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United States District Court, Southern District of New York

July 13, 2002


The opinion of the court was delivered by: Kaplan, District Judge.


Defendants National Geographic Society ("NGS"), National Geographic Enterprises, Inc. ("NGE"), Mindscape Inc. ("Mindscape"), and Dataware Technologies, Inc. ("Dataware") produce and market "The Complete National Geographic," a digital archive of all past issues of National Geographic Magazine (the "Magazine") on CD-ROM and DVD. Plaintiff Fred Ward, a freelance photographer and writer, claims that the production and sale of this product violates his intellectual property rights in photographs and text that originally appeared in the print version of the Magazine. He alleges claims of infringement under the Copyright Acts of 1909 (the "1909 Act") and 1976 (the "1976 Act"), as well as a violation of the Digital Millennium Copyright Act (the "DMCA"). The matter is before the Court on defendants' motion for partial summary judgment dismissing the complaint with respect to claims based on Mr. Ward's photographs and text that appeared in the Magazine before 1978 (the "Pre-1978 Works").


Fred Ward

Fred Ward was hired by NGS as an independent contractor to write and photograph numerous stories published in the Magazine between 1964 and 1978. Text and/or photographs from 10 stories are at issue on this motion. They include (1) "Costa Rica," published in July 1965, (2) "Singing Birds," published in October 1965, (3) "National Parks/Parkscape USA,"*fn1 published in July 1966, (4) "Leeward Islands," published in October 1966, (5) "The Living White House," published in November 1966, (6) "Sharks," published in February 1968, (7) "Rhode Island," published in September 1968, (8) "Everglades," published in January 1972, (9) "Those Successful Japanese," published in March 1974, and (10) "Cree Indians," published in April 1975.*fn2

Plaintiff did not independently register any of these works during their initial copyright terms. He did, however, obtain renewal registrations for all the Pre-1978 Works except those associated with the Those Successful Japanese and Cree Indians stories, which still are in their initial terms. The Copyright Office denied Mr. Ward's applications for initial registration of the works associated with the two latter stories on July 10, 2000.


NGS is the world's largest nonprofit scientific and educational organization, with approximately ten million members worldwide. In 1995, NGS placed its television and, subsequently, its interactive and a portion of its cartography divisions into a wholly-owned taxable subsidiary named National Geographic Ventures, Inc. ("NGV"). NGV in turn owns NGE, among the divisions of which is National Geographic Interactive ("NGI").*fn3

The Magazine is the monthly official journal of NGS, published in print format since 1888. In December 1996, NGS granted NGV the nonexclusive right to use photographs and text included in the archive of the Magazine ("in archival form only, without manipulation or alteration") for the development and distribution of various multimedia products.*fn4

Mindscape*fn5 is a computer software publisher and distributor. In September 1996, it entered into an agreement with NGE through its division, NGI, whereby Mindscape would manufacture, market, and distribute CD-ROM products created by NGS, including The Complete National Geographic. The agreement granted Mindscape the sole and exclusive right to manufacture, reproduce, and distribute certain multimedia products based on an archive of the Magazine, including The Complete National Geographic.*fn6 In return, Mindscape granted NGI the right to receive royalties on its sales of The Complete National Geographic and other related multimedia products.*fn7

Dataware, now known as LeadingSide, Inc., is a developer of interactive software for the purpose of information retrieval and electronic publishing applications. In August 1996, Ledge Multimedia, then a division of Dataware, entered into an agreement with NGS.*fn8 The purpose of the agreement was for Dataware to manage the development of The Complete National Geographic archive. It required Dataware to develop a custom CD-ROM template, including integration of a custom set of interfaces to display magazine pages, a search engine and JPEG*fn9 images of the scanned magazine pages. After completing this process, Dataware shipped the prototype CD-ROMs to Mindscape at its California offices for reproduction and mass distribution.*fn10

The Complete National Geographic

In 1996, NGS developed a proposal to reproduce all issues of the Magazine published between 1888 and 1996 in CD-ROM format. The product was produced in significant part through a process of digital scanning. Each issue of the Magazine published between 1888 and 1996 was scanned, page by page, into a computer system. The scanning process created an exact image of each page as it appeared in the Magazine.*fn11 The issues of the Magazine appear chronologically, from the earliest at the beginning of the first disc to the latest at the end of the thirtieth disc.

"The Complete National Geographic: 108 Years of National Geographic Magazine on CD-ROM" ("CD-ROM 108"), which was introduced to the marketplace in 1997, has three components. The first is a multimedia sequence that displays NGS's logo, followed by a promotional message for Kodak and a sequence depicting the covers of ten issues of the Magazine that transition digitally from one into another. The multimedia sequence plays the first time a user boots up CD-ROM 108 and at the beginning of each subsequent session. In subsequent sessions, however, the user can skip the sequence by clicking on the logo once. The second component consists of the digital reproduction of the issues of the Magazine. The third is the computer program that serves as the storage repository and retrieval system for the Magazine images.

The parties dispute exactly what Complete National Geographic products other than CD-ROM 108 have reached the market. At the very least, however, defendants have admitted to release of the following products: (a) "The Complete National Geographic: 109 Years of National Geographic Magazine on CD-ROM" ("CD-ROM 109"), published in 1998; (b) "The Complete National Geographic: 109 Years of National Geographic Magazine on DVD" ("DVD 109"), published in 1998; (c) "The Complete National Geographic: 110 Years of National Geographic Magazine on CD-ROM" ("CD-ROM 110"), published in 1999; and (d) "The Complete National Geographic: 110 Years of National Geographic Magazine on DVD" ("DVD 110"), published in 1999.*fn12 Mindscape has distributed also "decade sets" of The Complete National Geographic, which contained, in CD-ROM format, issues of the Magazine from various decades in history.*fn13

Each of the Complete National Geographic products displays a copyright notice in the name of NGS. The notice appears on the product packaging as well as on any pages that are printed out from the product.*fn14 The consumer licensing agreement accompanying CD-ROM 108 advised end-users that "Mindscape and its suppliers grant you the right to use one copy of the Program for your personal use only" and that "[y]ou must treat the [p]rogram and associated materials and any elements thereof like any other copyrighted material."*fn15 The CD-ROM 108 packaging informed the consumer that he or she may "[p]rint any article or photograph in color or black and white."*fn16

The Professional Relationship Between Ward and NGS

Mr. Ward worked as a freelance photographer and writer for NGS during the 1960's and 1970's. In some instances, the terms of his assignments were memorialized in writing.*fn17 In his Rule 56.1 Statement, plaintiff admitted the following facts for purposes of this motion: (1) plaintiff created the photographs and/or texts for the Costa Rica, Sharks, National Parks/Parkscape USA, Leeward Islands, Rhode Island, Everglades, and Those Successful Japanese stories pursuant to assignments from NGS, (2) NGS paid Ward a minimum guarantee for his contributions to all of these stories, and (3) NGS paid Ward's expenses for the Costa Rica, Sharks, National Parks/Parkscape USA, Rhode Island, and Those Successful Japanese stories.*fn18

Nor can it seriously be disputed that plaintiff created the photographs and text for the Cree Indians story pursuant to an assignment from NGS, and that NGS paid him a minimum guarantee and expenses for his contributions to this story.*fn19 The letter contract for this story, which was written by Robert Gilka and dated June 13, 1973, clearly provided that NGS "will retain all rights to the photographs [NGS] publish[es] in the Cree Indians article" and "return . . . all photographs in which [NGS] ha[s] no further interest."*fn20

Finally, defendants admit for purposes of this motion that Ward's photograph of John F. Kennedy in the Oval Office, published in The Living White House story, was not created as a work for hire.*fn21 As will be discussed in greater detail below, the remaining contours of the Ward-NGS relationship during the relevant time period remain subject to dispute.


I. Summary Judgment

Under Rule 56(c) of the Federal Rules of Civil Procedure, summary judgment is appropriate if there is no genuine issue of material fact and the moving party is entitled to judgment as a matter of law.*fn22 While the burden rests on the moving party to demonstrate the absence of a genuine issue of material fact,*fn23 and the Court must view the facts in the light most favorable to the nonmoving party,*fn24 a defendant may prevail if it can demonstrate that the plaintiff cannot establish an essential element of its claim.*fn25 Where, as here, the burden of proof at trial lies with the nonmoving party, it ordinarily is sufficient for the moving party to point to a lack of evidence on an issue sufficient to go to the trier of fact. In that event, the nonmoving party must come forward with admissible evidence*fn26 sufficient to raise a genuine issue for trial in order to avoid summary judgment.*fn27

II. Copyright Infringement

To make out a claim for copyright infringement, a plaintiff must establish (1) ownership of a valid copyright, and (2) copying.*fn28 In this motion, defendants raise arguments attacking primarily plaintiffs ownership of valid copyrights.

A. Work For Hire

Defendants claim that Mr. Ward created the Pre-1978 Works as works for hire for NGS and that NGS owns the copyright in those works, thus entitling defendants to judgment as a matter of law.*fn29 Under the 1909 Act, an independent contractor was an "employee" and a hiring party an "employer" if the work was made at the hiring party's "instance and expense," provided also that the employer had the right to exercise control over the manner in which the artist executed the work.*fn30 "Once it is established that a work is made for hire, the hiring party is presumed to be the author of the work. That presumption can be overcome, however, by evidence of a contrary agreement, either written or oral."*fn31 At trial, the burden is on the independent contractor to demonstrate by a preponderance that such a contrary agreement was reached.*fn32

Here, defendants have met the "instance" and "expense" prongs as a matter of law for all of the Pre-1978 Works except The Living White House.*fn33 Plaintiffs admissions in his Rule 56.1 Statement,*fn34 the letter contract sent to Mr. Ward by Robert Gilka for the Cree Indians story (the "Cree Letter"),*fn35 and plaintiffs failure to present evidence to the contrary convince the Court that there is no genuine issue of fact regarding whether plaintiff created the photographs and text on assignment for and at the direction of NGS and whether NGS paid Ward a minimum guarantee for all of these works. A reasonable trier of fact could find only that NGS was the "motivating factor" behind creation of the works*fn36 and paid Ward "a sum certain for his . . . work."*fn37

Likewise, there is no genuine issue of fact regarding NGS's right to direct or supervise the manner in which Mr. Ward performed his work.*fn38 The supervision prong is met when the employer takes the initiative in engaging the independent contractor and has the power to "`accept, reject, or modify, [his or] her work.'"*fn39 Letters sent to Mr. Ward by NGS demonstrate that NGS had the power to choose which of his photographs would be published in the Magazine and which would not, as well as the power to choose "file transparencies" to be retained for possible future use*fn40 — that is, the power to accept or reject his photographic work. Furthermore, a letter from an NGS representative to Ward regarding his text for the Everglades assignment demonstrates that NGS had the power to accept or reject textual material and that NGS had a practice of making significant editorial revisions to its freelance writers' work.*fn41

The only evidence plaintiff offers to contradict NGS's supervisory power is his own statement: "National Geographic never went with me to the field to supervise my creation of the photographs. In most cases, it simply told me the subject matter of the proposed article. I was left alone to plan the coverage, make the arrangements and create the photographs."*fn42 While Mr. Ward's assertion is assumed to be true for purposes of this motion, Picture Music makes clear that lack of direct supervision during the actual creation of the work is immaterial if, as here, the hiring party took the initiative in engaging the independent contractor and had the power to accept, reject, or modify the work.*fn43 Thus, defendants' evidence on the supervision issue is uncontradicted.

In short, as a matter of a law, all of the Pre-1978 Works other than The Living White House were created at the instance and expense of NGS and subject to its control and supervision. Thus, a presumption arises that NGS owns the copyright in these works, and summary judgment dismissing the copyright claim is appropriate unless plaintiff has raised a genuine issue of fact regarding the existence of an express or implied agreement to the contrary.*fn44

Turning first to the assignments predating the Cree Indians story, plaintiff does not contend that the language in any of his assignment contracts for this period expressly reserves his copyright ownership. Nor does he contend that he and NGS had an oral agreement regarding his retention of copyright ownership. Rather, Mr. Ward argues that he and NGS had a general understanding regarding copyright ownership based on industry custom that resulted in the creation of an implied-infact agreement confirming his ownership whenever he took on a new assignment.*fn45

Under New York law,*fn46 "[a]n implied-in-fact contract arises in the absence of an express agreement, and is based on the conduct of the parties from which a fact-finder may infer the existence and terms of a contract."*fn47 Importantly for this case, an implied-in-fact contract may be based on industry custom.*fn48 Ordinarily, a determination as to the existence of such an implied agreement must be made by the trier of fact by examining the manner in which the parties conducted themselves in light of ordinary industry practice.*fn49 However, a contract cannot be implied in fact where there is an express contract covering the subject matter involved,*fn50 "where the facts are inconsistent with its existence, or against the declaration of the party to be charged . . . or against the intention or understanding of the parties."*fn51

Here, plaintiff has adduced evidence sufficient to create a genuine issue of fact regarding the existence of an implied-in-fact agreement that he would retain copyright in his work for the assignments predating the Cree Indians assignment. First, Ward testified in his deposition regarding the custom and practice of the magazine industry with respect to copyright during the 1960's and 1970's:

"[M]agazines would hire a project to do a project, in return for a fee, space rate or day rate, they would get one-time rights, and nothing more. And additional use meant additional pay. And this was never discussed in a phone call or letter because it was understood. I did thousands of assignments under these conditions."*fn52

Generally, evidence of industry custom is probative only if both parties to the pertinent contractual dealings knew or had reason to know of it.*fn53 Supporting Ward's testimony that his arrangement with NGS was for one-time publication rights in accordance with the custom and usage of the magazine industry is the affidavit of Robert Gilka, a former director of photography at NGS, who gave Mr. Ward his assignments between 1965 and 1978.*fn54 He states that through approximately 1974, NGS "was not interested in and therefore did not acquire the copyright to the works we asked freelancers like Mr. Ward to create."*fn55 NGS, he says, "simply wanted `exclusive first-time rights' to publish Ward's commissioned works" and that sixty days after publication Mr. Ward was free to do whatever he wanted with the works he created "because he owned the copyright to them."*fn56 He states also that NGS did not pay Ward the rate it typically would have had to pay in order to obtain "all rights" to his work.*fn57

Mr. Gilka's affidavit is somewhat problematic from an admissibility standpoint.*fn58 He is not competent to testify regarding the state of mind of NGS itself because he lacks personal knowledge regarding what NGS, to whatever extent NGS refers to anyone other than himself, "wanted" or "was interested in." In any case, NGS's state of mind is not even relevant because it is Mr. Gilka's conduct,*fn59 and not any unexpressed subjective intentions of his employer, that count here.*fn60 Moreover, his assertion that NGS "did not acquire" the copyrights in certain works is an inadmissible legal conclusion. However, all of these statements fairly may be construed as evidence of the same industry custom Mr. Ward referred to above and of Mr. Gilka's knowledge thereof.*fn61 Moreover, the first two quoted statements are evidence Mr. Gilka's own state of mind when it came to his contractual dealings with Mr. Ward. While Mr. Gilka's state of mind itself is not relevant,*fn62 evidence of his state of mind would be admissible to establish that he acted in a manner consistent with it during his dealings with Mr. Ward. Finally, the statement regarding the level of compensation paid to Mr. Ward bears on precisely the type of nonverbal conduct upon which an implied-in-fact contract may be based. Mr. Ward's deposition testimony and Mr. Gilka's affidavit, if credited, would tend to prove that the parties went about their contractual dealings against a backdrop of industry custom establishing that the default rule was one-time publication rights and that the parties tacitly agreed to follow that custom.

Finally, plaintiff has produced evidence showing that NGS repeatedly paid Mr. Ward for reusing his work.*fn63 A reasonable trier of fact might consider it strange that NGS would pay Mr. Ward to reuse works that it already owned.*fn64 While defendants have adduced evidence that NGS's policy of payment for further use was purely voluntary,*fn65 their efforts merely highlight the presence of a genuine issue of fact in this area.

Taken together, Mr. Gilka's affidavit, Mr. Ward's deposition testimony, and plaintiffs documentary evidence regarding payment for reuse create a genuine issue of fact regarding whether or not Messrs. Ward and Gilka implicitly agreed that Ward would retain copyright ownership of his photos and/or texts for the Costa Rica, Singing Birds, National Parks/Parkscape USA, Leeward Islands, Sharks, Rhode Island, Everglades, and Those Successful Japanese projects. Summary judgment dismissing plaintiffs infringement claims with respect to these assignments is denied.

The situation is altogether different for the Cree Indians assignment. The Cree Letter, dated June 13, 1973, expressly states that NGS "will retain all rights to photographs . . . publish[ed] in the Cree Indians article."*fn66 Plaintiff therefore cannot establish an implied-in-fact agreement that he would retain copyright because the "prerequisite for such a contract is that there be no express agreement dealing with the same subject matter."*fn67

Even putting that principle aside, the evidence would not create a genuine issue of fact. When confronted with the Cree letter, Mr. Gilka acknowledged that it was "at that time," starting in June 1973, that NGS imposed upon its freelance photographers the "custom" of retaining all rights to published photographs.*fn68 This admission deflates the probative value of plaintiffs evidence regarding industry custom. Finally, plaintiff produced no documentary evidence demonstrating that NGS ever paid Mr. Ward for reuse of the Cree Indians material. In sum, the major strands of evidence proffered by plaintiff to demonstrate a factual dispute with respect to the other assignments do not avail him when it comes to the Cree Indians assignment.

For the foregoing reasons, there is no genuine issue of fact regarding an agreement reserving copyright to Ward for the Cree Indians assignment, and NGS is entitled to judgment as a matter of law dismissing the copyright infringement claim with respect to that assignment.

B. License to Publish Photographs and Texts in the Magazine

Defendants argue also that they would be entitled to summary judgment, even if the Pre-1978 Works were not works for hire, because Mr. Ward granted NGS licenses encompassing the creation and distribution of The Complete National Geographic.*fn69

Divining the exact scope of each agreement between Mr. Ward and NGS is virtually impossible at this point in the litigation. As stated above, there is no written memorialization of terms for many of the assignments. Even for those assignments for which there is a writing, the language and its circumstances present anything but a picture of clarity.*fn70

Defendants attempt to sidestep these problems by making what superficially appears to be an ingenious argument. They argue that, at the very least, Mr. Ward granted NGS a license to publish his work in the Magazine and that NGS has not acted outside the scope of that original license because The Complete National Geographic is "nothing more than an exact image-based reproduction of the Magazine in electronic format."*fn71 Defendants' argument fails as a matter of law, however, because, under the 1909 Act, NGS had no right to sublicense any rights it might have obtained from Mr. Ward unless he expressly permitted NGS to do so.

Under the 1909 Act,*fn72 "[a] licensee . . . had no right to sell or sublicense the rights acquired unless he had been expressly authorized so to do."*fn73 The rule appears to derive from two sources. First, a line of patent cases has enunciated the federal interest in guaranteeing an owner of intellectual property the right to control the identity of his or her licensees in order to monitor the use of his or her property.*fn74 Second, because of the indivisibility doctrine under the 1909 Act, a copyright licensee under that Act effectively had no property interest to transfer.*fn75

Both rationales are persuasive. Despite efforts over the years by courts to ameliorate the sometimes harsh results dictated by the doctrine of indivisibility,*fn76 its applicability to the realm of assignments and licenses remains unquestioned.*fn77 Given this doctrine, it is difficult to see how a license under the 1909 Act has anything other than a personal right. Moreover, the Court agrees with the Ninth Circuit that "there are strong policy reasons to place the burden on the licensee to get the licensor's explicit consent either during or after contract negotiations."*fn78 Most notably, adopting a different rule might unduly undercut the economic incentives enjoyed by owners and creators of copyrightable material.*fn79 By licensing rather than assigning his or her interest in a copyright, a copyright owner reserves certain rights, including that of collecting royalties. The owner's ability to monitor use would be jeopardized by allowing sublicensing without notice.*fn80 Furthermore, copyright owners who grant nonexclusive licenses might find themselves involuntarily competing with their own licensees for future licensing opportunities if sublicensing were permitted without permission.*fn81 Finally, imposing the responsibility for obtaining permission on the licensee would not unduly impede economic exploitation of, nor public access to, copyrighted materials. Indeed, in cases such as this one, the licensee undeniably enjoys greater bargaining power than the putative copyright owner. All in all, requiring a licensee to get explicit consent from his or her licensor strikes an appropriate balance between economic incentives and public access.*fn82

Defendants do not dispute that NGS licensed the rights to reproduce and distribute the Magazine to its for-profit affiliate, NGV, which, through NGE and NGI, in turn licensed Mindscape*fn83 to reproduce and distribute products based on the archive of the Magazine.*fn84 Defendants not unreasonably argue that NGS should not "ha[ve] to create its own CD-ROM manufacturing arm in order to reproduce its own magazine in CD-ROM format."*fn85 So the Court would hesitate to apply the rule against sublicensing under the 1909 Act if NGS merely had hired Mindscape to create the product for NGS and had licensed Mindscape to facilitate actions taken pursuant to that "employment" relationship. The economic reality here, however, is that NGI granted Mindscape rights in return for royalties on all sales,*fn86 making this a classic licensing arrangement. Defendants overstate the situation when they claim NGS had to go to these lengths "in order to reproduce its own magazine in CD-ROM format."*fn87

Defendants vigorously invoke also the distinction between the Magazine as a collective work and Mr. Ward's individual contributions. They argue that NGS had the right to license what it owned — that is, the collective work — and that NGS "never licensed the use of Plaintiffs works on an individual disaggregated basis."*fn88 This point, however, begs the question. When Mindscape made and sold The Complete National Geographic, it reproduced and distributed copies of Mr. Ward's individual contributions as well as the features peculiar to the collective work. Defendants cannot simultaneously claim a license to use Mr. Ward's individual contributions and claim that Mindscape, which actually carried out the project, was licensed only with respect to the collective work. One or the other of them exceeded the scope of its respective license. In either case, the plaintiffs rights, if in fact he had any, were infringed.

In sum, there is no indication that Mr. Ward expressly authorized NGS to sublicense whatever rights it might have obtained to publish his work. Defendants therefore cannot rely on a license defense to the infringement claim because production and distribution of The Complete National Geographic occurred through a series of sublicensing arrangements. Thus, defendants are not entitled to summary judgment on this ground.

C. Refusal of Registration

Finally, defendants seek summary judgment dismissing the infringement claims on the ground that the Copyright Office*fn89 denied registration to the photographs in the Those Successful Japanese story*fn90 because Mr. Ward did not provide documentation that the Those Successful Japanese photographs were published with a copyright notice in his name.*fn91 The examiner explained in a letter to Mr. Ward that, under the 1909 Act, copyright notice required, inter alia, the name of the copyright owner or proprietor and that registration could be made only by the person or entity whose name appeared in the notice. As the only name in the copyright notice was that of NGS, only NGS could register the work.*fn92

Defendants' initial argument — that plaintiffs sole remedy in the face of denial is to seek a writ of mandamus against the Register of Copyrights — is untenable in the face of Section 411(a) of the 1976 Act,*fn93 and defendants concede as much in their reply papers.*fn94 Plaintiff served the Register of Copyrights with notice and a copy of the complaint,*fn95 and there is no dispute regarding other filing formalities. Thus, the Court has jurisdiction to hear this infringement suit.

Furthermore, contrary to defendant's suggestion,*fn96 the plaintiff need not demonstrate that the Copyright Office's denial of registration was erroneous in order to survive the defendants' motion for summary judgment on the infringement claim, as the district court makes an independent determination of copyright ownership when the plaintiff sues under Section 411(a), just as in any other infringement action. The Copyright Office's refusal to register a work at most deprives the plaintiff in such an action of Section 410(c)'s presumption of validity,*fn97 which is not conclusive on the district court in any case.*fn98 While the parties cited no cases directly on point and the Court located no direct and explicit holdings on this issue, the conclusion that district courts must make independent determinations of copyright validity in Section 411(a) infringement actions is supported by the structure of the 1976 Act and is implicit in the case law.

The 1976 Act provides two options for a person whose registration application has been denied by the Copyright Office. First, an applicant may invoke Section 701(e)*fn99 and commence suit against the Register of Copyrights in an effort to overturn the determination. The sole issue in such an action would be the propriety of the denial of registration, and the district court's standard of review would be deferential — the agency action would be set aside only if found to be "arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law."*fn100 In substance, a Section 701(e) action would be similar to a mandamus action under the 1909 Act, only grounded on Section 701(e) and the Administrative Procedure Act rather than the Mandamus and Venue Act of 1962.

The second option available to an applicant, provided there is an alleged infringement, is to serve the Register of Copyrights with appropriate notice and "institute an action for infringement" under Section 411(a).*fn101 The plain meaning of the words "action for infringement" indicates that all issues typically raised in an infringement suit, including ownership and validity, are open in a Section 411(a) suit. Section 411(a)'s provision for permissive intervention by the Register of Copyrights on the "issue of registerability" confirms this conclusion because it makes clear that the scope of the "infringement action" goes beyond registerability. The language of the House Report accompanying the 1976 Act further reinforces this conclusion: "The Register is authorized, though not required, to enter the suit within 60 days; the Register would be a party on the issue of registerability only, and a failure by the Register to join the action would `not deprive the court of jurisdiction to determine that issue.'"*fn102 Furthermore, given that Section 701(e) already provides a route for dealing with the specific issue of registerability, and that the Copyright Office undeniably is the party best suited to defending its own decisions, limiting Section 411(a) actions against third-party infringers to the registration issue would make Section 411(a) superfluous and misguided.

The case law implicitly supports the conclusion that a district court resolves the full panoply of copyright infringement issues in a suit under Section 411(a), regardless of the propriety of a denial of registration, although direct statements on this topic typically come in dicta in cases in which plaintiffs proceeded directly against the Copyright Office. For example, in OddzOn Products, Inc. v. Oman,*fn103 then Circuit Judge Ruth Bader Ginsburg explained:

"In conclusion, we again emphasize that we decide simply and only that the refusal of the Copyright Office to register the KOOSH ball, in the circumstances here presented, does not constitute an abuse of discretion. We do not decide on the copyrightability of the item, and we intimate no opinion on the decision we would reach if the matter came before us in an infringement action."*fn104

In his concurrence in Atari Games Corp. v. Oman,*fn105 Judge Silberman expounded on the distinction between review of a denial of registration and an ultimate determination of the copyright validity. His comments are worth quoting:

"We must bear in mind that when we review the Register's determination to accept or reject an application for registration, we do not make a final decision on the copyrightability of an item. In fact, as the majority opinion recognizes, the Copyright Office's imprimatur is worth only a rebuttable presumption as to copyrightability in an infringement action. And as the government points out, the Copyright Office receives over a 100,000 applications every year. Every time the Register denies registration for too little creativity it cannot be expected to issue an opinion that compares with the learned offerings of my colleagues. I think that is why the courts have generally thought abuse of discretion to be the appropriate standard to review the Office's denial of registration. Since the applicant can gain full judicial review of copyrightability in an infringement action, the costs of forcing too fine an analysis and too extensive an explanation of a denial of registration are not worth the benefits — particularly when reviewing a question which has unavoidably subjective aspects such as how much creativity is sufficient to force the Copyright Office to register a proffered work."*fn106

Thus, a court's role in the Section 701(e) context is much more limited than under Section 411(a).

Courts have been less explicit on this point in infringement suits under Section 411(a), but the cases lead to the same conclusion. Courts in Section 411(a) cases typically have determined copyright validity independently and not confined themselves to the propriety of the Copyright Office's denial of registration.*fn107 For example, in Foote v. Franklin Mint,*fn108 the plaintiff brought an infringement action under Section 411(a) after the Copyright Office denied registration of his work, "Tridimensional Chess," on the ground that it had been published in a periodical without its own copyright notice.*fn109 After acknowledging that Section 411(a) allows an applicant to institute an infringement suit after serving a copy of the complaint on the Copyright Office,*fn110 the court independently analyzed whether the plaintiff "possessed a valid copyright to the Work."*fn111 Specifically, the court considered whether the author had injected the work into the public domain by publishing it without its own notice or whether the Goodis exception to the indivisibility doctrine applied in the circumstances.*fn112 It made no mention of the Copyright Office's determination in its legal analysis.*fn113 Other Section 411(a) cases follow the same pattern.*fn114

Finally, the facts of this case illustrate the anomaly that would result if district courts were limited in Section 411(a) actions strictly to the issue of registerability. As noted above, in most cases the issues of registerability and copyright ownership overlap, so the distinction is mostly academic. Here, however, the Copyright Office denied registration because plaintiff was not the proper person to register a claim to copyright for the photographs, not because plaintiff did not have a valid and protectible copyright interest in the photographs.*fn115 Indeed, if the Copyright Office had so determined, its decision would be infected by an erroneous view of the law in light of Goodis v. United Artists Television, Inc.,*fn116 under which NGS's copyright notice for the entire issue of the Magazine in certain circumstances would be sufficient to secure copyright protection for plaintiff for his individual contribution.*fn117 Furthermore, if plaintiff satisfied the factual predicates to application of the Goodis rule, he would be entitled to renewal registration, assuming the correctness of the Ninth Circuit's decision in Abend v. MCA, Inc.*fn118 Thus, if this Court could not determine the issue of copyright ownership independently, the plaintiff might have a valid and protectible copyright interest, yet be unable successfully to protect that interest because of a problem relating solely to registration formalities. It is inconceivable that Congress intended simultaneously to grant applicants the right to institute an infringement action despite refusal of registration and to allow defects relating solely to registration to defeat these same infringement actions when an applicant potentially possesses a valid copyright.

In sum, this Court is required to determine independently whether plaintiff owns valid copyrights in the works at issue. The notice issue raised by the Copyright Office is not relevant to that ultimate determination of copyright ownership here. If the trier of fact determines that the plaintiff granted NGS only the right of first publication, then the Goodis rule may shelter him.*fn119 Alternatively, if the trier of fact determines that plaintiff created the photographs as works for hire, the notice issue will be irrelevant, and plaintiff will lose. Accordingly, summary judgment for the defendants based on the Copyright Office's denial of registration is not appropriate.

D. The Living White House

Defendants concede that Mr. Ward's photograph of John F. Kennedy in the Oval Office, published in The Living White House story, was not created as a work for hire. There is no dispute regarding plaintiffs ownership of a valid copyright in the photograph. Nor is there any dispute regarding infringement. The defendants' license-based defense fails as a matter of law. Accordingly, there is no genuine issue of material fact regarding the Living White House story, and plaintiff is entitled to judgment as a matter of law as to liability with respect to this photograph.*fn120

III. Digital Millennium Copyright Act

Plaintiff claims also that defendants violated Section 1202(a) of the 1976 Act, as added by the DMCA, by providing false copyright management information.*fn121 Mr. Ward bases this claim on the fact that each page printed from The Complete National Geographic contains NGS's copyright notice.*fn122 He contends that NGS's addition of its own copyright notice to printed pages amounts to the provision of false copyright management information because he, and not NGS, owns the copyrights in his individual contributions to the Magazine.

Section 1202(a) "establishes a general prohibition against intentionally providing false copyright management information . . ., and against distributing or importing for distribution false copyright management information."*fn123 Although there is a dearth of case law applying this recently enacted statute, the legislative history provides clear guidelines:

"There are two prerequisites that must be met for these prohibitions to be violated: (1) the person providing, distributing or importing the false [copyright management information] must know the [copyright management information] is false, and (2) the person providing, distributing, or importing the false [copyright management information] must do so with the intent to induce, enable, facilitate or conceal an infringement of any right under title 17."*fn124

In this case, plaintiff, who would have the burden at trial, has failed to adduce evidence which, if credited, would justify a finding that defendants knew NGS's copyright notice was false when placed in proximity to plaintiffs photographs and texts.

Plaintiff argues that NGS "possessed documents that gave it no authority to publish what it did, even if it never read them."*fn125 He points in particular to a letter that accompanied the return of film for the Rhode Island assignment.*fn126 The argument regarding this letter, however, is but a symptom of a larger disease. The heart of plaintiffs DMCA argument is that NGS "had to know"*fn127 from the documents in its files that it had no copyright in the relevant works. The problem, however, is that facts are too murky, even after careful study of all of these documents, to justify summary judgment. It therefore follows that NGS cannot be deemed to have known that plaintiff owned them for the simple reason that the evidence is not clear cut.

Plaintiff relies heavily on Fitzgerald Publishing Co., Inc. v. Baylor Publishing Co., Inc.,*fn128 a case interpreting the term "wilfulness" in the context of enhancement of statutory damages for copyright infringement.*fn129 In the DMCA context, Fitzgerald stands, at best, for the proposition that "something less than proof of actual knowledge will suffice to establish knowledge" and that a defendant may be deemed to have "knowledge" that its actions are contrary to law when in possession of documents clearly indicating lack of authorization to take those acts.*fn130 But that is no answer to the preceding point. Granting arguendo that proof of actual knowledge is unnecessary, the fact remains that the evidence is sufficiently ambiguous that it would not permit a reasonable trier of fact to determine that NGS "knew" that plaintiff owned the copyright. Accordingly, defendants are entitled to dismissal of the DMCA claim.


For the foregoing reasons, defendants' motion for partial summary judgment is granted to the extent that the copyright infringement claim involving the Cree Indians story and plaintiffs claims under the DMCA are dismissed. Their motion is denied in all other respects. The Court sua sponte grants partial summary judgment for plaintiff as to liability with respect to his copyright infringement claim regarding The Living White House.


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