In 2003, Corbis recognized that a major impediment to protecting the copyright of the images they represented was that the images needed to be registered with the U.S. Copyright Office
prior to infringement in order to qualify for the full protection under the copyright law. At the time, very few photographers registered their images as soon as they were created, before making them available for publication. Consequently, when infringements were discovered, it usually cost more in legal fees to bring a copyright action than was likely to be recovered, and this made it difficult to find an attorney to accept such a case on contingency.
Corbis set out to negotiate an arrangement with the Copyright Office that would enable the company to bulk-register, on behalf of their photographers, all the existing images in its collection, and to continue to register newly added images on a quarterly basis.
Now, a district court in the Southern District of New York has ruled that copyright registrations obtained by Corbis for images submitted by at least one photographer-contributor are invalid. In a May 4 order issued in Muench Photography v. Houghton Mifflin Harcourt Publishing Co., Judge Preska found that Corbis copyright registrations previously approved by the Copyright Office are invalid in part due to Corbis’ failure to list the names of the photographers—the authors and owners of the copyrights in the registered images—on registrations submitted by Corbis.
Corbis employs a copyright registration scheme in which photographers temporarily transfer copyright to Corbis for the purpose of registration. Corbis then submits copyright registrations in an unconventional manner, submitting database registrations instead of using registration forms typically used for visual arts registrations. After copyright registration is completed, Corbis typically assigns copyright ownership of the images back to the photographer, but retains copyright ownership in any digital enhancements and metadata added by Corbis to the photographs.
The court ruled that section 409 of the Copyright Act requires that the application name each and every author of the work and Corbis’ methodology in registering image copyrights is flawed. The judge also said that the fault did not lie with the photographer or Corbis, because both were acting on incorrect advice from the Copyright Office. This is of little comfort to photographers and Corbis, who would like to be paid according to contractual agreements for the uses of their images.
This decision could mean that the registrations of hundreds of thousands of images in the Corbis collection could be invalidated. This could result in both Corbis and the photographer-authors losing the right to seek statutory damages and attorneys’ fees related to infringements occurring prior to the re-registration or correction of the images.
The Picture Archive Council of America has released a statement saying, “We believe this decision is incorrect and understand that it will be reargued.” PACA counsel Nancy Wolff has recommended that the organization file an amicus brief. Wolff is also in touch with the Copyright Office concerning a process for filing corrections to any registrations that did not name each photographer included in the Corbis collection. Under the Copyright Office regulations, corrections and amplifications should relate back to the initial application. Going forward, it is recommended that stock agencies attempting bulk registrations list the name of each photographer on the application as an author.
Another case, Corbis v. Tivoli Associates, Inc. and Experts in Telecommunications and Integration, Inc., is working its way through the district court in the Northern District of California and is expected to test the New York ruling.
Photographers can be thankful that, because these copyrights existed in the years since 2003, Corbis has won many judgments and achieved favorable settlements that have greatly benefited the company’s photographers. Nevertheless, the best registration course for the photographer has always been to register his or her own works as soon as possible after the image is created.
Corbis comment
The following comment was provided by Dan Perlet, director of communications at Corbis.
"The legal decision references an industry-wide process by which stock photography companies bulk register photo copyrights with the U.S. Copyright Office on behalf of their contributors.
"This ruling regarding this bulk registration process was a byproduct of an infringement case between a photographer that Corbis represents, Mr. Muench, and publishing company, Houghton Mifflin Harcourt Publishing Co. The publishing company is attempting to argue that Mr. Muench’s photographs aren’t properly registered as a way to reduce or limit potential damages against them in an image infringement lawsuit.
"While images have copyright protection at the moment they are taken, rights holders who have registered that copyright with the U.S. Copyright Office have additional benefits in the case of image infringement such as certain legal presumptions, awarding of statutory damages rather than actual damages, awarding of attorney fees and others.
"As part of a commitment to reduce copyright infringement of images, Corbis and PACA and others in the stock photo industry collaborated with the U.S. Copyright office to develop guidelines to bulk register images on behalf of contributors several years ago. As mentioned, based on PACA’s and the Copyright Office’s endorsement, many stock photography companies use this process to register their images.
"Although the process was approved by the U.S. Copyright Office, the Muench photography vs. Houghton Mifflin Harcourt Publishing Co. case said that these bulk registrations do not properly register the images. The court ruled that the registration application must name each author of the work, which the bulk Copyright registration process doesn’t do. We understand that officials at the U.S. Copyright office are actively looking for ways to remedy this situation and to potentially allow supplementary filings that would refer back to the original date of registration filing.
"Corbis, PACA and others believe that this decision regarding the bulk registration process is incorrect and that it will be reargued, in which case Corbis will likely file an amicus brief supporting the bulk process.
"Corbis recommends that contributors wait to see the outcome of the appeal. Their images still have copyright protection. Corbis can still license images normally and pursue infringement cases, even without the copyright registration.
"If the process of bulk copyright is deemed to not work after various appeals, Corbis will handle re-registration, supplementary filing or whatever process the Copyright Office requests to ensure the imagery is properly registered.
"It should be noted that since February 2009, based on requests of photographers to make it easier for them to know the specific registrations that applied to them, Corbis has registered all images under the name of contributors, and therefore those registrations are in no way affected by this ruling.
"Corbis is actively monitoring the case and will keep our contributors informed of any updates."