Plaintiff Panoramic Stock Images, Ltd. (“Panoramic”) is an Illinois business that licenses photographs to publishers, including Defendant The McGraw-Hill Companies, Inc. (“McGraw-Hill”), an education publisher. For several years, the parties operated under an agreement that permitted McGraw-Hill to make limited use of photographs in which Panoramic claims to hold a copyright. In this lawsuit, Panoramic alleges that McGraw-Hill has exceeded the scope of the license agreement by publishing copyrighted photos in unspecified “additional publications.” (Compl. [1] ¶ 12.) Panoramic charges McGraw-Hill with copyright infringement and contributory copyright infringement and claims that McGraw-Hill itself maintains “a list of its wholly unauthorized uses.” Id. McGraw-Hill has moved to dismiss certain of Panoramic’s claims for failure to state a claim on the ground that, according to McGraw-Hill, those claims rely on defective or unissued copyright registrations in violation of 17 U.S.C. § 411(a). For the reasons explained below, Defendant’s motion to dismiss [10] is denied.
FACTUAL BACKGROUND
Panoramic is a stock photography agency. It licenses photographs created by various photographers to other entities such as textbook publishers. McGrawHill is a licensee of Panoramic. (Compl. [1] ¶¶ 1-2, 7.) Between 1991 and 2012, McGraw-Hill paid Panoramic for limited licenses to use copies of 170 photographs
At some point prior to December 2012, Panoramic allegedly learned that McGraw-Hill had violated the licensing agreements by exceeding the permitted uses of the photographs at issue here, including by using the photographs in publications that exceeded the licensing agreements’ scope and terms. (Compl. ¶¶ Ills.) Panoramic claims that “McGraw[Hill] alone knows [the full extent of] these wholly unauthorized uses,” but alleges that Defendant “has developed a list of its wholly unlicensed uses and Panoramic’s Photographs are among those McGraw[Hill] has so identified.” (Compl. ¶ 12.) On December 4, 2012, Plaintiff provided Defendant with a detailed listing of the 276 limited licenses (involving 170 photographs) at issue, including the photographs’ authors, descriptions, copyright registration identifications, and license limits. (Compl. ¶ 13.) According to Plaintiff, Defendant did not respond to Plaintiffs request that Defendant provide accurate information about Defendant’s actual use of the photographs and declined to state which, if any, of the photographs it infringed. (Compl. ¶ 13.)
Plaintiff further alleges that Defendant has a pattern of copyright infringement. According to Panoramic, McGraw-Hill re
In response, McGraw-Hill argues that Panoramic cannot sue for copyright infringement of 101 of the 170 photographs at issue because, it claims, Panoramic lacks valid copyright registration for those 101 photos. (McGraw-Hill does not challenge Panoramic’s standing to sue on the remaining 69 photographs.) According to Defendant, 52 of the relevant photographs lack valid copyright registrations, and 49 more are not registered at all. McGrawHill argues that Panoramic’s claims that arise from those 101 photographs should therefore be dismissed because the alleged copyright registration deficiencies “preclude Panoramic from litigating the majority of its copyright infringement claims.” (Def.’s Partial Mot. to Dismiss [10], hereinafter “Def.’s Mot.”, at 2.)
DISCUSSION
Standard of Review
A party may seek dismissal of a complaint for a “failure to state a claim upon which relief can be granted.” Fed. R. Civ. P. 12(b)(6). A complaint must “contain sufficient factual matter, accepted as true, ‘to state a claim to relief that is plausible on its face.’ ” Ashcroft v. Iqbal,
Plaintiff Panoramic has adequately alleged that McGraw-Hill made unauthorized use of the photographs at issue. At this stage, the parties dispute only whether Plaintiff held valid copyrights in those photographs. McGraw-Hill asserts that Panoramic failed to identify the authors or titles for 52 of the 101 disputed photographs when it sought copyright protection. As a result, McGraw-Hill urges, those registrations are improper and the photographs do not qualify for copyright protection. With respect to 49 other photographs, Panoramic has submitted a copyright application but has not yet received a registration certificate from the Copyright Office. McGraw-Hill contends that Panoramic is not entitled to enforce its copyright for those photographs in this action until the certificate has issued. The court addresses these arguments separately.
I. Copyright Protection for Works Listed Without an Author or Title
The court first addresses the matter of the photographs’ identification in copyright registrations. A plaintiff must register a copyright claim with the Copyright Office before bringing a civil action for infringement. 17 U.S.C. § 411(a). As McGrawHill observes, 52 of the photographs at issue here were registered for copyright protection without their individual authors or titles listed. (Reply Mem. of Law in Further Support of Def.’s Partial Mot. to
The parties agree that there is no need to list the author of each individual work in a collective work in order to obtain registration for the collective work as a whole.
The parties dispute whether Panoramic’s registration of the 52 photographs only as part of several collective works allows Panoramic to sue for copyright infringement of the individual photographs whose identification information is not listed in the collective works’ registrations. In registrations VA841-131, VA957-799, VA957800, and VA1-002-221, which include the 52 photographs at issue, Plaintiff registered groups of photographs by listing titles for the collective work as a whole (for example, “Panoramic Images: no. W6”) and some, but not all, of the individual authors. (Copyright Registrations [10-1], Ex. A to Def.’s Mot., at 2-5.)
Plaintiff argues that because Section 409 of the Copyright Act refers to the registration of a singular “work” without distinguishing between registration of a single work and a compilation, “it follows that § 409 only requires that the author or authors and title of the compilation work ... must be listed on the registration application.” (PL’s Mem. at 5-6.) Plaintiff cites no authority for this position beyond the use of “a work” or “the work” in the text of Section 409. In response, Defendant points out that the plain statutory
Defendant contends that Plaintiffs reading of Section 409 — to require only that the author and for the collective work be listed in order to extend copyright protection to each of the component parts— would render the law “meaningless.” Under that reading, Defendant asserts, the law would not require “proper identification for the individual registered works.” (Def.’s Mem. at 3.) Listing all constituent authors and titles is required, Defendant argues, to serve the “public notice function of a copyright registration” by identifying protected components and creating a searchable public record of copyrighted works. (Def.’s Mot. at 6, Def.’s Mem. at 3, citing Cosmetic Ideas, Inc. v. IAC/Interactivecorp,
As support for this reading of Section 409, Defendant cites several cases from other circuits. (Def.’s Mot. at 5.) In Muench, a Southern District of New York court determined that the plain language of Section 409 required the author and title of each component photograph in an automated database to be listed in a copyright registration, and held that registration of the database containing a compilation of photographs was therefore not sufficient for the plaintiff photographer to bring a copyright infringement suit challenging a publisher’s use of the individual images.
In response, Plaintiff notes that the United States of America has filed amicus briefs in support of the appellants in Alaska Stock and Bean, arguing that the Copyright Office has permissibly interpreted Section 409 not to require a registration application to identify the author of all claimed component works, and that courts should defer to that interpretation. (Brief
In Metropolitan, the Fourth Circuit considered whether the component photographs in a database of property listings were also protected by copyright when their individual authors and titles were not part of the database’s copyright registration. The Fourth Circuit affirmed the district court’s decision that the individual photographs had been registered and held that reading Section 409 to mean that the registration of a collective work also protects each component work is “more consistent with the statutory and regulatory scheme” because individually listing huge numbers of component photographs would add excessive impediments to the registration process. Id. In reaching its decision, the Fourth Circuit noted that Bean — one of the principal cases relied upon by Defendant — was factually inapposite from Metropolitan because Bean considered only whether the photographers who originally produced the component photographs at issue could rely upon the collective work registration by a third party to satisfy their pre-suit registration requirements. In Metropolitan, as here, it is not the original photographers who have filed suit. Instead, Plaintiff is not the photographer, but instead is the owner of the component photographs who registered them as part of several collective works.
The individual photographers are not parties to this action, and the parties have not commented on the issue of whether those photographers, or any other persons, possess rights to the photographs at issue here. (Def.’s Mot. at 2.) Without specifically addressing the issue here, the Second Circuit considered the question whether the copyright registration of a magazine (deemed a collective work by the Copyright Office) reached the contributions of the individual authors, thereby permitting the author of an article to bring a copyright infringement action. See Morris v. Bus. Concepts, Inc.,
The Seventh Circuit has not explicitly addressed this issue. The closest it has come is in Publications International, Ltd. v. Meredith Corp.,
Defendant contends that the court should adopt its reading of Section 409 on public policy grounds to ensure that public has adequate notice about copyright registration. That notice is lacking, Defendant urges, when registrations do not include the title and author of protected works. (Def.’s Mem. at 3-4.) The court is not prepared to assume that recognizing copyright from collective registration creates public notice problems. The facts in this case are illustrative: McGraw-Hill allegedly knew full well that Panoramic claimed copyright over the photographs at issue, and even paid Panoramic for licenses to use those photographs. McGraw-Hill only challenges Panoramic’s copyright now that Panoramic has accused McGraw-Hill of purposefully exceeding its licensed use of those photographs, behavior which Panoramic claims is part of a larger pattern of excessive use. In this context, the court is unwilling, at the pleading stage, to enter a ruling on the presumption that a hypothetical user may innocently fail to recognize that works within a copyrighted collective work are themselves protected. The interests and rights of the author of a compilation or collective work may be notably different from the interests and rights of the authors of the component parts of that compilation or collective work, but this case involves the separate issue of conflict between collective work copyright holders
As Plaintiff notes, the Copyright Office appears to have adopted an interpretation of Section 409 under which copyright registration of a collective work will cover the component works as well. See Compendium of Copyright Office Practices II § 615.06 (providing that the “names of the individual authors of separate contributions being registered as part of [a collective work] claim need not be given on the application”). The Copyright Office has directed that registration of a collective work “may cover (a) the collective work authorship, (b) any contribution created by the employee or other party commissioned by the author of a work made for hire, and (c) any other contributions that the claimant of the collective work obtained by transfer.” Id. When, as in this case, “the work being registered was created by a large number of authors, the application will be considered acceptable if it names at least three of those authors, followed by a statement such as ‘and [number] others.’ ” Id. at § 615.07(b)(3). Defendant contends that the Copyright Office’s interpretation of Section is entitled to no deference because the meaning of Section 409 is plain and unambiguous, but for reasons already explained, the court finds the statutory language open to interpretation. In the alternative, Defendant argues that the Copyright Office’s published guidance on registering a group of works by a photographer undermines any claim that Plaintiff’s registration of the collective work in this case registers the constituent photographs. (Def.’s Mem. at 6, citing Copyright Office Circular 40: Copyright Registration for Works of the Visual Arts, available at www.copyright. gov/eircs/circ40.pdf (stating that a single registration can be made for a group of published photographs only if the same photographer took all the photographs). The language Defendant cites, however, addresses the practice of using a single registration for multiple photographs, not registration of a collective work, as in the case here. The Copyright Office appears to have adopted the position that registration of a collective work may cover its component works.
At this early stage, and in light of the varying interpretations of Section 409 adopted by the parties and various courts, the court grants deference to the Copyright Office’s reasonable interpretation of the statute. See Chevron U.S.A. Inc. v. Natural Resources Defense Council, Inc.,
II. Copyright Protection of Pending Applications
As noted above, Defendant challenges the copyright registration of 101 of the 170 photographs at issue in this case. With
application approach). Courts adopting the registration approach urge that it follows the plain language requirements of Section 411(a). See, e.g., North Jersey Media Group Inc. v. Sasson, No. 2:12 CV 3568(WJM),
Although the matter is not free from doubt, the court understands the cases in this Circuit to adopt the application approach. See Chicago Bd. of Educ. v. Substance, Inc.,
Defendants’ motion to dismiss [10] is denied.
Notes
. Though Panoramic lists only 170 photographs, it identifies 276 different limited licenses that McGraw-Hill allegedly exceeded. (Table of Images [1-1], Ex. 1 to Compl.) The number of limited licenses Plaintiff identifies exceeds the number of photographs because some of the photographs were licensed multiple times for different purposes.
. Though the parties use the term "compilation,” the court notes that a compilation made up of individual components which are themselves copyrightable is a "collective work,” and therefore adopts that term. See Metro. Reg'l Info. Sys., Inc. v. Am. Home Realty Network, Inc., 722 F.3d 591, 596-97 (4th Cir.2013) (citing 17 U.S.C. § 101).
. Muench was abrogated in Reed Elsevier, Inc. v. Muchnick,
. As noted earlier, Plaintiff argues that even if its registrations of the 52 photographs were improper because of the omission of required author and title information, its registration nevertheless covers the challenged photographs because the omissions were excusable errors within the meaning of Section 411(b). Under Section 411(b), a certificate of registration provides the basis for a copyright infringement suit even when it contains inaccurate information, unless that information was (1) known to be inaccurate and (2) “the inadequacy of the information, if known, would have caused the Register of Copyrights to refuse registration.” 17 U.S.C. § 411(b)(1). As Defendant sees things, "Panoramic completely omitted information required by Section 411(b), which goes far beyond inaccuracy.” (Def.’s Mem. at 7.) In light of its interpretation of § 409, the court need not reach this issue.