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

On 7/30/98, Mark Lemley <mlemley[_at_]mail.law.utexas.edu> wrote:
>
> 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.

I agree that the Tenth Circuit's reasoning is a mess, but I'm not sure the result is as baldly nonsensical as Mark suggests. I think they held that the *compiler* could not enforce a copyright in the individual ads ("regardless of the ownership of copyright" in the language of 404(a)) absent individual copyright notice. I don't think the result would have been the same if the advertiser, i.e. the 103(b) author of the ad, had pressed the infringement claim. I think the reasoning was that, Pre-Berne, sec. 404(a) did not allow the compiler to claim infringement based on copying of the individual ads unless he noticed a copyright claim to the individual ads, which implies that he must have had a claim to notice. Although the Berne amendments removed the requirement that the compiler notice the claim, it didn't affect the unstated, but implicit, requirement that he must have a copyright that he can claim, which he doesn't because he's not the author of the individual ads. But maybe I'm giving them too much credit.

John Noble
<jnoble[_at_]dgsys.com> Received on Fri Jul 31 1998 - 15:17:10 GMT