December 01, 2020 PROFILES IN IP LAW

An Interview with Regan Smith, General Counsel of the U.S. Copyright Office

Cassidy J. Grunninger

©2020. Published in Landslide, Vol. 13, No. 2, November/December 2020, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

I had the opportunity to (virtually) sit down with Regan Smith, the General Counsel of the U.S. Copyright Office. Having joined the Copyright Office in 2014, Regan was appointed to her current position in 2018. She generously offered her time to discuss some of the exciting things that have been going on at the Copyright Office and in copyright law in general.

I want to begin by congratulating you on your recent recognition by the IP World Review as an influential woman in IP.

Thank you! What a nice honor.

What is the Office of General Council’s function as opposed to other divisions in the Copyright Office, like international policy and registration?

The Copyright Office overall has responsibility for administering the copyright laws under title 17. That includes administering the services that the government offers, such as the national registration and recordation systems. We also advise Congress confidentially on copyright legislative matters, and provide support to other agencies, such as the Department of Justice, including when the government might get involved in litigation.

The General Counsel is one of four Associate Registers of Copyrights that report to the Register of Copyrights. Our office manages all litigation matters, both when the Copyright Office or the United States more generally might be a party to litigation and when the government may consider getting involved in litigation between private parties by filing an amicus brief before the U.S. Supreme Court, or in a lower court. The Office of General Counsel also has a primary responsibility to assist the Register in exercising the regulatory duties of the Copyright Office; this activity has increased in recent years partially because of some initiatives we are undertaking as an office and, in particular, because of the regulatory duties assigned to the office under the Music Modernization Act (MMA).

My office also advises other divisions in the Copyright Office in an “in-house counsel” type of role in connection with legal issues related to agency practices. We answer questions such as, “Should you accept this form? Does it need to be sent back so the applicant can provide more information that complies with the applicable regulation?” or “Does this meet the registration requirements?”

Finally, we also work closely with the Policy and International Affairs group on certain matters, because some legislative or policy considerations are closely tied to areas of our subject matter expertise. Some examples would be statutory licensing and music policy issues or legislative considerations stemming from litigation developments.

I noticed that the § 512 study was published, which is exciting because I actually worked on that when I was at the Copyright Office as an intern.

Yes, it’s been neat to see the interest in that report. That was certainly one where we played more of a supporting role to the Policy and International Affairs group, and we’re pleased to see it come out. We are looking forward to seeing what the next steps are as Congress looks at potential avenues for updates to the Digital Millennium Copyright Act (DMCA). In 2017, my group issued a companion policy study of § 1201, the other main piece of the DMCA, so it’s gratifying to have worked on a project and see it get out to the real world, as well as receive confirmation that somebody actually reads it!

It’s interesting to see the practical application that’s coming out of the study, and it’s not just theoretical policy. This is actually a good segue into the MMA that was recently passed and is starting to be enacted. Are there any aspects of the MMA that aren’t playing out as the Copyright Office thought they would or should, and are there any tweaks that you would like to see? Overall, how is the legislation playing out practically?

The Music Modernization Act is very dear to the Copyright Office’s heart because we conducted two policy studies that are referenced and were considered by Congress in adopting the MMA. One piece is title II, which concerns the protection and access for pre-1972 sound recordings. Right after the MMA’s enactment, the Copyright Office saw a flurry of activity because we had to onboard a lot of different filing mechanisms and establish different rules governing these new practices. There was also a compromise at the last minute between the legislation that initially passed the House and a draft bill introduced by Senator Wyden that more fully brought the treatment of pre-1972 sound recordings into the federal copyright scheme. We needed to educate the public on what is actually in the bill because it was still changing until shortly before it came up for a vote. After that initial six-month burst, it was fully implemented and has been operating smoothly—over 225,000 classic sound recordings have been recorded with the Copyright Office so far, and there is more certainty in the general marketplace regarding conditions for licensing and using these tracks.

The bigger piece of the MMA is title I, which concerns the establishment of a blanket licensing system for certain uses of musical works under § 115 of the Copyright Act, such as songs used by interactive streaming services. This blanket license will be administered by a new collective, called the “mechanical licensing collective,” that was designated by the Copyright Office following a public process. The collective will be responsible for receiving royalties from digital music services, processing and paying the correct copyright owners whose works have been played on these services, and maintaining a public database of information related to musical works and related ownership information.

I guess the only surprising thing about it is just really experiencing firsthand that the devil’s in the details on some of the issues that have arisen in the implementation of this new law. The MMA passed unanimously, but in many provisions of the law, the Copyright Office is directed to issue regulations to help effectuate the switch from a song-by-song statutory licensing system to this blanket licensing system administered by the new mechanical licensing collective. There’s a lot of business considerations and legal and policy interests to be balanced, such as: What specific metadata and other information should digital services be required to provide to this new collective so that it has enough detail to administer this new license? What information, in turn, should the collective be required to report out to copyright owners on monthly royalty statements? What’s in this new public database? This new database is definitely a differentiator, I think, in the MMA’s structure compared to the way other countries might administer similar collectives because there will be a free publicly available database that is hoped will promote transparency in the music data area.

So we have a lot of regulatory activity going on now, which, by the way, is all on the website for anyone who is interested in accessing this information. The transition period ends on January 1, 2021, when the collective opens its doors. As directed by the statute, we have also initiated a policy study seeking best practices that the mechanical licensing collective can consider in figuring out how to locate and identify copyright owners, including independent songwriters, who might not even realize that they’re entitled to royalties under the statutory license, and encourage those copyright owners to come forward and claim those royalties. Reducing the incidence of these unattributable royalties is a main goal of this legislation and a main goal for this new collective. The Copyright Office is embarking on our own educational activity too, and it’s been interesting to hear from all different corners of the music industry, including musicians themselves, where copyright can really affect their interests. We are trying to translate this relatively complicated portion of the copyright law so that it is not confusing, and it is actually actionable and practical, and, for a musician’s life, can be viewed as a reliable source of revenue. It is a good challenge.

There’s been a flurry of recent copyright-based cases, both at the Supreme Court, with Fourth Estate v. Wall-Street.com, and the lower courts, with cases like Skidmore v. Led Zeppelin. It seems like more copyright cases have gotten attention in bigger legal arenas recently. Are there any cases that you find to be more impactful or important to the practical nature of copyright practice, or are there any that are interesting because of the legal theories and policies that they’re exploring?

Yes, it’s been a very active period for copyright litigation, and some of those decisions, I think, are very impactful. The Led Zeppelin litigation is an example: it got to an en banc decision in the Ninth Circuit Court of Appeals, and it also came at a moment where there was at least a reported perception of an uptick in music infringement cases and a musing of whether this increase in litigiousness was affecting the creation of music. The government submitted an amicus brief concerning two issues in the litigation, and the ensuing decision was consistent with the views expressed in that brief. The first issue involved the scope of a registered copyright interest concerning works deposited with the Copyright Office under the 1909 Copyright Act. The law has always required registrants to provide a complete copy to the Copyright Office, with some limited exceptions, and so the material deposited with the office is the entirety of the registered work. The second issue concerned the minimal requirements for copyrightability and argued that standard musical elements are not protected by copyright, and the brief submitted argued that the selection and arrangement of a small number of such elements would be entitled to, at most, a thin copyright. The Ninth Circuit upheld the verdict in favor of Led Zeppelin, and it does seem to be an impactful decision.

A week after the opinion came out, a court in a separate lawsuit involving a Katy Perry song cited that ruling when finding that none of the individual elements that comprised an ostinato were independently protectable, nor was the specific combination of those elements in the plaintiff’s song, and dismissed the claim against Perry.

Do you think that if the Led Zeppelin case had come out before the “Blurred Lines” case, it would have impacted the outcome of the case?

It does seem like the Led Zeppelin case was coming on the heels of a sort of nervousness about whether that decision went too far. I don’t know whether if you flipped the order, it would come out differently, but it would have at least clarified the issue with respect to consideration of works deposited with the Copyright Office, which arose in that earlier litigation as well.

On the subject of cases in general, I know that the Copyright Office has been working for some time trying to set up a small claims court to make some of the copyright infringement cases more accessible to smaller creators. What is the status of implementing the small claims court, and where do you think the future is going with that?

The Copyright Office has always been supportive of finding a forum for copyright owners to hear or settle their disputes over smaller dollar value claims. We issued a policy study in 2013 that proposed setting up a three-officer voluntary tribunal in the Copyright Office to resolve claims for damages up to $30,000 in the proceeding or $15,000 per work, or lower if the copyrighted work at issue was not registered within the window for statutory damages under § 412.

The recommendations have been translated into legislation (Copyright Alternative in Small-Claims Enforcement Act of 2019 (CASE Act)) that, in July 2019, passed the Senate Judiciary Committee and passed the full House in October 2019. It does seem like it is a proposal that is getting closer to the finish line. So, we are watching to see what might happen. The bill provides that all of the hearings and discovery required will happen virtually—you wouldn’t have to come to Washington, D.C. I was thinking about that recently because now we’re all working virtually, and it’s going fairly well. There may be a little more confidence in the reliability of distant adjudicative models—it looks like everyone’s used to getting on a WebEx or Zoom and conducting meetings that way.

And we’re thinking about if the legislation were enacted, what we would need to do to get the system set up. The Copyright Office would not control the information technology piece, as IT has been centralized at the Library of Congress, but the Copyright Office would have to hire people, promulgate regulations, and establish a slew of new workflow procedures. Part of how we were able to implement title II of the MMA so effectively (again, that piece required the office to establish a variety of different filings) was by planning in advance before the legislation passed. So we don’t have a ton of extra time on our hands, but we are starting to think ahead so that we’d be ready to move to implementation mode successfully if necessary.

That would be very exciting, and, I think, useful. Paired with potential tweaks to § 512, it could really be an effective way to help smaller creators and entertainers protect their copyrights in a real and meaningful way.

Yes, I think that’s true. Right now, the Copyright Office has heard that many copyright owners say, “Well, people just blow us off,” when they are trying to address infringements of their work, even verbatim copying, highly commercial uses. For some smaller dollar value creators, the cost of litigation is so high that some creators told the Copyright Office they are effectively left with a right without a remedy. And I also believe the same tribunal concept could help address concerns of other stakeholders as well. It is important to ensure that users, those making fair use claims, are also being heard in the system. The draft CASE Act would allow claims to be brought for a declaration of noninfringement, as well as claims actionable under § 512(f) for material misrepresentations in the notice-and-takedown process.

Do you think that the small claims tribunal would help curb some of the recent issues with copyright trolls and mass registrations?

Yes, to the extent there is a concern over abusive practices, I think it potentially could. Under the bill, the Copyright Claims Board would have the ability to throttle repeat filers so that there is a fair allocation of participation in the system in accordance with the tribunal’s resources by establishing regulations related to the permitted number of proceedings each year by the same claimant. So that provision might be expected to curb instances of excessive or abusive filing within the small claims tribunal.

And keep in mind that one goal would be to facilitate reasonable licensing transactions, where the current marketplace may be distorted by prohibitive litigation costs. It wouldn’t necessarily be that the Copyright Claims Board is adjudicating all these claims, but its existence might encourage self-resolution of disputes. This is what has seemed to happen in places like the U.K., which has a small claims process that can hear copyright disputes.

I think that would help with the mitigation of some of these issues and incentivize people to avoid litigation to protect their copyright. So, are there any interesting cases that the Copyright Office is watching go through the courts right now that you think people should know about or are just interesting in general?

Well, we are coming off the heels of two opinions before the Supreme Court. The Georgia v. PublicResource.org opinion settled some, but not all, of the interesting questions in this area, specifically concerning the scope of the government edicts doctrine, in holding that the annotations beneath the statutory provisions in the Official Code of Georgia Annotated are ineligible for copyright protection. There are other cases percolating now in appellate courts that relate to adjacent issues, including issues relating to model standards and codes created by third-party organizations. We’re obviously looking at Google v. Oracle, where oral argument was moved to the upcoming October term. The government has submitted three amicus briefs at various stages in this litigation. Many of the copyright-related amicus briefs, including these, are available on the Copyright Office’s website, which I turn to as a useful resource quite often.

I thought Allen v. Cooper, the recent case regarding copyright immunity for states, was interesting because of the potential implications that arise from this decision. Many states—for example, California—solicit tourism through commercials and advertising. Does that mean that they can use music or other types of copyrightable material at will without risk of an infringement suit? Do you think that there are any unforeseen consequences—especially pertaining to entertainment—from the immunity that was reaffirmed in this case?

That opinion, and its potential impact, relates to a public policy study we are currently conducting. I think you put your finger on it, that the opinion could have some real consequences with respect to uses of copyrighted materials by state actors. And the hypotheticals you raise about the state of California were similar to those raised by Justice Breyer during the oral argument, who mused about the state of California streaming Marvel movies for entertainment value. While that scenario may be unlikely, one can probably think of more real-world examples where states may now be incentivized to use copyrighted works that would otherwise be subject to licensing for other actors, which raises a question whether this is an appropriate outcome from a policy perspective. To go back to the opinion, the Court rejected the two potential bases raised by Allen to find that Congress had successfully abrogated sovereign immunity. The Court held that Article I of the U.S. Constitution, the intellectual property clause, could not provide a basis for abrogation, and that in enacting the Copyright Remedy Clarification Act (CRCA), Congress did not identify a pattern of unconstitutional copyright infringement to validly abrogate state sovereign immunity pursuant to section 5 of the Fourteenth Amendment. While that holding was based on the legislative record of the CRCA, the opinion also stated that its holding “need not prevent Congress from passing a valid copyright abrogation law in the future,” and touches upon how a different legislative record might be able to support future legislation.

Following that opinion, in April, the Copyright Office received a request to study the extent to which copyright owners are experiencing infringements by state entities without adequate remedies under state law, including the extent to which infringements are based on intentional or reckless conduct. The issue of whether intentional conduct is occurring without an adequate state remedy is relevant when considering section 5 bases for abrogation. We have initiated a notice of inquiry seeking public input on the current landscape as well as potential impacts of this decision prospectively. We’re hoping to get good input, including empirical data, if possible, and to hear from a wide variety of perspectives, including state actor perspectives.

Is there anything else happening right now that’s really exciting you in the realm of copyright?

It’s really been such a busy time for copyright lately, both at the Copyright Office and the larger conversation. It’s striking that, even with everything else going on, Congress is conducting multiple hearings about moving copyright law forward. When I joined the Copyright Office, the copyright review process was just concluding, and that involved 100 hearings comprehensively looking at different aspects of the law. Then, the MMA emerged as an important, consensus-driven piece of legislation; but as in-depth as the MMA is, it’s directed at only a few specific aspects of music copyright law. I came to the Copyright Office to participate in the conversation about how the law might be updated for the digital age, and now I have a front-row seat to witness not only how ambitious a project that really is but also the importance of the task. Overall, I am optimistic.

Do you have any advice for students or young lawyers who want to pursue copyright law more in-depth or who are interested in learning more about it in general?

Yes, I think the Copyright Office itself is coming up with better and better resources for copyright legal education. So, if there are things that are missing, I think we’d want to know where we can be helpful, as our Public Information and Education group has issued a lot of useful educational materials in various mediums in recent years.

I started practicing in Chicago, and I found the IP bar, and copyright practitioners especially, pretty welcoming as a younger attorney if you signal your interest and show that you’re committed to developing a practice in this area. It’s usually not too hard to find people willing to mentor and to help you. One of the most gratifying experiences I had that I think about frequently was volunteering at the local volunteer lawyers for the arts (VLA) organization there. That experience helped me see in very practical terms what copyright attorneys can do to help facilitate the creation and sharing of artistic works, and appreciate different needs of the creative community. And for younger attorneys who are looking to do more copyright law, but maybe their day job doesn’t involve copyright issues as much as they’d like, that’s a way to get involved—VLAs always need help.

Those are some really good suggestions! Thank you again for taking the time out of your busy schedule.

Well, thank you so much for asking.

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Cassidy J. Grunninger is an associate at Dunner Law in Washington, D.C., specializing in copyright and trademark law.