The muddied state of general Supreme Court jurisprudence on deference to agency actions, coupled with misconceptions held by a few courts about the registration process, has led to a confused state of affairs on deference to Copyright Office actions. The issue was presented recently in Darden v. Peters, 2007 WL 1501355 (4th Cir. May 24, 2007).
The flashpoint for Copyright Office deference is registration determinations, either individually in the exercise of an examiner's understanding of the basic registration requirements, or more globally in the form of registrations promulgated by the Office. The Copyright Act imposes obligations on the Copyright Office to examine applications for registration and to accept or reject them (section 410). Those determinations are to be made “in accordance with the provisions of this title,” meaning that Congress has delegated to the Office interpretation of registration questions, yet while still leaving the ultimate question of protectibility to the courts. This has created a unique hybrid situation, where regulations promulgated by the Office should be governed by Chevron, but whether any particular material is subject to protection will be decided by the courts, placing the Office's prior determination into either Skidmore or no deference. This hybrid is not accidental, and reflects the important distinction between “registrability” (the province of the Copyright Office) and “copyrightability” (the province of the courts).
An additional complicating factor is the presence of the statutory presumption in section 410(c). Section 410(c) provides prima facie status to a certificate of registration obtained within five years of first publication. When reviewing an issued certificate it seems odd to talk of deference to the Office; instead, the court is following a statutory presumption, albeit a presumption that arises from an agency action that is the result of delegated authority. Where there has been a rejection, no such presumption flows, but should there be any “deference” given to the rejection? The correct approach is to accord a rejection “some” deference. In one such case, Paul Morelli Design, Inc. v. Tiffany & Co, 200 F. Supp. 2d 482 (E.D. Pa. 2002), the following rationale was given for the some deference standard:
We believe this standard strikes the proper balance between a de novo review which plaintiff seeks and the heightened abuse of discretion found in some cases. … The statute, after all, gives the Register of Copyrights the right to intervene in this action. … There would be little point in allowing her to do so if the decision of her office were deemed to be meaningless, as the plaintiff contends. On the other hand, since the statute permits a party whose application was denied to sue for copyright infringement, Congress did not intend, in our view, narrowly to constrain a jury or a court from finding a rejected work to be copyrightable and infringed.
Darden v. Peters also dealt with a rejection, but in a very different context, review under the Administrative Procedures Act. An applicant whose claim has been rejected has the option to sue an infringer anyway (in which the “some deference” standard should apply), or sue the Register in federal court under the APA, in which case an abuse of discretion standard applied. Darden argued for a de novo standard, and even argued such a standard was constitutionally required. The court of appeals brushed this argument aside. Darden next argued that the Office applied the incorrect legal standard; that argument worked in the Atari v. Oman litigation, but not here because Darden was actually complaining about the Register’s application of the correct legal standard, and not the standard itself.
The bottom line is, if you have a potential defendant in hand, don’t go for the bush of APA review.