Appendix — Darden v. Peters (No. 07-527)

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Table of Contents

Appendix Page

Opinion of

The United States Court of Appeals

For the Fourth Circuit

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Order of

The United States District Court

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Order of

The United States Court of Appeals

For the Second Circuit

Re: Denying Petition for Rehearing

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[ENTERED: MAY 24, 2007]

PUBLISHED

UNITED STATES COURT OF APPEALS

FOR THE FOURTH CIRCUIT

WILLIAM DARDEN,

Plaintiff-Appellant,

Vv. No. 06-1177

MARYBETH PETERS, Register of Copyrights,

Defendant-Appellee.

Appeal from the United States District Court

for the Eastern District of North Carolina,

at Raleigh.

Terrence W. Boyle, District Judge.

(2:04-cv-00030-BO)

Argued: February 1, 2007

Decided: May 24, 2007

Before WIDENER, TRAXLER, and DUNCAN,

Circuit Judges.

Affirmed by published opinion. Judge Traxler wrote

the opinion, in which Judge Widener and Judge

Duncan joined.

COUNSEL

ARGUED: Anthony J. Biller, COATS & BENNETT,

P.L.L.C., Cary, North Carolina, for Appellant. John

J. Fargo, Director, Intellectual Property Staff, Civil

Division, UNITED STATES DEPARTMENT OF

JUSTICE, Washington, D.C., for Appellee. ON

BRIEF: David E. Bennett, COATS & BENNETT,

P.L.L.C., Cary, North Carolina, for Appellant. David

Carson, General Counsel, Tanya Sandros, Associate

General Counsel, A. Renee Coe, Senior Attorney,

UNITED STATES COPYRIGHT OFFICE,

Washington, D.C.; Peter D. Keisler, Assistant

Attorney General, UNITED STATES

DEPARTMENT OF JUSTICE, Washington, D.C., for

Appellee.

OPINION

TRAXLER, Circuit Judge:

William Darden filed this action under the

Administrative Procedure Act against Marybeth

Peters, Register of Copyrights, seeking to set aside a

decision of the United States Copyright Office

denying Darden’s’ applications for copyright

registration. See 5 U.S.C. § 706(2)(A); 17 U.S.C. §

701(e). Finding no abuse of discretion in the

Darden’s works, we affirm the district court’s grant

of summary judgment to the Register.

Darden created a website called

“appraisers.com,” an online referral service for

consumers to locate real estate appraisers

throughout the United States. The website features

a series of maps that enable a user to find an

appraiser in a desired location by pointing to and

clicking on the appropriate map. The homepage of

appraisers.com features a stylized map of the United

States that serves as a link to a separate page

displaying a detailed map of any state selected by

the user. The state maps, in turn, are divided into

counties; the consumer can retrieve a list of local

appraisers by selecting the appropriate county.

In developing his website, Darden hired Sean

Pecor, a web designer, to create the maps. Pecor

started with a digital Census map of the United

States, colored the map blue, and added shading to

give the map a three-dimensional effect. Pecor

selected a font to use in labeling the states, and he

added call-out labels as well. Pecor used the same

process for the individual maps of each state. After

completing the project, Pecor assigned Darden any

design of the website.

In May 2002, Darden filed an application with

the Copyright Office seeking to register his website,

which he titled "APPRAISERS dotCOM" for

purposes of the application, as a technical drawing.

Darden described APPRAISERSdotCOM as a

derivative work based on "US Census black and

white outline maps" and "clip art." J.A. 123.

Darden’s application identified “graphics, text,

colors, and arrangement” as the material that he

added to the preexisting work and in which he

claimed copyright protection. J.A. 125. Additionally,

Darden filed a separate application for registration

of the work "Maps for APPRAISERSdotCOM." J.A.

286. Darden described his "Maps" work as a

derivative work that, similar to the

"APPRAISERSdot COM" work, was based on

preexisting "US Census black and white outline

maps." J.A. 287. He claimed copyright ownership in

the additions made by Pecor to the preexisting

census maps: "font and color selection; visual effects

such as relief, shadowing, and shading; labeling;

call-outs." J.A. 287.

The Examining Division of the Copyright

Office rejected both applications. With respect to

Darden’s claim in the Maps themselves, the

examiner concluded that the work "lackled] the

authorship necessary to support a copyright claim."

J.A. 119. The examiner explained that "[iJn order to

be copyrightable, a work of the visual arts must

contain a minimum amount of pictorial, graphic, or

sculptural authorship" and that "[clopyright does not

protect familiar shapes, symbols, and designs ... [or]

mere variations of typographic ornamentation,

lettering, fonts, or coloring." J.A. 119. The labeling,

relief, shadowing and shading that Darden

contributed to the preexisting maps, the examiner

concluded, are standard elements that do not contain

copyrightable authorship.

As for Darden’s application to register his

APPRAISERSdotCOM web pages as a technical

drawing, the examiner first noted that the work

"does not appear to contain any technical drawing."

J.A. 120. Regarding Darden’s claim for "graphics,"

the examiner determined that "[aJll of the graphic

elements appear to consist only of the preexisting

outline maps and some simple colored rectangles"

and thus the added material was not sufficiently

original to warrant copyright protection. J.A. 120.

Darden’s variations in color were rejected on the

same basis. The examiner observed, however, that

"(tlhe work contains text and perhaps a compilation

which can support a copyright claim, if they are

original” and indicated that Darden could pursue

registration of an original compilation by filing a

new or amended application that "omitt[ed] any

reference to ‘technical drawing, ‘graphics, or

‘colors.’ J.A. 120.

Darden sought reconsideration by the

Examining Division of the Copyright Office. With

respect to his application for registration of the Maps

work, Darden argued that the maps had a sufficient

level of creativity to warrant copyright protection

because of "the special combination of font and color

selection; visual effects such as relief, shadowing,

and shading; labeling; and call-outs. The information

the maps convey could easily be provided in other

ways; thus, the author should be allowed to protect

his creative efforts." J.A. 100. In support of his

request for reconsideration; Darden submitted a

written "declaration" from Sean Pecor who asserted

that, even though he used preexisting census maps

as the basis of his work, "each map was altered to

such a degree that each line on each map is

measurably changed from the digital originals . . .

obtained from the US Census." J.A. 116. Specifically,

Pecor "resized the maps and redrew many of the

antialiased lines" so that "during scale down of [the

maps], [the images would not] get a ‘chunky’ look."

J.A. 116.4 Pecor claims he also "created a three-

dimensional effect by repeating each outline several

times — one bright blue outline slightly askew, one

darker outline slightly askew, etc." J.A. 116.

Darden submitted an amended application for

registration of the APPRAISERSdotCOM work. The

revised application indicated that the nature of

authorship was a "compilation and arrangement of

maps, text, graphics, and data" as opposed to a

technical drawing as indicated in the original

application. J.A. 107. Darden described the new

material in which he claimed copyright as "[t]ext;

map designs and formats; compilation, formating,

and arrangement of text, maps, graphics, and listing

data." J.A. 108. Darden made clear that he was

asserting no claim in "the content of the listing

data." J.A. 108.

The Examining Division denied Darden’s request for

reconsideration and registration of his copyright

claims. The examining attorney explained that

filn the case of a derivative work,

additions or changes appearing in the

work for the first time .. . mean[ing]

that the new material must contain a

sufficient amount of original and

creative authorship to be copyrightable.

preexisting or previously registered

According to Pecor, "[ajn anti-aliased line is a line

digitally softened by a graphic program to render a line more

smoothly.” J.A. 116.

material... . [W)here the new material

consists solely of the uncopyrightable

elements such as a change of layout,

format, size, spacing or coloring,

registration is not possible.

J.A. 94. The examiner concluded that the changes

made to Darden’s maps work "amountled] primarily

to layout and format as well as de minimis

compilation" and therefore lacked "a_ sufficient

amount of originality and creativity to support a

the APPRAISERSdotCOM work, the examiner again

suggested the possibility of a registrable claim "in

only the ‘text and compilation of data” but indicated

that a new application, revised to limit the claim to

“text and compilation of data,” was required. J.A.

98.

Darden then sought review of the denial of his

applications by the Copyright Office Board of

Appeals. Darden’s argument was_ essentially

identical to that asserted in his request for

reconsideration:

Mr. Darden is not seeking a copyright

on one particular design element of the

maps in question, nor is he asking for

protection of "simple combinations" of

elements such as "familiar shapes,

symbols, and designs; mere variations

of typographic ornamentation, lettering,

fonts or coloring." Mr. Darden requests

protection for the overall pictorial

expressions of his maps.

Mr. Darden’s overall design, his special

combination of font and color selection,

selection and arrangement of

geographic locations such as counties,

visual effects such as relief, shadowing,

and shading, labeling, and call-outs

provide the "creative spark" that

make(s] the maps original and eligible

for protection.

J.A. 87. Darden also presented his own declaration

in which he stated that he had "received calls from

people and companies asking whether I would

license our maps for them to use on their web sites . .

. {demonstrating that] people recognize the maps as

being unique and proprietary to us." J.A. 92.

The Board of Appeals again affirmed the

denial of registration for both the Maps and the

APPRAISERSdotCOM works. With regard to the

concluded, as did the Examining Division, that the

maps were merely "representations of the

preexisting census maps in which the creative spark

is utterly lacking or so trivial as to be virtually

nonexistent." J.A. 74 (internal quotation marks

omitted). The Board also noted that any marketplace

confusion created by the use of Darden’s maps by

third parties was irrelevant to the question of

whether the maps were copyrightable, as were

requests to Darden by website browsers for license to

use the maps. As for the APPRAISERSdotCOM

application, the Board of Appeals affirmed the denial

of registration "due to the expansive scope of the

claim." J.A. 76. Although the Board of Appeals

endorsed the notion that there could well be

copyrightable elements included on the website,

Darden’s claim as stated in his registration

application — for "text, maps, and formatting of an

Internet web page" — was simply "too broad" to

warrant protection. J.A. 76.

Darden then brought this action against the

Procedure Act ("APA"), see 5 U.S.C. §§ 701-706,

seeking judicial review of the decision of the

claim. Rejecting Darden’s argument that the

decision of the Copyright Office is subject to a de

novo standard of review, the district court concluded

that the Copyright Office did not abuse its discretion

in refusing registration, see 5 U.S.C. § 706(2)(A), and

granted the Registers motion for summary

judgment.

II.

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).2 One routine

function of the Register is to examine applications

for registration to determine if "the material

deposited constitutes copyrightable subject matter

. 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.

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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

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).

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

lla

& David Nimmer, Nimmer on Copyright §

12.11[B][3], 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 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

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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.").

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

(1984). Thus, as there is no constitutional right to

constitutional right" as it must be for section

706(2\B) to apply.

Darden next contends that because the

Registers 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 (1991), was an

erroneous conclusion that must be set aside under

the "not in accordance with law" provision of section

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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 uv.

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 uv.

Administrative Review Bd., 446 F.3d 1052, 1057

(10th Cir. 2006) (explaining that under § 706(2){A)

"[flailure 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. Motor Vehicle Mfrs. Ass’n v.

State Farm Mut. Auto. Ins. Co., 463 U.S. 29, 43

(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 (1971)), or whether "the agency has relied on

factors which Congress has not intended it to

consider, [or] entirely failed to consider an important

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aspect of the problem," Motor Vehicle Mfrs., 463 U.S.

at 43; 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 APPRAISERS dotCOM

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 411l(a) of the

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

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

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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.®

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

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." Compag

Computer Corp. v. Ergonome Inc., 387 F.3d 404, 407

(5th Cir. 2004) (internal quotation marks omitted).

originality and copyrightability." Id. at 408; see Fest,

499 U.S. at 361.

Darden’s argument notwithstanding, it is not

a foregone conclusion that courts owe no deference

. 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." Jd.

16a

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. IT&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.

ITI.

Darden next contends that even if the

standard, it must be set aside because his Maps and

APPRAISERSdotCOM works met the minimum

standard of originality required for a copyrightable

claim. Again, we disagree.

The Copyright Act affords copyright protection

for “original works of authorship fixed in any

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tangible medium of expression," including "pictoral,

graphic, and sculptural works." 17 U.S.C. §

102(a)(5). A work must be original to be

copyrightable; indeed, the "sine qua non of copyright

is originality." Feist, 499 U.S. at 345. To be

"original," the work in question must have been

"independently created by the author (as opposed to

copied from other works)," and it must "possess[ ] at

least some minimal degree of creativity." Id. The

threshold level of creativity required for

copyrightability is low such that the "vast majority of

works make the grade quite easily, as they possess

some creative spark." Jd. Nevertheless, "[t]here

remains a narrow category of works in which the

creative spark is utterly lacking or so trivial as to be

virtually nonexistent." Jd. at 359. The Copyright

Office established a regulation providing examples of

the types of works that fall into the category of

works that lack a minimum level of creativity and do

not qualify for copyright protection, including

"[wlords and short phrases such as names, titles,

and slogans; familiar symbols or designs; mere

variations of typographic ornamentation, lettering or

coloring; mere listing of ingredients or contents." 37

C.F.R. § 202.1(a).

The originality requirement applies to

derivative works as well. See 17 U.S.C. § 101

(defining derivative work as a work "based upon one

or more preexisting works"). The author’s copyright

protection in a "derivative work only extends to the

elements that he has added to the work." Dam

Things from Denmark v. Russ Berrie & Co., 290 F.3d

548, 563 (3d Cir. 2002). And, the authors

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contributions must _ satisfy the originality

requirement. See Feist, 499 U.S. at 359.

We first consider the refusal of the Copyright

Office to register Darden’s Maps work. In each of the

three letters denying registration, the Copyright

Office explained that the changes and additions

Darden made to the standard census maps in his

Maps work claim were uncopyrightable elements

that were insufficiently original or creative to be

copyrightable. See Satava v. Lowry, 323 F.3d 805,

812 n.5 (9™ Cir. 2003) (noting that "expressions that

are standard, stock, or common to a particular

subject matter or medium are not protectable under

such as color, shading, and labels using standard

fonts and shapes fall within the narrow category of

works that lack even a minimum level of creativity;

indeed, Darden’s contributions to the preexisting

maps resemble the list of examples of

uncopyrightable works set forth in 37 C.F.R. §

202.1(a).

Darden points out that courts have recognized

that maps have "have an inherent pictorial or

photographic nature that merits copyright

protection.” Mason v. Montgomery Data, Inc., 967

F.2d 135, 142 (5th Cir. 1992); see Streetwise Maps,

Inc. v. Vandam, Inc., 159 F.3d 739 (2d Cir. 1998).

The general proposition that maps are categorically

eligible for copyright registration, however, does not

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establish that the maps at issue here are

copyrightable.*

Darden also argues that the Copyright Office

abused its discretion by failing to credit evidence

showing that real estate appraisers, other real estate

companies, and Darden’s customers associate these

particular maps with Darden’s company. For

example, Darden has "received phone calls from

people and companies asking whether [he] would

license [the] maps for them to use." J.A. 92. And,

Darden’s customers have reported confusion after

encountering a competitors website that had

downloaded Darden’s maps. Recognizing the maps,

the customers believed that Darden operated the

competitor's website. Darden asserts that this

evidence of association demonstrates that the maps

were unique, creative and original.

We disagree. Source identification is the

hallmark of trademark law, not copyright. See Two

Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768-

69 (1992). Furthermore, a work is copyrightable at

the time of its creation or not at all. Evidence that

customers associated the work with Darden is an

. The decisions Darden relies upon do not assist him. For

instance, Streetwise Maps discusses the pictorial elements

used, such as color, in the context of an infringement claim —

not an examination of copyrightability for purposes of

registration. See Streetwise Maps, 159 F.3d at 746-48. Mason,

unlike this case, involved the addition of more than simple

colors and labels to a preexisting map. Mason, for example,

depicted “the location, size, and shape of surveys, land grants,

tracts, and various topographical features" on a county map

produced by the United States Geological Survey." Mason, 967

F.2d at 136.

20a

indication of commercial success over time, not

originality. See Paul Morelli Design, Inc. v. Tiffany &

Co., 200 F. Supp. 2d 482, 487-89 (E.D. Pa. 2002).

We conclude that the Register properly

refused to register Darden’s Maps work. Because

there was no abuse of discretion, we decline to set

aside the decision of the Copyright Office.

With respect to the APPRAISERSdotCOM

work, Darden argues that the Register should have

granted his application to copyright his website as a

compilation. The Copyright Act defines a compilation

as a "work formed by the collection and assembling

of preexisting materials or of data that are selected,

coordinated, or arranged in such a way that the

resulting work as a whole constitutes an original

work of authorship.” 17 U.S.C. § 101. Feist instructs

that, where a copyright is sought in a compilation,

"the principal focus should be on whether the

selection, coordination, and arrangement are

sufficiently original to merit protection." 499 U.S. at

358.

Darden’s revised application indicated that he

was claiming protection in the website’s "text; map

designs and formats; compilation, formatting, and

arrangement of text, maps, graphics, and listing

data." J.A. 108. In rejecting Darden’s claim, the

contain copyrightable elements, but its formatting

and layout is not registrable. Compilation

authorship is limited to the original selection,

2la

coordination and arrangement of the elements or

data contained within a work. See Satava, 323 F.3d

at 812.

We conclude that the Copyright Office acted

well within its discretion in concluding that Darden

failed to present a copyrightable compilation.

IV.

For the foregoing reasons, we conclude that

the Copyright Office did not abuse its discretion in

rejecting Darden’s application for registration of his

Maps and APPRAISERSdotCOM works.

Accordingly, we affirm the order of the district court

granting the Registers motion for summary

judgment and denying Darden’s cross-motion for

summary judgment.

AFFIRMED

22a

IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF

NORTH CAROLINA

NORTHERN DIVISION

No. 2:04-CV-30-BO(1)

WILLIAM DARDEN,

Plaintiff,

v. ORDER

MARYBETH PETERS,

Defendant.

This matter is before the Court on the parties’

cross motions for summary judgment. Plaintiff

William Darden brings this action pursuant to the

Administrative Procedures Act (“APA”), 5 U.S.C. §§

701-706, seeking review of an adverse decision by

Defendant Marybeth Peters, Register of Copyrights

(“Register” or “Copyright Office”) denying copyright

registration. A hearing on the instant motions was

held in Raleigh on June 6, 2005. For the reasons

discussed below, Defendant’s Motion for Summary

Judgment is GRANTED and Plaintiffs Motion for

Summary Judgment is DENIED.

BACKGROUND

In May of 2002, Plaintiff filed two Form VA

applications with the Copyright Office. Plaintiff

23a

sought registered copyrights for two separate but

related works: (1) Maps for APPRAISERSdotCOM

(“Maps”), which consists of a series of maps

appearing on Plaintiffs website, and (2) the website

itself (“APPRAISERSdotCOM”).' The website is an

online referral service that allows consumers to

locate real estate appraisers throughout the United

States. The Maps are a series of graphical

representations of the United States, and

geographical subsets thereof, that provide users with

a “point-and-click” application for locating

appraisers on the APPRAISERSdotCOM website.

Plaintiffs application was initially examined

by Wayne Crist, a Senior Examiner in the Visual

Arts Section of the Copyright Office. By letter dated

May 30, 2002, Mr. Crist informed Plaintiff that

neither of his works were eligible for registration.

Mr. Crist determined that the Maps lacked the

authorship necessary to support a copyright claim,

in part because they were derived from U.S. Census

maps in the public domain. According to the

examiner, the graphical changes made to the

existing census maps were insufficient to establish

copyrightable authorship. The Copyright Office twice

reconsidered the denial of registration, and both

times affirmed Mr. Crist’s determination that the

Maps were not copyrightable.

The Copyright Office also denied registration

for APPRAISERSdotCOM. In his initial application,

“APPRAISERSdotCOM” was the name used by Plaintiff

and the Copyright Office to refer to Plaintiffs website, found at

http:/Awww.appraisers.com (last visited December 1, 2005).

24a

Plaintiff described APPRAISERSdotCOM as a

“technical drawing” to which the author had added

“graphics, text, colors and arrangement.” However,

Mr. Crist noted in his letter denying registration

that the application for APPRAISERSdotCOM did

not appear to contain a technical drawing, and that

while Plaintiff possibly had a claim for the website’s

text and data compilation, Plaintiff could not make a

legitimate copyright claim for the website’s format,

layout or page design.?

On July 7, 2004, the Copyright Office, by

letter, denied registration in the second appeal. The

examiners found that the final application for

registration of APPRAISERSdotCOM was too broad:

“Specific textual, and perhaps also, graphic or

pictorial matter within the web pages may have been

selected, coordinated and arranged in such a way

that a claim of copyright may be sustained for such a

compilation, but this would entail submission of a

new application limiting the scope of the claim

’ During the two appeals, Plaintiff made changes to the

description of his claim for APPRAISERSdotCOM in an

unsuccessful attempt to submit a cognizable claim for

authorship.

; Mr. Crist also informed Plaintiff that his application

was procedurally defective. Plaintiffs submission included

computer printouts of the website that were cated May 12,

2002. However, Plaintiff claimed an initial publication date of

December 1, 1999. Mr. Crist asked Plaintiff to confirm that the

printouts submitted reflected the authorship of the works as of

the publication date. Plaintiff later responded that except for

changes to the appraiser listings, the website layout had

undergone de minimus changes since the claimed publication

date.

25a

accordingly.” The Copyright Office stated that the

denial constituted final agency action on the matter.

On September 7,2004, Plaintiff brought this action

against Defendant pursuant to the APA, seeking

reversal of the Register’s decision.

ANALYSIS

Standard of Revieu*

Congress has expressly vested the Register of

Copyrights with the power to determine whether a

submission constitutes copyrightable subject matter.

17 U.S.C. § 410(a). The Copyright Act, 17 U.S.C. §§

101-810, provides that decisions of the Register of

Copyrights are subject to review under the APA. 5

U.S.C. § 701(e).

The APA permits reviewing courts to set aside

agency decisions found to be “arbitrary, capricious,

an abuse of discretion, or otherwise not in

accordance with law.” 5 U.S.C. § 706(2)(A), (E); Duke

Power Co. v. US. Nuclear Regulatory Comm’n, 770

At the Raleigh hearing on June 6, 2005, both parties

agreed that this case should be decided on summary judgment.

See Custom Chrome v. Ringer, 35 U.S.P.Q.2d 1714 (D.D.C.

June 30, 1995); Magic Marketing, Inc. v. Mailing Services of

Pittsburgh, Inc., 634 F. Supp. 769 (W.D.Pa. 1986). Summary

judgment is appropriate if there is no genuine issue as to any

material fact and the moving party is entitled to judgment as a

matter of law. See Fed. R. Civ. P. 56(c); Anderson v. Liberty

Lobby, Inc., 477 U.S. 242, 247 (1986). A moving party is

entitled tc summary judgment when the record, taken as a

whole, could not lead a rational trier of fact to find for the non-

movant. See Matsushita Elec. Indus. Co. v. Zenith Radio Corp.,

475 U.S. 574, 587 (1986).

26a

F.2d 386, 389 (4" Cir. 1985). The scope of a court’s

review under the “arbitrary and capricious” standard

is narrow. See Bowman Transp., Inc. v. Arkansas-

Best Freight Sys., Inc., 419 U.S. 281, 285 (1974). A

court should “consider whether the decision was

based on a consideration of the relevant factors and

whether there has been a clear error of judgment.”

However, “[{t]he court is not empowered to substitute

its judgment for that of the agency.” Citizens to

Preserve Overton Park, Inc. v. Volpe, 401 U.S. 402,

416 (1971).

Plaintiff argues that the Register’s denial of

making such an argument, Plaintiff has erroneously

conflated two types of copyright cases: an

infringement action and a challenge to an adverse

decision of the Copyright Office. In a copyright

infringement action, copyrightability is a question of

law reserved to the judge and subject to de novo

review by appellate courts. See, e.g. Pivot Point Int'l,

Inc. v. Charlene Prod., Inc., 372 F.3d 913, 919 (7th

Cir. 2004); Collezione Europa U.S.A., Inc. uv.

Hillsdale House, Ltd., 243 F. Supp. 2d 444, 452

(M.D.N.C. 2003). On the other hand, a challenge to

an adverse decision by the Register of Copyrights is

brought pursuant to the APA, and therefore does not

hinge on the copyrightability of the material at issue

but on the propriety of the Register’s decision.

While not specifically addressed in this circuit,

courts deciding the appropriate standard of review

have held that the Register of Copyrights is entitled

to deference, and have reviewed denials of

registration for an abuse of discretion in suits

27a

brought under the APA. OddzOn Products v. Oman,

924 F.2d 346, 347 (D.C. Cir. 1991); Atari Games uv.

Oman, 888 F.2d 878, 879 (D.C. Cir. 1989); Coach,

Inc. v. Peters, 386 F. Supp. 2d 495, 497 (S.D.N.Y.

September 6, 2005); Custom Chrome v. Ringer, 35

U.S.P.Q.2d 1714 (D.D.C. June 39, 1995); see also 3

M. Nimmer & D. Nimmer, Nimmer on Copyright §

12.11[B][3] (2005). In such cases, if the Register

“intelligibly account(s]” for the decision via “reasoned

decision making” then the result will not be upset.

Atari Games, 888 F.2d at 879. The Register’s refusal

to register Plaintiffs copyrights will therefore not be

reversed absent an abuse of discretion.

Legal Background

The Constitution provides that “The Congress

shall have the Power ... To promote the Progress of

Science and useful Arts, by securing for limited

Times to Authors and Inventors the exclusive Right

to their respective Writings and Discoveries.” U.S.

Const. art. I, § 8, cl. 8. The Copyright Act of 1976

vests the Register of Copyrights with the duty to

determine whether material submitted for

registration is copyrightable. 17 U.S.C. § 410(a). The

“original works of authorship fixed in any tangible

medium of expression.” 17 U.S.C. § 102. Works of

authorship include ‘pictoral, graphical and

sculptural works.” 17 U.S.C. § 102(a)(5).

To be copyrightable, a work must be original.

17 U.S.C. § 102(a). Originality is the “sine qua non”

of copyright. Feist Pub., Inc. v. Rural Tel. Serv. Co.,

499 U.S. 340, 345 (1991). In Feist, the Supreme

28a

Court held that to meet the originality requirement,

a work must have been independently created by the

author, and must possess at least a minimum degree

of creativity. Id. at 345. While “the requisite level of

creativity is extremely low”, there is “a narrow

category of works in which the creative spark is

utterly lacking or so trivial as to be virtually

nonexistent. Such works are incapable of sustaining

a valid copyright.” Jd. at 345, 349.

Pursuant to its congressionally delegated

authority, the Copyright Office has promulgated

regulations that apply the Supreme Court’s

originality requirement. See 17 C.F.R. § 202.1. Items

not subject to copyright include “[wlords and short

phrases such as names, titles, and slogans; familiar

symbols or designs; mere variations of typographic

ornamentation, lettering or coloring; mere listing of

ingredients or contents.” Jd.

The Register’s Denial of Copyright Registration

for the Maps

In this case, the Copyright Office reviewed

Plaintiffs application three times, and each time

found that Plaintiffs Maps did not satisfy the

originality requirement. Defendant’s three rejections

of Plaintiffs application evidence a _ carefully

reasoned decision that was within the Register’s

discretion. In the first letter denying Plaintiffs

application, Mr. Crist informed Plaintiff that the

visual modifications made to preexisting census

maps were insufficient to make the Maps “original.”

The second denial of Plaintiffs application clarified

that in the case of derivative work, “new material

29a

must contain a sufficient amount of original and

creative authorship to be copyrightable.” The

census maps noted by Plaintiff-- such as layout,

format, size, spacing and coloring--were not

registerable. Citing Feist, the third denial of

Plaintiffs registration stated that the maps were

“representations of the preexisting census maps ‘in

which the creative spark is utterly lacking or so

trivial as to be virtually nonexistent.”

The final rejection letter went into great detail

concerning the lack of creativity evident in the Maps.

The minor changes made to the U.S. Census maps

were insufficiently creative. The author used postal

abbreviations to identify the 50 states®. The author

used shading to add minor visual effects. The maps

of the individual states were divided by county. The

individual state maps are shaded in blue, while the

county names are written in white.

The Copyright Office has reasonably

determined that certain graphical elements of a

work, such as shading, coloring or fonts, are not by

themselves sufficient to make a work original.

Compendium of Copyright Office Practices I],

§305.06. Each of the changes to the existing census

maps was in the nature of a shading, coloring or font

change. The Register reasonably applied its own

internal regulations in concluding that these

. Plaintiff hired Sean Pecor to design the maps in late

1997. In 1999, Mr. Pecor assigned all copyrights in the Maps to

Plaintiff.

30a

elements in the Maps were uncreative and did not

render the Maps an original work of authorship.

Plaintiff argues that in focusing on particular

elements, the Copyright Office failed to look at the

Maps as a whole. However, the Copyright Office

expressly noted that it was bound to examine

submitted works “as a whole.” Atari Games Corp. v.

Oman, 888 F.2d 878 (D.C. Cir. 1989). The final

denial of Plaintiffs application broadly states that

“film this case there is insufficient pictorial or

graphic authorship to support registration.” The fact

that the Copyright Office goes into detail elsewhere

is the hallmark of a reasoned decision, not a

misapplication of the law. Furthermore, any detailed

description of a potentially copyrightable work

requires some recital of constituent parts, as is the

case here.

Plaintiff also argues, as he did in each of his

appeals to the Copyright Office, that Maps are

inherently copyrightable.*® Plaintiff cites a number of

cases that found maps to be worthy of copyright

protection, including Mason v. Montgomery Data,

Inc., 967 F.2d 135 (5th Cir. 1992), and Streetwise

Maps, Inc. v. Vandam, Inc., 159 F.3d 739 (2nd Cir.

1998). The Copyright Office correctly found Plaintiffs

argument inapposite. The Mason decision was an

. Plaintiff also goes to great lengths to detail the effort

put into Mr. Pecor’s creation of the Maps. However, any “sweat

of the brow” theory of copyright protection that grants

protection based on the effort expended on the work, has been

firmly rejected. Feist, 499 U.S. at 353.

3la

infringement action in which the Fifth Circuit Court

of Appeals found that certain maps met the

minimum level of creativity required by Fleist, based

on significant changes made by the author. 967 F.2d

at 145. Similarly, in Streetwise Maps the Second

Circuit Court of Appeals found that a series of maps

was made copyrightable as a result of depictions and

colors added by the author. 159 F.2d at 748. Both

cases represent a conclusion that the particular

maps at issue satisfied the originality requirement;

they do not imply that the Copyright Office must

approve registration of any and all maps.

Because the Register correctly applied the law

and carefully considered pertinent factors in

determining that the Maps lacked the requisite level

of originality, the denial of registration must be

upheld.

The Register’s Denial of Copyright Registration

for APPRAISERSdotCOM

The Copyright Office also denied registration

for APPRAISERSdotCOM. Ultimately, registration

was denied because Plaintiffs application was too

broad.’ Plaintiff initially sought to copyright the

’ In the letter denying Plaintiffs second appeal, the

APPRAISERSdotCOM remained procedurally' defective,

because it did not include copies of the website as it appeared

on the claimed publication date, December 1, 1999. In an

earlier letter, Plaintiff had affirmed that the copies of the

website were representative of the site on the publication date,

because there had been only “de minimus changes” since then.

Nevertheless, in the letter denying Plaintiffs second appeal, the

32a

website’s “compilation and arrangement of maps,

text, graphics and data,” and subsequently amended

the claim to seek registration of “text, maps and

formatting of an Internet web page.” The Copyright

Office determined that while there might be

copyrightable elements on the

APPRAISERSdotCOM website, the scope of

Plaintiffs claim for copyright was simply too

expansive. The examiners reasoned that because the

maps were not copyrightable, the arrangement of the

maps on the website was also not copyrightable.

Furthermore, the examiners noted that in general,

formatting of web pages is not copyrightable.

Plaintiff argues that the Copyright Office

erred in failing to grant. registration to

APPRAISERSdotCOM as a_ compilation. A

compilation is a work “formed by the collection and

assembling of preexisting materials or of data that

are selected, coordinated, or arranged in such a way

that the resulting work as a whole constitutes an

original work of authorship.” 17 U.S.C. § 101.

However, a compilation must be original to obtain

protection. Fleist, 499 U.S. at 358. “The principal

focus should be on whether the _ selection,

coordination, and arrangement are sufficiently

original to merit protection. Not every selection,

coordination, or arrangement will pass muster.” Jd.

The Copyright Office repeatedly addressed

Plaintiffs claim for copyright of

APPRAISERSdotCOM as a compilation. Looking at

dated materials “appears fatal to such a [copyrightability]

claim.”

33a

the website as a whole, the examiners concluded

that the arrangement of elements lacked even a

minimal degree of creativity, and that “protection for

the overall format of a web page is inconsistent with

copyrightability.” In the third denial of Plaintiffs

claim, the Copyright Office explained that “[tlhe

longstanding practice of the Copyright Office is to

deny registration of the arrangement of elements on

the basis of physical or directional layout in a given

space, whether that space is a sheet of paper or a

screen of space meant for information displayed

digitally.” The examiners also noted that while

certain elements of the website might be

copyrightable, including the arrangement of data

into categories, Plaintiffs request for registration

was far too broad since it included a claim for

uncopyrightable Maps, unoriginal formatting

elements, and an uncreative layout of those

elements.

Based on a review of the administrative

record, the Copyright Office acted within its

discretion in denying registration of

APPRAISERSdotCOM as a copyrightable

compilation. The agency provided ample factual and

legal support for the conclusion that the website

arrangement lacked any degree of creativity, and

correctly applied controlling precedent on the

copyrightability of compilations. Additionally, the

Court notes that the Register of Copyrights may

demand that submissions comply with reasonable

procedures,° including requirements that claims for

. Congress has authorized the Register to “establish

regulations not inconsistent with law for the administration of

the functions and duties made the responsibility of the

34a

elements and that submissions reflect the work as of

the claimed publication date. The Copyright Office

acts within its discretion when it denies registration

on such grounds.

CONCLUSION

The Court finds that Defendant intelligibly

accounted for the denial of Plaintiffs application for

Defendant’s Motion for Summary Judgment is

hereby GRANTED, and Plaintiffs Motion for

Summary Judgment is DENIED.

SO ORDERED, this, the 6th day of December 2005.

/s/ Terrence W. Boyle

TERRENCE W. BOYLE

UNITED STATES DISTRICT JUDGE

registration of copyrights. See 17 C.F.R. § 202.3.

35a

(ENTERED: JULY 23, 2007]

UNITED STATES COURT OF APPEALS

FOR THE FOURTH CIRCUIT

FILED

July 23, 2007

No. 06-1177

2:04-cv-00030-BO

WILLIAM DARDEN

Plaintiff - Appellant

—

MARYBETH PETERS, Register of Copyrights

Defendant - Appellee

ORDER

Appellant has filed a petition for rehearing.

The Court denies the petition for rehearing.

Entered for a panel composed of Judge

Traxler, Judge Duncan, and Senior Judge Widener.

For the Court,

/s/ Patricia S. Connor

CLERK

36a

US. TONST. art. 1, $3, cl. &

Section. 8.

Clause 8: To promote the Progress of Science and

useful Arts, by securing for limited Times to Authors

and Inventors the exclusive Right to their respective

Writings and Discoveries.

37a

5 U.S.C. § 702

Section 702. Right of review

A person suffering legal wrong because of

agency action, or adversely affected or aggrieved by

agency action within the meaning of a relevant

statute, is entitled to judicial review thereof. An

action in a court of the United States seeking relief

other than money damages and stating a claim that

an agency or an officer or employee thereof acted or

failed to act in an official capacity or under color of

legal authority shall not be dismissed nor relief

therein be denied on the ground that it is against the

United States or that the United States is an

indispensable party. The United States may be

named as a defendant in any such action, and a

judgment or decree may be entered against the

United States: Provided, That any mandatory or

injunctive decree shall specify the Federal officer or

officers (by name or by title), and their successors in

office, personally responsible for compliance.

Nothing herein (1) affects other limitations on

judicial review or the power or duty of the court to

dismiss any action or deny relief on any other

appropriate legal or equitable ground; or (2) confers

authority to grant relief if any other statute that

grants consent to suit expressly or impliedly forbids

the relief which is sought.

38a

5 U.S.C. § 703

Section 703. Form and venue of proceeding

The form of proceeding for judicial review is

the special statutory review proceeding relevant to

the subject matter in a court specified by statute or,

in the absence or inadequacy thereof, any applicable

form of legal action, including actions for declaratory

judgments or writs of prohibitory or mandatory

injunction or habeas corpus, in a court of competent

jurisdiction. If no special statutory review

proceeding is applicable, the action for judicial

review may be brought against the United States,

the agency by its official title, or the appropriate

officer. Except to the extent that prior, adequate,

and exclusive opportunity for judicial review is

provided by law, agency action is subject to judicial

review in civil or criminal] proceedings for judicial

enforcement.

5 U.S.C. § 706

Section 706. Scope of review

To the extent necessary te decision and when

presented, the reviewing court shall decide all

relevant questions of law, interpret constitutional

and statutory provisions, and determine the

meaning or applicability of the terms of an agency

action. The reviewing court shall —

(1) compel agency action unlawfully withheld or

unreasonably delayed; and

39a

(2) hold unlawful and set aside agency action,

findings, and conclusions found to be -

(A) arbitrary, capricious, an abuse of

discretion, or otherwise not in accordance with

law;

(B) contrary to constitutional right, power,

privilege, or immunity;

authority, or limitations, or short of statutory

right;

(D) without observance of procedure required

by law;

(E) unsupported by substantial evidence in a

case subject to sections 556 and 557 of this title

or otherwise reviewed on the record of an agency

hearing provided by statute; or

(F) unwarranted by the facts to the extent

that the facts are subject to trial de novo by the

reviewing court.

In making the foregoing determinations, the

court shall review the whole record or those parts of

it cited by a party, and due account shall be taken of

the rule of prejudicial error.

17 U.S.C, § 102

Section 102. Subject matter of copyright: In

general

(a) Copyright protection subsists, in accordance

with this title, in original works of authorship fixed

in any tangible medium of expression, now known or

later developed, from which they can be perceived,

reproduced, or otherwise communicated, either

40a

directly or with the aid of a machine or device.

Works of authorship include the following categories:

(1) ‘literary works;

(2) musical works, including any

accompanying words;

(3) dramatic works, including = any

accompanying music;

(4) | pantomimes and choreographic works;

(5) pictorial, graphic, and sculptural works;

(6) motion pictures and other audiovisual

works;

(7) sound recordings; and

(8) architectural works.

(b) In no case does copyright protection for an

original work of authorship extend to any idea,

procedure, process, system, method of operation,

concept, principle, or discovery, regardless of the

form in which it is described, explained, illustrated,

or embodied in such work.

17 U.S.C. § 103

Section 103. Subject matter of copyright:

Compilations and derivative works

(a) The subject matter of copyright as specified by

section 102 includes compilations and derivative

works, but protection for a work employing

preexisting materiai in which copyright subsists

does not extend to any part of the work in which

such material has been used unlawfully.

(b) The copyright in a compilation or derivative

work extends only to the material contributed by the

author of such work, as distinguished from the

4la

preexisting material employed in the work, and does

not imply any exclusive right in the preexisting

material. The copyright in such work is independent

of, and does not affect or enlarge the scope, duration,

ownership, or subsistence of, any copyright

protection in the preexisting material.

17 U.S.C. § 410

Section 410. Registration of claim and issuance

of certificate

(a) When, after examination, the Register of

Copyrights determines that, in accordance with the

provisions of this title, the material deposited

constitutes copyrightable subject matter and that

the other legal and formal requirements of this title

have been met, the Register shall register the claim

and issue to the applicant a certificate of registration

under the seal of the Copyright Office. The

certificate shall contain the information given in the

application, together with the number and ettective

date of the registration.

(b) In any case in which the Register of

Copyrights determines that, in accordance with the

provisions of this title, the material deposited does

not constitute copyrightable subject matter or that

the claim is invalid for any other reason, the

applicant in writing of the reasons for such refusal.

registration made before or within five years after

first publication of the work shall constitute prima

facie evidence of the validity of the copyright and of

the facts stated in the certificate. The evidentiary

42a

weight to be accorded the certificate of a registration

made thereafter shall be within the discretion of the

court.

(d) The effective date of a copyright registration is

the day on which an application, deposit, and fee,

which are later determined by the Register of

Copyrights or by a court of competent jurisdiction to

be acceptable for registration, have all been received

in the Copyright Office.

17 U.S.C. § 411

Section 411. Registration and infringement

actions

(a) Except for an action brought for a violation of

the rights of the author under section 106A(a), and

subject to the provisions of subsection (b), no action

for infringement of the copyright in any United

States work shall be instituted until registration of

the copyright claim has been made in accordance

with this title. In any case, however, where 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 thereof, with a copy of the

complaint, is served on the Register of Copyrights.

The Register may, at his or her option, become a

party to the action with respect to the issue of

registrability of the copyright claim by entering an

appearance within sixty days after such service, but

the Register's failure to become a party shall not

deprive the court of jurisdiction to determine that

issue.

43a

(b) In the case of a work consisting of sounds,

images, or both, the first fixation of which is made

simultaneously with its transmission, the copyright

owner may, either before or after such fixation takes

place, institute an action for infringement under

section 501, fully subject to the remedies provided by

sections 502 through 506 and sections 509 and 510,

if, in accordance with requirements that the Register

of Copyrights shall prescribe by regulation, the

(1) serves notice upon the infringer, not less

than 48 hours before such fixation, identifying

the work and the specific time and source of its

first transmission, and declaring an intention to

secure copyright in the work; and

(2) makes registration for the work, if required

by subsection (a), within three months after its

first transmission.

17 U.S.C. § 412

Section 412. Registration as prerequisite to

certain remedies for infringement

In any action under this title, other than an

action brought for a violation of the rights of the

author under section 106A(a) or an action instituted

under section 411(b), no award of statutory damages

or of attorney's fees, as provided by sections 504 and

505, shall be made for -

(1) any infringement of copyright in an

unpublished work commenced before the

effective date of its registration; or

(2) any infringement of copyright

commenced after first publication of the work

™ | big:

44a

and before the _ effective date of its

registration, unless such registration is made

within three months after the first publication

of the work.

17 U.S.C. § 701

Section 701. The Copyright Office: General

responsibilities and organization

(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. The Register of Copyrights, together with

the subordinate officers and employees of the

of Congress, and shall act under the Librarian's

general direction and supervizion.

(b) In addition to the functions and duties set out

elsewhere in this chapter, the Register of Copyrights

shall perform the following functions:

(1) Advise Congress on national and

international issues relating to copyright, other

matters arising under this title, and related

matters.

(2) Provide information and assistance to

Federal departments and agencies and the

Judiciary on national and international issues

relating to copyright, other matters arising under

this title, and related matters.

(3) Participate in meetings of international

intergovernmental organizations and meetings

with foreign government officials relating to

45a

and related matters, including as a member of

United States delegations as authorized by the

appropriate Executive branch authority.

(4) Conduct studies and programs regarding

and related matters, the administration of the

programs conducted cooperatively with foreign

intellectual property offices and international

intergovernmental organizations.

(5) Perform such other functions as Congress

may direct, or as may be appropriate in

furtherance of the functions and _ duties

specifically set forth in this title.

to be used on and after January 1, 1978, to

authenticate all certified documents issued by the

(d) The Register of Copyrights shall make an

annual report to the Librarian of Congress of the

work and accomplishments of the Copyright Office

during the previous fiscal year. The annual report of

the Register of Copyrights shall be published

separately and as a part of the annual report of the

Librarian of Congress.

(e) Except as provided by section 706(b) and the

regulations issued thereunder, all actions taken by

the Register of Copyrights under this title are

subject to the provisions of the Administrative

Procedure Act of June 11, 1946, as amended (c. 324,

60 Stat. 237, title 5, United States Code, Chapter 5,

Subchapter II and Chapter 7).

46a

(f) The Register of Copyrights shall be

compensated at the rate of pay in effect for level III

of the Executive Schedule under section 5314 of title

5. The Librarian of Congress shall establish not

more than four positions for Associate Registers of

Copyrights, in accordance with the recommendations

of the Register of Copyrights. The Librarian shall

make appointments to such positions after

consultation with the Register of Copyrights. Each

Associate Register of Copyrights shall be paid at a

rate not to exceed the maximum annual rate of basic

pay payable for GS-18 of the General Schedule under

section 5332 of title 5.

28 U.S.C. § 1338(a)

Section 1338. Patents, plant variety protection,

copyrights, mask works, designs, trademarks,

and unfair competition

(a) The district courts shall have original

jurisdiction of any civil action arising under any Act

of Congress relating to patents, plant variety

protection, copyrights and trademarks. Such

jurisdiction shall be exclusive of the courts of the

states in patent, plant variety protection and

47a

37 C.F.R. § 302.1

Sec. 302.1 Public records and access.

(a) Inspection. Records of proceedings before the

Board will be available for public inspection at the

(b) Requests. Requests for access to records must

be directed to the Copyright Royalty Board. No

requests for information or access to records shall be

directed to or accepted by a Copyright Royalty

Judge. Access to records is only available by

appointment.

48a

THE UNITED STATES COURT OF APPEALS

FOR THE FOURTH CIRCUIT

Appeal No. 06-1177

WILLIAM DARDEN, )

Plaintiff/Appellant, )

)

v. ) PETITION FOR

) REHEARING

MARYBETH PETERS, )

COPYRIGHTS, )

Defendant/Appeliee. )

Plaintiff-Appellant William Darden petitions

the Court to rehear his argument pursuant to

Federal Rule of Appellate Procedure 40 and Local

Rule 40. In undersigned counsel’s judgment,

material legal matters were overlooked in the

Court’s decision of May 24, 2007. Specifically, the

Panel did not address (1) whether the Copyright

Office’s analysis of “originality” addressed what the

Constitution recognizes as copyright and is thus

subject to review under 15 U.S.C. § 706(2)(B), and (2)

whether the Copyright Office committed legal error

when it analyzed individual elements of the maps,

acknowledged that copyrightability must be

determined by looking at the work as a whole, and

then simply rejected the works as “entirely typical”

without further analysis.

49a

I, The panel did not address whether the

issue of “Originality” presents a question of a

constitutional property right subject to review

under 15 U.S.C. § 706(2)(B).

Darden argued that the Copyright Office

made an incorrect analysis of constitutional law

when it held that Darden’s maps lacked originality

and thus contained no copyright. The issue is

whether the Copyright Office determined the

existence (or the lack thereof) of a property right

recognized under the Constitution when the Office

decided that Darden’s works lacked sufficient

originality to be registered. Darden asserted that

the determination of copyright originality is a

question of constitutional property law and subject

to de novo review under 15 U.S.C. § 706(2)(B). The

Panel did not address this issue.

The Panel misconstrued Darden’s § 706(2)(B)

argument. The Panel described Darden as arguing

that the constitutional right at issue was Darden’s

right to register his works. Specifically, the Panel

stated the argument thusly:

Darden suggests... that section

706(2)(B) applies to a challenge of the

Registers denial of a copyright

registration application and mandates

de novo standard of review. ...

...Darden derives the basis for

his argument from Article I of the

United States Constitution which

gramts Congress the power to provide

‘“—yright protection to the extent

50a

Congress sees fit. ... Congress is under

no mandate from this clause, however,

to provide copyright protection.

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.

[Slip Op. 8-9.] Darden was not, and does not, argue

as such,

Darden argues that the Copyright Office’s

finding of “insufficient originality” was an analysis of

whether a particular type of property right exists,

i.e., a copyright. In this instance, the property right

at issue derives directly from the Constitution’s

granting Congress the power to protect an author’s

“writings.” The Supreme Court explained, to be

protected by copyright, the Constitution requires

“writings” to be sufficiently original. The Court

further explained that this determination of

“(ojriginality is a constitutional requirement.” Feist

Publications, Inc. v. Rural Telephone Service Co.,

499 U.S. 340, 346, 111 S. Ct. 1282, 1288 (1991). It

has long been established that the base requirement

for copyright is “originality” and that the

Constitution mandates this standard. Id. at 345-47,

111 S. Ct. at 1287-88; accord Bleistein v. Donaldson

Lithographing Co., 188 U.S. 239, 23 S. Ct. 298

(1903); Burrow-Giles Lithographic Co. v. Sarony, 111

U.S. 53, 58, 4 S. Ct. 279 (1884); Alfred Bell & Co. v.

Catalda Fine Arts, 191 F.2d 99, 102-03 (2™ Cir.

1951); J.L. Mott Iron Works v. Clow, 82 F. 316 (7*

5la

Cir. 1897). The Copyright Office’s analysis of

originality presented a question of constitutional

law. A copyright is, per se, a right. The Office

analyzed whether Darden’s maps satisfied the

constitutional prerequisites for this right to exist.

As discussed at oral argument, the

constitutional “right” at issue in this case relevant to

§ 706(2)(B) is not an individual right. Darden does

not argue he has an individual right under the

Constitution to register a copyright. The “right”

implicated is a property right, specifically, whether

constitutional jurisprudence recognizes Darden’s

“writings” as sufficiently “original,” i.e., whether a

not limited to “individual” rights but involves any

right under the Constitution, to include the property

right the Constitution recognizes as _ original

writings, which Congress may protect.

In its brief, the Government took the position

that courts always afford the Office deference

regarding the denial of a registration for lack of

copyrightable subject matter. Upon scrutiny,

however, there is an important distinction in these

cases that the Government’s argument overlooked.

As the Panel observed, the Constitution empowers

Congress to protect copyrights, but it does not

require protection. Accordingly, there is no

individual “right” to have one’s copyright protected if

Congress has not extended such protection.

Congress decided where and to what extent to

extend copyright protection. By doing so, Congress

defined subject matter that may and that may not be

copyrighted. For example, Congress extended

52a

articles, i.e., “industrial designs.” See 17 U.S.C. §

101 (definition for “Pictorial, graphic, and sculptural

works”). Congress defined subject matter for which

was left to interpret interpret what these areas of

subject matter included.

There has been little dispute regarding what

falls within the definition of “map.” There has,

however, been significant litigation regarding the

definition of other copyrightable subject matter

under the Copyright Act, such as for “useful

articles.” See, e.g., OddzOn Prod., Inc. v. Oman, 924

F.2d 346 (D.C. Cir. 1991); Eltra Corp. v. Ringer, 579

F.2d 294 (4* Cir. 1 978); Esquire, Inc. v. Ringer, 591

F.2d 796 (D.C. Cir. 1978). In such litigation, courts

afford the Copyright Office discretion in construing

the subject matter boundaries set by Congress, such

as defining what constitutes a “useful article.” There

are additional examples of courts addressing how the

Office interprets portions of the Copyright Act, many

of which can be found in the Government’s brief and

explained further in Darden’s reply. Under current

administrative law, courts have appropriately

afforded the Copyright Office deference in

interpreting the statutory lines and definitions

Congress set regarding the extent to which it affords

Darden does not take issue with this line of

cases; however, those cases are not on point with the

issue at hand. This is not a case contesting how the

constituted a “map,” or any other statutory line or

53a

limitation set by Congress. There is no dispute that

a map is copyrightable subject matter and that

Darden submitted maps for registration. This is a

case where the Office. rested its decision on a finding

that Darden’s maps lacked sufficient originality.

The prerequisite of originality derives from the

Constitution.’

There is one circuit case, over two holdings,

that specifically addresses the standard of review for

the Office’s denial of registration based on a finding

of insufficient originality. See Atari Games Corp. v.

Oman, 888 F.2d 878 (D.C. Cir. 1989); Atari Games

Corp. v. Oman, 979 F.2d 242 (D.C. Cir. 1992). In the

Atari holdings, the court stated it was giving

deferential review to the Office’s analysis’ of

“originality,” but in practice, the court gave no

deference. That court twice rejected the Office’s

proffered analysis of originality.. Aside from one

concurring opinion, the-court gave little explanation

why. it used a deferential’ standard ‘of review. The

concurring opinion offered a purely pragmatic

‘rationale for that standard. See Oman, 888 F.2d at

‘886-87 (Silberman, J., concurring). . That

“originality” is a constitutional requirement for

‘copyright was not mentioned, let alone analyzed.

“Originality” is a constitutional pre-requisite

for copyright protection. The Constitution imposes

the requirement. When the Copyright Office decided

1 “(I]t seems self-evident that Congress could not .

constitutionally: create a lower standard of

originality...... Howard B. Abrams, The Law of

54a

that Darden’s works did not exhibit sufficient

originality, the Office decided that a requirement

imposed by our Constitution had not been satisfied.

An incorrect analysis of a constitutional property

right is “contrary to constitutional right.” [See Slip

Op. 9.) The courts should not, thus, afford the

whether the constitutional pre-requisites for

obtaining copyright protection have been met.

Review should be had under 15 U.S.C. § 706(2)(B).

Darden respectfully prays to have this argument

heard and addressed by this Panel.

II. The Panel’s opinion did not address

Darden’s argument that the Copyright Office

committed legal error when it simply

. concluded, without analysis, that the maps

taken as a whole were “entirely typical” and

thus not copyrightable.

In its analysis, the Copyright Office reviewed

individual elements of Darden’s maps, and concluded

that. each element, in isolation, was not

copyrightable. The Office then acknowledged its

duty to analyze the elements as a whole, and

concluded that the arrangement of these elements is

“entirely typical” and did not rise to the level of

creative authorship necessary to sustain a copyright.

‘No where in the administrative record, at the

District Court, or in its appeal brief did the

Government explain why the works when taken as a

whole are “entirely typical.”

In Feist the Court found the works at issue

“entirely typical,” and dedicated severa] paragraphs

55a

to explaining the basis for this conclusion. See Feist,

499 U.S. 362, 111 S. Ct. 1296. The Government has

never tendered such an analysis for Darden’s maps

nor did the Court address this deficiency in its

opinion.

The Office's mere assertion of “entirely

typical” is the same talismanic assertion that the

District of Columbia Circuit rejected in its post-Feist

holding in Oman, 979 F2d 245-47. As in Oman, the

Office does not explain what standard it used for

assessing the elements in combination and how the

office came to its conclusion on originality. The

Office’s failure to analyze all of Darden’s elements in

combination was “not in accordance with law” and

should be reviewed de novo under § 706(2)(A) of the

APA.

Ili. Conclusion

These are nuanced and somewhat abstract

legal arguments that Darden pursued in his briefs

and at oral argument. The Panel did not address

them in the opinion, and undersigned counsel

believes these issues are Darden’s two most

important legal arguments. After so many years of

effort, Darden respectfully prays the Panel to revisit

and rehear these arguments.

56a

Respectfully submitted this the 6 day of July, 2007,

By:

Anthony J. Biller

Coats & Bennett, PLLC

1400 Crescent Green, Suite 300

Cary, NC 27518

abiller@coatsandbennett.com

Phone No.: (919) 854-1844

57a

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