Re: Notice required under Sec. 404(a)?

On 7/29/98, Kerry L. Konrad <00358%stb[_at_]mcimail.com> wrote:
>
> A friend of mine has a case involving alleged infringement of copyright
> in a yellow pages-type directory, specifically the ads appearing
> therein. He drew my attention to a relatively recent decision of the
> Tenth Circuit, Transwestern Publ. Co. v. Multimedia Marketing Assoc.,
> Inc., 133 F.3d 773 (10th Cir. Jan. 8, 1998), in which the primary
> holding was that the plaintiff had failed to demonstrate that its
> contributions to the creation of the ads in its directory amounted to
> copyrightable expression. In an alternative holding, however, the court
> ruled that plaintiff could not proceed with its claim in any event
> because the published ads did not include a separate copyright notice,
> distinct from the notice displayed for the directory as a whole.
>
> The court based its reasoning on Section 404(a) of the Copyright Act,
> which states the general principle that notice of copyright in a
> collective work (a type of compilation consisting of a "number of
> contributions, constituting separate and independent works in
> themselves") is sufficient to cover each individual contribution. The
> provision specifically excludes "advertisements inserted on behalf of
> persons other than the owner of copyright in the collective work."
> Because Congress amended Section 404(a) in the Berne Convention
> Implementation Act but did not amend this exclusion, the court reasoned
> that the exclusion survived that Act and "still refuses to extend the
> protection afforded" by notice of copyright in the collective work as a
> whole to the ads. Because plaintiff had failed to comply with the
> "mandatory notice requirement," it lacked protection for the ads,
> regardless of the presence of copyrightable expression. A concurring
> opinion disagreed with this statutory interpretation.
>

I think the Tenth Circuit's reasoning is just plain wrong. 404(a) says "a single notice applicable to the collective work as a whole is sufficient *to invoke the provisions of 401(d) or 402(d)* with respect to the separate contributions it contains (not including advertisements..."

This means that advertisements need their own copyright notice "to invoke the provisions of 401(d) or 402(d)." But all those sections do is preclude a defense of innocent infringement: they do *not* require notice for copyright protection. So while it is true that advertisements without their own notice don't get the benefits of the current notice provisions of the law, it is certainly not true that they lose all copyright protection. Nothing in 401 or 402 suggests otherwise.

Mark A. Lemley
Professor of Law, University of Texas School of Law Of Counsel, Fish & Richardson, P.C.
mlemley[_at_]mail.law.utexas.edu

NOTE: From August 10 through December 15, I will be visiting at the Boalt Hall School of Law, University of California at Berkeley. The email address above should reach me there.

Information on UT's Intellectual Property program: http://www.utexas.edu/law/acadaff/intelprop/

My publications list: http://www.law.utexas.edu/lemley/pubs.htm Received on Thu Jul 30 1998 - 15:40:07 GMT