The Compendium of U.S. Copyright Office Practices, Third Edition (the “Compendium”) is the administrative manual of the Copyright Office. It was released and became effective on December 22, 2014.
The Compendium itself expressly states that it “does not override any existing statute or regulation. The policies and practices set forth in the Compendium do not in themselves have the force and effect of law and are not binding upon the Register of Copyrights or U.S. Copyright Office staff” (Introduction, 2). However, the Compendium explains the legal rationale and determinations of the Copyright Office and, as a practical matter, is widely cited and followed.
The Compendium is 1288 pages long and covers a broad spectrum of topics. It can be accessed here: copyright.gov. Some of the new provisions in the Third Edition markedly change the practices for many of our clients, and are summarized below.
1. Unit Publication Doctrine
Prior to the effective date of the Compendium, works that were published on the same date as a unit or collection—i.e., that were thematically related—could be registered as a single work. For example, a thematically-related jewelry collection, fabric collection, trophy collection, or the like could be registered in a single application, under a single title (but with each individual component identified for completeness of the record), and for a single fee. The rules now greatly restrict such filings:
As a general rule, it is not possible to register a group of pictorial, graphic, or sculptural works with one application, one filing fee, and a submission of identifying material. Instead, the applicant generally must submit a separate claim for each work. However, there are two limited exceptions to this rule.
- If the works are unpublished, it may be possible to register them as an unpublished collection. Photographs or illustrations of the two- or three-dimensional works may be used as identifying material in this situation, provided that the applicant asserts a claim in the works depicted in those images rather than the authorship involved in creating the images themselves.
- If the works were physically bundled together for distribution to the public as a single, integrated unit and if all the works were first published in that integrated unit, it may be possible to register them using the unit-of-publication option. Examples of such “bundling” are boxes of greeting cards or a boxed DVD set, including the liner, photographs, and the content of the DVDs.
(Section 914, p. 27). Our clients currently are receiving Office Actions on pending applications, citing to Sec. 914, and requiring the applicant to file new, separate applications and fees for each item identified in the pending application. Under the ordinary interpretation, the new rules should not apply retroactively, but the Copyright Office is in fact applying the new rules to pending applications.
Although it may be too late for pending applications based on published works, forward planning will provide a good work-around for future collections. The rules permit “bundling” for unpublished works. A “publication” is defined as “the distribution of copies or phonorecords of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending.” 17 U.S.C. § 101. The statute states that “offering to distribute copies or phonorecords to a group of persons for purposes of further distribution, public performance, or public display, constitutes publication.” Id. It also explains that “[a] public performance or display of a work does not of itself constitute publication.” Id.
Under this definition, displaying items on a website or in a brochure is not necessarily a “publication” if the items are not available for download or sale on the website or brochure. For example, art displayed in a gallery or jewelry worn by models in photographs might not be “published.” Every case is fact specific. The topic is described in greater detail at Compendium Section 1008.3(B), and for online content at Section 1008(F).
Therefore, a good strategy would be for clients who produce large copyrightable collections to group and file them before the works are “published.”
2. Protection of Three-Dimensional Objects in Catalogs or Websites
Under the prior practice, a copyright applicant could deposit a catalog or website, and with this single filing include all three-dimensional works depicted in the catalog or on the website, as well as the text, photographs, illustrations, and compilational authorship. Section 914 of the Compendium changes this practice as well.
A catalog may be registered as a compilation of photographs or a collective work consisting of photographs if there is a sufficient amount of creative expression in the author’s selection, coordination, and/or arrangement of the images. However, a catalog is not considered a compilation of the works or objects depicted in those photographs, nor is it considered a collective work consisting of the works or objects depicted therein. … As a result, a registration for a catalog generally does not extend to the works or objects shown in that work, even if they are eligible for copyright protection and even if the claimant owns all of the rights in those works or objects. Instead, the registration extends only to the pictorial authorship involved in creating the images, and the authorship involved in selecting, coordinating, and/or arranging those images within the catalog as a whole.
[A] catalog that merely contains photographs of necklaces and earrings that are offered for sale would not be considered a unit of publication, even if members of the public may order these items from the catalog either on an individual basis or as a set. At best, the catalog could only be used to register a claim in the selection, coordination, and/or arrangement of the photographs, rather than the actual items depicted in those images.
It appears that the work-around described above for the “unit publication” doctrine might work in this instance as well, although we have no precedent at this time and the rules are too new to have been put into practice yet. In other words, one might send in the catalog for its compilational authorship (see the discussion below) as one filing, and photographs of the unpublished copyrightable collections of three-dimensional works as a second filing.
3. Compilational Authorship
One of the frequent types of authorship claimed in a copyright application is compilational authorship – i.e., the selection and arrangement of content. Examples of compilational authorship include designing content on a website, creating a catalog featuring photographs and text, creating literary anthologies, or any type of work that involves bringing together existing items into a new presentation or package.
Under the prior practice, completing a copyright application would simply involve specifying “compilation” or checking the box for “compilation” in the section on “nature of authorship.” The practice has changed, per Section 1006.4, and the applicant must now identify the components of the compilation, for example, “compilation of text and photographs” or “compilation of illustrations, text and photographs.”
As in every case where specificity is required, care must be taken to associate the correct author with the contents and to list all of the categories of contents or they will not be covered by the claim.
4. Register the Original Underlying Work before Registering Derivative Works
For works that evolve over time, such as websites or catalogs, it is important to bear in mind that registering the current version of a work protects only what is new and different from the original version of the work. Therefore, it is important to the fullest extent possible to register the earliest version of a work before registering the current version.
Clients sometimes do not retain the earliest archival copy of a work, making compliance with this advice difficult. There is a work-around: The applicant can make a request for relief from the deposit requirements, if all components of the original work can no longer be recreated or a complete archival copy was not maintained (see Sections 1508.8 and 1511.8). However, the Compendium warns that even if registration is granted under this exception, the owner might not prevail in litigation. Section 1010.8 of the Compendium states, referring to protection for a website:
The U.S. Copyright Office may grant a request for special relief in certain situations and at its discretion. However, the applicant should be aware that prevailing in a copyright infringement action requires proof that the plaintiff’s work and the defendant’s work are substantially similar. If the content of a website has not been adequately preserved, the copyright owner may be unable to demonstrate what existed on that website at a particular point in time, even if the Office registered that content under a grant of special relief.
To avoid difficulties in enforcement, we recommend the retention and archiving of websites and other materials that are used and updated over the years, to allow for baseline copyright registrations. Doing so is important because U.S.-based individuals and companies are required to deposit their works for registration with the Copyright Office as a prerequisite to bringing an action in court. Moreover, there are substantial benefits to registration (for foreign owners as well), including the statutory presumptions that flow from a registration, as well as eligibility for statutory damages in lieu of proving actual damages, and recovery of attorneys’ fees.