Copyright Registration Practice with Robert Kasunic

Copyright Registration and the Compendium
Robert Kasunic, Associate Register of Copyrights and
Director of Registration Policy & Practice, U.S. Copyright Office
 
25th anniversary of Feist.  Cornerstone of his
approach to copyrightability.  Feist isn’t a telephone book case; it’s
the only post-1976 case focusing on originality and what constitutes a creative
act of authorship.  It also explicitly
stated that originality is a constitutional requirement.  Neither Congress nor courts can protect a
work without sufficient originality, and Office can’t register.  Court stated that the amount of creativity
required is low; most works make the leap easily, but some works won’t.  Alphabetizing is a type of creativity that
won’t qualify. Also, time/effort/expense aren’t relevant to
copyrightability.  Distinction b/t
creative authorship and discovery of facts.
 
Feist didn’t
answer all questions—even questions about yellow pages: selection of categories
enough? What if they’re garden-variety categories?  If there are creative categories,
registration ought to be allowed, but how creative can telephone directory categories
be? The more creative they are, the less useful it will be.  We received a claim in a medical x-ray as a
photo: but how many patients desire creative x-rays? Impetus for creation is
discovery or functionality; that doesn’t mean that some x-ray could be created
creatively, but mostly they’re done to discover facts, just like the census
taker in Feist.
 
Yellow pages are typically alphabetical, but raise issues
about collective works as opposed to compilations of facts. An ad in a
directory could be sufficiently creative in image or words to be copyrightable.
But unless selection, coordination, and arrangements is sufficiently creative,
they’d need to be registered separately rather than together as a collective
work.
 
Feist’s principles
have to be translated to all categories of works: a circular arrangement of
diamonds on a ring is equivalent to alphabetizing in its typicality.  Examiners decide more claims every day than
federal courts adjudicate in a year—80 examiners and ½ million claims per year.  We see difficult/novel claims on a regular
basis—individual performance of actor in film; DNA sequences depicted in photos;
social dances; end-zone routines; online criticisms of doctor claimed by the
doctor; tweets; compilations of tweets; all the recorded notes of an electric
piano; jingles; interior designs for apartments; floral arrangements; edible
arrangements; cheerleader uniforms. Creators often don’t understand copyright
law and often aren’t interested in learning the nuances.
 
Common area of confusion: work made for hire.  Many people would love to be hired, but don’t
understand this is a term of art.
 
Examiners need to explain their refusals—Atari court was very concerned with
this.  Allowances don’t have to be
explained, but we now annotate certificates to show where we thought there was
an important ambiguity because registrations are presumptive evidence of
validity.  95% are registered easily. But
some works in every category of authorship may not make the grade.  This result is “neither unfair nor
unfortunate.” It’s the means by which © advances the progress of science &
useful arts.  Examiners must remain
diligent; it would be easy to be a rubber stamp and let the courts weed out
5%. 
 
Subject matter issues: dances; movements (yoga poses);
performance of actor copyrightable as dramatic work?  Do the statutory categories serve as a limit
on copyrightability?  Feist: Court demonstrates careful
reading of all the words in statute,
to make clauses consistent w/other clauses. 
Significant example: June 22, 2012 Fed. Reg. statement of policy on
registration of compilations.  Step
towards building on Feist beyond
originality to the limits on the categories of copyrightable subject matter.  Being a compilation isn’t enough: has to be a
compilation of stuff within the subject matter of copyright.  But is §102(a) limitative?  Many have interpreted the word “include” in
§102 to indicate that the list is just illustrative, but no court has
sanctioned a new category of copyrightable subject matter. Intellectually
honest assessment was required.  Other
empirical evidence: Congress clearly chose not to include some works, such as
typeface or works of industrial design. Choreography was deliberately chosen;
architectural works were added explicitly; if the categories were merely
illustrative, then addition should not have been necessary. So there’s clearly
ambiguity about Congress’ intent, given its own actions.
 
Legislative history: H. and Sen. Reports are identical on
this issue: by using original works of authorship, rather than all writings of
an author, Congress intended to avoid exhausting its constitutional power in
the field. The use of “includes” was designed to preserve Congress’ power in this field. “There are unquestionably other
areas of existing subject matter that this Congress doesn’t choose to protect.”
§102(a) was worded to avoid courts’ struggling with the scope of particular categories, but not to authorize them to create
new categories of authorship.
 
Helped resolve recurring issues about compilations of
noncovered subject matter, such as yoga poses. 
Also shows that registering a catalog of garden sculptures registers the
photos in the catalog, but not the sculptures themselves, which have separate
creativity.
 
Compendium of practices: we strove to clarify many issues,
such as that the creativity in a work must be perceptible in the deposit,
rather than expressed in a creative explanation of the work’s creativity.  Puts Office at odds with CDN v. Kapes and CCC
(Red Book) case—courts stated that individual numbers that were the product of
various creative processes were copyrightable. 
It’s not a fact, but a creative prediction or estimation.  A number as a deposit reveals no selection,
coordination, or arrangement in itself.
 
Some courts have ignored the Office’s role as filter and the
statute by allowing suit upon mere application, not upon acceptance or
rejection of the application. 
Short-sighted.  Nimmer sees this
as no-harm, no-foul because most applications are accepted.  But Feist
counsels otherwise, as the Compendium explains. Expediency is not an excuse for
ignoring the plain language of the statute and the unambiguous legislative
history.  Any applicant in
prospective/pending litigation can pay for expedited service in 5 days.  We mediate a much higher percentage of
applications than 5%. In 40% we either correspond for clarification of
authorship, ownership, WFH, joint work, removal of ambiguous terms,
resubmission on proper form, submission of deposit, payment of proper fee,
limitation based on previously registered/published/public domain material, and
exclusion of authorship not fully owned by the claimant. Thus even claims in
which registrations ultimately issue are regularly changed by the examination.
We increasingly specify the basis on which something was registered—serves as a
check on overclaiming and abuse, as w/doctors seeking to register criticism of
their professional services. The doctors claimed ownership via transfer
agreement, appended to federally required HIPAA notices.  Rejected such claims: apparent involuntary
transfer—doesn’t need to be invalidated by a court; we can do it.
 
Courts that accept pre-registration claims may find
infringement where the registration wouldn’t have been accepted, or would have
been limited.  Many claims are just
abandoned when the Office asks questions about them.  Genetically modified poinsettia: courts can
benefit from Office’s analysis of legislative history and statute; so too with
social dance and yoga.  Also the monkey
selfie.
 
Software: Copyrightability and Registration
Moderator: Michael Carroll, Professor of Law, American
University Washington College of Law
 
Terry Illardi, Copyright Counsel, IBM: Older companies tend
to register more heavily. IBM is 102 years old and has 40,000
registrations.  Mixture of documents and
software; register 500 software programs/year and 1000 documents/year.  IT companies are more mixed than
entertainment companies; one large firm hasn’t registered one work in years;
Microsoft has 3000 registrations. 
Special practices for software source code; object code doesn’t mean
anything to a human being.  Most source
code has confidential/trade secret info, so Office allows special registration
procedures.  Now we do “striping”; the
idea is that you deposit a copy with parts taken out.  Whether it’s effective as registration is a
good question, but we’re happy to be allowed to do it by the Office.  Now we get digital copies of source code and
a program obscures pieces of the code for us. 
Imagine a page of code with diagonal stripes going across the page; you
can see 63%.
 
Software is complicated by different versions: IBM lingo is
the version, the release, and the mod. 
We don’t file for registration on every mod (third position in version
1.0.1), but do for most releases and all versions.  When 5-10% of code has changed, it’s time for
a new version.  Other companies
don’t.  You could do it for availability
of attorneys’ fees, etc., but IBM doesn’t bring a lot of lawsuits, so that’s
not a compelling reason.  Valuable to our
litigation dep’t for defensive purposes—can find information that generally
helps our case; we get sued more than we sue. 
Registration also provides proof of ownership, and where this is
important is with certain foreign gov’ts that require proof that software
you’re licensing is yours. The easiest way to show that is a bunch of
registration certificates.  Makes deals
go through more quickly—pays for the practice. 
Similar experience w/ foreign tax authorities and transfer taxes.  Also useful in divestitures, which happen
many times a year; provides proof that what we’re divesting we actually own.
 
Chris Mohr, Vice President for Intellectual Property and
General Counsel, SIIA: Obscuring source code is real priority for members.  Would also really like to see modernization
of the Office.  Increased security for
deposits in an upgraded system (we wish).
 
Carroll: TRIPS requires protection for computer programs as
literary works under Berne.  But what
about the Internet of Things?  Software
is embedded in a thing.  How should that
work?  Does it make sense to ask for
first/last 25 pages where programming art has changed so much? What should 21st
century deposit look like?
 
Illardi: We are in the age in which software is put together
like Lego blocks: old pieces snapped into new configurations.  Companies have found efficiencies in reusable
components/libraries.  Open source is
also a source, following the rules of the licenses.  There usually is a beginning of a program,
nonetheless, so there’s still some vitality to the old rule; not clear how
useful the last 25 pages is b/c that can be almost anything.  But to the extent that you can compare to the
deposit copy to prove infringement, even if the code shows up in a different
position, that’s useful; not clear to him there’s a better alternative.  Programs have 10s of thousands of level
blocks—some a dozen lines, some 100,000 lines. Shouldn’t have to deposit/pay
for each one.  Maybe a rule about the
biggest blocks of code?
 
Carroll: what about encrypting them in a hash?
 
Illardi: interesting, though might not allow comparison with
copied works which could be copies w/o having the same hash?
 
Q: isn’t the purpose of © deposit also to disclose?  If it’s obscured, how will it ever enter the
public domain?
 
Illardi: only keep copies for a limited time anyway.  So the Office’s procedures won’t help
historians anyway.
 
Kasunic: for published works, we keep for 30 years; it had
been much shorter. 
 
Q: the deposit copy may not help with actual litigation,
where you have to show they copied what you registered.
 
Carroll: software is iterative; the Office is clear that a
registration for 1.0 will not cover a prior version unless it’s
unpublished.  If prior version is
published, you have to be very clear about what you’re claiming as the
registrable material.  So how does the
IBM process work?
 
Illardi: careful records kept internally of what the changes
are.  Document filled out by developers
and reviewed by lawyers.
 
IBM’s focus has historically been on freedom of action;
relationship with Dep’t of Justice meant that it had to give others access to
its patents, and wanted access to others’ in return.  Our focus today may be relatively more on
enforcement, but only relatively.
 
Carroll: Looming question: will we have to reconfigure the
practices and understanding for internet of things?  Current definition of computer used by Act (which
then tells us what software is) requires an output on a screen/display or
printer, but not all IoT objects will do that.
 
Mohr: the Office had an inquiry on embedded software, and
registration didn’t really come up at all in the comments he looked at.  The answer may be that computer programs can
be embedded in machines, but it’s a question that needs an answer more detailed
than we can give right now.
 
Illardi: may need to rethink definition of computer;
smartphone is a computer that matches the current definition, but many things
won’t b/c they’re meant to work with something else.  Fitbit is meant to have an output, but the
output shows up on another machine.
 
Copyright at the Edges
Moderator: Peter Jaszi, Professor of Law, American
University Washington College of Law
 
Rebecca Tushnet, Professor of Law, Georgetown Law Center
Copyright puzzles: A “useful article” is an object having an
intrinsic utilitarian function that is not merely to portray the appearance of
the article or to convey information.  Is
a jigsaw puzzle a useful article? 
Copyright Office guidance: “No matter how novel, distinctive, or
aesthetically pleasing any clasps, motors, or other functioning parts
of an article may be, copyright does not protect them…. Articles whose
intrinsic purpose is to portray a useful article or convey information—such as toys,
scientific or fine-art models, newspapers, architectural plans, and maps—are
not useful articles
and may qualify for copyright protection. But
protection would not extend to any mechanical or utilitarian parts
they may
have.”
 
So, is any connector between two things functional? If
that’s the case, then interlocking jigsaw puzzle pieces seem functional: they
make the picture hold together, much as the spine of a book holds the pages
together.  Other interesting questions: Computer-generated
artworks (if artworks they are) where the piece shapes are determined by
mathematical algorithms, and then perhaps hand-tweaked.  Copyrightable?  Here’s a real case where the output is
independently valuable, compared to the program itself; the program’s obvious
copyrightability doesn’t matter very much if a copier can use the output freely
because there’s no human authorship in the output.
 

Computer-generated puzzle

Second puzzle made out of blue pieces of first puzzle

Separately: If the pleasure added by the jigsaw puzzle to
the image is haptic, then isn’t it more like a chair with a picture printed on
it (or like a skateboard with an image printed on it, for that matter, another
non-necessary item that is nonetheless a “useful article”) than like a
sculpture?  Things US copyright generally
doesn’t cover: Perfumes; soft woven scarves with specially pleasing textures;
recipes.  Cf. Christopher Buccafusco, Making Sense of Intellectual Property
Law
, 97 Cornell Law Review 501 (2012); he has a followup
article here
which I will shortly read.
An unassembled Liberty puzzle

Liberty puzzle, assembled
 
 
Stave puzzles—the image intertwined with the cut.  Is it a sculpture?  If the cut isn’t part of the work, then someone else might be able to copy the cut even though they can’t copy the image.
 

Color line cutting
Color line cutting:
integrated with the picture in another way, in order to trick the eye or
delight the puzzler when the piece falls into place.  Do these techniques mean that puzzle cuts
might be derivative works of the image, with creativity that intertwines with
the expression of the image?
 
Comments indicated that some people would just try to
register the cut as a 2D image, though I think that wouldn’t give you rights to
control the cut if a puzzle is a
useful article.  The puzzle does what it
does because the design is cut into different pieces.  Back to the question: Does giving
intellectual/haptic pleasure do something more than conveying information?  I wouldn’t say petting my cat conveys
information, but it certainly provides tactile pleasure.
 
Tom Kjellberg, Counsel, Cowan Liebowitz & Latman
Separability seems to set a higher bar for copyrightability
than something that’s treated as purely aesthetic: pure abstract art in the
ordinary 2D and 3D senses is usually protectable; would have higher bar as
useful articles.  Jewelry easy; button
harder.
 
Newspaper is useful, but not a useful article because its
intrinsic function is to convey information. 
3 separability cases sought cert.; the cheerleading uniform case is
scheduled for conference this month. 
Inhale v. Starbuzz: 9th Circuit gave Skidmore deference to
Office’s holding that distinctiveness of shape doesn’t affect separability; any
part of a container that merely accomplishes containment isn’t
copyrightable/separable.  [Which seems to
me to have implications for my jigsaws …]
 
Legislative history: a 2D graphic work is still capable of
being identified as such when it is printed on or applied to utilitarian
articles such as textile fabrics, wallpaper, containers, and the like.  [This is why I think the cheerleading case
should have been decided on originality grounds, not separability grounds; the
basic stripes just aren’t creative enough to pass through the copyright
turnstile, but some other stripe arrangement might well be.]
 
Mannington Mills: heavily photoshopped photo of wood
flooring used in laminated wood flooring. 
Designers chose particular planks, colored them, aged them, arranged
them into aesthetically pleasing patterns; manipulated hi-res photos to create
the pattern. Registered as 2D artwork. Court of appeals found it both
physically and conceptually separable. 
The design doesn’t perform the function of hiding wear; the layer on
which it’s printed performs the function of hiding wear.
 
Varsity Brands v. Star Athletica: involved in this case from
the beginning, including having registered some of these designs.  Created by in-house designers.  How to characterize what it is we’re claiming?  Don’t want protection for the drawing of the
uniform; want protection for the uniform. 
Settled on “design on garment.”  District
court said this was a utilitarian object: nothing more than a cheerleading
uniform.
 
But what is a useful article?  The function of the uniform design is to
convey the information that the person wearing it is a cheerleader, which
should take it out of the category of useful article.  (The function of the uniform is to cover the
body, so in the first instance a shirt/skirt is a useful article.)
 
Q: Male cheerleaders just wear a T-shirt—so you can convey
“I’m a cheerleader” in other ways. 
Should the design on a T-shirt have a separate copyright?
 
A: no, the © is in the 2D graphic work that appears on the
surface.  Could be a maple laminated floor
pattern!
 
There is no circuit split, just different analytical tests
on separability; just as there isn’t a split on substantial similarity just
because the 9th and 2d Circuits express the test differently.  [I note that the SCt suggested in B&B that there might be a similar
problem with the trademark infringement multifactor test.] The 2d Circuit alone
has taken multiple approaches; it’s subjective/you know it when you see it, and
maybe should be revisited once more important issues in © have been resolved.
 
Carroll: isn’t there a split with the Harrod’s uniform case,
or do the epaulets in the casino uniform serve a nonseparable function?
 
A: Star Athletica argues that there is a split with this 5th
Circuit decision finding that the designs of casino uniforms lacked
separability, and also pointed to an unpublished 2d Circuit holding on prom
dresses, but in both cases they were talking about the 3D design of a garment,
not a 2D design on a garment.  In the Compendium’s next revision, some
attention should be paid to that.
 
Q: compare your approach to the jigsaw puzzle.  The puzzle has to have a thickness, which the
design on fabric doesn’t.
 
Q: TM can protect the uniforms without ©.  Smack
Apparel
etc.  Recent Santa Claus
w/snow globe in its belly: added enough artistic elements to make 3D thing; cut
off the rights of the original artist, according to the court, b/c the original
artist only had rights in a 2D drawing.
 
Carroll: Doesn’t think the 3D/2D distinction works; it’s
really about the utilitarian function of the uniforms.  The court describes cut of a prom dress, but
also lace—the utilitarian function is to mark the wearer as going to a special
occasion, not to cover the body; same with the design features in the Harrod’s
case and the cheerleading uniforms—social utility. If that’s what makes it
useful, 2D and 3D isn’t important.
 
A: definitionally, it’s some blend of portraying its own
appearance and conveying information. So that’s true, but that doesn’t make it
a useful article.  [What if a sports car
conveys the information “I am insecure in my masculinity,” as well as providing
transportation?  We know that the sports
car is a useful article but so is a cheerleading uniform, because it provides
transportation/covers the body respectively. 
What we’re asking is what’s separable from that useful article.]  2d Cir. distinguishes between dress designs
as a term of art and fabric designs, which doesn’t just include a design
printed on a bolt of fabric but also little squirrel appliques on the sweaters.
So 2D v. 3D does some work.
 

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