Category: Law & Policy

U.S. Copyright Formalities: Old Ideas in a Modern Age

In my post about Unicolors v. H&M, I tried to summarize a broader scope of issues than that the Supreme Court is likely to weigh in the case. The Court has agreed to resolve a narrow question: whether the Ninth Circuit erred by holding that the lower court was required to seek guidance from the Copyright Office “where there is no indicia of fraud or material error as to the work at issue….” And while it may be difficult for the Court to write that opinion without referring to the publication status of the works at issue, it seems unlikely that SCOTUS will say anything instructive about the underlying problem that we lack a unifying definition (or even a clear understanding) of “published” as a matter of copyright law.

Regardless of the eventual outcome in Unicolors, the difficulties this case highlights persist for many rightsholders—namely that the formalities required of American authors to secure enforceable protection of their copyrights are mired in a bog of historical precedent peculiar to the U.S. relative to comparable, copyright-rich nations. Although the United States is the leading producer of creative works by volume worldwide, it has often been a follower when it comes to modernizing copyright law and practice.

For instance, one of the most hotly contested aspects of the law—the duration of protection—is still portrayed in the blogosphere and corners of academia as an ever-expanding tide caused by major American media companies. But in truth, proposals that copyrights should last several decades after the author’s death was extant in European copyright doctrines, as a question of justice, no later than the mid-nineteenth century. The sixteen countries that first adopted the Berne Convention treaty in 1887 settled on a voluntary term of life of the author plus fifty years, which became mandatory under the terms of the convention in 1948, and was then extended by twenty years with formation of the European Union in the early 1990s.

Meanwhile, the reasons why the U.S. did not become a signatory to Berne for more than a century, finally joining in 1989, had little to do with philosophical opposition to its term lengths (the U.S. moved to the life plus fifty term in the 1976 Copyright Act) or certainly any reluctance to achieve parity in the trade of copyrighted works. It was American formalities which stood in the way and, so, abolishing or amending many of those formalities, in order to comport with Berne, was one of the major rationales for rewriting the copyright law beginning in the1960s and concluding with the Copyright Act of 1976.

Duration of protection was one subject that had to be addressed because the U.S. terms between 1790 and the current law—a fixed period with one optional renewal—was incompatible with Berne, which is why we now have a life-of-the-author-plus regime. Likewise, America’s original mandate to register a work and display a notice of copyright in order for the rights to vest in the author at all were unworkable formalities with Berne signatories who had no such rules.

To an extent, the current law embodies an incomplete break with formalities, which is why, for instance, American authors today are left to ponder the paradox that copyright attaches automatically to any U.S. work fixed after January 1, 1978 but that the rights are not enforceable through litigation without the formality of registration with the Copyright Office. And per the ruling in the Fourth Estate case (2019), legal action can only proceed after the Copyright Office has responded to the relevant application.

Registration is Something of an Anachronism

But as the Unicolors case emphasizes, it is the various rules and restrictions within the often-confusing registration process where history, statute, case law, and administrative practice have converged and calcified into a regime in need of further modernization. In fact, registration itself, while it may serve some useful purposes, actually derives from archaic practice in Anglo/American law whereby proto-copyright regimes of the sixteenth century in the London trade guild called The Stationers’ Company left traces of DNA in the U.S. Copyright Act of 1790.

Rather than register works with a trade organization—let alone one operated by the publishing industry—new American authors registered their works directly with the district courts in their home states until the Act of 1870 consolidated registration at the Library of Congress, a change instituted for the express purpose of growing the Library’s collection through the acquisition of deposit copies. But even the first Register of Copyrights, Thorvald Solberg, proposed abolishing mandatory registration during the drafting of the copyright act of 1909, arguing for a bill that, in his words:

… distinctly affirms that copyright is secured for all the writings of authors from the time of the making of their works and that copyright shall vest in the author of the work immediately upon its making and shall not depend upon the accomplishment of any conditions or formalities whatever.

So, the idea that copyright attaches at the moment of fixation, and that the law’s purpose is to secure a right that is held to exist absent formalities, hardly began with the drafting of the 1976 statutes. That quote of Solberg’s comes from a white paper written by Steven Tepp, (consultant and former senior counsel at the Copyright Office), which proposes abolishing the publication status from the registration process altogether. Written on behalf of the Professional Photographers Association (PPA), Tepp’s paper explains that although publication status is relevant in several ways in a lawsuit, it is not necessary for the Copyright Office to know or record that information at the time of registration. Tepp writes:

 From 1790 through 1977, first publication of a work was the signal act that extinguished state law (also known as common law) copyright and triggered the federal Copyright Act. Publication represented the author’s choice to distribute their work to the public: to forsake the privacy and absolute control over their work, as well as potentially perpetual copyright protection in exchange for the opportunity to exploit the work for economic gain.

The 1976 Act altered the bargain. State copyright protection was pre-empted and all works created since the 1976 Act took effect on January 1, 1978 are protected at the federal level from the moment of their creation by operation of law. Overnight, the copyright significance of publication diminished immeasurably.

Unpublished works were protected by common law copyright, and once an author chose to publish and avail himself of the federal protection, he was also required to meet all the formalities of registration, notice, etc. or risk losing protection under state and federal law. But as the categories of creative works grew well beyond the maps, charts, and books protected by the 1790 law, and the various ways to make works available expanded with technological development, the meaning of “published” naturally became detached from classical paradigms based on printing reproductions of works on paper. And the digital age has only further confused matters due to the myriad ways in which multiple parties might make works available, often without the original author’s knowledge.

Precedent That Used to Help Now a Difficulty

Most importantly, perhaps, is the uncertainty in the case law for creators—especially photographers who often register hundreds of images in group registrations—where the registration’s integrity depends upon a declaration that works in a group are either all published or all unpublished. Relevant in Unicolors is the allegation that the rightsholder registered published and unpublished works in the same group registration. And the argument that some works were unpublished turns on the likelihood that they fit the definition of “limited publication,” a judge-made doctrine originally intended to sustain justice for rightsholders. As Tepp writes:

The doctrine of limited publication has long been understood as a judicial attempt to mitigate the absolute loss of rights that could occur under the old formalities. Historically, distribution to a defined group for a limited purpose has been held to be limited publication, while distribution destined for the general public is a general publication.

So, here’s the nature of the problem revealed in Unicolors:  judicial precedent which originally prevented authors from losing their copyrights due to administrative technicalities could now serve to void Unicolors’s registration pursuant to its enforcement against H&M due to what amounts to administrative technicalities. And this despite the fact that H&M infringed one of the published works in the first place.

Hence, a central reason for a proposal like Tepp’s is that authors should not have to risk this kind of uncertainty for the sole purpose of providing the Copyright Office with information that is not germane to the registration of a work. As a follow up to this post, I am going to schedule a podcast interview with Steven Tepp for a more in-depth discussion about copyright formalities in U.S. law and how they create legal pitfalls, especially for independent and small creators.

Unicolors v. H&M Raises Some Thorny Issues for Copyright Owners

On June 1, the U.S. Supreme Court agreed to hear a case of a highly clerical nature, but one of particular interest to photographers and other visual artists who typically register multiple works in Group registrations with the Copyright Office. To reduce filing fees and provide some organizational structure to certain applications, the Copyright Office offers various types of Group registrations. In Unicolors’s case, it registered 31 designs in 2011 under a Group registration that allows individually copyrightable, “unpublished” works to be combined in a single application in instances where they will eventually be made publicly available on a specific date (i.e. “published”) as a unit.

An example of this type of “unit” registration presented by the Copyright Office is a board game, which may have pictorial, literary, and sculptural works that could be individually registered but which will be sold to the public as a bundle of works comprising a single unit as a game. But just to keep things lively, there are other Group registration options, some of which have been adopted since 2011, when Unicolors first registered its designs.

For instance, photographs (and only photographs) may be registered in Groups of up to 750 images under a single title (e.g. “Safari 2021”).* All photos in a Group registration must either be “published” or “unpublished,” but there is no requirement that the “unpublished” photographs anticipate a simultaneous publication date, and the “published” photographs are only required to share the same publication year. Confused yet? Stay tuned.

Enter Unicolors, Inc. v. H&M Hennes & Mauritz, L.P.

Unicolors makes original designs for use in textiles, and in 2015, a jury found that retailer H&M copied one of its designs and, thus, awarded Unicolors damages and legal fees for copyright infringement. On appeal to the Ninth Circuit, however, H&M argued that the relevant Group copyright registration should be invalidated because the Group comprising 31 designs, included 9 designs that Unicolors had “confined,” meaning that they were temporarily exclusive to certain customers. H&M argues, therefore, that Unicolors registered these 9 works in the Group knowing that they would not be “published” simultaneously with the other 22 designs.

The Ninth Circuit agreed with H&M. It reversed the jury decision and remanded with an order that the Register of Copyrights be consulted as to whether Unicolors’s error, if known at the time of application, would have caused the Copyright Office to deny registration for the Group filing. As a reminder to readers, under U.S. law, obtaining a timely response to an application from the USCO is a prerequisite for U.S. works in order for the copyright owner to bring an infringement action against a defendant.[1]

The Issues

Naturally, neither the Copyright Office nor the courts seek to invalidate copyright registrations for applicants who make honest mistakes or trivial errors. And in 2008, the ProIP Act reinforced this principle by amending the copyright law such that Section 411 now states that a certificate of registration may be valid, even if it contains inaccuracies, unless:

(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.

On that basis, and with concern for its constituencies, the American Society of Media Photographers (ASMP), joined by five other creators rights groups, filed a brief supporting the petition for a writ of certiorari with the Supreme Court, arguing that even though Unicolors knowingly filed a Group registration for “confined” and “unconfined” designs, this does not meet the standard intended by the statute. Here, the petitioners assert that an applicant must provide inaccurate information with the intent to deceive the Copyright Office in order for a court to invalidate a registration pursuant to a lawsuit.

Petitioners cite a circuit split (between the 9th and 11th Circuits) on this exact question and further argue that if the Court disagrees with the intent to deceive standard, this would disturb case law sounding in trademarks and patents. Thus, the Court granted cert on this one question, and it is a big bouncing ball to watch for copyright owners in this case. Even if the facts could ultimately show that Unicolors provided false information with the intent to deceive, the important issue is whether SCOTUS will agree that such intent must be demonstrated in order for a court to invalidate a copyright registration.

H&M argues that the intent to deceive (i.e. commit fraud) does not exist in a plain reading of Section 411 and, therefore, Unicolors’s conduct meets the standard for invalidating the registration (i.e. that it knowingly provided inaccurate information that would have caused the application to be rejected had the examiner been aware of the inaccuracy). But because that inaccuracy is alleged to be that the 9 “confined” works did not share the publication date with the other 22 works registered in the Group, there is an underlying complication afoot in this case—one that irritates a sore spot in copyright law—which is that we lack a unifying definition of “published” as a matter of law.

Although the 9 “confined” designs were apparently made available to exclusive customers on the same date that the 22 “unconfined” designs were made public, the Court could find that the “confined” designs constitute a “limited publication,” which would be synonymous with a finding that they are “unpublished” based on the relevant case law. That would satisfy H&M’s proposed standard for invalidating the effective date of protection, but it presumably would not meet the bar of intent to deceive, if the Court agrees that such intent must be present.

I will say that it seems farfetched to assume that Unicolors intentionally sought to deceive the Copyright Office in this instance just to save itself the $35 fee for filing a separate registration application for the 9 “confined” designs. More generally, if this type of error can invalidate the registration on all 31 designs, this implies a lot of uncertainty for other rightsholders. For instance, although the Group photograph registrations mentioned above are less restrictive than “unit” registrations with regard to publication dates, the photographer is barred from mixing “published” and “unpublished” works in a Group. And as mentioned, the meaning of “published” is not exactly a settled doctrine.

With independent creators like photographers so often filing Group applications by themselves, and inevitably making mistakes, one can see why the petitioners representing those constituencies want the Court to find that the standard for invalidation must meet the high bar of an intent to deceive. But more specifically, creators would be hard-pressed to find ten practitioners, legal scholars, or courts to agree upon a straightforward definition of “published” as a matter of law. If that’s the case for legal experts, how are authors filing their own registrations supposed to be sure whether a Group registration comprising a few hundred photos might contain a mix of published and unpublished works?

In a follow-up post, I will delve a little further into the specific challenges for photographers in particular, the policy implications of this case, the unsettled meaning of “published,” and some of the proposals being discussed to resolve these matters for rightsholders.

*NOTE: Thanks to attorney Leslie Burns for clarifying via Twitter: “…the old system for unpub photos was virtually unlimited number in a single reg and no titles for individual photos were required; the new GRUPH has the 750 limit but it does require titles for each photo.”

[1] In order to comply with the terms of the Berne Convention, foreign works need not be registered with the USCO in order for the rightsholder to file suit in U.S. courts.

Censorship in the ALI Restatement of Copyright Project?

Justice O’Connor, in Harper & Row v. Nation Enterprises (1985), called copyright “the engine of free expression.” This was not a novel idea. The Justice was merely summarizing a well-established relationship between an author’s copyrights and the freedom to express herself as she wishes. Freedom in artistic expression requires that the author have a degree of personal economic liberty, which obviates the need to appeal solely to state-run cultural institutions or to wealthy patrons, either of which may seek to censor or otherwise control creative expression. The American system, which grants any author a copyright and lets the market decide whether the work is desirable, has, in general, yielded a diverse bounty of creative works in which we see the speech right and copyright working in tandem.

Yet, despite the volume of empirical evidence that O’Connor’s summary is axiomatic, copyright skeptics, including the individuals who launched, and are leading, the ALI Restatement of Copyright Law, have grounded their skepticism partly on the belief that copyright is fundamentally at odds with the speech right. I have written enough posts taking issue with that assertion and will not repeat those arguments here. Instead, the purpose of this post is to call attention to hypocrisy. Because while the Reporters comprise those who so often claim to rescue speech from copyright, they are silencing dissent, even pretending it does not exist, among their own colleagues who’ve been working on the Copyright Restatement project.

On May 21, Register of Copyrights Shira Perlmutter wrote a letter to the ALI, announcing her resignation as an Adviser to the Restatement project, stating that in her new role as Register (since September 2020), it is no longer appropriate for her to be active in the project. But more importantly, Perlmutter reiterates key areas of concern that the Copyright Office has expressed with the Restatement since before her tenure as Register of Copyrights began. These are: 1) a lack of deference to the statutory text; 2) a lack of deference to the Copyright Office as the expert agency; and 3) a lack of transparency about the drafting and decision-making process. In short, the USCO questions the propriety, methodology, and process of the ALI’s first statutory Restatement project in its history. On the subject of the statutory text, Register Perlmutter states:

In the latest Tentative Draft, as in prior drafts, the “black letter” statement of the law at the beginning of each section sometimes quotes the applicable statutory provisions, but at other times rephrases them. In statutory interpretation, there is no substitute for the words of the statute itself. Rephrasing, however well-intentioned, inevitably introduces imprecision and interpretive choices. This is particularly true where the Restatement presents these statements as the law itself, not as interpretations of the law.

In essence, the Register of Copyrights is suggesting that the ALI is usurping and mislabeling the true “black letter” law—the Copyright Act. As I have described previously, the concept of “black letter” in Restatements developed as a method for restating common law. The ALI’s founders recognized the folly, indeed impropriety, of restating statutory text under the rubric of  “black letter” drafted by Reporters.[1]

A variation on this precise concern—the Restatement’s “failure to treat the text of the Copyright Act as blackletter rules”—was submitted as a proposed amendment to the Restatement, co-authored by Professors Shyamkrishna Balganesh, Jane Ginsburg, Peter S. Menell, and David Nimmer. (See full amendment text here.) For those not immersed in copyright law, these are some of the heaviest hitters in the game; they are scholars open to debate, but who should not be ignored. Nevertheless, the ALI intends to disregard their amendment, stating in an email to its authors that it will not even be considered because, “The ALI does not add to the drafts what various advisers or members think about different sections or the draft as a whole.”

In plain terms, key Advisers to the project—and the four named above are not the only ones—have repeatedly tried to emphasize the premise that embarking on a Restatement of a comprehensive federal statute requires a different approach than every other Restatement in ALI’s nearly one-hundred-year history. That approach should begin with the language in the statute and the legislative significance of every negotiated word in it. Not only has the ALI elected to ignore this advice, but it has apparently censored Advisers’ views on these fundamental questions, thereby confirming Register Perlmutter’s concerns about transparency.

ALI and the Reporters are not merely overriding dissent, they seem to want to pretend it doesn’t exist. For example, Professor Samuelson, who initiated the Restatement project, tweeted on 12/4/2019, “Five well respected scholars are the reporters and everything they say is closely reviewed by other experts, including judges.” This comment is consistent with what the scholars named above describe as ALI creating the appearance that a collective of high-octane experts is negotiating in good faith, while eliding the fact that many of those experts are dissenters.

In fact, I am told by the authors of the proposed amendment that one of the primary reasons for seeking its adoption is to stave off the perception that the mere presence of a diverse body of scholars, experts, and industry representatives (who serve as Advisers) means that the Restatement is being produced through a collaborative effort. On the contrary, their criticisms and others are apparently not being revealed to the full membership of the ALI, let alone to the public.

So, for those keeping score at home, follow the logic:  the folks who started the Copyright Restatement project are among those academics who assert that copyright must be weakened in deference to the speech right. Yet, in a process that is already dubious at inception and obfuscated for the general public by its arcane nature, the ALI and the Reporters seek to avoid acknowledging even the existence of opposition from many of the same colleagues whose credentials give the project the color of validity. Whether that meets the legal standard for compelled speech is for someone else to say, but it must feel that way to some of the Advisers.

[1] Am. Law Institute Report on Business Associations, 1924: “…it is obvious that the Restatement, if it deals with the subject [of statutory law] at all, must set forth the statutory provisions as Principles of Law or Comment.”