The Copyright Act protects both published and unpublished works, but there are a number of differences between them.
One important difference is registration. For many copyright owners, a collection of unpublished works can be registered as a unit, which generally cannot be done for published works.
Registering works as a collection is a major cost efficiency for copyright owners having large numbers of works.
But a recent Ninth Circuit decision, Urban Textile, Inc. v. Rue 21, Inc. (9th Cir. 2019) highlights a trap for the unwary. It held that inclusion of the claimed copyrighted fabric designs in a look book of fabrics used by the manufacturer to solicit orders from its customers constituted “publication” of the designs. That invalidated the registrations and led to dismissal of the infringement claims on summary judgment.
This kind of “publication” is common in many industries, especially those involving fashion. Many companies will show their next season’s line to buyers well in advance of making them available for sale to the public. Such companies need to be aware that this kind of pre-showing can constitute a publication – and if copyright is important, the works should be registered before the showing
Prior to revision of the copyright law in 1978, the Copyright Act only protected published works; unpublished works were protected under state law. That was abolished in 1978, and the Copyright Act now protects both.
But differences still remain between published and unpublished works. One difference involves registering collections of works – which can be invaluable in terms of cost efficiency. For example, a photographer that has hundreds of photographs would far prefer to register them as one collection rather than incur the expense of registering them individually.
The Copyright Office allows registration of collections of unpublished works with only a few restrictions (must be the same copyright owner and all the works must share at least one author). Registration of published collections, on the other hand, has many more requirements, and for many copyright owners, they simply will not qualify. So, for those copyright owners having a large volume of works to register, the strategy is, apply for registration first, publish later.
But what is “publication?” The Copyright Act defines that in 17 U.S.C. § 101:
“Publication” is the distribution of copies or phonorecords of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending. The offering to distribute copies or phonorecords to a group of persons for purposes of further distribution, public performance, or public display, constitutes publication.
The first half seems intuitive – if one starts selling copies of the work (e.g., selling copies of a book or photograph), then that certainly seems like publication.
The second sentence, however, is not at all intuitive. The Copyright Office provides the following comment:
[P]ublication occurs when one or more copies . . . are offered to a wholesaler, a retailer . . . or similar intermediaries for the purpose of distributing the work to the public, and when, for example, fabric, carpet, or wallpaper samples are offered to sales representatives for the purpose of selling those works to wholesalers and retailers.
United States Copyright Office, Compendium of U.S. Copyright Office Practices § 1906.1 (3d ed. 2017).
Relying on this comment, the Ninth Circuit in Urban Textile affirmed summary judgment because the textile manufacturer had included the copyrighted fabric designs in sample books provided to salesmen who used them to solicit orders. This inclusion caused the works to be “published” and hence invalidated the registration of the works as an unpublished collection.
Showing samples to buyers is a common practice in many industries. In the fashion industry in particular, it is common to show next season’s collection to professional buyers months in advance of dissemination to the buying public. But owners should be aware that such early showing may cause the product (and any copyrightable designs in them) to be deemed “published.” That in turn can affect registration issues. If a company routinely engages in such showings, then the better practice is to file copyright registrations before the showing.
Another version of this post appeared in the Luxury Daily April 9, 2019.