By Edwin Komen

The Copyright Office recently published two little-noticed, but potentially far-reaching, announcements in the Federal Register. Collectively they tend to restrict the definitions of “claimant” and “compilation” for purposes of copyright registration. The first, noticed as a rulemaking subject to public comment, issued on May 17, 2012, 77 Fed. Reg. 29257 with written comments due by July 16, 2012 and reply comments due by August 15, 2012. The second is a Statement of Policy, with no right of comment, effective as published on June 22, 2012, 77 Fed. Reg. 37605. Although the Copyright Office does not adjudicate issues of copyrightability, its determinations still carry significant weight with the courts since it is the agency charged by Congress with the task of initially determining whether a work is entitled to copyright protection and, hence, may be registered for copyright.

Claimant – The Copyright Office seeks to amend its regulations by eliminating a footnote to the definition in 37 CFR §202.3(a)(ii). Intriguingly, this regulation was first published on January 5, 1978, 43 FR 965 as an “interim” regulation — hastily promulgated to implement the then impending Copyright Act of 1976, effective January 1, 1978 – but which has remained “interim” since then. The Copyright Office has long maintained, through the Interim Regulation, that the proper party to be listed as the claimant on a copyright application, and resulting registration, is either the author of the work or a party who has acquired all rights under copyright initially belonging to the author. The footnote at issue states, “This category includes a person or organization that has obtained, from the author or from an entity that has obtained ownership of all rights initially belonging to the author, the contractual right to claim legal title to the copyright in an application for copyright registration.” The notice of rulemaking observes that there is no clearly stated rationale for this footnote, stating that it might merely reflect the 1976 Act’s first explicit recognition of the principle of divisibility of copyrights. Having inconclusively polled its own staff who had been involved in the original rulemaking, the Copyright Office now invites public comment that may shed light on the reasons for the footnote’s inclusion.

The Copyright Office finds this to be of more than merely academic interest since the bald right to claim copyright is not one of the exclusive rights enumerated in Section 106 of the 1976 Act. Citing two of the recent Righthaven decisions [1], the Copyright Office seems concerned that separating the “claimant” from true ownership of any of the exclusive rights under copyright may adversely reflect on a party’s standing to bring a copyright enforcement action where the plaintiff may not be the real party in interest. “While the Copyright Office does not believe that all transfers relying on the footnote necessarily misrepresent who is a valid copyright claimant, there exists the real possibility that the footnote fosters questionable claims of ownership due to its ambiguous language.” 77 Fed. Reg. at 29259.

The Copyright Office points out that eliminating the footnote would leave numerous options for registering copyright claims. For example, the owner of an exclusive right may always register a claim in the name of the original author. An authorized agent of the author or such owner may likewise file listing the author as the claimant while explaining such agent’s relationship to the author or other claimant. However, a party would not be permitted to be listed as the “copyright claimant” if all they own is the contractual right to be listed as such. This would potentially avoid issues posed by the recent infringement activities of so-called copyright trolls where the identity of the real party in interest is unclear and would further serve to encourage suits only by a party with a genuine stake in the outcome. On the other hand, there may be many genuine business transactions which might be adversely affected by the Copyright Office’s proposed rulemaking, such as where access to a film subsidy, rebate or tax credit depends on having a motion picture registered in the name of a particular entity that may, in effect, only own the right to claim copyright in its own name by virtue of the relevant film production, financing and distribution agreements. Accordingly, interested parties should take note and, if appropriate, express their views to the Copyright Office prior to the deadline of July 19, 2012.

Compilation – The Copyright Office has also added its own interpretation to the 1976 Act’s definition of compilation. The Statement of Policy “clarifies” that not all compilations meet the bar for copyright protection and resulting registration. Only those compilations under Section 103 of the 1976 Act that result in a work of authorship recognized under Section 102 will, in the Copyright Office’s view, be considered a copyrightable work subject to registration. The Copyright Office reached this conclusion noting that Congress chose to expressly include some, but not other, categories of authorship citing such relatively new categories of works as choreography and architecture. Although Section 102 uses the word “include” before listing the categories of copyrightable authorship, this wording was merely to give Congress the flexibility of creating new categories. The careful legislative balancing that went into crafting these new categories led the Copyright Office to query, “Could Congress have intended the courts or the Office to second-guess such decisions, or accept forms of authorship never considered by Congress?” 77 Fed. Reg. at 37606.

The current Statement of Policy was seemingly prompted, at least in part, over the decision in Open Source Yoga Unity v. Choudhury, 2005 WL 756558, 74 USPQ 2d 1434 (N.D. Cal. 2005) in which the Court found a triable issue regarding Choudhury’s claim that he had arranged the asanas, “…in a manner that was both aesthetically pleasing and in a way that he believed is designed to improve the practitioner’s health.” The Copyright Office finds that such compilations of yoga poses are not copyrightable. “A film or description of such an exercise routine or simple dance routine may be copyrightable, as may a compilation of photographs of such movements. However, such a copyright will not extend to the movements themselves, either individually or in combination, but only to the expressive description, depiction, or illustration of the routine that falls within a section 102(a) category of authorship.” 77 Fed. Reg. at 37607. Other examples of claims that the Copyright Office will no longer register are “compilation of ideas”, selection and arrangement of handtools (sic)” and “compilation of rocks”.

Although the limiting of compilation claims may be of concern on a going forward basis, owners of preexisting copyright registrations should not be complacent. The Copyright Office acknowledges that it has, in the past, approved and issued compilation registrations with claims of authorship that were given as “compilations of exercises” or “selection and arrangement of exercises”, but then casts doubt on their own continuing validity by stating, “In retrospect, and in light of the Office’s closer analysis of legislative intent, the Copyright Office finds that such registrations were issued in error.” Anyone who owns such types of “compilation” copyright claims needs to carefully assess whether such claims should be relied upon in filing copyright infringement actions or, instead, should be first refined and supplemented with a Supplemental Registration limiting the compilation claim to a recognized category of works. These might include compilations of text, illustrations or photographs. The preexisting claims might even be re-registered in their entirety in categories such as choreography.

Although a Statement of Policy is not a rulemaking subject to public comment, affected copyright owners may still wish to voice their concerns to the Copyright Office, possibly as a means of better assessing whether their previously issued registrations are among those considered to have been “issued in error”.

[1] Righthaven LLC v. Mostofi, 2011 U.S. Dist. LEXIS 75810 (D. Nev. July 13, 2011) and Righthaven LLC v. Inform Techs, Inc., 2011 U.S. Dist. LEXIS 119379 (D. Nev. Oct. 14, 2011).