Saturday, January 22, 2011
Defamation Claim Based on Copyright Registration Statement Part II
Previously, I posted on a case involving a defamation claim based on copyright registration statement, link and link to case here .
Complaint by an alleged author, based on an unpublished underlying work, complaining that a published work was derivative of her work, and infringed on her copyright and her method of bible study. Complaint here:
Morris v Atchity Complaint
I noted in my prior post that I hadn't bothered to check the docket sheet to figure out what statement in a copyright registration statement could support a claim for defamation. My laziness and ignorance was rewarded by American University Washington College of Law student Mark Tratos picking up on the theme, on the Intellectual Property Brief blog here.
So, rather than have everyone speculate, I did what I should have done. Kenneth Atchity's counterclaim for based on the following allegation:
"Margaret Morris wrote and represented to the United States Copyright Office, under penalty of perjury, that "A contract for this ghostwritten book was offered and my agent Atchity concealed it and allowed it to be illegally signed."
It would seem that Morris' statement would be privileged, since it is a quasi-judicial function and the federal government specifically invites copyright "claims" and requires that they be submitted under penalty of perjury. Ordinarily, such statements enjoy immunity.
I found a couple of discussions of the Administrative Procedure Act in the case law that generally relate to this, but nothing really on point, see below. I discuss the application of the Administrative Procedure Act in my Copyright Litigation Handbook 2010, available from West Publishing or Amazon.
Utica College v. Gordon, 2009 WL 3418136, 4 (N.D.N.Y. 2009) appeal denied here.
"...an application for the registration of a copyright is more akin to an administrative proceeding. See 17 U.S.C. § 701(a) (“All administrative functions and duties under this title, except as otherwise specified, are the responsibility of the Register of Copyrights as director of the Copyright Office of the Library of Congress.”) (emphasis added). Additionally, the decision to grant a copyright registration is subject to the Administrative Procedure Act. 17 U.S.C. § 701(e). Therefore, defendants are not entitled to attorneys' fees because even if plaintiff's applications for copyright registration were objectively unreasonable, the applications did not constitute civil actions brought under title 17.
Darden v. Peters, 488 F.3d 277, 283 -286 (4th Cir. 2007)
The Copyright Act provides that “all actions taken by the Register of Copyrights under this title are subject to the provisions of the Administrative Procedure Act.” 17 U.S.C. § 701(e).FN2 One routine function of the Register is to examine applications for registration to determine if “the material deposited constitutes copyrightable subject matter and ... the other legal and formal requirements of [the Copyright Act] have been met.” 17 U.S.C. § 410(a). If so, then the Register must issue a certificate of registration to the applicant, see 17 U.S.C. § 410(a); if, however, the Register determines that “the material deposited does not constitute copyrightable subject matter or that the claim is invalid for any other reason,” then the Register must refuse registration and notify the applicant of the reasons for refusal, 17 U.S.C. § 410(b). Because the Register's denial of a copyright registration application is, by the statute's plain terms, an action taken by the Register under the Copyright Act, the APA governs judicial review. See 17 U.S.C. § 701(e); Atari Games Corp. v. Oman, 888 F.2d 878, 879 & n. 1 (D.C.Cir.1989) (“ Atari I ”); Nova Stylings, Inc. v. Ladd, 695 F.2d 1179, 1182 (9th Cir.1983).
FN2. The Copyright Act excepts the Register's performance of a single function from APA review: authorization of, or refusal to authorize, copies or reproductions of “deposited articles retained under the control of the Copyright Office.” 17 U.S.C. § 706(b); see 17 U.S.C. § 701(e). This narrow exception is not at issue here.
The district court concluded that the proper standard of review under the APA is the familiar “abuse of discretion” standard whereby a reviewing court will “set aside agency action, findings, and conclusions” that are “arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law.” 5 U.S.C. § 706(2)(A). This is consistent with the few federal decisions-most of which were issued by the same court-addressing the proper review standard under the APA for courts directly reviewing a registration decision. See Atari Games Corp. v. Oman, 979 F.2d 242, 243 (D.C.Cir.1992) (“ Atari II ”); OddzOn Prods., Inc. v. Oman, 924 F.2d 346, 347-48 (D.C.Cir.1991); Atari I, 888 F.2d at 881; Coach, Inc. v. Peters, 386 F.Supp.2d 495, 497 (S.D.N.Y.2005). See generally 3 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 12.11[B], at 12-208 (2005).
 Darden does not contest the general applicability of the APA to his claim; indeed, he expressly brought this action under the APA. Darden contends, however, that the district court incorrectly applied the abuse of discretion standard set forth in section 706(2)(A) of the APA. Darden suggests instead that section 706(2)(B) applies to a challenge of the Register's denial of a copyright registration application and mandates a de novo standard of review. Section 706(2)(B) directs that the reviewing court set aside agency actions the court finds to be “contrary to constitutional right, power, privilege, or immunity.” 5 U.S.C. § 706(2)(B). Under the APA, constitutional questions that arise during APA review fall expressly within *284 the domain of the courts. See 5 U.S.C. § 706 (requiring that “[t]o the extent necessary to decision and when presented, the reviewing court shall ... interpret constitutional and statutory provisions”) (emphasis added). Thus, judicial review of a claim that the agency's actions violated a claimant's constitutional rights is conducted de novo. See Western Energy Co. v. United States Dep't of Interior, 932 F.2d 807, 809 (9th Cir.1991).
   Darden cites no authority even remotely suggesting that any court has ever regarded the agency's routine decision to deny registration as having constitutional ramifications for the claimant. 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. See U.S. Const. Art. I, § 8, cl. 8 (granting Congress legislative power “[t]o promote the Progress of Science and useful Arts, by securing ... to Authors and Inventors the exclusive Right to their respective Writings and Discoveries”). Congress is under no mandate from this clause, however, to provide copyright protection. See Silvers v. Sony Pictures Entertainment, Inc., 402 F.3d 881, 883 (9th Cir.2005) (“As is clear from its text, that clause of the Constitution grants no substantive protections to authors. Rather, Congress is empowered to provide copyright protection.”). Copyright is solely a creature of statute; whatever rights and remedies exist do so only because Congress provided them. See Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 431, 104 S.Ct. 774, 78 L.Ed.2d 574 (1984). 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.
 Darden next contends that because the Register's decision was based on the agency's incorrect resolution of a legal question, i.e., whether Darden's claim lacked sufficient originality to be registrable, the Register's decision is subject to de novo review. More particularly, Darden argues that the Register's refusal to find sufficient originality in his submitted works despite the “extremely low” amount of creativity required for a work to be copyrightable, Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991), was an erroneous conclusion that must be set aside under the “not in accordance with law” provision of section 706(2)(A) of the APA. Additionally, Darden cites various decisions noting, in the context of copyright infringement litigation, “that copyrightability is always an issue of law” for the court. Gaiman v. McFarlane, 360 F.3d 644, 648 (7th Cir.2004); see Yankee Candle Co. v. Bridgewater Candle Co., 259 F.3d 25, 34 n. 5 (1st Cir.2001); Collezione Europa U.S.A. v. Hillsdale House, 243 F.Supp.2d 444, 452 (M.D.N.C.2003).
 We reject Darden's argument. Essentially, Darden is claiming that the Register simply reached the wrong result, not that the Register applied the wrong legal standard or misapprehended or ignored the controlling legal principles. See Turgeau v. Administrative Review Bd., 446 F.3d 1052, 1057 (10th Cir.2006) (explaining that under § 706(2)(A) “[f]ailure to apply the correct legal standard or to provide this court with a sufficient basis to determine that appropriate legal principles have been followed is grounds for reversal”) (internal quotation marks omitted). Review under section 706(2)(A) is “narrow” and the reviewing court is not permitted to substitute its own judgment for the judgment of the agency. *285 Motor Vehicle Mfrs. Ass'n v. State Farm Mut. Auto. Ins. Co., 463 U.S. 29, 43, 103 S.Ct. 2856, 77 L.Ed.2d 443 (1983). Rather, the court is to determine “whether the decision was based on a consideration of the relevant factors,” West Virginia v. Thompson, 475 F.3d 204, 212 (4th Cir.2007) (quoting Citizens to Preserve Overton Park, Inc. v. Volpe, 401 U.S. 402, 416, 91 S.Ct. 814, 28 L.Ed.2d 136 (1971)), or whether “the agency has relied on factors which Congress has not intended it to consider, [or] entirely failed to consider an important aspect of the problem,” Motor Vehicle Mfrs., 463 U.S. at 43, 103 S.Ct. 2856; see Thompson, 475 F.3d at 212.
Darden makes no assertion of this kind here; he merely argues that the agency should have concluded that the Maps and APPRAISERSdotCOM works contained the requisite level of creativity, citing Feist and other precedents. At every level of internal agency review, however, the Copyright Office recognized Feist as having established the contours of the originality element of a copyright claim. Because Darden has failed to identify any relevant factor or legal principle that the Register failed to consider, the agency's decision cannot be set aside as “contrary to law.”
 Finally, Darden argues that the Register's determination that a copyright claim lacked sufficient originality to warrant registration is subject to de novo review in the context of an infringement action under section 411(a) of the Copyright Act. He contends that de novo review of the copyrightability issue should also apply in the context of APA review for the sake of efficiency and predictability. We cannot agree.
Congress has afforded disappointed copyright applicants two separate methods of seeking redress for the decision of the Copyright Office not to register a copyright claim. First, as we explained previously, the applicant may file a review action under the APA against the Register of Copyrights for the sole purpose of having the denial of registration set aside. See 17 U.S.C. §§ 410(a), 701(e). Darden's action, of course, is such a case. Second, the claimant may seek judicial review of the rejected registration as part of an infringement action against an alleged infringer under section 411(a) of the Copyright Act.FN3
FN3. Registration is a prerequisite for a copyright infringement action. See 17 U.S.C. § 411(a). However, if “the deposit, application, and fee required for registration have been delivered to the Copyright Office in proper form and registration has been refused, the applicant is entitled to institute an action for infringement if notice ... is served on the Register of Copyrights” who “may, at his or her option, become a party to the action with respect to ... registrability of the copyright claim.” Id.
  Both kinds of actions involve, to one degree or another, consideration of whether a copyrightable claim has been presented. The Register has a statutory duty to examine applications for registration to determine if “the material deposited constitutes copyrightable subject matter and ... the other legal and formal requirements of [the Copyright Act] have been met.” 17 U.S.C. § 410(a). Whether the Register issues the certificate of registration or not, the Register necessarily makes a determination about the validity of the copyright claim. And, with respect to a copyright infringement action, the plaintiff must establish “ownership of a valid copyright and copying of constituent elements of the work that are copyrightable.” Compaq Computer Corp. v. Ergonome Inc., 387 F.3d 403, 407 (5th Cir.2004) (internal quotation marks omitted). Copyright ownership, in turn, requires “proof of originality and copyrightability.” *286 Id. at 408; see Feist, 499 U.S. at 361, 111 S.Ct. 1282.
Darden's argument notwithstanding, it is not a foregone conclusion that courts owe no deference whatsoever to the Register's decision in the context of an infringement action under section 411(a). Indeed, courts are split on this issue. Compare John Muller & Co. v. New York Arrows Soccer Team, 802 F.2d 989, 990 (8th Cir.1986) (applying abuse of discretion standard to infringement claim); Norris Indus. v. I.T. & T. Corp., 696 F.2d 918, 922 (11th Cir.1983) (same), with Carol Barnhart, Inc. v. Economy Cover Corp., 773 F.2d 411, 414 (2d Cir.1985) (according no deference to Register's copyrightability conclusion); OddzOn Prods., 924 F.2d at 347-50 (same). We need not weigh in on this issue, however, as Darden brought this action against the Register under the APA seeking review of the denial of registration for insufficient originality in his works. Even if no deference is due to the Register's decision by courts adjudicating infringement actions under section 411(a), we must apply the standards set forth in the APA. To do otherwise would be to ignore the clear and unambiguous language of the statute, which we cannot do. Accordingly, we review the decision to register Darden's works for abuse of discretion.
This is a long way of saying that it seems to me that if someone else registers a claim to a work that you think you own, you file a competing registration claim that "defames" or "slanders the title" of the first claimant. Since you are required to do so by law as a prerequisite to commencing suit in federal court, it would appear to me that any statements would be subject to absolute judicial immunity (subject to the limits of that doctrine).
Bible study was always a rough game.
Morris v Atchity Counterclaims
Purchase Copyright Litigation Handbook 2010 by Raymond J. Dowd from West here
Labels: administrative procedure act, bible study, competing copyright registrations, copyright law, copyright registration, defamation, derivative works, historical jesus, judicial immunity
Partner in Manhattan law firm Dunnington Bartholow & Miller LLP in New York City litigating in federal and state courts and arbitrations. Experienced trial and appellate practitioner. Author: Copyright Litigation Handbook (Thomson Reuters 2015-2016). The New York Law Journal called it "an indispensable guide". Serve on the Board of Directors of the Federal Bar Association, served as Chair of the Circuit Vice Presidents, Vice President for the Second Circuit and General Counsel. Member Board of Governors, National Arts Club. President, Network of Bar Leaders (2013-2014). Attorney advertising disclaimer - prior results do not guarantee success. The statements and opinions voiced here are my own and not of my law firm.