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Changes in Registration Forms Impact Remedies for Photographers, Illustrators and Free Lance Writers
© Cheryl Hodgson 2008 | Posted on October 23, 2008
After many years, the Copyright Office has issued new registration form CO and ECO which replace forms for works of visual arts formerly registered on Form VA. A new question on the form contains an unsuspecting trap. For the first time, a claimant must identify material contained in the work not owned by the claimant, and which is excluded from the claim to copyright. At first glance, this may seem meaningless. However, when read in the context of case law, owners of collective works, as well as the individual contributors could be in a bind when it comes to maintaining infringement actions and collecting damages and attorney’s fees.
Do not confuse copyright validity with registration that is required to secure remedies for infringement. A copyright may be valid without registration, but key legal remedies are lost. Without registration the incentive for an infringer to respond with “So sue me” increases dramatically. Two important legal decisions in 2001 are directly on point.
In 2001, the U.S. Supreme Court ruled that one notice in the name of the proprietor of the copyright in a periodical was sufficient to secure copyright in the underlying contributions owned by individual contributors. In Tasini, a copyright notice in the name of the NY Times protected the underlying articles, so that a lawsuit could be brought by the individual owners of the underlying works. However, unless the NY Times also owned the underlying contributions at the time of registration, its registration of the collective work would not secure rights to statutory damages and attorneys fees in the underlying works if infringed. The author of each individual work must also register or be left to sue at great cost and expense, with no hope of recovering statutory damages or attorney’s fees. Statutory damages are often critical in cases of unauthorized publications, since proof of actual damages is virtually impossible.
In another 2001 case, the author of an article contributed to Allure magazine unsuccessfully attempted to rely upon registration of the magazine made by the publisher to secure remedies in the individual article. The Second Circuit Court ruled “[i]if all rights in a constituent work have not been transferred to the claimant, a collective work registration will not apply to the constituent work. If, on the other hand, all rights have been transferred to the claimant, then the constituent work is included in the registration of the collective work.” Morris v. Business Concepts, Inc., 283 F 3d 502, 507 (2d Cir. 2001).
What if a photography agency owns photographs taken by full time employees, and also acquires rights to resell from free lance photographers all of which are posted in a “collective work” data base for licensing on line. The photos taken by full time employees of the agency are not in issue, since under the work for hire doctrine, the agency may claim copyright in both the collective work and the photos as author of the works. However, the agency may not claim copyright in the photographs taken by free lance photographers, and must list them on the new forms as being excluded from the claim to copyright.
How should the publishers and contributors deal with this conundrum?
Read Part Three: Short Term Transfers and Reassignments Can Insure Registration of all works contained in a Collective Work
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