FOR PUBLICATION
`
`UNITED STATES COURT OF APPEALS
`FOR THE NINTH CIRCUIT
`
`ALASKA STOCK, LLC,
`Plaintiff-Appellant,
`
`v.
`
`HOUGHTON MIFFLIN HARCOURT
`PUBLISHING COMPANY; R.R.
`DONNELLEY & SONS COMPANY,
`Defendants-Appellees.
`
`No. 10-36010
`
`D.C. No.
`3:09-cv-00061-HRH
`
`OPINION
`
`Appeal from the United States District Court
`for the District of Alaska
`H. Russel Holland, Senior District Judge, Presiding
`
`Argued and Submitted July 27, 2011
`Submission Withdrawn June 7, 2012
`Resubmitted January 10, 2014
`Anchorage, Alaska
`
`Filed March 18, 2014
`
`Before: Diarmuid F. O’Scannlain,* Andrew J. Kleinfeld,
`and Consuelo M. Callahan, Circuit Judges.
`
`Opinion by Judge Kleinfeld
`
` * Judge Betty B. Fletcher was a member of the panel but passed away
`after oral argument. Judge O’Scannlain was drawn to replace her. He has
`read the briefs, reviewed the record, and listened to the tape of oral
`argument held on July 27, 2011.
`
`
`
`UNITED STATES COURT OF APPEALS
`FOR THE NINTH CIRCUIT
`
`ALASKA STOCK, LLC,
`Plaintiff-Appellant,
`
`v.
`
`HOUGHTON MIFFLIN HARCOURT
`PUBLISHING COMPANY; R.R.
`DONNELLEY & SONS COMPANY,
`Defendants-Appellees.
`
`No. 10-36010
`
`D.C. No.
`3:09-cv-00061-HRH
`
`OPINION
`
`Appeal from the United States District Court
`for the District of Alaska
`H. Russel Holland, Senior District Judge, Presiding
`
`Argued and Submitted July 27, 2011
`Submission Withdrawn June 7, 2012
`Resubmitted January 10, 2014
`Anchorage, Alaska
`
`Filed March 18, 2014
`
`Before: Diarmuid F. O’Scannlain,* Andrew J. Kleinfeld,
`and Consuelo M. Callahan, Circuit Judges.
`
`Opinion by Judge Kleinfeld
`
` * Judge Betty B. Fletcher was a member of the panel but passed away
`after oral argument. Judge O’Scannlain was drawn to replace her. He has
`read the briefs, reviewed the record, and listened to the tape of oral
`argument held on July 27, 2011.
`
`
`
`2
`
`ALASKA STOCK V. HOUGHTON MIFFLIN
`
`SUMMARY**
`
`Copyright
`
`Reversing the district court’s dismissal of a copyright
`infringement action, the panel held that copyright registration
`of a collective work registers the component works within it.
`
`The panel held that the Register of Copyrights had
`authority to prescribe a form and grant certificates extending
`registration to individual stock photographs within a
`collection where the names of each of the photographers, and
`titles for each of the photographs, were not provided on the
`registration applications. Agreeing with other Circuits, and
`deferring to the Copyright Office’s interpretation of the
`Copyright Act, the panel held that where the photographers
`had assigned their ownership of their copyrights in their
`images to the stock agency, and the stock agency had
`registered the collection, both the collection as a whole and
`the individual images were registered.
`
`COUNSEL
`
`Maurice Harmon (argued), Harmon & Seidman LLC,
`Northampton, Pennsylvania; Christopher Seidman, Autumn
`W. Boyd, and Craig F. Wallace, Harmon & Seidman LLC,
`Grand Junction, Colorado; Brent R. Cole, Marston & Cole
`PC, Anchorage, Alaska, for Plaintiff-Appellant.
`
` ** This summary constitutes no part of the opinion of the court. It has
`been prepared by court staff for the convenience of the reader.
`
`
`
`ALASKA STOCK V. HOUGHTON MIFFLIN
`
`3
`
`J. Russell Jackson (argued), Skadden, Arps, Slate, Meagher
`& Flom LLP, New York, New York; Daniel C. Kent, Birch,
`Horton, Bittner, and Cherot, Anchorage, Alaska, for
`Defendants-Appellees.
`
`Tony West, Assistant Attorney General; Scott McIntosh and
`Melissa N. Patterson (argued), Attorneys, Appellate Staff,
`Department of Justice, Civil Division, Washington, D.C.;
`David Carson, General Counsel; Robert Kasunic, Deputy
`General Counsel, United States Copyright Office,
`Washington, D.C., for Amicus Curiae United States of
`America.
`
`OPINION
`
`KLEINFELD, Senior Circuit Judge:
`
`We address whether copyright registration of a collective
`work registered the component works within it.
`
`Facts
`
`This case was dismissed for failure to state a claim, so we
`assume for purposes of analysis that the facts were as pleaded
`in the complaint.
`
`Alaska Stock, a stock photography agency, registered
`large numbers of photographs at a time, listing only some of
`the authors and not listing titles for each photograph. It
`licensed Houghton Mifflin Harcourt Publishing Company to
`use pictures it had registered, for fees based on the number of
`publications. Houghton Mifflin and its printer, R.R. Donnelly
`& Sons, greatly exceeded the number of publications
`
`
`
`ALASKA STOCK V. HOUGHTON MIFFLIN
`
`oughton Mifflin had paid for, so Alaska Stock sued for
`injunctive relief, actual and statutory damages, attorneys’
`fees, and costs.
`
`4 H
`
`Alaska Stock owned the copyrights to all the photographs
`issue, pursuant
`to assignment by
`the
`individual
`at
`photographers. It registered the copyrights by registering CD
`catalogs and databases of the stock photos, entitled “Alaska
`Stock CD catalog 4” and so forth, which contained images of
`each of the photographs. For “name of author” on its
`application, it listed only three of many, in the form “1) Jeff
`Schultz 2) Chris Arend 3) Johnny Johnson & 103 others.”
`
`This form of registration was prescribed by the Register
`of Copyrights and was consistent with Copyright Office
`procedure for thirty years. The district court nevertheless
`dismissed the claims on the ground that the registrations were
`defective, because Alaska Stock had not provided the names
`of each of the photographers and the titles of each of the
`photographs in its registrations. The theory of the dismissal
`was that the registrations succeeded only in registering the
`catalogs themselves, not the individual photographs within
`them, on account of Alaska Stock’s failure to list authors and
`titles. The district court held that the statute unambiguously
`required titles and authors, so the administrative practice to
`the contrary and a statutory savings clause for immaterially
`inaccurate information could not save the claims.
`
`We reverse.
`
`We first expand somewhat on the history that led to the
`registrations in the form used, and then explain why the
`registrations sufficed under the statute.
`
`
`
`ALASKA STOCK V. HOUGHTON MIFFLIN
`
`5
`
`Professional photographers make their living in various
`ways, sometimes shooting pictures for weddings, sometimes
`for advertisements, sometimes “stock.”
`
`In “stock
`photography,” the photographer usually makes the images
`before he has a customer. He then contracts with a stock
`agency for the agency to handle copyright registration and
`licensing, often for a cash payment up front to the stock
`agency and a percentage of whatever the stock agency
`collects. Purchasers buy permission from the stock agency to
`use particular pictures, usually for a limited number of copies,
`with the prices varying from less than a dollar to perhaps a
`couple of hundred dollars. The photographer’s income
`depends on getting noticed and on volume, since the pictures
`are licensed so inexpensively. Stock agencies relieve the
`photographers of some of the burden of managing the
`commercial end of their business, so that they can focus more
`on making images, and they relieve publishers of the burden
`of locating photographers and purchasing rights to use the
`images they want.
`
`A particularly important task the stock agencies may
`perform is at issue here: registering copyrights, to deter
`pirating. That is what Alaska Stock did for the many
`photographers whose images are affected by this case.
`Alaska Stock registered thirteen automated databases1 and
`one “CD-ROM collection” of photographs. Alaska Stock’s
`photographs are each independently copyrighted, so the
`databases and CD-ROM at issue are each a “collective work”
`under the Copyright Act. The several databases contained
`between 500 and 6,000 individual photographs each. Each
`database or CD-ROM contained the work of between 32 and
`106 photographers.
`
` 1 37 C.F.R. § 202.3(b)(4) (2006) recodified at § 202.3(b)(5).
`
`
`
`6
`
`ALASKA STOCK V. HOUGHTON MIFFLIN
`
`The copyright laws and procedures are complex, so photo
`stock agencies worked out the registration procedure with the
`federal agency in charge. Some stock agencies (such as the
`plaintiff in this case) are very small businesses reliant on a
`trade association to work out the procedures they should
`follow. In 1995, a trade association of stock agencies, Picture
`Agency Council of America, Inc., met with the Register of
`Copyright (the head of the Copyright Office), her Chief
`Examiner, and other Copyright Office staff, to work out how
`to register large catalogs of images. The Register agreed that
`a stock agency could register both a catalog of images and the
`individual photographs in the catalog in one application if the
`photographers temporarily transferred their copyrights to the
`stock agency for the purposes of registration.
`
`The trade association confirmed this with the Copyright
`Office in writing, and advised its member stock agencies.
`Using language suggested by the Copyright Office, Alaska
`Stock’s typical pre-2001 agreement with a photographer
`includes this language: “I grant Alaska Stock the right to
`register for copyright my photographs which appear in this
`catalog in the name of Alaska Stock solely for the purpose of
`catalog registration. Alaska Stock shall reassign such
`copyright to me upon request.” The post-2001 language was
`materially similar: “Photographer grants to Alaska Stock,
`solely for the purpose of registration, the copyright . . . .”
`
`The Copyright Office provided a letter to the trade
`association telling it how stock photo catalogs ought to be
`registered. The letter says that listing only three individual
`photographers by name, followed by the phrase “and x
`[number] others,” and naming the agency as owner of the
`copyrights was “acceptable when the accompanying deposit
`copies are catalogs consisting of photographs.” A copyright
`
`
`
`ALASKA STOCK V. HOUGHTON MIFFLIN
`
`7
`
`examiner would interpret such filings to mean that the claim
`being registered would include the catalog and “extend also
`to the photographs themselves.” The letter says that a
`“registration application submitted for a work created by a
`large number of authors is considered acceptable ‘if it names
`at least three of those authors followed by a statement such as
`“and (number) others.”’” Though
`the office had a
`“preference” for naming all the authors, the Copyright Office
`letter says that it is “just that—a preference but not a
`requirement.”
`
`Having the written blessing of the federal administrative
`agency for its method, Alaska Stock filed its applications in
`accord with what the Copyright Office had said was required.
`The registration quoted above is its standard form, and was
`adequate under the Copyright Office procedures in effect at
`the time to register the individual images. The deposits filed
`with the registration applications show innumerable beautiful
`images of mountains, glaciers, polar bears, grizzly bears, bald
`eagles, dog mushing, and other subjects evoking the North.
`The Copyright Office approved Alaska Stock’s applications
`and issued certificates of registration to the company.
`
`Alaska Stock’s contracts with photographers require the
`photographers to pay Alaska Stock substantial amounts per
`image, and entitle them to 35% to 50% of revenues Alaska
`Stock obtains from their images. Alaska Stock sold
`Houghton Mifflin limited licenses to copy and distribute
`limited numbers of copies of the designated images.
`Houghton Mifflin greatly exceeded the license limits. The
`complaint alleges that this was a willful and fraudulent
`business method, designed to lull licensors into a false
`confidence, because having placed a photograph with a stock
`
`
`
`ALASKA STOCK V. HOUGHTON MIFFLIN
`
`8 a
`
`gency, a photographer would assume nothing untoward
`when he saw it reproduced in a school textbook.
`
`The United States has filed an amicus brief in support of
`Alaska Stock, urging that we reverse. The position of the
`United States is that the Copyright Office “has long
`interpreted the Copyright Act to permit an application to seek
`registration of a collective work and the component works
`that the claimant owns, even if the application does not
`specify the authors and titles of the component works.” The
`government’s brief says that internal guidance for the
`copyright examiners has, consistent with this position,
`provided that registration of a collective work also registers
`independently copyrightable works within the component
`work. The Copyright Office takes the position that only the
`author of the collective work, not the individual authors of
`separate contributions, need be provided in the application.
`The names of three authors followed by a statement “and
`[number] others” suffices, as the letter from the Office to the
`trade association said. Circulars from the Office say the same
`thing. Alaska Stock complied with Copyright Office
`procedures. The United States says that this has been the
`Copyright Office interpretation “[f]or more than thirty years,
`since the Copyright Office started registering works under the
`Copyright Act of 1976.” In addition to a deference argument,
`the government makes a pragmatic argument, that “[m]any
`traditional forms of collective works, such as newspapers and
`magazines, can contain hundreds – if not thousands – of
`copyrightable works that the claimant owns but did not
`author,” and listing them individually would be unduly
`burdensome for applicants.
`
`
`
`ALASKA STOCK V. HOUGHTON MIFFLIN
`
`9
`
`Analysis
`
`We review de novo.2
`
`One can own a copyright without registering. When a
`photographer has fixed an image in a tangible medium of
`expression, he owns the copyright, even though he has not
`registered it with the Copyright Office.3 Registration is
`permissive, not mandatory, and may be made long after the
`work comes into existence.4 The owner has various exclusive
`rights in the work, regardless of whether it is registered.5 The
`photographer may transfer ownership of the copyright in
`whole or in part, and any of the exclusive rights of a
`copyright owner may be transferred and owned separately.6
`The owner to whom any particular right is transferred is
`entitled to all the protection and remedies of a copyright
`owner to the extent of the right transferred. It is undisputed
`that the limited assignments by the photographers to Alaska
`Stock were valid transfers, and that Alaska Stock is the owner
`of the copyrights for the purposes relevant to this case.
`
`What this case concerns is registration, not ownership.
`Though an owner has property rights without registration, he
`
` 2 Do Sung Uhm v. Humana, Inc., 620 F.3d 1134, 1139 (9th Cir. 2010).
`
` 3 See 17 U.S.C. § 102(a).
`
` 4 17 U.S.C. § 408(a).
`
` 5 See 17 U.S.C. § 106.
`
` 6 17 U.S.C. § 201(d).
`
`
`
`10
`
`ALASKA STOCK V. HOUGHTON MIFFLIN
`
`needs to register the copyright to sue for infringement.7
`Registration prior to infringement or, if the work is published,
`within three months of publication, is necessary for an owner
`to obtain statutory damages and attorneys’ fees.8 In this case,
`the photographers owned the copyrights and assigned
`ownership for registration purposes to Alaska Stock, which
`did indeed register them.
`
`When a registration application is approved, the Register
`“shall register the claim” and issue a certificate of
`registration.9 This certificate is not merely proof that an
`application was filed. It is an administrative approval. The
`Register makes a determination after examination whether the
`statutory requirements for registration are met, and either
`grants or refuses a registration certificate depending on that
`determination.10 If a certificate is refused, the applicant must
`be given notice of the reasons, which would enable the
`applicant to cure such defects as are alleged in this case.11
`The Register granted certificates to Alaska Stock, which she
`could only do if after examination she determined that the
`legal and formal requirements for registration were met.
`Alaska Stock lost in district court on the theory that its
`registration was defective.
`
` 7 17 U.S.C. § 411(a).
`
` 8 17 U.S.C. § 412.
`
` 9 17 U.S.C. § 410(a).
`
` 10 See id. § 410(a)–(b).
`
` 11 Id. § 410(b).
`
`
`
`ALASKA STOCK V. HOUGHTON MIFFLIN
`
`11
`
`The issue in this case arises because the phrase in the
`statute delegating authority to the Register to prescribe the
`forms used for registration applications says that the
`application “shall include” “the name . . . of the author or
`authors” and “the title of the work,” among other things.12
`
` 12 17 U.S.C. § 409. In relevant part, that subsection provides:
`
`The application for copyright registration shall be made
`on a form prescribed by the Register of Copyrights and
`shall include—
`
`(1) the name and address of the copyright claimant;
`
`(2) in the case of a work other than an anonymous or
`pseudonymous work, the name and nationality or
`domicile of the author or authors, and, if one or more of
`the authors is dead, the dates of their deaths;
`
`(3) if the work is anonymous or pseudonymous, the
`nationality or domicile of the author or authors; . . .
`
`. . .
`
`(5) if the copyright claimant is not the author, a brief
`statement of how the claimant obtained ownership of
`the copyright;
`
`(6) the title of the work, together with any previous or
`alternative titles under which the work can be
`identified; . . .
`
`. . .
`
`(9) in the case of a compilation or derivative work, 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[.]
`
`
`
`12
`
`ALASKA STOCK V. HOUGHTON MIFFLIN
`
`The Register of Copyrights has authority to permit “a single
`registration for a group of related works.”13 The issue is
`whether the Register could prescribe a form and grant
`certificates extending
`registration
`to
`the
`individual
`photographs at issue where the names of each of the
`photographers were not provided, and titles for each of the
`photographs were not provided, on the applications.
`
`First, names. The statute requires that the application
`include “the name and address of the copyright claimant,”14
`“the name and nationality or domicile of the author or
`authors,”15 and if the “claimant is not the author, a brief
`statement of how the claimant obtained the ownership of the
`copyright.”16 Alaska Stock gave its name and address as the
`claimant and a statement of how it came to be the owner.
`
`The issue of names arises from the provision requiring
`“the name and nationality or domicile of the author or
`authors.”17
` Pursuant to the Register of Copyright’s
`longstanding procedure, Alaska Stock’s applications gave
`three names and said how many other authors there were.
`The Register of Copyrights granted certificates based on these
`applications. Addressing this practice, the Associate Register
`
` 13 17 U.S.C. § 408(c)(1).
`
` 14 Id. § 409(1).
`
` 15 Id. § 409(2). If the work is anonymous or pseudonymous, only
`“nationality or domicile of the author or authors” must be listed. Id.
`§ 409(3).
`
` 16 Id. § 409(5).
`
` 17 Id. § 409(2).
`
`
`
`ALASKA STOCK V. HOUGHTON MIFFLIN
`
`13
`
`for Registration and Recordation of the United States
`Copyright Office filed a declaration stating that “[s]ince
`1980, the Copyright Office has permitted, as a matter of
`practice, copyright registrations of collective works to cover
`underlying contributions where
`the
`rights
`in
`those
`contributions belong to the claimant even though the
`individual contributors are not named in the registration
`form.” She attached a portion of the Copyright Office,
`Compendium II: Compendium of Copyright Office Practices
`(1984), corroborating her declaration. The Compendium says
`“the names of the individual authors of separate contributions
`being registered as part of the claim need not be given on the
`application.”
`
`Thus there is no question that Alaska Stock provided
`names as required by the Register of Copyrights pursuant to
`a longstanding administrative practice. And there is no
`question that Alaska Stock did not provide names of the
`authors of each of the photographs registered.
`
`Second, titles. The statute requires a “title” for the
`“work,” but only “an identification of any preexisting work
`or works that it is based on or incorporates” for compilations
`or derivative works.18
`
`The application for copyright registration
`shall be made on a form prescribed by the
`Register of Copyrights and shall include . . .
`
`. . .
`
` 18 17 U.S.C. § 409(6), (9).
`
`
`
`14
`
`ALASKA STOCK V. HOUGHTON MIFFLIN
`
`(6) the title of the work, together with any
`previous or alternative titles under which the
`work can be identified; . . .
`
`. . .
`
`(9) in the case of a compilation or derivative
`work, 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[.]19
`
`Alaska Stock provided titles for each work it registered, such
`as “Alaska Stock CD catalog 4,” and identified the contents
`with such phrases as “CD catalog of stock photos.” The
`applications did not provide titles for each photograph.
`
`The district court concluded that the Copyright Office
`practice could not be reconciled with the statute, as to both
`authors and titles, so the registrations were inadequate.
`Houghton Mifflin argues that the statute unambiguously
`requires the names of all the authors and titles of all the
`constituent works. This tension between at least a superficial
`reading of the statutory text and the long standing
`administrative practice, remains a serious issue.
`
`For titles, the statutory text and administrative practice are
`easily reconciled. The statute does not say that the
`registration application must include a “title” for each
`constituent work, just an “identification” of any “preexisting
`work or works”—Alaska Stock identified the contents with
`
` 19 Id.
`
`
`
`ALASKA STOCK V. HOUGHTON MIFFLIN
`
`15
`
`such phrases as “CD catalog of stock photos” and with CDs
`showing each image, even though it did not give each image
`a title.
`
`The requirement that the application must include the
`“title of the work” refers to the collective work itself. The
`statute expressly requires only “identification,” in the
`singular, not titles of preexisting works incorporated, and a
`“brief, general statement of the additional material being
`covered.”20 The definitions section defines a “collective
`work” in the singular, distinguishing it from “contributions”
`therein.21 Thus, the statute requires a title for “the work,” in
`the singular, which would be the collective work in this case.
`There is no inconsistency between the statutory language and
`the Copyright Office procedure, allowing identification of the
`“work” without requiring titles for each constituent of the
`work.
`
`The same analysis, that the “work” is what needs an
`author designated, applies to the authors subsection, even
`though unlike the “title” requirement it mentions “authors” in
`the plural:
`
`The application for copyright registration
`shall be made on a form prescribed by the
`Register of Copyrights and shall include . . .
`(2) in the case of a work other than an
`anonymous or pseudonymous work, the name
`and nationality or domicile of the author or
`
` 20 17 U.S.C. § 409(9).
`
` 21 17 U.S.C. § 101.
`
`
`
`16
`
`ALASKA STOCK V. HOUGHTON MIFFLIN
`
`authors, and, if one or more of the authors is
`dead, the dates of their deaths[.]22
`
`This subsection says that the name of the author or authors of
`“the work” must be provided, the statute defines a “collective
`work” as being a type of “work,”23 and here, the author of the
`collective work was Alaska Stock. The references to
`nationality and domicile have to do with the provisions for
`protection of works of foreign origin in another section of the
`statute,24 which are immaterial to this case. The “author or
`authors” that must be listed in this context are the author or
`authors of the collective work itself, and the applications in
`this case do name the author of “the work,” Alaska Stock.
`
`Houghton Mifflin argues that because the word “work” is
`used to refer to an individual “copyrighted work” elsewhere
`in the Copyright Act, it must have that meaning in section
`409. This argument arguably shows that the term “work” is
`ambiguous, but does not tell us which sense of the word
`“work” must be applied in the context of registering
`collective works.
` Moreover, Houghton Mifflin’s
`interpretation of section 409 would render another portion of
`the Copyright Act superfluous. Section 408(c)(2)(B) requires
`single registrations of certain previously published works to
`identify each work and “its date of first publication.” This
`requirement is redundant if section 409(8), imposing an
`identical requirement, applies to constituent works as well as
`to collective works. We should not “adopt an interpretation
`
` 22 17 U.S.C. § 409(2).
`
` 23 17 U.S.C. § 101.
`
` 24 17 U.S.C. § 104.
`
`
`
`ALASKA STOCK V. HOUGHTON MIFFLIN
`
`17
`
`of a congressional enactment which renders superfluous
`another portion of that same law.”25
`
`Additionally, Houghton Mifflin points us to what it sees
`as the “purpose” of registration: to create a public record of
`“what specific works of intellectual property are registered.”
`It contends that “[v]alidating registrations that intentionally
`lack the basic identifying information that Section 409
`requires would make that goal unattainable.” This policy
`argument suggests that numerous images by “Phillip
`Photographer” entitled “Mt. McKinley” would somehow
`identify the images more specifically than the images
`themselves, which were on the CDs.
`
`The government makes a practical policy argument to the
`contrary in its brief, that the expensive and error-prone
`tedium of the Copyright Office typing all the names into its
`records may explain why the Register of Copyrights was
`satisfied to have the names of only three authors for so many
`years. The government suggests that the elimination of this
`typing, because of electronic registrations, explains why the
`Register now is experimenting with new provisions requiring
`more information on material included within collective
`works.
`
`A 2011 interim rule explicates the administrative history
`relating to stock agency registrations. Subsequent to the
`registrations at issue in this case, the Copyright Office began
`beta testing of new procedures. A 2007 interim regulation
`addressed “the Beta test phase of the electronic, online
`
` 25 Mackey v. Lanier Collection Agency & Serv., Inc., 486 U.S. 825, 837
`(1988).
`
`
`
`18
`
`ALASKA STOCK V. HOUGHTON MIFFLIN
`
`registration system.”26 Then in 2011, the Copyright Office
`issued interim regulations for a pilot program for registration
`of automated databases and group
`registrations of
`photographs. The Office recited that for many years, “stock
`photography agencies have been able to obtain registrations
`covering all the photographs added to their databases within
`a three-month period when they have obtained copyright
`assignments from the photographers.”27 This alludes to the
`administrative practice the agency followed with Alaska
`Stock. The interim rule, setting out what forms to use, says
`that, even as of 2011, “questions remain about the capacity of
`the system to accommodate applications listing very large
`numbers of authors or titles,” which may affect file size and
`transmission speed.28
`
`The regulations in effect when Alaska Stock registered
`the catalogs at issue do not add much regarding names and
`titles. They do not say one way or the other whether the
`names of each of the authors and titles of each of the
`contributions have to be listed.
`
`The regulations do make clear the registration status of
`separate contributions to collective works. “Registration of
`an unpublished ‘collection’ extends to each copyrightable
`element in the collection and to the authorship, if any,
`involved in selecting and assembling the collection.”29
`
` 26 72 Fed. Reg. 36,883 (July 6, 2007).
`
` 27 76 Fed. Reg. 4072, 4073 (Jan. 24, 2011).
`
` 28 Id. at 4074.
`
` 29 37 C.F.R § 202.3(b)(3) (2006), recodified at § 202.3(b)(4).
`
`
`
`ALASKA STOCK V. HOUGHTON MIFFLIN
`
`19
`
`Where as here, the photographers have assigned their
`ownership of their copyrights in their images to the stock
`agency, and the stock agency registers the collection, both the
`collection as a whole and the individual images are
`registered.30
`
`Houghton Mifflin argues that a regulation requiring a
`continuation sheet to list titles within a collection shows that
`the Register does indeed require listing of all titles.31 This
`argument is meritless, because the regulation it depends on
`has an effective date of July 6, 2007, subsequent to all the
`registrations at issue in this case.32 While the previous
`version of the regulation provided for continuation sheets if
`applicants needed more space, it does not mandate, as the
`new regulation does, identifying titles and authors of the
`component works in a collection registered as an automated
`database.33
`
`The record reflects that the Register of Copyrights issued
`certificates of copyright on each of the registrations at issue.
`The statute saying what must be in an application appears to
`be addressed to her: “The application shall be made on a form
`prescribed by the Register of Copyrights and shall include
`
` 30 See Melville B. Nimmer & David Nimmer, 2 Nimmer on Copyright
`§ 7.16(B)(5)(c) (2013).
`
` 31 See 37 C.F.R. § 202.3(b)(3).
`
` 32 See 72 Fed. Reg. 36,883, 36,886 (July 6, 2007).
`
` 33 See 37 C.F.R. § 202.3(b)(9) (2006); see also 72 Fed. Reg. 36,883,
`36,886, 36,888 (July 6, 2007).
`
`
`
`20
`
`ALASKA STOCK V. HOUGHTON MIFFLIN
`
`. . . .”34 If an aggrieved party objected to the Register’s long
`standing procedure
`regarding stock photo agency
`registrations, petitions to the agency, participation in rule
`making, and actions for violations of the Administrative
`Procedure Act might have afforded remedies.35
`
`The Register of Copyrights does not perform a mere
`clerical function of recording applications. Instead, the
`Register makes a judgment after examining an application.
`“When, after examination, the Register of Copyrights
`determines” that the requirement of the statute are met, she
`registers the claim and issues a certificate, as she did in this
`case.36 When she determines that “the claim is invalid” she
`refuses registration and provides written notice of the reasons
`why.37 Though the certificate is not binding upon a court, it
`is prima facie evidence of the validity of the copyright.38 The
`regulations provide for an appellate process when registration
`is denied.39 Thus, the agency charged with responsibility for
`administering the Copyright Act has determined for each of
`the applications at issue that it was valid in all respects. Had
`the Copyright Office declined Alaska Stock’s applications
`and given notice that titles and authors for all the images must
`
` 34 17 U.S.C. § 409.
`
` 35 See 17 U.S.C. § 701(e).
`
` 36 See 17 U.S.C. § 410(a).
`
` 37 Id. § 410(b).
`
` 38 Id. § 410(c).
`
` 39 37 C.F.R. § 202.5.
`
`
`
`ALASKA STOCK V. HOUGHTON MIFFLIN
`
`21
`
`be provided, Alaska Stock could have submitted such
`applications at that time.
`
`The Fourth Circuit recently confronted the question we
`face in this case and adopted the position advocated by
`Alaska Stock and the government. Metropolitan Regional
`Information Systems, Inc. v. American Home Realty Network,
`Inc., addressed whether a real estate listing service had
`properly registered the individual photographs of properties
`contained within their listings by registering their listings as
`a database.40 A competing real estate listing service used
`these individual images without permission. The defendants
`in that case made the same argument Houghton Mifflin
`makes here, namely, that the “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.”41 The
`Fourth Circuit rejected this argument, holding that “collective
`work registrations [are] 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.”42
`We agree.
`
`The Fifth Circuit held similarly in Szabo v. Errison that
`a musician who filed a single registration for his collection of
`
` 40 Metro. Reg’l Info. Sys., Inc. v. Am. Home Realty Network, Inc.,
`722 F.3d 591 (4th Cir. 2013).
`
` 41 Id. at 597 (alteration marks original and internal quotation marks
`omitted).
`
` 42 Id. at 598.
`
`
`
`22
`
`ALASKA STOCK V. HOUGHTON MIFFLIN
`
`his “Songs of 1991” succeeded in registering individual songs
`within the collection.43 Szabo rejected the argument that
`because he had not listed titles for each of the songs, he had
`not registered the constituent songs, the same argument
`Houghton Mifflin makes here. Szabo applies the rule that
`“when one copyrights a collection, the copyright extends to
`each individual work in the collection even though the names
`of each work are not expressly listed in the copyright
`registration.”44
`
`A Second Circuit case holds that the registration of a
`collective work, Allure magazine, did not register the
`copyright in a component work where it did not own the
`copyright to the component work and failed to list its author
`or title.45 Alaska Stock does own the copyrights to the
`components of the collective works. The Second Circuit
`clarified in an order denying rehearing in that case that if “all
`rights have been transferred to the claimant, then the
`constituent work is included in the registration o
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