DUNCAN, Circuit Judge:
Appellant American Home Realty Network, Inc. ("AHRN") and Appellee Metropolitan Regional Information Systems, Inc. ("MRIS") are competitors in the real estate listing business. MRIS offers an online fee-based "multiple listing service" to real estate brokers and agents, while AHRN circumvents those brokers and agents by taking listing data from online database compilers like MRIS and making it directly available to consumers on its "real estate referral" website.
In this action, MRIS contends that AHRN's unauthorized use of its copyrighted material constitutes infringement under the Copyright Act. The district court entered a preliminary injunction order prohibiting AHRN's display of MRIS's photographs on AHRN's referral website, and
MRIS operates an online multiple listing service, commonly known as an "MLS," in which it compiles property listings and related informational content (the "MRIS Database"). MRIS offers this service to real estate broker and agent subscribers in Maryland, Virginia, the District of Columbia, and parts of Delaware, West Virginia, and Pennsylvania.
Upon payment of a subscription fee to MRIS and assent to terms, subscribers upload their real estate listings to the MRIS Database and agree to assign to MRIS the copyrights in each photograph included in those listings. In relevant part, the MRIS Terms of Use Agreement ("TOU") reads as follows:
J.A. 464
To protect its claims of copyright ownership in the MRIS Database, MRIS affixes its mark and copyright notice — e.g., "©2012 MRIS" — to all photographs published in the MRIS Database, and registers the MRIS Database with the Copyright Office each quarter under the registration procedures applicable to automated databases. See J.A. 460.
Type of Work: Computer File
AHRN is a California real estate broker that owns and operates the website NeighborCity.com, a national real estate search engine and referral business. Among other sources, AHRN acquires the data displayed on NeighborCity.com from real estate brokers and agents, county tax assessors' offices and other public records, foreclosure data providers, and multiple listing services such as the MRIS Database. AHRN expressly disclaims any role in the creation of the data it makes available: the terms of use for NeighborCity.com provide that the user understands "all the data on properties available for sale or rent is maintained by various ... MLSs" and that AHRN "does not alter or add to this information on the properties in any way." J.A. 360. That AHRN has displayed on NeighborCity.com real estate listings containing copyrighted photographs taken from the MRIS Database is not presently disputed.
On November 18, 2011, MRIS sent AHRN a cease and desist letter. In response, AHRN suggested the parties develop a "custom license" whereby AHRN could continue to use the listing data to which MRIS claimed a proprietary interest. MRIS rejected that idea and, on March 28, 2012, filed suit against AHRN and its CEO, Jonathan Cardella,
In response to motions filed by the parties, the district court revised its preliminary injunction order while the appeal was still pending.
We review the district court's decision to grant a preliminary injunction for abuse of discretion, assessing its factual determinations for clear error and its legal conclusions de novo. Pashby v. Delia, 709 F.3d 307, 319 (4th Cir.2013) (citing Aggarao v. MOL Ship Mgmt. Co., 675 F.3d 355, 366 (4th Cir.2012)). Parties seeking a preliminary injunction must demonstrate that (1) they are likely to succeed on the merits, (2) they are likely to suffer irreparable harm, (3) the balance of hardships tips in their favor, and (4) the injunction is in the public interest. Winter v. Natural Res. Def. Council, Inc., 555 U.S. 7, 20, 129 S.Ct. 365, 172 L.Ed.2d 249 (2008).
AHRN argues that MRIS has failed to show a likelihood of success on its copyright infringement claim primarily for two reasons: (1) when MRIS registered its Database it failed to properly register its copyright in the individual photographs; and (2) MRIS does not possess copyright interests in the photographs because the subscribers' electronic agreement to MRIS's terms of use failed to transfer those rights.
We note at the outset that our consideration of the parties' arguments is complicated by their conflation of copyright protection and copyright registration. These are two entirely distinct matters, governed by separate sections of the Copyright Act. Compare 17 U.S.C. § 102, with 17 U.S.C. §§ 408-412. Unlike registration, which we discuss at length below, the scope of copyright protection is not at issue in this appeal. The district court's revised order enjoins only the use of photographs uploaded by MRIS's subscribers, and AHRN does not contest that these photographs of homes and apartments are worthy of copyright protection.
In the following discussion, we first set forth the necessary statutory framework, and then consider each of AHRN's arguments in turn. Although the arguments
In general, the Copyright Act protects "original works of authorship fixed in any tangible medium of expression." 17 U.S.C. § 102. This protection commences as soon as the original work is created and fixed in some tangible form, becoming the author's property immediately upon fixation. See id. § 201(a). Copyright ownership takes the form of several exclusive rights, such as the right to reproduce the work. Id. § 106. Although ownership vests initially with the author of the work, the author may transfer any of the exclusive rights attendant to copyright ownership by granting an assignment or exclusive license. Id. § 201(d). A copyright owner may seek judicial enforcement of his property rights against subsequent infringers, so long as he has registered the work with the Copyright Office prior to filing the copyright infringement action. Id. § 411(a).
One type of "original work of authorship" protected under the Copyright Act is a "compilation," which is "formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship." Id. § 101. The protection afforded to a compilation is independent of any protection that might be afforded to its individual components. Thus, ownership of the copyright in a compilation, standing alone, "extends only to the material contributed by the [compilation's author] ... and does not imply any exclusive right in the preexisting material." Id. § 103(b).
As relevant here, compilations made up of individual components which are themselves copyrightable are called "collective works." A collective work is:
Id. § 101. The copyright in individual component works need not be owned by the author of the collective work. See id. § 201(c) ("Copyright in each separate contribution to a collective work is distinct from copyright in the collective work as a whole, and vests initially in the author of the contribution."). Indeed, the Copyright Act establishes a default presumption that the author of a collective work does not own the copyright in any component part:
Id. § 201(c) (emphasis added). However, this statutory language clearly states that where, as MRIS alleges here, the author of a collective work has obtained the express transfer of the copyrights in each separate contribution to that collective work, Section 201(c)'s presumption of distinct ownership in the collection's component works does not apply.
We turn now to the first question presented: whether MRIS has failed to register its interest in the individual photographs with the Copyright Office prior to filing suit for copyright infringement as required by the Copyright Act. If AHRN is correct, and the registrations obtained by MRIS do not cover the photographs themselves, MRIS may not assert infringement
It is uncontested that MRIS filed registration applications with the Copyright Office for the copyrighted material in the Database under the regulations governing automated databases, and attained corresponding certificates of registration. However, the parties dispute the scope of those registrations. AHRN argues that MRIS's "failure to identify names of creators and titles of individual works as required by 17 U.S.C. § 409(2) and (6) limits the registration[s] to the Database itself" and therefore that "the registration[s] do[] not extend to the individual elements in the Database." Appellant's Br. at 42. MRIS disagrees, pointing to its indication on the registration applications that its Database consists of pre-existing photographic works, and emphasizing the lack of any specific statutory requirement that an automated database registration list the names and authors of component works in order to effectively register copyright ownership in those component works. For the reasons that follow, we agree with MRIS.
Section 409 of the Copyright Act provides that an application for registration of a compilation "shall be made on a form prescribed by the Register of Copyrights and shall include," as relevant here, the name of the author or authors, the title of the work, and "an identification of any preexisting work or works that it is based on or incorporates, and a brief, general statement of the additional material covered by the copyright claim being registered." 17 U.S.C. § 409. As applied to a collective work whose author has also acquired the copyrights in individual component works, the text of Section 409 is ambiguous at best. Some additional guidance is provided in Section 408, which permits the Register of Copyrights to ease the burden on claimants of collective works by promulgating regulations to allow "for particular classes ... a single registration for a group of related works." Id. § 408(c)(1); see also Kay Berry, Inc. v. Taylor Gifts, Inc., 421 F.3d 199, 205 (3d Cir.2005) (explaining that the Copyright Act's provision for group registration is "based on Congress's desire to liberalize the registration process") (citing H.R.Rep. No. 94-1476, at 154 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5770).
Pursuant to its authority under Section 408(c)(1), the Register has promulgated rules allowing for group registration of certain categories of collective works: automated databases, related serials, daily newspapers, contributions to periodicals, daily newsletters, and published photographs. 37 C.F.R. § 202.3(b)(5)-(10). The provision utilized by MRIS for its quarterly registrations of the MRIS Database permits a single registration to be made "for automated databases and their updates or other derivative versions that are original works of authorship." Id. § 202.3(b)(5)(i). Under this provision, the author of an automated database may file a single application covering up to three months' worth of updates and revisions, so long as all of the updates or revisions (1) are owned by the same copyright claimant, (2) have the same general title, (3) have a similar general content, including their subject, and (4) are similar in their organization. Id. Each registration must also comply with certain notice, publication, and deposit formalities. Id. As in the text of the statute, nothing in 37 C.F.R. § 202.3(b)(5) or any related regulation specifically requires MRIS to list the name and author of every component photograph it wishes to register as part of an automated database registration.
Lacking clear statutory guidance on the matter, courts have disagreed on how to
On the other hand, some courts have recognized collective work registrations as sufficient to permit an infringement action on behalf of component works, at least so long as the registrant owns the rights to the component works as well. See, e.g., Craigslist v. 3Taps, 2013 WL 1819999, at *9 ("Craigslist's registration of the collective work (the overall Craigslist website and database) served to register component works to which Craigslist has an exclusive license, despite the omission of individual authors from the registration application."); Am. Inst. of Physics v. Schwegman Lundberg & Woessner, P.A., 2012 WL 3799647, at *2 (D.Minn. July 2, 2012) (concluding that plaintiffs' registration of journals as collective works was sufficient to satisfy the pre-suit registration requirement vis-à-vis the individual articles contained in the journals, where the plaintiffs also owned (or exclusively licensed) the copyrights to those articles); Pac. Stock, Inc. v. Pearson Educ., Inc., 2012 WL 93182, at *5 (D.Haw. Jan. 11, 2012) (concluding that defendant failed to show plaintiff had not validly registered its copyright interest in component works, given the lack of specificity in the Copyright Act); Masterfile Corp. v. Gale, 2011 WL 4702862, at *2 (D.Utah Oct. 4, 2011) (finding that "[b]ecause [plaintiff] owns the constituent parts of the collection the registration of the collection extends copyright protection to the constituent parts") (citation omitted).
We find this latter approach more consistent with the statutory and regulatory scheme.
Here, MRIS owned the copyright in each of the thousands of component photographs that had been transferred to MRIS prior to its automated database registrations — as we will discuss further in Part C. In each registration, MRIS listed photographs as the basis for its updated claim. As the court articulated in Craigslist v. 3Taps, "it would be ... [absurd and] inefficient to require the registrant to list each author for an extremely large number of component works to which the registrant has acquired an exclusive license." 2013 WL 1819999, at *10 (internal citation and quotation marks omitted). Adding impediments to automated database authors' attempts to register their own component works conflicts with the general purpose of Section 409 to encourage prompt registration, see U.S. Copyright Office, Circular No. 1, 7: Copyright Basics (2012), and thwarts the specific goal embodied in Section 408 of easing the burden on group registrations, see Kay Berry, 421 F.3d at 204.
Before concluding our analysis, we discuss one recent regulatory change, though the parties did not clearly address it. In 2012 the Copyright Office promulgated, after notice and comment, a final rule amending the regulations governing the deposit requirement applicable to databases primarily composed of photographs. See Final Rule, Deposit Requirements for Registration of Automated Databases That Predominantly Consist of Photographs, 77 Fed. Reg. 40268 (July 9, 2012). Under the new rule, effective August 8, 2012, "when a registration is made for a database consisting predominantly of photographs, and the copyright claim extends to the individual photographs themselves, each of those photographs must be included as part of the deposit accompanying the application." Id. at 40270. "Identifying portions and a descriptive statement will no longer constitute a sufficient deposit." Id.
For these reasons, we endorse the district court's conclusion that "MRIS's identification of `photographs' ... as preexisting material and the basis of the copyright claims in its copyright registrations" satisfied Section 409's pre-suit registration requirement. See 888 F.Supp.2d at 706-07. Consequently, MRIS is not barred from asserting infringement of its copyrighted
Having determined that MRIS satisfied its pre-suit registration requirement, we turn finally to AHRN's challenge to the merits of MRIS's copyright infringement claim. MRIS must prove two elements to establish copyright infringement: (1) ownership of a valid copyright; and (2) AHRN's copying of constituent elements of the work that are original. See Feist, 499 U.S. at 361, 111 S.Ct. 1282. As AHRN does not dispute the second element on appeal, we need address only copyright ownership. Specifically, AHRN argues that a subscriber's electronic agreement to MRIS's TOU does not operate as an assignment of rights under Section 204 of the Copyright Act. MRIS responds that an electronic transfer may satisfy Section 204's writing and signature requirements, particularly in light of the later-enacted Electronic Signatures in Global and National Commerce Act (the "E-Sign Act"), 15 U.S.C. § 7001 et seq., effective October 1, 2000. We agree.
A transfer of one or more of the exclusive rights of copyright ownership by assignment or exclusive license "is not valid unless an instrument of conveyance, or a note or memorandum of the transfer, is in writing and signed by the owner of the rights conveyed or such owner's duly authorized agent." 17 U.S.C. § 204(a) (emphasis added); see also 3 Nimmer on Copyright § 10. 03[A][1]. Section 204(a) is intended "`to protect copyright holders from persons mistakenly or fraudulently claiming oral licenses [or transfers].'" SCO Group, Inc. v. Novell, Inc., 578 F.3d 1201, 1211 (10th Cir.2009) (quoting Eden Toys, Inc. v. Florelee Undergarment Co., 697 F.2d 27, 36 (2d Cir.1982)). The signed writing requirement also serves the purpose of "enhanc[ing] predictability and certainty of ownership — Congress's paramount goal when it revised the Act in 1976." Effects Assocs., Inc. v. Cohen, 908 F.2d 555, 557 (9th Cir. 1990) (internal quotation marks omitted); cf. Schiller & Schmidt, Inc. v. Nordisco Corp., 969 F.2d 410, 412 (7th Cir.1992) (Copyright Act "make[s] the ownership of property rights in intellectual property clear and definite, so that such property will be readily marketable").
Significantly, Section 204(a)'s signed writing requirement "is in fact different from a statute of frauds." Lyrick Studios, Inc. v. Big Idea Prods., Inc., 420 F.3d 388, 391 (5th Cir.2005) (citing Konigsberg Int'l, Inc. v. Rice, 16 F.3d 355, 357 (9th Cir. 1994)). "Rather than serving an evidentiary function and making otherwise valid agreements unenforceable, under § 204(a) a transfer of copyright is simply not valid without a writing." Id. (citation and internal quotation marks omitted). Courts have elaborated that a qualifying writing under Section 204(a) need not contain an elaborate explanation nor any particular "magic words," Radio Television Espanola S.A. v. New World Entm't, Ltd., 183 F.3d 922, 927 (9th Cir.1999), but must simply "show an agreement to transfer copyright." Lyrick Studios, 420 F.3d at 392 (citation omitted).
Before delving into the E-Sign Act and the sufficiency of the transfer here, we note one initial consideration deriving from the particular relationship of these parties. Courts have held that, in situations where "the copyright [author] appears to have no dispute with its [assignee] on this matter, it would be anomalous to permit a third party infringer to invoke [Section 204(a)'s signed writing requirement] against the [assignee]." Eden Toys, 697 F.2d at 36; see also Radio Television, 183 F.3d at 929 (adopting the rule of Eden Toys, and listing other cases to do so). Put another
The issue we must yet resolve is whether a subscriber, who "clicks yes" in response to MRIS's electronic TOU prior to uploading copyrighted photographs, has signed a written transfer of the exclusive rights of copyright ownership in those photographs consistent with Section 204(a). Although the Copyright Act itself does not contain a definition of a writing or a signature, much less address our specific inquiry, Congress has provided clear guidance on this point elsewhere, in the E-Sign Act.
The E-Sign Act, aiming to bring uniformity to patchwork state legislation governing electronic signatures and records, mandates that no signature be denied legal effect simply because it is in electronic form. 15 U.S.C. § 7001(a)(1). Additionally, "a contract relating to such transaction may not be denied legal effect, validity, or enforceability solely because an electronic signature or electronic record was used in its formation." Id. § 7001(a)(2). The E-Sign Act in turn defines "electronic signature" as "an electronic sound, symbol, or process, attached to or logically associated with a contract or other record and executed or adopted by a person with the intent to sign the record." Id. § 7006(5).
Although the E-Sign Act states several explicit limitations, none apply here. The Act provides that it "does not ... limit, alter, or otherwise affect any requirement imposed by a statute, regulation, or rule of law ... other than a requirement that contracts or other records be written, signed, or in nonelectric form[.]" Id. § 7001(b). Because Section 204(a) requires transfers be "written" and "signed," a plain reading of Section 7001(b) indicates that Congress intended the provisions of the E-Sign Act to "limit, alter, or otherwise affect" Section 204(a).
Furthermore, 15 U.S.C. § 7003 specifies types of contracts or records to which the provisions of Section 7001 shall not apply. See id. § 7003(a)-(b) (excepting, inter alia, "statutes ... governing the creation and execution of wills, codicils, or testamentary trusts"; "adoption, divorce, or other matters of family law"; "court orders or notices, or official court documents"; and "any notice of ... the cancellation or termination of health insurance or benefits or life insurance benefits"). Agreements to transfer exclusive rights of copyright ownership are not included in these exceptions.
AHRN's proffered authorities to the contrary are inapposite. None mention the E-Sign Act; instead, AHRN points to courts which have invalidated transfers in circumstances not at all analogous — for example, where there was no written agreement,
There is little authority regarding the application of e-signatures to instruments conveying copyrights. In what appears to be the only case relying on the E-Sign Act in this context, the Southern District of Florida held that the conveyance of a copyright interest by e-mail was valid. See Vergara Hermosilla v. Coca-Cola Co., 2011 WL 744098, at *3 (S.D.Fla. Feb. 23, 2011), aff'd by per curiam opinion, 446 Fed.Appx. 201 (11th Cir.2011). In its brief analysis of the issue, that court relied on the purpose of Section 204, which is to "resolve disputes between copyright owners and transferees and to protect copyright holders from persons mistakenly or fraudulently claiming oral licenses or copyright ownership," not to be "unduly burdensome" or to "necessitate[] protracted negotiations nor substantial expense." Id. (citations and internal quotations omitted). The court reasoned that allowing the transfer of copyright ownership via e-mail pursuant to the E-Sign Act accorded with, rather than conflicted with, this purpose.
Additionally, courts have held that agreements reached by electronic means are not invalid pursuant to analogous statutory requirements. For example, the Federal Arbitration Act (the "FAA") specifies that its protections for arbitration agreements pertain only to a "written provision" in any contract. 9 U.S.C. § 2. Courts have uniformly applied the E-Sign Act to subsequent interpretations of the FAA's written provision requirement. See, e.g., Campbell v. Gen. Dynamics Gov't Sys. Corp., 407 F.3d 546, 556 (1st Cir.2005) ("[The E-Sign Act] definitively resolves the issue ... as to whether an e-mail agreement to arbitrate is unenforceable under the FAA because it does not satisfy the FAA's `written provision' requirement, 9 U.S.C. § 2. By its plain terms, the E-Sign Act prohibits any interpretation of the FAA's `written provision' requirement that would preclude giving legal effect to an agreement solely on the basis that it was in electronic form."); Specht v. Netscape Comm'cns Corp., 306 F.3d 17, 26 n. 11 (2d Cir.2002) (assessing whether clicking to download software created enforceable agreement to arbitrate, and noting that the matter of whether "the agreement is a `written provision' despite being provided to users in a downloadable electronic form ... has been settled by [the E-Sign Act]," although ultimately finding that consumers' clicking "yes" in the context presented in that case did not manifest assent to license terms).
We find this analysis helpful in reaching the same conclusion in the context of the Copyright Act. To invalidate copyright transfer agreements solely because they were made electronically would thwart the clear congressional intent embodied in the E-Sign Act. We therefore hold that an electronic agreement may effect a valid transfer of copyright interests under Section 204 of the Copyright Act.
For the foregoing reasons, the decision of the district court is
AFFIRMED.
We also question the relevance of this issue to our present inquiry. Our review is limited by the scope of the revised preliminary injunction order, which reaches the issue of copyright infringement only as to the photographs contained in the database.
