Cowan DeBaets Abrahams & Sheppard, LLP by Mikaela Gross and Nancy Wolff
For many copyright owners, especially those attempting to register works of visual arts, determining whether a work is published or unpublished for registration purposes is one of the more challenging issues and an impediment to registration. The District Court of the Southern District of New York, in Archie MD, Inc. v. Elsevier, Inc., (No. 16-CV-6614 (JSR), 2017 WL 3601180 (S.D.N.Y. Aug. 20, 2017)) recently clarified the standard by which a copyright registration may be considered valid despite containing inaccurate information.
In 2005, Archie MD, Inc. entered into an Animation License Agreement (âALAâ) with the publisher Elsevier, Inc., under which Elsevier would license Archieâs library of 3-D medical animations for use in its various publications. About two weeks after entering into the ALA, and after Archie had delivered the works to Elsevier, Archie submitted a single copyright registration application for a group of unpublished works. This registration included the work at issue in this case, an animation entitled âCell Differentiation.â The Copyright Office eventually registered the group of works on August 15, 2005.
In 2014, Archie gave Elsevier notice that it did not intend to renew the ALA, and the ALA expired on July 1, 2015. Archie subsequently file a copyright infringement action against Elsevier, alleging that after the expiration date, Elsevier continued to use hundreds previously licensed animations under the ALA and created unauthorized derivative works.
Both parties filed motions for summary judgment, and the SDNY granted defendant Elsevierâs motion as to all but two of Elsevierâs new animations, on the grounds that Elsevierâs continued use of previously licensed animations did not constitute unauthorized use under the ALA and most of the new animations by Elsevier were not substantially similar to Archieâs animations. As to the remaining claims based on the âCell Differentiationâ animation, Elsevier contended that Archieâs copyright registration in unpublished works was invalid because the work was in fact published, and as a result, the court should dismiss Archieâs claim in its entirety. The court denied Elsevierâs motion for summary judgement as to âCell Differentiationâ on the basis that although the registration for âCell Differentiationâ contained an inaccuracy (namely that the work was unpublished, when it in fact was), this was not fatal to the registration under 17 U.S.C. Â§ 411(b)(1).
Section 411(b)(1) of the U.S. Copyright Act explains that a certificate of registration issued by the Copyright Office satisfies the registration prerequisite for filing a copyright infringement action regardless of the existence of inaccurate information in the certificate âunlessâ (A) the inaccurate information was included on the application for copyright registration with knowledge that it was inaccurate; and (B) the inaccuracy of the information, if known, would have caused the Register of Copyrights to refuse registration.â To determine whether Archieâs registration failed to satisfy this prerequisite, the court had to answer two questions: first, whether or not âCell Differentiationâ was published or unpublished, and second, if it was published, whether this inaccuracy on the certificate of registration was fatal to the registrationâs validity.
As to the first question, the court held that âCell Differentiationâ was in fact published when Archie licensed and delivered the file to Elsevier. Reasoning that Archieâs delivery of the âCell Differentiationâ digital file pursuant to worldwide license to, among other things, distribute âCell Differentiationâ to the public, satisfies the Copyright Actâs definition of publication under 17 U.S.C. Â§ 101 because it constitutes an âoffering to distribute copies . . . to a group of persons for purposes of further distribution.â That Elsevier had not yet made any further distributions of âCell Differentiationâ at the time the copyright registration application was filed was irrelevant, because the licensing and delivery of the files was itself an offering.
Because the certificate of registration listed âCell Differentiationâ as unpublished, the court turned to the statute to answer the second question. If an applicant knew its application contained inaccurate information, and if the Register of Copyrights would have refused registration had she known of this inaccurate information, then a subsequent registration certificate is invalid for purposes of filing a copyright infringement action. 17 U.S.C. Â§ 411(b)(2) requires that when an inaccuracy on a certification of registration is discovered, a court must ask the Register of Copyrights âwhether the inaccurate information, if known, would have caused the Register of Copyrights to refuse registration.â The Register advised the court that she would have denied the application had she known of the inaccuracy in labeling âCell Differentiationâ unpublished. The key issue was whether Archie knew of the inaccuracy. Because the question of whether licensing a work constitutes publication was âan unsettled legal question at the timeâ Archie filed its copyright registration application in 2005, the court reasoned that Archie did not know of the inaccuracy. As a result Archi was able to proceed on its copyright claim for the work âCell Differentiationâ.
Publication remains a thorn in copyright ownerâs side. While the plaintiff in this case was not considered to have knowledge that its works were published at the time of registration, those filing registrations after the later cases clarifying what is published will no longer have the benefit of this uncertainty. Because the Copyright Office would deny registration of an application with inaccurate information as to the worksâ publication status, it is highly recommended that creators register works of visual art before any licensing agreements are signed or files are delivered for further distribution. Otherwise, published works, if photographs, can be registered by the photographer under a group registration of photographs application, but published and unpublished works are still required to be filed separately. Until this requirement is revised, visual artists will continue to face impediments to successful and effortless copyright registration.