A reaffirmation of the law regarding originality for copyright protection under US law

Jade McKellar

For a work to be protected by copyright, a modicum of originality is required. But would a blank form with some text be sufficiently original?

1709 Blog friend Jade McKellar (University of Southampton) discusses a recent decision of the Review Board of the US Copyright Office which confirmed that the answer is ... no.

Over to Jade:

"The United States Copyright Office Review Board affirmed the refusal the register to register a copyright claim to text in the work “Online California DMV Vehicle Registration” on the basis of insufficient creativity.

Some key principles considered by the Review Board relate to:

• Distinction between ideas and expression: Section 102(b) Copyright Act 1976 excludes protection for “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” and thus codifies the distinction originated in Baker v Selden, 101 U.S. 99 (1879) between ideas and expression in respect of copyright protection. Copyright protection is available for the expression of ideas, not for the underlying ideas themselves. 
• Merger doctrine (Baker v Selden): where there is one way, or a limited number of ways for an author to convey an idea, the author’s expression cannot be protected under copyright as it would prevent others from using that idea in other works. 

On the basis of these principles the United States Copyright Office has a presumption against the registration of blank forms. The Office’s Regulations preclude registration of “blank forms […] which are designed for recording information and do not in themselves convey information”.

The Copyright Office will examine a work of this type to determine if it contains “an appreciable amount of written or artistic expression” that can be separated from the work’s method of capturing information.

• Originality: A work is registrable it is an “original work of authorship fixed in any tangible medium of expression” 17 USC 102(a). For a work to be “original” it must be an independent creation of the author and contain sufficient creativity (Feist Publications Inc v Rural Tel. Serv. Co, 499 U.S. 340 (1991)). Only a modicum, or more than de minimis, quantum of creativity is necessary. There can be no copyright in a work where “the creative speak is utterly lacking or so trivial as to be virtually non-existent”. A mere simplistic arrangement of non-protectable elements does not demonstrate a sufficient level of creativity for protection (Coach Inc. v Peters, 386 F. Supp. 2d 495 (S.D.N.Y. 2005); Satava v Lowry, 323 F. 3d 805 (9th Cir. 2003)). A combination of non-protectable elements will only be eligible for copyright protection in instances where those elements are numerous enough and their selection and arrangement is original enough to constitute an original work of authorship. 

Background

Cartagz filed an application to register a copyright claim in ‘text, arrangement and layout of text’. This claim was later limited to ‘text’. The work for which registration was sought is represented below:

The United States Copyright Office refused to register the claim on the basis that blank forms and similar works are not protected by copyright. Cartagz requested that the office reconsider its refusal to register. The Office re-evaluated the claims in the First Request and reaffirmed its decision not to register the claim on the basis that the work did not contain sufficient originality or creative authorship. 

Cartagz requested pursuant to 37 CFR 202.5(c) that the Office reconsider its refusal a second time, on the basis that the Office had applied a higher creativity standard than warranted by copyright law, that following Harcourt, Brace & World Inc. v Graphic Controls Corp 329 F. Supp. 517 (S.D.N.Y. 1971). Blank forms have been registrable where they exhibit more than a de minimis amount of creativity, and that the work contains sufficient creativity to obtain copyright protection.

Analysis

The Review Board examined the work in light of the legal standards discussed. The work is a blank form designed to allow the user to record information. Under section 102(b) of the Copyright Act and the merger doctrine, blank forms are not typically subject to copyright protection unless they are shown to contain an appreciable amount of written or artistic expression distinct from the underlying method for recording information.

The Board considered whether the work contains such distinct written or artistic expression to warrant registration: 

• The work’s constituent elements were merely ‘words and shorts phrases, and, as such, are not copyrightable’ (37 CFR 202.1(a)).
• The work as a whole is not sufficiently creative to support registration. Works made by public domain elements may be copyrightable if the selection, arrangement and modification of the elements reflects choice and authorial discretion that is not so minor that “the creative spark is utterly lacking or so trivial as to be non-existent”. Cartagz’s work consists of very few elements, most of which are necessary incidents to allow users to record information, and thus the aggregation of words and phrases in the work lacks sufficient creativity to warrant registration. 

Cartagz’s claim was limited to “text”. However, Cartagz additionally asserted that it intended to maintain a claim in “the selection, coordination, and arrangement of the specific textual and graphical content of the Advertisement as a compilation, which it believed would still be covered by its claim in ‘text.’”.

The Board noted that Cartagz did not register a claim in compilation in the initial application. However, the Board found that even if the compilation rubric were applied in examination of the work, sufficient creative compilation authorship to support registration could not be found. The work does not contain a sufficient amount of creative authorship in respect of the selection, coordination, and arrangements of the work’s constituent elements to warrant copyright protection.

The United States Copyright Office Review Board found that the work, comprising a minimal combination of words and short phrases, lacked the ‘modicum of creativity’ requirement expounded in Feist.

Significance

This decision has reaffirmed the distinction between protectable original expression of ideas and unprotectable underlying ideas in respect of copyright protection, and the criteria for original authorship and creativity. The Copyright Office followed its longstanding presumption against the registration of blank forms on the basis of these principles, and also confirmed the requirement for an above de minimis quantum of creativity in the assessment of the originality of a work.