TABLE OF CONTENTS Table of Authorities . Preliminary Statement .... Statement of the Case .. Standard of Review .. Argument .

2 3 4 9 10

I. DEFENDANTS ARE ENTITELD TO SUMMARY JUDGMENT OVER PLAINTIFF'S CLAIMS BECAUSE THE REGISTRATIONS UPON WHICH PLAINTIFF RELIES DO NOT COMPLY WITH 17 U.S.C. 409 AND 411 AND THEREFORE CANNOT SERVE AS VALID REGISTRATIONS OF THE INDIVIDUAL IMAGES AT ISSUE

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II. EVERY COURT BUT ONE THAT HAS EVALUATED THIS ISSUE HAS INVALIDATED THIS REGISTRATION FORMAT AND THE COMPLAINTS HAVE BEEN DISMISSED

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III. SECTION 103 OF THE COPYRIGHT ACT SPECIFICALLY STATES THAT REGISTRATION OF A COMPILATION DOES NOT PROVIDE REGISTRATION TO THE INDIVUDAL WORKS CONTAINED IN THE COMPILATION

. Conclusion

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TABLE OF AUTHORITIES Cases Adickes v. S.H. Kress & Co., 398 U.S. 144, 157 (1970)........................................................8 Alaska Stock, LLC v. Houghton Mifflin Harcourt Pub. Co. 2010 WL 378572 (D.Alaska, 2010)...................................................................................................................................16 Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250 (1986)..................................................8 Bean v. Houghton Mifflin Harcourt Publishing Co., 2010 WL 3168624 (D.Ariz.,2010)...16 Boyds Collection, Ltd. v. Bearington Collection, Inc., 360 F. Supp. 2d 655, 662(M.D. Pa. 2005)...................................................................................................................................13 Celotex Corp. v. Catrett, 477 U.S. 317, 322-23 (1986)), cert denied, 517 U.S. 1190 (1996) 8 Chevron U.S.A., Inc. v. Natural Res. Defense Council, Inc., 467 U.S. 837 (1984).............12 Christensen v. Harris County, 529 U.S. 576, 588 (2000)......................................................13 Gray v. Garlok Seealing Technologies, LLC, 2006 WL 3680567 (W.D.N.Y.,2006)..................................................................................................................9 Gummo v. Village of Depew, 75 F.3d 98, 107 (2d Cir.1996)................................................8 Masterfile Corp. v. Gale, 2011 WL 4702862 (D. Utah 2011)..............................................16 Muench Photography, Inc. v. Houghton Mifflin Harcourt Pub. Co., 712 F.Supp.2d 84 (S.D.N.Y.,2010);..................................................................................................................9 Reed Elsevier, Inc. v. Muchnick ___ U.S.____, 130 S.Ct. 1237 U.S., (2010).......................9 U.S. v. Diebold, Inc., 369 U.S. 654, 655 (1962).....................................................................8 United States v. Mead Corp., 533 U.S. 218, 227-8 (2001)...................................................12 Statutes . Fed.R.Civ.P. 56(c)................................................................................................................8 17 U.S.C. 409(1), (2), (6)......................................................................................................9 17 U.S.C. 409......................................................................................................................10 17 U.S.C. 411(a)....................................................................................................................9 17 U.S.C. 103(a)..................................................................................................................21 17 U.S.C. 408......................................................................................................................14 Other Authorities H.R. Rep. No. 94-1476, at 154, 1976 U.S.C.C.A.N. 5659, 5770.........................................14 H.R. Rep. No. 94-1476, at 155-56 (1976).............................................................................13 Treatises 11 MOORE'S FEDERAL PRACTICE, 56.11[1] [a] (Matthew Bender 3d ed.).................8 Regulations 37 C.F.R. 202.3(10)(ii)........................................................................................................16 43 Fed. Reg. 965, 966-67 (January 5, 1978).........................................................................14 66 Fed. Reg. 37142, 37142-50 (July 17, 2001).....................................................................15

PRELIMINARY STATEMENT

Defendants Chaga International, Steve Gould and Michael Tidd (collectively, Defendants) respectfully submit this Memorandum of Law in Support of Defendants' Motion for Summary Judgment pursuant to Federal Rule of Civil Procedure 56. STATEMENT OF THE CASE Plaintiff is a stock photo licensing agency based in Toronto, Canada, that licenses stock digital imagery to users for fees. Complaint at paragraph 2. The complaint alleges that Defendants used forty (40) digital images on their various websites without permission or authorization from Plaintiff. Complaint at paragraph 11. In order to establish its right to pursue this action, Plaintifff relies on approximately eighteen (18) different registrations which collectively form Exhibit A of the complaint. Exhibit A is actually only part of the registrations; the full registrations are annexed as Exhibits 2 through 17 of the Declaration of Oscar Michelen (hereinafter referred to as Declaration), filed in support of this motion. The registrations fall into three categories: (1) A registration that lists only Plaintiff as the author of the images covered by the registration naming no individuals and listing only and additional authors as additional authors with no actual listing of the additional authors. Exhibit 17 of the Declaration is the sole registration in this category; (2) Registrations that list Plaintiff as the author of the images covered by the registration along with naming three individuals and X others as additional authors without listing the additional authors where X is the number of alleged additional authors. Exhibits 9 through 16 of the Declaration fall into this category; (3) Registrations that list Plaintiff as the author of the images covered by the registration along with pages of continuation

sheets which lists an unnumbered amount of additional authors. Exhibits 2 through 8 of the Declaration fall into this category. None of the registrations contain any title for any of the works covered by the registration. None of the registrations that name an author identify which author is the author of which particular image nor do they contain any other information about the author other than the name of the author. The registrations all list one date as the date of first publication. They do not even appear to contain an image of the actual work of art being registered. Section 409 of the Copyright Act sets forth the requirements for a valid registration of a work. : The application for copyright registration shall be made on a form prescribed by the Register of Copyrights and shall include (1) the name and address of the copyright claimant; (2) in the case of a work other than an anonymous or pseudonymous work, the name and nationality or domicile of the author or authors, and, if one or more of the authors is dead, the dates of their deaths; (3) if the work is anonymous or pseudonymous, the nationality or domicile of the author or authors; (4) in the case of a work made for hire, a statement to this effect; (5) if the copyright claimant is not the author, a brief statement of how the claimant obtained ownership of the copyright; (6) the title of the work, together with any previous or alternative titles under which the work can be identified; (7) the year in which creation of the work was completed; (8) if the work has been published, the date and nation of its first publication;

(9) in the case of a compilation or derivative work, an identification of any preexisting work or works that it is based on or incorporates, and a brief, general statement of the additional material covered by the copyright claim being registered; (10) in the case of a published work containing material of which copies are required by section 601 to be manufactured in the United States, the names of the persons or organizations who performed the processes specified by subsection (c) of section 601 with respect to that material, and the places where those processes were performed; and (11) any other information regarded by the Register of Copyrights as bearing upon the preparation or identification of the work or the existence, ownership, or duration of the copyright. The registrations fail to comply with section 409 (2) in that they either fail to name the author or in the instances where the author is named, they fail to identify the nationality or domicile of the author. The registrations fail to comply with section 409(6) in that they fail to name the title of the work. The registrations fail to comply with section 409 (7) in that they fail to state the year each work was completed. They fail to comply with section 409 (8) in that they fail to state the date and nation of each works first publication. This method of registration was not chosen by mistake or at random by Plaintiff. Rather, it was the result of a dialogue between the Copyright Office and Nancy Wolff, counsel to the Picture Agency Council of America, Inc. (PACA), a photographer trade association. Declaration at paragraph 49. Materials provided in a similar lawsuit Bean v. McDougal Littell, a division of Houghton Mifflin Harcourt, No. 07 cv 8063 (D. Ariz.) ( Bean), indicate that in the 1990s, representatives of PACA met with representatives of the Copyright Office to discuss applying registration practices for stock photo databases. Declaration at Exhibit 20. Specifically, the stock houses proposed registering, under a single copyright registration, their entire catalogs (and subsequently supplemented databases) of thousands upon thousands of unrelated digital images taken by hundreds of

unrelated photographers at various times. ( Id.)See also, as example, Declaration Exhibit 13(a single registration form for an unknown number of images by 134 different authors). Apparently as a result of those meetings and dialogue, Nanette Petruzzelli, then Chief of the Examining Division of the Copyright Office, sent a letter to PACAs counsel, dated February 12, 2002, that stated that the Copyright Office would accept this method of registration not only for the compilation, but for registration of the individual photographs themselves. Declaration Exhibit 22. In pertinent part, her letter states: The registration on record for stock photo catalogs submitted by PACA members generally follow this pattern of information: 1. The for-hire author of the compilation of photographs . . . is listed in space 2A of the form VA. . . .. 2. Space 2b of the form lists three individual authors followed by the phrase and X [number] others and the authorship for such other individual authors is listed as photographs. 3. The claimant of owner of the copyright is usually listed at space 4 of the form VA as the for-hire author of the compilation authorship. 4. A transfer statement such as by contract, is also listed at space 4, transfer line. . . . . Where individuals are listed at space 2a as additional authors the Office considers the claim also to extend to the photographs themselves because assuming that the claimant [owner of copyright] listed at space 4 is the author of the compilation [usually the stock photo agency] an acceptable transfer statement is also provided in space 4 of the form VA. Thus, the Office interprets the claim to extend to the individual photographic authorship for which the names indicated as space 2b of the form VA are the responsible authors.

Declaration Exhibit 22 at bottom of page 1 to top of page 2. Ms Petruzzelli compares this type of digital image compilation with the registration for serials (magazines) contained in Circular 62 of the Copyright Office. Exhibit 18. . Circular 62 states that [t]he classification serial includes periodicals, newspapers, magazines, bulletins, newsletters, annuals, journals, proceedings of societies, and other similar works. (Exhibit 18 at pg 1). It does not mention digital image databases.

The Petruzzelli letter had the effect of converting a registration of a compilation into a registration of thousands of individual images even though it did not contain most of the requisite Section 409 information. Many of plaintiffs registrations fail to even comply with this format in that in only Exhibits 9-16 follow Ms. Petruzzellis instructions. Ms. Wolff then prepared an article for distribution to PACA members outlining this methodology. Declaration Exhibit 21. Ms. Wolff then distributed a second article that reflected that the main impetus behind this circumvention of the plain language of Section 409 was the evasion of the requisite copyright registration fees. Declaration Exhibit 23, Update on Catalog Registration; see also Exhibit 19 Copyright Office Circular 4, Fees. In addition, Ms. Wolffs update admitted that absent this approval by the Copyright Office, this method of registration would only provide protection for the compilation as a whole, not the individual photographs within the compilation and that a separate application for each image would be required to obtain protection for each image: Copyright Office regulations only permit one claimant per application. Under these regulations, each contributor and agency would have to file a deposit of two copies of the catalog and a separate application per image (or group of images per claimant) for $30 per application amounting to hundreds of applications per catalog. Declaration Exhibit 23 at top of page 2(emphasis added).1 It appears that, according to the registrations, Plaintiff filed an initial registration for a block of photographs and then updated it periodically with additional authors pursuant to the Copyright Office regulations for registration of automated databases, 37 C.F.R. 202.3(b)(5). The objective apparently was not simply to register the catalog or database as
1

The article also describes an assignment of the copyright for registration purposes only and then having the stock photo agency assign the rights back to the photographer after registration. Neither the complaint nor the registrations contain the actual agreements between the photographers and the plaintiff, so it is not clear if this method was applied for the images involved in this case. If it was applied, it is possible that plaintiff may not have standing to bring these claims unless there was return of the rights back to plaintiff. This issue is not raised in this motion, but if the complaint survives this motion, discovery will be necessary to ascertain if plaintiff does have standing.

a collective whole, but rather to make that single registration apply to each of the possibly thousands of individual photographs contained within the collection so that the authors would not have to register any works themselves or pay the Copyright Office the fees it was due. In most of the registrations at issue here, the authors are not listed. In all of the registrations here, the titles of the works are not listed, nor are the works necessarily even included in the deposit copies, as the deposit regulations require only portions of the database to be deposited. See 37 C.F.R. 202.20(c)(2)(vii), (viii). There is no way for anyone to link a particular author to a particular image or to know when a particular image was first created or published. The requirements of 17 U.S.C. 409 are clear and vital to the creation and maintenance of an accurate and searchable record of copyright that interested parties including commercial interests and litigants - can use to ascertain whether a work has been registered, who created it, and who controls it. It is also vital for those interested parties to be able to ascertain when a work is claimed to have been first created and published. The methodology adopted makes a mockery of the pre-registration requirement in 411 of the Act and thus fails to meet the statutory requirement in that regard as well.

STANDARD OF REVIEW The standard for granting summary judgment is well established. Summary judgment may not be granted unless the pleadings, depositions, answers to interrogatories,

and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law. Fed.R.Civ.P. 56(c). A party seeking summary judgment bears the burden of establishing that no genuine issue of material fact exists. See, Adickes v. S.H. Kress & Co., 398 U.S. 144, 157 (1970). [T]he movant must make a prima facie showing that the standard for obtaining summary judgment has been satisfied. 11 MOORE'S FEDERAL PRACTICE, 56.11[1] [a] (Matthew Bender 3d ed.). In moving for summary judgment against a party who will bear the ultimate burden of proof at trial, the movant may satisfy this burden by pointing to an absence of evidence to support an essential element of the nonmoving party's claim. Gummo v. Village of Depew, 75 F.3d 98, 107 (2d Cir.1996)( citing Celotex Corp. v. Catrett, 477 U.S. 317, 322-23 (1986)), cert denied, 517 U.S. 1190 (1996). Once that burden has been established, the burden then shifts to the non-moving party to demonstrate specific facts showing that there is a genuine issue for trial. Fed.R.Civ.P. 56(e); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 250 (1986). The parties may only carry their respective burdens by producing evidentiary proof in admissible form. FED.R.CIV.P. 56(e). The underlying facts contained in affidavits, attached exhibits, and depositions, must be viewed in the light most favorable to the non-moving party. U.S. v. Diebold, Inc., 369 U.S. 654, 655 (1962). This is the standard even when the motion is made in lieu of answering the complaint. See. E.g., Gray v. Garlok Seealing Technologies, LLC, 2006 WL 3680567 (W.D.N.Y.,2006).

ARGUMENT

I. DEFENDANTS ARE ENTITELD TO SUMMARY JUDGMENT OVER PLAINTIFF'S CLAIMS BECAUSE THE REGISTRATIONS UPON WHICH PLAINTIFF RELIES DO NOT COMPLY WITH 17 U.S.C. 409 AND 411 AND THEREFORE CANNOT SERVE AS VALID REGISTRATIONS OF THE INDIVIDUAL IMAGES AT ISSUE A. The Registrations Alleged In The Complaint Are Invalid On Their Face As to Plaintiff This is a case of straightforward statutory construction. The Copyright Act at 17 U.S.C. 411(a) mandates that no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title. The United States Supreme Court has held that [ ] 411(a)'s registration requirement is a precondition to filing a claim that does not restrict a federal court's subject-matter jurisdiction. Reed Elsevier, Inc. v. Muchnick ___ U.S.____, 130 S.Ct. 1237 U.S., (2010). However, this precondition is a requirement that, if not met, subjects the claim to a motion for summary judgment. See, e.g., Muench Photography, Inc. v. Houghton Mifflin Harcourt Pub. Co., 712 F.Supp.2d 84 (S.D.N.Y.,2010); The Copyright Act also mandates that every registration application must identify, inter alia, the claimant, the author or authors of the work, and the title. 17 U.S.C. 409(1), (2), (6). Here, Plaintiff has not attached the full certificates of registration to its Complaint. Instead, it provides a chart that alleges that each of the approximately 40 copyrights at issue falls under one of several registration numbers. ( See Ex. A to Compl.) and then attaches part of the registrations themselves. A review of the actual registrations, attached by Defendants to the Declaration in Support of the Motion, reveals that none of the registrations complies with Section 409 of the Act.

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More significantly, registrations secured in the manner these registration were secured - naming only plaintiff or naming three random authors out of an unknown number of others or listing only the names of the authors in a continuation sheet fail to comply with the clearly enumerated registration requirements of the Copyright Act. 17 U.S.C. 409. For that reason alone, the Complaint must be dismissed. B. The Registrations Procedures Followed Here Were The Result Of Private Discussions Between The Copyright Office And PACAs Counsel and is Entitled to No Deference The registrations Plaintiff cites in its Complaint were each issued to Plaintiff as the Copyright Claimant. (Declaration Exs. 2 - 17.) According to the affidavit of Nancy Wolff, the lawyer for PACA, in 1995, Ms. Wolff and other representatives of the trade association met with staff members of the United States Copyright Office. (Declaration Ex. 20 2.) At that meeting, Ms. Wolff and outlined this mass registration procedure. ( Id. 4.) In 2002, Ms. Wolff once again approached the Copyright Office about the registration practices of her clients. (Ex. 20 6.) In return, Ms. Wolff received a letter from Ms. Petruzzelli (Ex. 22) which outlined the latter's understanding of the pattern that stock house registrations generally follow and provided the Copyright Office's interpretation of that practice. Ms. Petruzzelli indicated that the Copyright Office interpreted the claims to extend to individual photographic authorship only for those photographers identified by name in the application. ( Id.) So even under this liberal view of registration, the registrations attached as Exhibit 9-17 are invalid as they name either no author (Exhibit 17)

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or only three authors (Exhibits 9-16). For those that name three authors, there is no way of knowing if the images involved under those registrations involve the three named authors. Later in the same letter, however, Ms. Petruzzelli appeared to contradict the limited view expressed above - that the registration extends to individual works only for those photographers named in the application - when she referred to two Copyright Office guidelines that contemplated naming only three authors when a large number of authors contribute to a single work. The first source Ms. Petruzzelli cited is the Compendium of Copyright Office Practices, Compendium II (1984). The Copyright Office identifies this now twenty-five year old document as a manual, intended primarily for Copyright Office staff. ( See http://www.copyright.gov/compendium/) According to Ms. Petruzzelli, this internal manual stated that the Copyright Office preferred that a registration list all contributing authors, but that listing three authors and a reference to unnamed others was considered acceptable in some instances. (Ex. 22.) The second source Ms. Petruzzelli cited was Circular 62, Serials (see Ex. 18), a 2000 Circular that discussed registration procedures for serial works. (Ex. 22.). These copyright staff statements however, involve obtaining registration of the database as a compilation, but in order for the effect of the registration to extend to the individual photographs embodied in the database, the authors must be listed in space 2a of the application. None of the registrations here list the authors in 2a; at most, some list them in 2b. The informal Copyright Office interpretation at issue is equivocal as it mentions general guidelines and is not due the level of deference accorded official agency actions

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taken within the parameters of the agency's Congressional mandate. See United States v. Mead Corp., 533 U.S. 218, 227-8 (2001); see also Chevron U.S.A., Inc. v. Natural Res. Defense Council, Inc., 467 U.S. 837 (1984). The interpretation here was the result of an informal, nonpublic discussion between a select group of industry insiders and representatives of the Copyright Office. Here, there are only the statements and procedures outlined by Ms. Wolff to the members of the trade association, and a short letter from Ms. Pertuzzelli that never directly addresses whether the works of unnamed individual photographers can be registered in this manner. Accordingly, there is no record here that could persuade the Court that the interpretation reflects a reasoned and appropriate exercise of the Copyright Office's mandate. Moreover, even if a clear statement of the Copyright Office's position did exist, and even if it supported Plaintiff's apparent view, it would still be due no deference because granting registration of unnamed works of unnamed photographers in registrations that otherwise also do not comport with Section 409 directly conflicts with the clear terms of the statute. The [Copyright Office's] interpretation cannot trump the plain language of the governing statute. See Boyds Collection, Ltd. v. Bearington Collection, Inc., 360 F. Supp. 2d 655, 662(M.D. Pa. 2005) (finding Copyright Office's interpretation of useful articles vis a vis clothing on dolls conflicted with the plain meaning of the statutory definition of useful articles); see also Christensen v. Harris County, 529 U.S. 576, 588 (2000) (no deference owed to agency actions that conflict with the governing statute). The statute in 17 U.S.C. 409(a)(2) requires the name and nationality or domicile of the author or authors of the work that is being registered. Similarly, 17 U.S.C.

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409(a)(6) requires the title of the work being registered. Nothing in the comments or the legislative history indicates that these requirements can be side-stepped or waived by the Copyright Office. To the contrary, the legislative history indicates that the registration requirements were chosen, inter alia, in order to provide an accurate public record: the various clauses of section 409, which specify the information to be included in an application for copyright registration, are intended to give the Register of Copyrights authority to elicit all of the information needed to examine the application and to make a meaningful record of registration. H.R. Rep. No. 94-1476, at 155-56 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5771-72 (emphasis added). Absent these vital pieces of information, there is no record at all of the registration. A party ( e.g., a business planning to use a work, or a defendant charged with infringing a work) cannot search the Copyright Office's records and determine who actually controls a work, or indeed, whether an individual has ever registered a copyright. The procedure employed here serves no purpose other than to promote mass registration of works in a single application, depriving the Copyright Office of the very modest but important fees it charges for group and individual registrations, and undermining one of the very purposes of copyright registration. C. Properly Developed And Implemented Rules For The Registration Of Large Numbers Of Photographs Already Exist With the passage of the 1976 Act, Congress explicitly granted the Copyright Office authority to establish procedures for the group registration of copyrights by the same author. See 17 U.S.C. 408. The provision empowering the Register to allow a number of related works to be registered together as a group represents a needed and important liberalization of the law

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now in effect. At present the requirement for separate registrations where related works or parts of a work are published separately has created administrative problems and has resulted in unnecessary burdens and expenses on authors and other copyright owners. In a number of cases the technical necessity for separate applications and fees has caused copyright owners to forego copyright altogether. Examples of cases where these undesirable and unnecessary results could be avoided by allowing a single registration include . . . a group of photographs by one photographer .... H.R. Rep. No. 94-1476, at 154, 1976 U.S.C.C.A.N. 5659, 5770 (emphasis added). The Copyright Office acted on this mandate and, after a proper notice and comment period, it issued formal rules to govern the registration of multiple works by the same author under a single registration. See 43 Fed. Reg. 965, 966-67 (January 5, 1978) (later codified as 37 C.F.R. 202.3). In 2001, the Copyright Office, following an additional notice and comment period, announced a further liberalization of the group registration procedures, and in particular the deposit requirements, specifically for collections of published or unpublished photographs by a single photographer. See generally Group Registration of Photographs, 66 Fed. Reg. 37142, 37142-50 (July 17, 2001) (later codified at 37 C.F.R. 202.20(c)(2)(xx)). Specifically, the Copyright Office concluded pursuant to this lengthy notice and comment proceeding that (1) group registrations of photographs should be limited to photographs taken by the same individual author (id. at 37148) and noted that such is supported by subsections 408(c)(2) and (3) of the Copyright Act and the legislative history; and (2) that the deposit required to accompany the registration

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application should include a copy of each photograph and date of publication and that the photocopies must clearly depic[t] the photograph (id. at 37146-47). The industry practice at issue here is therefore not only an unauthorized evasion of the statutory registration requirements listed in 17 U.S.C. 409, but it is also an evasion of the clear rules promulgated by the Copyright Office specifically for photographers pursuant to the properly developed process that Congress explicitly authorized.. That process preserves the statutory requirement that a registration include the names of the claimant, the authors, dates of creation and publication; and the titles of the works in question, while addressing the registration fee issue. Photographers can simply register their works under their own names, and at minimal cost to them (the Copyright Office currently charges $45 for a single group registration of up to 750 photographs (Ex. 19).

II. EVERY COURT BUT ONE THAT HAS EVALUATED THIS ISSUE HAS INVALIDATED THIS REGISTRATION FORMAT AND THE COMPLAINTS HAVE BEEN DISMISSED Three cases involving this format of registration of digital images have been decided, all of which invalidated the registration format and awarded summary judgment to the defendants or dismissed the complaints.: Muench Photography, Inc. v. Houghton Mifflin Harcourt Pub. Co., 712 F.Supp.2d 84 (S.D.N.Y.,2010); Bean v. Houghton Mifflin Harcourt Publishing Co., 2010 WL 3168624 (D.Ariz.,2010); and Alaska Stock, LLC v. Houghton Mifflin Harcourt Pub. Co. 2010 WL 3785720 (D.Alaska, 2010).

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Only one case has upheld this format of registration. Masterfile Corp. v. Gale, 2011 WL 4702862 (D. Utah 2011). In that case, however, the court did not reach the issue of whether these registrations complied with Copyright Section 103(b) or 409 but instead ruled that it declined to follow Muench and that because Masterfile owns the constituent parts of the collection, the registration of the collection extends copyright protection to the constituent parts. Id. It is respectfully submitted that because the plaintiff in that matter relied only on 37 C.F.R. 202.3(10)(ii)(dealing with the registration of copyrights) and did not focus the courts attention on the Copyright Act itself, that it is inapposite and should not be followed. The court specifically stated that 37 C.F.R. 202.3(10)(ii) applies only to cases of an individual photographer registering multiple images at once, and not to image libraries; an argument not raised here or in the cases that follow. The court in that case also did not analyze the missing elements of the copyright registrations relied upon by the plaintiff as the defendants apparently did not rely on that argument before the court. Movant will now discuss the three cases that it argues are directly on point on this issue and which this court should follow. A. Muench Photography, Inc. v. Houghton-Mifflin Harcourt Pub. Co. In this case, the first case to deal with this issue and present a written opinion, Plaintiff brought an action pursuant to 17 U.S.C. 501 et seq. (the Copyright Act) against Defendants Houghton Mifflin Harcourt Publishing Company (HMH) and R.R. Donnelly & Sons Company (Donnelly, and together with HMH, Defendants) alleging that Defendants engaged in the unauthorized and impermissible use of Plaintiff's digital images. Defendants moved to dismiss the Complaint for failure to state a cause of action pursuant to Fed.R.Civ.P. 12(b)(6) arguing that the photographs at issue were not properly

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registered with the Copyright Office. Muench Photography, Inc. v. Houghton Mifflin Harcourt Pub. Co., 712 F.Supp.2d 84, 86. The court converted the motion to one for summary judgment pursuant to FRCP 56. A non-party to the action, Corbis Corporation, registered several automated databases of photographs, including the images at issue, which were taken (and therefore authored) by plaintiff. Id. Corbis used the three named authors and X other authors method used in this case contained in Exhibits 9-16. Id at page 87-88. The plaintiff had relied on the Petruzzelli letter to justify its method of registration. In stating that it would not rely on the Petruzzelli letter or afford it deference the court stated: the Court will not defer to the Copyright Office's interpretations of the Copyright Act as set forth in Petruzzelli Letter-even though the Petruzzelli Letter relies on provisions of Compendium II-because the interpretations conflict with a plain reading of 17 U.S.C. 409. See State of N.Y. v. Shalala, No. 93 Civ. 1330, 1996 WL 87240, at *9 (S.D.N.Y. Feb. 29, 1996) (Generally, even where an agency's interpretation is inconsistent with its past policy, the current interpretation is entitled to the usual deference as long as it is reasonable and not contrary to the plain language of the statute. (citing Himes v. Shalala, 999 F.2d 684, 690-91 (2d Cir.1993))) (emphasis added); compare 17 U.S.C. 409 (The application for copyright registration ... shall include ... (2) in the case of a work other than an anonymous or pseudonymous work, the name and nationality or domicile of the author or authors ....) with Petruzzelli Letter at 2 (I point out that Compendium II, 615.07(b) (3) does further state that the Office prefers the names of all authors by use of continuation sheets. However, the Office has consistently interpreted this preference as just that-a preference but not a requirement ....). Id. at pages 91-92. Finding that the terms of the statute to be unambiguous, judicial inquiry is complete, the court granted summary judgment due to the deficiencies in the registrations. Id. at 95 holding: Accordingly, because the Copyright Act is clear on its face, i.e., a copyright registration must contain certain pieces of information including the author's name, the registrations at issue here cover only the database as a whole (the compilation) but do not cover Plaintiff's individual contributions.

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Muench, is directly on point and identical in its relevant facts to this case. In fact, it so directly on point that much of the argument raised by movant in Point I of this brief is derived directly (with permission from Houghtons counsel) from the brief in Muench. The plaintiffs in Muench then moved for reargument, supported by various amicus curiae briefs, including ones filed by the government on behalf of the Copyright Office and by Corbis Corporation. Muench Photography, Inc. v. Houghton Mifflin Harcourt Pub. Co. 2010 WL 3958841 (SDNY 2010). The basis for reargument was mainly that the court overlooked section 411(b) of the Copyright Act which allows for correction of errors in registrations. The court held however, that omission of the authors name, image title, and connection between the two is not a mere inaccuracy; it is an entire failure to comply with the requirements of section 409 [and that] plaintiff's reliance on section 411(b) therefore cannot be a basis on which to vacate the Court's order. Id. Recently, the plaintiff in Muench, added his name and some additional images to the previously registered Corbis compilation database in an attempt to correct the previously invalidated registrations and then filed an amended complaint. Just a few days ago, the court again granted the defendants motion for summary judgment finding that this form of registration also did not comport with the Copyright Act. Muench Photography, Inc. v. Houghton Mifflin Harcourt Pub. Co., 09 cv 2669 (March 26, 2012)(appended as exhibit A to this memorandum). The court reiterated that proper registration was a prerequisite to maintaining a copyright infringement action and that a registration that fails to contain all of the

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requirements of section 409 is invalid and cannot be merely corrected by supplementing it later on. Id. This decision also means that if any of these images were previously contained on a validly filed Masterfile compilation registration, that supplementing them by adding the authors names (as Masterfile did in exhibits 2-8) is an invalid method of obtaining registration of the individual images contained within the compilation. B. Bean v. Houghton Mifflin Harcourt Publishing Co. Plaintiff in Bean was a photographer who produced digital images. Corbis Corporation was the licensing agent for Plaintiff. According to Plaintiff, between 2000 and 2009, Corbis, as Plaintiff's licensing agent, sold Defendant limited licenses for use of 150 of Plaintiff's photographs. Plaintiff alleged that Defendant willfully exceeded the permitted uses under the terms of the licenses granted by Corbis and filed suit alleging that Defendant infringed his copyrights in violation of 17 U.S.C. 501, et seq. Bean v. Houghton Mifflin Harcourt Publishing Co., 2010 WL 3168624 (D.Ariz.,2010) Once again Corbis had used the three authors plus X additional authors method. The court granted summary judgment in favor of the defendants because this method did not comply with Section 409 of the Copyright Act. Id. at page 4. The court found that because the registration contained only one title and only some authors names, it failed to comply with the clear language of the Act. Id. at page 4. The court even refused to allow Corbis to file an amicus curiae brief in the case because it had read the amicus brief Corbis filed in the Muench reargument case and found that consideration of Corbis's proposed amicus curiae brief in the present case will not aid the Court's decision. Id. at page 5. Bean

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is presently on appeal to the Ninth Circuit and its appeal has been stayed pending the Ninth Circuits decision in Alaska Stock, discussed next.

C. Alaska Stock, LLC v. Houghton Mifflin Harcourt Pub. Co In this case, the plaintiff was stock photo agency who used the registration method used by plaintiff herein in Exhibits 9-16, (three authors plus X additional without listing any additional authors). Alaska Stock, LLC v. Houghton Mifflin Harcourt Pub. Co. 2010 WL 3785720 at page 1 (D.Alaska, 2010). The court found the following defects in the registration: The registrations do not discloseand with what is currently before the court, it is not knownwhich individual photograph was authored by a particular photographer, named or unnamed. The registrations also do not list a title for any of the individual photographs contained in any of the compilations. Finally, although the copy of the registrations that are in the public catalog do not state how plaintiff obtained ownership of the copyrights to the individual photographs, the Certificate of Registrations indicate that it was by means of a transfer agreement. Id. at page 1. Of course, these problems are identical to the ones in the registrations relied upon by the plaintiff in this present case: no or incomplete authors named; no titles to the photos; and no way to determine which photograph goes with which author. Once again, the court held that this method may provide a valid copyright registration for the entire compilation itself as a whole, but provides no protection or registration for the individual images contained within the compilation. Id. at page 4. Alaska Stock has appealed this ruling to the Ninth Circuit. The matter has been fully briefed and has already been orally argued. III. SECTION 103 OF THE COPYRIGHT ACT SPECIFICALLY STATES THAT REGISTRATION OF A COMPILATION DOES NOT PROVIDE REGISTRATION TO THE INDIVUDAL WORKS CONTAINED IN THE COMPILATION

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The procedure used by plaintiff herein also ignored the limitations on registration imposed by Section 103 of the Copyright Act. Compilations can be registered by the author of the compilation under Section 103(a) of the Copyright Act. That statute expressly provides that compilations are proper, lawful subject matter of copyright[.] 17 U.S.C. 103(a). However, Section 103(b) unequivocally and specifically provides that [t]he copyright in a compilation ... extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work, and does not imply any exclusive right in the preexisting material. Id. 103(b). Section 103(b) is neither unclear nor ambiguous. All of the registrations herein describe themselves as and are clearly compilations. Section 103(b) cannot be amended by regulation or informal opinion(s) or advice to claimants by the Copyright Office. Alaska Stock, LLC v. Houghton Mifflin Harcourt Pub. Co. 2010 WL 3785720 at page 5 (D.Alaska, 2010)( what plaintiff is arguing here seems to be the antithesis of what Section 103(b) states as controlling copyright law). The court must grant summary judgment to the defendants on this basis alone as the Copyright Act is clear and unambiguous on this issue.

CONCLUSION Because the registrations governing the images at issue herein do not comply with sections 103, 409 and 411 of the Copyright Act, summary judgment must be granted to defendants along with such other and further relief as the court deems just and proper. Dated: March 29, 2012 Respectfully submitted,

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BRENT H. BLAKELY bblakely@blakelylawgroup.com BLAKELY LAW GROUP 95 North Citrus Avenue Hollywood CA 90038 Phone: 323 464 7400 Fax: 323 464 7410 OSCAR MICHELEN (OM 5199) omichelen@cuomollc.com 200 Old Country Road Suite 2 South Mineola NY 11501 Phone: 516-741-3223 Fax: 516-741-3223 (Motion to be admitted pro hac vice pending) Attorneys for Defendants CHAGA INTERNATIONAL STEVE GOULD and MICHAEL TIDD

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