This largely ministerial² act has become a battleground. The courts are interpreting general statements in the applications, exactly the kinds of statements recommended by the U.S. Copyright Office, and construing the copyright registration like a patent, as if terse statements on a barebones form fully describe the metes and bounds of the copyright itself. The court then concludes that the applicant failed to provide enough detail, hence the work is not registered, and dismisses the suit.

But that is not the role of copyright registration. The Copyright Office can’t be passing judgment on the scope of the copyright in the registration process because it is far too complicated a question. Rather, copyright registration is a notice system, not a claiming system. Determining the scope of the copyright in the infringed work is more suited to the infringement analysis than the threshold question of whether the work is registered.

The Role of Registration

The purpose of registration is to create and maintain a public record of America’s cultural and historical heritage,³ to support the Library of Congress by obtaining works for the Library’s collections,⁴ and to establish what a work was at the time of registration, facilitating the adjudication of infringement claims.⁵

The last purpose, however, is not a mandate to perform any substantive analysis of a given work at the time of registration, but simply to create a record of what the work is for the benefit of copyright owners and those who might want to use copyrighted works. For the owners, registration is proof of the existence of and facts about their works at a particular point in time. For users of the copyright system, the registration provides information on the existence and basis of a claim of copyright ownership and the extent of a claim in general terms, such as whether it is a new version of a preexisting work.⁶

The Supreme Court explains how the registration is relevant in an infringement suit this way:

Key evidence in the litigation . . . will be the certificate, the original work, and the allegedly infringing work. And the adjudication will often turn on the factfinder’s direct comparison of the original and the infringing works, i.e., on the factfinder’s “good eyes and common sense” in comparing the two works’ “total concept and overall feel.”⁷

Note what the court is recognizing here: evidence of the copyright is in the certificate and the original work itself, not just what the certificate describes.⁸

But even those may not fully define the copyrighted work. A copyright infringement claim is for an intangible, which the application form and associated identifying materials may not even have captured completely:

Harmony suggests that because Scentsy’s identification materials did not disclose every element of its warmers in which it now claims a copyright, Scentsy cannot claim protection in those elements. Some history of the Copyright Act is helpful in understanding why that is not the case.

Under the Copyright Act of 1909, federal copyright protection attached only upon publication, and even then, only if proper notice, registration, and deposit occurred. However, the Copyright Act of 1976 changed the copyright landscape to vastly increase the scope of works subject to copyright protection. Now, by the very terms of the Act, registration is not a requirement of protection. Rather, to the extent that Scentsy’s warmers contain copyrightable elements, those elements gained copyright protection from the moment of their creation.

Likewise, the registration requirement does not limit the Court’s authority to protect Scentsy’s copyrights to their full extent. . . . [C]ourts engage in an independent evaluation of the full panoply of copyright infringement issues in such a suit. This is so because Congress enacted the permissive registration requirement to fulfill its interest in having a robust federal register of copyrights, not to give the Register the opportunity to pass final judgment on the question of a work’s copyrightability.⁹

The Fourth Circuit has also long recognized that copyright protection and copyright registration are two different things: “We note at the outset that our consideration of the parties’ arguments is complicated by their conflation of copyright protection and copyright registration. These are two entirely distinct matters, governed by separate sections of the Copyright Act.”¹⁰

Registration practice is consistent with a notice role rather than a claiming role. The register of copyrights, who is the head of the Copyright Office, decides what information is needed for purposes of registration. Section 409 of the Copyright Act lists some types of information that the register must collect,¹¹ but the register is also authorized to collect “any other information regarded by the Register of Copyrights as bearing upon the preparation or identification of the work or the existence, ownership, or duration of the copyright.”¹² For example, on Forms PA and VA for registering works of the performing arts and visual arts, respectively, the register asks for a description of the “nature of this work,” which is not required by § 409.¹³ The register also creates administrative classifications for different types of works¹⁴ and designs the forms.¹⁵

The register also has discretion in deciding what sample of the work is required for purposes of registration. Sometimes an applicant does not even have to give the Copyright Office the actual work: some kinds of works aren’t made in multiple copies, so what is deposited—“identifying material”—is only a representation of the work.¹⁶ Something will therefore be lost in the translation—for example, reducing a building-sized sculpture to a set of two-dimensional photographs may not convey the true proportions of the work. For software, there isn’t any effort by the Copyright Office to capture a copy of the complete work, because only a few pages of code are required as identifying material.¹⁷

Where courts tend to err is when the copyright in dispute has both preexisting and new material. On the older paper forms,¹⁸ there is only room for a few lines of description (see fig. 1).

The examples given for “Preexisting Material” in the instructions are quite short, suggesting “Grunewald Altarpiece” or “19th century quilt design.”¹⁹ One might describe the “Material Added to This Work” as “Reproduction of painting by photolithography” or “Additional cartographic material.”²⁰

The Copyright Office now encourages e-filing,²¹ and the online application gives the applicant even less discretion in what information he or she can provide. Reporting preexisting materials (now called “Material Excluded”) consists largely of checkboxes and a very short text field for “Other” (see fig. 2).

So the register collects enough information to satisfy a notice function, but the Copyright Office can’t make any judgment about the scope of the copyright—it doesn’t have enough information, because it hasn’t asked for it, to measure the scope of the copyright in the applied-for work. Further, the register does not have the authority to ask for copies of preexisting materials, nor does the form ask questions about other ways in which the scope of the copyright might be limited, like the extent to which a photograph of a notable rock formation is limited by where one can stand to take the picture. Considering a question like that is part of the substantive analysis of both originality and similarity.

There are other reasons why the Copyright Office can’t determine the scope of the copyright as part of the registration process. As a general matter, the Copyright Office does not make any comparison between an applied-for work and any preexisting work.²² To therefore suggest that a copyright examiner can ascertain the scope of the copyright merely by looking at a certificate and a deposit without viewing it in the context of the industry, or even perhaps the specific lawsuit, is too simplistic. For example, in the case of an application for software, even if the examiner has all the code, he or she likely would not know whether parts of the software are scènes à faire, i.e., elements of a program dictated by practical considerations such as hardware standards, compatibility requirements, industry practices, or standard computer programming practices.²³ Nor would the examiner have been made aware of these limitations, because the claimant is not required to identify what parts of its work are uncopyrightable, only preexisting. It therefore cannot be that the Copyright Office is making judgment calls on the scope of the copyright in any given application.

Finally, not all works that are the subject matter of infringement suits will have been examined by the Copyright Office. No registration is required to bring suit for infringement of a work unless it is a “United States work,”²⁴ i.e., not a foreign work. So in infringement cases involving foreign works, there will be no opinion one way or another from the Copyright Office.

Therefore, when the Copyright Office examines and allows a registration, it is not opining on the scope of the copyright covered by any given registration. And indeed, while the registration is only for new work,²⁵ the application does not, and is not meant to, identify what that is with any degree of specificity.

What the Courts Are Getting Wrong

There are several examples where courts have assumed that the Copyright Office has considered the scope of the claim during registration when it has not. In Rich & Rich Partnership v. Poetman Records USA, Inc., the applicant identified preexisting material as “some sound recording” and the material added as “[c]ompilation of sound recordings . . . with some new sound recording.”²⁶ The court said this registration was “unenforceable”:²⁷

The registration form asked Rich & Rich to “[i]dentify any preexisting work or work that this work is based on or incorporates.” In response, Rich & Rich identified, “some sound recording.” Rich & Rich did not identify Chandler’s original rendition of “My Old Kentucky Home” in its response. The Copyright Office, without knowing what the pre-existing work was and which track contained the remix, could never have determined whether Rich & Rich’s contribution to the Chandler rendition qualified as a derivative work. . . . This error prevented the Copyright Office from fully evaluating the application.²⁸

Similarly in Olander Enterprises, Inc. v. Spencer Gifts, LLC, the court held that a registration for a catalog containing images of belt buckles was inadequate because it did not identify exactly which belt buckles had also been in earlier catalogs, even though they were identified in the “preexisting works” box by the copyright registration number (see fig. 3):

Not only are the copyright examiners’ abilities to catch improper inclusions among hundreds of works in a multiple work registration limited by time and resource constraints, but also those limitations are exacerbated by the ex parte nature of the application process, which does not provide an opportunity for another creator of a similar work to object to the inclusion of a particular work on the grounds that he or she has already created a similar work.²⁹

But, of course the Copyright Office doesn’t decide what the derivative portion of a derivative work is, or what the new constituent parts to a compilation are. Nevertheless, the defendants’ collateral attacks on the form itself, treating the form as a description of the scope of a copyright registration rather than as a simple notice of claim, was successful.

AFL Telecommunications LLC v. SurplusEQ.com Inc.³⁰ is an egregious example of a court’s misunderstanding of the copyright registration system, misconstruing the relevance of statements in a registration because of a simple change in the Copyright Office form. AFL Telecommunications alleged infringement of the copyright in a later version of software when the earlier version wasn’t registered. This is a common fact pattern, well-settled in Streetwise Maps, Inc. v. VanDam, Inc.³¹ In Streetwise Maps, the defendant argued that the registration for the derivative work meant that the infringement claim could be only for the new material—some subway and bus notations—that was added to the previously existing street maps. The court disagreed. In what later came to be called the “effective registration doctrine,” it held that a registration of a derivative work is sufficient for purposes of alleging infringement of the underlying original work also.³²

All we know about Streetwise Maps’ registration is that it was “derivative of a ‘Streetwise Manhattan map carrying a copyright notice date of 1984, 1985.’”³³ In comparison, the AFL Telecommunications registration for its derivative version of the software stated, “Material excluded from this claim: Previous version” (see fig. 4). The words “[p]revious version” were used because the Copyright Office suggests this language,³⁴ and the form described the previous version as “excluded material” rather than “preexisting material” because the Copyright Office simply changed some wording on the online application form.

But the court held that, unlike in Streetwise Maps, where the registration named the preexisting work, AFL Telecommunications’ registration specifically excluded the preexisting work, and thus “AFL has failed to satisfy the registration requirement with regard to any previous version of the software.”³⁵

While this may seem logical on its face, it is wrong. The only difference between the AFL Telecommunications registration and the Streetwise Maps registration was simply a change in the Copyright Office’s design of the forms. The AFL Telecommunications plaintiff did not have any different scope of copyright infringement claim, as that scope has been defined by case law,³⁶ than the Streetwise Maps plaintiff did. The court therefore erred in distinguishing this case from Streetwise Maps on the basis of the uneditable form language of the copyright application that was filled out exactly right by the copyright owner.

Not all courts have been so unforgiving, however. In Skyline Design, Inc. v. McGrory Glass, Inc., the court understood the challenge of a check-box, fill-in-the-blank form: “Although it would have been helpful for Skyline to go into more detail in describing its work, the Registration form provides very little room for detail—as it is, Skyline’s terse description uses all of the space available.”³⁷ Instead, the court also considered the deposit when deciding what had been registered:

To be sure, Skyline’s deposited material does contain greater detail about the work than the application, but this will nearly always be the case. A description of a work will never encapsulate that work as perfectly as a photograph or copy of the work will. This cannot be a basis for limiting the scope of the registration to exclude any detail left ambiguous on the registration but clarified in the deposit.³⁸

Course Correction

What is particularly surprising is that courts do not have the authority to invalidate a registration without first asking the register of copyrights for an opinion.³⁹ But for some reason this provision is not invoked, despite its mandatory nature. Had the Rich & Rich and Olander Enterprises courts sought an opinion, the courts’ misunderstanding of the Copyright Office’s review of applications might have been corrected.

The Ninth Circuit also made a recent course correction in a different registration-related battleground—a theory that the component works in a database of photographs were not registered because the application did not list the authorship of every single photograph in the collection. Several district courts, including the U.S. District Court for the District of Alaska, reached this legal conclusion even though the procedure for registration of large collections of photographs had been worked out between the photography industry and the register. They agreed that listing only three individual photographers by name, followed by the phrase “and x [number] others” was acceptable practice when the accompanying deposit contained all the photographs. For registrations of this type, a copyright examiner would understand the filing to mean that the claim being registered would include the catalog and extend also to the photographs themselves.⁴⁰

The Ninth Circuit reversed the Alaska court and said about the role of the Copyright Office:

The procedure applied for over three decades by the Register of Copyrights to registration by stock photo agencies complied with the statutory requirements and did not violate any clear requirement to list individual authors and titles of the components within the work. While arguably the statute could be read otherwise, the Register of Copyrights’ reading ... was reasonable and persuasive....

. . . .

We are not performing a mere verbal, abstract task when we construe the Copyright Act. We are affecting the fortunes of people, many of whose fortunes are small. The stock agencies through their trade association worked out what they should do to register images with the Register of Copyrights, the Copyright Office established a clear procedure and the stock agencies followed it. The Copyright Office has maintained its procedure for three decades, spanning multiple administrations. The livelihoods of photographers and stock agencies have long been founded on their compliance with the Register’s reasonable interpretation of the statute. Their reliance upon a reasonable and longstanding administrative interpretation should be honored. Denying the fruits of reliance by citizens on a longstanding administrative practice reasonably construing a statute is unjust.⁴¹

This concern is equally applicable to any issue that involves the way in which one complies with the register’s instructions on registering a copyright.

The Correct Interpretation of the Registration Requirement

The purpose of a registration is largely for society’s benefit and to maintain a body of evidence, albeit not to interpret it. All that a court should ask about registration is whether the allegedly infringed work is encompassed by what is shown in the registration form and the deposit or identifying materials. If so, then the registration requirement has been met. Any questions about the scope of the copyright are part of the substantive infringement case, to be decided following well-settled case law applied in the greater context of preexisting materials, the industry, and limitations inherent to the medium and content. To address all of this as a question about whether the copyright was claimed properly on a brief form short-circuits the analysis and strips good-faith plaintiffs of rights in a way that was never intended. Challenges to registration per se should be limited to the rare case where there was an inaccurate statement knowingly made that caused the register of copyrights to issue a registration that shouldn’t have issued—in other words, where a plaintiff got a day in court through intentional wrongdoing. Anything else has the registration doing much more heavy lifting than it is designed to do.

Endnotes

1. One does not have to have a registration if the work is not a “United States work” as defined in 17 U.S.C. § 101 or if an application for registration was filed but registration was denied. 17 U.S.C. § 411.

2. Caruthers Berger, Copyright Office, Studies Prepared for the Subcomm. on Patents, Trademarks, and Copyrights of the S. Comm. on the Judiciary, 86th Cong., Study No. 18: Authority of the Register of Copyrights to Reject Applications for Registration 94 (Comm. Print 1960), available at http://www.copyright.gov/history/studies/study18.pdf.

3. U.S. Copyright Office, Circular 1a, A Brief Introduction and History, www.copyright.gov/circs/circ1a.html (last visited Oct. 14, 2014); S. Rep. No. 100-352, at 19 (1988), reprinted in 1988 U.S.C.C.A.N. 3706, 3724; H.R. Rep. No. 100-609, at 42 (1988).

4. Circular 1a, supra note 3; S. Rep. No. 100-352, at 19.

5. Brief for the United States of America as Amicus Curiae in Support of Reversal at 19, Bean v. Houghton Mifflin Harcourt Publ’g Co., No. 10-16771 (9th Cir. Dec. 13, 2010); see also 3 William F. Patry, Patry on Copyright § 6:7 (2014).

6. H. Comm. on the Judiciary, 87th Cong., 1st Sess., Report of the Register of Copyrights on the General Revision of the U.S. Copyright Law 72 (Comm. Print 1961), available at http://www.copyright.gov/history/1961_registers_report.pdf.

7. Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S. Ct. 1962, 1977 (2014) (quoting Peter F. Gaito Architecture, LLC v. Simone Dev. Corp., 602 F.3d 57, 66 (2d Cir. 2010)).

8. See also U.S. Copyright Office, Compendium of U.S. Copyright Office Practices § 602.4(A) (3d ed., public draft 2014) [hereinafter Compendium III], Article no longer available (stating that the materials used for examination are “the application, the deposit cop(ies), the filing fee, all other material that has been submitted to the U.S. Copyright Office, and all communications between the applicant and the Office relating to the registration of the claim”).

9. Scentsy, Inc. v. B.R. Chase, LLC., 942 F. Supp. 2d 1045, 1050–51 (D. Idaho 2013) (citations omitted) (internal quotation marks and alteration omitted).

10. Metro. Reg’l Info. Sys., Inc. v. Am. Home Realty Network, Inc., 722 F.3d 591, 595 (4th Cir. 2013); see also Christopher Phelps & Assocs., LLC v. Galloway, 492 F.3d 532, 538 (4th Cir. 2007) (“Galloway’s position misunderstands a fundamental precept of copyright law, that a copyright is independent of its registration.”).

11. 17 U.S.C. § 409.

12. Id. § 409(10).

13. Registration of Claims to Copyright, 65 Fed. Reg. 41,508 (July 5, 2000).

14. 17 U.S.C. § 408(c)(1).

15. Id. § 409.

16. Id. § 408(c)(1); 37 C.F.R. § 202.21; U.S. Copyright Office, Circular 40A, Deposit Requirements for Registration of Claims to Copyright in Visual Arts Material 2 (Sept. 2012), available at http://www.copyright.gov/circs/circ40a.pdf.

17. U.S. Copyright Office, Circular 61, Copyright Registration for Computer Programs 3 (Aug. 2012), available at http://www.copyright.gov/circs/circ61.pdf.

18. See, e.g., Copyright Office, Form VA 4 (May 2012), available at http://www.copyright.gov/forms/formva.pdf.

19. Id. at 2.

20. Id.

21. eCO Registration System, U.S. Copyright Office, http://www.copyright.gov/eco/ (last visited Oct. 14, 2014) (noting the advantages of e-filing, such as faster processing and credit card payment).

22. Copyright Office, Compendium II of Copyright Office Practices § 108.03 (1984) [hereinafter Compendium II], available at http://www.copyrightcompendium.com/compendium-two-smaller.pdf (“The Copyright Office does not generally make comparisons of copyright deposits to determine whether or not particular material has already been registered.”); Compendium III, supra note 8, § 602.4(C) (same). This was also true under the Copyright Act of 1909:

It would manifestly not be feasible to examine and compare the work submitted for registration and all existing works which it might conceivably plagiarize. Moreover, similarity between two works does not prove plagiarism (see, for example, Alfred Bell & Co. v. Catalda Fine Arts, Inc., 191 F. (2d) 99 (2d Cir. 1951)). In relative rare cases the Copyright Office examiners may recognize the material submitted as apparently being an old work, e.g., the Lord’s Prayer or a mere quotation from the Bible or Shakespeare; and in such cases inquiry is made of the applicant as to the element of originality.

Berger, supra note 2, at 93 n.38.

23. See, e.g., Lexmark Int’l, Inc. v. Static Control Components, Inc., 387 F.3d 522, 535 (6th Cir. 2004) (characterizing these considerations as “scenes a faire”).

24. 17 U.S.C. § 411.

25. See Compendium II, supra note 22, § 108.04 (stating that “the copyright claim as reflected in the application should generally be limited to the new material covered by the claim being registered” and calling on the applicant to identify material to which the claim does not extend); Compendium III, supra note 8, § 621.1 (stating that “[a] registration for a work of authorship extends only to the new material that the author contributed to that work” and instructing the applicant to identify “unclaimable material”).

26. 714 F. Supp. 2d 657, 664–65 (E.D. Ky. 2010).

27. Note the choice of “unenforceable” versus “invalid.” As discussed infra at note 39 and accompanying text, a court should not be invalidating a registration without first asking the register of copyrights for an opinion.

28. 714 F. Supp. 2d at 664 (footnote omitted) (citation omitted).

29. 812 F. Supp. 2d 1070, 1077 (C.D. Cal. 2011).

30. 946 F. Supp. 2d 928, 941 (D. Ariz. 2013).

31. 159 F.3d 739 (2d Cir. 1998).

32. Id. at 747.

33. Id. at 746.

34. Circular 61, supra note 17, at 1.

35. AFL Telecomms., 946 F. Supp. 2d at 941.

36. According to a 2014 unpublished decision in the Fifth Circuit, Streetwise Maps is still good law: “This position has been recognized by at least five circuits and by district courts in two others.” Aspen Tech., Inc. v. M3 Tech., Inc., 569 F. App’x 259, 269 (5th Cir. 2014) (unpublished opinion) (footnotes omitted) (citing Streetwise Maps).

37. No. 1:12-cv-10198, 2014 WL 258564, at *4–5 (N.D. Ill. Jan. 23, 2014).

38. Id. at *5 n.4.

39. 17 U.S.C. § 411; DeliverMed Holdings, LLC v. Schaltenbrand, 734 F.3d 616, 624 (7th Cir. 2013) (remanding for register’s opinion, despite affirming the district court’s conclusion that the copyright was not owned by the person who filed the application).

40. Alaska Stock, LLC v. Houghton Mifflin Harcourt Publ’g Co., 747 F.3d 673, 676–77 (9th Cir. 2014).

41. Id. at 685–686.