A reminder that originality threshold is low, but does indeed exist

Michelle Tong

As readers know, for copyright protection to arise there must be both a work and some modicum of originality. It is not necessarily a given that these requirements be fulfilled [Katpost here], as this recent decision of the Review Board of the US Copyright Office demonstrates. 

Katfriend Michelle Tong (University of Southampton) reports. Here's what Michelle writes:

"The Review Board of the United States Copyright Office has affirmed a decision of the Registration Program to deny registration for Cartagz, Inc.'s attempt to register a text claim in a work. 

The U.S. Copyright Office Review Board Decision of January 8 2019 can be found here: Second Request for Reconsideration for Refusal to Register Online California DMV Vehicle Registration. 

As Kat readers will know, copyright is a form of intellectual property law protection granted for original works of authorship. However, whilst copyright arises automatically upon creation of a work, under U.S. law, registration for copyright protection is compulsory where one wishes to bring a claim of infringement for a U.S. work. (Circular 1, Copyright Basics, section “Copyright Registration.”) 

Other formal requirements that the U.S. Copyright Office also considers when a claim for registration of a copyright is made include submission of: a complete application, the filing fee, and or deposit copies. 

As the U.S. Copyright Office does not automatically register all such claims to copyright, should the Office refuse to register a claim (as in the present decision), a request may be made for reconsideration of that decision, which is what led to the issuing of this ruling. 

Background 

On May 26, 2017 Cartagz filed an application to register a copyright claim in a Work consisting of an online advertisement formatted as a blank form with several short phrases as depicted below: 

This claim was further limited to 'text' after Cartagz was asked to clarify its claim to copyright, after which Heather Windsor, Registration Specialist of the U.S. Copyright Office (June 26, 2017) stated that 'blank forms and similar works, designed to record rather than to convey information, are not protected by copyright' and thus refused to register this claim. 

Cartagz requested the Office to reconsider this initial refusal to register the Work (April 11, 2017), after which the Office again concluded that the Work 'does not contain a sufficient amount of original and creative authorship to support a copyright registration.' This led to the second request by Cartagz in April 16, 2018, pursuant to 37 C.F.R. § 202.5(c) for the Office to reconsider its refusal to register the Work. Cartagz claimed that the Copyright Office applied a higher creativity requirement than warranted by copyright law, and that the Work continued a sufficient amount of creativity to obtain at least thin copyright protection. 

The decision 

The Board's discussion began with outlining the legal framework for copyright law - including the distinction between ideas and expression, and originality; before moving on to analyse whether these requirements were fulfilled in the present claim for registration. 

Issue 1: distinction between ideas and expression 

The Review Board examined the idea-expression dichotomy - as codified in section 102(b) of the Copyright Act. Drawing from past authority including Baker v. Selden 101 U.S. 99 (1879), the Board exemplified the way in which this principle in copyright law restricts protection to only the original expression of ideas, not the underlying ideas themselves. 

A closely related principle stems from the merger doctrine, where should there be only one way or a limited number of ways to convey the idea the author seeks to express, even the author's expression cannot be protected under copyright law (CCC Info. Servs., Inc. v. Maclean Hunter Market Reports, Inc., 44 F.3d 61, 68 (2d Cir. 1994)). For this would give the author a monopoly over the idea itself and prevent others from using the same idea in other works. 

Therefore, the Board found that copyright protection does extend to blank forms, such as the present Work, as blank forms permitting the user to record are not subject to copyright protection as they do not in themselves convey information. (37 CFR § 202.1(c)). 

Issue 2: Originality 

However, the Board went on to examine whether the Work contained an 'appreciable amount of written or artistic expression', distinct from the underlying method for recording information reflected on the form. 

Here, the standard of originality as set out in Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345 (1991), consists of two cumulative requirements: 

• independent creation 
• sufficient creativity 

Sleeping on forms
Assessing eligibility
for copyright protection

The key component in the present decision is that the work must possess sufficient creativity, ie a de minimis quantum of creativity. For example, registration of 'words and short phrases such as names, titles, and slogans' is prohibited (37 C.F.R. § 202.1(a)). However, where those elements are numerous enough and their selection and arrangement is original enough, their combination may constitute an original work of authorship (Satava v. Lowry, 323 F.3d 805, 811 (9th Cir. 2003)) 

The Board stressed that this assessment of the originality of the Work required assessment of the Work as a whole, rather than whether individual elements within the Work were subject to copyright protection. (Atari Games Corp. v. Oman, 979 F.2d 242, 244-45 (D.C. Cir. 1992)) Thus, regarding this Work as a whole, the Board highlighted that the Work consisted of only very few elements - a heading, business name, three blank spaces and short phrases, the combination of which was found not to possess a sufficient amount of creative authorship to warrant copyright protection. In the view of the Board, the Work encompassed only a non-protectable combination of standard font, spacing, and short phrases. 

With regard to the argument that Cartagz made that the Work qualified as a compilation, the Board noted that Cartagz did not seek to register this Work as such in its original application; but that to any extent there would not have been a finding of sufficient creative compilation authorship to support registration as a compilation either. 

Thus, the Board affirmed the refusal to register the copyright claim in the Work, for its minimal combination of words and short phrases lacked even the modicum of creativity required by Feist. 

Comment 

This decision provides a clear reminder that blank forms such as the one in the present decision are still unlikely to be considered for copyright protection under U.S. law. Besides the idea-expression dichotomy and the merger doctrine, a key barrier for refusal of registration of a claim to copyright protection for such works is the requirement for originality. The Board's analysis exemplifies the need for blank forms to place emphasis on demonstration of a 'creative spark' in the arrangement of the non-protectable elements in order to reach even the de minimis quantum of creativity standard set out in Feist."