The U.S. Copyright Office recently issued a draft update to its Compendium of Copyright Office Practices, Third Edition, more commonly referred to simply as “the Compendium” — the administrative manual that governs how the Copyright Office conducts its business. At nearly 1,200 pages, the copyright Compendium is a dense, technical, and intensely specialized document intended to guide staff as well as those who have to interact with the Office. The Copyright Compendium was comprehensively revised in December 2014 — the first major update to the manual in more than fifteen years, which also marked the launch of the Third Edition. According to the Office, the document is intended to be a “living document,” available exclusively online.
The draft released on June 1 is the first update to the third edition, and in addition to making a complete draft of the revised version available, the Office also published a comprehensive set of release notes that summarize the revisions, as well as a more straightforward list of changes and additions. Most of the changes serve to clarify policies or procedures that are already detailed in the Copyright Compendium, and in many cases, the Office has added additional examples to illustrate how it will handle certain circumstances. In a few cases, the Office has revised its practices to accommodate changes in the law. While many of the changes are either perfunctory or mind-numbingly esoteric, the draft does contain a number of clarifications that may help visual artists.
The Copyright Compendium Clarifies The Standard for Conceptual Separability
The first, and perhaps the most significant, change involves a recent Supreme Court case that concerned the copyrightability of artistic features attached to functional items. In Star Athletica, LLC v. Varsity Brands, Inc., the Court clarified the longstanding doctrine of conceptual separability — the standard by which copyright law distinguishes between the utilitarian or functional characteristics of a particular object which are not protected by copyright and the artistic aspects which are. Specifically, the Court was called upon to determine whether certain ornamentation — “lines, chevrons, and colorful shapes” — attached to cheerleader uniforms could be protected by copyright, even though the uniforms themselves were plainly functional.
Concluding that the graphical elements were eligible for protection, the Court explained that an artistic feature of a useful article qualifies for protection in the feature “(1) can be perceived as a two-dimensional or three-dimensional work of art separate from the useful article and (2) would qualify as a protectable pictorial, graphical, or sculptural work — either on its own or fixed in some other tangible medium of expression – if it were imagined separately from the useful article into which it is incorporated.”
The Office thus updated its practices to reflect the Supreme Court’s rule, adding examples to help illustrate how it plans to apply the Court’s decision in future registration decisions. For example, it explains that “a lamp is considered a useful article, because it has an intrinsic utilitarian function, namely to provide lighting. By contrast, a three-dimensional floral design affixed to the base of a lamp or a two-dimensional garden design painted on a lamp shade does not have an intrinsic utilitarian function. Therefore the U.S. Copyright Office may register those design features if they are parable from the functional aspects of the lamp and if they are sufficiently original and creative.”
Although the Copyright Compendium provides the updated standard for copyrightability (and thus, registrability), the Office promises “updated guidance” on how to file registration for artistic features of utilitarian works — likely to require specific language and provide clear guidance on the application itself, so applicants can easily understand the distinction between the artistic and utilitarian features of a useful article for which the applicant seeks registration.
Additional Guidance on Typefaces
The new Copyright Compendium also provides guidance on the registrability of typefaces and fonts — an issue which has long confused the typography community. As the Office explains, it “typically refuses claims based on individual alphabetic or numbering characters, sets or fonts of related characters, fanciful lettering, and calligraphy, or other forms of typeface … regardless of how novel and creative the shape and form of the typeface characters might be.”
But, the Office adds a caveat, noting that “[p]ictoral or graphic elements that are incorporated into uncopyrightable characters or used to represent an entire letter or number may be registrable.” So an original image “that forms the entire body or shape of the typeface characters, such as a representation of an oak tree, a rose, or a giraffe that is depicted in the shape of a particular letter” may be registered. Note also that while typefaces — the individual letter forms or glyphs — are not themselves copyrightable, the software that instructs a computer to create those glyphs — embodied typically in OpenType or TrueType files — generally is protectable. That’s why it’s possible for typeface foundries to license fonts, and why copying fonts without permission can get you sued.
Clarifications on Batch Registration Options
Perhaps of most interest and importance to visual artists are the Copyright Office’s clarifications to its batch registration policies and practices. For many visual artists, the ability to register multiple works on a single application is the difference between being able to register their works and not, since filing individual applications for registration on hundreds of images would be cost-prohibitive and administratively burdensome.
As I have written about before, the Office has developed two mechanisms by which visual artists can file a single application to register multiple works: group registration for published works, and collections for unpublished works. The two approaches are very similar, but still, have some distinctions, the foundation of which is whether the works being registered are published or unpublished. Determining whether you works are published or unpublished is a bit tricky, since the Copyright Office takes no formal position on whether a work is or is not published — Chapter 1900 of the Copyright Compendium provides some guidance, but ultimately, as the Office states: “[t]he applicant — not the U.S. Copyright Office — must determine whether a particular work is published or unpublished.”
Many visual artists, and those who represent them — lawyers, agents, reps, and the like — have taken the position that registering works on anything less than a single registration application (one work per application) is legally precarious, because a court might construe the registration to apply to the whole collection or group, as opposed to the individual components, limiting the damages available in the event of an infringement. For example, suppose you register a group of published photographs comprising 200 images. The concern is that if you were to sue for infringement over the unauthorized use of one of those 200 images, the total damage award would be divided by 200, since the infringement related to only 1/200th of the total copyrighted work.
While that concern is well-founded if the works were registered as an art compilation, the Copyright Office has long taken the position — and courts have agreed — that the registration extends to each individual image within the published group or unpublished collection, and the draft revisions to the Compendium make that even clearer:
If an applicant submits a number of unpublished works – but does not expressly assert a claim in the selection, coordination, and/or arrangement of those works — the U.S. Copyright Office will presume that the claim is limited to the individual works and will register them as an unpublished collection.
By contrast, if the applicant asserts a claim in the selection, coordination, and/or arrangement of the collection as a whole, the Office will register the works as an unpublished collective work, rather than an unpublished collection. This may have significant consequences in a copyright infringement action.
When a compilation claim has been asserted, and the Office has registered the works as an unpublished collective work, the copyright owner may be entitled to claim only one award of statutory damages in an infringement action, even if the defendant infringed all of the component works covered by the registration.
Copyright owners who use a group registration option may be entitled to claim a separate award of statutory damages for each work – or each issue in the case of serials, newspapers, or newsletters – that is covered by the registration, because a group registration covers each work or each issue that is submitted for registration (rather than the group as a whole).
As is so often the case in the law, the difference between a positive and a negative outcome relies on language. If you refer to the group of images as an art compilation — a term of art meaning that you have engaged in some sort of copyrightable selection and arrangement — then you may be limited to a single damages award, but artists who properly use the group registration and unpublished collection procedures will maximize their legal protections. This has always been true, but recognizing the confusion and consternation, the Office sought to clarify it in is copyright Compendium revisions.
The new version of the Copyright Compendium is officially still in draft form, and won’t become effective until July 3, 2017. The Copyright Office welcomes public comments on the proposed revisions through June 30 by selecting “Submit a Comment” on the copyright Compendium draft website.
Which updates to the Copyright Compendium affect you?