Metropolitan Regional Info. Sys. v. American Home Realty Network, No. 12-2102 (4th Cir. 2013)

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Justia Opinion Summary

AHRN appealed the district court's entry of a preliminary injunction order prohibiting AHRN's display of MRIS's photographs on AHRN's referral website. The parties are competitors in the real estate listing business and MRIS contended that AHRN's unauthorized use of its copyrighted material constituted infringement under the Copyright Act, 17 U.S.C. 101 et seq. The court concluded that MRIS was not barred from asserting infringement of its copyrighted photographs, which were registered as component works in its automated database registrations; MRIS was likely to succeed against AHRN in establishing its ownership of copyright interests in the copied photographs; and, therefore, the court affirmed the judgment of the district court.

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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 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) Argued: May 15, 2013 Decided: July 17, 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. injunction order The district court prohibiting entered AHRN s a display preliminary 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. 464 1 (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 estate the real competitors listings listings) and a in the MRIS nonexclusive Database license (including 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 automated the registration databases. See J.A. procedures 460. 3 For applicable to 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 hire[.] on Application: [MRIS], employer for Pre-existing Material: Previous versions of 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 photographs, claim. quarterly See, as applications pre-existing e.g., J.A. registrations of list material text, or the 428-30. According the Database 3 MRIS or basis to text, of the MRIS, its extend to the 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 listings. AHRN MRIS, including the photographs included in the owns and J.A. 460. is a California real estate broker that operates the website, a national real estate search engine and referral business. Among other sources, AHRN acquires the data displayed on 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 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. real J.A. 360. estate That AHRN has displayed on 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 6 proprietary interest. MRIS 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. AHRN moved to dismiss for lack of 17 U.S.C. § 502(a). personal improper venue, and failure to state a claim. jurisdiction, The district court denied AHRN s motion to dismiss, and granted MRIS s motion for preliminary injunction. 2012). See 888 F. Supp. 2d 691 (D. Md. 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 enjoins only compilation considered The revised order specifies that the court AHRN s itself part of use or of any the MRIS s textual photographs--not elements compilation--and that also might renders the be 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 We two appeals were consolidated. 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 6 its Database it failed to 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 photographs does not possess copyright because the subscribers interests electronic in agreement the to MRIS s terms of use failed to transfer those rights. 7 We parties note at the arguments outset is that complicated our consideration by their of conflation the of copyright protection and copyright registration. These are two entirely distinct matters, governed by separate sections of the Copyright Act. 412. Compare 17 U.S.C. § 102, with 17 U.S.C. §§ 408- 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 worthy of copyright protection. 8 of homes and apartments are 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 U.S.C. § 102. in any tangible medium of expression. 17 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. ownership vests initially with the Id. § 106. author of the Although work, the author may transfer any of the exclusive rights attendant to copyright ownership license. Id. § 201(d). enforcement infringers, Copyright action. of so by his long Office granting an assignment or exclusive A copyright owner may seek judicial property rights as he has prior to filing against registered the the subsequent work copyright with the infringement 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. compilation Id. is § 101. independent The of any protection protection afforded to its individual components. afforded that to might a be 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 components here, which are collective works. compilations themselves made up of copyrightable individual are called 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 copyrights in has each obtained separate the express contribution to transfer that of the 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 and corresponding attained regulations governing automated certificates of databases, 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[] individual elements in the Database. not extend to the 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 13 database registration list the names effectively works. and authors register of copyright component ownership works in in order those to component 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 copyright claim being registered. to a collective work whose material covered 17 U.S.C. § 409. author has also by the As applied 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 photographs. The 202.3(b)(5)-(10). published provision utilized by 37 C.F.R. 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. also comply formalities. C.F.R. § with Id. certain Id. notice, Each registration must publication, and deposit As in the text of the statute, nothing in 37 202.3(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 15 Copyright Act s registration requirement to collective works and their component parts. courts have barred infringement suits to protect Some copyrighted component works for failure to comply with Section 409 s presuit 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 photographers, collective numerous all work of whom author photographs assigned prior to their his by different rights to registration, the 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 16 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. See, e.g., Craigslist v. 3Taps, 2013 WL 1819999, at *9 ( Craigslist s registration of website database) and the collective served work to (the register overall Craigslist 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 plaintiffs *2 (D. Minn. registration sufficient to vis-à-vis the satisfy of the individual July 2, journals pre-suit articles 2012) as (concluding collective registration contained in that works was requirement the journals, where the plaintiffs also owned (or exclusively licensed) the copyrights Educ., to Inc., (concluding those 2012 that WL articles); 93182, defendant Pac. at failed *5 to Stock, (D. Inc. Haw. show Jan. v. Pearson 11, plaintiff 2012) 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 omitted). 17 parts ) (citation We find this latter approach more statutory and regulatory scheme. 10 consistent with the Indeed, as for the trend embodied in the former group of cases, [t]he Copyright Office is optimistic appeal. that those decisions will be overturned on 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 collective individual work photographers registration to may use satisfy a third their party s 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. basis for In each registration, MRIS listed photographs as the 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 acquired an (internal of component exclusive citation and works to license. quotation which 2013 marks the WL registrant 1819999, omitted). at has *10 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 copyright claim extends to the individual photographs 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 the determined Copyright that the Office MRIS nor Database district consists court predominantly has 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 registration registrations requirement. satisfied See 888 F. Section Supp. 409 s 2d at pre-suit 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. prove two ownership elements of a to valid establish copyright copyright; and (2) MRIS must infringement: AHRN s copying constituent elements of the work that are original. 499 U.S. at 361. (1) of See Feist, 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. transfer may requirements, satisfy MRIS responds that an electronic Section particularly 204 s in light writing of and the signature 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. A We agree. 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]. protect copyright fraudulently Section 204(a) is intended to holders from oral licenses claiming persons [or mistakenly 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)). also serves certainty the of purpose of 555, enhanc[ing] ownership--Congress s revised the Act in 1976. F.2d The signed writing requirement 557 (9th predictability paramount goal and when it Effects Assocs., Inc. v. Cohen, 908 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. function and under 204(a) § 1994)). making a without a writing. Rather otherwise transfer of than valid serving agreements copyright is an evidentiary unenforceable, simply not valid 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 [Section to permit 204(a) s [assignee]. a signed Eden Toys, third party writing 697 F.2d infringer requirement] at 36; see to invoke against also the Radio Television, 183 F.3d at 929 (adopting the rule of Eden Toys, and listing other cases to do so). Put another way, Section 204(a) was intended to resolve disputes between owners and alleged transferee[s], and was not intended to operate for the benefit of a third-party infringer when there is no dispute between the owner and transferee. 249 F. Supp. quotation marks 2d Kindergartners Count, Inc. v. Demoulin, 1214, omitted). 1221 n.22 Although (D. Kan. MRIS did 2003) not (internal raise this argument, we nevertheless feel compelled to note the anomaly of allowing AHRN to fabricate for its own benefit a dispute between 23 MRIS and its subscribers over copyright ownership in the photographs. The issue we must yet resolve is whether a subscriber, who clicks yes in response to MRIS s electronic TOU prior to uploading copyrighted photographs, has signed a written transfer of the exclusive photographs rights consistent of with copyright Section ownership 204(a). in those Although the Copyright Act itself does not contain a definition of a writing or a signature, much less address our specific inquiry, Congress has provided clear guidance on this point elsewhere, in the ESign Act. The E-Sign Act, aiming to bring uniformity to patchwork state legislation governing electronic signatures and records, mandates that no signature be denied legal effect simply because it is in electronic form. 15 U.S.C. § 7001(a)(1). Additionally, a contract relating to such transaction may not be denied legal effect, validity, or enforceability solely because an electronic signature or electronic record was used in its formation. Id. § 7001(a)(2). The E-Sign Act in turn defines electronic signature as an electronic sound, symbol, or process, attached to or logically associated with a contract or other record and executed or adopted by a person with the intent to sign the record. Id. 24 § 7006(5). Although the E-Sign Act limitations, none apply here. states several explicit The Act provides that it does not . . . limit, alter, or otherwise affect any requirement imposed by a statute, regulation, or rule of law . . . other than a requirement that contracts or other records be written, signed, or in nonelectric form[.] Id. § 7001(b). Because Section 204(a) requires transfers be written and signed, a plain reading of Section 7001(b) indicates that Congress intended the provisions of the E-Sign Act to limit, alter, or otherwise affect Section 204(a). Furthermore, 15 U.S.C. § 7003 specifies types of contracts or records to which the provisions of Section 7001 shall not apply. See id. § 7003(a)-(b) (excepting, inter alia, statutes . . . governing the creation and execution of wills, codicils, or testamentary trusts ; adoption, divorce, or other matters of family law ; documents ; court and any orders or notices, notice of . . . or the official court cancellation or termination of health insurance or benefits or life insurance benefits ). Agreements to transfer exclusive rights copyright ownership are not included in these exceptions. 12 12 of Nor Section 7003 also explains that these exceptions are meant to be phased out over time as consumer protections surrounding e-signatures are bolstered. 15 U.S.C. § 7003(c)(i) ( The Secretary of Commerce . . . shall review the operation of the exceptions in subsections (a) and (b) of this section to (Continued) 25 does the enumerated list contain any catchall generic category into which copyright transfers might possibly fall. We decline to read in an invitation to create new exceptions piecemeal. AHRN s inapposite. proffered authorities to the contrary are None mention the E-Sign Act; instead, AHRN points to courts which have invalidated transfers in circumstances not at all analogous--for example, where there was no written agreement, but merely one party s declaration after the fact that he had assigned his copyright interest, see Am. Plastic Equip., Inc. v. Toytrackerz, LLC, 2009 WL 902422, at *6 (D. Kan. Mar. 31, 2009), or where an e-mail purporting to transfer the relevant rights was not actually sent by the owner of the copyright interest, see McMunigal v. Bloch, 2010 WL 5399219, at *8 (N.D. Cal. Dec. 23, 2010). We do not find these cases relevant to our present inquiry. There is little authority regarding the application of esignatures to instruments conveying copyrights. In what appears to be the only case relying on the E-Sign Act in this context, the Southern District of Florida held that the conveyance of a copyright interest by e-mail was valid. See Vergara Hermosilla v. Coca-Cola Co., 2011 WL 744098, at *3 (S.D. Fla. Feb. 23, evaluate, over a period of 3 years, whether such exceptions continue to be necessary for the protection of consumers. ). 26 2011), aff d by per curiam opinion, 446 F. App x 201 (11th Cir. Nov. 3, 2011). relied on the In its brief analysis of the issue, that court purpose of Section 204, which is to resolve disputes between copyright owners and transferees and to protect copyright claiming holders oral from licenses persons or mistakenly copyright or fraudulently ownership, not to be unduly burdensome or to necessitate[] protracted negotiations nor substantial quotations expense. omitted). Id. The court (citations reasoned and that internal allowing the transfer of copyright ownership via e-mail pursuant to the ESign Act accorded with, rather than conflicted with, this purpose. Additionally, courts have held that agreements reached by electronic means are not invalid pursuant to analogous statutory requirements. For example, the Federal Arbitration Act (the FAA ) specifies that its protections for arbitration agreements pertain only to a written provision in any contract. § 2. 9 U.S.C. Courts have uniformly applied the E-Sign Act to subsequent interpretations of the FAA s written provision requirement. See, e.g., Campbell v. Gen. Dynamics Gov t Sys. Corp., 407 F.3d 546, 556 (1st Cir. 2005) ( [The E-Sign Act] definitively resolves the issue . . . as to whether an e-mail agreement to arbitrate is unenforceable under the FAA because it does not satisfy the FAA s written provision requirement, 9 U.S.C. § 2. 27 By its plain terms, the E Sign Act prohibits any interpretation of the FAA s written provision requirement that would preclude giving legal effect to an agreement solely on the basis that it was in electronic form. ); Specht v. Netscape Comm cns Corp., 306 F.3d 17, 26 n.11 (2d Cir. 2002) (assessing whether clicking to download software created enforceable agreement to arbitrate, and noting written that the provision matter despite of whether being the provided agreement to is in users a a downloadable electronic form . . . has been settled by [the ESign Act], although ultimately finding that consumers clicking yes in the context presented in that case did not manifest assent to license terms). We find this analysis helpful in reaching conclusion in the context of the Copyright Act. copyright transfer electronically embodied in agreements would the thwart E-Sign solely the Act. because clear We the To invalidate they were congressional therefore same hold made intent that an electronic agreement may effect a valid transfer of copyright interests under Section 204 of the Copyright Act. 13 13 Accordingly, We make no comment (nor did the district court) as to whether the subscribers assent to MRIS s TOU constitutes a valid agreement under generally applicable principles of contract law, or whether, as in Specht, 306 F.3d at 27, it might fail for lack of mutual assent. AHRN waived this argument by raising it for the first time in its reply brief. See McBurney (Continued) 28 we agree with the district court that MRIS is likely to succeed against AHRN in establishing its ownership of copyright interests in the copied photographs. III. For the foregoing reasons, the decision of the district court is AFFIRMED. v. Young, 667 F.3d 454, 470 (4th Cir. 2012), aff d, 133 S. Ct. 1709 (2013). 29

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