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The Court of Appeals for the Fourth Circuit Upholds Automated Database Copyright Registrations Commonly Used by Stock Image Agencies

In an important turnaround from a string of lower court cases finding that the collective copyright registration method used by many stock image agencies failed to register the individual works included in the registration, the Court of Appeals for the Fourth Circuit has held that such registrations do indeed provide valid registration for each individual work in the compilation in Metropolitan Regional Information Systems, Inc. v. American Home Realty Network, Inc (“MRIS v. AHRN”).[1]

The parties in MRIS v. AHRN are competitors in the online real estate listing business.  MRIS provides a fee-based “multiple listing service” to real estate brokers and agents.  MRIS sued AHRN for copyright infringement for displaying MRIS’s property listings and related content on AHRN’s website without authorization, including photographs that were assigned to MRIS by its subscribers.  The trial court granted MRIS’s motion for a preliminary injunction.  AHRN appealed the decision on the grounds that MRIS’s copyright registrations were defective in validly registering the component works included in the registrations and that its copyright assignment agreements were also invalid.[2]

MRIS submitted quarterly copyright registrations to the Copyright Office that included the images published in its online database.  In doing so, MRIS utilized the registration procedures for automated databases, which are also used by many stock image agencies to simultaneously register large numbers of images assigned by multiple artists.[3]  Based on a string of decisions that have become familiar to stock agencies and their adversaries, namely Muench, Bean and Alaska Stock, AHRN asserted that the registrations did not extend to the individual works because they failed to include the information required under Section 409 of the Copyright Act for each image.[4]

The Fourth Circuit emphatically rejected AHRN’s argument.  It held that Section 409 is “ambiguous at best” as applied to registrations of collective works when the registrant has acquired copyrights in the individual component works.[5]  The Court noted that pursuant to Section 408(c) of the Act, the Copyright Office has promulgated regulations that allow authors of automated databases (often assignees of multiple works) to file single applications covering multiple works so long as it is the same owner and the works are similar in content.[6]  In concluding that the individual works within MRIS’s collective registrations were properly registered, the Fourth Circuit emphasized the Copyright Office’s desire to reverse the cases rejecting this method of registration, as reflected in amicus briefs submitted by the Department of Justice in the pending Bean and Alaska Stock appeals.[7]

In doing so, the Fourth Circuit deferred to the Copyright Office’s interpretation of the Act in allowing (and encouraging) this method of registration and reasoned that copyright owners should not be punished for following the Copyright Office’s regulations.  As noted by the Court, “[a]dding impediments to automated database authors’ attempts to register their own component works conflicts with the general purpose of Section 409 to encourage prompt registration … and thwarts the specific goal embodied in Section 408 of easing the burden on group registrations.”[8]  The Court further held that changes made in 2012 to the regulations for automated databases requiring more detailed information about individual works within the registration and do not apply retroactively to pre-2012 registrations.[9]

This is a significant victory for registrants who relied on the Copyright Office’s instructions to simultaneously register multiple works assigned by different artists – in particular, stock image agencies.  MRIS v. AHRN is the first appellate court decision to squarely address this issue and it will be interesting to see if the Ninth Circuit agrees with their colleagues in the Fourth Circuit in the currently pending appeals addressing the same issue (Alaska Stock and Bean).  If so, it should make the landscape much more difficult for infringers who attempt to avoid liability by alleging that the copyright registrations used by image libraries are defective.

As an important side note, the Court also confirmed that copyright can be assigned by electronic means through clicking assent to Terms of Use that assign copyright in submitted images.[10]  Of particular importance to parties to copyright assignment agreements, the Court noted that primary purpose of the writing requirement for copyright assignments “was intended to resolve disputes between owners and alleged transferees, and was not intended to operate for the benefit of a third-party infringer when there is no dispute between the owner and transferee.”[11]  This language strongly suggests that infringers may have a difficult time challenging copyright assignments if there is no dispute between the assignor and assignee of copyright, which is also helpful for image libraries asserting copyright claims based on assignment agreements with individual artists.

 



[1] Metropolitan Regional Information Systems, Inc. v. American Home Realty Network, Inc., Case No. 12-2102 (4th Cir., July 17, 2013).

[2] See id. at 3-8.

[3] See id. at 5.

[4] See id. at 16.

[5] Id. at 14.

[6] Id. at 15-16.

[7] See id. at 16-19.

[8] Id. at 19 (citations omitted).

[9] See id. at 19-20.

[10] See id. at 21-29.

[11] Id. at 23 (quoting Kindergartners Count, Inc. v. Demoulin, 249 F. Supp. 2d 1214, 1221 n. 22 (D. Kan. 2003)).

About the Author
Dan Pollack is a lawyer based in Toronto, Canada who primarily focuses on copyright and intellectual property law, helping creators such as photographers, musicians and writers protect and gain value from their work. Dan also provides legal advice relating to entertainment and media law, licensing, contracts, commercial litigation, privacy, marketing, social media and general corporate law. Dan is admitted to practice in Ontario and California.

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