A dispute between two personal injury law forms brought to the fore, again, an anomaly in Second Circuit case law: that for purposes of complying with the notice requirements of the 1976 Act as passed, one could deliberately omit the notice, later “discover” one’s own omission, and then, by complying with curative provisions, avoid forfeiture of copyright.
The case is Niemark v. Ronai & Ronai, 2007 WL 1544641 (S.D.N.Y. May 25, 2007). Here are some facts from the court’s opinion:
"The relevant facts are undisputed. Plaintiff is an attorney licensed to practice law in the State of New York. His practice is devoted to personal injury law and is operated out of New City, New York. Defendant is a personal injury law firm owned and operated by Peter Ronai and Holly Ostrov Ronai, both of whom are licensed to practice law in New York, with offices in White Plains, New York and Manhattan.
Over the years, plaintiff has advertised his law practice using a cartoon drawing of a hospital patient fully bandaged lying in a hospital bed with one leg elevated by a sling. He first published the Drawing on July 1, 1988 and again in 1989 in the Rockland County Yellow Pages. The Drawing bore no copyright notice in either publication.
On January 30, 1990, plaintiff registered the Drawing with the United States Copyright Office and received a Certificate of Copyright Registration. Plaintiff thereafter placed advertisements that featured the Drawing in the Rockland County Yellow Pages in 1990, In contrast to the 1988 and 1989 advertisements, the 1990, 1991 and 1992 advertisements contained a copyright symbol, i .e., “©,” at the lower left corner of the page, but did not indicate the year of first publication or the name of the copyright owner. The copyright notice in the 1993 advertisement consisted of the copyright symbol, the date and plaintiff's name. Plaintiff presently displays the Drawing on each page of his website. See http://www.neimarklaw.com. Each copy contains the copyright symbol accompanied by the date of publication and his name, except for the copy on the homepage, which contains no notice at all. See id. The copies of the Drawing on plaintiff's website differ slightly from the copies in the Yellow Page advertisements in that they contain a medical chart at the foot of the hospital bed that reads, “Rx Call Niemark,” while the latter contain a chart with five rows, eight columns and several check marks
At some point prior to August 17, 2006, a cartoon drawing substantially identical to the one found on plaintiff's website appeared on the last page of defendant's website. Instead of the inscription “Rx Call Niemark,” the drawing on defendant's website featured a medical chart that read, “Call Ronai & Ronai.” Defendant claims that it hired a college student to create its website and that his whereabouts are currently unknown.
Plaintiff contends, however, that he cured this omission by complying with 17 U.S.C. § The relevant statutory provision is 405(a)(2) which provides:
With respect to copies and phonorecords publicly distributed by authority of the copyright owner before the effective date of the Berne Convention Implementation Act of 1988, the omission of the copyright notice described in sections 401 through 403 from copies or phonorecords publicly distributed by authority of the copyright owner does not invalidate the copyright in a work if [ ] ... registration for the work has been made before or is made within five years after the publication without notice, and a reasonable effort is made to add notice to all copies or phonorecords that are distributed to the public in the United States after the omission has been discovered ...."
The operative word is “discovered.” No reasonable person would believe that you can discover that you deliberately refrained from affixing a required notice. Yet, as the court observed:
"T]he law in this Circuit is clear: deliberate omissions are curable under § 405(a)(2). See Hasbro Bradley, 780 F.2d at 196. The Second Circuit reasoned that the statute itself does not restrict its application to unintentional omissions and the legislative history 'affords ample demonstration that Congress intended to bring deliberate omissions within the ambit of § 405(a)(2).' Hasbro Bradley, 780 F.2d at 195; see H.R. Rep. No. 94-1476, U.S.C.C.A .N. 5659, 5763, reprinted in 17 U.S.C.A. § 405 Historical Note ('Under the proposed law, a work published without any copyright notice will still be subject to statutory protection for at least 5 years, whether the omission was partial or total, unintentional or deliberate.'). "
I am a liberal when it comes to statutory interpretation: I think it is always appropriate to examine legislative history, but this doesn’t mean it is appropriate to rely on legislative history that conflicts with any reasonable interpretation of the statute, as is the case with the Second Circuit and Section 405. (In Niemark, summary judgment was denied plaintiff because of genuine issues of material fact about whether plaintiff had taken reasonable curative steps).