Property, intangible

The Copyright Act of 1976 made a fundamental change to copyright law by making copyright divisible. Authors can give someone else exclusive rights in a portion of their copyright, for example the exclusive right of first publication, retaining no right of first publication for themselves. The drafters of the Copyright Act also contemplated that this might create conflicting rights amongst authors and so also provided that:

The court may require [the legal or beneficial owner] to serve written notice of the action with a copy of the complaint upon any person shown, by the records of the Copyright Office or otherwise, to have or claim an interest in the copyright, and shall require that such notice be served upon any person whose interest is likely to be affected by a decision in the case. The court may require the joinder, and shall permit the intervention, of any person having or claiming an interest in the copyright.

As far as I can tell, this case is the first time someone has asked a court to invoke this provision, 41 years after the current Copyright Act became effective. But the effort wasn’t successful.

Plaintiff American Chemical Society and co-plaintiff Elsevier publish academic journals. Defendant ResearchGate is an online professional network for scientists.

When the plaintiffs accept articles for publication, they have the author assign copyright through a written agreement. If there are multiple authors, the “Corresponding Author” either signs an agreement averring that “I have informed the co-author(s) of the terms of this Journal Publishing Agreement and that I am signing on their behalf as their agent, and I am authorized to do so” or alternatively “The Corresponding Author or designee below, with the consent of all co-authors, hereby transfers to the ACS the copyright ownership in the referenced Submitted Work, including all versions in any format now known or hereafter developed.”

ResearchGate allows members to upload articles. It claimed that co-authors had lawfully uploaded copies, so it was not an infringer. ResearchGate therefore filed a motion asking the court to order the plaintiffs to provide the non-signing co-authors with notice of the suit. The court declined.

The court analyzed the provision:

Because the purpose of § 501(b) notice is “to avoid a multiplicity of suits by ‘insuring to the extent possible that the other owners whose rights may be affected are notified and given a chance to join the action,’” it is not enough for Defendant to show that co-authors have some theoretical interest in the suit or that they once had an actionable interest. See Kamakazi Music Corp. v. Robbins Music Corp., 534 F. Supp. 69, 74 (S.D.N.Y. 1982) (quoting H.R. Rep. No. 94-1476, at 159 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5775). Instead, notice only accomplishes § 501(b)’s purpose when it is sent to a party that, because of the divisible copyright system, has a legal interest in the suit. See H. Comm. On the Judiciary, 89th Cong., 1st Sess., Copyright Law Revision: Supplemental Report of Register of Copyrights on General Revision of U.S. Copyright Law: 1965 Revision Bill, Copyright Law Revision Part 6 (Comm. Print 1965) (“Register’s Report”) (emphasis added), available at https://books.google.com/books?id=65AYAAAAMAAJ&pg=PA131.¹

However, ResearchGate hadn’t proved that there were co-authors who had a legal interest in the suit. ReasearchGate argued that the co-authors weren’t aware that the plaintiffs claimed to own their copyrights, but the court disagreed:

Based on these documents, Defendant argues that co-authors may not have known ‘their ownership rights were being purportedly transferred, much less agreed to that transfer in a signed writing,’ ECF No. 9, but this conclusion is based entirely on speculation because according to the sample forms, corresponding authors have agreed that they are authorized to sign the agreement on the co-author’s behalf and that they has informed the co-author of the agreement’s terms. … Defendant argues that by allowing ResearchGate to host their articles, co-authors have acted inconsistently with the idea that a duly authorized agent has signed away their rights to upload articles to a commercial site …, but Defendant does not offer even one specific example of a co-author who did not sign an agreement with Plaintiffs, personally believed the corresponding author lacked the authority to sign on his or her behalf, and therefore uploaded an article to Defendant’s platform. … Thus, rather than offering evidence about co-authors’ inconsistent behavior, Defendant has only speculated that co-authors may have conducted themselves in a contradictory manner.

Further,

Defendant has not offered evidence that co-authors, who of course have a theoretical interest in their articles, have any actionable interest in the articles’ copyrights. As Plaintiffs point out, although Defendant gives users an opportunity to submit a “counter notice” to claim that the material they uploaded did not infringe on a copyright and should not have been removed, Defendant does not assert that it received any counter notices from authors after it responded to Plaintiffs’ takedown notices. Taken together, the Court cannot comfortably draw an inference from the fact that some co-authors may have uploaded their articles to ResearchGate that these co-authors seek to challenge that the corresponding authors were not acting as their co-authors’ duly authorized agents.

ResearchGate’s arguments that there was no effective transfer of ownership didn’t go far either:

the Fourth Circuit has held that “where the copyright author appears to have no dispute with its assignee on this matter, it would be anomalous to permit a third party infringer to invoke § 204(a)’s signed writing requirement against the assignee.” Metro. Reg’l Info. Sys., Inc. v. Am. Home Realty Network, Inc., 722 F.3d 591, 600 (4th Cir. 2013). … Here, although Defendant alleges in conclusory fashion that there is a dispute between Plaintiffs (the copyright owners) and co-authors (the transferees), the Complaint and the evidence before the Court do not support that conclusion, meaning Defendant (the alleged third-party infringer) may not invoke § 204(a)’s signed writing requirement. Id. Further, even to the extent that a co-author must authorize a corresponding author to act as her agent in writing, Defendant does not offer any evidence showing that corresponding authors lacked their co-authors’ express written consent. If Defendant’s argument is that, to sufficiently allege their claims, Plaintiffs must have pled that corresponding authors received written consent from co-authors, that argument relates to the merits of Plaintiffs’ claims, not to Defendant’s requested relief under § 501(b).

The court therefore concluded that ResearchGate had not met its burden to prove that any specific non-corresponding co-authors have a legal interest in the copyrights at issue and denied the Motion for Notice. But it was only a failure of proof, and the case is a good roadmap for invoking Section 501(b).

Amer. Chem. Soc. v. ResearchGate GmbH, No. GJH-18-3019 (D. Md. June 11, 2019).

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