In December 2019, the Copyright Office issued a notice of inquiry (NOI) requesting written comments on issues relating to online publication, including whether and how to amend its registration regulations. https://www.copyright.gov/rulemaking/online-publication/. The NOI invited general comments as well as answers to specific questions. This article is adapted from two letters (comments and reply comments) OW&E’s Linda Joy Kattwinkel submitted in response to the NOI. Her specific answers to the questions posed by the NOI are included at the end of the article. (This piece was originally published as part of the Legalities series. Legalities is a regular column for AIGA|SF by Linda Joy, who is herself a visual artist and former graphic artist. In the column, she specifically answers questions raised by visual artists, but many of the issues are equally applicable to those who create or utilize works in all creative disciplines.)
Introductory Statement
I am an attorney in San Francisco. I have practiced copyright and arts law primarily for clients in the visual arts for over 25 years, and have been a practicing visual artist myself, including as a painter, graphic designer and illustrator, for over 50 years. My visual arts clients include fine artists, photographers, graphic designers, illustrators, fabric designers and cartoonists. I help my clients with all aspects of copyright law as it applies to their creative livelihoods, including drafting and negotiating licensing agreements, copyright protection and registration, and pursuing infringement claims. I submit these comments in light of my experience attempting to guide my clients through the process of registering their visual works, and the difficulties they have experienced trying to determine whether their works are published or unpublished, especially in the online environment.
SUMMARY
Steps the Copyright Office can take to alleviate confusion and protect online works
As discussed below, currently there is a lot of confusion regarding whether works posted online should be registered as published or unpublished works. Dire consequences can flow from choosing a designation that a court later disagrees with. To remedy this situation, I join many of my colleagues in recommending the following adjustments to the Copyright Office’s policies and procedures:
(1) Set as a bright-line opinion of the Copyright Office that publicly posted online works are considered published, with the sole exception of works that are posted to a private site which restricts access to a select group of viewers (for example, a critique group) without authorization for group members to copy, redistribute or display the posted works elsewhere.
(2) Allow group registration of published and unpublished works together, with guidelines embedded in the application process to help registrants make good faith determinations regarding publication status.
(3) Allow group registration of published works with different publication dates.
(4) Eliminate the current limitation of group registration to ten works, and the requirement that all of the works be of the same category. Professional artists often create dozens of works for a single project that encompass several categories, for example, an advertising campaign that includes print publications, online animations and radio ads. Logically, all such related works should be registered together.
(5) Allow adjustments to applications and registrations of all facts regarding publication, including whether a work was published or unpublished at the time of registration, publication dates and nation of first publication, without resulting in invalidity of the registration or loss of registration date status or the benefits stemming from the original registration date.
DISCUSSION
The Publication Problem
The primary purpose of the original “published” designation was to protect against widespread infringement
U.S. Copyright law created the distinction between “published” and “unpublished” works over a century ago. At first, this distinction existed to determine whether a work was eligible for copyright protection. If the work was “published” without a copyright notice, copyright was lost. Back then, the distinction made sense when viewed through two intentions: (1) to ensure that the public was given notice of copyright protection, and (2) to protect copyrighted works from unauthorized copying. Back then, the only way members of the public would have the opportunity to easily copy a work was if they possessed a physical reproduction of that work. Thus, “publication” in U.S. copyright law was consistent with the lay definition of publication – both referred to the creation and distribution of printed copies (or later, phonorecords) to the public.
As the law developed, additional protections for published works were incorporated to ensure that creators retained a robust ability to police unauthorized copying. In particular, the three-month grace period given to published works in Section 412 allows copyright owners the ability to retroactively register and effectively police (with all the benefits of early registration, notably, eligibility to recover statutory damages and attorneys’ fees) infringing unauthorized copies that are made immediately after the public has access to copies of the work, even before the work is registered. This grace period is not given to unpublished works, because at the time, unpublished works were held privately by the copyright owner, or at best, disclosed to a limited number of people, such as in galleries or performances, without risking the same opportunity for immediate and widespread copying.
Over the years with the development of new technology, it was no longer necessary to create and distribute physical copies of a work in order for it to be vulnerable to immediate and widespread copying. With the advent of television, radio, and cable broadcasting, copyrightable works could be accessed and copied by the general public without the distribution of physical copies. The protections against infringement for such “unpublished” works diverged from those given to traditionally published works.
Online works are more vulnerable to infringement than traditionally published works
Now, in the age of the internet, creative works can achieve a worldwide audience as soon as they are posted online. Technology provides to online viewers the ability to immediately copy and disseminate online works, including easily implemented ways to work around technical attempts to prevent copying (for example, screen captures and “save as” features on most browsers). Online works are thus immediately vulnerable to unauthorized copying, whether or not the copyright owner has explicitly or implicitly prohibited copying. This vulnerability of online works to infringement, in terms of the speed and scale of unauthorized copying, far exceeds the vulnerability that copyright law sought to protect for traditionally published printed materials and sound recordings.
Under this reality, online works should be given the same enhanced protections against immediate copying as traditionally published works. Technically, all online works are arguably “published” under the current statutory definition, because digital copies of them are created in each online viewer’s computer (or device), and by posting their works online, copyright owners are necessarily authorizing viewers’ computers to do so. See, e.g., MAI Sys. Corp. v. Peak Computer, Inc., 991 F.2d 511, 518-19 (9th Cir. 1993). This should qualify as implicit authority for distribution of copies under the current definition of publication in Section 101.
Current confusion over the publication status of online works hurts copyright owners and thwarts the purpose of copyright law
However, as the Office’s NOI establishes, this is not the universally accepted understanding. There are many confusions and inconsistent opinions about whether online works qualify as published, and under what circumstances, both among the public and the courts. For visual artists in particular, the confusion is widespread. Professional artists such as graphic artists and photographers use the internet to promote their services by posting images of their work, often through third party sites like Instagram, which typically have terms of use allowing the site itself and other users to re-post the images. Even without such terms, online viewers and automated programs such as search engines routinely copy works posted online. Knowing that this is the reality, do artists and photographers who post their work online implicitly authorize such copying? If not, must they post an explicit permission to do so, or conversely, must they post an explicit prohibition against copying to avoid the implicit permission? What if the latter is in direct conflict with the hosting site’s terms of use? There are no settled answers to such questions.
Professional artists and photographers often allow limited copying of their online images by potential clients, such as advertising or design agencies, to use in “comps” – mockups of potential commercial use – who in turn show the comps to their clients (for example, businesses who have hired the agency to create promotional materials). Under a scheme that does not designate all works posted online as published, this raises a host of new uncertainties: Is this a limited publication, or is it not a publication, because no authority has yet been given for further distribution? If there is no publication until the work is approved for use, what is the publication date? When approval is given, or when the promotional materials are actually created and distributed? What if the promotional materials themselves are only posted online? What if, after approval, the images actually are not used?
If a copyright owner makes a choice about the published vs. unpublished designation which is later deemed incorrect, the consequences are dire. Under current regulations and court decisions, the designation cannot be corrected in the registration. This allows willful infringers to avoid liability by convincing a court that the designation is incorrect, which can result not only in dismissal of valid infringement claims, but also a ruling requiring the copyright owner to pay the infringer’s attorneys’ fees. See, e.g., Gold Value Int’l Textile v. Sanctuary Clothing, 925 F.3d 1140 (9th Cir. 2019. The situation is untenable in the current context of so much confusion over the published vs. unpublished designation.
Theoretically, the only safe thing to do in light of all this uncertainty is register works as unpublished before they are shown or distributed to anyone, including online. Unfortunately, such a practice is unworkable for professional artists, who create a high volume of images for their clients, and must deliver their works to clients on schedules that would not accommodate waiting the several months to receive a registration. It is not financially feasible for professional artists to routinely incur special handling fees for their high volumes of works created for their clients or portfolios.
Solutions
Acknowledge that a work is published when it is posted online
I propose that the Copyright Office adopt the following policy statement:
By posting her/his work to a public online site, a copyright owner gives implicit authority for computers and devices of online users to reproduce the work solely for the purpose of allowing online users to view the work; no authority to further reproduce or distribute copies of the work is to be implied.
There is an acute need for clarification of the meanings of “published” and “unpublished” for the purposes of copyright law, especially in the online environment. The clarification can be undertaken by the Copyright Office, which can serve both the communities of creators of copyrighted works and users of such works by articulating a clear, unambiguous, and easily implemented definition of publication in the online environment.
The definition of publication in the online environment should be aligned with the common use of “publish” by most people (and many courts) to refer to the act of posting a work online, without any thought about whether or not explicit permission is being given to end users to further copy or distribute the work they are viewing online. In the online digital environment, posting one’s work is equivalent to the widespread distribution of printed copies in the analog era: the copyright owner is making the same choice to control the first public access to the work, and thereby is also triggering the same risk to widespread unauthorized copying. Online works are thus deserving of the same protections (especially, the three-month grace period provided in Section 412 to preserve enhanced protections against widespread copying) that copyright law gives to traditionally published works.
Some commenters have argued for a distinction between published and unpublished online works to be based on whether the copyright owner has authorized downloading, or further distribution of the work online. This suggestion, however, assumes that the initial copy of a work created by the user’s computer does not count as a public distribution, and is further based on an incorrect assumption that publication happens only when members of the public are entitled to take permanent possession of a copy of the work. Copyright law does not impose such a restriction. To the contrary, the Copyright Act explicitly includes temporary possession in the definition of publication:
(1) the distribution of copies or phonorecords of a work to the public by sale or other transfer of ownership, or by rental, lease or lending. 17 U.S.C. § 101(emphasis added).
Posting a work online is not the equivalent of traditional displays, or traditional broadcasting, which, in the analog world, did not give the viewer even a temporary copy of the work, or provide the viewer with immediate means to further reproduce and distribute it. Rather, online works are analogous to the act of lending tangible copies of a work. In the analog world, library patrons received temporary possession of a book, which gave them the opportunity to make illicit copies. In the digital online world, users’ computers and devices are given a temporary copy of the online work which, while in the device’s possession, is also vulnerable to further illicit copying.
Accordingly, a work should be considered “published” as soon as it is posted online, when it becomes available to reproduction by end-users’ computers and devices. It is this public distribution of initial copies of the work through online access, not subsequent downloading of additional copies or further online distribution, that constitutes a copyright owner’s decision to first disclose her work to the public.
[Note: Some authors have objected that defining works posted online as published will conflict with the traditional understanding that a literary work is not “published” until final, edited versions of their manuscripts have been made into copies for sale. Respectfully, a discrete definition of a term for purposes of a particular industry need not and should not control the legal meaning of that term.]
Registration policies must be adjusted simultaneously
Because so many other consequences are attached to the designation of a work as published or unpublished, the proposed bright line rule that all online works be deemed as published for copyright purposes cannot stand alone. It must be accompanied by reforms in the registration process so that online works are treated equitably with other published works.
Most importantly, group registration for published works, with differing dates of first publication, should be available to all types of online works, not just to certain types of works such as photographs, record albums, or short literary works. The current limits on the number and types of works that can be registered together as a group should be changed across the board (not just for limited categories of works). As many other commenters agree, the current limitations do not reflect the realities of commercial markets and business practices for many creators, in particular, visual artists.
Copyright Office registration policies should be guided by an intention to make the registration process equitable and available to creators of all types of works, so that registration of all types of works from all types of creators is encouraged and economically possible. Focusing instead on efficiencies of scale or convenience of review within the Office, or by carving out exceptions for certain types of works on a piecemeal basis, only perpetuates a complex and inequitable situation which effectively prevents many small scale large volume creators from participating in the registration system.
Designations of a work as published or unpublished in a registration, and all related facts, must be subject to easy correction without penalty and without invalidation of the registration.
Long term, systemic amendments to copyright law should be considered
I agree with many other commenters that systemic changes to the Copyright Act should be considered, to adjust or even dispense with the distinction between published and unpublished works. For most purposes, the intent of provisions based on the publication status of a work reflected the analog world assumption that widespread public disclosure of a work was accomplished through printed publication. Gradually, as new media and technologies were developed, different types of works could be widely displayed or broadcast to the public without the technical distribution of tangible copies. Originally, these works were less vulnerable to copying. However, technologies are continuing to render such works equally vulnerable to immediate copying (cell phones, for example, can take high res images of a painting hanging in a gallery or record a movie from a theater seat, and facilitate immediate distribution of those copies).
There is no reasonable rationale now for giving such “unpublished” works widely disparate levels of protection. In today’s digital world, adjusting those provisions to flow from first public disclosure of a work by any means or media, rather than from an antiquated and complex definition of publication, would greatly simplify copyright law to the benefit of both copyright owners and those who seek to use copyrighted works.
Such considerations, however, should not prevent the Copyright Office from acting now to deal with the problems that are making it so difficult to register and police infringement of online works.
Responses to the NOI Questions
1. Section 409(8) of the Copyright Act requires applicant to indicate the date and nation of first publication if the work has been published. What type of regulatory guidance can the Copyright Office propose that would assist applicants in determining whether their works have been published and, if so, the date and nation of first publication for the purpose of completing copyright applications? In your response, consider how the statutory definition of publication applies in the context of digital on-demand transmissions, streaming services, and downloads of copyrighted content, as well as more broadly in the digital and online environment.
The Copyright Office should officially opine that all works published to public online sites should be considered published, with a first publication date being the first date the work was posted on such a site, and the nation of publication as the nation where the copyright owner resides, and/or the intended primary audience of the site.
The online form should include a checklist to guide the applicant in determining publication status, for example:
If you are not sure if your work qualifies as “published,” you can choose to designate that the work was published upon the occurrence of the earlier of the following events:
- Date that, with your permission, your work was first printed or reproduced in physical copies, such as printed publications, phonorecords, discs, thumb drives, or on other tangible media, for distribution to the public
- Date that you or your authorized representative first posted your work to a public website, including social media
- Date that you or your authorized representative delivered your work to a current or potential client, distributor, manufacturer, agent or representative, or other person or entity, for possible licensing, sale, or other distribution, including online
If instead, the following accurately describes the status of your work, you may choose to designate it as unpublished:
- You have not shown your work to anyone
- You or your authorized representative(s) have shown your work only to a few individuals, including by posting to a private online site that is not accessible to the public
- You or your authorized representative(s) have only shown your work to others by display in a physical location, such as in a gallery
- You or your authorized representative(s) have only disclosed your work to others by public performance in a physical location
2. Specifically, should the Copyright Office propose a regulatory amendment or provide further detailed guidance that would apply the statutory definition of publication to the online context for the purpose of guiding applicants on issues such as:
i. How a copyright owner demonstrates authorization for others to distribute or reproduce a work that is posted online.
By posting her/his work to a public online site, a copyright owner gives implicit authority for computers and devices of online users to reproduce the work solely for the purpose of allowing online users to view the work; no authority to further reproduce or distribute copies of the work is to be implied.
ii. The timing of publication when copies are distributed and/or displayed electronically
Date of posting.
iii. Whether distributing works to a client under various conditions, including that redistribution is not authorized until a “final” version is approved, constitutes publication and the timing of such publication
Unfortunately, professional artists who distribute non-final works to their clients often learn that the client has nevertheless used the works before a final version is approved, and often, without paying for the works. If such non-final works are considered unpublished, the artists have limited recourse to redress such infringement.
Accordingly, the best protection for artists is to consider such works published upon delivery to their client, so they can receive the benefits of the three-month grace period under Section 412.
iv. Whether advertising works online or on social media constitutes publication
Yes, if the entire work is shown in the advertisement, for example, in an online portfolio of visual works. No, if the advertisement refers to the work but does not actually disclose the entire work.
v. Any other issues raised in section I(C)
Some commenters have raised concerns that treating all online works as published would cause creators to lose the protections afforded to unpublished works. However, as discussed above, current copyright law provides far greater protections to published than to unpublished works. Currently, there are only two such “protections”: (1) groups of up to ten unpublished works can be registered together, while groups of unpublished works cannot; and (2) under some fair use analyses, the fact that a work is unpublished weighs against fair use.
As discussed above, groups of published works should be allowed to be registered together, and hopefully this change will be implemented. With respect to fair use, the principle that unpublished works should be given more protection arose in an era before the Internet, when an unregistered work was not publicly accessible, and therefore, it was considered more egregious to copy it and disclose it to the public. See, e.g., Harper & Row Pub., Inc. v. Naton Ent., 471 U.S. 539, 553 (1985). Thus, the rationale for this principle no longer exists, and we should expect and encourage courts to recognize its inapplicability to online works.
3. Can and should the Copyright Office promulgate a regulation to allow copyright applicants to satisfy the registration requirements of section 409 by indicating that a work has been published “online” and/or identifying the nation from which the work was posted online as the nation of first publication, without prejudice to any party subsequently making more specific claims or arguments regarding the publication status or nation(s) in which a work was first published, including before a court of competent jurisdiction?
YES.
4. Applicants cannot currently register published works and unpublished works in the same application. Should the Copyright Office alter its practices to allow applicants who pay a fee to amend or supplement applications to partition the application into published and unpublished sections if a work (or group of works) the applicant mistakenly represented was either entirely published or unpublished in an initial application is subsequently determined to contain both published and unpublished components? What practical or administrative considerations should the Office take into account in considering this option?
YES. And the Copyright should allow group registration of published works with different dates and nations of first publication. The current limitation of group registrations of unpublished works to ten is inadequate for professionals who create hundreds of works for their clients and portfolios. The disparity between the 750 works allowed to photographers vs. the ten allowed to all other authors for group registration is not equitable, nor is it equitable to allow only photographers to register groups of published works with different dates and nations of publication. Graphic artists also commonly generate dozens and even hundreds of works for a single assignment. Understanding that examination of other types of works requires more effort, it would still be in the best interests of other authors to allow at least fifty works to be registered as a group. This will also encourage more authors to register their works. The current limitation to ten works in a group makes registration financially impossible for many creators.
5. For certain group registration options, should the Copyright Office amend its regulations to allow applicants in its next generation registration system to register unpublished and published works in a single registration, with published works marked as published and the date and nation of first publication noted? What would the benefits of such a registration option be, given that applicants will continue to be required to determine whether each work has been published prior to submitting an application? What practical or administrative considerations should the Office take into account in considering this option?
YES. The benefit is that this protects the copyright owner from losing infringement claims to willful infringers based on good faith mistakes made in the registration process. It also encourages more authors to register their works, instead of being stymied because they cannot determine with any certainty whether a work is considered published.
[6. There is no question no. 6 in the NOI]
7. Is there a need to amend section 409 so that applicants for copyright registrations are no longer required to identify whether a work has been published and/or the date and nation of first publication, or to provide the Register of Copyrights with regulatory authority to alter section 409(8)’s requirement for certain classes of works?
YES, and YES. Such information is not needed unless and until an infringement claim is litigated. At that point, the court can determine publication status, date and nation of first publication, and the registration can be adjusted accordingly, without risking the copyright owner’s ability to maintain her case against the alleged infringer.
8. Is there a need for Congress to take additional steps with respect to clarifying the definition of publication in the digital environment? Why or why not? For example, should Congress consider amending the Copyright Act so that a different event, rather than publication, triggers some or all of the consequences that currently flow from a work’s publication? If so, how and through what provisions?
As stated above, I believe the current definition of publication can be fairly and reasonably interpreted to include posting works to public online sites, and the Copyright Office should adopt and promote that interpretation. However, given the confusion and inconsistency in the courts, it would be helpful for this to be established through an explicit amendment to the Copyright Act. With that interpretation in place, I don’t think a different event needs to be established as a trigger for the consequences that currently flow from a work’s publication. On the other hand, simply changing the triggering event to public disclosure by the copyright owner in any way would make sense, although this would require significant substantive changes to all provisions of the Copyright Act that flow from publication, and potential retroactive affects would have to be considered.
At this point, the important and most urgent need is to ensure that all works which become immediately vulnerable to unauthorized copying receive the same protections as traditionally published works.
9. The Copyright Office invites comment on any additional considerations it should take into account relating to online publication.
I recognize that there are consequences other than those discussed above that currently flow from the designation of a work as published. Works made for hire, anonymous works, and pseudonymous works receive a longer term if they are not published under Section 302(c). Termination rights for transfers of works granted after 1978 are measured from the earlier of either the publication date or date of the transfer under Section 203(a)(3). Ideally, these complex provisions would also be eliminated through appropriate amendments to the Copyright Act. Indeed, since the original rationales for making the distinction between published and unpublished works no longer apply, it is arguable that the distinction could be eliminated altogether, at least for future works. Instead, all of the protections for published works could be available to any works that are publicly disclosed by the copyright owner in any way. This would greatly simplify the law and registration process.
However, even without such reforms, I do not think the potential benefits of designating a work as unpublished for the purposes of Sections 302(c) or 203(a)(3) outweigh the extreme disadvantages and harm currently caused to authors whose works are made immediately vulnerable to widespread online copying, if they are deemed to be “unpublished.” In the online environment, widespread unauthorized copying can and does happen instantly. The three-month grace period under Section 412 is critical in order to enable copyright owners to police such infringements. Without the potential to recover statutory damages and attorneys’ fees, copyright owners, especially small, high-volume professional artists, cannot afford to take legal action.
Thank you for your consideration of these comments.
Sincerely,
Owen, Wickersham & Erickson
by Linda Joy Kattwinkel
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You are invited to submit questions about this article, or for upcoming Legalities columns. Please send your questions to Legalities@owe.com.
Legalities is a service mark. © 2020 Linda Joy Kattwinkel. The information in this column is provided to help you become familiar with legal issues that may affect graphic artists. Legal advice must be tailored to the specific circumstances of each case, and nothing provided here should be used as a substitute for advice of legal counsel. Linda Joy is an attorney, painter and former graphic artist/illustrator. She practices intellectual property law, arts law and mediation for artists in San Francisco. She can be reached at 415-882-3200 or ljk@owe.com.