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

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URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386009_1603%3A2

## Record

- **Collection:** Supreme Court brief
- **Document type:** Appendix
- **Published:** January 1, 2007

## Text

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Table of Contents

Appendix Page

Opinion of
The United States Court of Appeals
For the Fourth Circuit
entered May 26, 2007 ..........-<cccescccseceesers me

Order of
The United States District Court
For the Eastern District of North Carolina
entered December 6, 2005.......................005: 22a

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

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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
Register’s refusal to issue a copyright registration for
Darden’s works, we affirm the district court’s grant
of summary judgment to the Register.

I.

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

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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
copyright interest he held in the maps and the
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

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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

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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."

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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,
copyright protection covers only the
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.
Copyright does not extend to any
preexisting or previously registered

1

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.

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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
copyright registration." J.A. 97- 98. With respect to
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.

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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
copyright claim in the maps themselves, the Board
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

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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
Register of Copyrights under the Administrative
Procedure Act ("APA"), see 5 U.S.C. §§ 701-706,
seeking judicial review of the decision of the
Copyright Office refusing to register his copyright
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
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).

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.").
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
(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
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
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

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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
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." Compag
Computer Corp. v. Ergonome Inc., 387 F.3d 404, 407
(5th Cir. 2004) (internal quotation marks omitted).
Copyright ownership, in turn, requires “proof of
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.

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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
Register’s decision is reviewed under a discretionary
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

18a

contributions must _ satisfy the originality
requirement. See Feist, 499 U.S. at 359.

A.

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
copyright law"). Additions to the preexisting maps
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.

B.

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
Copyright Office noted that a website may well
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,
REGISTER OF COPYRIGHTS,

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
copyright registration should be reviewed de novo. In
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
Copyright Act defines copyrightable material as
“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
Copyright Office determined that the changes to 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
Copyright Office also noted that Plaintiffs registration claim for
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
Copyright Office noted that the failure to include properly

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

copyright narrowly exclude uncopyrightable
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
copyright registration. For the reasons stated above,
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

Register.” 17 U.S.C. § 702. Pursuant to that authority, the
Register has promulgated regulations governing the
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

—

i
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;

(C) in excess of statutory jurisdiction,
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
Register shall refuse registration and shall notify the
applicant in writing of the reasons for such refusal.

(c) In any judicial proceedings the certificate of a
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.

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(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
copyright owner -

(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:

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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
Copyright Office, shall be appointed by the Librarian
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
copyright, other matters arising under this title,

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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
copyright, other matters arising under this title,
and related matters, the administration of the
Copyright Office, or any function vested in the
Copyright Office by law, including educational
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.

(c) The Register of Copyrights shall adopt a seal
to be used on and after January 1, 1978, to
authenticate all certified documents issued by the
Copyright Office.

(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).

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(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
copyright cases.

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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
Copyright Royalty Board offices.

(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, )
REGISTER OF )
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.

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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

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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*

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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
copyright exists. The word “right” in § 706(2)(B) is
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

copyright protection to maps but not to useful
articles, i.e., “industrial designs.” See 17 U.S.C. §
101 (definition for “Pictorial, graphic, and sculptural
works”). Congress defined subject matter for which
copyright would be afforded. The Copyright Office
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
copyright protection.

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
Copyright Office construed “useful articles,” what
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
Copyright § 2:2 (Oct. 2006). :

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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
Copyright Office any deference on the issue of
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.

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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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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386009_1603%3A2. Public record. Not legal advice.