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April 21, 2016 -

“Publishing” Content Online: It Does Not Mean What You Think It Means

By Christopher Dodson and Andrew Baer

U.S. copyright law protects original works of authorship fixed in a tangible medium of expression.  The Copyright Act identifies several categories of works protected by copyright, including literary works, pictorial and graphic works, audiovisual works, and sound recordings.   A work has some protection once it is created by its author, but the most extensive protections are available only if the copyright is registered with the U.S. Copyright Office.  While any work that is protected by copyright can be registered, the Copyright Office has certain rules and procedures that can make registering a copyright impractical in some circumstances.

The Copyright Office’s procedures have caused a good deal of confusion over registering copyrights in web content.  It is famously trivial for someone to copy and re-use virtually anything made available online (whether written material, photos, music, podcasts, etc.), sometimes in violation of copyright law.  So, naturally, the creators and content owners most at risk from having their online works infringed are those who put the most content online.  These creators and content owners would benefit from the additional protections available for registering the copyrights in the works they put online.

However, the Copyright Office’s procedures reflect a bias toward registering one work at a time.  As a practical matter it can be prohibitively costly in time and money to individually register the copyright for works made available online.  The fees charged by the Copyright Office range from $35 per application for certain short-form online applications, up to $85 per application for paper applications.  Naturally, this does not include attorney time in preparing and filing the application.  If the owner of copyrighted materials is regularly putting new works online (for example, course materials on a training website) the employee time and legal and filing fees necessary to submit individual copyright applications for each new work will add up quickly. There are certain bulk registrations available but these are only available in specific and sometimes narrow situations, such as a publication of a newspaper, or else they come with significant restrictions, as discussed below.

There are, however, two methods of registering multiple works in a single copyright application that are potentially available for web content: registration of a compilation and registration of an unpublished collection.  A registered copyright in a compilation, which may be published or unpublished, protects the compilation as a whole, but not the components of the compilation as individual works.  In other words, whether someone infringes one work or every work in the compilation, the copyright owner is only eligible to receive one award of statutory damages.  However, an unpublished collection provides a separate, enforceable copyright interest in each work in the collection (i.e. the individual works are eligible for separate statutory damage awards for infringement).  Since the Copyright Act provides statutory damages of up to $30,000 per work infringed or up to $150,000 per work infringed in the case of willful copyright infringement (among other types of legal remedies), the difference in terms of potential monetary liability between having an enforceable interest in each individual work and only an interest in the whole collection can be substantial. While an application for an unpublished collection must specifically disclaim any rights in the selection, coordination, and arrangement of the works in the collection, in many cases this is a worthwhile tradeoff because it is the individual works on a website which are most likely the valuable property.

Unfortunately, there is quite a bit of confusion about this method of registration, even among attorneys, partly because of how “publication” is defined.  The result of the confusion is that many creators and content owners are not taking advantage of the protection that registering a copyright can provide.

The Copyright Office has a number of requirements for registering an unpublished collection, three of which are worth highlighting.  The first requirement is that same claimant must register the copyright in the individual works of the collection and in the collection as a whole.  A claimant is not necessarily the author but can be the person or entity to whom a copyright was assigned.  Next, all the works being registered in the collection must be created by the same author, or if the elements were created by multiple authors, at least one of the authors must have contributed copyrightable authorship to each work in the collection.  Fortunately for many clients, under the “work made for hire” doctrine, an employer is deemed to be the author of works of authorship created by employees acting within the scope of their duties.  So, any materials created by employees as part of their duties fit within the common-authorship requirement for registering an unpublished collection.  Materials created by a non-employee are eligible in two circumstances: (a) the works of authorship qualify under the “work made for hire” doctrine (in this case, most likely because the material was specially commissioned for inclusion in the collection pursuant to a written contract specifying that the work is deemed work made for hire) or (b) the author assigned the copyright to the claimant (but not under work made for hire-eligible circumstances) and an employee contributed copyrightable authorship to the material.

The final requirement is that all of the copyrightable works of the collection must be unpublished.  It is perhaps counterintuitive, but the Copyright Office DOES NOT consider making something available online to be per se publication.  While making something available online can result in publication, this requires something more than simply the act of being made available.

The Copyright Act defines publication as the “distribution of copies…of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending” and “offering to distribute copies…to a group of persons for purposes of further distribution, public performance, or public display.”  It also clarifies that “[public] display of a work does not of itself constitute publication.”  As the Copyright Office comments in the Compendium of Copyright Office Practices, any “dissemination in which a material object does not change hands…is not a publication no matter how many people are exposed to the work.”

It is possible that making materials available on a webpage that includes “sharing” functionality (such as including a Facebook or Twitter share button) qualifies as an offer to distribute copies for public display.  However, unless the sharing feature actually reproduces or attaches the work in some way (i.e., distributes an actual copy), rather than merely distributing a link back to the online work, it seems unlikely that sharing functionality is itself sufficient to qualify as publication. On the other hand, providing an offer to download material or a “printer friendly” button, or distributing copies of a podcast for download to a mobile device probably does constitute publication.  Making the same podcast available for streaming, however, does not constitute publication.

Fortunately, the Copyright Office is highly deferential to the applicant in determining the publication status of works being registered and usually will not conduct its own investigation to determine whether a work is published.  The Copyright Office will generally accept the publication status provided in the application, unless it is implausible or contradicts other statements in the application.

If a company or creator frequently puts copyrightable materials online, registering a copyright as an unpublished collection on a regular interval, such as once per year, can be an efficient and cost effective method of protecting valuable intellectual property.