Copyright Ruling on Photo Registrations

Talk about winning on a technicality. In a copyright infringement case brought by photographers who sued Houghton Mifflin Harcourt Publishing Co. over the allegedly unapproved use of their photos, Chief Judge Loretta Preska of Manhattan federal district court ruled in May that the works at issue had not been properly registered. Judge Preska threw out most of the photographers' claims in her 24-page ruling. Muench Photography Inc. v. Houghton Mifflin Harcourt Publishing Co., 09-CV-2669 (LAP).

The plaintiff in the case, Muench Photography Inc. (MPI), licenses the works of photographers Marc and David Muench. The Muenches alleged that Houghton exceeded the scope and terms of licenses MPI had sold the publisher between 2001 and 2006. But Houghton's lawyers at Skadden, Arps, Slate, Meagher & Flom argued in a summary judgment motion that the works at issue had not been properly registered with the U.S. Copyright Office because the author of each individual photograph was not identified, as the Copyright Act requires. The images had been registered by MPI's agent, Corbis, as part of a database of works by different photographers. MPI was not named as an author on the registration form.

To make things a bit more interesting, MPI's lawyers at Harmon & Seidman introduced evidence that the Copyright Office had approved the registration of the collection, informing MPI that it did not require the names of the individual photographers.

The question of whether individual photographers may enforce copyrights on works registered as a collection was one of first impression. Judge Preska decided that Houghton's lawyers at Skadden were right, even though the Copyright Office had advised MPI otherwise. “The court's ruling, although a seemingly harsh result for MPI, is guided by the clear language of the Copyright Act,” she wrote. “The fault in this case lies solely with the Copyright Office and its relaxed interpretation of the statute.”

Houghton attorney Mary Rasenberger of Skadden, a veteran of the Copyright Office, told us that Judge Preska's decision is important because photographers who don't register their works properly can't seek statutory damages; they can only seek actual damages and profits. Skadden attorneys Ed Crane, Russell Jackson, and Ken Plevan also worked on Houghton's case.

MPI counsel Maurice Harmon of Harmon & Seidman says he was “surprised” that Judge Preska did not address an amendment to the Copyright Act in 2008 that he believes would have allowed his client's claims to move forward. He says that other issues in the case have to be addressed before he decides whether to appeal the decision.

Talk about winning on a technicality. In a copyright infringement case brought by photographers who sued Houghton Mifflin Harcourt Publishing Co. over the allegedly unapproved use of their photos, Chief Judge Loretta Preska of Manhattan federal district court ruled in May that the works at issue had not been properly registered. Judge Preska threw out most of the photographers' claims in her 24-page ruling. Muench Photography Inc. v. Houghton Mifflin Harcourt Publishing Co., 09-CV-2669 (LAP).

The plaintiff in the case, Muench Photography Inc. (MPI), licenses the works of photographers Marc and David Muench. The Muenches alleged that Houghton exceeded the scope and terms of licenses MPI had sold the publisher between 2001 and 2006. But Houghton's lawyers at Skadden, Arps, Slate, Meagher & Flom argued in a summary judgment motion that the works at issue had not been properly registered with the U.S. Copyright Office because the author of each individual photograph was not identified, as the Copyright Act requires. The images had been registered by MPI's agent, Corbis, as part of a database of works by different photographers. MPI was not named as an author on the registration form.

To make things a bit more interesting, MPI's lawyers at Harmon & Seidman introduced evidence that the Copyright Office had approved the registration of the collection, informing MPI that it did not require the names of the individual photographers.

The question of whether individual photographers may enforce copyrights on works registered as a collection was one of first impression. Judge Preska decided that Houghton's lawyers at Skadden were right, even though the Copyright Office had advised MPI otherwise. “The court's ruling, although a seemingly harsh result for MPI, is guided by the clear language of the Copyright Act,” she wrote. “The fault in this case lies solely with the Copyright Office and its relaxed interpretation of the statute.”

Houghton attorney Mary Rasenberger of Skadden, a veteran of the Copyright Office, told us that Judge Preska's decision is important because photographers who don't register their works properly can't seek statutory damages; they can only seek actual damages and profits. Skadden attorneys Ed Crane, Russell Jackson, and Ken Plevan also worked on Houghton's case.

MPI counsel Maurice Harmon of Harmon & Seidman says he was “surprised” that Judge Preska did not address an amendment to the Copyright Act in 2008 that he believes would have allowed his client's claims to move forward. He says that other issues in the case have to be addressed before he decides whether to appeal the decision.