United States Copyright Office
Library
of
Congress ·
101
Independence Avenue
SE
· Washington,
DC
20559-6000
. www.copyright.gov
Joseph
V.
Myers, III
Seyfarth Shaw LLP
1075 Peachtree Street, N.E.
Suite 2500
Atlanta, GA 30309-3958
jmyers@seyfarth.com
January
31
, 2018
Re: Second Request for Reconsideration for Refusal to Register ZX2 Yam pa/Light
Beam, Correspondence ID 1-25KFE2N,
SR
1-3815608161; and Updraft Ecotread
X2/Yellow Beams, Correspondence ID 1-25KFE2N,
SR
1-3775632401
Dear Mr. Myers:
The Review Board
of
the United States Copyright Office ("Board") has considered
Wolverine World Wide, Inc. 's ("Wolverine") second requests for reconsideration
of
the
Registration Program's refusals to register a two-dimensional artwork claim in the work titled
"ZX2 Yampa/Light Beam" ("Yampa"), and a derivative claim in the "re-coloration and
extension
of
design"
of
Yampa for the work titled "Updraft Ecotread X2/Y ell
ow
Beams"
("Updraft") (collectively, the "Works"). The Works are described as follows:
I. DESCRIPTION OF THE WORKS
Yampa, depicted below, is a textile design comprised
of
horizontal stitches that vary in
length, forming alternating right-side-up and upside-down pyramids. Each pyramid is separated
by two diagonal columns
of
what Wolverine describes as "geometric flowers." Yampa's color
scheme is light yellow, and dark and light grey.
Updraft, which is described by its application as a "re-coloration and extension"
of
Yampa, is the same design as Yampa, except the color scheme is yellow, green and grey, and
Updraft includes one additional row:
Joseph V. Myers, III
January 31, 2018
II. ADMINISTRATIVE RECORD
On
August 19, 2016, Wolverine filed separate applications to register copyright claims in
"Updraft Ecotread X2/Yellow Beams," and in
"ZX2
Yampa/Light beam." The applications
respectively state that Yampa was completed
in
2012, while Updraft was completed in 2013.
The Updraft application lists "Textile Design entitled ZX2 Yampa/Light Beam" as material
excluded from its claim, and describes the
new
material included in its claim as "Re-coloration
and extension
of
design." In an August 22, 2016 letter, a Copyright Office registration specialist
refused to register the claims in the Works because they each "lack[ ed] the authorship necessary
to support copyright claims." Letter from Sandra Ware, Registration Specialist, to Joseph V.
Myers, III (Aug. 22, 2016).
In a letter dated November 21, 2016, Wolverine requested that the Office reconsider its
initial refusals to register the Works. Letter from Joseph V. Myers, III, to U.S. Copyright Office
(Nov. 21, 2016) ("First Request").
In
the letter, Wolverine argued that the "original pattern
of
rectangular shapes with tooth-like edges containing differing numbers
of
chain links
of
ovals"
are original and "sufficiently creative to warrant copyright registration." First Request at 3.
After reviewing the Works in light
of
the points raised in the First Request, the Office
reevaluated the claims and,
on
March 23, 2017, again concluded that the Works "do not contain
a sufficient amount
of
artistic and graphic authorship to support a copyright registration," stating
that the Works were a "basic arrangement
of
common
shapes in a simple configuration." Letter
from Stephanie Mason, Attorney-Advisor, to Joseph V. Myers, III (Mar. 23, 2017).
In a letter dated June 22, 2017, Wolverine requested that, pursuant to 37 C.F.R. 202.S(c),
the Office reconsider for a second time its refusals to register the Works. Letters from Joseph V.
Myers, III, to U.S. Copyright Office (June 22, 2017).
III. DISCUSSION
A. The Legal Framework
1.
Originality
A work may be registered
if
it qualifies as
an
"original work[]
of
authorship fixed
in
any
tangible medium
of
expression." 17 U.S.C. § 102(a). In this context, the term "original"
consists
of
two components: independent creation and sufficient creativity. See Feist Publ'ns,
-2-
Joseph V. Myers, III
January 31, 2018
Inc.
v.
Rural
Tel.
Serv. Co., 499 U.S. 340, 345 (1991). First, the work must have been
independently created by the author, i.e., not copied from another work. Id. Second, the work
must possess sufficient creativity. Id. Only a modicum
of
creativity is necessary, but the
Supreme Court has ruled that some works (such as the alphabetized telephone directory at issue
in Feist) fail to meet even this low threshold.
Id
. The Court observed that "[a]s a constitutional
matter, copyright protects only those constituent elements
of
a work that possess more than a de
minimis quantum
of
creativity."
Id.
at 363. It further found that there can be no copyright in a
work in which "the creative spark is utterly lacking or so trivial as to be virtually nonexistent."
Id. at 359.
The Office's regulations implement the longstanding requirement
of
originality set forth
in the Copyright Act and described in the Feist decision. See,
e.
g.,
37 C.F.R. § 202. l(a)
(prohibiting registration
of
"[ w ]ords and short phrases such as names, titles, slogans; familiar
symbols or designs; [ and] mere variations
of
typographic ornamentation, lettering, or coloring");
id
. § 202.1
O(a)
(stating "to be acceptable as a pictorial, graphic, or sculptural work, the work
must embody some creative authorship in its delineation or form"
).
Some combinations
of
common or standard design elements may contain sufficient creativity with respect to how they
are juxtaposed or arranged to support a copyright. Nevertheless, not every combination or
arrangement will be sufficient to meet this test. See Feist, 499 U.S. at 358 (finding the Copyright
Act "implies that some 'ways' [
of
selecting, coordinating, or arranging uncopyrightable material]
will trigger copyright, but that others will not"
).
A determination
of
copyrightability in the
combination
of
standard design elements depends on whether the selection, coordination, or
arrangement is done in such a way as to result in copyrightable authorship.
Id.
; see also Atari
Games Corp.
v.
Oman, 888 F.2d 878 (D.C. Cir. 1989).
A mere simplistic arrangement
of
non-protectable elements does not demonstrate the
level
of
creativity necessary to warrant protection. For example, the United States District Court
for the Southern District
ofNew
York upheld the Copyright Office's refusal to register simple
designs consisting
of
two linked letter "C" shapes "facing each other in a mirrored relationship"
and two unlinked letter "C" shapes "in a mirrored relationship and positioned perpendicular to
the linked elements." Coach, Inc. v. Peters, 386 F. Supp. 2d 495, 496 (S.D.N.Y. 2005).
Likewise, the Ninth Circuit has held that a glass sculpture
of
a jellyfish consisting
of
clear glass,
an oblong shroud, bright colors, vertical orientation, and the stereotypical jellyfish form did not
merit copyright protection. See Satava v. Lowry, 323 F.3d 805,
811
(9th Cir. 2003). The
language in Satava is particularly instructive:
It is true,
of
course, that a combination
of
unprotectable elements may qualify for
copyright protection. But it is not true that any combination
of
unprotectable elements
automatically qualifies for copyright protection. Our case law suggests, and we hold
today, that a combination
of
unprotectable elements is eligible for copyright protection
only
if
those elements are numerous enough and their selection and arrangement original
enough that their combination constitutes an original work
of
authorship.
Id
. (internal
citations omitted).
-3-
Joseph
V.
Myers, III January 31, 2018
2.
Derivative
Works
The Copyright Office will register a claim in a derivative work where the deposit material
contains new authorship with a sufficient amount
of
original expression. 17 U.S.
C.
§ 103(a)
("The subject matter
of
copyright .
..
includes
...
derivative works, but protection for a work
employing preexisting material in which copyright subsists does not extend to any part
of
the
work in which such material has been used unlawfully.");
see also U.S.
COPYRIGHT
OFFICE
,
COMPENDIUM
OF U.S.
COPYRIGHT
OFFICE
PRACTICES§
311.1 (3d ed. 2017)
("COMPENDIUM
(THIRD)")
(citing H.
R.
REP
.
No
. 94-1476, at 57 (1976)). The registration for a derivative work,
however, "does not cover any previously published material, previously registered material, or
public domain material that appears in the derivative work. Nor does it cover any material that is
not owned by the copyright claimant."
Id.
; see also
17
U.S.C. § 103(b) (Copyright in a
derivative work is "independent
of
, and does not affect or enlarge the scope, duration, ownership,
or subsistence
of
, any copyright protection in the preexisting material."
).
In the case
of
derivative works, the "new authorship that the author contributed to the
derivative work may be registered, provided that it contains a sufficient amount
of
original
expression, meaning that the derivative work must be independently created and it must possess
more than a modicum
of
creativity."
COMPENDIUM
(THIRD)
§ 311 .1 ( citing Waldman Publishing
Corp. v. Landolf, Inc
.,
43
F.3d 775, 782 (2d Cir. 1994)). The amount
of
creativity required for a
derivative work is the same as that required for a copyright in any other work: "[a]ll that is
needed to satisfy both the Constitution and the statute is that the 'author' contributed something
more than a 'merely trivial' variation, something recognizably 'his own.
"'
Alfred
Bell & Co. v.
Catalda Fine
Art
s,
Inc.,
191
F.2d 99, 102-03 (2d Cir. 1951) (citing Chamberlin v. Uris Sales
Corp.,
150 F.2d 512, 513 (2d. Cir. 1945)). Thus, "the key inquiry is whether there is sufficient
nontrivial expressive variation in the derivative work to make it distinguishable from the
[preexisting] work in some meaningful way."
Schrock v. Learning Curve International, Inc. , 586
F.3d 513,
521
(7th Cir. 2009).
Although the amount
of
originality required is low, courts have recognized that derivative
works "[l]acking even a modest degree
of
originality .
..
are not copyrightable." L Bat/in & Son,
536 F.2d at 490; Durham Industries, Inc.
v.
Tomy Corp., 630 F.2d 905,
911
(2d Cir. 1980).
Indeed, "[s]pecial caution is appropriate when analyzing originality in derivative works, 'since
too low a threshold will give the first derivative work creator a considerable power to interfere
with the creation
of
subsequent derivative works from the same underlying work
."'
We
Shall
Overcome Found. v. The Richmond Org., Inc.,
16-cv-2725, 2017 WL 3981311, at *13 (S.D.N.Y.
Sept. 8, 2017). Very minor variations do not satisfy this requirement, such as merely changing
the size
of
the preexisting work or recasting a work from one medium to another. See
L.
Bat/in
& Son,
536 F.2d at 491. Further, a claim to register a derivative work that adds only non-
copyrightable elements to a prior product is not entitled to copyright registration.
Boyds
Collection, Ltd.
v.
Bearington Collection, Inc., 360
F.
Supp. 2d 655, 661 (M.D.
Pa
. 2005).
Ultimately, whatever the addition is, it must be independently protectable in order for the
derivative work to be registered.
-4-
Joseph V. Myers, III
January 31, 2018
B.
Analysis
of
the Work
After reviewing the applications, deposit copies, and relevant correspondence, along with
the arguments in the second request for reconsideration, the Board finds that Yampa exhibits a
modicum
of
copyrightable authorship, but that Updraft is an insufficiently original derivative
work.
The Board finds that Yampa satisfies the requirement
of
creative authorship necessary to
sustain a claim to copyright because it contains a sufficient amount
of
original and creative two-
dimensional authorship, namely the overall configuration
of
the pyramid structures and diagonal
columns
of
flowers. Although pyramids are common and familiar geometric shapes not
themselves copyrightable,
see 37 C.F.R. § 202.1, Yampa's specific combination
of
elements,
including its spacing variations and interior stitching, demonstrates the "minimal degree
of
creativity" required by the Supreme Court in Feist Publications v. Rural Telephone Service Co.,
499 U.S. 340 (1991). See also L.A. Printex Industries,
Inc.
v. Aeropostale, Inc., 676 F.3d
841
,
850 (9th Cir. 2012) ( concluding that the
plaintiffs
selection, coordination and arrangement
of
a
"repeating pattern
of
bouquets
of
flowers and three-leaf branches" was "original.").
Updraft's combination
of
elements, however, are derivative
of
and highly similar to
Yampa. Although Wolverine argues in its Second Request that "fresh additions [are] present in
the Updraft Design but not present in the Yampa Design," Second Request at 6, the Board fails
to see any copyrightable differences between the two designs. To be sure, Updraft has a yellow
and green color scheme, while Yampa has a grey and light yellow color scheme. Mere
coloration, however, is not copyrightable.
See 37 C.F.R. § 202.
l(a)
(prohibiting registration
of
"coloring"); see also
COMPENDIUM
(THIRD)
§ 313 .4(K) ( stating that "the Office cannot register
mere variations in coloring;" giving as an example
of
a prohibited registration the creation
of
"a
new version
of
a fabric design where the colors red and blue are substituted for the colors yellow
and green."
).
Similarly, while Updraft includes an additional row
of
design, that row is a rote
continuation
of
the same pyramidic pattern claimed by Yampa. See
COMPENDIUM
(THIRD)
§
313.4(B) ("Works that contain
...
only a
de
minimis amount
of
original expression are not
copyrightable and cannot be registered with the U.S. Copyright Office.").
-5-
Joseph V. Myers, III
January 31, 2018
IV. CONCLUSION
For the reasons stated herein, the Review Board
of
the United States Copyright Office
reverses the refusal to register the copyright claim in Yampa and affirms the refusal to register
the copyright claim in Updraft. Pursuant to 37 C.F.R. § 202.S(g), this decision constitutes final
agency action with respect to the Updraft claim. The Board now refers the Yampa copyright
claim to the Registration Policy and Practice division for registration
of
the Works, provided that
all other application requirements are satisfied.
No response to this letter in needed.
BY:
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