Copyright Office Updates to Third Edition of Compendium of Practices Focus on Registration Refusals, Intervening SCOTUS Case Law

On January 14, the U.S. Copyright Office published in the Federal Register an update to the agency’s Third Edition of the Compendium of U.S. Copyright Office Practices. The updates to the draft revision, which was first released in May 2019, include several changes based on public comments asking for clarification on several points of legal interpretation as well as major copyright decisions issued by the U.S. Supreme Court since the Third Edition’s last revision in 2017.

Public Comments Focus on Examiner Discretion to Deny Registration for Application Deficiencies

Since issuing the public draft in May 2019, the Copyright Office received 24 public comments and the focus of most of these comments seems to have been aimed at language in the Third Edition’s 2019 draft giving greater discretion to agency examiners regarding registration refusals due to application deficiencies. Some commenters were concerned that this additional discretion would result in fewer opportunities for applicants to cure defects in their applications for copyright registration. Several changes in the recent Compendium update are intended to address these concerns, including the replacement of references to “deficiencies” with “variances,” which is defined as conflicting information presented by an applicant’s registration materials, as well as additional information on what constitutes either an immaterial or a material variance. Other changes to the Compendium’s Third Edition language on correspondence and refusals include:

• Revisions to Sections 603 and 603.2(C) to clarify that examiners can only refuse registrations with material variances in “exceptional cases,” including a representative example involving an applicant who repeatedly omits required information despite multiple agency reminders.
• Revisions to provisions in Sections 618, 619 and 621 providing examples of specific situations in which the agency will typically correspond with an applicant, as well as representative examples clarifying that registration refusal will occur if the application is directed to uncopyrightable material, de minimis material or work where there is no basis for a valid copyright claim.
• Revisions to Sections 204.3 and 609.1 clarifying that examiners “may,” instead of “will,” refuse registration if the applicant either hasn’t met legal requirements of registration or selects the wrong version of the Standard Application.
• Revisions to Sections 1105.3 and 1114.1 clarifying that examiners may refuse registration if an applicant fails to satisfy eligibility requirements for a group registration option, or may only register the first 750 photographs submitted in connection with an application for a group registration of photographs.

The agency did note that it made no revisions pursuant to a comment from the National Music Publishers’ Association (NMPA) regarding an examiner’s discretion under Section 625.2(B) to refuse registration if deposit material is provided in the wrong format. The Office responded that it is unable to register a work unless the proper deposit material is submitted, or if the material is in a form that is unable to be displayed by the agency’s electronic system. The Office’s response noted that it had already made several changes to the agency’s submission system to prevent the submission of incorrect formats, except where applicant’s submit deposit materials in a ZIP file, and now includes a list of acceptable formats in automated emails sent in response to applicant submissions. Given these changes, the agency believed it was still appropriate to give examiners discretion to refuse registration applications due to improperly formatted deposit material.

Changes to the Compendium of Practices Based on Recent Supreme Court Decisions

Several changes were also made to the Compendium’s language based on intervening Supreme Court case law that has been issued since the last revision in 2017. For example, the Copyright Office deleted references to the “application rule,” which indicates that a copyright is valid for legal actions in district court once an applicant submits a registration application, after the Supreme Court’s decision in Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC (2017) which confirmed the agency’s interpretation that a registration decision must be issued prior to starting an infringement action in district court. Revisions incorporating the Supreme Court’s decision in Georgia v. Public.Resource.Org, Inc. (2020) include changes to Section 313.6(C)(2) explaining that work produced by a judge or legislator within the scope of official duties is not copyrightable, as well as changes to Section 717 indicating that annotation codes or legal compilations may be copyrightable if they contain sufficient original authorship and were prepared by a private party or non-lawmaking official not acting under legislative or judicial control. The Office also eliminated a citation to Muench Photography v. Houghton Mifflin Harcourt (S.D.N.Y. 2010) as that case was abrogated by the Second Circuit’s 2020 decision in Sohm v. Scholastic Inc., which held that a registration for a collective work can cover component works even when their authors aren’t listed in the application.

Many updates were also made to Chapter 900 of the Compendium to incorporate the Supreme Court’s ruling in Star Athletica, LLC v. Varsity Brands, Inc. (2017), which addressed the copyrightability of design features of a useful article. Revised provisions in Sections 924 and 925 were added to confirm that copyright can only protect design features that can be conceptually separated from the useful article. Further, these revisions indicate that determinations of intrinsic utilitarian function will be based on inherent observable characteristics instead of subjective intent or reactions to the article. The Office also confirmed that articles that have a single utilitarian purpose to convey information, such as x-rays, maps or technical drawings, may not be “useful articles” for purposes of determining copyrightability. The Office also attempted to clarify the first prong of the two-step test from Star Athletica, which requires that an extracted artistic feature must “qualify as a nonuseful pictorial, graphic, or sculptural work on its own.”

Copyright Office Clarifies ‘Publication,’ ‘Best Edition,’ Doesn’t Address Concerns Over AI Created Works

Multiple public comments asked for further clarification on publication guidelines and changes to provisions within Section 1114 provide examples indicating that distribution of photographs and offers to provide copies of a photograph for distribution both constitute “publication.” Revisions to Section 1008.3 clarify that the streaming of a work constitutes a performance, not a distribution. For musical works, the Office revised Section 1509.2 to clarify that “best edition” copies are required if the work is published in printed form but not if the work is published solely in phonorecords or a motion picture. Other revisions were made to incorporate new registration options created by the Copyright Office for group newsletters, group newspapers, unpublished works and short online literary works.

In several cases, the Copyright Office declined to make changes that were suggested by public comments. One commenter asked the Office to reconsider closing claims after 45 days of no response to agency correspondence based on concerns that such correspondence might be caught in email spam filters, but the agency found that it would be too burdensome to send additional notice and create additional process for nonresponsive applicants, and that such applicants can reopen claims through process outlined by Section 605.8. Elsewhere, the Copyright Alliance criticized language in Section 312.2, which covers the originality requirement for compilations and states that the Office will generally not register compilations requiring only two or three elements. In response, the agency noted that compilations with fewer than four elements may still exhibit “some minimal degree of creativity” with registrability being determined for each application individually.

The Copyright Office also indicated that it would make additional changes to future editions of the Compendium based on currently evolving legal developments. This includes the addition of many procedures that have been established due to passage of the Music Modernization Act, including procedures connected to pre-1972 sound recordings. Regarding the registrability of works created by artificial intelligence (AI), which was the subject of comments from Engine Advocacy and the Cyberlaw Clinic, the Office said that while it has no plans to update the Compendium at this time, the agency is both participating in and monitoring discussions on these issues and acknowledged that the increased use of AI to develop creative works creates important questions that must be answered by copyright law.

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