The Importance of Being Earnest: Obtaining Copyright Registrations for 20th Century U.s. and Non-u.s. Photo Collections

• Jurisdiction: United States,Federal
• Author: GREG VlCTOROFF
• Publication year: 2014
• Citation: Vol. 39 No. 1

The Importance of Being Earnest: Obtaining Copyright Registrations for 20th Century U.S. and Non-U.S. Photo Collections

GREG VlCTOROFF

Greg Victoroff & Associates

In Burrow-Giles Lithographic Company v. Napoleon Sarony, the U.S. Supreme Court held it was within the constitutional power of Congress to extend copyright protection to photographs, specifically a photographic portrait of the infamous Victorian playwright, Oscar Wilde. Burrow-Giles argued photography was merely a mechanical process rather than an art, and could not embody an author's "idea." The Court accepted that this may be true of "ordinary" photographs, but this was not in the case of Sarony's image of Wilde. Sarony posed Wilde, suggested his expression and selected his costume, the background, and accessories to create a particular composition. Sarony's control over the subject matter showed that he was the "author" of "an original work of art" over which the Constitution intended Congress to grant exclusive rights.

Today, photo collections by non-U.S. photographers such as Napoleon Sarony, but also works by photographic luminaries such as Henri Cartier-Bresson, Helmut Newton, Man Ray, and others, enjoy enhanced legal protection against infringements in the U.S. because they have certificates of copyright registration issued by the U.S. Copyright Office. This article describes how to ensure that your client's photographs enjoy maximum legal protection by providing a detailed guide to U.S. Copyright Office rules and regulations pertaining to registering copyrights in U.S. and non-U.S. photographs using hypothetical and real-world examples.

HYPOTHETICAL

Your firm has been retained to stop infringements of a priceless collection of world-renowned photographs comprised of both published and unpublished photographs by a deceased photographer having dual U. S. and Italian citizenship whose heirs reside in Monte Carlo, and whose foundation, a French corporation, is headquartered in Berlin, Germany where the collection is located. To make matters interesting, some photos were published before 1978 under the 1909 Copyright Act and some were published after 1977 under the 1976 Copyright Act. All photos were created and published prior to the U.S. joining the Berne Convention in 1989. Although no individual photo copyright was previously registered with the U.S. Copyright Office, serial copyright registrations were filed for several magazines simultaneously published in Paris, London, Rome and New York, embodying editorial and advertising uses of some of the photos. The Board of Directors of the deceased photographer's foundation has authorized your firm to do whatever is necessary to stop the U.S. infringements. After Digital Millennium Copyright Act (DMCA)¹ notices fail to have any effect, your firm is authorized to file lawsuits and obtain injunctions to stop the infringers.

In response to infringement notices, opposing counsel says that threats of litigation are bluffs, and requests copies of the certificates of U.S. copyright registration covering the photographs allegedly infringed, citing 17 U.S.C. § 411 as a mandatory pre-requisite to filing any lawsuit in U.S. district court. Your client asks for your advice. After reading about the benefits of registering copyrights for both U.S. and non-U.S. works, you advise your client that while registration may not be required to commence U.S. infringement litigation in many cases, statutory and practical advantages of registration make it a valuable and cost effective first step in the stewardship of the copyrights entrusted to the client by the photographer, and recommend that immediate steps should be taken to obtain U.S. copyright registrations protecting every photo in the collection.

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You advise that the fastest and most cost effective method of registering copyrights in photo collections is to register the photos as a group, or if first published as a single unit of publication, as a collection, or if first published in a newspaper or magazine, as a contribution to a serial. You explain that an expedited procedure is available at the U.S. Copyright Office by which, for a special handling fee, in certain cases copyright registrations can be processed and certificates issued in five working days rather than the usual nine to twelve months.² You next sort the non-U.S. photographs into the five categories outlined below to determine the appropriate method of registration.

BENEFITS OF REGISTERING COPYRIGHTS AND AFFIXING A COPYRIGHT NOTICE

Although not a prerequisite to copyright ownership, the formality of registering a copyright with the U.S. Copyright Office provides valuable legal benefits for United States Works³ including the right to commence lawsuits for copyright infringement and the right to recover attorneys' fees and costs and statutory damages if the infringement occurred after the effective date of the registration or within three months of the first publication of the work.

Additional legal advantages applying to both United States Works and non-U.S. works include:

• No Innocent Infringement Defense. 17 U.S.C. §§ 401(d) and 402(d) provide, that if a proper copyright notice appears on the copy to which an alleged infringer had access, no weight shall be given to a defense based on innocent infringement in mitigation of actual or statutory damages.
• Presumption of Ownership. 17 U.S.C. § 410(c) states that in any judicial proceedings the certificate of a registration issued before or within five years after first publication of the work shall constitute prima facie evidence of the validity of the copyright and of the facts stated in the copyright registration certificate.
• "Ticket to the Courthouse." 17 U.S.C. § 411(a) prohibits filing any lawsuit for infringement of the copyright in any United States Work until preregistration or registration of the copyright claim has been made. An important exception to the pre-lawsuit registration requirement exists for non-United States Works, discussed infra.
• Statutory Damages, Attorneys' Fees. 17 U.S.C. § 412(2) provides that no award of "statutory damages" (17 U.S.C. § 504) or attorney's fees shall be made for any infringement of copyright in an unpublished work commenced before the effective date of its registration or any infringement of copyright commenced after first publication of the work and before the effective date of its registration, unless such registration is made within three months after the first publication of the work.
• Avoidance of Orphan Works Treatment. An "orphan work" is an original work still protected within its term of copyright, but the author or copyright owner cannot be located by someone who wants to use the work and is seeking to contact the holder for permission. The best way to avoid works from becoming orphaned is to attach a copyright notice to all copies of an image, both physical affixation and electronic, by water marking, inserting of meta-data or by other means.⁴

REGISTERING COPYRIGHTS IN PHOTO COLLECTIONS COMPRISED OF UNITED STATES WORKS

There are three basic steps to registering copyrights with the U.S. Copyright Office: 1) completing and filing the copyright registration application ("Application"); 2) depositing the required number of the correct form of copies of the works being registered with the Copyright Office ("Deposit") discussed below; and 3) paying the applicable filing fee ("Fee").

Copyright Registration Application Requirements

Before beginning to complete the Application, counsel should know: 1) the name of each individual author (photographer) corresponding to 2) each individual title of each work in the collection, 3) the year in which any such author died, 4) the correct name of the copyright owner ("Claimant"), if different from the author, 5) the manner in which the copyright was transferred or otherwise acquired by the Claimant, 6) the date of first publication of each individual photo, and 7) whether a copyright notice ("Notice") was affixed to every photo when published and distributed.

The U.S. Copyright Office provides three different methods and forms for registering copyrights in photo collections:

1. Electronic filing and electronic deposit (Form eCO)
2. Electronic Filing with mailed deposit (Form CO)
3. Paper filing with mailed deposit (Form VA or Form TX for automated databases consisting of groups of published photographs)

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The following classes of works may be registered electronically with electronic deposit copies:

1. Unpublished works;
2. Works published only electronically;
3. Published works for which the deposit requirement is Identifying Material (ID)⁵
4. Published works for which special agreements require hard copy deposits to be sent separately to the Library of Congress.

All other classes of works may be registered via eCO (application and fee payment) but require depositing hard copies of the work(s) being registered. An application and payment may be submitted electronically in eCO. A shipping slip may be printed from the Copyright Office website to be attached to the hard copy(ies) of the work for delivery to the Copyright Office via mail/courier. The shipping slip includes the correct mailing address and zip code for the class of work(s) being registered. To avoid misrouting, the shipping slip should be attached directly to each work or set of works submitted.

To avoid damage to deposit material due to Capitol Hill security measures, the following items should be packaged in boxes rather than envelopes before mailing to the Copyright Office:

1. Electronic media such as audiocassettes, videocassettes, CDs and DVDs;
2. Microfilm;
3. Photographs;
4. Slick advertisements, color photocopies and other print items that are rubber- and vegetable-based;
5. CDs/DVDs packaged in standard full-sized jewel boxes are more likely to survive the mail radiation process than those packaged in slim-line case.

Great care should be taken in completing the copyright registration application. Notwithstanding the Copyright...