in

the

individual

photographs with the Copyright Office prior to filing suit for
copyright infringement as required by the Copyright Act.

If

AHRN is correct, and the registrations obtained by MRIS do not
cover

the

photographs

themselves,

MRIS

may

not

assert

infringement of those photographs by AHRN in this action.

See

17 U.S.C. §§ 409, 411(a); Reed Elsevier, Inc. v. Muchnick, 559
U.S. 154, 157-58 (2010).
It is uncontested that MRIS filed registration applications
with the Copyright Office for the copyrighted material in the
Database under

the

and

corresponding

attained

regulations

governing

automated

certificates

of

databases,

registration.

However, the parties dispute the scope of those registrations.
AHRN argues that MRIS’s “failure to identify names of creators
and titles of individual works as required by 17 U.S.C. § 409(2)
and (6) limits the registration[s] to the Database itself” and
therefore

that

“the

registration[s]

do[]

individual elements in the Database.”

not

extend

to

the

Appellant’s Br. at 42.

MRIS disagrees, pointing to its indication on the registration
applications

that

its

Database

consists

of

pre-existing

photographic works, and emphasizing the lack of any specific
statutory

requirement

that

an

automated
13

database

registration

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list

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the

names

effectively
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and

authors

register

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of

copyright

component
ownership

works
in

in

order

those

to

component

For the reasons that follow, we agree with MRIS.

Section

409

of

the

Copyright

Act

provides

that

an

application for registration of a compilation “shall be made on
a

form

prescribed

by

the

Register

of

Copyrights

and

shall

include,” as relevant here, the name of the author or authors,
the title of the work, and “an identification of any preexisting
work or works that it is based on or incorporates, and a brief,
general

statement

of

the

additional

copyright claim being registered.”
to

a

collective

work

whose

material

covered

17 U.S.C. § 409.

author

has

also

by

the

As applied

acquired

the

copyrights in individual component works, the text of Section
409 is ambiguous at best.

Some additional guidance is provided

in Section 408, which permits the Register of Copyrights to ease
the

burden

on

claimants

of

collective

works

by

promulgating

regulations to allow “for particular classes . . . a single
registration for a group of related works.”

Id. § 408(c)(1);

see also Kay Berry, Inc. v. Taylor Gifts, Inc., 421 F.3d 199,
205

(3d

Cir.

2005)

(explaining

that

the

Copyright

Act’s

provision for group registration is “based on Congress’s desire
to liberalize the registration process”) (citing H.R. Rep. No.
94-1476, at 154 (1976), reprinted in 1976 U.S.C.C.A.N. 5659,
5770).
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Pursuant

its

to

Pg: 15 of 29

under

authority

Section

408(c)(1),

the

Register has promulgated rules allowing for group registration
of certain categories of collective works: automated databases,
related serials, daily newspapers, contributions to periodicals,
daily

newsletters,

and

photographs.

The

202.3(b)(5)-(10).

published
provision

utilized

by

37

C.F.R.

MRIS

for

§

its

quarterly registrations of the MRIS Database permits a single
registration

to

be

made

“for

automated

databases

and

their

updates or other derivative versions that are original works of
authorship.”

Id. § 202.3(b)(5)(i).

Under this provision, the

author of an automated database may file a single application
covering up to three months’ worth of updates and revisions, so
long as all of the updates or revisions (1) are owned by the
same copyright claimant, (2) have the same general title, (3)
have a similar general content, including their subject, and (4)
are similar in their organization.
also

comply

formalities.
C.F.R.

§

with
Id.

certain

Id.

notice,

Each registration must

publication,

and

deposit

As in the text of the statute, nothing in 37

202.3(b)(5)

or

any

related

regulation

specifically

requires MRIS to list the name and author of every component
photograph

it

wishes

to

register

as

part

of

an

automated

database registration.
Lacking clear statutory guidance on the matter, courts have
disagreed

on

how

to

apply

the
15

Copyright

Act’s

registration

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requirement to collective works and their component parts.
courts

have

barred

infringement

suits

to

protect

Some

copyrighted

component works for failure to comply with Section 409’s presuit

registration

requirement

where

the

authors

of

those

component works were not listed in the application to register
the collective work.

See, e.g., Muench Photography, Inc. v.

Houghton Mifflin Harcourt Publ’g Co., 712 F. Supp. 2d 84, 94
(S.D.N.Y.

2010)

(“[A]sking

the

Court

flatly

to

ignore

the

requirement that the authors’ names be listed . . . goes a
bridge too far” in the context of automated databases); Bean v.
Houghton Mifflin Harcourt Publ’g Co., 2010 WL 3168624, at *4 (D.
Ariz. Aug. 10, 2010) (holding that registrations of collective
works

containing

photographers,
collective

numerous

all

work

of

whom

author

photographs
assigned

prior

to

their

his

by

different

rights

to

registration,

the
were

insufficient to permit each photographer to sue for copyright
infringement); Alaska Stock, LLC v. Houghton Mifflin Harcourt
Publ’g Co., 2010 WL 3785720, at *4 (D. Ala. Sept. 21, 2010)
(adopting

approach

taken

in

Bean

and

Muench

in

holding

that

registration of CD-ROMS as automated databases did not effect
registration of the copyrights in the individual images that
comprise the databases).
On the other hand, some courts have recognized collective
work

registrations

as

sufficient
16

to

permit

an

infringement

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action on behalf of component works, at least so long as the
registrant owns the rights to the component works as well.

See,

e.g., Craigslist v. 3Taps, 2013 WL 1819999, at *9 (“Craigslist’s
registration

of

website

database)

and

the

collective
served

work

to

(the

register

overall

Craigslist

component

works

to

which Craigslist has an exclusive license, despite the omission
of individual authors from the registration application.”); Am.
Inst. of Physics v. Schwegman Lundberg & Woessner, P.A., 2012 WL
3799647,

at

plaintiffs’

*2

(D.

Minn.

registration

sufficient

to

vis-à-vis

the

satisfy

of

the

individual

July

2,

journals
pre-suit

articles

2012)
as

(concluding

collective

registration
contained

in

that

works

was

requirement

the

journals,

where the plaintiffs also owned (or exclusively licensed) the
copyrights
Educ.,

to

Inc.,

(concluding

those
2012

that

WL

articles);
93182,

defendant

Pac.

at

failed

*5
to

Stock,
(D.

Inc.

Haw.

show

Jan.

v.

Pearson

11,

plaintiff

2012)

had

not

validly registered its copyright interest in component works,
given the lack of specificity in the Copyright Act); Masterfile
Corp. v. Gale, 2011 WL 4702862, at *2 (D. Utah Oct. 4, 2011)
(finding that “[b]ecause [plaintiff] owns the constituent parts
of the collection the registration of the collection extends
copyright

protection

to

the

constituent

omitted).

17

parts”)

(citation

Appeal: 12-2102

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We

find

Filed: 07/17/2013

this

latter

Pg: 18 of 29

approach

more

statutory and regulatory scheme. 10

consistent

with

the

Indeed, as for the trend

embodied in the former group of cases, “[t]he Copyright Office
is

optimistic

appeal.”

that

those

decisions

will

be

overturned

on

Final Rule, Deposit Requirements for Registration of

Automated Databases That Predominantly Consist of Photographs,
77 Fed. Reg. 40268, 40270 (July 9, 2012).

Bean, in particular,

is factually inapposite because it addresses the distinct issue
of

whether

collective

individual
work

photographers

registration

to

may

use

satisfy

a

third

their

party’s
pre-suit

registration requirement against subsequent infringers.
Here, MRIS owned the copyright in each of the thousands of
component photographs that had been transferred to MRIS prior to

10

Notably, the government’s amicus brief in the appeal of
Bean currently pending before the Ninth Circuit explains the
Department of Justice’s position that, “if the author of a
collective work is also the author of the component works, or if
the authors of the component works transfer all rights in the
works to him, the author of the collective work may claim a
copyright in the component works that make up the collective
work,” even where the registration for the collective work fails
to identify the author and title of each component work.
See
J.A. 378 (citing 17 U.S.C. § 201(d)).
The amicus brief points
to Circulars issued by the Copyright Office, in which “the
Copyright Office has consistently taken the position that the
registration
of
a
collective
work
also
registers
any
independently copyrightable works within the collective work-referred to here as ‘component works’--in which the claimant
owns all rights, even if the registration application does not
specify the titles and authors of the component works.” Id. at
380.

18

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its automated database registrations--as we will discuss further
in Part C.
basis

for

In each registration, MRIS listed photographs as the
its

updated

claim.

As

the

court

articulated

in

Craigslist v. 3Taps, “it would be . . . [absurd and] inefficient
to require the registrant to list each author for an extremely
large

number

acquired

an

(internal

of

component

exclusive

citation

and

works

to

license.”
quotation

which
2013
marks

the
WL

registrant

1819999,

omitted).

at

has
*10

Adding

impediments to automated database authors’ attempts to register
their own component works conflicts with the general purpose of
Section 409 to encourage prompt registration, see U.S. Copyright
Office, Circular No. 1, 7: Copyright Basics (2012), and thwarts
the specific goal embodied in Section 408 of easing the burden
on group registrations, see Kay Berry, 421 F.3d at 204.
Before

concluding

our

analysis,

we

discuss

one

recent

regulatory change, though the parties did not clearly address
it.

In 2012 the Copyright Office promulgated, after notice and

comment, a final rule amending the regulations governing the
deposit requirement applicable to databases primarily composed
of

photographs.

See

Final

Rule,

Deposit

Requirements

for

Registration of Automated Databases That Predominantly Consist
of Photographs, 77 Fed. Reg. 40268 (July 9, 2012).

Under the

new rule, effective August 8, 2012, “when a registration is made
for a database consisting predominantly of photographs, and the
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copyright

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claim

extends

Pg: 20 of 29

to

the

individual

photographs

themselves, each of those photographs must be included as part
of the deposit accompanying the application.”

Id. at 40270.

“Identifying portions and a descriptive statement will no longer
constitute a sufficient deposit.”

Id. 11

However, this amended

regulation was not in effect at the time of MRIS’s registrations
in this case, at which point no such requirement existed for
group registration of photographic component works.

We will not

find MRIS’s compilation registrations inadequate for failing to
comply with later-added requirements.

Furthermore, we note that

neither

the

the

determined

Copyright

that

the

Office

MRIS

nor

Database

district

consists

court

predominantly

has
of

photographs, and we decline to undertake that decision here.
For

these

reasons,

we

endorse

the

district

court’s

conclusion that “MRIS’s identification of ‘photographs’ . . . as
preexisting material and the basis of the copyright claims in
its

copyright

registration

registrations”
requirement.

satisfied
See

888

F.

Section
Supp.

409’s
2d

at

pre-suit
706-07.

Consequently, MRIS is not barred from asserting infringement of

11

The final rule implements this change by adding
“automated databases that consist predominantly of photographs”
to the list of applications for which registrants are required
to provide all photographs covered by a registration as part of
the deposit. See 37 C.F.R. § 202.20(c)(2)(xx) (as amended August
8, 2012).

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its copyrighted photographs, which were registered as component
works in its automated database registrations, in the present
action.
C.
Having

determined

that

MRIS

satisfied

its

pre-suit

registration requirement, we turn finally to AHRN’s challenge to
the merits of MRIS’s copyright infringement claim.
prove

two

ownership

elements
of

a

to

valid

establish

copyright

copyright;

and

(2)

MRIS must

infringement:
AHRN’s

copying

constituent elements of the work that are original.
499 U.S. at 361.

(1)
of

See Feist,

As AHRN does not dispute the second element on

appeal, we need address only copyright ownership.

Specifically,

AHRN argues that a subscriber’s electronic agreement to MRIS’s
TOU does not operate as an assignment of rights under Section
204 of the Copyright Act.
transfer

may

requirements,

satisfy

MRIS responds that an electronic

Section

particularly

204’s

in

light

writing
of

and

the

signature

later-enacted

Electronic Signatures in Global and National Commerce Act (the
“E-Sign Act”), 15 U.S.C. § 7001 et seq., effective October 1,
2000.
A

We agree.
transfer

of

one

or

more

of

the

exclusive

rights

of

copyright ownership by assignment or exclusive license “is not
valid

unless

an

instrument

of

conveyance,

or

a

note

or

memorandum of the transfer, is in writing and signed by the
21

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owner of the rights conveyed or such owner’s duly authorized
agent.”

17 U.S.C. § 204(a) (emphasis added); see also 3 Nimmer

on Copyright § 10.03[A][1].
protect

copyright

fraudulently

Section 204(a) is intended “‘to

holders

from

oral

licenses

claiming

persons
[or

mistakenly

or

transfers].’”

SCO

Group, Inc. v. Novell, Inc., 578 F.3d 1201, 1211 (10th Cir.
2009) (quoting Eden Toys, Inc. v. Florelee Undergarment Co., 697
F.2d 27, 36 (2d Cir. 1982)).
also

serves

certainty

the

of

purpose

of

555,

“enhanc[ing]

ownership--Congress’s

revised the Act in 1976.”
F.2d

The signed writing requirement

557

(9th

predictability

paramount

goal

and

when

it

Effects Assocs., Inc. v. Cohen, 908

Cir.

1990)

(internal

quotation

marks

omitted); cf. Schiller & Schmidt, Inc. v. Nordisco Corp., 969
F.2d

410,

412

(7th

Cir.

1992)

(Copyright

Act

“make[s]

the

ownership of property rights in intellectual property clear and
definite, so that such property will be readily marketable”).
Significantly, Section 204(a)’s signed writing requirement
“is

in

fact

different

from

a

statute

of

frauds.”

Lyrick

Studios, Inc. v. Big Idea Prods., Inc., 420 F.3d 388, 391 (5th
Cir. 2005) (citing Konigsberg Int’l, Inc. v. Rice, 16 F.3d 355,
357

(9th

Cir.

function

and

under

204(a)

§

1994)).

making
a

without a writing.”

“Rather

otherwise

transfer

of

than

valid

serving

agreements

copyright

is

an

evidentiary

unenforceable,

simply

not

valid

Id. (citation and internal quotation marks
22

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omitted).

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Courts

have

Pg: 23 of 29

elaborated

that

a

qualifying

writing

under Section 204(a) need not contain an elaborate explanation
nor any particular “magic words,” Radio Television Espanola S.A.
v. New World Entm’t, Ltd., 183 F.3d 922, 927 (9th Cir. 1999),
but

must

simply

“show

an

agreement

to

transfer

copyright.”

Lyrick Studios, 420 F.3d at 392 (citation omitted).
Before delving into the E-Sign Act and the sufficiency of
the transfer here, we note one initial consideration deriving
from the particular relationship of these parties.

Courts have

held that, in situations where “the copyright [author] appears
to have no dispute with its [assignee] on this matter, it would
be

anomalous

[Section

to

permit

204(a)’s

[assignee].”

a

signed

Eden

Toys,

third

party

writing
697

F.2d

infringer

requirement]
at

36;

see

to

invoke

against
also

the
Radio

Television, 183 F.3d at 929 (adopting the rule of Eden Toys, and
listing other cases to do so).

Put another way, Section 204(a)

“was intended to resolve disputes between owners and alleged
transferee[s], and was not intended to operate for the benefit
of a third-party infringer when there is no dispute between the
owner and transferee.”
249

F.

Supp.

quotation

marks

2d

Kindergartners Count, Inc. v. Demoulin,

1214,

omitted).

1221

n.22

Although

(D.

Kan.

MRIS

did

2003)
not

(internal
raise

this

argument, we nevertheless feel compelled to note the anomaly of
allowing AHRN to fabricate for its own benefit a dispute between
23

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MRIS

Doc: 63

and

Filed: 07/17/2013

its

subscribers

Pg: 24 of 29

over

copyright

ownership

in

the

photographs.
The issue we must yet resolve is whether a subscriber, who
“clicks

yes”

in

response

to

MRIS’s

electronic

TOU

prior

to

uploading copyrighted photographs, has signed a written transfer
of

the

exclusive

photographs

rights

consistent

of

with

copyright
Section

ownership

204(a).

in

those

Although

the

Copyright Act itself does not contain a definition of a writing
or a signature, much less address our specific inquiry, Congress
has provided clear guidance on this point elsewhere, in the ESign Act.
The E-Sign Act, aiming to bring uniformity to patchwork
state legislation governing electronic signatures and records,
mandates that no signature be denied legal effect simply because
it

is

in

electronic

form.

15

U.S.C.

§

7001(a)(1).

Additionally, “a contract relating to such transaction may not
be

denied

legal

effect,

validity,

or

enforceability

solely

because an electronic signature or electronic record was used in
its formation.”

Id. § 7001(a)(2).

The E-Sign Act in turn

defines “electronic signature” as “an electronic sound, symbol,
or process, attached to or logically associated with a contract
or other record and executed or adopted by a person with the
intent to sign the record.”

Id.

24

§ 7006(5).

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Although

the

E-Sign

Pg: 25 of 29

Act

limitations, none apply here.

states

several

explicit

The Act provides that it “does

not . . . limit, alter, or otherwise affect any requirement
imposed by a statute, regulation, or rule of law . . . other
than a requirement that contracts or other records be written,
signed, or in nonelectric form[.]”

Id. § 7001(b).

Because

Section 204(a) requires transfers be “written” and “signed,” a
plain

reading

of

Section

7001(b)

indicates

that

Congress

intended the provisions of the E-Sign Act to “limit, alter, or
otherwise affect” Section 204(a).
Furthermore, 15 U.S.C. § 7003 specifies types of contracts
or records to which the provisions of Section 7001 shall not
apply.

See id. § 7003(a)-(b) (excepting, inter alia, “statutes

. . . governing the creation and execution of wills, codicils,
or testamentary trusts”; “adoption, divorce, or other matters of
family

law”;

documents”;

“court

and

“any

orders

or

notices,

notice

of

.

.

.

or
the

official

court

cancellation

or

termination of health insurance or benefits or life insurance
benefits”).

Agreements

to

transfer

exclusive

rights

copyright ownership are not included in these exceptions. 12

12

of
Nor

Section 7003 also explains that these exceptions are
meant to be phased out over time as consumer protections
surrounding e-signatures are bolstered.
15 U.S.C. § 7003(c)(i)
(“The Secretary of Commerce . . . shall review the operation of
the exceptions in subsections (a) and (b) of this section to
(Continued)
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does the enumerated list contain any “catchall” generic category
into which copyright transfers might possibly fall.

We decline

to read in an invitation to create new exceptions piecemeal.
AHRN’s
inapposite.

proffered

authorities

to

the

contrary

are

None mention the E-Sign Act; instead, AHRN points

to courts which have invalidated transfers in circumstances not
at

all

analogous--for

example,

where

there

was

no

written

agreement, but merely one party’s declaration after the fact
that he had assigned his copyright interest, see Am. Plastic
Equip., Inc. v. Toytrackerz, LLC, 2009 WL 902422, at *6 (D. Kan.
Mar. 31, 2009), or where an e-mail purporting to transfer the
relevant

rights

was

not

actually

sent

by

the

owner

of

the

copyright interest, see McMunigal v. Bloch, 2010 WL 5399219, at
*8

(N.D.

Cal.

Dec.

23,

2010).

We

do

not

find

these

cases

relevant to our present inquiry.
There is little authority regarding the application of esignatures to instruments conveying copyrights.

In what appears

to be the only case relying on the E-Sign Act in this context,
the Southern District of Florida held that the conveyance of a
copyright interest by e-mail was valid.

See Vergara Hermosilla

v. Coca-Cola Co., 2011 WL 744098, at *3 (S.D. Fla. Feb. 23,

evaluate, over a period of 3 years, whether such exceptions
continue to be necessary for the protection of consumers.”).

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2011), aff’d by per curiam opinion, 446 F. App’x 201 (11th Cir.
Nov. 3, 2011).
relied

on

the

In its brief analysis of the issue, that court
purpose

of

Section

204,

which

is

to

“resolve

disputes between copyright owners and transferees and to protect
copyright
claiming

holders
oral

from

licenses

persons
or

mistakenly

copyright

or

fraudulently

ownership,”

not

to

be

“unduly burdensome” or to “necessitate[] protracted negotiations
nor

substantial

quotations

expense.”

omitted).

Id.

The

court

(citations
reasoned

and

that

internal

allowing

the

transfer of copyright ownership via e-mail pursuant to the ESign

Act

accorded

with,

rather

than

conflicted

with,

this

purpose.
Additionally, courts have held that agreements reached by
electronic means are not invalid pursuant to analogous statutory
requirements.

For example, the Federal Arbitration Act (the

“FAA”) specifies that its protections for arbitration agreements
pertain only to a “written provision” in any contract.
§ 2.

9 U.S.C.

Courts have uniformly applied the E-Sign Act to subsequent

interpretations

of

the

FAA’s

written

provision

requirement.

See, e.g., Campbell v. Gen. Dynamics Gov’t Sys. Corp., 407 F.3d
546,

556

(1st

Cir.

2005)

(“[The

E-Sign

Act]

definitively

resolves the issue . . . as to whether an e-mail agreement to
arbitrate is unenforceable under the FAA because it does not
satisfy the FAA’s ‘written provision’ requirement, 9 U.S.C. § 2.
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By its plain terms, the E–Sign Act prohibits any interpretation
of the FAA’s ‘written provision’ requirement that would preclude
giving legal effect to an agreement solely on the basis that it
was in electronic form.”); Specht v. Netscape Comm’cns Corp.,
306 F.3d 17, 26 n.11 (2d Cir. 2002) (assessing whether clicking
to download software created enforceable agreement to arbitrate,
and

noting

‘written

that

the

provision’

matter
despite

of

whether

being

“the

provided

agreement
to

is
in

users

a
a

downloadable electronic form . . . has been settled by [the ESign Act],” although ultimately finding that consumers’ clicking
“yes” in the context presented in that case did not manifest
assent to license terms).
We

find

this

analysis

helpful

in

reaching

conclusion in the context of the Copyright Act.
copyright

transfer

electronically
embodied

in

agreements

would
the

thwart

E-Sign

solely
the

Act.

because

clear
We

the

To invalidate
they

were

congressional

therefore

same

hold

made

intent
that

an

electronic agreement may effect a valid transfer of copyright
interests under Section 204 of the Copyright Act. 13

13

Accordingly,

We make no comment (nor did the district court) as to
whether the subscribers’ assent to MRIS’s TOU constitutes a
valid
agreement
under
generally
applicable
principles of
contract law, or whether, as in Specht, 306 F.3d at 27, it might
fail for lack of mutual assent.
AHRN waived this argument by
raising it for the first time in its reply brief. See McBurney
(Continued)
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we agree with the district court that MRIS is likely to succeed
against

AHRN

in

establishing

its

ownership

of

copyright

interests in the copied photographs.

III.
For the foregoing reasons, the decision of the district
court is
AFFIRMED.

v. Young, 667 F.3d 454, 470 (4th Cir. 2012), aff’d, 133 S. Ct.
1709 (2013).

29