Practice Areas Office is concerned, in order to be

entitled to copyright registration, a

work must be the product of “human
authorship.” This position, which
is set forth in Section 503.03 of
Copyright Litigation Compendium II of Copyright Office
Practices, also states that works pro-
Susan Neuberger Weller duced by mechanical processes, by
random selection without any con-
tribution by a human author, and
works owing their form to forces of
nature and lacking human author-
Copyright To begin this discussion, it is impor- ship are not registrable. The U.S.
Ownership Is Not tant to note that there is no “inter-
national” copyright law, and that
Copyright Office, in its recently
issued draft of the Third Edition of
Monkey Business: each country makes its own specific the Compendium, confirmed that
Wikimedia and law on this topic. There are inter- it will not register any works “pro-
national treaties and conventions duced by nature, animals or plants”
Slater Fight over that govern reciprocity of rights for or “divine or supernatural beings.”
Selfie Photographs authors on an international basis. The draft focuses on the “human
However, those rights are still based authorship” requirement, stating
A simmering dispute about owner- on the individual copyright law in that U.S. copyright law will protect
ship of a copyright in photographs each jurisdiction. Under US copy- only “the fruits of intellectual labor”
has now garnered international right law, the owner of the copyright that “are founded in the creative
attention. As more fully reported in an original work of authorship powers of the mind.”
in an article in the British news- is the “author” of the work. The Slater also argues that he owns
paper The Telegraph, British pho- author is considered the individual the copyright in the photographs
tographer David Slater has stated who actually created the tangible because of his significant financial
that he intends to bring a copy- work protected by the copyright. investment in equipment and the
right infringement suit in the United In the case of a work “made-for- photo shoot at which his camera
States against Wikimedia, the non- hire,” an employer is considered the was used to take the photograph.
profit entity behind Wikipedia, “author” and, therefore, the owner However, there is no statutory provi-
focused on photographs taken by of the copyright in works created sion in US copyright law to support
a crested black macaque monkey by an employee within the scope of such a position. In Feist Publications,
in Indonesia in 2011. Slater had his or her employment responsibili- Inc. v. Rural Telephone Service, Co.,
been in Indonesia on a photo shoot ties. There are other certain types of the US Supreme Court dismissed a
when his camera was grabbed by specially ordered or commissioned somewhat analogous argument that
a monkey which then took some works that also may be considered was made to support a claim of
amazingly good selfies with Slater’s “works-for-hire.” copyright in a white pages phone
camera. Some of these photographs In this case, Wikimedia takes the directory. In that case, the company
can be seen on Slater’s Web site, position that because the monkey who had put together the original
the Wikimedia Web site, and in actually created the photographs at directory sued a company who cop-
The Telegraph article. Slater claims issue, Slater cannot claim to be the ied 4000 entries from the original
to own the copyright in the pho- “author” of the photographs and directory into its own phone direc-
tos because he owned the cam- cannot claim copyright ownership tory. The issue in that case was not
era with which they were taken. in them. Moreover, because the pho- copyright authorship but whether
Wikimedia claims that the photo- tographs actually were the work of there was enough originality in the
graphs are not protected by copy- a “nonhuman animal,” Wikimedia phone directory for it even to be pro-
right and are in the public domain claims “there is no human author tected by copyright. The Court shot
because they were taken by a mon- to claim ownership” and the pho- down the “sweat of the brow” or
key, and not a human. Accordingly, tographs are in the public domain. “industrious collection” doctrine put
it has refused Slater’s requests to There is no statutory provision in US forth by the publisher of the original
remove the photographs from the copyright law addressing this issue. directory as irrelevant, stating that
Wikimedia site. However, as far as the US Copyright the copyright law was not intended

SEPTEMBER/OCTOBER 2014 IP Litigator 33

to “reward” the efforts of persons of time, effort, and money on equip- It is doubtful Slater will monkey
not otherwise entitled to claim copy- ment and travel for the trip that lead around with this for too much longer
right protection. Rather, the intent, to the creation of the photographs before taking legal action.
as set forth in the US Constitution, at issue, he cannot claim to own the
was to encourage creative expres- copyright in photographs he did not Susan Neuberger Weller is a member
sion. Thus, regardless of how much take himself. of Mintz Levin in Washington
time, effort, and money had been Apparently, monkeys are not the DC. She has managed the firm’s
spent to compile the original phone only artistically inclined nonhuman Trademark Practice for over 10 years.
directory, the company could not animals. YouTube features a number For over 25 years, her practice has
claim ownership of a copyright in it of videos showing elephants painting involved all aspects of intellectual
because it did not meet the threshold works of art with their trunks, and property and related corporate
level of “originality” required to be elephant art as well as art created by business transactions, with a
protected by copyright. This reason- other animals is for sale on a number particular emphasis on domestic and
ing might provide some support for of Web sites. Thus, there does appear international trademark and copyright
Wikimedia’s position that although to be a workable business model for searching, prosecution, enforcement,
Slater may have spent a great deal this type of media. counseling, and litigation.

Additionally, no claims could be

E-Commerce Litigation consolidated with those of other par-
ties, and the parties expressly waived
Matthew H. Adler, Kevin Crisp, class arbitration.
Jeffrey M. Goldman, and However, these usage terms were
presented to consumers in browse-
Sharon R. Klein wrap agreements, that is, an agree-
ment containing mandatory usage
terms that can be reviewed via a
Ninth Circuit arbitration clause in its Web site’s
terms of use, putting businesses on
hyperlink. Barnes & Noble attempted
to tie the consumer’s continued site
Affirms District notice that something “more” is usage with assent to the browsewrap
Court’s Refusal needed before courts will enforce agreement’s terms, even though users
certain browsewrap agreements. could make a purchase without actu-
to Enforce Nguyen is a putative class action ally seeing the agreement’s terms—or
Arbitration Clause concerning Barnes & Noble’s online even knowing they exist. This stands
“fire sale” to liquidate, at highly dis- in contrast to clickwrap agreements,
in Barnes & counted prices, its inventory of a dis- which force users to affirmatively
Noble’s continued tablet computer. Nguyen click a button or box that shows their
Browsewrap had purchased two of the tablets and consent.
received email confirmation. But the So it was with Nguyen, who claimed
Agreement next day, due to unexpectedly high he never actually followed the link to
E-commerce forges ahead as many demand, Barnes & Noble cancelled Barnes & Noble’s terms of use, and
consumers’ preferred way of buying, his order. Nguyen then sued for dam- never even knew they existed. In
and the law is evolving to meet the ages on behalf of himself and simi- deciding whether Nguyen construc-
demands of advancing technology larly situated consumers. tively assented, the court analyzed
while also accounting for the pub- Barnes & Noble responded by mov- the Web site’s design and content to
lic’s protection. In the most recent ing to compel arbitration. Its Web determine if a reasonably prudent
example, the Ninth Circuit Court site’s terms of use provided that all user would have been on inquiry
of Appeals published an opin- disputes arising out of the site’s use notice of the usage terms. For exam-
ion, Nguyen v. Barnes & Noble Inc. must be resolved in binding arbi- ple, the court noted:
[2014 U.S. App. LEXIS 15868 (9th tration that must be conducted via
Cir. August 18, 2014)], in which the telephone or online and without • Barnes & Noble made the terms
court invalidated the bookseller’s mandatory in-person appearances. available through a conspicuous

34 IP Litigator SEPTEMBER/OCTOBER 2014

Reproduced with permission of the copyright owner. Further reproduction prohibited without
permission.