[Federal Register Volume 77, Number 96 (Thursday, May 17, 2012)]
[Proposed Rules]
[Pages 29257-29259]
From the Federal Register Online via the Government Printing Office [www.gpo.gov]
[FR Doc No: 2012-11879]



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LIBRARY OF CONGRESS

Copyright Office

37 CFR Part 202

[Docket No. 2012-3]


Registration of Copyright: Definition of Claimant

AGENCY: Copyright Office, Library of Congress.

ACTION: Notice of proposed rulemaking.

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SUMMARY: The Copyright Office proposes to amend its regulations 
governing the definition of a ``claimant'' for purposes of copyright 
registration by eliminating the footnote to the definition of a 
``claimant'' in Sec.  202.3(a)(3)(ii). The footnote currently extends 
the definition of a claimant to include individuals or entities that 
have obtained the contractual right to claim legal title to copyright 
in an application for copyright registration. This amendment would 
clarify that the copyright claimant must be either the author of the 
work, or a person or organization that has obtained ownership of all of 
the exclusive rights initially belonging to the author. The Copyright 
Office believes that the footnote creates considerable legal 
uncertainty while offering no clear benefits to the registration 
system. Removing it will foster the use of other available registration 
options that create a more meaningful public record.

DATES: Written comments are due July 16, 2012. Reply comments are due 
August 15, 2012.

ADDRESSES: The Copyright Office strongly prefers that comments be 
submitted electronically. A comment page containing a comment form is 
posted on the Copyright Office Web site at http://www.copyright.gov/docs/claimantfn/. The online form contains fields for required 
information including the name and organization of the commenter, as 
applicable, and the ability to upload comments as an attachment. To 
meet accessibility standards, all comments must be uploaded in a single 
file in either the Adobe Portable Document File (PDF) format that 
contains searchable, accessible text (not an image); Microsoft Word; 
WordPerfect; Rich Text Format (RTF); or ASCII text file format (not a 
scanned document). The maximum file size is 6 megabytes (MB). The name 
of the submitter and organization should appear on both the form and 
the face of the comments. All comments will be posted publicly on the 
Copyright Office Web site exactly as they are received, along with 
names and organizations. If electronic submission of comments is not 
feasible, please contact the Copyright Office at 202-707-8125 for 
special instructions.

FOR FURTHER INFORMATION CONTACT: Robert Kasunic, Deputy General 
Counsel, Copyright Office, GC/I&R, P.O. Box 70400, Washington, DC 
20024. Telephone: (202) 707-8380. Fax: (202) 707-8366.

SUPPLEMENTARY INFORMATION: The Copyright Act specifies certain 
conditions and requirements for copyright registration. See generally, 
17 U.S.C. 408 and 409. Among the requirements of section 409 is that an 
application for registration must identify the name and address of the 
copyright claimant. The Copyright Act does not define the term 
``claimant.''
    On January 5, 1978, the Copyright Office published interim 
regulations that include a definition of copyright ``claimant'' for 
purposes of copyright registration. 43 FR 965 (January 5, 1978) 
(hereinafter, ``Interim Regulation''). Section 202.3(a)(3) states:
    For the purposes of this section, a copyright claimant is either:
    (i) The author of the work;
    (ii) A person or organization that has obtained ownership of all 
rights under the copyright initially belonging to the author.

The Interim Regulation also included a footnote at the end of this 
definition that stated: ``This category includes a person or 
organization that has obtained, from the author or from an entity that 
has obtained ownership of all rights initially belonging to the author, 
the contractual right to claim legal title to the copyright in an 
application for copyright registration.''

    Unfortunately, neither the Interim Regulation nor the Federal 
Register notice announcing it provided an explanation for the footnote 
and one can therefore only speculate as to the reason it was crafted. 
Moreover, the right to register a work is not one of the section 106 
exclusive rights that would entitle a person or entity to be considered 
an owner of a copyright. That said, viewed in context, it is at least 
possible that the footnote was designed to accommodate registration 
problems that could occur under the new principle of divisibility of 
copyright embraced by the Copyright Act of 1976.
    The 1909 Act was silent on the divisibility of copyright rights, 
although it used the singular form when addressing both ``copyright'' 
and ``copyright proprietor. '' See, e.g., 17 U.S.C. 2, 3, 9, 10, and 11 
(1909 Act), available at: http://www.copyright.gov/history/1909act-1973.pdf. Courts interpreted the bundle of exclusive rights under the 
1909 Act to be indivisible, i.e., individual rights (such as the right 
to copy a work or the right to perform a work publicly) could not be 
assigned to different persons or entities. See, e.g., Goldwyn Pictures 
Corp. v. Howells Sales Co., 282 F. 9 (2d Cir. 1922); M. Witmark & Sons 
v. Pastime Amusement Co., 298 F. 470 (E.D.S.C. 1924); New Fiction 
Publishing Co. v. Star Co., 220 F. 994 (S.D.N.Y. 1915). The reality 
that copyrights could be assigned in whole but not in part led to a 
strained and illogical marketplace: An author could (and frequently 
did) disaggregate his copyright for the benefit of multiple parties if 
licensing rights on a nonexclusive basis, but could not do so when 
assigning or otherwise offering his rights on an exclusive basis. 
Moreover, the legitimate rights of licensees were often confused or 
inadequate in the context of litigation. Former Register of Copyrights 
Abraham Kaminstein highlighted the issue in 1960 in a Copyright Office 
Study for the Copyright Revision Process:

    Every major bill to revise the copyright law first enacted in 
1909 has included provisions for divisibility as one of the three or 
four crucial issues. For a time, authors believed divisibility so 
vital to their interests that they made it their most important 
legislative goal.

Kaminstein, Divisibility of Copyrights, Copyright Off. Study No. 11 
(1960), available at: http://www.copyright.gov/history/studies/study11.pdf.

    Indeed, the revised law, the Copyright Act of 1976, represented a 
sea change, as the ``first explicit statutory recognition of the 
principle of divisibility of copyright in our law.'' Copyright Law 
Revision, H.R. Rep. 94-1476 at 123 (1976). Under section 201(d)(1) of 
the 1976 Act, Congress specified that ``copyright ownership may be 
transferred in whole or in part by any means of conveyance or by 
operation of law, and may be bequeathed by will or pass as personal 
property by the applicable laws of intestate succession.'' 17 U.S.C. 
201(d)(1) In subsection 201(d)(2), Congress further stated that ``[a]ny 
of the exclusive rights comprised in a copyright, including any 
subdivision of any of the rights specified in section 106, may be 
transferred as provided by clause (1) and owned separately. The owner 
of any exclusive right is entitled, to the extent of that right, to all 
of the protection and remedies afforded to the copyright owner by this 
title.'' 17 U.S.C. 201(d)(2). See also, 17 U.S.C. 101 ``copyright 
owner'' (``Copyright owner, with respect to any one of the exclusive

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rights comprised in a copyright, refers to the owner of that particular 
right'') and ``transfer of copyright ownership'' (``A ``transfer of 
copyright ownership'' is an assignment, mortgage, exclusive license, or 
any other conveyance, alienation, or hypothecation of a copyright or of 
any of the exclusive rights comprised in a copyright, whether or not it 
is limited in time or place of effect, but not including a nonexclusive 
license'').
    Implementing the principle of divisibility into the registration 
system of the Copyright Office presented its own set of challenges, 
both conceptual and practical. For example, should an owner of an 
individual right be entitled individually to register a claims to that 
particular right? How many registrations should be available for any 
particular work? See, Notice of Inquiry on Applications for 
Registration of Claim of Copyright under Revised Copyright Act, 42 FR 
48944 (September 26, 1977) (raising these and other questions).
    The 1978 interim regulations resolved many of these questions. They 
established a general rule that there should be only one registration 
per work and that the transfer of ownership of exclusive rights could 
be adequately addressed through the Office's recordation system. 
Interim Regulation, 43 FR 965 (January 5, 1978). However, neither the 
1977 Notice nor the Interim Regulation explained the inclusion of the 
footnote. In fact, the Interim Regulation acknowledged that a claimant 
should be defined narrowly:

    Prompted by the implications of that Notice, several comments, 
including a persuasive practical and legal analysis prepared by the 
Authors League of America, Inc. strongly urged that the copyright 
``claimant'' to be identified in an application and registration 
under section 409(c) of the Act not be equated with the owner of one 
or more, but less than all, of the rights under a copyright. We 
agree with the view expressed in these comments; we do not believe 
that the concept of ``divisibility of copyright'' was intended to 
allow the owner of an individual right or rights to claim, or appear 
to claim, on our records, ownership of the entire copyright. As 
pointed out in the comments, such a result would lead to a 
misleading and inaccurate public record, and subvert the purpose of 
the registration system. Accordingly, interim Sec.  202.3(a)(3) 
makes clear that the copyright ``claimant'' for purposes of 
copyright registration is the author of the work for which 
registration is sought, or a person or organization that has 
obtained all rights under the copyright initially belonging to the 
author.

Id.

    The contradiction between the above passage and the footnote is 
difficult to explain. Conceivably, there was concern that when an 
author possessing the initial unified bundle of rights fails to 
register a work before transferring ownership in one or more of those 
exclusive rights (or a subpart of an exclusive right), it might appear 
that a proper claimant could not exist--the author, having divested his 
or her interest in an exclusive right would no longer own all rights, 
and the owner of a single exclusive right would not be eligible to be a 
claimant under the regulatory definition. However, this view is 
incorrect, because an author may always be named as a proper claimant 
in a work, even when an author no longer owns all of the exclusive 
rights in a copyright. This is true even if an author transfers all 
rights in a work, because an author may always have a reversionary or 
beneficial interest in the work. See e.g., 17 U.S.C. 304(c) and 203. 
Where an author transfers an exclusive right, either the author or the 
owner of an exclusive right may submit an application for registration 
listing the author as both the author and the claimant in the work.\1\ 
See 37 CFR 202.1(a)(3).\2\ Once a work listing the author and a proper 
claimant is registered, the work as a whole is registered, including 
all of the divisible exclusive rights (and subparts therein) previously 
or later transferred. Regardless of when the disaggregation of the 
exclusive rights occurs--either before or after registration--the 
author may always be listed as a proper copyright claimant in an 
application for registration.\3\ After registration for the work has 
occurred, any document relating to that registered work, such as a 
transfer of an exclusive right, may be recorded with the Copyright 
Office.
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    \1\ Where the owner of an exclusive right submits a claim 
listing the author as author and claimant, the owner of the 
exclusive right would list himself or herself (or his or her agent) 
as the correspondent or person certifying the application. See, 37 
CFR 202.1(c)(2)(i). Moreover, to provide a public record of the 
transfer of one or more exclusive rights from the author/claimant to 
the transferee, the owner of the exclusive right could record the 
document transferring rights with the Copyright Office. See, 17 
U.S.C. 205.
    \2\ ``(3) For the purposes of this section, a copyright claimant 
is either:
     (i) The author of a work;
    (ii) A person or organization that has obtained ownership of all 
rights under the copyright initially belonging to the author.''
    (Emphasis in original; footnote omitted.)
    \3\ In discussions with former Copyright Office staff members 
involved in the rulemaking that led to the Interim Regulations, the 
Office has heard two theories as to why the footnote was included: 
To address issues involving publishers of periodicals who wished to 
register claims in the periodical as well as the articles included 
in the periodical, and/or to address issues involving registration 
of musical compositions for which nonexclusive rights had been 
granted to performing rights organizations. The Office has found no 
evidence to support these theories, but welcomes comments from the 
public that may shed light on the reasons for the inclusion of the 
footnote.
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    Thus, the existence of the footnote cannot be justified by 
reference to cases where the original author no longer owns all (or 
any) of the rights in the work. However, the footnote may have been 
rooted in another, more complicated situation faced by the authors of 
collective works. Where an author of a contribution to a collective 
work assigns one (or perhaps a few) of the exclusive rights to the 
publisher of a collective work, such as an article contributed to a 
serial issue, how could the collective work author register its 
copyright interest in the contribution? If the publisher registers the 
collective work, the registration could cover the selection and 
arrangement of the articles, along with the articles authored by the 
collective work author, and those works for which the collective work 
author owns all of the exclusive rights. But the registration would not 
extend to those works contained in the collective work for which the 
collective work author owns less than all rights. See, e.g., Morris v. 
Business Concepts, Inc., 259 F.3d 65, 70 (2d Cir. N.Y. 2001). As the 
Second Circuit makes clear in Morris, the fact that a registration of a 
collective work does not cover every work contained in that collective 
work in no way precludes protection for, or registration of, a 
component work for which all rights were not transferred. Either the 
author of the component work or the collective work author, filing on 
behalf of the author/claimant, would simply be required to register 
such component works in a separate registration. Id., at 71-72.
    Although separate registration is available for unregistered 
contributions to works for which less than all rights have been 
transferred, the collective work author would likely find it preferable 
to submit one application to cover every unregistered work contained in 
the collective work. Under the rule stated in the footnote, collective 
work authors may accomplish this if they received the contractual right 
to claim legal title for purposes of registration.
    The principal problem with this approach is that it would seem to 
allow a person or entity to claim title for purposes of copyright 
registration even if such a person or entity was not in fact the owner 
of any exclusive rights. While an argument could be made that the 1976 
Act allows the owner of an exclusive right to claim the copyright as a 
copyright owner,\4\ there is no clear

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foundation in the statutory language for allowing a person or 
organization with less than a copyright ownership interest in an 
exclusive right to be considered a owner of copyright or a valid 
claimant of a claim to copyright. The bald right to register a work is 
not one of the section 106 exclusive rights. Only the owner of an 
exclusive right (or subdivision thereof) is entitled, to the extent of 
that right, to all of the protection and remedies accorded to the 
copyright owner by title 17. See, 17 U.S.C. 201(d)(2).\5\
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    \4\ 17 U.S.C. 101 (definition of ``copyright owner'': 
``Copyright owner, with respect to any one of the exclusive rights 
comprised in a copyright, refers to the owner of that particular 
right''). However, the concept of a copyright ``owner'' need not be 
congruent with the concept of a copyright registration ``claimant.'' 
As explained supra, if an owner of an exclusive right could register 
a work, there would either be multiple registrations for particular 
works, thus violating the general rule of only one registration per 
work, or one registration by the first owner to register, thus 
leading to a misleading and inaccurate public record.
    \5\ That provision may also be interpreted to distinguish an 
owner of an exclusive right from a ``copyright owner'' in the 
broader sense of the owner of all rights.
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    The above discussion poses more than a theoretical problem. While 
the Office recognizes that transfers may be limited in time and 
duration, see, Bean v. Littell, 669 F. Supp.2d 1031 (D. Ariz. 2008), 
recent court decisions have questioned what it means to claim legal 
title to copyright when in fact the ``claimant'' does not in fact own 
any section 106 rights or may technically own those rights, but does 
not have the ability to exercise any of the exclusive rights.\6\ At 
least one court has held that the standing to sue for copyright 
infringement is absent when underlying agreements distort or 
misrepresent such claimants' interests in and to the ownership of 
exclusive rights. ``If the plaintiff is not a proper owner of the 
copyright rights, then it cannot invoke copyright protection stemming 
from the exclusive rights belonging to the owner, including 
infringement of the copyright.'' \7\ While the Copyright Office does 
not believe that all transfers relying on the footnote necessarily 
misrepresent who is a valid copyright claimant, there exists the real 
possibility that the footnote fosters questionable claims of ownership 
due to its ambiguous language.
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    \6\ Righthaven LLC v. Mostofi, 2011 U.S. Dist. LEXIS 75810 (D. 
Nev. July 13, 2011). See also, Silvers v. Sony Pictures 
Entertainment, Inc., 402 F.3d 881 (9th Cir. 2005), cert. den'd 546 
U.S. 827 (2005) (The right to sue for an accrued claim for 
infringement is not an exclusive right under 17 U.S.C.S. 106. 
Moreover, the bare assignment of an accrued cause of action is 
impermissible under 17 U.S.C.S. 501(b).)
    \7\ Righthaven LLC v. Mostofi, 2011 U.S. Dist. LEXIS 75810 (D. 
Nev. July 13, 2011), quoting, Silvers v. Sony Pictures 
Entertainment, Inc., 402 F.3d 881 (9th Cir. 2005), quoting, 4 
Business and Commercial Litigation in Federal Courts, at 1062 Sec.  
65.3(a)(4) (Robert Haig ed.). Accord, Righthaven LLC v. Inform 
Techs., Inc., 2011 U.S. Dist. LEXIS 119379 (D. Nev. Oct. 14, 2011).
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    The elimination of the footnote would leave numerous options for 
registering works to authors and copyright owners, including the owners 
of a single exclusive right. As noted above, the owner of an exclusive 
right may always register a claim in the work by listing the author as 
the claimant. Any authorized agent of the author, the owner of all 
rights, or the owner of an exclusive may similarly file an application 
for registration on behalf of a valid claimant by filling out the 
application and certifying their relationship to the claimant.
    In the case of collective works, the author of articles contributed 
to a number of periodicals may avail himself or herself to the group 
registration option for contributions to periodicals established 
pursuant to section 408(d) of the Copyright Act. See, 37 CFR 
202.3(b)(8). A number of other group registration options exist for 
other types of works, such as for unpublished collections and for 
published photographs. See, 37 CFR 202.3(a)(4) and 202.3(b)(10).
    In light of the concerns raised about the footnote and the 
alternative registration options available to claimants, the owners of 
one or more exclusive rights, and agents of such persons or entities, 
the Office believes that elimination of the footnote is warranted. The 
Office believes that the elimination of the footnote would have no 
discernable adverse effect on the ability to register works, would 
foster a more accurate and meaningful record of authorship and 
ownership, and would reduce the possibility of fraudulent or misleading 
claims. Removal of the footnote would also reduce the occurrence of 
litigation over the validity of misleading transfers by creating a 
bright line rule, consistent with the rationale expressed for the 
original Interim Regulation, for determining who may assert a claim of 
copyright. The Copyright Office seeks public comment on this intended 
amendment to the definition of a ``claimant.''

List of Subjects in 37 CFR Part 202

    Copyright, Registration.

Proposed Regulation

    In consideration of the foregoing, the Copyright Office proposes to 
amend part 202.3(a)(3) as follows:

PART 202--PREREGISTRATION AND REGISTRATION OF CLAIMS TO COPYRIGHT

    1. The authority citation for part 202 is revised to read as 
follows:

    Authority:  17 U.S.C. 408, 409, 702.

    2. Amend sec. 202.3 paragraph (a)(3)(ii) as follows:
    a. In paragraph (ii), remove footnote 1.

    Dated: May 10, 2012.
Maria A. Pallante,
Register of Copyrights.
[FR Doc. 2012-11879 Filed 5-16-12; 8:45 am]
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