Catalog descriptions can afford enforceable copyright protection

But only if you register them first.  So says Fischer-v-Forrest (Nos. 18-2955-cv, 18-2959-cv, August 4, 2020, 2nd Circuit Court of Appeals)

Background

Fischer, the plaintiff-appellant, had invented a honey harvesting product called Bee-Quick.com, and registered a copyright for his website, including a brochure, on February 7, 2011.  Defendants-appellees, Sandra and Stephen Forrest and their mail order business Brushy Mountain Bee Farm et al., sold Bee-Quick for many years.  Fischer’s product was described in Brushy Mountain’s catalogue as follows:

This 100% natural non-toxic blend of oils and herb extracts works just like Bee Go and it smells good!  Fisher’s Bee Quick is a safe, gentle, and pleasant way to harvest your honey.  Are you tired of your spouse making you sleep in the garage after using Bee Go?  Are you tired of using a hazardous product on the bees you love?  Then this is the product for you!

Fischer also sold Bee-Quick on his own website with a description that included the following phrases:

Are you tired of your spouse making you sleep in the garage after using Butyric Anhydride?  Are you tired of using hazardous products on the bees you love?  Fischer’s Bee-Quick is a safe, gentle and pleasant way to harvest your honey… A Natural, Non-Toxic Blend of Oils and Herbal Extracts.

Around 2010, Brushy Mountain replaced Fischer’s product with one of its own, called Natural Honey Harvester.  Brushy Mountain’s January 2011 catalogue described Natural Honey Harvester as follows:

For years we have promoted the use of a natural product to harvest honey but an unreliable supply of such a product has forced us to come out with our own.  This 100% natural, non-toxic blend of oils and herb extracts works just like Bee-Go and it smells good!  Natural Honey Harvester is a safe, gentle and pleasant way to harvest your honey.  Are you tired of your spouse making you sleep in the garage after using Bee Go?  Are you tired of using a hazardous product on the bees you love?  Then this is the product for you!

District Court Action

Fischer initiated the action, alleging copyright infringement and the unlawful removal of CMI, opting for statutory damages.  The district court held that section 412 of the Copyright Act barred the recovery of statutory damages because the alleged infringement predated the registration, and denied Fischer’s CM claim on the basis that the changes Brushy Mountain had made to its catalogue did not constitute the remove of CMI.  Fischer appealed.

US Court of Appeals for the 2nd Circuit

The Court first explained that a copyright infringer can be held liable for either actual damages and profits obtained, or for statutory damages.  Fischer elected statutory damages, which are precluded for “any infringement of copyright in an unpublished worked commenced before the effective date of its registration” or “any infringement of a copyright commenced after first publication of the work and before the effective date of its registration under 17 USC §412.

Brushy Mountain argued that there were pre-registration infringing acts, while Fischer argued to the contrary.  Unfortunately, Fisher’s own pleadings contradicted this argument.  When confronted with this inconvenient fact, Fischer pivoted to arguing that the pre-registration acts had been licensed, and therefore were not infringing.  Fischer failed to persuade the Court of the former and also failed to establish the existence of the alleged license.

Finally, the Court held that the edits made by Brushy Mountain to the catalog description did not constitute removal of CMI, since the verbiage removed did not constitute CMI.