Monday, June 11, 2007

Chasing Copyright Notices

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).

1 comment:

Berne Baby, Berne said...

An interesting part of the order denying the motion is at the end where the judge comments on the de minimis nature of the damages and the possibility of a low damages award. This might reflect the view that a plaintiff should not waste a court's time with small matters, especially when the infringer has ceased the infringing behavior. This position does have a degree of logic but ignores the pro-owner view that deterrence is a factor contemplated by the copyright statutes. It is common for infringers to use works in the hope that cessation of the infringing behavior if they are caught will mollify the owner. This view can cause damage to owners of some types of works such as images because infringements that seem relatively minor standing alone can eliminate the possibility of licensing the work in more lucrative markets. While I think it is reasonable in some cases for a judge to tell the parties they need to get realistic about the remedy, the view apparently taken by some judges is that they don't want to waste their time with small matters (I am not attributing this view to the judge in the Niemark matter). Plaintiffs in an infringement matter have no option but to file a copyright action in federal court and so should not be treated with disdain for filing the kind of cases that could be handled more efficiently in a small claims court. When Congress dictates that certain actions are the sole provence of federal courts, the court should respect the dispute between small parties even though it would prefer to devote its time to the matters of large business and governmental interests.

On a related note, I have seen other instances in which law firms have infringed the content of other firm's websites. This seems to happen most often when the firm hires a website designer (frequently aka "some kid") to craft a site for the firm. When firms hire someone to develop a website, they should consider three words of caution. First, explicitly instruct the designer not to infringe and and obtain an acknowledgment regarding indemnity. Second, register the website and make sure it provides contact information including the address of the firm. Third, have an agreement where the designer assigns the copyright to text and visual elments to the firm (or will do so when necessary to pursue an infringement action). These measures will give the firm leverage regarding damages and jurisdiction if the site is infringed and likely bring about a quick and inexpensive cessation of any infringements that are discovered. Acting otherwise can put a firm in the embarassing position of being accused as an infringer or the unenviable position of not being able to protect its content against infringement by potential competitors.