PUBLISHED
`
`UNITED STATES COURT OF APPEALS
`FOR THE FOURTH CIRCUIT
`
`No. 12-2102
`
`
`METROPOLITAN REGIONAL INFORMATION SYSTEMS, INC.,
`
`
`Plaintiff - Appellee,
`
`v.
`
`AMERICAN HOME REALTY NETWORK, INC.,
`
`
`Defendant – Appellant,
`
`and
`
`JONATHAN J. CARDELLA; NATIONAL ASSOCIATION OF REALTORS,
`
`
`Defendants.
`
`-------------------------
`
`CONSUMER ADVOCATES IN AMERICAN REAL ESTATE,
`
`
`Amicus Supporting Appellant.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`No. 12-2432
`
`
`METROPOLITAN REGIONAL INFORMATION SYSTEMS, INC.,
`
`
`Plaintiff – Appellee,
`
`v.
`
`AMERICAN HOME REALTY NETWORK, INC.,
`
`
`Defendant – Appellant,
`
`and
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES COURT OF APPEALS
`FOR THE FOURTH CIRCUIT
`
`No. 12-2102
`
`
`METROPOLITAN REGIONAL INFORMATION SYSTEMS, INC.,
`
`
`Plaintiff - Appellee,
`
`v.
`
`AMERICAN HOME REALTY NETWORK, INC.,
`
`
`Defendant – Appellant,
`
`and
`
`JONATHAN J. CARDELLA; NATIONAL ASSOCIATION OF REALTORS,
`
`
`Defendants.
`
`-------------------------
`
`CONSUMER ADVOCATES IN AMERICAN REAL ESTATE,
`
`
`Amicus Supporting Appellant.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`No. 12-2432
`
`
`METROPOLITAN REGIONAL INFORMATION SYSTEMS, INC.,
`
`
`Plaintiff – Appellee,
`
`v.
`
`AMERICAN HOME REALTY NETWORK, INC.,
`
`
`Defendant – Appellant,
`
`and
`
`
`
`
`
`
`
`
`
`
`
`JONATHAN J. CARDELLA; NATIONAL ASSOCIATION OF REALTORS,
`
`
`Defendants.
`
`-------------------------
`
`CONSUMER ADVOCATES IN AMERICAN REAL ESTATE,
`
`
`Amicus Supporting Appellant.
`
`
`
`
`
`
`
`
`Appeals from the United States District Court for the District
`of Maryland, at Greenbelt. Alexander Williams, Jr., District
`Judge. (8:12-cv-00954-AW)
`
`
`Decided: July 17, 2013
`Argued: May 15, 2013
`
`
`Before TRAXLER, Chief Judge, and GREGORY and DUNCAN, Circuit
`Judges.
`
`
`Affirmed by published opinion. Judge Duncan wrote the opinion,
`in which Chief Judge Traxler and Judge Gregory joined.
`
`
`ARGUED: Peter Farkas, FARKAS & TOIKKA LLP, Washington, D.C., for
`Appellant. Margaret Aldona Esquenet, FINNEGAN, HENDERSON,
`FARABOW, GARRETT & DUNNER, LLP, Washington, D.C., for Appellee.
`ON BRIEF: Richard S. Toikka, FARKAS & TOIKKA LLP, Washington,
`D.C.; Christopher R. Miller, Chief Legal Officer and General
`Counsel, AMERICAN HOME REALTY NETWORK, INC., San Francisco,
`California, for Appellant. John T. Westermeier, FINNEGAN,
`HENDERSON, FARABOW, GARRETT & DUNNER, LLP, Reston, Virginia, for
`Appellee. Douglas R. Miller, Executive Director and Attorney,
`CONSUMER ADVOCATES IN AMERICAN REAL ESTATE, Navarre, Minnesota,
`for Amicus Supporting Appellant.
`
`
`
`
`
`
`
`
`2
`
`
`
`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 AHRN appealed. For
`the reasons that follow, we affirm.
`
`
`I.
`A.
`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.
`
`
`
`3
`
`
`
`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:
`All images submitted to the MRIS Service become the
`exclusive property of [MRIS]. By submitting an image,
`you hereby irrevocably assign (and agree to assign) to
`MRIS, free and clear of any restrictions or
`encumbrances, all of your rights, title and interest
`in and to the image submitted. This assignment
`includes, without limitation, all worldwide copyrights
`in and to the image, and the right to sue for past and
`future infringements.
`
`J.A. 4641 (emphasis added). In order to submit photographs to
`the MRIS Database, the subscriber must click a button to assent
`to the TOU.2 In exchange, subscribers are granted access to all
`of the real estate listings in the MRIS Database (including
`competitors’ listings) and a nonexclusive license to display
`those listings on their own brokerage and/or agency websites via
`data feed.
`To protect its claims of copyright ownership in the MRIS
`Database, MRIS affixes its mark and copyright notice--e.g., “©
`
`1 Citations to “J.A.” throughout this opinion refer to the
`Joint Appendix filed in the initial appeal, while “S.J.A.”
`refers to the Supplemental Joint Appendix filed in the second,
`consolidated appeal.
`2 The record is not clear as to the precise manner in which
`the TOU appears to subscribers.
`
`
`
`4
`
`
`
`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. 460.3 For example, one
`application from 2008 reads, in pertinent part:
`Type of Work: Computer File
`
`Application Title: Group registration for automated
`database titled Metropolitan Regional Information
`Systems, Inc. MRIS Database; unpublished updates from
`September 1, 2007 to December 31, 2007.
`
`Authorship on Application: [MRIS], employer for
`hire[.]
`
`of
`versions
`Previous
`
`Material:
`Pre-existing
`unpublished automated database updated and revised
`from September 1, 2007 to December 31, 2007.
`
`Basis of Claim: Daily updated and revised text and
`images and new text and images.
`
`Copyright Note: Regarding deposit: Application states
`that
`ID
`material
`(database
`records)
`from
`representative date December 31, 2007.
`
`J.A. 426. Other applications list “text,” or “text,
`photographs,” as pre-existing material or the basis of the
`claim. See, e.g., J.A. 428-30. According to MRIS, its
`quarterly registrations of the MRIS Database “extend to the
`
`3 See also J.A. 158-67, 426-30 (copies of registration
`applications spanning the period from October 1, 2003 to
`December 31, 2011); J.A. 406-25, 431-58 (corresponding
`certificates of registration). As AHRN notes, these
`registration certificates do not identify the names of any of
`the authors or titles of individual photographs. See
`Appellant’s Br. at 42.
`
`
`
`5
`
`
`
`collection and compilation of the real estate listings in the
`MRIS Database and to expressive contributions created by MRIS or
`acquired by MRIS, including the photographs included in the
`listings.” J.A. 460.
`
`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.
`B.
`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
`
`
`
`6
`
`
`
`rejected that idea and, on March 28, 2012, filed suit against
`AHRN and its CEO, Jonathan Cardella,4 alleging various claims
`related to copyright infringement. A few days later, MRIS
`sought a preliminary injunction under the Copyright Act, which
`authorizes a federal court to “grant temporary and final
`injunctions on such terms as it may deem reasonable to prevent
`or restrain infringement of a copyright.” 17 U.S.C. § 502(a).
`AHRN moved to dismiss for lack of personal jurisdiction,
`improper venue, and failure to state a claim. The district
`court denied AHRN’s motion to dismiss, and granted MRIS’s motion
`for preliminary injunction. See 888 F. Supp. 2d 691 (D. Md.
`2012). AHRN timely appealed.
`In response to motions filed by the parties, the district
`court revised its preliminary injunction order while the appeal
`was still pending.5 The revised order specifies that the court
`enjoins only AHRN’s use of MRIS’s photographs--not the
`compilation itself or any textual elements that might be
`considered part of the compilation--and also renders the
`injunction’s effect conditional upon MRIS’s posting of security.
`
`
`4 The district court dismissed Cardella from the action for
`lack of personal jurisdiction. He is not party to this appeal.
`5 Specifically, the district court granted AHRN’s motion for
`clarification, granted in part MRIS’s motion for modification,
`and denied AHRN’s motion for reconsideration or suspension.
`
`
`
`7
`
`
`
`See 904 F. Supp. 2d 530 (D. Md. 2012). AHRN again appealed, and
`the two appeals were consolidated. We thus review AHRN’s
`remaining challenges to the district court’s revised preliminary
`injunction order.6
`
`
`II.
`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 (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
`
`
`6 Following the district court’s entry of the revised order,
`AHRN withdrew the objections raised in its first appeal to the
`order’s lack of specificity and failure to require security.
`See Appellant’s Supp. Br. at 2.
`
`
`
`8
`
`
`
`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.7
`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.8 To the extent AHRN argues that
`
`
`7 AHRN also challenges the district court’s evaluation of
`the second, third, and fourth prongs of the preliminary
`injunction analysis. Because we find AHRN’s arguments in this
`regard to be without merit, and because they are largely factual
`inquiries to which we afford substantial deference to the
`district court, we reject them without further discussion here.
`8 Nor could it reasonably do so. “For more than a century
`photographs have been held to be copyrightable ‘writings’ under
`Article I, § 8 of the Constitution.” Rogers v. Koons, 960 F.2d
`301, 306 (2d Cir. 1992) (citation omitted). This is so even
`when they are largely “factual,” rather than artistic, in
`nature. See Burrow-Giles Lithographic Co. v. Sarony, 111 U.S.
`53, 60-61 (1884) (recognizing wide copyright protection over
`photographs in holding that a photograph of Oscar Wilde was an
`(Continued)
`
`
`
`9
`
`
`
`the MRIS Database itself fails to merit copyright protection in
`its originality as a compilation, we reject this contention as
`well.9
`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 present novel
`questions, we ultimately reject both.
`A.
`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
`
`
`
`original work of art because the author was required to make
`such creative decisions as placement of Oscar Wilde in front of
`the camera, selection of the angle, light and shade, etc.).
`9 As the Supreme Court has made clear, it is only a “narrow
`category of works in which the creative spark is utterly lacking
`or so trivial as to be virtually nonexistent” so as to render
`the work “incapable of sustaining a valid copyright.” Feist
`Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 359 (1991).
`Furthermore, originality is usually considered a question of
`fact, Craigslist, Inc. v. 3Taps Inc., 2013 WL 1819999, at *6
`n.11 (N.D. Cal. April 30, 2013) (citations omitted); thus, we
`may reverse the district court’s finding here only if it is
`clearly erroneous--which it is not.
`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.
`
`
`
`
`10
`
`
`
`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).
`
`
`
`11
`
`
`
`As relevant here, compilations made up of individual
`components which are themselves copyrightable are called
`“collective works.” A collective work is:
`a work, such as a periodical issue, anthology, or
`encyclopedia, in which a number of contributions
`constituting separate and independent works in
`themselves, are assembled into a collective whole.
`
`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:
`In the absence of an express transfer of the copyright
`or of any rights under it, the owner of copyright in
`the collective work is presumed to have acquired only
`the privilege of reproducing and distributing the
`contribution as part of that particular collective
`work, any revision of that collective work, and any
`later collective work in the same series.
`
`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.
`
`
`
`12
`
`
`
`B.
`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 of those photographs by AHRN in this action. See
`17 U.S.C. §§ 409, 411(a); Reed Elsevier, Inc. v. Muchnick, 559
`U.S. 154, 157-58 (2010).
`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
`
`
`
`13
`
`
`
`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).
`
`
`
`14
`
`
`
`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 apply the Copyright Act’s registration
`
`
`
`15
`
`
`
`requirement to collective works and their component parts. Some
`courts have barred infringement suits to protect copyrighted
`component works for failure to comply with Section 409’s pre-
`suit registration requirement where the authors of those
`component works were not listed in the application to register
`the collective work. See, e.g., Muench Photography, Inc. v.
`Houghton Mifflin Harcourt Publ’g Co., 712 F. Supp. 2d 84, 94
`(S.D.N.Y. 2010) (“[A]sking the Court flatly to ignore the
`requirement that the authors’ names be listed . . . goes a
`bridge too far” in the context of automated databases); Bean v.
`Houghton Mifflin Harcourt Publ’g Co., 2010 WL 3168624, at *4 (D.
`Ariz. Aug. 10, 2010) (holding that registrations of collective
`works
`containing
`numerous
`photographs
`by
`different
`photographers, all of whom assigned their rights to the
`collective work author prior to his registration, were
`insufficient to permit each photographer to sue for copyright
`infringement); Alaska Stock, LLC v. Houghton Mifflin Harcourt
`Publ’g Co., 2010 WL 3785720, at *4 (D. Ala. Sept. 21, 2010)
`(adopting approach taken in Bean and Muench in holding that
`registration of CD-ROMS as automated databases did not effect
`registration of the copyrights in the individual images that
`comprise the databases).
`
`On the other hand, some courts have recognized collective
`work registrations as sufficient to permit an infringement
`
`
`
`16
`
`
`
`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).
`
`
`
`17
`
`
`
`We find this latter approach more consistent with the
`statutory and regulatory scheme.10 Indeed, as for the trend
`embodied in the former group of cases, “[t]he Copyright Office
`is optimistic that those decisions will be overturned on
`appeal.” Final Rule, Deposit Requirements for Registration of
`Automated Databases That Predominantly Consist of Photographs,
`77 Fed. Reg. 40268, 40270 (July 9, 2012). Bean, in particular,
`is factually inapposite because it addresses the distinct issue
`of whether individual photographers may use a third party’s
`collective work registration to satisfy their pre-suit
`registration requirement against subsequent infringers.
`Here, MRIS owned the copyright in each of the thousands of
`component photographs that had been transferred to MRIS prior to
`
`
`10 Notably, the government’s amicus brief in the appeal of
`Bean currently pending before the Ninth Circuit explains the
`Department of Justice’s position that, “if the author of a
`collective work is also the author of the component works, or if
`the authors of the component works transfer all rights in the
`works to him, the author of the collective work may claim a
`copyright in the component works that make up the collective
`work,” even where the registration for the collective work fails
`to identify the author and title of each component work. See
`J.A. 378 (citing 17 U.S.C. § 201(d)). The amicus brief points
`to Circulars issued by the Copyright Office, in which “the
`Copyright Office has consistently taken the position that the
`registration of a collective work also registers any
`independently copyrightable works within the collective work--
`referred to here as ‘component works’--in which the claimant
`owns all rights, even if the registration application does not
`specify the titles and authors of the component works.” Id. at
`380.
`
`
`
`18
`
`
`
`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
`
`
`
`19
`
`
`
`photographs
`individual
`the
`copyright claim extends to
`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.11 However, this amended
`regulation was not in effect at the time of MRIS’s registrations
`in this case, at which point no such requirement existed for
`group registration of photographic component works. We will not
`find MRIS’s compilation registrations inadequate for failing to
`comply with later-added requirements. Furthermore, we note that
`neither the Copyright Office nor the district court has
`determined that the MRIS Database consists predominantly of
`photographs, and we decline to undertake that decision here.
`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
`
`
`11 The final rule implements this change by adding
`“automated databases that consist predominantly of photographs”
`to the list of applications for which registrants are required
`to provide all photographs covered by a registration as part of
`the deposit. See 37 C.F.R. § 202.20(c)(2)(xx) (as amended August
`8, 2012).
`
`
`
`20
`
`
`
`its copyrighted photographs, which were registered as component
`works in its automated database registrations, in the present
`action.
`
`C.
`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. 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
`
`
`
`21
`
`
`
`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
`
`
`
`22
`
`
`
`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 requ
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