Is there such a thing as holding legal title to a registration?

The question in the title was posed by a decision filed yesterday in Tom Bean v. McDougal Littell (a division of the Houghton Mifflin Company) and R.R. Donnelley & Sons Company, No. 07-8063-PCT-JAT (D. Arizona (James Teilborg, Judge).

The relevant statutory provision is 17 USC 408(a)

— At any time during the subsistence of the first term of copyright in any published or unpublished work in which the copyright was secured before January 1, 1978, and during the subsistence of any copyright secured on or after that date, the owner of copyright or of any exclusive right in the work may obtain registration of the copyright claim …

This provision, drafted by the Copyright Office, contains from the Office’s perspective a big problem, highlighted in bold. The problem is that the statute clearly permits the owner of a single exclusive right to file a claim of registration. From the Office’s perspective that’s a problem because it might lead to multiple registrations for the same work, and a cluttered public record. But the statute has not been amended since passage in 1976. The Office’s initial, immediate response was to solicit a letter from counsel for the Author’s Guild, the late Irwin Karp, that attempted to make the case for what might be called an indivisible registration for divisible copyright; in short, permitting only a single registration per work. That is the system that exists today, and it makes perfect sense; it certainly makes searches simple.

To register a claim you either have to be (1) the author, (2) the assignee of all rights, or (3) an agent for (1) or (2).

In regulations implementing this, we find:

For the purposes of this section, a copyright claimant is either:

(i) The author of a work;

(ii) A person or organization that has obtained ownership of all rights under the copyright initially belonging to the author.1

1 This category includes a person or organization that has obtained, from the author or from an entity that has obtained ownership of all rights under the copyright initially belonging to the author, the contractual right to claim legal title to the copyright in an application for copyright registration.

The kicker here is the footnote, which seems to conflict with the text of the regulation. The regulation refers to ownership of all rights. The footnote, by contrast, refers to a concept not found in the statute, a contractual right to claim legal title. What does it mean to have a contractual right to claim “legal title” to the copyright in an application for copyright registration? Must legal title be the ability to exercise rights, or, can it be merely an exclusive right to file for registration? This latter concept is not found in the statute. In asking this question, note that it is a different question than standing under Section 501(a), which reads in relevant part: “The legal or beneficial owner of an exclusive right under a copyright is entitled, subject to the requirements of section 411, to institute an action for any infringement of that particular right committed while he or she is the owner of it.” Here one must be the legal or beneficial owner of an exclusive right, and not merely possess a contractual right to claim legal title in connection with an application. Assignees of a single exclusive right would of course satisfy Section 501(a) and Section 408(a), but would they satisfy the Office’s regulations for registration purposes? Moreover, what if had such a contractual right to claim legal title but no right to actually exercise a Section 106 or 106A right?

This last issue arose in the Tom Bean case. The photographer plaintiff, along with 127 others, had signed a copyright registration agreement with Corbis, which granted Corbis “legal title” to the photographs “solely for the purpose of copyright registration.” Under the agreement, Corbis agreed “that it will promptly reassign legal title …. upon written request … .” The collective work registration obtained by Corbis was to extend to the individual photographs. Plaintiff sued defendants over claimed re-uses that were not licensed; defendants sought to dismiss the case for lack of subject matter jurisdiction based on an alleged invalid registration: Corbis allegedly could not be a proper registrant because it had only been conveyed the right to register the works and not the right to exercise any of the Section 106 rights. Corbis, in short, could not have brought an infringement suit, but could it have properly registered the works?

Judge Teilborg upheld the registration, but was perplexed by 37 CFR §202.3(a)(ii), writing that because that section “clearly intends to give registration rights to entities other than the author, and because no entities other than the author can have rights under Section 106A(a) “all the rights under the copyright owner originally belonging to the author cannot be taken absolutely literally lest it render 37 C.F.R. §202.3(a)(ii) superfluous.” I don’t know what the court is getting at here. For one thing, registration is not a requirement for VARA [Section 106A] rights. Another way to approach the issue would have been to interpret the regulation as creating two categories: ownership of exclusive rights, and, ownership of the contractual right to claim legal title in an application. But this begs the central question: what does legal title mean in this context? Why the footnote? How is the contractual right to claim legal title different from ownership of Section 106 and 106A rights, and if there is a difference, where in the statute does the statute authorize registration by the merely holder of such a contractual right? One way to look at this is that the Office’s regulations conflict with the statute from two directions: first, by not permitting the owner of a single exclusive right to register a claim to just that right, and second, by permitting a class of people to register that the statute doesn’t permit to register – the holders of a mere contractual right to claim legal title (assuming that right is different from a Section 106 or 106A right).

The problem for photographers is a practical one and one that has vexed Congress and the Copyright Office for quite awhile: how to enable photographers to obtain the benefits of registration while still preserving the integrity of the registration system. The Corbis agreement seems needlessly complex to me: why transfer something called a legal title to claim registration, which is then transferred back (how, by the way, do you transfer back a legal right to register a claim once the claim has already been registered?). A much simpler approach, and one the Office permitted under the 1909 Act, is to appoint Corbis (or any other organization) an agent. Agents can register claims for authors (law firms do this all the time).