Archie MD, Inc. v. Elsevier, Inc.
261 F. Supp. 3d 512
S.D.N.Y.2017Background
- Archie MD created a library of 3-D medical animations and licensed them to Elsevier under a 2005 Animation License Agreement (ALA); "Cell Differentiation" was among the licensed works.
- Archie delivered copies of animations to Elsevier and filed a single Copyright Office registration on August 15, 2005 for a collection of unpublished works (PAu 2-985-274). The animations had been licensed/delivered before registration.
- Elsevier stopped renewing the ALA in 2014; after the license ended, Archie sued alleging unauthorized continued use and creation of derivative animations, asserting copyright infringement among other claims.
- On cross-motions for summary judgment, the court dismissed most of Archie’s claims but allowed a claim based on Elsevier’s alleged derivative use of one animation (Cell Differentiation) to proceed; the court referred the registration-validity question to the Register under 17 U.S.C. § 411(b)(2).
- The Register advised that the Office would have refused registration if it had known the works were published, but left open whether licensing constituted publication; the court then considered whether the ALA’s licensing/distribution constituted publication and whether any inaccuracy in the registration was made knowingly.
- The court found licensing and delivery to Elsevier constituted publication (so the registration was inaccurate), but held Archie did not include the inaccurate statement with knowledge it was inaccurate; therefore the registration remains a valid prerequisite under 17 U.S.C. § 411(b)(1), and Elsevier’s renewed summary judgment motion was denied as to the remaining claim.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether licensing/delivery to Elsevier constituted "publication" under 17 U.S.C. § 101 | Licensing is a non‑exclusive license, not a distribution or transfer of copies, so no publication occurred | Licensing/delivery is a distribution (akin to rental/lease) and thus constitutes publication | Licensing/delivery to Elsevier was publication (distribution) prior to registration |
| Whether the registration was inaccurate due to describing a published work as unpublished | Registration was accurate because licensing did not publish the work | Registration was inaccurate because the work had been published before registration | Registration was inaccurate (work was published) |
| Whether inaccurate information was included "with knowledge that it was inaccurate" under 17 U.S.C. § 411(b)(1)(A) | Levine (Archie) did not know licensing constituted publication; the law was unsettled, so no knowing inaccuracy | Levine knew the animations were licensed/delivered and thus knew information was inaccurate | Court held Levine did not know licensing constituted publication; no showing of knowledge that registration was inaccurate |
| Effect of the PRO IP Act on material but inadvertent registration errors | Inadvertent errors defeat registration only if made knowingly under § 411(b)(1) | Material inaccuracies (like registering published works as unpublished) should invalidate registration regardless of intent | Court interpreted § 411(b)(1) conjunctively: both materiality and knowing inaccuracy required to invalidate; inadvertent material error did not defeat registration here |
Key Cases Cited
- Anderson v. Liberty Lobby, 477 U.S. 242 (summary judgment standard)
- Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (elements of copyright infringement; ownership and copying)
- Morris v. Bus. Concepts, Inc., 259 F.3d 65 (pre‑PRO IP Act treatment of material registration errors)
- Whimsicality, Inc. v. Rubie’s Costume Co., Inc., 891 F.2d 452 (registration as prerequisite to suit)
- Getaped.com, Inc. v. Cangemi, 188 F. Supp. 2d 898 (online distribution can constitute publication)
- Family Dollar Stores, Inc. v. United Fabrics Int’l, Inc., 896 F. Supp. 2d 223 (district court invalidated collection registration for previously published works)
- Heublein, Inc. v. United States, 996 F.2d 1455 (summary judgment inferences standard)
- Holtz v. Rockefeller & Co., 258 F.3d 62 (materiality and genuine dispute standards)