An Informal Rant About Formalities

One of the most infuriating details of the Google Book Search lawsuit is the way the plaintiff class is defined: everyone who owns a “Copyright Interest” in a “Book” under United States law. That sounds fine, and most of it is, but lurking in the definition of “Book” are two surprises. First, for stuff published in the United States (technically, a “United States work,” which is a slightly larger category), it’s not a “Book” unless it’s also been registered with the Copyright Office. Second, if it was first published somewhere else, the copyright owner is part of the lawsuit even without registration.

Both of these rules are unintuitive. The registration rule means that a fair number of authors and publishers won’t be part of the settlement at all. The new Registry isn’t authorized to collect money and pay them; Google isn’t released from copyright liability for scanning and distributing their books. If the settlement is good for books that have been registered (and it is), it ought to be almost equally good for books that haven’t been. It costs $35 and up to register with the Copyright Office; that fee alone will cut off a part of the Long Tail of books the settlement tries to set up.

As for foreign works, the consequences are even more surprising. If your book has been published in another country but you’ve never even thought about the United States, well, congratulations. You’re part of the plaintiff class, which means that when the settlement goes through, your book will be online, searchable, part of library subscriptions, and for sale. If you object—or if you just want your share of the money—it’s on you to get in touch with this new American institution. A registration threshold might have restricted the lawsuit’s impact to foreign copyright owners who had some inkling that they had something big at stake over in the U.S. But no, everyone’s in the hotchpot now.

This is why the settlement notice will require extensive international advertising to tell copyright owners around the world about the consequences for them. It’s also why security provisions about restricting access to United States users will be important in the new digital search-and-download world. Your U.K. publisher, which thought it had a territorially exclusive publication right may not be very happy to have competition from the Google download service. It’s not clear to me that authors and publishers around the world have grasped how quickly copyright’s territorialism may be about to crumble.

If you wanted to, you could make an argument that these rules—U.S. books require registration, while foreign ones don’t—are exactly backwards. After all, isn’t it American authors who might be more expected to be aware of Google’s English-language scanning efforts and better able to collect from a U.S.-based collective rights organization? Whereas, given the difficulty of tracking down authors worldwide, wouldn’t requiring registration assist in that task? Instead, it’s the local authors who have to put up with the registration hurdle, whereas foreign authors are deprived of its protections.

Let me be clear. These complications aren’t the fault of Google or of the plaintiffs. They’re the fault of United States copyright law. We’ve blundered our way through a series of inconsistent rules about “formalities” like registration (and also the notice of copyright you see on the publication information page of most books). The bill for this folly is coming due.

The context here is that the U.S. has long been an exception to the international rule that copyright doesn’t depend on formalities. According to the 1886 Berne Convention, copyright sprang into being as soon as the work was created, and those rights “shall not be subject to any formality.” The U.S. rule that you had to register your work (and, later on, renew that registration), put a notice of copyright on each copy, and supply deposit copies with the Library of Congress, made it an outlier. Particularly under 1909 Copyright Act, many authors were bitten badly by the U.S.’s rule; they’d fail to comply with one of the formalities (mistakes in the notice were especially common) and thereby forfeit copyright. Everyone else laughed at us. We laughed back; the rules gave some certainty to potential defendants; if you confirmed that a work had never been registered, you could feel comparatively safe in running off copies of your own.

After a century of mutual snickering, the U.S. joined the Berne Convention and, in 1988, really dropped the formalities. (We’d taken some steps in that direction before, but the 1988 changes gave us the system we’re living under today.) Registration became optional.

Well, almost optional. You have a copyright as soon as you put pen to paper, but you can’t sue on that copyright until you register. Congress wanted to hang on to the evidentiary value of the registration records and to keep the Copyright Office involved, but it also wanted to be part of Berne. Requiring registration prior to suit seemed like an acceptable compromise; you can get a registration request processed quickly if you’re trying to file suit, so it doesn’t really harm the copyright owner.

Even still, registration was still a “formality,” which led to a further compromise. Registration before suing would only be a requirement for United States works; owners of copyrights in foreign works could just go ahead and sue directly. It was a clever dodge: Berne required only that foreign authors be treated as well as local ones, and here, the United States was treating foreign authors even better than it treated its own. And thus, the bifurcation we see in the Google Book Search suit—registration for U.S. works, but not for foreign ones—was born.

But here the mischief begins. The courts have interpreted the registration requirement as “jurisdictional”: that is, they can’t hear copyright disputes about unregistered works. That sounds all well and good, but it has some ugly side effects. If the court can’t pass judgment on unregistered works, it means it can’t fully resolve a case that involves both registered and unregistered works.

Imagine a plaintiff who takes cat photos and registers some of them, and a defendant who starts a lolcat site with the plaintiff’s photos. The court can order the defendant to take down the registered photos, but can it order the defendant to take them all down? Not if you’re a jurisdictional purist, it can’t. The court would have no power over the unregistered ones! The plaintiff needs to file registrations for them, and only then turn around and sue again. (Imagine the chaos as to the photos the plaintiff hasn’t even taken yet.)

That one might sound like the plaintiff’s fault, depending on how you spin it, but what about this one? Take a class of plaintiffs, some of whom have registered and some of whom haven’t. Is this a proper class? In a continuation of the famous Tasini case, the Second Circuit said no. Freelance writers had sued the New York Times and other publications for putting their articles into electronic databases such as Nexis. After the Supreme Court held that this might be copyright infringement, the parties hammered out a settlement that divided up a pool of money among the various writers.

You can probably see where this is going. Some of the authors involved had registered their copyrights. Others hadn’t. The Second Circuit decided that the courts had no authority to hear a class action in which a substantial part of the class had no individual right to be in court in the first place. The settlement was bounced. Keep in mind that, since we’re talking about individual articles, the registration fees might well have exceeded the payout these authors could expect. The result is that the register-before-suing doctrine eliminated the one mechanism that could practically have resolved their perfectly valid claims of infringement of their perfectly valid copyrights. Formalities = ouch.

It’s not just plaintiffs who suffer from the rule. In a recent case, the Eleventh Circuit, taking the “jurisdictional” theory seriously, held that a potential copyright defendant can’t go to court for a declaratory judgment of noninfringement of an unregistered copyright. That means that a clever copyright owner could hold off on registering while it sent threats and demand letters to a victim. The victim can’t go to court for a declaratory judgment that it’s safe to proceed with whatever it wants to do. But the copyright owner, any time it wants, can fire off the registration paperwork, show up in court, and get the party started.

Put these two rules together and you see the issue with the definition of the plaintiff class in the Google Book Search settlement. There are who knows how many owners of unregistered copyrights in books. But there’s no good way to bring them into court as part of what’s supposed to be a comprehensive settlement. The court doesn’t have authority, on the jurisdictional theory—binding on it, since it’s in the Second Circuit—over all the owners who haven’t registered. And, on the Eleventh Circuit’s reasoning, there’s no way that Google could bring them in, either, by filing for a declaratory judgment. They’re outside in the cold, looking in. And—to recall the absurdity of the situation—keep in mind that foreign authors and publishers are inside, tied up right next to the fire, whether they’d like to be there or not.

That’s why I’m convinced that the U.S. formality system, such as it is, is irreparably broken. The “compromises” of our accession to the Berne Convention fit with neither the policies of formalities nor the policies of rejecting them. Worse, they create gigantic, unnecessary divisions between classes of copyright owners. I’m attuned to the consequences for the Google Book Search project, because that’s where I roll, but that’s far from the only damage. Someone oughta do something about it.

As for the Google Book Search settlement itself, I’m still pondering ways to patch things up. The antitrust and discrimination concerns that arise when we slice up copyright owners in this way are real. Perhaps that reality is the ground on which intervention may be justified. We might not be able to require that all copyright owners, past and future, registered and unregistered, be brought into the class. We might, however, be able to require that the same terms authors in the settlement class are offered be extended to all other authors who wish to join in. Or Congress could bless the new order of things and legislatively bring everyone in. (It should be obvious to students of copyright law and politics why I regard that last option as a last resort.)

Who’d have thought that it was possible to get so worked up about copyright formalities? Until I put these pieces together, I wouldn’t have. Perhaps I haven’t convinced you to get equally outraged, but have I at least convinced you that one can?

Great post James. I can’t say I’m outraged, exactly, but I noted the Weitzman (11th Cir.) case at the time, and I can’t say I’m happy with the result either. As for the main problem, strict adherence to the “no unregistered works can get into federal court” seems to be lacking, e.g. for permanent injunctions.