my name is maurice harmon with me we represent joseph soem with me is amanda bras there are a lot of issues in this case in the appeal ms bras will address the registration issues with your honor's permission and i will address the others so the couple matters that we should try to clear up right away one is with respect to kind of a clerical error that the district judge made with respect to the dismissal of one of the claims that neither party that the defendant did not request be dismissed and that's in the record of a two dollars to seven  this appeared to just be accounting error so there was a chart created by scholastic that indicated what images it wanted to have dismissed in their motion summary judgment the chart indicated a check mark for those images that were not printed beyond license limits for some reason in line number eighty four there's a photo in the column next to not over print it is no check mark unfortunately judge that can somehow confuse that and thought that that was part of the claims of sloan scholastic that uses were within license limits and therefore should be dismissed and  i guess i'll ask them and seems like your adversaries agreeing with you on this one right yes i believe so i'm going to make sure we're clear about it a lot of time on that understood that the only question was it appeared there was a brief note in their brief that indicated we had somehow withdrawn this volume that scholastic likely because of the volume scholastic purchased but those pricing agreements just set the cost and gave them a discount over what an individual price would be for a similar usage in your view when does it become a license what is it evolve from the larvae stage into a license when the invoice gets submitted when there's a specific request by scholastic pursuant to the terms and conditions that are specifically made a part of the p p a preferred pricing agreement that's the title at that point then an invoice and licensing agreement the title of that document is issued and it has specific use parameters and it's lights so heavily redacted they're hard to get a sense of but and that's the that's the nd piece that is necessary for there to be a license and yes as indicated in the p p a the preferred pricing agreement because it says specifically the p p a specifically subject to the terms and conditions attached to it and if you go to those they then reference the process where you must request an invoice then you went a step further in the sense the court ruled that a contract claim that merely vindicates essentially a copyright violation would be preempted by the con contract an assertion of a contract quite so we're in the odd position here where the lower court said we only have contract claims the truth of it is that we pled copyright from the beginning and still contend it's a copyright claim but if the court follows universal instruments when this case goes back down he would have to find that the contract claims are preempted by the copyright claims a big circle and we get zero and it just doesn't seem consistent with that notion there seems to be two kind of major pass that courts have taken a few courts have taken this graham jeems path graham versus james where the idea is if you have a license before you can get to a copyright infringement claim you must show that the license was violated but that and then more you have to show that there was a condition that was violated and if it's not a condition that's violated bend change seems to say you don't even have a copyright claim you don't have a contract like there's a whole lot of other cases that have said the majority vast majority across the country and different circuits that use beyond the scope of the license is infringement so if you truly have an argument about what the scope of the licenses you still look at the contract language of the license but you're not in there trying to decipher and you don't assume st there's a breach of the contract and nd that only if and only if there's a breach of a condition then have a copyright claim so the confusion apparently here at the lower court and this wasn't even argued scholastic did not in the sense scholastic did not claim on summary judgment that it was entitle to dismissal of copyright claims because of a breach of a condition it was sort of a one page argument that there are some facts that remain in dispute about whether this is a condition cases or so that we have brought up or seen looked at we've never had a case anywhere in the country at district level or any other level where there was a condition and covenant analysis an argument in these publisher's cases where they've licensed for one time not exclusive limits very clear twenty five thousand copies that's what you get to print  we've never had a court say that a violation of that kind of agreement is requires this covenant condition analysis and denied a copyright infringement claim this is the very st case in the country cases not really not that i saw either right b but really that's because it's never been seriously argued by the defense initially it was they kind of threw it into the affirmative or the defenses that they had in the answer and by the time it reached  summary judgment motion it was abandoned it was thrown in here in about a page just to try to keep from having summary judgment issue on the copyright claims but if but if the law is going to be that every time you have  a copyright claim that results from use beyond license limits that you have to go through and st prove that there is a violation of the underlying license agreement and then and only then that you have to a condition then every single time these claims are brought there is going to be this analysis to think consistent with what the courts have said across the country including universal instrument decided just five days seven days ago  th circuit this is a requirement it's not an optional thing to do if there is a claim that there is an accurate information and registration and that for that reason the case should be dismissed the court has to go through this process where st there's a showing of inaccurate information and then nd if that showing is made the claim the risk referred to the register of copyrights for them to decide that if they had known of the correct information the registration would have been denied in this case we are you know whether dragster would have done they have submitted his briefs in the alaska stock case in one circuit which dealt with the exact issue and then also more recently and mujhe case which will be before this court appealing the same issue where the copyright office has said we instructed corbis and the other members of ppaca on how to complete these registrations and we told them they only needed to include three authors and then and others in the application to write the statute if the statute requires you to list the author they don't get to say have that's a nuisance let's just not do that right that's correct and that's that's the nd part of our argument is that this statute doesn't require identification of the authors of the constituent works of a collective work the work being described  for one you maybe created the collective work so you could register your arrangement of the baseball cards but you your registration would not extend to the cards themselves because already public they have already been published probably at different times and because you don't own the copyrights in those baseball cards the difference here is that corpus did on the copyrights and the photographs the photographers all conveyed complete rights to corpus pursuant to advice by the cop or a doctor that it gave back  something or nine hundred and ninety five actually the kobra f act makes them the author it makes them the owner and the owner of a copyright can register so the if the right but you have to list the author or authors right that's what the the paintings of all the of all my family members over the years and i decide then to register that collected work i don't have to say who the authors of the works individual works are if they're paintings of your family members your family members painted the pictures and they all assigned copyright ownership to you and none of the images have been published anywhere previously then your collection of my family's photographs will be registered and the collection be my family's photographs or whatever addressed the exact registrations that we have in this case so they've gone through the analysis here and have found that as we have argued that the work means the collective work and so by identifying the name of the work and the name of the a collective work they have complied with the statutory requirements judge prescot doesn't agree with you i guess she's not ok so we i mean we've as we should decide so we give guidance to the lower courts right yes  thanks you so we'll hear from scholastic thank you your honor rosenthal st class deck so let me start with the district court's decision finding that these were breaches of contract rather than copyright infringement claims he was not arguing that every breach of a license is a contract time what we're arguing is that the district court correctly found that in this case looking at all the facts of this case including the agreement between  and the agreement between mr solomon corpus that when you look at that in its entirety it's very clear that using an image in excess of the specifications on the face of an invoice simply breaches a contractual covenant which gives mr saw a right under contract law to bring a claim but not a copyright infringement clive doesn't want the agreement doesn't the agreement itself say that no license until the invoice has been se it says at least send it it says that in order it says that is a condition of this contract the license the invoice has to be paid here there's no dispute paid unless it's been sent here there's no dispute that the license for the original usage was sent by corpus paid by scholastic mr sullum then received his fifty percent then the question becomes what happens if there is some use beyond the original specifications on the face of the license and in the preferred vendor agreement between scholastic and corpus the use of the license but i think that's that's a chicken and egg thing right there saying there is no license without the invoice so if you've exceeded the invoice you've exceeded the license you're saying that the agreement is the license and since the agreement in the pricing agreement contemplates different payments depending on the amount of copies that that's the license agreement say that that is not a license they want what the agreement the well i don't know the agreement explicitly says that with the agreement makes very clear is that once you enter into this arrangement an invoice is issued and it's paid then you're in the area of the license and then if you look at the preferred vendor agreements what you're this is on page a one hundred and sixty four and then again i think it's page one a six it's well let's just look at this when the two different agreements but they're there similar it says that it says that  kind corpus is conditional upon your meeting all conditions and restrictions imposed by corpus and corpus is receipt of payment by you for such use as invoiced by corpus now may be that there were additional uses beyond the content constitutes infringement of copyright it does your honor but just simply simply saying that something it may be simply saying in an agreement that something is a is a breach does not make it a condition of the contract let's just step back and look at this overall picture here mr some gives corvus unfettered complete rights to use his works in any way corbis wants corbis has complete discretion and this is in the agreement exclusive uses and under the terms of the agreement mr song gets about one hundred and fifteen dollars and if it if scholastic used it a little bit more another twenty five dollars i mean the agreement says corpus grants you a limited non exclusive right to use the rights managed contract license here under to create the license granted here is contingent on the invoice isn't it no the license granted the invoice sets the price that was the convenient way that corbis and scholastic operated just like a invoice under a master services agreement where you have this arrangement between between corpus and scholastic and then when there's a particular use scholastic issues  unlicensed use we don't agree with that we believe that the it may be that scholastic used beyond the scope of the may have used the more than was specified on the face of the invoice and may owe money because not every breach of a contract have stand what you're arguing about how do you make sense out of the language i just read this is section three b the rights managed content you're looking back at the you know this is the terms and conditions a one hundred and seventy five of but because the larger picture is the larger picture arrangement even if it says that that doesn't mean that it was a condition to this agreement that scholastic only prints a twenty five thousand copies if that was the infringement of copyright does that mean that doesn't mean what it says because you corbis can say that but simply saying that and i think the your your your your honour's this discord in the spinelli case made very clear you can't fifty thousand copies the answer is voice make sure i understand this they say you can distribute twenty five thousand copies the invoice has a specification that will include  twenty seven and my reading this correctly which is distribution quantity twenty five thousand yes and so so you're arguing that somehow this means that you have a license to do more than twenty five thousand even though it only says twenty five thousand yes and what's what your reasoning in because in this case where mr some gave corpus the absolute right to license for as much as corpus one of the license and where there's a w there's a pricing scheme that sets forth exactly what the extra twenty five dollars or fifty dollars that's classic would have to pay if you use more then looking at the entire scope of the life of the agreement then that simply breached the license what corpus to scan last that's important right but would corbis gave disco lastic was a pricing scheme that allowed millions of copies to be printed for certain amounts of money and this specifications on the front of the invoice which was really just a convenience thing based on a premise for the part of it's part of the overall picture but the invoice and the p p a together you have to take all of that yes you have to take it all together and i and our position is that exceeding the scope of the invoice specifications does not get you into copyright infringement territory it gets you into what it does and what makes the invoice then part of the license it was a pain it was a convenient payment convenience makes if i go to the language the language says that the invoice basically is part of the license right right it's art of the you're saying it's not i'm saying that you have to read it as it says on the face of the invoice in connection with the pricing agreement and the terms and can missions that are attached to the pricing agreement points glass to can corpus so what the invoice does it sets up a payment mechanism but it doesn't mean just because it says twenty five thousand dollars on the face of the invoice doesn't mean that printing twenty five thousand and one gets you to a breach of the you are authorized to do twenty five thousand and it is inherent as that court below found in the overall relationship between five thousand dollars and st copy and similarly there's a provision that gives corpus the right to allege that it keeps entitle to ten times the original license fee as a remedy for some use beyond the scope of the life of the of the invoice and again that supreme court's recent decision in the th estate case and that decision while it did not deal with this particular issue of what four hundred and nine means very very clearly stated that just because something that the courts cannot read essentially there was it was a run around around the requirements of section four a nine well run around sort of engineered by copyright office right right it was engineered by the copyright office but it was what they did was they so all of these photographers disparate photographers no relationship with one another other than their relationship with corbis they all assigned their rights to corpus so that corpus can register the works and then corpus assigns back the rights to the individual photographers otherwise the individual photograph wouldn't even be able to bring a lawsuit so it's a completely manipulated way to work around what really is the clear language of section four dollars and nine dollars which is the names of the authors have to be included and there's a reason for that right but you're asking us then to issue a ruling that will require every single photographer for every single photo to go running to the copyright office for registration right well there are the copyright office has procedures by which photographers can register groups of photos the copyright owners just like any other photographers just like any other copyright owner if they want the benefits of registration which are required to bring lawsuits and for statutory damages it has to go through this process and you can register large blocks of unpublished works but you have to put your name on the registration because the whole one of the whole purposes of the registration scheme was so that people could find out what's registered there be a public repository of information about registration so this idea that somehow you can get around this by registering thousands of photography is works and listing three names so that if you look at the copyright office records you won't even find mr soames name at least with respect to any of these and then on the on the position that this court should reconsider that ruling in light of the supreme court's decision in patrol law which at least cast doubt on whether that rule should apply and this court has the power to do that and i can speak of power to do was cast there are cases that say that if an intervening supreme court case casts doubt on the validity of a principle that this court has the power to reconsider its its decision but i don't really want to address the damage limitation issue because in this case there were one of the key questions that's come up and it's come up and in a lot of cases is whether or not how far back you can go if the discovery rule applies and what the five and get damages for that entire period and the supreme court and control act could not have been clearer that damages can go back three years and only three years from the time of infringement and while that's from the file i excuse me from the farmer filing and if if that bad language was entered to the holding a patrol or patrol it did not address the the issue of the statute of limitations issue directly it was a case about provision that you only have three years to bring a suit so under the entry rule or under the discovery rule damages should be limited to the three years prior to the filing of the lawsuit not twenty years in it it creates an absurd result where theoretically and i think we put this in our brief a plaintiff who discovered something that happened seventy years ago could suddenly come into court and say i get damages for all seventy years while somebody who diligently monitors their their copyrights would not be entitled to anything more than the last three years of entry so thank you so i think i've covered all all of the issues here from mr harmon for two minutes yes with respect to trollop a trauma that was talking about a plaintiff who knew about the infringements for ten years or sell it was the use of raging bull the movie and a screenplay and of course under those  as ms did until you know thirteen years or seven years after you've already known about the infringement and then bring your case well then damages would be limited to the three years before and it's simply a statement of limiting is what you're saying is that it's dictum it's more the dictates is flat out wrong with the discovery rule right it's not because they were a successful plaintiffs can gain retrospect relief only three years back from the time of suit no recovery may be had for infringement in earlier years profits made in those years remained the defendants to keep in a that's not true for the discovery rule that's not true for the discovery rule and they were wrong they just didn't understand it they just weren't very snotty no no they were very smart they were they were see i mean this in the context of a plaintiff who knew ten years before they file of the infringement but did not do anything argument for latches right is that it's unfair it's in equitable and the court said we don't need to deal with that because the statute limitations takes care of this image no need to worry about this kind of situation happening because three years is the maximum amount you can get damages for but with the discovery rule which the supreme court acknowledged the prevailing rule most circuits that would be wrong you can't go back that would there would it would be a right without a remedy it would be in effect  injury rule because who cares if you can bring your case but you don't get damages before that but the very important part there might be a reason for it for injunctive relief that's true correct but the important part in the statement by justice  bader ginsburg was that she's calling herself ginsburg protests that within the facts of patrol law you could not go back before more than three years and remember what was trying to  what they were trying to do in patrol law was say latches prevented even going back three years before the filing and the court said you don't need to the cert we don't need to assert latches because if you find out about your copyright infringement because it is an argument and to go to an injury rule it's an argument that when you know about infringements for ten years and you only bring your lawsuit you know seven years later you problem here is what mr what scholastics did in this case is to hide the infringements and make them and the secrete of the knowledge of them and still does today will not release and claims that these should not even be publicly known in documents filed in the district courts and they had the information regarding the infringements solely within their own knowledge the photographers and corbis had no knowledge of the overruns that were being done here and that's not to trial the trial is someone who had copyrights they saw the movie being produced everywhere used everywhere lots of different and titties producing it but did nothing and then finally after seven years or so her case so in that context with those facts yes you could only go back for three years before you filed the lawsuit and there was an attempt to make some general statements in that case we believe and that statement sponsors to the descends right not really in this context the context it was completely correct what justice ginsburg said because of the facts of the case because petroleum knew so long before she brought the suit of all the claims there's just one other couple of things i want to say if i could please no one pointed out and of course we had no opportunity to brief this that the p p a's preferred pricing agreements were only for two years so the two thousand and four agreement expired in two thousand  the two thousand and eight agreement expired in two thousand and ten so it didn't even cover the lion's share of the infringements claimed so even if the court were to follow judge at can in that sense there's only a small number t has ruled in the district court that you can't contract away your copyrights that you don't that copyright protection comes from the statute that your rights been vindicated the rights here are they that we control the distribution they don't control the distribution so you can have a contract remedy for certain things but you cannot essentially contract yourself out of copyright infringement here we have the opposite isn't that what a licenses for a limited period license absolutely and it says invoice and licensing agreements not just invoice invoice and licensing agreement and the terms and conditions are attached to the preferred pricing agreements so those terms and conditions that say more particularly what is the license are attached themselves to the p p a the invoice is then invoice and licensing agreement issued after that point in time and i just want to address the the registration issue what the alaska compilation can include collective works but the compilation is the arrangement of the collective works into some sort of creative feature database here it was a database wasn't just a collection created yes by corpus the database was created and then section one hundred and three dollars says to the extent of the creation of that collective you can get a copyright if it's creative enough but your copyright does not extend to the disc the individual works that are part of that creation unless you get ownership the reason you can't get a collection of baseball cards registered is you don't own the copyright if you did on the copyright you could do that but the point is and for nine what is what this alaska stock case said is the work that's being named the name of the work is not the individual works within the the collective it's the name of the collection so it was registered as corpus database number one that was the name of it every circuit that this looked at this and for that matter virtually every district court that's looked at it has rejected the case from the district court and accepted alaska stock