Online Publication

 
CONTENT
Federal Register, Volume 84 Issue 233 (Wednesday, December 4, 2019)
[Federal Register Volume 84, Number 233 (Wednesday, December 4, 2019)]
[Proposed Rules]
[Pages 66328-66334]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 2019-26004]
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LIBRARY OF CONGRESS
Copyright Office
37 CFR Chapter II
[Docket No. 2019-7]
Online Publication
AGENCY: U.S. Copyright Office, Library of Congress.
ACTION: Notification of inquiry.
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SUMMARY: The U.S. Copyright Office is undertaking an effort to provide
additional guidance regarding the determination of a work's publication
status for registration purposes. To aid this effort, the Office is
seeking public input on this topic, including feedback regarding issues
that require clarification generally, as well specific suggestions
about how the Office may consider amending its regulations and, as
appropriate, effectively advise Congress regarding possible changes to
the Copyright Act. Based on this feedback, the Office may solicit
further written comments and/or schedule public meetings before moving
to a rulemaking process.
DATES: Initial written comments must be received no later than 11:59
p.m. Eastern Time on February 3, 2020. Written reply comments must be
received no later than 11:59 p.m. Eastern Time on March 3, 2020.
ADDRESSES: For reasons of government efficiency, the Copyright Office
is using the regulations.gov system for the submission and posting of
public comments in this proceeding. All comments are therefore to be
submitted electronically through regulations.gov. Specific instructions
for submitting comments are available on the Copyright Office website
at https://www.copyright.gov/rulemaking/online-publication/. If
electronic submission of comments is not feasible due to lack of access
to a computer and/or the internet, please contact the Office, using the
contact information below, for special instructions.
FOR FURTHER INFORMATION CONTACT: Regan A. Smith, General Counsel and
Associate Register of Copyrights, [email protected]; Robert J.
Kasunic, Associate Register of Copyrights and Director of Registration
Policy and Practice, [email protected]; or Jordana S. Rubel, Assistant
General Counsel, [email protected]. They can be reached by telephone
at 202-707-3000.
SUPPLEMENTARY INFORMATION: The Copyright Act requires an applicant for
a copyright registration to state, among other things, whether a work
has been published, along with the date and nation of its first
publication. 17 U.S.C. 409(8). Over time, the Office has increasingly
provided various group registration options that permit an applicant to
register groups of works with one application and filing fee. See,
e.g., 37 CFR 202.3(b)(1)(iv), (b)(4) through (5), 202.4(c) through (i)
and (k). Currently, however, no group registration option allows
published and unpublished works to be registered using the same
application. As a result, applicants must determine the publication
status of a work or group of works in order to complete a proper
copyright application.
    This requirement places some burden on copyright applicants.
Although the Office may provide some general guidelines on relevant
legal requirements,\1\ it cannot give specific legal advice as to
whether a particular work has been published. U.S. Copyright Office,
Compendium of U.S. Copyright Office Practices sec. 1904.1 (3d ed. 2017)
(``Compendium (Third)''). Thus, the applicant must determine
independently, or potentially based on the advice of its own legal
counsel, whether a work is published. Various individuals and groups
have repeatedly expressed frustration to the Office regarding
difficulty in determining whether a work has been published when
completing copyright application forms.\2\ Commenters to the Office
have indicated that the distinction between published and unpublished
works is ``so complex and divergent from an intuitive and colloquial
understanding of the terms that it serves as a barrier to registration,
especially with respect to works that are disseminated online.'' \3\ A
perceived lack of consensus among courts about what constitutes online
publication only increases applicants' uncertainty, as applicants, most
of whom have no legal training, may feel bound to reconcile conflicting
judicial opinions before they can file an application to register their
copyrights.\4\
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    \1\ For example, the Copyright Office provides guidelines on
legal requirements such as publication in its Compendium of U.S.
Copyright Office Practices and in various Circulars.
    \2\ See, e.g., National Press Photographers Association
(``NPPA''), Comments Submitted in Response to Public Draft of
Compendium of U.S. Copyright Office Practices at 7-11 (May 31, 2019)
(``We continue to find that our members are confused by the
definition of published vs. unpublished.''); Coalition of Visual
Artists (``CVA''), Comments Submitted in Response to Notice of
Inquiry Regarding Registration Modernization, at 35 (Jan. 15, 2019)
(``No issue frustrates and confounds visual creators more than the
statutory requirement that the registration application include
whether an applicant's works have been published, and if published,
the date and nation of first publication.''); Professional
Photographers of America (``PPA''), Comments Submitted in Response
to the U.S. Copyright Office's Apr. 24, 2015 Notice of Inquiry at 7
(July 22, 2015); American Society of Media Photographers (``ASMP''),
Comments Submitted in Response to the U.S. Copyright Office's Apr.
24, 2015 Notice of Inquiry at 13 (July 23, 2015) (noting that
``[t]he most vocal complaint about the current system is the time-
consuming and expensive process of distinguishing between published
and unpublished works in the registration process'').
    \3\ Copyright Alliance, Comments Submitted in Response to Notice
of Inquiry Regarding Registration Modernization, at 5 (Jan. 15,
2019).
    \4\ See, e.g., CVA, Comments Submitted in Response to Notice of
Inquiry Regarding Registration Modernization, at 35 (Jan. 15, 2019)
(citing Elliott v. Gouverneur Tribune Press, Inc., 2014 WL 12598275,
at *3 (N.D.N.Y. Sept. 29, 2014) to highlight conflicting opinions on
the question of whether publication on the internet constitutes
``publication'' for the purposes of registering images as published
or unpublished; providing an Appendix of frequently asked questions
of the CVA that relate to publication).
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[[Page 66329]]
    Based on these comments, and recognizing a relative lack of
consensus among courts, the Office believes that additional guidance
regarding the definition of publication in the modern context will help
ensure the smooth functioning of the registration process. As noted,
the requirement to designate the publication status of works on
registration applications is currently mandated by statute, and the
Copyright Act includes a definition of ``publication.'' However, the
Office may act under its existing regulatory authority to determine how
to apply this statutory definition of publication for purposes of
administering the copyright registration system; and the Office may
also provide guidance materials to users of that system. Depending on
the public comments received in response to this inquiry, the Office
may also choose to provide recommendations to Congress on specific
statutory language to further clarify this issue. This inquiry is
directed at the current statute and the existing structure of the
copyright registration system; any legislative changes to the Copyright
Act could affect the subjects of inquiry and the topics on which users
of the copyright registration system would require guidance.
    The Office is issuing this Notice of Inquiry to seek public
comments regarding possible areas of consensus, and may subsequently
notice a proposed rule to codify guidance it develops regarding the
definition of publication as a result of this process.\5\
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    \5\ The Office previously indicated this notice was forthcoming
in various public documents. Letter from Karyn A. Temple, Acting
Register of Copyrights and Dir., U.S. Copyright Office to Lindsey
Graham, Chairman, Comm. on the Judiciary, U.S. Senate, and Dianne
Feinstein, Ranking Member, Comm. on the Judiciary, U.S. Senate (Jan.
18, 2019) at 11, https://www.copyright.gov/policy/visualworks/senate-letter.pdf; Letter from Karyn A. Temple, Acting Register of
Copyrights and Dir., U.S. Copyright Office to Jerrold Nadler,
Chairman, Comm. on the Judiciary, U.S. House of Representatives, and
Doug Collins, Ranking Member, Comm. on the Judiciary, U.S. House of
Representatives (Jan. 18, 2019) at 11, https://www.copyright.gov/policy/visualworks/house-letter.pdf; 84 FR 3693, 3696 (Feb. 13,
2019); Letter from Karyn A. Temple, Acting Register of Copyrights
and Dir., U.S. Copyright Office to Thom Tillis, Chairman, Subcomm.
on Intellectual Property, U.S. Senate, and Christopher A. Coons,
Ranking Member, Subcomm. on Intellectual Property, U.S. Senate (May
31, 2019) at 41-42, https://www.copyright.gov/laws/hearings/response-to-march-14-2019-senate-letter.pdf; Letter from Karyn A.
Temple, Acting Register of Copyrights and Dir., U.S. Copyright
Office to Jerrold Nadler, Chairman, Comm. on the Judiciary, U.S.
House of Representatives, and Doug Collins, Ranking Member, Comm. on
the Judiciary, U.S. House of Representatives (May 31, 2019) at 41-
42, https://www.copyright.gov/laws/hearings/response-to-april-3-2019-house-letter.pdf.
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I. Background
(A) Statutory and Regulatory Usage of ``Publication''
    The Copyright Act defines publication as ``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. Publication includes the actual distribution of such copies or
phonorecords or the offer to distribute such copies or phonorecords to
a group of persons for purposes of further distribution, public
performance, or public display, however a ``public performance or
display of a work does not of itself constitute publication.'' Id.
While the definition of ``publication'' may have provided sufficient
clarity when the Copyright Act was enacted in 1976, adapting this
definition to the modern electronic era has proven challenging.
Congress could not have anticipated the technological changes in the
ensuing four decades that have enabled copyright owners to make copies
of their works accessible to the general public worldwide with a single
keystroke.\6\
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    \6\ The Digital Millennium Copyright Act did not amend the
definition of ``publication'' or otherwise comment on online
publication. Pub. L. 105-304, 112 Stat. 2860 (1998).
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(1) Published Versus Unpublished Works
    Applying the statutory definition of ``publication'' to works that
have been posted online is particularly important because publication
is a central concept in copyright law from which many significant legal
consequences flow: \7\
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    \7\ Under the 1909 Copyright Act, state copyright law generally
governed protection for unpublished works. Copyright owners could
secure federal copyright protection for certain types of unpublished
works by registering them with the Copyright Office, and federal
copyright law also applied if the work was published with a notice
of copyright. Copyright Act of 1909, ch. 320, sec. 9, 35 Stat. 1075,
1077 (repealed 1976). Publication of a work without the requisite
formalities resulted in the loss of copyright protection. Under the
1976 Act, federal copyright law governs all original works fixed in
a tangible medium of expression whether they are published or not.
17 U.S.C. 102(a).
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    (1) Whether a work is published and, if so, the date of first
publication can have far-reaching consequences for a work. For
example, registration of a work before publication or within five
years of first publication constitutes prima facie evidence of the
validity of the copyright and the facts stated on the certificate.
17 U.S.C. 410(c).\8\
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    \8\ A court may exercise its discretion to determine how much
evidentiary weight to accord to a work not registered within five
years of first publication.
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    (2) A copyright owner is generally eligible to recover
attorneys' fees and statutory damages, rather than having to prove
actual damages or entitlement to defendant's profits, only if it has
registered its copyright before the alleged infringement commenced.
Congress provided an exception to this rule in the form of a three
month grace period for published works, allowing copyright owners to
recover attorneys' fees and statutory damages for pre-registration
infringement when registration is made within three months of first
publication. 17 U.S.C. 412.\9\
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    \9\ Exceptions to this rule apply for authors claiming
violations of their moral rights and for infringement actions
involving preregistered works. See 17 U.S.C. 408(f), 412.
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    (3) Although omission of a copyright notice from published
copies of a work on or after March 1, 1989 no longer results in
copyright forfeiture, a defendant who had access to a copy of the
work that includes a copyright notice cannot typically claim that
any infringement of that work was innocent. 17 U.S.C. 401(d).
    (4) The term of copyright for works made for hire, anonymous
works, and pseudonymous works is the shorter of ninety-five years
from the date of publication or one hundred twenty years from the
date of creation. 17 U.S.C. 302(c).
    (5) Authors or their heirs have a right to terminate transfers
of copyright that cover the right of publication and were effected
after January 1, 1978 during a five-year period that begins at the
earlier of thirty-five years from the date of first publication or
forty years from the date of the transfer. 17 U.S.C. 203(a)(3).
    (6) One factor in the fair use analysis is the ``nature of the
work,'' which contemplates, in part, whether the work had previously
been published, with the scope of fair use being narrower with
respect to unpublished works in recognition of an author's right to
control the date of first publication. 17 U.S.C. 107.\10\
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    \10\ See, e.g., Harper & Row Publishers, Inc. v. Nation Enters.,
471 U.S. 539, 564 (1985) (holding that publication of excerpts from
unreleased manuscript was not fair use).
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(2) Location of Publication
    The locations in which a work has been published can also have
important legal consequences with respect to copyright issues. First, a
work's eligibility for copyright protection under U.S. law may depend
in part on whether it is published and, if so, the country of first
publication. Unpublished works that are original works of authorship
fixed in a tangible medium of expression are eligible for U.S.
copyright protection, regardless of the author's nationality or
domicile or where the work was created. 17 U.S.C. 102(a),104(a). In
contrast, published original works of authorship are only subject to
U.S. copyright law under
[[Page 66330]]
certain circumstances.\11\ 17 U.S.C. 104(b).
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    \11\ Such circumstances include: (1) If one or more of the
authors is a national or domiciliary of the United States or a
country that is a party to a copyright treaty to which the United
States is a party (a ``treaty party''), (2) if the work is first
published in the United States or in a foreign nation that is a
treaty party, or (3) if within 30 days after first publication in a
non-treaty party, the work is published in the United States or in a
foreign nation that is a treaty party. 17 U.S.C. 104(b).
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    Second, and separate from whether a work is eligible for copyright
protection under U.S. law, before a copyright owner can commence an
action for infringement of a United States work, the Copyright Office
must either register the claim to copyright or else refuse to register
the claim. 17 U.S.C. 411(a); Fourth Estate Public Benefit Corp. v.
Wall-Street.com, 586 U.S. -, 203 L.Ed. 2d 147 (2019). Therefore, access
to court may depend on whether a work is considered a United States
work or a foreign work, and publication is a key concept in making that
determination. See, e.g., UAB ``Planner5D'' v. Facebook, Inc., 2019 WL
6219223 (N.D. Cal. Nov. 21, 2019) (dismissing copyright infringement
claims where plaintiff failed to allege adequately that its work was a
registered United States work or exempted from registration requirement
as a foreign work). An unpublished work is a United States work if all
of the authors of the work are nationals, domiciliaries, or habitual
residents of the United States. 17 U.S.C. 101 (definition of ``United
States work''). Whether a published work is a United States work,
however, depends largely on the country in which the work was first
published. Id.\12\
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    \12\ Specifically, a published work is considered a U.S. work if
it was first published (i) in the United States; (ii) simultaneously
in the United States and a treaty party whose law grants a term of
copyrighted protection that is not shorter than the term provided
under U.S. law; (iii) simultaneously in the United States and a
foreign nation that is not a treaty party; or (iv) in a foreign
nation that is not a treaty party and all of the authors of the work
are nationals, domiciliaries or habitual residents of the United
States. 17 U.S.C. 101 (definition of ``United States work'').
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    Third, whether a work is published and the country of first
publication also influence whether a work whose copyright was lost due
to lack of compliance with formalities or lack of national eligibility
may be eligible for restoration under U.S. law. See 17 U.S.C. 104A.
    Fourth, a copyright owner must deposit two copies of most works
that are published in the United States with the Library of Congress,
but this obligation does not attach to non-U.S. works or unpublished
works. 17 U.S.C. 407(a)-(b).\13\
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    \13\ Works published in the United States that are available
only online are generally exempted by regulation from the mandatory
deposit requirements of section 407(a).
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(3) Treatment of Publication Status in the Copyright Registration
Process
    As noted, the Copyright Act requires an applicant for a copyright
registration to state, among other things, whether a work has been
published, along with the date and nation of its first publication. 17
U.S.C. 409(8). While the Register has regulatory authority to modify
certain registration requirements, compare 17 U.S.C. 407(c) (permitting
Register to exempt certain categories of material from statutory
deposit requirements), the Office may not waive this statutory
requirement under section 409(8). The Copyright Act also requires the
Register of Copyrights to create a group registration option for works
by the same individual author that are first published as contributions
to periodicals within a twelve month period, in connection with which
applicants are required to identify each work and its date of first
publication. 17 U.S.C. 408(c)(2).\14\
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    \14\ The regulations that were subsequently established for this
group option can be found at 37 CFR 202.4(g).
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    Other copyright regulations relating to the registration process
also require applicants to determine whether a work or group of works
has been published. For example, groups of up to 750 unpublished
photographs created by the same author for whom the copyright claimant
is the same can be registered with one application and filing fee. 37
CFR 202.4(h). Similarly, groups of up to 750 published photographs
created by the same author and for whom the copyright claimant is the
same can be registered with one application and filing fee. 37 CFR
202.4(i). Due to the technical constraints of the Office's current
registration system and the statutory requirement of section 409(8),
there is no group registration option that allows published and
unpublished photographs to be registered together within the same
application. Similarly, groups of up to ten unpublished works in
certain categories may be registered with one application and filing
fee if the author and claimant information is the same for all of the
works. 37 CFR 202.4(c). And a group of serials or newspaper issues that
are all-new collective works that were not published prior to the
publication of that issue may be registered with one application under
certain circumstances. 37 CFR 202.4(d) through (e). Like photographs,
there are currently no methods for registering published and
unpublished works in these categories in one group application.
    A recent Ninth Circuit case illustrates the consequences an
applicant may face if it incorrectly indicates on an application for a
copyright registration that the work at issue is unpublished. In Gold
Value International Textile, Inc. v. Sanctuary Clothing, LLC, 925 F.3d
1140 (9th Cir. 2019), the court affirmed the district court's finding
that a copyright registration was invalid with respect to the work at
issue where the application stated the work was unpublished despite the
applicant's knowledge at the time of facts that the court determined
constituted publication. Unlike other cases in which the Register has
responded to requests pursuant to 17 U.S.C. 411(b), a supplementary
registration could not have corrected the error in this case because
the registration at issue covered a collection of unpublished works,
and a published work could not be registered as part of an unpublished
collection.\15\ Id. at 1148. The court affirmed dismissal of the
complaint based on the lack of a valid registration, as well as the
award of over $120,000 in attorneys' fees to defendants as the
prevailing parties. Id. at 1148-49.
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    \15\ The option to register a collection of unpublished works
was subsequently discontinued and replaced by a group registration
option for unpublished works, which allows registration of up to ten
unpublished works in the same administrative class created by the
same author or authors, who must also be the copyright claimants,
and for which the authorship statement for each author is the same.
See 37 CFR 202.4(c).
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(B) The Meaning of ``Publication''
(1) Legislative History
    The 1976 Copyright Act House Report notes that, although
publication would play a less central role in copyright law under the
1976 Act than it had under the 1909 Act, ``the concept would still have
substantial significance under provisions throughout the bill. . . .''
H.R. Rep. No. 94-1476, at 138 (1976). The legislative history of the
1976 Copyright Act also provides guidance regarding Congress'
interpretation of the statutory definition of the term ``publication.''
The 1976 Copyright Act House Report explains that under the definition
included in the Act, a work would be considered published if ``one or
more copies or phonorecords embodying it are distributed to the
public--that is generally to persons under no explicit or implicit
restrictions with respect to disclosure of its contents--without regard
to the manner
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in which the copies or phonorecords changed hands.'' H.R. Rep. No. 94-
1476, at 138 (1976).\16\ The House Report also explains that the
distinction between the public distribution of a work, which
constitutes publication, and the performance or display of a work,
which does not constitute publication, is based upon whether a material
object would change hands. Id. (referencing definition of
``publication'' in 17 U.S.C. 101). The definition of ``publication''
was intended to clarify that ``any form of dissemination in which a
material object does not change hands--performances or displays on
television, for example--is not a publication no matter how many people
are exposed to the work.'' \17\ Id.
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    \16\ See also H.R. Rep. No. 94-1476, at 61 (1976) (noting that
``[t]he reference to `copies or phonorecords,' although in the
plural, are intended here and throughout the bill to include the
singular'').
    \17\ This language distinguished distribution and publication
(which allow for possession of a copy of a work) from performance or
display (which allow only for a work to be perceived). It does not
reflect a requirement that an ``actual'' distribution of a work
occur to constitute publication.
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    The House Report also notes that Congress provided the right ``to
distribute copies or phonorecords of the copyrighted work to the public
by sale or other transfer of ownership, or by rental, lease, or
lending'' as one of the exclusive rights of a copyright owner in
section 106 of the Copyright Act. Id. at 62 (referencing 17 U.S.C.
106(3)). The Report describes this exclusive right as ``the right to
control the first public distribution of an authorized copy or
phonorecord of his work'' and explains that any unauthorized public
distribution of copies would be an infringement. Id.
(2) Case Law: Electronic Works
    It is well-settled that electronic files are capable of being
published as defined by the Copyright Act. To the extent that
publication requires transferring or offering to transfer a material
object, electronic files saved on a server, hard drive or disk
constitute material objects, such that they meet the ``copies''
requirement inherent in the definition of publication. Courts have
routinely found that electronic transmission of a work constitutes
distribution.\18\ Because the Copyright Act defines publication to
include the distribution of copies or phonorecords to the public, it
follows that the electronic transmission of copies of a work
constitutes publication of that work if the other requirements of
publication were satisfied.
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    \18\ See, e.g., New York Times Co. v. Tasini, 533 U.S. 483
(2001) (stating that placement of electronic copies of articles in a
database constituted distribution of copies of those articles as
defined by the Copyright Act); Metro-Goldwyn-Mayer v. Grokster, 545
U.S. 913 (2005) (noting that ``peer-to-peer networks are employed to
store and distribute electronic files'' and that peer-to-peer
software ``enable[d] users to reproduce and distribute the
copyrighted works in violation of the Copyright Act.''); London-Sire
Records, Inc. v. Doe 1, 542 F. Supp. 2d 153, 170-72 (D. Mass. 2008)
(``[a]n electronic file transfer is plainly within the sort of
transaction that Sec.  106(3) [the distribution right] was intended
to reach.'').
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    Judicial opinions addressing the definition of publication in the
online context are not uniform. Some courts have held that merely
posting a work on a publicly accessible website constitutes
publication. For example, in Getaped.com, Inc. v. Cangemi, 188 F. Supp.
2d 398, 402 (S.D.N.Y. 2002), the court held that the posting of content
on a website constituted publication because ``merely by accessing a
web page, an internet user acquires the ability to make a copy of that
web page, a copy that is, in fact, indistinguishable in every part from
the original. Consequently, when a website goes live, the creator loses
the ability to control either duplication or further distribution of
his or her work.'' The court reasoned that unlike a public display or
performance, the public has the ability to download a file from a
website and gain a possessory interest in it. Id. at 401-02. Other
courts have adopted Getaped's holding that the act of posting a work to
a website constitutes publication.\19\ These courts have not addressed,
however, whether a rule that bases publication solely on the technical
ability of users to duplicate or further distribute a work posted on
the internet is inconsistent with the established principle that
publication requires the copyright owner's authorization. See
Compendium (Third) sec. 1902. Indeed, copying or distributing such a
work without the copyright owner's permission would (absent a defense)
constitute infringement--a result that is difficult to reconcile with
the notion that the copyright owner published the work merely by
posting it online.\20\
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    \19\ See, e.g., UAB ``Planner5D'' v. Facebook, Inc., 2019 WL
6219223, at *7 (N.D. Cal. Nov. 21, 2019) (holding that plaintiff
failed to plead adequately that works posted on a website were
merely displayed and therefore unpublished where it had not alleged
facts that show that the website contained features that prevented
users from copying the works); New Show Studios, LLC v. Needle, 2016
WL 5213903, at *7 (C.D. Cal. Sept. 20, 2016); William Wade Waller
Co. v. Nexstar Broad., Inc., 2011 WL 2648584, at *2 (E.D. Ark. July
6, 2011).
    \20\ Modern technology may also prevent users' practical ability
to make copies of certain web pages. See 17 U.S.C. 1201(a).
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    In contrast, other courts have taken the position that merely
posting a digital file on the internet does not constitute publication.
For example, in Einhorn v. Mergatroyd Productions, the court held that
posting a digital file of a performance of a theatrical production on
the internet did not amount to publication because it did not involve a
transfer of ownership, rental, lease or lending. 426 F. Supp. 2d 189,
197 (S.D.N.Y. 2006). Another court in the same district held that
allegations that a collection of drawings were posted on a website were
insufficient to plead that the drawings were published under the
Copyright Act. McLaren v. Chico's FAS, Inc., 2010 WL 4615772, at *4
(S.D.N.Y. Nov. 9, 2010). Likewise, in Moberg v. 33T, LLC, the court
determined that a Swedish photographer's posting of copyrighted works
on a German website did not constitute simultaneous, global publication
as a matter of law and the work could not be considered a ``United
States work'' that was subject to the registration requirement of
section 411(a) prior to filing suit. 666 F. Supp. 2d 415, 422 (D. Del.
2009). The court reasoned that treating the uploading of a work on a
website to be simultaneous publication in every jurisdiction in which
the website is accessible would effectively subject copyright owners
from other countries to the formalities of U.S. copyright law, contrary
to the purpose of the Berne Convention. Id. at 422-23.
    Rather than endorsing a bright line test, the Eleventh Circuit, the
only Circuit Court to rule specifically on the issue, opined that
publication is a fact-specific inquiry. In Kernal Records Oy v. Mosley,
the court held that determining whether a work has been published
requires an examination of ``the method, extent, and purpose of the
alleged distribution,'' and determining whether a work was first
published outside the United States requires an examination of ``both
the timing and geographic extent of the first publication.'' 694 F.3d
1294, 1304 (11th Cir. 2012). The court explained that a copyright owner
can make a work available ``online'' in many ways, including by sending
the work to specific recipients through email, as well as posting it on
a restricted website, a peer-to-peer network, or a public website, and
each of the methods raises different wrinkles as to whether the work
has been published. Id. at 1305. Because the evidence presented by the
defendant established only that the work had been posted in an
``internet publication'' and an ``online magazine,'' from which it was
not evident that the work had been made available on a public website
or that it had been simultaneously published in Australia and the
United States,
[[Page 66332]]
disputed issues of fact prevented summary judgment as to whether the
work was a ``United States work.'' Id. at 1306-07. Similarly, in Rogers
v. Better Business Bureau of Metropolitan Housing, Inc., the Southern
District of Texas held that the fact intensive nature of the
publication inquiry precluded the court from finding as a matter of law
that the plaintiff distributed copies of the works at issue when he
uploaded them to the internet. 887 F. Supp. 2d 722, 730 (S.D. Tex.
2012). ``Absent binding law or even a clear consensus in case law
directly related to the posting of a website online,'' the court stated
it was reluctant to find, as a matter of law, that the plaintiff
distributed copies of the websites when he uploaded them to the
internet, which was a determination it recognized ``would have wide-
ranging effects on the rights of authors and users, including copyright
duration, country of publication, time limits, deposit requirements
with the Library of Congress, and fair use.'' Id. at 731-32, n.34.
(3) Copyright Office Guidance
    The Copyright Office ``will accept the applicant's representation
that website content is published or unpublished, unless that statement
is implausible or is contradicted by information provided elsewhere in
the registration materials or in the Office's records or by information
that is known to the registration specialist.'' Compendium (Third) sec.
1008.3(F). To aid applicants in determining whether a work has been
published, the Copyright Office provides guidance on a variety of
issues relating to the issue of publication based on the statutory
definition and the Copyright Act's legislative history. Consistent with
the law, the Office does not consider a work to be published if it is
merely displayed or performed online. Compendium (Third) sec.
1008.3(C). The Compendium provides that publication occurs when one or
more copies or phonorecords are distributed to a member of the public
who is not subject to any restrictions concerning the disclosure of the
content of the work. Compendium (Third) sec. 1905.1. Consistent with
the statutory definition, the Compendium provides that publication can
be accomplished through transfer of ownership of the work or rental,
lease, or lending of copies of the work, or by offering to distribute
copies of a work to a group of persons for the purpose of further
distribution, public performance or public display. Compendium (Third)
sec. 1905.2, 1906.
    The 1976 Copyright Act ``recognized for the first time a distinct
statutory right of first publication.'' Harper & Row, Publishers, Inc.
v. Nation Enterprises, 471 U.S. 539, 552 (1985). This right allows the
copyright owner to decide when, where and in what form to first publish
a work, or whether to publish it at all. Id. at 553; see also, H.R.
Rep. No. 94-1476, at 61 (``The exclusive rights accorded to a copyright
owner under section 106 are `to do and to authorize' any of the
activities specified in the five numbered clauses.''). Thus, the
Compendium recognizes that publication only occurs if the distribution
or offer to distribute copies is made ``by or with the authority of the
copyright owner.'' Compendium (Third) sec. 1902. The Office therefore
does not consider a work to be published if it is posted online without
authorization from the copyright owner. Compendium (Third) sec.
1008.3(F).
    The Office considers a work published if it is made available
online and the copyright owner authorizes the end user to retain copies
of that work. Compendium (Third) sec. 1008.3(B). ``A critical element
of publication is that the distribution of copies or phonorecords to
the public must be authorized by the copyright owner. . . . To be
considered published, the copyright owner must expressly or impliedly
authorize users to make retainable copies or phonorecords of the work,
whether by downloading, printing, or by other means.'' Compendium
(Third) sec. 1008.3(C). For instance, a work that is expressly
authorized for download by members of the public by including a
``Download Now'' button, is considered published. Compendium (Third)
sec. 1008.3(F). If the website on which a work is posted contains an
obvious notice, including in the terms of service, indicating that a
work cannot be downloaded, printed or copied, the work may be deemed
unpublished. Id.
    The Copyright Office also considers a work published if the owner
makes copies available online and offers to distribute them to
intermediaries for further distribution, public performance, or public
display. Compendium (Third) sec. 1008.3(B); see also, H.R. Rep. No. 94-
1476, at 138 (``On the other hand, the definition also makes clear
that, when copies or phonorecords are offered to a group of
wholesalers, broadcasters, motion pictures, etc., publication takes
place if the purpose is `further distribution, public performance, or
public display.' ''). For instance, a sound recording that has been
offered by the copyright owner for distribution to multiple online
streaming services and a photograph that has been offered by the
copyright owner to multiple stock photo companies for purposes of
further distribution would be considered published. Compendium (Third)
sec. 1008.3(B).
(4) Commentary
    Several copyright treatises opine on how to apply the statutory
definition of publication to modern circumstances. David Nimmer
explains that although the statutory definition of the term
``publication'' does not explicitly state that the copyright owner must
authorize the distribution of the copies or phonorecords, such
authorization can be implied because ``Congress could not have intended
that the various legal consequences of publication under the current
Act would be triggered by the unauthorized act of an infringer or other
stranger to the copyright.'' David Nimmer & Melville Nimmer, 1 Nimmer
on Copyright sec. 4.03 (2019). Nimmer does not take a definitive
position on whether works that have been posted on the internet have
been published--but asserts that this question must be considered
within the context that the sine qua non of publication is allowing
members of the public to acquire a possessory interest in tangible
copies of a work. Id. at 4.07.
    William Patry states that the Section 411(a) registration
requirement raises ``tricky questions'' concerning first publication
for works posted on the internet. William F. Patry, 3 Patry on
Copyright sec. 6:55.40 (2019). Patry notes that the Berne Convention is
non-self-executing, and that the Copyright Act does not define
simultaneous publication; therefore, it is up to the courts to decide
what ``simultaneous publication'' means, so long as their definition is
consonant with the general definition of ``publication'' outlined in
the Copyright Act. Id. Patry agrees with the general approach the
Eleventh Circuit took in Kernal Records of focusing on the ``particular
factual distribution'' as opposed to crafting a rule that ``all
`internet' publication is a global general publication.'' Id.
    In his treatise, Paul Goldstein argues that dissemination over the
internet without limits on copying should be held to constitute
publication. Paul Goldstein, Goldstein on Copyright sec. 3.3.3 (3d ed.
2016). Goldstein points to several reasons that counsel in favor of
this result. First, because the copyright term for works made for hire
is 95 years from publication, or 120 years from creation, to treat
internet works as ``unpublished'' would effectively extend copyright
protection for many internet
[[Page 66333]]
works for an additional 25 years. Id. Second, considering internet
works to be ``unpublished'' would dilute incentives to early and
regular registration of claims to copyright. Id. Finally, one reason
that Congress deemed broadcast performances or other traditional
performances and displays not to constitute publication was that they
could not be readily or accurately reproduced at the time when the 1976
Copyright Act was drafted. In contrast, a vast array and quantity of
content can be cheaply and accurately downloaded from the internet. Id.
    Others have opined on matters relating to publication. For example,
Thomas F. Cotter recommends that Congress consider whether there is a
different date, for example the date of creation, that may be
preferable to trigger some or all of the consequences that currently
flow from publication. Thomas F. Cotter, Toward a Functional Definition
of Publication in Copyright Law, 92 Minn. L. Rev. 1724, 1789 (2008). In
the meantime, he suggests that courts apply a broad definition of
publication to trigger time periods that begin to run on the date of
first publication and for the purpose of a fair use analysis but a
narrower definition of publication for imposing a duty to deposit and
determining a work's country of origin and place of first publication.
Id. at 1793.
(C) Illustrative Challenges in Applying Statutory Definition to Modern
Context
    In the online environment, each new feature or application can
raise additional wrinkles regarding publication. For example, the
Office regularly receives questions regarding whether works that have
been transmitted by email, link, and/or through streaming are
distributions of a work that transfer ownership, such that they
constitute publication, or are more closely akin to public performance
or display of a work, which does not of itself constitute publication.
    Consider the ubiquitous ability to post works on traditional
websites or social media, such as posting a photograph to a Facebook
page or Instagram account. Must the photographer actively demonstrate
his/her authorization to copying, printing, downloading or further
distribution of a work for the photograph to be considered published?
Is an affirmative statement permitting users to copy, print, download
or further distribute the work required for a work posted on a public
website to be considered published, or can we infer consent of the
author to these actions absent an explicit statement prohibiting
copying, printing, downloading or distribution of the work? Similarly,
does the posting of a work on a public website that assists users in
some manner in downloading, printing, copying, or transmitting the work
constitute publication, or can we infer from the posting of a work
without any safeguards to prevent such actions that the owner consents
to these actions such that work is published? Is it sufficient for a
copyright owner to have generally authorized the posting of the work on
the public website or must the copyright owner have specifically
authorized downloading, printing, copying and/or further distribution
of the work?
    Online Terms of Service also raise questions about whether a
copyright owner has authorized copying, printing, downloading or
distribution of its works. For example, does joining a social media
platform whose terms of service provide that the social media platform
or its users obtain a license to download, copy, print, and/or further
distribute any content posted on the platform constitute authorization
to other users to download, copy, print and/or redistribute any works
subsequently posted on that platform? Where a social media platform
provides tools for redistributing content (e.g. Twitter's ``retweet''
button, Facebook's ``share'' button, or Instagram's ``add post to your
story'' button), have all members of that platform authorized the
further distribution of works they post on that platform such that
those works should be considered published?
    The ability to transmit works widely with the click of a single
button raises still other questions. If the posting of a work on a
public website constitutes publication in certain circumstances, is the
work simultaneously published in all jurisdictions from which the work
is accessible? Does the concept of limited publication apply in the
context of online publication? Is there a threshold number of people
who must be able to access an online work for the work to be considered
published? For example, is a work that is posted on a beta site that is
being tested by a select group, or on a closed or private social media
group published? How might a Facebook user's choice to allow only
friends, or friends of friends, or the general public to access
materials posted on their profile affect the analysis of whether a
posted work has been published?
II. Subjects of Inquiry
    The Office invites written comments on the general subjects below.
The Office seeks to propose a regulation interpreting the statutory
definition of publication for registration purposes and to provide
enhanced policy guidance, such as in revisions to the Compendium and/or
Copyright Office circulars. Where possible, comments should be tailored
to actions that are within the purview of the Office's regulatory
authority, within the scope of the existing Copyright Act. If a party
is proposing an action beyond the Office's authority, such as a
statutory amendment or change to existing statutory language, the
comment should explicitly so state. A party choosing to respond to this
notice of inquiry need not address every subject, but the Office
requests that responding parties clearly identify and separately
address each subject for which a response is submitted. In responding,
please identify your particular interest in and experience with these
issues.
    1. Section 409(8) of the Copyright Act requires applicants 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.
    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 copyright applicants on issues such as:
    i. How a copyright owner demonstrates authorization for others to
distribute or reproduce a work that is posted online;
    ii. The timing of publication when copies are distributed and/or
displayed electronically;
    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;
    iv. Whether advertising works online or on social media constitutes
publication; and/or
    v. Any other issues raised in section I(C) above.
    3. Can and should the Copyright Office promulgate a regulation to
allow copyright applicants to satisfy the registration requirements of
section 409
[[Page 66334]]
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? \21\
---------------------------------------------------------------------------
    \21\ Compare 37 CFR 201.4(g) (``The fact that the Office has
recorded a document is not a determination by the Office of the
document's validity or legal effect. Recordation of a document by
the Copyright Office is without prejudice to any party claiming that
the legal or formal requirements for recordation have not been met,
including before a court of competent jurisdiction.'').
---------------------------------------------------------------------------
    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?
    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?
    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?
    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?
    9. The Copyright Office invites comment on any additional
considerations it should take into account relating to online
publication.
    Dated: November 26, 2019.
Regan A. Smith,
General Counsel and Associate Register of Copyrights.
[FR Doc. 2019-26004 Filed 12-3-19; 8:45 am]
 BILLING CODE 1410-30-P