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.
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I represent Mr. Darden in the referenced decision. The following is from our petition for rehearing, filed today.
Thank you for the excellent blog.
Anthony J. Biller, Esq.
I. The panel did not address whether the issue of “Originality” presents a question of a constitutional property right subject to review under 15 U.S.C. § 706(2)(B).
Darden argued that the Copyright Office made an incorrect analysis of constitutional law when it held that Darden’s maps lacked originality and thus contained no copyright. The issue is whether the Copyright Office determined the existence (or the lack thereof) of a property right recognized under the Constitution when the Office decided that Darden’s works lacked sufficient originality to be registered. Darden asserted that the determination of copyright originality is a question of constitutional property law and subject to de novo review under 15 U.S.C. § 706(2)(B). The Panel did not address this issue.
The Panel misconstrued Darden’s § 706(2)(B) argument. The Panel described Darden as arguing that the constitutional right at issue was Darden’s right to register his works. Specifically, the Panel stated the argument thusly:
Darden suggests … that section 706(2)(B) applies to a challenge of the Register’s denial of a copyright registration application and mandates de novo standard of review. …
…Darden derives the basis for his argument from Article I of the United States Constitution which grants Congress the power to provide copyright protection to the extent Congress sees fit. … Congress is under no mandate from this clause, however, to provide copyright protection. … Thus, as there is no constitutional right to copyright registration, the Register’s refusal to register Darden’s claim cannot be “contrary to constitutional right” as it must be for section 706(2)(B) to apply.
[Slip Op. 8-9.] Darden was not, and does not, argue as such.
Darden argues that the Copyright Office’s finding of “insufficient originality” was an analysis of whether a particular type of property right exists, i.e., a copyright. In this instance, the property right at issue derives directly from the Constitution’s granting Congress the power to protect an author’s “writings.” The Supreme Court explained, to be protected by copyright, the Constitution requires “writings” to be sufficiently original. The Court further explained that this determination of “[o]riginality is a constitutional requirement.” Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340, 346, 111 S. Ct. 1282, 1288 (1991). It has long been established that the base requirement for copyright is “originality” and that the Constitution mandates this standard. Id. at 345-47, 111 S. Ct. at 1287-88; accord Bleistein v. Donaldson Lithographing Co., 188 U.S. 239, 23 S. Ct. 298 (1903); Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53, 58, 4 S. Ct. 279 (1884); Alfred Bell & Co. v. Catalda Fine Arts, 191 F.2d 99, 102-03 (2nd Cir. 1951); J.L. Mott Iron Works v. Clow, 82 F. 316 (7th Cir. 1897). The Copyright Office’s analysis of originality presented a question of constitutional law. A copyright is, per se, a right. The Office analyzed whether Darden’s maps satisfied the constitutional prerequisites for this right to exist.
As discussed at oral argument, the constitutional “right” at issue in this case relevant to § 706(2)(B) is not an individual right. Darden does not argue he has an individual right under the Constitution to register a copyright. The “right” implicated is a property right, specifically, whether constitutional jurisprudence recognizes Darden’s “writings” as sufficiently “original,” i.e., whether a copyright exists. The word “right” in § 706(2)(B) is not limited to “individual” rights but involves any right under the Constitution, to include the property right the Constitution recognizes as original writings, which Congress may protect.
In its brief, the Government took the position that courts always afford the Office deference regarding the denial of a registration for lack of copyrightable subject matter. Upon scrutiny, however, there is an important distinction in these cases that the Government’s argument overlooked. As the Panel observed, the Constitution empowers Congress to protect copyrights, but it does not require protection. Accordingly, there is no individual “right” to have one’s copyright protected if Congress has not extended such protection. Congress decided where and to what extent to extend copyright protection. By doing so, Congress defined subject matter that may and that may not be copyrighted. For example, Congress extended copyright protection to maps but not to useful articles, i.e., “industrial designs.” See 17 U.S.C. § 101 (definition for “Pictorial, graphic, and sculptural works”). Congress defined subject matter for which copyright would be afforded. The Copyright Office was left to interpret interpret what these areas of subject matter included.
There has been little dispute regarding what falls within the definition of “map.” There has, however, been significant litigation regarding the definition of other copyrightable subject matter under the Copyright Act, such as for “useful articles.” See, e.g., OddzOn Prod., Inc. v. Oman, 924 F.2d 346 (D.C. Cir. 1991); Eltra Corp. v. Ringer, 579 F.2d 294 (4th Cir. 1 978); Esquire, Inc. v. Ringer, 591 F.2d 796 (D.C. Cir. 1978). In such litigation, courts afford the Copyright Office discretion in construing the subject matter boundaries set by Congress, such as defining what constitutes a “useful article.” There are additional examples of courts addressing how the Office interprets portions of the Copyright Act, many of which can be found in the Government’s brief and explained further in Darden’s reply. Under current administrative law, courts have appropriately afforded the Copyright Office deference in interpreting the statutory lines and definitions Congress set regarding the extent to which it affords copyright protection.
Darden does not take issue with this line of cases; however, those cases are not on point with the issue at hand. This is not a case contesting how the Copyright Office construed “useful articles,” what constituted a “map,” or any other statutory line or limitation set by Congress. There is no dispute that a map is copyrightable subject matter and that Darden submitted maps for registration. This is a case where the Office rested its decision on a finding that Darden’s maps lacked sufficient originality. The prerequisite of originality derives from the Constitution.
There is one circuit case, over two holdings, that specifically addresses the standard of review for the Office’s denial of registration based on a finding of insufficient originality. See Atari Games Corp. v. Oman, 888 F.2d 878 (D.C. Cir. 1989); Atari Games Corp. v. Oman, 979 F.2d 242 (D.C. Cir. 1992). In the Atari holdings, the court stated it was giving deferential review to the Office’s analysis of “originality,” but in practice, the court gave no deference. That court twice rejected the Office’s proffered analysis of originality. Aside from one concurring opinion, the court gave little explanation why it used a deferential standard of review. The concurring opinion offered a purely pragmatic rationale for that standard. See Oman, 888 F.2d at 886-87 (Silberman, J., concurring). That “originality” is a constitutional requirement for copyright was not mentioned, let alone analyzed.
“Originality” is a constitutional pre-requisite for copyright protection. The Constitution imposes the requirement. When the Copyright Office decided that Darden’s works did not exhibit sufficient originality, the Office decided that a requirement imposed by our Constitution had not been satisfied. An incorrect analysis of a constitutional property right is “contrary to constitutional right.” [See Slip Op. 9.] The courts should not, thus, afford the Copyright Office any deference on the issue of whether the constitutional pre-requisites for obtaining copyright protection have been met. Review should be had under 15 U.S.C. § 706(2)(B). Darden respectfully prays to have this argument heard and addressed by this Panel.
II. The Panel’s opinion did not address Darden’s argument that the Copyright Office committed legal error when it simply concluded, without analysis, that the maps taken as a whole were “entirely typical” and thus not copyrightable.
In its analysis, the Copyright Office reviewed individual elements of Darden’s maps, and concluded that each element, in isolation, was not copyrightable. The Office then acknowledged its duty to analyze the elements as a whole, and concluded that the arrangement of these elements is “entirely typical” and did not rise to the level of creative authorship necessary to sustain a copyright. No where in the administrative record, at the District Court, or in its appeal brief did the Government explain why the works when taken as a whole are “entirely typical.”
In Feist the Court found the works at issue “entirely typical,” and dedicated several paragraphs to explaining the basis for this conclusion. See Feist, 499 U.S. 362, 111 S. Ct. 1296. The Government has never tendered such an analysis for Darden’s maps nor did the Court address this deficiency in its opinion.
The Office’s mere assertion of “entirely typical” is the same talismanic assertion that the District of Columbia Circuit rejected in its post-Feist holding in Oman, 979 F2d 245- 47. As in Oman, the Office does not explain what standard it used for assessing the elements in combination and how the office came to its conclusion on originality. The Office’s failure to analyze all of Darden’s elements in combination was “not in accordance with law” and should be reviewed de novo under § 706(2)(A) of the APA.
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