Morris v. Business Concepts Inc., Docket No. 00-7509

CourtU.S. Court of Appeals — Second Circuit
Writing for the CourtOAKES
Citation259 F.3d 65
Parties(2nd Cir. 2001) Lois B. Morris, Plaintiff-Appellant, v. Business Concepts, Inc., James J. Maher and Petra H. Maher, Defendants-Appellees. Argued:
Docket NumberDocket No. 00-7509
Decision Date03 April 2001

Page 65

259 F.3d 65 (2nd Cir. 2001)
Lois B. Morris, Plaintiff-Appellant,
v.
Business Concepts, Inc., James J. Maher and Petra H. Maher, Defendants-Appellees.
Docket No. 00-7509
UNITED STATES COURT OF APPEALS FOR THE SECOND CIRCUIT
Argued: April 3, 2001
Decided: July 26, 2001

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Copyrighted Material Omitted

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David B. Wolf, New York, NY (Cowan, DeBaets, Abrahams & Sheppard, LLP, of counsel), for Plaintiff-Appellant.

Jeffrey A. Oppenheim, New York, NY (Kane Kessler, P.C., of counsel), for Defendants-Appellees.

(Charles D. Ossola, Jule L. Sigall, Washington, DC, (Arnold & Porter, of counsel), for Amici Curiae American Society of Media Photographers, Inc., The Authors Guild, Inc., the North American Nature Photography Association, the National Association of Science Writers, Inc., the Professional Photographers Association, the American Society of Journalists and Authors, the National Writers Union, the Graphic Artists Guild, the Science Fiction Writers of America, Inc., the Picture Agency Council of America, Editorial Photographers, the National Press Photographers Association, Inc., the American Society of Picture Professionals, Inc., and the Advertising Photographers of America, in support of Plaintiff-Appellant.)

Before: OAKES, KEARSE and CABRANES, Circuit Judges.

OAKES, Senior Circuit Judge:

Plaintiff Lois Morris, a journalist, brought suit against defendants Business Concepts, Inc., James Maher, and Petra Maher (collectively "BCI") for copyright infringement arising out of BCI's unauthorized use of Morris's articles in its newsletter. The United States District Court for the Southern District of New York, Richard Conway Casey, Judge, granted summary judgment to the defendants on the ground that the court lacked jurisdiction over the copyright claims. Because we agree with the district court that registration of the collective works in which Morris's articles initially appeared did not satisfy her registration requirement for the purposes of maintaining an infringement action, we affirm.

BACKGROUND

For the past eight years, Morris has written a series of articles for a column in Allure magazine, a monthly publication of The Conde Nast Publications, Inc. ("Conde Nast"). The column, called "Mood News," addresses health, fitness, and psychology topics. Annual written agreements between Morris and Conde Nast specified that she would write twelve articles per year, in which Conde Nast was granted exclusive first worldwide publication rights for ninety days after their publication in Allure. Morris retained ownership of the copyright in the articles.

Conde Nast received Certificates of Registration from the Register of Copyrights

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for each issue of Allure in which Morris's articles were published. These registrations covered the issues as collective works. Morris did not register with the Register of Copyrights her own copyrights in the articles.

Defendants BCI publish a bi-monthly newsletter called Psychology and Health Update. Between January 1994 and June 1998, BCI copied essentially verbatim in its newsletter twenty-four of Morris's "Mood News" articles. More than half of the articles appeared in Psychology and Health Update within ninety days of their initial publication in Allure. BCI ceased to publish the articles after being contacted by counsel for Conde Nast and for Morris, and admitted that the copying was unauthorized.

In January 1999, Morris brought suit for copyright infringement as well as for false designation of origin in violation of the Lanham Act, 15 U.S.C. § 1125(a) (2000). BCI moved for summary judgment on all claims, arguing that the registration requirement of 17 U.S.C. § 411(a) (2000) for Morris's articles was not met by Conde Nast's collective work registration. Morris did not object to dismissal of her Lanham Act claim, but opposed the motion with respect to the copyright claims. In March 2000, the district court granted summary judgment, finding that it lacked subject matter jurisdiction over the copyright claims because Morris's articles were not registered as required to maintain an infringement action. This appeal followed.

DISCUSSION

The Copyright Act requires that "no 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); see also Whimsicality, Inc. v. Rubie's Costume Co., 891 F.2d 452, 453 (2d Cir. 1989) ("proper registration is a prerequisite to an action for infringement"). In this case, it is undisputed that Morris has not registered her own copyrights in the articles copied by BCI.1 Instead, she seeks to meet the requirements of § 411(a) by relying on the collective work registrations made by Conde Nast for the issues of Allure of which her articles were constituent parts. Morris argues that because Conde Nast was an exclusive licensee of her articles, it was a "copyright owner" of them, and that therefore its collective work registrations also covered the articles.

Under the law of this Circuit, where the owner of a copyright for a collective work also owns the copyright for a constituent part of that work, registration of the collective work is sufficient to permit an infringement action under § 411(a) for the constituent part. See Streetwise Maps, Inc. v. VanDam, Inc., 159 F.3d 739, 747 (2d Cir. 1998) (registration of pre-existing work was sufficient for infringement action on derivative work when plaintiff was copyright owner of both); Woods v. Universal City Studios, Inc., 920 F. Supp. 62, 64 (S.D.N.Y. 1996) (registration of copyright for collective work was sufficient to permit action on constituent part when

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copyright owner was the same for both). Morris is correct that if she can establish that Conde Nast owned the copyright in Morris's articles at the time it registered the issues of Allure as collective works, then that registration was adequate to create subject matter jurisdiction pursuant to § 411(a).

This case therefore turns on the question whether, when an author has retained ownership of copyright, an exclusive licensee like Conde Nast can be considered a "copyright owner" capable of satisfying § 411(a)'s registration requirement. We have not addressed this issue in previous cases nor, it seems, have any other courts, for Morris does not cite any case directly on point.2 Our interpretation of the Copyright Act, however, leads us to conclude that an exclusive licensee is not a copyright owner for the purposes of § 411(a). We accordingly agree with the district court that Conde Nast's registrations do not afford copyright protection to Morris's articles.

I. The Copyright Owner

To interpret the statutory provisions at issue here, we must start with the concept of divisibility of copyright. Subsection 201(d)(2) of the Copyright Act provides:

Any of the exclusive rights comprised in a copyright... may be transferred... and owned separately. The owner of any particular exclusive right is entitled, to the extent of that right, to all of the protection and remedies accorded to the copyright owner by this title.

17 U.S.C. § 201(d)(2) (2000). As this language indicates, what may be divided are the various rights (such as publication, distribution, and reproduction) that make up a copyright, but not the copyright itself. "[T]here is never more than a single copyright in a work, notwithstanding the author's exclusive license of certain rights." 3 Melville B. Nimmer & David Nimmer, Nimmer On Copyright § 10.02[C][2], at 10-28 (2000). It would therefore stand to reason that an owner of a particular right -- as opposed to the copyright itself -- would not be a copyright owner. See id. at 10-29 (extension of protection and remedies under § 201(d)(2) "does not create a new copyright in the exclusive licensee.")

Morris, however, argues that there is a "doctrine of divisibility of copyright ownership." She points to the definition of "copyright owner" contained in Section 101 of the Copyright Act which states that a "'[c]opyright owner,' with respect to any one of the exclusive rights comprised in a copyright, refers to the owner of that particular right." 17 U.S.C. § 101 (2000). She also notes that Section 101 defines a "transfer of copyright ownership" as "an assignment, mortgage, [or] exclusive license... of a copyright or of any of the

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exclusive rights comprised in a copyright." Id. Given a close reading, this statutory language does not support Morris's notion that an exclusive licensee is a copyright owner.

Section 101's definition of a "copyright owner" is, by its words, limited to owners of exclusive rights. It therefore does not actually address who owns the underlying copyright, but rather illuminates how the Copyright Act refers to the owners of particular rights in its various provisions. See 3 Nimmer § 10.02[C][2], at 10-30 to 10-31 (suggesting that Section 101's definition of "copyright owner" "bears such a meaning only when the term is used 'with respect to any one of the exclusive...

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43 practice notes
  • Vient v. APG Media, Civil Action No. ELH-18-3862
    • United States
    • United States District Courts. 4th Circuit. United States District Court (Maryland)
    • May 24, 2019
    ...F.3d 279, 283 (4th Cir. 2003), abrogated by Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154 (2010); see also Morris v. Bus. Concepts, Inc., 259 F.3d 65, 68 (2d Cir. 2001), as clarified on denial of reh'g, 283 F.3d 502 (2d Cir. 2002), and abrogated by Muchnick, 559 U.S. 154. The Fourth Circuit......
  • Perfect 10, Inc. v. Cybernet Ventures, Inc., No. CV 01-2595LGB(SHX).
    • United States
    • United States District Courts. 9th Circuit. United States District Courts. 9th Circuit. Central District of California
    • April 22, 2002
    ...does not meet the best evidence rule. See Evid. Obj. to Decl. of Lin Milano, filed Aug. 23, 2001. 10. Morris v. Business Concepts, Inc., 259 F.3d 65, 68 (2d Cir.2001); see also 37 C.F.R. 202.3(b)(3)(2001)("the following shall be considered a single work: ... all copyrightable elements that ......
  • In re Literary Works in Electronic Databases, Docket No. 05-5943-cv(L).
    • United States
    • United States Courts of Appeals. United States Court of Appeals (2nd Circuit)
    • November 29, 2007
    ...copyrights. See Well-Made Toy Mfg. Corp. v. Goffa Int'l Corp., 354 F.3d 112, 115 (2d Cir.2003); Morris v. Bus. Concepts, Inc., 259 F.3d 65, 72 (2d Cir. 2001). The District Court never specifically addressed this potential jurisdictional The precise issue on appeal is whether the District Co......
  • Reed Elsevier, Inc. v. Muchnick, No. 08–103.
    • United States
    • United States Supreme Court
    • March 2, 2010
    ...F.3d, at 121 (citing Well–Made Toy Mfg. Corp. v. Goffa Int'l Corp., 354 F.3d 112, 114–115 (C.A.2 2003); Morris v. Business Concepts, Inc., 259 F.3d 65, 72–73 (C.A.2 2001)), the Court of Appeals concluded that the District Court lacked jurisdiction to certify a class of claims arising from t......
  • Request a trial to view additional results
43 cases
  • Vient v. APG Media, Civil Action No. ELH-18-3862
    • United States
    • United States District Courts. 4th Circuit. United States District Court (Maryland)
    • May 24, 2019
    ...F.3d 279, 283 (4th Cir. 2003), abrogated by Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154 (2010); see also Morris v. Bus. Concepts, Inc., 259 F.3d 65, 68 (2d Cir. 2001), as clarified on denial of reh'g, 283 F.3d 502 (2d Cir. 2002), and abrogated by Muchnick, 559 U.S. 154. The Fourth Circuit......
  • Perfect 10, Inc. v. Cybernet Ventures, Inc., No. CV 01-2595LGB(SHX).
    • United States
    • United States District Courts. 9th Circuit. United States District Courts. 9th Circuit. Central District of California
    • April 22, 2002
    ...does not meet the best evidence rule. See Evid. Obj. to Decl. of Lin Milano, filed Aug. 23, 2001. 10. Morris v. Business Concepts, Inc., 259 F.3d 65, 68 (2d Cir.2001); see also 37 C.F.R. 202.3(b)(3)(2001)("the following shall be considered a single work: ... all copyrightable elements that ......
  • In re Literary Works in Electronic Databases, Docket No. 05-5943-cv(L).
    • United States
    • United States Courts of Appeals. United States Court of Appeals (2nd Circuit)
    • November 29, 2007
    ...copyrights. See Well-Made Toy Mfg. Corp. v. Goffa Int'l Corp., 354 F.3d 112, 115 (2d Cir.2003); Morris v. Bus. Concepts, Inc., 259 F.3d 65, 72 (2d Cir. 2001). The District Court never specifically addressed this potential jurisdictional The precise issue on appeal is whether the District Co......
  • Reed Elsevier, Inc. v. Muchnick, No. 08–103.
    • United States
    • United States Supreme Court
    • March 2, 2010
    ...F.3d, at 121 (citing Well–Made Toy Mfg. Corp. v. Goffa Int'l Corp., 354 F.3d 112, 114–115 (C.A.2 2003); Morris v. Business Concepts, Inc., 259 F.3d 65, 72–73 (C.A.2 2001)), the Court of Appeals concluded that the District Court lacked jurisdiction to certify a class of claims arising from t......
  • Request a trial to view additional results

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