Brent Rogers v. The Better Business Bureau of Metropolitan Houston, Inc.
Filing
91
MEMORANDUM OPINION denying 69 MOTION for Partial Summary Judgment (Signed by Magistrate Judge Nancy K. Johnson) Parties notified.(sbutler, )
IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF TEXAS
HOUSTON DIVISION
BRENT ROGERS D/B/A,
I-NET SPIN.COM
Plaintiff,
v.
THE BETTER BUSINESS BUREAU
OF METROPOLITAN HOUSTON, INC.,
Defendant.
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CIVIL ACTION NO. H-10-3741
MEMORANDUM OPINION
Pending before the court1 is Defendant’s Motion for Partial
Summary Judgment (Doc. 69). The court has considered the motion,
all relevant filings, and the applicable law.
For the reasons set
forth below, the court DENIES Defendant’s motion.
I.
Plaintiff
filed
this
Case Background
copyright
action
against
Defendant
alleging that, after terminating a Web Design Agreement with
Plaintiff, Defendant directed the intentional, unauthorized copying
of content from approximately 2,600 webpages2 created by Plaintiff.
A.
Factual Background
On
December
24,
2001,
Defendant,
a
Texas
non-profit
organization “committed to promoting ethical business practices in
1
The parties consented to proceed before the undersigned magistrate
judge for all proceedings, including trial and final judgment, pursuant to 28
U.S.C. § 636(c) and Federal Rule of Civil Procedure 73. Docs. 39, 42.
2
Stylistically, the court prefers the lowercase, single-word format
of terms such as “webpage” and “website.” The court does not alter the format
of those terms in quotations.
the local business community,”3 contracted with Plaintiff to create
webpages for Defendant’s member businesses.4
Plaintiff agreed to
create individual webpages for the member businesses, to create a
website
at
the
uniform
resource
locator
(“URL”)
reliabilitymall.com5 for hosting the webpages, to license the URL
to Defendant, and to maintain the URL and webpages.6
In exchange,
Defendant agreed to pay Plaintiff a creation fee per webpage and a
renewal and maintenance fee for each of Defendant’s members that
had
a
webpage
and
renewed
their
organizational
membership.7
Defendant passed on the expense of the creation and maintenance of
the webpages to the individual member businesses.8
Plaintiff’s contract term ran for one year, after which it
automatically renewed on a month-to-month basis.9 Either party had
the right to terminate the contract by giving thirty days’ notice
3
Doc. 15, Def.’s Mot. to Dismiss, p. 2.
4
See Doc. 69-3, Ex. A to Def.’s Mot. for Partial Summ. J., Web Design
Agreement.
5
The parties variously refer to the website as reliabilitymall.com and
ReliabilityMall.com. Compare, e.g., Doc. 69-3, Ex. A to Def.’s Mot. for Partial
Summ. J., Web Design Agreement with Doc. 69-4, Ex. D to Def.’s Mot. for Partial
Summ. J., Application for Supplementary Registration. Except when quoting, the
court uses the former.
6
Doc. 69-3, Ex. A to Def.’s Mot. for Partial Summ. J., Web Design
Agreement, pp. 1-2 (unnumbered).
7
Id. at p. 1 (unnumbered).
8
See id.
9
Id.
2
to the other.10
On March 18, 2009, Defendant provided Plaintiff
notice of termination of the Web Design Agreement.11
In
early
copyright
2010,
Plaintiff
registration
for
applied
for
a
certificate
www.reliabilitymall.com
as
of
an
unpublished, nondramatic literary work, which was issued on January
31, 2010.12
B.
Procedural Background
Plaintiff
copyright
filed
this
infringement,
lawsuit
in
October
violations
of
the
2010,
Digital
alleging
Millennium
Copyright Act,13 and, in the alternative, unfair competition under
federal law.14
Shortly thereafter, Defendant filed a motion to
dismiss, in part challenging Plaintiff’s copyright protection for
the individual webpages.15
Plaintiff opposed the motion.16
Two days later, Plaintiff applied to the Copyright Office for
supplementary registration of the webpages.17
10
Plaintiff explained
Id.
11
See Doc. 69-2, Ex. B to Def.’s Mot. for Partial Summ. J., Letter from
Dan Parsons to Plaintiff Dated Mar. 18, 2009.
12
Doc. Doc. 69-3, Ex. C to Def.’s Mot. for Partial Summ. J., ,
Certificate of Registration (bearing the Copyright designation “TXu” in the
registration number, indicating that the work was registered as an unpublished,
nondramatic literary work).
13
17 U.S.C. §§ 1201-1322.
14
See Doc. 1, Pl.’s Original Compl.
15
See Doc. 15, Def.’s Mot. to Dismiss, pp. 9-12.
16
See Doc. 16, Pl.’s Resp. to Def.’s Mot. to Dismiss.
17
See Doc. 69-4, Ex. D to Def.’s Mot. for Partial Summ. J., Application
for Supplementary Registration.
3
that he sought supplementary registration to add the words “Web
Page Collection” to the title of the work and to add information
about
the
nature
of
authorship
collection as unpublished.18
and
the
registration
of
the
He provided the following additional
information about the publication status of the webpage collection:
Claimant created the registered Web pages between
2001-2009 to be displayed online. Each of Claimant’s Web
pages has a unique “Reliabilitymall.com” URL and was
created independently for companies and individuals. Each
Web
page,
or
“site,”
was
displayed
on
the
www.ReliabilityMall.com [website] for one year in
exchange for an annual licensing fee.
Claimant registers its collection of Web pages as
unpublished in light of the legislative history of the
1976 Copyright Act. See H.R.Rep. No. 94-1476 at 53 (“on
the other hand, the definition of ‘fixation’ would
exclude from the concept purely evanescent of transient
reproduction such as those projected briefly on a screen,
shown electronically on a television or other cathode ray
tube, or captured momentarily in the ‘memory’ of a
computer), 64 (“the definition [of publication]… makes
plain that any form or dissemination in which a material
object does not change hands-performance or displays on
television, for example-is not a publication no matter
how many people are exposed to the work.”)(1976); Moberg
v. 33T, 666 F.Supp.2d 415, 422 (Del. 2009)(“the question
of whether an Internet posting constitutes publication
under U.S. law and the Berne Convention remains
unresolved.”). Claimant also adds that the Better
Business Bureau of Metropolitan Houston, Inc. acted as an
“administration liaison” between the Claimant and the
companies or individuals. There was not, however, a
‘group’ of wholesalers or distributors. Rather, the
registered Web pages relate only to members of the
Houston branch of the Better Business Bureau.19
Upon review of Plaintiff’s application, the Copyright Office issued
18
Id. at p. 1.
19
Id. at Separate Continuation Sheet.
4
a certificate of supplementary registration.20
Plaintiff amended in February 2011 and dropped the unfair
competition claim.
In the present motion, Defendant seeks summary
judgment on Plaintiff’s copyright infringement claims.
II.
Summary Judgment Standard
Summary judgment is warranted when the evidence reveals that
no genuine dispute exists regarding any material fact and the
moving party is entitled to judgment as a matter of law.
Fed. R.
Civ. P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986);
Brown v. City of Houston, Tex., 337 F.3d 539, 540-41 (5th Cir.
2003).
A material fact is a fact that is identified by applicable
substantive law as critical to the outcome of the suit.
Anderson
v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986); Ameristar Jet
Charter, Inc. v. Signal Composites, Inc., 271 F.3d 624, 626 (5th
Cir. 2001).
To be genuine, the dispute regarding a material fact
must be supported by evidence such that a reasonable jury could
resolve the issue in favor of either party.
Anderson, 477 U.S. at
250; TIG Ins. Co. v. Sedgwick James of Wash., 276 F.3d 754, 759 (5th
Cir. 2002).
The movant must inform the court of the basis for the summary
judgment motion and must point to relevant excerpts from pleadings,
depositions, answers to interrogatories, admissions, or affidavits
that demonstrate the absence of genuine factual issues.
20
Id. at Certificate of Supplementary Registration.
5
Celotex
Corp., 477 U.S. at 323; Topalian v. Ehrman, 954 F.2d 1125, 1131 (5th
Cir. 1992).
If the moving party can show that the facts are not in
dispute, the party opposing summary judgment must go beyond the
pleadings and proffer evidence demonstrating that genuine issues of
material fact do exist that must be resolved at trial. See Celotex
Corp., 477 U.S. at 324.
When considering the evidence, "[d]oubts are to be resolved in
favor of the nonmoving party, and any reasonable inferences are to
be drawn in favor of that party."
Evans v. City of Houston, 246
F.3d 344, 348 (5th Cir. 2001); see also Boston Old Colony Ins. Co.
v. Tiner Assocs. Inc., 288 F.3d 222, 227 (5th Cir. 2002). The court
should not “weigh evidence, assess credibility, or determine the
most reasonable inference to be drawn from the evidence.”
Honore
v. Douglas, 833 F.2d 565, 567 (5th Cir. 1987).
III. Analysis
Defendant requests summary judgment on Plaintiff’s copyright
infringement cause of action, arguing that “Plaintiff’s works are
not registered” because Plaintiff represented to the Register of
Copyrights that the websites were unpublished.21
Plaintiff argues
in response, in addition to his assertion that the websites were
unpublished,
that
Defendant’s
challenge
should
be
considered
pursuant to the instructions in 17 U.S.C. § (“Section”) 411(b),
which
applies
21
to
certificates
that
contain
Doc. 69, Def.’s Mot. for Partial Summ. J., p. 1.
6
“inaccurate
information.”
A.
A Certificate of
Copyright Validity
Registration
Raises
a
Presumption
of
In order to succeed on a copyright infringement action, a
plaintiff must prove ownership of a valid copyright, actionable
copying, and substantial similarity.
147,
152
(5th
Cir.
2007).
Armour v. Knowles, 512 F.3d
Ownership
of
a
valid
copyright
encompasses originality, copyrightability, and compliance with
statutory formalities. Compaq Computer Corp. v. Ergonome Inc., 387
F.3d 403, 407-08 (5th Cir. 2004).
Before a plaintiff may bring a
civil action for copyright infringement, he must register the
copyright with the U.S. Copyright Office (“Copyright Office”).
17
U.S.C. § 411(a).
The Copyright Act requires that courts recognize a timely
obtained certificate of copyright registration as “prima facie
evidence of the validity of the copyright and of the facts stated
in the certificate.”
17 U.S.C. § 410(c); see also Gen. Universal
Sys., Inc. v. Lee, 379 F.3d 131, 141 (5th Cir. 2004); Lenert v. Duck
Head Apparel Co., No. 95-31122, 99 F.3d 1136, 1996 WL 595691, at *3
(5th Cir. Sept. 25, 1996)(unpublished); Norma Ribbon & Trimming,
Inc. v. Little, 51 F.3d 45, 47 (5th Cir. 1995); Lakedreams v.
Taylor, 932 F.2d 1103, 1108 n.10 (5th Cir. 1991).
Even if the
certificate contains “any inaccurate information,” it satisfies the
registration
requirement,
unless
the
applicant
included
the
information with knowledge that it was inaccurate and the Register
7
of Copyrights would have refused registration had she known of the
inaccuracy.
17 U.S.C. § 411(b).
Section 411(b), which was added
in October 2008, also instructs courts to refer any case in which
such
inaccurate
information
is
alleged
to
the
Register
of
Copyrights for advice as to whether the information would have
caused the refusal of registration.
Id.
The presumption of validity afforded a registrant is not
irrebuttable, but it shifts the burden to the defendant to prove
invalidity.
Lenert,
1996
WL
595691,
at
*3;
Norma
Ribbon
&
Trimming, Inc., 51 F.3d at 47 (citing Lakedreams, 932 F.2d at 1108
n.10); Entm’t Research v. Genesis Creative Group, 122 F.3d 1211,
1217 (9th Cir. 1997); Masquerade Novelty, Inc. v. Unique Indus., 912
F.2d 663, 668 (3d Cir. 1990).
“The burden on the defendant to
rebut the presumption varies depending on the issue bearing on the
validity of the copyright.”
Id. at 668.
Fraud on the Copyright Office has long been held as a basis
for invalidating a registered copyright.
Inc.
v.
Richardson,
202
Fed.
App’x
See One Treasure Ltd.,
658,
660,
661
(5th
Cir.
2006)(unpublished)(noting that “[i]mmaterial, inadvertent errors in
an application for copyright registration do not jeopardize the
registration[’]s validity” but, on the other hand, intent to
defraud the Copyright Office might); Masquerade Novelty, Inc., 912
F.2d at 667 (holding that knowing misrepresentations that might
have led the Register of Copyrights to reject an application were
8
grounds for invalidating a copyright).
Whimsicality, Inc. v.
Rubie’s Costume Co., 891 F.2d 452, 455 (2d Cir. 1989)(noting that
the
presumption
would
fall
to
“proof
of
deliberate
misrepresentation”); Robison v. Cardiology Assocs., L.L.C., Civil
Action No. 05-1581, 2008 WL 294488, at *9 (W.D. La. Feb. 1,
2008)(stating that a defendant must prove fraud to overcome the
presumption of validity and that the burden is heavy).
In this
regard, Section 411(b) appears to be a codification of the approach
employed by the Fifth Circuit and other courts.
See 2-7 Nimmer on
Copyright, § 7.20 (stating that the statutory amendment “is well in
line with the construction of the [Copyright] Act prior to this
amendment”).
Fraud is not the only basis for invalidating a registered
copyright.
See Masquerade Novelty, Inc., 912 F.2d at 668-69.
“Where, for example, the issue is whether the copyrighted article
is ‘original,’ the presumption will not be overcome unless the
defendant offers proof that the plaintiff’s product was copied from
other works or similarly probative evidence as to originality.”
Id.; see also Norma Ribbon & Trimming, Inc., 51 F.3d at 47 (finding
that the evidence showed the copyrighted works “already existed in
the public domain” and, thus, the copyrights were invalid); R.
Ready Prods., Inc. v. Cantrell, 85 F. Supp.2d 672, 682 (S.D. Tex.
2000)(noting that a defendant must offer proof that the work was
copied from other works to successfully challenge the originality
9
of a registered work).
Copyrightability and compliance with
statutory formalities also may be challenged and, if shown to be
lacking,
can
copyright.
that
a
serve
as
bases
for
invalidating
a
registered
Cf. Masquerade Novelty, Inc., 912 F.2d at 669 (stating
defendant
need
not
introduce
evidence
to
challenge
copyrightability “but instead must show that the Copyright Office
erroneously
applied
the
copyright
laws”
in
the
registration
process).
B.
Defendant Failed to Overcome the Presumption of Copyright
Validity Accompanying Plaintiff’s Certificate of Registration
In
this
registration
case,
the
Copyright
certificate
Office
effective
issued
February
1,
Plaintiff
2010,
a
for
“www.reliabilitymall.com,” an unpublished, nondramatic literary
work.
In
December
supplementary
2012,
copyright
Plaintiff
registration
Web
Plaintiff
certificate
unpublished
a
collection
reliabilitymall.com
Page
of
for
of
webpages
website.
and
the
Collection.”22
“www.reliabilitymall.com
possesses
sought
The
was
granted
unpublished
Accordingly,
registration
for
constituting
registration
an
the
certificate
constitutes prima facie evidence of copyright validity.
Although Defendant incorrectly asserts that “Plaintiff’s works
are not registered,” the main thrust of Defendant’s motion is its
22
Doc. 69-4, Ex. D to Def.’s Mot. for Partial Summ. J., Certificate of
Supplementary Registration.
10
contention that “Plaintiff’s registration is invalid.”23 Defendant
points to the registration precondition for filing suit but ignores
Plaintiff’s compliance with this requirement. Defendant also fails
to mention its own burden to overcome the presumption of validity
that accompanies a registration certificate.
Instead, Defendant
simply argues that Plaintiff “improperly registered [his] publicly
available
websites
as
registration invalid.”25
unpublished
works,24
rendering
the
Defendant contends that Plaintiff made a
“legal error regarding the entire basis for [his] application.”26
Defendant specifically distinguishes its legal-error argument
from an allegation that the registration application contained
inaccurate information that would subject it to Section 411(b) and
a referral to the Register of Copyrights for review.
point, the court agrees with Defendant.
23
On that
Plaintiff’s supplementary
Doc. 69, Def.’s Mot. for Partial Summ. J.
24
A collection is eligible for registration as a single work if it
complies with the prescribed conditions set out in 37 C.F.R. § 202.3(b)(4). With
regard to unpublished collections, the regulation states:
(I) For the purpose of registration on a single application and
upon payment of a single registration fee, the following shall be
considered a single work:
. . . .
(B)
In the case of unpublished works: all copyrightable
elements that are otherwise recognizable as self-contained
works, and are combined in a single unpublished “collection.”
25
Doc. 80, Def.’s Reply in Support of its Mot. for Partial Summ. J.,
p. 4.
26
Doc. 87, Def.’s Supplemental Reply in Support of its Mot. for Partial
Summ. J., p. 2.
11
application27 did not contain erroneous facts or lack material
information.
Plaintiff notified the Copyright Office that he
individually created webpages for Defendant’s member businesses,
gave each a unique reliabilitymall.com uniform URL, posted each on
the
www.reliabilitymall.com
licensing fee for each.
website,
and
received
an
annual
Thus, the issue here is not a Section
411(b) matter of inaccurate information in the application.28
Defendant does not allege fraudulent intent, much less point
to any such evidence. Defendant argues that the relevant law, when
applied to Plaintiff’s websites results in a finding that the
27
Supplementary Copyright Registration is appropriate to correct or to
amplify information in an earlier registration. 37 C.F.R. § 201.5; see also 17
U.S.C. § 408(d); Compendium II:
Copyright Office Practices, § 624.01(f);
Copyright Office, Circular 8: Supplementary Copyright Registration, p. 1
(2011)(available at www.copyrightcompendium.com).
Amplification includes
“[e]xplanations that clarify information given in the basic registration.”
Copyright Office, Circular 8: Supplementary Copyright Registration, p. 2 (2011).
The Copyright Office, after review of the application for supplementary
registration, will assign a new registration number and will issue a certificate
of supplementary registration. See Copyright Office, Circular 8: Supplementary
Copyright Registration, p. 2 (2011). The supplementary registration does not
supersede but, rather, augments the original registration. 17 U.S.C. § 408(d);
see also L.A. Printex Indus. v. Aeropostale, Inc., 676 F.3d 841, 853 (9th Cir.
2012).
28
Even if Defendant had alleged that identifying the websites as
unpublished was a matter of inaccurate information, rather than a legal error,
the court would find no need to request the advice of the Register of Copyrights
as to whether knowledge of that information would have caused her to refuse
registration because the Copyright Office issued a supplementary registration
after reviewing all of the underlying facts necessary to the determination. See
L.A. Printex Indus., 676 F.3d at 853 (“[The Copyright Offices’s] decision to
[issue a certificate of supplementary registration] after it was told of the .
. . prior publication shows that the error was not one that ‘if known, would have
caused the Register of Copyrights to refuse registration’”)(quoting 17 U.S.C. §
411(b)(1)(B)); Interplan Architects, Inc. v. C.L. Thomas, Inc., Civil Action No.
4:08-cv-03181, 2010 WL 4366990, at *28 (S.D. Tex. Oct. 27, 2010)(“The Copyright
Office’s decision to issue a certificate of registration . . . once it became
aware that preexisting material did exist shows that the Copyright Office would
not have rejected the copyright registration applications if this information had
been known to them at the time of Plaintiff’s initial copyright application.”).
12
websites
were
published.
Defendant
points
to
two
facts
as
material, either one of which Defendant argues is a sufficient
basis for finding publication:
1) Plaintiff uploaded the webpages
to the internet at reliabilitymall.com; and 2) Plaintiff “sold
and/or licensed” the webpages to Defendant (and its members).29
1.
Uploading webpages to the internet does not constitute
publication as a matter of copyright law
Although it does not define “published,” the Copyright Act
defines
“publication”
as
“the
distribution
of
copies
or
phonorecords of a work to the public by sale or other transfer of
ownership, or by rental, lease, or lending.”
17 U.S.C. § 101.
The
statutory definition offers further guidance: “The offering to
distribute copies or phonorecords to a group of persons for
purposes of further distribution, public performance, or public
display, constitutes publication.
A public performance or display
of a work does not of itself constitute publication.” Id.
Neither
the Copyright Act nor its implementing regulations30 explain the
application of this definition to internet works.
See Copyright
Office, Circular 66: Copyright Registration for Online Works, p. 3
(2009)
29
(stating
that
the
definition
of
“publication”
under
Doc. 69, Def.’s Mot. for Partial Summ. J., p. 9.
30
Oddly enough, 37 C.F.R. § 202.3, which details the copyright
registration parameters and application process, adopts for that regulation an
exclusive list of terms from the definitional provision of the Copyright Act that
does not include the term “publication.” See 37 C.F.R. § 202.3(a)(2). The court
is unsure of the meaning of the omission and finds no legal authority suggesting
that “published” under 37 C.F.R. § 202.3(b)(4) has a meaning unrelated to that
of “publication” under the Copyright Act.
13
copyright
law
“does
not
specifically
address
online
transmission”).31
Defendant presents an appealing argument in favor of finding
that Plaintiff published his websites by uploading them to the
internet.
And a variety of cases grappling with the issue tend to
support Defendant’s position.
But two legal constructs stand in
the
on
way
of
copyright,
summary
the
prima
judgment
facie
the
validity
presumption
and
of
Plaintiff’s
deference
to
the
Copyright Office.
The court first surveys case law that addresses whether a work
on the internet has been published. The parties directed the court
to no case law within the Fifth Circuit that directly addressed
this issue, and the court found none.
The only cases that are
similar enough to be helpful were heard in district courts in other
circuits.
In Getaped.com, Inc. v. Cangemi, 188 F. Supp.2d 398, 402
(S.D.N.Y. 2002), the district judge found that a website, similar
to photographs, music files, or software, was published when posted
on the internet.
The court stated:
By accessing a webpage, the user not only views the page
but can also view–-and copy–-the code used to create it.
In other words, merely by accessing a webpage, an
Internet user acquires the ability to make a copy of that
webpage, a copy that is, in fact, indistinguishable in
every part from the original.
Consequently, when a
31
The Copyright Office’s
http://www.copyright.gov/circs.
circulars
14
are
available
online
at
website goes live, the creator loses the ability to
control either duplication or further distribution of his
or her work.
Id.32
A 2006 opinion out of the same court stated that, assuming
that the internet posting of a digital file of a show performance
constituted distribution, it lacked the element of commercial
exploitation required for publication.
Einhorn v. Mergatroyd
Prods., 426 F. Supp.2d 189, 197 (S.D.N.Y. 2006).
In a more recent
opinion, the same district court stated that posting images on a
website was not publication.
Civ.
2481(JSR),
2010
2010)(unpublished).
WL
McLaren v. Chico’s FAS, Inc., No. 10
4615772,
at
*1
(S.D.N.Y.
Nov.
9,
In 2009, another district court avoided the
issue, finding it to be “unsettled” and unnecessary to that court’s
ruling.
Moberg v. 33T LLC, 666 F. Supp.2d 415, 422 (D. Del. 2009).
The Northern District of California made a passing remark in
a case dealing with the jurisdictional effect of application for
registration that reflects the view that making a website available
to the public on the internet was publishing it. See Sleep Science
Partners v. Lieberman, No. 09-04200 CW, 2010 WL 1881770, at *6
(N.D. Cal. May 10, 2010)(unpublished).
32
The Southern District of
The Getaped.com, Inc. case has received a lot of attention, not all
of which has been favorable. For example, one group of scholars stated, “The
holding in Getaped is difficult to reconcile with the principle that a public
display of a work is not a publication and may be an example of bad facts making
bad law.” Bruce P. Keller, et al., Copyright Law A Practitioner’s Guide, § 6:1.2
n.94 (2010). They emphasized that publication under the Copyright Act occurs,
not when a work is publically viewable, but when the work is “reproduced in
multiple copies that in turn are sold or offered for sale to the public.” Id.
at § 6:1.2.
15
Florida determined that the creator of a music file published the
file when he posted it on the internet because it could be
downloaded and copied by members of the public. See Kernal Records
Oy v. Mosley,794 F. Supp.2d 1355, 1364 (S.D. Fla. 2011).
Citing
Getaped.com, Inc., the Eastern District of Arkansas found that
photographs
that
were
accessible
online
download them freely were published.
to
others
who
could
William Wade Waller Co. v.
Nexstar Broad., Inc., No. 4-10-CV-00764 GTE, 2011 WL 2648584, at *2
(E.D. Ark. July 6, 2011).
Without discussion or explanation,
another district court stated that the defendant “published a YouTube video of a musical work.”
Erickson v. Blake, 839 F. Supp.2d
1132, 1134 (D. Or. 2012).
Although the current trend appears to favor finding works
posted on the internet to be published, the reasons for finding
publication varies from case to case and is fact dependent.
See,
e.g., Kernal Records Oy, 794 F. Supp.2d at 1364 n.7 (suggesting
that the court’s decision hinged on the particular facts before
it);
Thomas
F.
Cotter,
Toward
a
Functional
Definition
of
Publication in Copyright Law, 92 Minn. L. Rev. 1724, 1768-70
(2008)(opining
that
whether
an
internet
transmission
is
a
publication depends on whether the facts indicate that the website
users were authorized to make copies, i.e., whether a distribution
occurred).
Absent binding law or even a clear consensus in case
law directly related to the posting of a website online, the court
16
is not inclined to negate the presumption of validity by finding,
as a matter of law, that Plaintiff distributed copies of the
websites when he uploaded them to the internet.
Perhaps because the courts are not unified on the issue and
neither the Copyright Act nor the regulations have addressed
internet works, the Copyright Office continues its “long-standing
practice” to “ask[] the applicant, who knows the facts surrounding
distribution of copies of a work, to determine whether the work is
published or not.”
Copyright Office, Circular 66: Copyright
Registration for Online Works, p. 3; see also Compendium II:
Copyright Office Practices, § 904(1) (stating that the Copyright
Office usually does not attempt to decide whether publication has
occurred, leaving the decision to the applicant).
hand,
the
Copyright
Office
will
not
register
On the other
the
work
as
unpublished if the supporting statement of facts clearly shows that
publication
has
occurred.
Compendium
II:
Copyright
Office
Practices, § 904(5).33
The Copyright Office’s “policy statements, agency manuals, and
enforcement guidelines” do not carry “the force of law,” but they
are entitled to some deference given the “specialized experience
and broader investigations and information” of the agency.
See
Clackamas Gastroenterology Assocs., P.C. v. Wells, 538 U.S. 440,
33
The Copyright Office’s
www.copyrightcompendium.com.
Compendium
17
II
is
available
online
at
449 n.9 (2003)(quoting Christensen v. Harris Cnty., 529 U.S. 576,
587
(2000))(referring
to
the
Equal
Employment
Opportunity
Commission’s Compliance Manual); Skidmore v. Swift & Co., 323 U.S.
134,
140
(1944)(finding
an
agency
administrator’s
rulings
to
“constitute a body of experience and informed judgment to which
courts and litigants may properly resort for guidance.” One of the
Copyright
Office’s
“primary
responsibilities
is
to
examine
applications to register copyright claims to determine whether they
satisfy the requirements of the copyright law.” Olem Shoe Corp. v.
Wash. Shoe Co., Case No. 1:09-cv-23494 (S.D. Fla. Oct. 14, 2010),
Doc. 209, Resp. of the Register of Copyrights to Request Pursuant
to 17 U.S.C. § 411(b)(2).
Based on this expertise in interpreting
and applying the registration requirements, the court finds that
the Copyright Office’s decision to issue Plaintiff a supplemental
registration
certificate
for
an
unpublished
collection
to
be
persuasive.34
2.
One nonbinding, distinguishable opinion on license
provides insufficient legal support to override the
presumption of validity under these circumstances
The definition of “publication,” as discussed above, includes
public distribution of copies of a work only in cases of “sale or
other transfer of ownership, or by rental, lease, or lending.”
17
34
A determination that a live website is necessarily published would
have wide-ranging effects on the rights of authors and users, including copyright
duration, country of publication, time limits, deposit requirements with the
Library of Congress, and fair use. See Cotter, supra, at 1728-51, 1788.
18
U.S.C. § 101.
This includes the offer to distribute copies to a
group for further distribution.
Id.
Relying on a district court case out of Southern District of
New York, Defendant argues that Plaintiff “sold and/or licensed”
In McLaren, the case
the webpages to Defendant and its members.
cited by Defendant, the plaintiff received a copyright registration
certificate
for
a
published
collection
of
mannequin
designs.
McLaren, 2010 WL 4615772, at *1. In her application, the plaintiff
represented that she had created and first published the collection
in 2000.
Id.
She conceded before the court, however, that she had
published certain ones of the collection design illustrations prior
to publication of the collection as a whole.
See id. at *2.
Two
years
the
had
prior
licensed
to
some
publishing
of
the
the
collection,
collection
designs
to
plaintiff
a
mannequin
manufacturer, including the design allegedly infringed.
**1, 2.
Id. at
The plaintiff argued that prior publication of certain of
the designs did not preclude the entire collection from qualifying
as a single work.
Id. at *2.
The court agreed with the defendant that “[t]he most natural
reading of the regulation’s requirement that the copyrightable
works form a ‘single unit of publication’ is that the works must be
first published together to qualify as such.”
Although there
appeared to be no debate whether the plaintiff had previously
published a portion of the designs in the collection, the court
19
noted that a prior licensing agreement covering certain designs,
from which the licensee produced and sold mannequins, amounted to
publication of those designs.
Id. at *3.
McLaren carries little weight with this court because its
focus
is
on
the
second
part
of
the
publication
definition,
regarding the transfer of ownership or the renting, leasing, or
lending of a work, not on the public distribution aspect.
This
case differs from McLaren, because Plaintiff did not license the
websites to Defendant so that it could produce and sell them.
In
McLaren, there was no question as to distribution to the public.35
According to the definition of “publication,” the sale, rental,
lease, or lending of a work would not suffice without the actual
distribution of copies to the public.
See 17 U.S.C. § 101.
Accordingly, the court finds that regardless of the licensing
arrangement between Plaintiff and Defendant, the court cannot hold,
as a matter of law, that the webpages were published unless public
distribution
occurred.
The
court’s
finding
with
regard
to
Defendant’s failure to prove as a matter of law that posting the
webpages
on
the
reliabilitymall.com
website
constituted
a
distribution at all, rendering the issue of selling or licensing
immaterial.
Defendant has not shown as a matter of law that Plaintiff’s
35
As mentioned in the prior section of this opinion, the court notes
again that the McLaren court flatly held that posting the images on a website
“would not in any event suffice to plead ‘publication.’” See McLaren, 2010 WL
4615772, at *4.
20
characterization of the website collection as unpublished was an
error.
Defendant has failed to meet its burden to rebut the
presumption of validity as to Plaintiff’s copyright.
IV.
Conclusion
Based on the foregoing, the court DENIES Defendant’s Motion
for Partial Summary Judgment.
SIGNED in Houston, Texas, this 15th day of August, 2011.
21
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