Copyright law - Southern District of Texas still has dial-up and holds uploaded webpages not published or accessible.

Author:Turner, R. Brice
Position:Case note

Copyright Law--Southern District of Texas Still Has Dial-Up and Holds Uploaded Webpages Not Published or Accessible--Rogers v. Better Business Bureau of Metropolitan Houston, Inc., 887 F. Supp. 2d 722 (S.D. Tex. 2012)

In order to bring a copyright infringement suit before a court, the work must first have been registered with the United States Copyright Office (Copyright Office). (1) In addition to permitting copyright infringement actions, a copyright's registration "constitute[s] prima facie evidence of the validity of the copyright." (2) The certificate of registration is usually held valid unless a defendant can prove that the claimant presented inaccurate information to the Copyright Office with the intent to commit fraud. (3) In Rogers v. Better Business Bureau of Metropolitan Houston, Inc.,4 the United States District Court for the Southern District of Texas analyzed whether uploading webpages to the internet constituted "publication" under copyright law, an act that would invalidate a certificate of copyright registration covering an unpublished collection of webpages. (5) Rulings from district courts in other circuits regarding whether uploading a work constitutes publication were examined, but ultimately the Rogers court deviated from the trend of other courts and declined to find the webpages published as a matter of law by deferring to the decisions made by the author and Copyright Office. (6)

On December 24, 2001, the defendant contracted with the plaintiff to create webpages for the defendant's member businesses. (7) The contract was for a one-year term and automatically renewed afterwards on a month-to-month basis with the defendant, who passed on the expense of the plaintiff's creation and maintenance fees to its member businesses. (8) Between 2001 and 2009, the plaintiff created these webpages for the defendant with each webpage being hosted and displayed at www.reliabilitymall.com--owned by the plaintiff--in exchange for an annual licensing fee. (9) In early 2010, the plaintiff applied for a certificate of registration from the Copyright Office for the webpages of www.reliabilitymall.com and registered it as an unpublished, nondramatic literary work; the certificate issued on January 31, 2010. (10) In October 2010, the plaintiff filed suit against the defendant for copyright infringement, claiming the defendant's continued use of the webpages after the contract terminated infringed on his copyright. (11)

Two days after filing suit, the plaintiff applied for supplementary registration for the webpages created. (12) In this supplemental registration, the plaintiff cited reasons to support his argument that the webpages were unpublished, including:

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. (13) The Copyright Office granted the supplemental registration and the defendant later filed for summary judgment on the issue of copyright infringement. (14) In its motion for summary judgment, the defendant argued that the plaintiff's claim of copyright protection on the webpages was invalid as a matter of law because uploading webpages to the internet constituted publication. (15)

Under the power of the Intellectual Property Clause in Article I of the U.S. Constitution, Congress passed the first Copyright Act in 1790 (1790 Act), which Congress most recently amended in 1998 (current Copyright Act) to extend the protection period of copyrights. (16) Congress originally passed the 1790 Act with the intent to stimulate education through narrow protection for an author's maps, charts, and books only. (17) Congress has amended the 1790 Act over the years by expanding the period of time a copyright is protected, increasing the types of works protected under the statute to keep up with new technologies, and relaxing the formalities to which a potential rights holder must adhere to benefit from protection under the current Copyright Act. (18) Under the current Copyright Act, authors are granted a copyright for their works that fall within certain enumerated categories if the works are original and "fixed in any tangible medium of expression." (19) Congress, however, never intended to have all works protected under copyright laws; instead, the intent was to protect the expression of the author and not the facts and ideas presented in the work. (20) Copyright protection also does not extend to works that are functional; the current Copyright Act states, "the design of ... useful article[s] ... shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article." (21) The expression of an author is, therefore, protected under copyright law while that expression's functionality lies within patent law's protection. (22)

In order for rights holders to maximize the protection of their copyrights, they must register or preregister the copyright under [section] 411(a) of the current copyright act before they may take civil action in court. (23) The Supreme Court ruled in Reed Elsevier, Inc. v. Muchnick (24) that a valid copyright registration is a statutory claims-processing requirement and the defendant must waive the requirement or the registrations must be completed before a suit for the infringement of the exclusive rights a copyright holder has under [section] 106 of the current Copyright Act. (25) Having a valid registration for a copyright also presents "prima facie evidence of the validity of the copyright" to courts, which shifts the burden of proving invalidity of the copyright to the defendant in an infringement case. (26) In order for rights holders to attain a valid copyright registration, they must send a form to the Copyright Office detailing the title, authors, creation, publication status, and derivative works, along with the filing fee, which is then reviewed by the Copyright Office to determine if the work submitted is copyrightable. (27) For a defendant to show a registration is invalid, the defendant must demonstrate that the plaintiff intended to commit fraud when filing the registration and that if the Copyright Office had been alerted to the false information the registration would not have been granted. (28)

One affirmative defense against a copyright infringement claim is fair use, which is provided under [section] 107 of the current Copyright Act. (29) Section 107 lays out uses of copyrighted materials by certain parties that will not constitute infringement, including criticism, comment, news reporting, teaching, scholarship, or research. (30) When using a defense of fair use against a claim of infringement of an unpublished work, courts have taken the position that while a work being unpublished is not itself a reason to negate a fair-use defense, it is a key factor in the analysis. (31) When dealing with a fair-use defense, courts have had to adapt copyright law due to ever-changing technology; in particular, courts are still determining whether uploading a work to the internet constitutes publication. (32) Currently, courts are split on this matter, but the majority have determined that the issue of internet uploads as publication should be decided on a case-by-case basis. (33) For example, the District Court for the Southern District of Texas first looked at the language of the current Copyright Act to determine the effect that a registered copyright would have. (34) The Rogers court stated that the registration would be invalid because of inaccurate information only if the applicant submitted the inaccurate information knowing the Copyright Office would refuse registration if the correct information had been provided. (35) Next, the court said that even though a copyright registration does provide a presumption of copyright validity, the presumption is rebuttable if the defense can show that the applicant committed fraud when submitting the application. (36) The defense's argument, claiming the registration was invalid because of inaccuracy regarding the publication status of the webpages, was not persuasive enough to rebut the presumption of validity. (37) The court agreed that if the webpages had been registered using inaccurate information, this would be grounds for the Copyright Office to review the registration under [section] 411(b) of the current Copyright Act. (38)

The court then moved to the defense's second argument that the webpages were published as a matter of law. (39) First, the court looked to the language of the current Copyright Act, which 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" or "[t]he offering to distribute copies or phonorecords to a group of persons for purposes of further distribution, public performance, or public display." (40) Next, the court analyzed various district court cases to determine if there was a consensus on the issue...

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