Can an Infringer Purchase a Retroactive License?

Many infringers attempt to purchase a license after the infringing act began. Does the “retroactive license” absolve the infringement?

No, said the court in Palmer/Kane, LLC v. Rosen Books Works, LLC, Case No. 15-cv-7406 (SD NY Aug. 31, 2016). There, Rosen, a book publisher, had regularly licensed photos, including Palmer/Kane’s, from the stock photography agency, Corbis, for use in its books. As a “matter of practice,” Rosen frequently would use images prior to obtaining licenses for them. Palmer/Kane therefore sued Rosen for infringing its copyrights for 19 images, which Rosen allegedly had used in 21 publications either without a valid license or beyond the scope of the license it had been granted.

For one of Palmer/Kane’s images at issue in the case (Image No. 2), Rosen had used the photo in a book, printing 3,000 copies in 2006 and 2,000 in 2007, without first obtaining a license. In February 2008, Rosen secured a license from Corbis for distributing 10,000 copies of Image No. 2 in the book. Rosen later printed another 2,100 copies of the book with Image No. 2.

Course of Dealing Defense

Rosen claimed that its “pre-license” use was consistent with industry custom and the parties’ course of dealing. Even Corbis agreed that it is customary practice in the book publishing industry for publishers to reproduce copyrighted stock photography before obtaining licenses for such use. However, the court held that “custom” and “course of dealing” cannot displace rights conferred by the copyright laws. See Dun & Bradstreet Software Servs., Inc. v. Grace Consulting, Inc., 307 F.3d 197, 211 (3d Cir. 2002) (“A defense of industry custom and practice in the face of the protective provisions of the Copyright Act could undermine the purposes and objectives of the statute and reduce it to rubble.”); Weinstein Co. v. Smokewood Entm’t Grp., LLC, 664 F. Supp. 2d 332, 348 (S.D.N.Y. 2009) (“[N]otwithstanding plaintiff’s claims about ‘custom and practice’ in the entertainment industry, federal copyright law dictates the terms by which an exclusive license can be granted.”).

Significantly, the court stated:

Infringement is infringement, regardless of what Corbis and Rosen may have chosen to call it.

Retroactive License Defense

Rosen also asserted that even if the use constituted an infringement, the February 2008 license retroactively cured the infringement. But the court rejected this defense, as well, noting that “a license or assignment in copyright can only act prospectively.” See Davis v. Blige, 505 F.3d 90, 104 (2d Cir. 2007).

While some other courts have recognized retroactive licenses, it really is a resolution for claims of infringement. Here, Rosen was not entering into a “negotiated settlement” with the February 2008 license. Neither Rosen or Corbis had acknowledged that infringement had occurred. The court warned against conflating settlements and retroactive licenses:

Licenses and assignments function differently from settlements and releases, and the use of the term “retroactive license” for “settlement” or “release” by the parties causes unnecessary confusion and potentially creates legal mischief.

In addition, the February 2008 license had a “License Start Date” of February 20, 2008, so the license could not have covered the 2006 and 2007 uses. The court then found as a matter of law that Rosen had infringed Palmer/Kane’s Image No. 2.

So don’t let infringers try to exonerate their infringements with a “retroactive license.” Stand up for your rights, regardless of their excuses.

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Don’t be bound by Binded.com

The copyright world is abuzz about a new copyright registration service at Binded.com. But don’t be fooled — there’s a reason that Binded can claim:

What used to take 20 minutes on copyright.gov, takes 9 seconds on Binded.

That’s because Binded doesn’t make sure that it’s registering your copyright correctly.

Most important, Binded never asks whether you are registering “published” photographs, and, if so, when and where they were first published. Binded doesn’t warn you that a published photos can registered as a group only if they were published within the same calendar year.

In its FAQ, Binded states: “If you’ve already published your image you still benefit by having a copyright record and our monitoring feature.” Binded doesn’t explain that using its service will not give you a valid copyright registration. You don’t need Binded to give you “proof of creation.” Other companies offer an image search for free, so you don’t need Binded’s “monitoring.”

Even if you’re registering unpublished photos, Binded doesn’t ask for the year of completion (the year that you took the most recent photograph of the group of photos being registered). While Binded maybe able to derive the year by the metadata of the photos, that’s not always correct.

Binded also doesn’t ask what is your nation of citizenship or domicile, which is required by the US Copyright Office. While Binded may make a guess from your address, that’s not always the same. Binded reveals towards the bottom of its FAQ page that its service is not for “work for hire” or collaborative works. It’s not for derivative works, either.

Binded apparently has plans to try to collect damages for infringement of your photos. It warns that it can change its terms of service at any time, so it may try to lock you into using its infringement services.

Note that once you use Binded’s service, your photos will forever be on the bitcoin blockchain.

Registering using the eCO sysem is not difficult or lengthy (especially for unpublished photos) and there are good articles on how to do it. It can be done quickly especially after you create a template for your registrations.

The first thing that an infringer will do is to attempt to invalidate your registration. You might as well keep your $$$ and save your time before registering your copyrights incorrectly.

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Copyright Alliance Seeking Pro Bono Copyright Program Applicants

The Copyright Alliance has announced a new pro bono program “to provide free legal representation to individual creators and small businesses in lawsuits involving cutting edge copyright issues.” The program will use Columbia Law School students under the supervision of the New York-based law firm of Cravath, Swaine and Moore LLP attorneys David Marriott and David Kappos. Interested persons should sign up online.

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Copyright Office Releases Redlines for Draft Compendium

The U.S. Copyright Office today announces the posting of redlines comparing the current version of Compendium of Copyright Office Practices (Third), which was released December 22, 2014, and the public draft of Compendium (Third), which was released June 1, 2017. The redlines are available on the revision history portion of the Compendium webpage. They are intended to assist members of the public in understanding the amendments and revisions contained in the public draft. The Office previously released a list of all sections that have been added, amended, or removed in this update, and a set of release notes providing a brief summary of the substantive revisions. The Office has extended the deadline to provide comments until July 30, 2017. Comments may be submitted on the Office’s website.

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Copyright Office Introduces Online Supplementary Registration

The U.S. Copyright Office announces that, as of July 17, it will for the first time begin accepting applications for supplementary copyright registration—used to correct or amplify information set forth in a basic registration—through the Office’s online registration system. Applicants will generally be required to file applications for supplementary registration online. The Office has also made other changes to the practices relating to supplementary registration, described in a final rule published in the Federal Register today. To help ease the transition to online filing, the Office will provide guidance in updates to the Compendium of U.S. Copyright Office Practices, as well as an online tutorial.

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PhotoAttorney Blog: Top 50 Copyright Blog

PhotoAttorney blog is honored to be selected by Feedspot as one of the Top 50 Copyright Blogs on the web.

These Top 50 blogs are ranked based on following criteria:

  • Google reputation and Google search ranking
  • Influence and popularity on Facebook, twitter and other social media sites
  • Quality and consistency of posts.
  • Feedspot’s editorial team and expert review

Check all of these great blogs to learn how best to protect your rights!

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Copyright Office Publishes Recent Review Board Decisions

The Copyright Office today announces the launch of an online database of decisions from April 2016 to present by the U.S. Copyright Office Review Board, which hears final administrative appeals of refusals of copyright registration. The decisions are searchable and include an index; new decisions will be added as they are issued. The decisions will be a valuable resource to those seeking a better understanding of how the Copyright Office assesses whether works satisfy the legal and formal requirements for copyright registration. The index is available here.

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Copyright Office Releases an Updated Draft of the Compendium of U.S. Copyright Office Practices, Third Edition

Acting Register of Copyrights Karyn Temple Claggett today released a revised draft of the Compendium of U.S. Copyright Office Practices, Third Edition. This draft includes the first proposed updates to the Compendium since its release in December 2014. The public draft is available on the Office’s website at https://copyright.gov/comp3/draft.html. It will go into effect on July 3, 2017.

The Compendium is the administrative manual of the Register of Copyrights concerning the mandate and statutory duties of the Copyright Office under Title 17 of the United States Code. See 37 CFR. § 201.2(b)(7). The proposed updates are the result of a comprehensive review of the Office’s practices and procedures. The draft revisions to the registration chapters clarify how and when the Office communicates with applicants and how it handles duplicate claims, deposit requirements, and claims involving multiple works, among other improvements. The update also provides preliminary guidance for claims involving useful articles based on the Supreme Court’s recent decision in Star Athletica v. Varsity Brands.

The draft revisions to the recordation chapter provide additional guidance for recording notices of termination and information on the Office’s new electronic system for the designation of agents. The draft update also addresses recent changes in the Office’s regulations, including the “mailbox rule” for requests for reconsideration, new procedures for removing personally identifiable information, and changes made by the Office’s technical amendments. For a full accounting of draft Compendium revisions, read more.

Additionally, the Compendium has been reformatted to improve readability for online and offline users. When the revision is released in final form, it will include improved hyperlinks to provide direct access to legal citations and resources on the Office’s website, as well as improved cross-references between chapters.

Public comments on this draft may be submitted from June 1 to June 30 using the provided form. See www.copyright.gov/comp3/draft.html for more information.

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Copyright Office Adopts Final Rule to Address Disruption of Copyright Office Electronic Systems

The U.S. Copyright Office has issued a final rule to address the effect of a disruption or suspension of any Office electronic system on the Office’s receipt of applications, fees, deposits, or other materials. The Copyright Office received six comments in response to the Notice of Proposed Rulemaking, all of which were supportive of the proposed regulation changes. The final rule specifies how the Office will assign effective dates of receipt to materials attempted to be submitted during a disruption or suspension of an Office electronic system. In addition, the final rule specifies how the Office will assign effective dates of receipt when a specific submission that is physically delivered or attempted to be physically delivered to the Office is lost or misplaced in the absence of a declaration of disruption, as might occur during the security screening procedures used for mail that is delivered to the Office.

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Pilot Program for Bulk Submissions of Copyright Registration Applications

Photographers often are also writers or bloggers. So it’s good news that the U.S. Copyright Office has published a public notice announcing a pilot program that will allow for the bulk submission of copyright registration applications in certain limited types of literary works.  Specifically, at this time, the pilot program is limited to claims to single literary works that have a single author, where all content that appears in the work was created and is owned solely by that single author.  Applicants that participate in the pilot will be required to provide author, title, and other pertinent information for each work they submit; upload a copy of each work; and pay the appropriate filing fee.  However they will be able to bypass the Office’s online interface and transmit their claims directly into the electronic registration system instead of filing them on an individual basis.

To participate in the pilot, applicants would have to comply with certain technical requirements.  For example, applicants would need to cooperate with and obtain approval from the Office’s technology staff during each phase, as the Office creates a separate portal into the eCO system for each participant.

The Office is offering this pilot as part of its continuing effort to increase the efficiency of the registration system for both applicants and the Office alike.

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