Cross-posted on the Law Theories blog.
In an issue of first impression at the appellate court level, the Fourth Circuit last week held that a clickwrap agreement could satisfy Section 204(a)â€™s requirement that â€œ[a] transfer of copyright ownershipâ€ be â€œin writing and signed by the owner of the rights conveyed . . . .â€ 117 U.S.C.A. Â§ 204(a) (West 2013) (â€œA transfer of copyright ownership, other than by operation of law, is not valid unless an instrument of conveyance, or a note or memorandum of the transfer, is in writing and signed by the owner of the rights conveyed or such owner’s duly authorized agent.â€). The opinion is available on the courtâ€™s website, and I have uploaded a copy to Scribd. 2For some reason, Scribd sometimes changes the font and makes documents difficult to read. When this happens, I have found that downloading the file and opening it up, rather than reading it from within the Scribd website, fixes the formatting issues.
Section 204(a)â€™s Writing Requirement
Section 204(a)â€™s writing requirement is like a statute of frauds in that it serves â€œthe usual evidentiary and cautionary functions of all statutes of frauds,â€ but it also performs â€œthe additional purpose of describing the bounds of intangible rights that cannot be seen or felt.â€ 4Christopher M. Newman, A License Is Not A “Contract Not to Sue”: Disentangling Property and Contract in the Law of Copyright Licenses, 98 Iowa L. Rev. 1101, 1140 n.167 (2013) (internal quotations and citations omitted). The requirement of a signed writing â€œis not only designed to protect people against false claims of oral agreements,â€ but it also serves â€œto make the ownership of property rights in intellectual property clear and definite, so that such property will be readily marketable.â€ 5Schiller & Schmidt, Inc. v. Nordisco Corp., 969 F.2d 410, 412 (7th Cir. 1992) (discussing Section 101â€™s requirement of a signed writing in the context of a work made for hire). Section 204(a) ensures that in transactions involving the â€œtransfer of the in rem exclusive rights created by copyright law,â€ there are â€œclear chains of title and clear delineation of the open-ended subdivisions of exclusive rights permitted under the 1976 Act.â€ 6Newman, 98 Iowa L. Rev. at 1140. In other words, the signed writing contemplated by Section 204(a) is â€œcopyright’s equivalent of a deed.â€ 7Id.
Chief Judge Alex Kozinski colorfully explains the purpose of the writing requirement:
Common sense tells us that agreements should routinely be put in writing. This simple practice prevents misunderstandings by spelling out the terms of a deal in black and white, forces parties to clarify their thinking and consider problems that could potentially arise, and encourages them to take their promises seriously because it’s harder to backtrack on a written contract than on an oral one.
Copyright law dovetails nicely with common sense by requiring that a transfer of copyright ownership be in writing. Section 204 ensures that the creator of a work will not give away his copyright inadvertently and forces a party who wants to use the copyrighted work to negotiate with the creator to determine precisely what rights are being transferred and at what price. Most importantly, section 204 enhances predictability and certainty of copyright ownershipâ€”Congress’ paramount goal when it revised the Act in 1976. Rather than look to the courts every time they disagree as to whether a particular use of the work violates their mutual understanding, parties need only look to the writing that sets out their respective rights.
Section 204’s writing requirement is not unduly burdensome; it necessitates neither protracted negotiations nor substantial expense. The rule is really quite simple: If the copyright holder agrees to transfer ownership to another party, that party must get the copyright holder to sign a piece of paper saying so. It doesn’t have to be the Magna Charta; a one-line pro forma statement will do. 8Effects Associates, Inc. v. Cohen, 908 F.2d 555, 557 (9th Cir. 1990) (internal citations and quotations omitted; paragraph break added).
By its terms, Section 204(a) applies to â€œ[a] transfer of copyright ownership.â€ Section 101, in turn, tells us that such a transfer includes â€œan assignment, mortgage, exclusive license, or any other conveyance, alienation, or hypothecation of a copyright . . . .â€ 917 U.S.C.A. Â§ 101 (West 2013) (â€œA â€˜transfer of copyright ownershipâ€™ is an assignment, mortgage, exclusive license, or any other conveyance, alienation, or hypothecation of a copyright or of any of the exclusive rights comprised in a copyright, whether or not it is limited in time or place of effect, but not including a nonexclusive license.â€). Thus, the writing requirement applies to assignments, exclusive licenses, or any other transfer of copyright ownership such as a mortgage, pledge, or encumbrance.
The question arises whether electronic communications such as emails can fulfill Section 204(a)â€™s writing requirement. One district court, analyzing a series of emails in which the details of an exclusive license were negotiated, held that there was no signed writing:
Plaintiff has not provided this Court with evidence of a signed writing granting him an exclusive license to market the sound recordings. Instead, Plaintiff argues that the parties’ exchange of e-mails evidences the agreement. The exchange of e-mails, however, does not satisfy the statutory requirement of a written instrument signed by the Defendants. Thus, Defendants could not have transferred ownership of the sound recordings to Plaintiff through an exclusive license. 10Ballas v. Tedesco, 41 F.Supp.2d 531, 541 (D.N.J. 1999); this opinion predates the E-SIGN Act, which went into effect on October 1, 2000.
The District Court Proceedings
In the district court, defendant AHRN moved to dismiss the complaint for failure to state a claim, arguing that plaintiff MRIS did not own the copyrights in the photographs sued upon since the assignments between it and its subscribers were not memorialized in a signed writing as mandated by Section 204(a). Citing the E-SIGN Act, the district court disagreed. 12See Metro. Reg’l Info. Sys., Inc. v. Am. Home Realty Network, Inc., 888 F.Supp.2d 691 (D. Md. 2012), modified on clarification, 904 F.Supp.2d 530 (D. Md. 2012).
The E-SIGN Act provides:
Notwithstanding any statute, regulation, or other rule of law . . . with respect to any transaction in or affecting interstate or foreign commerceâ€”
(1) a signature, contract, or other record relating to such transaction may not be denied legal effect, validity, or enforceability solely because it is in electronic form; and
(2) a contract relating to such transaction may not be denied legal effect, validity, or enforceability solely because an electronic signature or electronic record was used in its formation. 1315 U.S.C.A. Â§ 7001(a) (West 2013).
â€œElectronic signature,â€ in turn, is defined by the Act as â€œan electronic sound, symbol, or process, attached to or logically associated with a contract or other record and executed or adopted by a person with the intent to sign the record.â€ 1415 U.S.C.A. Â§ 7006(5) (West 2013).
All images submitted to the MRIS Service become the exclusive property of Metropolitan Regional Information Systems, Inc. (MRIS). By submitting an image, you hereby irrevocably assign (and agree to assign) to MRIS, free and clear of any restrictions or encumbrances, all of your rights, title and interest in and to the image submitted. This assignment includes, without limitation, all worldwide copyrights in and to the image, and the right to sue for past and future infringement. 15Metro. Reg’l Info. Sys., Inc., 888 F.Supp.2d at 708.
The district court held that the â€œTOU constitutes credible evidence that MRIS’s users intended to assign their copyrights to MRIS through the electronic submissions of photographs, which would satisfy the relevant provisions of ESIGN.â€ Having determined that the writing requirement was fulfilled, the district court then granted plaintiff MRISâ€™s motion for a preliminary injunction, finding that it had a likelihood of success on the merits since it â€œappears to have obtained these copyrights by assignment when the photographs were uploaded to the MRIS Database by subscribers.â€ 16Id. at 710.
The Fourth Circuit Opinion
On appeal, the reasoning of the Fourth Circuitâ€™s opinion tracks that of the district court below. 18See Metro. Reg’l Info. Sys., Inc. v. Am. Home Realty Network, Inc., Case No. 12-2102, 2013 WL 3722365 (4th Cir. July 17, 2013). The court begins by noting that Section 204(a)â€™s writing requirement is different from a statute of frauds in that, â€œ[r]ather than serving an evidentiary function and making otherwise valid agreements unenforceable, under Â§ 204(a) a transfer of copyright is simply not valid without a writing.â€ 19Id. at *8 (internal citations and quotations omitted). Furthermore, continues the court, â€œa qualifying writing under Section 204(a) need not contain an elaborate explanation nor any particular magic words, but must simply show an agreement to transfer copyright.â€ 20Id. (internal citations and quotations omitted).
Before proceeding to the merits of the copyright transfers at issue, the court of appeals cites Second and Ninth Circuit precedent discussing the impropriety of allowing third parties to challenge the validity of a copyright transfer where there is no dispute between the assignor and assignee. Recall that here MRISâ€™s subscribers assigned their copyrights to MRIS, and the only party challenging those assignments is AHRNâ€”as far as we know, both MRIS and its subscribers believe the transfers to be valid. The court notes that MRIS did not raise the argument that AHRN could not attack its assignments indirectly, and then it proceeds to analyze AHRNâ€™s attack on the merits. One wonders how the court would have reacted had MRIS actually made the argument that it is improper for a third party to challenge the validity of a copyright assignment that is not doubted by either the assignor or assignee.
The court of appeals then goes on to cite the relevant provisions of the E-SIGN Act, notably the definition of â€œelectronic signatureâ€ mentioned above which includes â€œan electronic sound, symbol, or process, attached to or logically associated with a contract or other record and executed or adopted by a person with the intent to sign the record.â€ The court reasons that since Section 7001(b) of the E-SIGN Act seeks to â€œlimit, alter, or otherwise affectâ€ any statutory â€œrequirement that contracts or other records be written, signed, or in nonelectronic form,â€ and since â€œSection 204(a) requires transfers to be â€˜writtenâ€™ and â€˜signed,â€™â€ it follows â€œthat Congress intended the provisions of the Eâ€“Sign Act to â€˜limit, alter, or otherwise affectâ€™ Section 204(a).â€ 21Id. at *9. Moreover, the court continues, copyright transfers do not fall into any of the enumerated exceptions to the E-SIGN Act found in Section 7003.
Craigslist and Beyond
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|↑1||17 U.S.C.A. Â§ 204(a) (West 2013) (â€œA transfer of copyright ownership, other than by operation of law, is not valid unless an instrument of conveyance, or a note or memorandum of the transfer, is in writing and signed by the owner of the rights conveyed or such owner’s duly authorized agent.â€).|
|↑2||For some reason, Scribd sometimes changes the font and makes documents difficult to read. When this happens, I have found that downloading the file and opening it up, rather than reading it from within the Scribd website, fixes the formatting issues.|
|↑3||See Electronic Signatures in Global and National Commerce Act, Pub. L. 106-229, 114 Stat. 464; codified at 15 U.S.C. Â§Â§ 7001-31.|
|↑4||Christopher M. Newman, A License Is Not A “Contract Not to Sue”: Disentangling Property and Contract in the Law of Copyright Licenses, 98 Iowa L. Rev. 1101, 1140 n.167 (2013) (internal quotations and citations omitted).|
|↑5||Schiller & Schmidt, Inc. v. Nordisco Corp., 969 F.2d 410, 412 (7th Cir. 1992) (discussing Section 101â€™s requirement of a signed writing in the context of a work made for hire).|
|↑6||Newman, 98 Iowa L. Rev. at 1140.|
|↑8||Effects Associates, Inc. v. Cohen, 908 F.2d 555, 557 (9th Cir. 1990) (internal citations and quotations omitted; paragraph break added).|
|↑9||17 U.S.C.A. Â§ 101 (West 2013) (â€œA â€˜transfer of copyright ownershipâ€™ is an assignment, mortgage, exclusive license, or any other conveyance, alienation, or hypothecation of a copyright or of any of the exclusive rights comprised in a copyright, whether or not it is limited in time or place of effect, but not including a nonexclusive license.â€).|
|↑10||Ballas v. Tedesco, 41 F.Supp.2d 531, 541 (D.N.J. 1999); this opinion predates the E-SIGN Act, which went into effect on October 1, 2000.|
|↑11||3-10 Nimmer on Copyright Â§ 10.03[A].|
|↑12||See Metro. Reg’l Info. Sys., Inc. v. Am. Home Realty Network, Inc., 888 F.Supp.2d 691 (D. Md. 2012), modified on clarification, 904 F.Supp.2d 530 (D. Md. 2012).|
|↑13||15 U.S.C.A. Â§ 7001(a) (West 2013).|
|↑14||15 U.S.C.A. Â§ 7006(5) (West 2013).|
|↑15||Metro. Reg’l Info. Sys., Inc., 888 F.Supp.2d at 708.|
|↑16||Id. at 710.|
|↑17||Metro. Reg’l Info. Sys., Inc. v. Am. Home Realty Network, Inc., 904 F.Supp.2d 530, 539 (D. Md. 2012).|
|↑18||See Metro. Reg’l Info. Sys., Inc. v. Am. Home Realty Network, Inc., Case No. 12-2102, 2013 WL 3722365 (4th Cir. July 17, 2013).|
|↑19||Id. at *8 (internal citations and quotations omitted).|
|↑20||Id. (internal citations and quotations omitted).|
|↑21||Id. at *9.|
|↑22||See Vergara Hermosilla v. Coca-Cola Co., Case No. 10-21418, 2011 WL 744098 (S.D. Fla. Feb. 23, 2011), aff’d sub nom., Hermosilla v. Coca-Cola Co., 446 F.App’x 201 (11th Cir. 2011).|
|↑23||Metro. Reg’l Info. Sys., Inc., 2013 WL 3722365 at *9.|
|↑24||See 9 U.S.C. Â§ 2.|
|↑25||See Craigslist Inc. v. 3Taps Inc., Complaint, Case No. 12-03816, 2012 WL 3011009 (N.D. Cal. July 20, 2012).|
|↑26||Craigslist Inc. v. 3Taps Inc., Order Granting in Part and Denying in Part Motions to Dismiss, Case No. 12-03816, 2013 WL 1819999, *6 (N.D. Cal. Apr. 30, 2013).|
|↑27||Id. at *7 (internal quotations omitted; ellipses in original.).|
|↑28||15 U.S.C.A. Â§ 7006(5) (West 2013) (emphasis added).|
|↑29||Pepco Energy Servs., Inc. v. Geiringer, Case No. 07-04809, 2010 WL 318284, *2 (E.D.N.Y. Jan. 21, 2010) (unpublished opinion).|
|↑30||See Berry v. Webloyalty.com, Inc., Case No. 10-01358, 2011 WL 1375665, *7 (S.D. Cal. Apr. 11, 2011), opinion vacated and remanded on other grounds, Case No. 11-55764, 2013 WL 1767718 (9th Cir. Apr. 25, 2013).|
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I don’t see how either of these is fundamentally different from “click yes to agree”. The typical user process for a TOU window is to ignore the text and click “OK” as soon as they find it; clever stratagems like requiring the user scroll through the document or requiring a check-box to be filled in simply add a couple of clicks. Digital signatures are just a few more clicks, and adding text to the TOU won’t change anything because almost nobody ever reads the TOU anyway.
The issue, to me, is that in neither case has there been negotiation of the terms beyond “take it or leave it”. But that’s a more fundamental battle over what shrinkwrap-EULAs mean and how enforceable they are.
I’d say, however, that even a serious anti-EULA crusader would agree that their philosophy isn’t intended to create loopholes enabling commercial exploitation of another party’s content.
I donâ€™t see how either of these is fundamentally different from â€œclick yes to agreeâ€.
Itâ€™s an interesting issue that certainly deserves much more examination than I gave it in the article. I think looking at what it means to â€œsignâ€ a writing in other contexts is instructive. For example:
The Supreme Court of Indiana: “When a person attaches his name or causes it to be attached to a writing by any of the known modes of impressing his name upon paper, with the intention of signing it, he is regarded as having ‘signed’ the writing.” Hamilton v. State, 2 N.E. 299, 300 (1885).
The Supreme Court of Arizona: “We are fully satisfied that the general rule is that a writing or memorandum is â€˜signedâ€™ in accordance with the statute of frauds if it is signed by the person to be charged by any of the known modes of impressing a name on paper, namely, by writing, printing, lithographing, or other such mode, provided that same is done with the intention of signing.” Bishop v. Norell, 88 Ariz. 148, 151 (1960).
The Supreme Court of Minnesota: “A ‘subscription’ is the same as a ‘signing,’ and it is clear that Brenon’s typewritten name, which according to his testimony was typed with the intent that it be tantamount to a written signature, is a sufficient subscription.” Radke v. Brenon, 271 Minn. 35, 39 (1965).
The Supreme Court of North Carolina: “The signing of a paper writing or instrument is the affixing of one’s name thereto, with the purpose or intent to identify the paper or instrument, or to give it effect as one’s act.” McCall v. Textile Indus. Inst., 128 S.E. 349, 353 (1925).
And the Supreme Court of Nebraska: “Affixing one’s handwritten signature, however, is not the only method by which a paper writing may be considered as being signed within the meaning of the statute of frauds. As long ago as Lord Ellenborough’s opinion in Schneider and Another against Norris, 2 M. & S. 286, 105 Eng.Rep. 388 (1814), it has been recognized that a printed name may constitute a sufficient signing under the statute of frauds, provided that it is recognized by the party sought to be charged.” Hansen v. Hill, 215 Neb. 573, 579 (1983).
Section 204(a) requires that the writing be “signed” by the assignor/licensor/mortgagor, and I think that anything that is going to fulfill this requirement should clearly be something that the assignor/licensor/mortgagor intended to represent his actual signature, i.e., something that indicates his intent to affix his signature. Itâ€™s the difference between clicking â€œyesâ€ and intending that click to signify acceptance and clicking â€œyesâ€ and intending that click to be the equivalent of signing your name. Section 204(a) requires the latterâ€”you must sign your name to signify your acceptance, not merely signify your acceptance by some other means.
The typical user process for a TOU window is to ignore the text and click â€œOKâ€ as soon as they find it; clever stratagems like requiring the user scroll through the document or requiring a check-box to be filled in simply add a couple of clicks. Digital signatures are just a few more clicks, and adding text to the TOU wonâ€™t change anything because almost nobody ever reads the TOU anyway.
The issue, to me, is that in neither case has there been negotiation of the terms beyond â€œtake it or leave itâ€. But thatâ€™s a more fundamental battle over what shrinkwrap-EULAs mean and how enforceable they are.
I see two fundamental problems with “clickwrap” as “written and signed” – the first is a matter of evidence, since there is no inalterable record of what was signed. The reasoning – and correct me if I’m wrong here – is thus:
P1: A user must agree to transfer copyrights in images to the service before uploading them to the server,
P2: An image has been uploaded to the server,
C: The owner of the uploaded image has agreed to transfer copyright in the image to the service operator.
However, this doesn’t account for the possibility that an image has been uploaded outside the normal click-through channel (the service operator could’ve done it himself) nor that the TOU might have changed in the meantime. In short, whilst we can see an effect that could have been the result of a written and signed copyright transfer agreement, we have no way to ascertain whether such an agreement actually exists – outside of the court’s fiat.
Second, there is the matter of “mak[ing] the ownership of property rights in intellectual property clear and definite” – or lack thereof. Since a click does not – of itself – carry any verifiable personal information, we cannot determine whether the person who clicked is in a position to enter into such an agreement – nor even who actually clicked. Since such clickwrap agreements are likely to appear in contexts where infringement of copyright is not so much a possibility, but quite probably the norm (places like YouTube, say), the hapless copyright owner whose rights have been transferred under a clickwrap agreeement could find himself in the unenviable position of having to prove a negative: that he didn’ click nuthin’.
Whilst I believe that the reasoning behind E-SIGN is fundamentally correct, I also think that there should be definite standards as to what counts as a valid electronic signature and means to mitigate fraud in this respect (which is all the easier in the electronic domain, because the assignment of unique identifiers can be controlled an monitored). Moreover, there should also be a standard for storing written and signed documents as an inseparable whole (much like the paper variety). Otherwise the requirement of a written and signed document becomes meaningless.
You bring up an interesting point about having evidence of the transfer. If ownership of a copyright is transferred via a clickwrap agreement, then there is no signed writing that can be submitted to the U.S. Copyright Office for recordation.
37 C.F.R. 201.4(c) in part provides:
(c) Recordable documents. Any transfer of copyright ownership (including any instrument of conveyance, or note or memorandum of the transfer), or any other document pertaining to a copyright, may be recorded in the Copyright Office if it is accompanied by the fee set forth in paragraph (d) of this section, and if the requirements of this paragraph with respect to signatures, completeness, and legibility are met.
(1) To be recordable, the document must bear the actual signature or signatures of the person or persons who executed it. Alternatively, the document may be recorded if it is a legible photocopy or other legible facsimile reproduction of the signed document, accompanied by a sworn certification or an official certification that the reproduction is a true copy of the signed document. Any sworn certification accompanying a reproduction shall be signed by at least one of the parties to the signed document, or by an authorized representative of that person.
Since there is no document bearing the actual signature of the assignor, the transfer cannot be recorded at the USCO–at least not for the photographs individually. (Keep in mind that recordation is separate matter than whether the transfers are legally valid.)
The way MRIS got around this was by registering its database as a whole. See 37 C.F.R. Â§ 202.3(b)(5) (registration of automated databases). The Fourth Circuit spends a great deal of the opinion (see pp. 8-21) discussing the registration issue with the MRIS database: http://www.ca4.uscourts.gov/Opinions/Published/122102.P.pdf
The court of appeals discusses the split of authority over the registration of collective works such as the MRIS database, but it sides with those who say that registration of a collective work can also result in the registration of its component worksâ€”even if the authors and titles of the component works are not identified.
So even though MRIS would not have been able to register the works individually because there were no signed writings that it could produce, it was able to get the registration done anyway by registering the whole database as a compilation.
We’re excited the court has affirmed the click wrap agreement satisfies section 204(a). This is good news in general for the legal tech industry and for those wishing to transfer copyright and intellectual property ownership online. Now the onus will be on consumers to be more mindful of the terms of service requirements of websites they use regularly to store and host their content.
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Wow, thereâ€™s a lot of legal issues packed into that scenario.
I think first youâ€™d have to look at whether CC licenses are irrevocable. To be irrevocable, at least if granted unilaterally via property law (which creates in the licensor a Hohfeldian disability to revoke), requires a signed writing. I think you need a signed writing as well to create an irrevocable license via contract law (which creates in the licensor the Hohfeldian duty not to revoke). So you’d have to figure out if there’s a signed writing. I wonder too if assenting to the TOU could be framed as a unilateral grant of an irrevocable license even if there were no actual contract between the licensor and Wikipedia.
After that you have the issue of the licensor being a minor. I think those issues turn on which state law applies. If the irrevocable license is created via contract law, then you have the issue of whether a minor can enter into a binding contract. IIRC, at least in my state, a minor can enter into such a contract but the contract is voidable at will by the minor only (and not the other party). If, on the other hand, the irrevocable license is the product of a unilateral grant under property law, then the issue turns on whether a minor can donate his property inter vivos. I donâ€™t recall the rule in my state off the top of my head for that one.
The other issue would be to look at whether, even if the license is contractually irrevocable, the licensor could still breach the contract arbitrarily. This would open the licensor up to damages for the breach, and it would open Wikipedia up to damages for the subsequent infringement should they not take the image down. The one may cancel the other, though I think that’s another possibility.
Iâ€™ll have to give it more thought, but thatâ€™s what comes to mind at first blush. Great stuff!