COMMENTS AND VIEWS SUBMITTED TO THE COPYRIGHT OFFICE ON AUTHORITY OF THE REGISTER OF COPYRIGHTS TO REJECT APPLICATIONS FOR REGISTRATION AUTHORITY OF THE REGISTER TO REJECT REGISTRATION APPLICATIONS (1) and (2) The statute should state it shall be the duty of the Register to accept valid applications for registration. It need not provide for a court review. (3) A valid application for registration should be a prerequisite to an infringement action. The applicant should be entitled to bring an action for infringement and have the validity of his claim for registration tried in that action. Notice to the Register should be required so that he may present to the court his case for refusing registration. By Richard H. Walker (The Curtis Publishing Co.) HARRY R. Olsson, Jr. MAY 4, 1959. AUTHORITY OF THE REGISTER OF COPYRIGHTS TO REJECT APPLICATIONS FOR REGISTRATION The Register of Copyrights should have the authority by statute to refuse registration of copyrights under certain circumstances, but it is important that where a refusal results from an inaccurate exercise of discretion, the applicant should not have been substantially injured. With respect to compliance with technical requirements or with regulations for registration, the Register should be expected to be infallible. When he refuses registration because of some failure here, it should be with notice to the applicant that his application can be corrected or that registration is impossible (i.e., because of omission of indicia on published copies; because the applicant is known not to be the "person entitled" to copyright; etc.). He should be told also that he has no standing to sue for infringement without first establishing his claim to copyright. With respect to problems other than technical requirements and regulations relating to registration, if the Register sees fit to refuse registration, it should be with notice to the applicant that he may continue publication with notice of copyright, but that in a suit for infringement he will first be expected to establish his claim to copyright. No substantial injury to the public should result from continued publication with a possibly invalid copyright, because initial publication with copyright notice has already been made. It should be a matter for the discretion of the Register to decide whether his refusal is based on failure to comply with technical requirements or regulations for registration, or for other reasons. The statute should provide that refusal of registration is subject to review by the courts, and if a suit for infringement arises concerning a copyright, registration for which was refused, notice to the Register should be a requirement so that he could present the basis for his refusal. * RICHARD H. WALKER. By Walter J. Derenberg MAY 18, 1959. *** [I]n connection with the study on the authority of the Register of Copyrights to reject applications for registration[:] I believe that the Register's authority is clearly circumscribed in the recent opinion by the Attorney General (41 Ops. A.G. No. 73). I strongly feel, however, that with regard to point 3 of the summary of issues, we should adopt the view of the dissenting judge in the Vacheron case and provide that registration shall not be a prerequisite to an action for infringement but that the unsuccessful applicant should be able to institute an infringement suit where he has tried in vain to register his claim with the Copyright Office. I believe it would be a good idea to provide that notice of the filing of such suit should be given to the Register of Copyrights, as suggested in the last sentence on page 98 of the study. As you may recall, the giving of a similar notice is presently provided whenever suits for patent or trademark infringement are filed in the Federal courts. WALTER J. DERENBERG. By George E. Frost MAY 19, 1959. * It makes me wince to think that it is even necessary to talk about the differing court decisions on whether suit can be brought on a copyright when registration has been sought and refused. More fundamentally, it seems to me that the Copyright Office can, and should, play a major creative role in the copyright law. One need only to point to the Patent Office and its history since 1836 to see how a specialized agency can exert an influence equal to that of the courts in molding the written law into conformity with practical matters. In some respects the Office has indeed played this role. One of the prime examples is Mazer v. Stein. In other respects a decisive position by the Office has been lacking. The Ballentine case is a good example. It seems to me that a persuasive argument can be made that the Ballentine case represents the sort of situation where either answer, firmly made, would be better than leaving the issue floating for the many years that it did. Of course this is not a one-way street. There are real headaches to decisionmaking. The recent opinion of the Attorney General on obscenity and the notice in the public press that the Office has chosen not to inquire into this matter bring out the point. The practical reasons in this particular case are most persuasive, but one might well question whether one approach should apply in the Copyright Office and another in the Post Office. I am personally inclined to favor what I understand the Copyright Office approach to be. But the real point is not whether examination procedures are easy or are hard, but rather whether through their use a more effective administration of the copyright law can be achieved. In answer to question 1, page 98, it is my feeling that the statute should definitely include some provisions for the rejection of applications for registration. The language of title 35, United States Code, section 131 might form one approach. I would hesitate to name specific reasons in a statute on why registration should be refused, and hence would think that a generalized statement as to meeting the requirements of the statute is all that can be used. Incidentally, just because a statute calls for "examination" does not mean that the Office must in every instance go beyond the oath of the applicant. As to question 2, some sort of review by appeal (rather than mandamus) appears to be an essential accompaniment to a power of the Register to refuse an application. On question 3, I would insist that the applicant either pursue his right to register on appeal from the ruling of the Register, or abandon the whole matter. GEORGE E. FROST. By Alfred H. Wasserstrom MAY 21, 1959. At the outset, let me say that I consider [Mrs.] Berger's study a valuable one. It raises, with commendable thoroughness, pertinent and significant questions. My own position is that the authority of the Register to refuse applications should be confined to relatively narrow limits. If an application, and I take that to include the accompanying deposit, is in apparent compliance with legal requirements, the application should be accepted and the certificate should issue. To put it another way, if the papers are good on their face that showing should suffice. I think our present basic statutory scheme as determined by the courts comports with this view and I consider it desirable to preserve such scheme, albeit in other respects there may be need for revision. As [Mrs.] Berger rightly observes, the authority of the Register is essentially ministerial and subject to judicial control and correction by what was formerly mandamus and is now a mandatory injunction. That, I submit, is as it should be. Moreover, if the Register has refused to register even though application therefor has been made, the copyrightee should, nevertheless, be entitled to proceed against an alleged infringer, bearing in mind that he will have to establish in such action not only his right to the copyright which he seeks to vindicate, but also his right to the registration of his copyright claim which the Register should have granted. This is the view that Chief Judge Clark took in his dissent in Vacheron Watches and I think it is a sound one. While it does not seem to me necessary for a plaintiff to serve a notice to intervene on the Register in such a case, I suggest that the defendant have the right to call upon the Register to intervene (as, of course, so might the court on its own motion); thus would the court be aided in reaching its decision by knowing the Register's grounds for his refusal to register. ALFRED H. WASSERSTROM. |