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.