Insanity

“It is insanity to repeatedly do the same thing and expect a different result.” (Albert Einstein) This applies to the law as well as to physics. (Alaska Stock LLC v. Houghton Mifflin Harcourt Publishing Company et al.)

Alaska Stock – no relation to Sarah Palin – is a stock photography agency. Houghton Mifflin, a publishing company, licensed a number of photographs from Alaska Stock for use in certain textbooks. Subsequently, Alaska Stock asserted that the licenses included quantitative limits, which were exceeded by Houghton Mifflin. Alaska Stock filed suit, claiming copyright infringement.

The copyrights in question, which had been registered in the Copyright Office, covered compilations, each of which contained between 500 and 6,000 separate photographs. These had been created by “approximately” 106 different authors, of which Alaska Stock was not one. Nevertheless, allegedly acting upon the advice of an unidentified person in the Copyright Office, Alaska Stock had filed the registrations listing itself as the “copyright claimant” and as one of the “authors.” Each registration included “Alaska Stock group registration for automated database,” or something very similar, as the title of the work being registered.

The copyright statute provides that “no civil action for infringement of the copyright in any United States work shall be instituted until … registration of the copyright claim has been made in accordance with this title” (17 U.S.C. §411(a)). Registration requires “an application on the Register of Copyrights’ prescribed form, including, among other information, the name of the author of the work being registered and the title of the work.” Houghton Mifflin moved to dismiss the complaint, on the grounds that “the registration applications upon which [Alaska Stock relied] did not disclose the names of the authors of the individual photographs nor the title of any individual photograph.”

The Court granted Houghton Mifflin’s motion. Case dismissed. “The 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.” The Court accepted, for the purposes of the motion, Alaska Stock’s good faith belief that “the registration of its compilations also effected a registration of the copyright for each individual photograph,” but noted that the copyright statute “cannot be amended by … informal opinion(s) or advice to claimants by the Copyright Office.”

Sloppy practice on the part of Alaska Stock in protecting its intellectual property, but where, the reader may ask, is the insanity? Well, this was the THIRD copyright infringement suit, brought against Houghton Mifflin in the past year, where the plaintiffs had registered compilations and then alleged infringement of rights in constituent works. Yes indeed folks – THREE separate suits, in THREE different courts, all presenting EXACTLY the same issue. Not surprisingly, the result was the same in all three cases.

Here is the kicker: the plaintiffs in all three cases were represented by the SAME law firm – Harmon & Seidman LLC! Maurice J. Harmon, an attorney with this firm, later commented that “the rulings reflect a fundamental misunderstanding of the provisions of the Copyright Act allowing the owners of a collection of works to register them as a compilation.” Well, clearly he had to say something.

One of the two earlier cases is presently being appealed, while in the other case, the trial judge is considering a motion for reconsideration. Attorney Harmon reported that an appeal in this case is “likely.”

We wonder if the people at Alaska Stock were aware of all this when they filed their suit.

THE LESSON TO BE LEARNED: Don’t draw to fill an inside straight and don’t expect that the result in a third case will differ from that in two identical preceding cases.