NANCY K. JOHNSON, Magistrate Judge.
Pending before the court
Plaintiff filed this copyright action against Defendant alleging that, after terminating a Web Design Agreement with Plaintiff, Defendant directed the intentional, unauthorized copying of content from approximately 2,600 webpages
On December 24, 2001, Defendant, a Texas non-profit organization "committed to promoting ethical business practices in the local business community,"
Plaintiff's contract term ran for one year, after which it automatically renewed on a month-to-month basis.
In early 2010, Plaintiff applied for a certificate of copyright registration for www.reliabilitymall.com as an unpublished, nondramatic literary work, which was issued on January 31, 2010.
Plaintiff filed this lawsuit in October 2010, alleging copyright infringement, violations of the Digital Millennium Copyright Act,
Two days later, Plaintiff applied to the Copyright Office for supplementary registration of the webpages.
Upon review of Plaintiff's application, the Copyright Office issued a certificate of supplementary registration.
Plaintiff amended in February 2011 and dropped the unfair competition claim. In the present motion, Defendant seeks summary judgment on Plaintiff's copyright infringement claims.
Summary judgment is warranted when the evidence reveals that no genuine dispute exists regarding any material fact and the moving party is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct.2548, 91 L.Ed.2d 265 (1986); Brown v. City of Houston, Tex., 337 F.3d 539, 540-41 (5th Cir.2003). A material fact is a fact that is identified by applicable substantive law as critical to the outcome of the suit. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986); Ameristar Jet Charter, Inc. v. Signal Composites, Inc., 271 F.3d 624, 626 (5th Cir.2001). To be genuine, the dispute regarding a material fact must be supported by evidence such that a reasonable jury could resolve the issue in favor of either party. Anderson, 477 U.S. at 250, 106 S.Ct. 2505; TIG Ins. Co. v. Sedgwick James of Wash., 276 F.3d 754, 759 (5th Cir.2002).
The movant must inform the court of the basis for the summary judgment motion and must point to relevant excerpts from pleadings, depositions, answers to interrogatories, admissions, or affidavits that demonstrate the absence of genuine factual issues. Celotex Corp., 477 U.S. at 323, 106 S.Ct. 2548; Topalian v. Ehrman, 954 F.2d 1125, 1131 (5th Cir.1992). If the moving party can show that the facts are not in dispute, the party opposing summary judgment must go beyond the pleadings and proffer evidence demonstrating that genuine issues of material fact do exist that must be resolved at trial. See Celotex Corp., 477 U.S. at 324, 106 S.Ct. 2548.
When considering the evidence, "[d]oubts are to be resolved in favor of the nonmoving party, and any reasonable inferences are to be drawn in favor of that party." Evans v. City of Houston, 246 F.3d 344, 348 (5th Cir.2001); see also Boston Old Colony Ins. Co. v. Tiner Assocs. Inc., 288 F.3d 222, 227 (5th Cir.2002). The court should not "weigh evidence, assess credibility, or determine the most reasonable inference to be drawn from the evidence." Honore v. Douglas, 833 F.2d 565, 567 (5th Cir.1987).
Defendant requests summary judgment on Plaintiff's copyright infringement cause of action, arguing that "Plaintiff's works are not registered" because Plaintiff represented to the Register of Copyrights that the websites were unpublished.
In order to succeed on a copyright infringement action, a plaintiff must prove ownership of a valid copyright, actionable copying, and substantial similarity. Armour v. Knowles, 512 F.3d 147, 152 (5th Cir.2007). Ownership of a valid copyright encompasses originality, copyrightability, and compliance with statutory formalities. Compaq Computer Corp. v. Ergonome Inc., 387 F.3d 403, 407-08 (5th Cir.2004). Before a plaintiff may bring a civil action for copyright infringement, he must register the copyright with the U.S. Copyright Office ("Copyright Office"). 17 U.S.C. § 411(a).
The Copyright Act requires that courts recognize a timely obtained certificate of copyright registration as "prima facie evidence of the validity of the copyright and of the facts stated in the certificate." 17 U.S.C. § 410(c); see also Gen. Universal Sys., Inc. v. Lee, 379 F.3d 131, 141 (5th Cir.2004); Lenert v. Duck Head Apparel Co., No. 95-31122, 99 F.3d 1136, 1996 WL 595691, at *3 (5th Cir. Sept. 25, 1996) (unpublished); Norma Ribbon & Trimming, Inc. v. Little, 51 F.3d 45, 47 (5th Cir.1995); Lakedreams v. Taylor, 932 F.2d 1103, 1108 n. 10 (5th Cir.1991). Even if the certificate contains "any inaccurate information," it satisfies the registration requirement, unless the applicant included the information with knowledge that it was inaccurate and the Register of Copyrights would have refused registration had she known of the inaccuracy. 17 U.S.C. § 411(b). Section 411(b), which was added in October 2008, also instructs courts to refer any case in which such inaccurate information is alleged to the Register of Copyrights for advice as to whether the information would have caused the refusal of registration. Id.
The presumption of validity afforded a registrant is not irrebuttable, but it shifts the burden to the defendant to prove invalidity. Lenert, 1996 WL 595691, at *3; Norma Ribbon & Trimming, Inc., 51 F.3d at 47 (citing Lakedreams, 932 F.2d at 1108 n. 10); Entm't Research v. Genesis Creative Group, 122 F.3d 1211, 1217 (9th Cir.1997); Masquerade Novelty, Inc. v. Unique Indus., 912 F.2d 663, 668 (3rd Cir.1990). "The burden on the defendant to rebut the presumption varies depending on the issue bearing on the validity of the copyright." Id. at 668.
Fraud on the Copyright Office has long been held as a basis for invalidating a registered copyright. See One Treasure Ltd., Inc. v. Richardson, 202 Fed.Appx. 658, 660, 661 (5th Cir.2006) (unpublished) (noting that "[i]mmaterial, inadvertent errors in an application for copyright registration do not jeopardize the registration[']s validity" but, on the other hand, intent to defraud the Copyright Office might); Masquerade Novelty, Inc., 912 F.2d at 667 (holding that knowing misrepresentations that might have led the Register of Copyrights to reject an application were grounds for invalidating a copyright).
Fraud is not the only basis for invalidating a registered copyright. See Masquerade Novelty, Inc., 912 F.2d at 668-69. "Where, for example, the issue is whether the copyrighted article is `original,' the presumption will not be overcome unless the defendant offers proof that the plaintiff's product was copied from other works or similarly probative evidence as to originality." Id.; see also Norma Ribbon & Trimming, Inc., 51 F.3d at 47 (finding that the evidence showed the copyrighted works "already existed in the public domain" and, thus, the copyrights were invalid); R. Ready Prods., Inc. v. Cantrell, 85 F.Supp.2d 672, 682 (S.D.Tex.2000) (noting that a defendant must offer proof that the work was copied from other works to successfully challenge the originality of a registered work). Copyrightability and compliance with statutory formalities also may be challenged and, if shown to be lacking, can serve as bases for invalidating a registered copyright. Cf. Masquerade Novelty, Inc., 912 F.2d at 669 (stating that a defendant need not introduce evidence to challenge copyrightability "but instead must show that the Copyright Office erroneously applied the copyright laws" in the registration process).
In this case, the Copyright Office issued Plaintiff a registration certificate effective February 1, 2010, for "www.reliabilitymall.com," an unpublished, nondramatic literary work. In December 2012, Plaintiff sought and was granted supplementary copyright registration for the unpublished "www.reliabilitymall.com Web Page Collection."
Although Defendant incorrectly asserts that "Plaintiff's works are not registered," the main thrust of Defendant's motion is its contention that "Plaintiff's registration is invalid."
Defendant specifically distinguishes its legal-error argument from an allegation that the registration application contained inaccurate information that would subject it to Section 411(b) and a referral to the Register of Copyrights for review. On that point, the court agrees with Defendant. Plaintiff's supplementary application
Defendant does not allege fraudulent intent, much less point to any such evidence. Defendant argues that the relevant law, when applied to Plaintiff's websites results in a finding that the websites were published. Defendant points to two facts as material, either one of which Defendant argues is a sufficient basis for finding publication: 1) Plaintiff uploaded the webpages to the internet at reliabilitymall.com; and 2) Plaintiff "sold and/or licensed" the webpages to Defendant (and its members).
Although it does not define "published," the Copyright Act defines "publication" as "the distribution of copies or phonorecords of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending." 17 U.S.C. § 101. The statutory definition offers further guidance: "The offering to distribute copies or phonorecords to a group of persons for purposes of further distribution, public performance, or public display, constitutes publication. A public performance or display of a work does not of itself constitute publication." Id. Neither the Copyright Act nor its implementing regulations
Defendant presents an appealing argument in favor of finding that Plaintiff published his websites by uploading them to the internet. And a variety of cases grappling with the issue tend to support Defendant's position. But two legal constructs stand in the way of summary judgment on the validity of Plaintiff's copyright, the prima facie presumption and deference to the Copyright Office.
The court first surveys case law that addresses whether a work on the internet has been published. The parties directed the court to no case law within the Fifth Circuit that directly addressed this issue, and the court found none. The only cases that are similar enough to be helpful were heard in district courts in other circuits.
In Getaped.Com, Inc. v. Cangemi, 188 F.Supp.2d 398, 402 (S.D.N.Y.2002), the district judge found that a website, similar to photographs, music files, or software, was published when posted on the internet. The court stated:
Id.
A 2006 opinion out of the same court stated that, assuming that the internet posting of a digital file of a show performance
The Northern District of California made a passing remark in a case dealing with the jurisdictional effect of application for registration that reflects the view that making a website available to the public on the internet was publishing it. See Sleep Science Partners v. Lieberman, No. 09-04200 CW, 2010 WL 1881770, at *6 (N.D.Cal. May 10, 2010) (unpublished). The Southern District of Florida determined that the creator of a music file published the file when he posted it on the internet because it could be downloaded and copied by members of the public. See Kernal Records Oy v. Mosley, 794 F.Supp.2d 1355, 1364 (S.D.Fla.2011). Citing Getaped.Com, Inc., the Eastern District of Arkansas found that photographs that were accessible online to others who could download them freely were published. William Wade Waller Co. v. Nexstar Broad., Inc., No. 4-10-CV-00764 GTE, 2011 WL 2648584, at *2 (E.D.Ark. July 6, 2011). Without discussion or explanation, another district court stated that the defendant "published a You-Tube video of a musical work." Erickson v. Blake, 839 F.Supp.2d 1132, 1134 (D.Or.2012).
Although the current trend appears to favor finding works posted on the internet to be published, the reasons for finding publication varies from case to case and is fact dependent. See, e.g., Kernal Records Oy, 794 F.Supp.2d at 1364 n. 7 (suggesting that the court's decision hinged on the particular facts before it); Thomas F. Cotter, Toward a Functional Definition of Publication in Copyright Law, 92 Minn. L.Rev. 1724, 1768-70 (2008) (opining that whether an internet transmission is a publication depends on whether the facts indicate that the website users were authorized to make copies, i.e., whether a distribution occurred). Absent binding law or even a clear consensus in case law directly related to the posting of a website online, the court is not inclined to negate the presumption of validity by finding, as a matter of law, that Plaintiff distributed copies of the websites when he uploaded them to the internet.
Perhaps because the courts are not unified on the issue and neither the Copyright Act nor the regulations have addressed internet works, the Copyright Office continues its "long-standing practice" to "ask[] the applicant, who knows the facts surrounding distribution of copies of a work, to determine whether the work is published or not." Copyright Office, Circular 66: Copyright Registration for Online Works, p. 3; see also Compendium II: Copyright Office Practices, § 904(1) (stating that the Copyright Office usually does not attempt to decide whether publication has occurred, leaving the decision to the applicant). On the other hand, the Copyright Office will not register the work as unpublished if the supporting statement of facts clearly shows that publication has occurred. Compendium II: Copyright Office Practices, § 904(5).
The definition of "publication," as discussed above, includes public distribution of copies of a work only in cases of "sale or other transfer of ownership, or by rental, lease, or lending." 17 U.S.C. § 101. This includes the offer to distribute copies to a group for further distribution. Id.
Relying on a district court case out of Southern District of New York, Defendant argues that Plaintiff "sold and/or licensed" the webpages to Defendant and its members. In McLaren, the case cited by Defendant, the plaintiff received a copyright registration certificate for a published collection of mannequin designs. McLaren, 2010 WL 4615772, at *1. In her application, the plaintiff represented that she had created and first published the collection in 2000. Id. She conceded before the court, however, that she had published certain ones of the collection design illustrations prior to publication of the collection as a whole. See id. at *2. Two years prior to publishing the collection, the plaintiff had licensed some of the collection designs to a mannequin manufacturer, including the design allegedly infringed. Id. at **1, 2. The plaintiff argued that prior publication of certain of the designs did not preclude the entire collection from qualifying as a single work. Id. at *2.
The court agreed with the defendant that "[t]he most natural reading of the regulation's requirement that the copyrightable works form a `single unit of publication' is that the works must be first published together to qualify as such." Although there appeared to be no debate whether the plaintiff had previously published a portion of the designs in the collection, the court noted that a prior licensing agreement covering certain designs, from which the licensee produced and sold
McLaren carries little weight with this court because its focus is on the second part of the publication definition, regarding the transfer of ownership or the renting, leasing, or lending of a work, not on the public distribution aspect. This case differs from McLaren, because Plaintiff did not license the websites to Defendant so that it could produce and sell them. In McLaren, there was no question as to distribution to the public.
Accordingly, the court finds that regardless of the licensing arrangement between Plaintiff and Defendant, the court cannot hold, as a matter of law, that the webpages were published unless public distribution occurred. The court's finding with regard to Defendant's failure to prove as a matter of law that posting the webpages on the reliabilitymall.com website constituted a distribution at all, rendering the issue of selling or licensing immaterial.
Defendant has not shown as a matter of law that Plaintiff's characterization of the website collection as unpublished was an error. Defendant has failed to meet its burden to rebut the presumption of validity as to Plaintiff's copyright.
Based on the foregoing, the court
