meaning clear"; and after some further colloquy in which Mr. Brown urged that the Copyright Office should not be "deprived of any exercise of discretion*** in things which are not subject to copyright," Representative Lanham said, "I assume that there is no intention to deprive you of that right."

Mention should also be made of an objection voiced in 1906 to a different kind of provision. The first draft of a bill to revise the copyright acts, prepared by the Copyright Office in 1905 as a basis for discussion, contained the provision that

* * no registration shall *** be made of any article not clearly within the classes of articles designated by this Act as subject to copyright.

A substitute provision in a second draft provided that the Register "shall make entry" of the deposit of "any article made the subject of copyright by this Act." 35

In the series of conferences convened by the Librarian of Congress in 1905 and 1906 to consider these drafts, two representatives of bar associations expressed the fear that these provisions might give the Register a judicial function to make final decisions which would not be reviewable by the courts. They recognized that the Register might refuse registration in the exercise of his administrative functions, which they apparently considered appropriate as long as his refusal was reviewable by the courts.3

36

VI. NATURE OF AUTHORITY EXERCISED BY THE REGISTER

The successive Registers of Copyright have consistently exercised the authority to refuse registration in those instances where the requirements of the statute for securing copyright and for obtaining registration have not been fulfilled. The Copyright Office receives a substantial number of applications for items which it finds not registrable, principally because they have been published without the required notice or they appear on their face to be uncopyrightable. During fiscal year 1957, for example, about 3 percent of the applications received were rejected, mainly for those reasons.37

It is pertinent to note briefly some of the aspects of the examination which the Copyright Office makes of applications for registration and the copies of the works deposited therewith. The copies are examined to determine that the work is of a copyrightable character under the statute, and if the work has been published, to see that the copies bear the required notice; but the Office does not purport to determine whether the work is original.38 The application is examined to see that it contains the necessary data, including the data required to be set forth in the certificate of registration, and that it is consistent with corresponding data in the copies of the work; and applicants may be requested to supply missing data or to reconcile inconsistencies. But the Office does not purport to determine whether the statements of fact

35 The draft bills are printed in Copyright Office Bulletin No. 10 (1905).

36 See Conference on Copyright, Third Session, March 13-16, 1906 (Copyright Office): statements of Arthur Steuart (pp. 62, 63) and Paul Fuller (p. 66).

37 Annual Report of the Register of Copyrights for the fiscal year ending June 30, 1957, p. 2.

It would manifestly not be feasible to examine and compare the work submitted for registration and all existing works which it might conceivably plagiarize. Moreover, similarity between two works does not prove plagiarism (see, for example, Alfred Bell & Co. v. Catalda Fine Arts, Inc., 191 F. (2d) 99 (2d Cir. 1951)). In relatively rare cases the Copyright Office examiners may recognize the material submitted as apparently being an old work, e.g., the Lord's Prayer or a mere quotation from the Bible or Shakespeare; and in such cases, inquiry is made of the applicant as to the element of originality.

in the application are true; 39 nor does the Office undertake to resolve conflicting claims.40

The functions of the Register in regard to the registration of claims may be characterized as ministerial. While he has been said to have "discretion," "1 this must be understood in its context as referring to the fact that he must construe the statute and exercise judgment in determining whether a particular claim is eligible for registration under its provisions. It seems clear that he has no quasi-judicial functions: his determinations are not final but are subject to review and decision by the courts. It has been said that his functions in making registration are similar to those of a recorder of deeds, though the Register's administrative determinations are more difficult because of the complexities of the copyright statute.12

VII. EFFECT OF REGISTRATION AND ITS REFUSAL

A. PROBATIVE EFFECT OF REGISTRATION

Under section 209, the registration of a copyright claim entitles the claimant to a certificate of registration which "shall be admitted in any court as prima facie evidence of the facts stated therein." Section 209 requires the certificate to state the following facts: the name and address of the claimant; the name of the author (when shown in the Copyright Office records) and his citizenship, and the domicile of an alien author who is domiciled in the United States; the title of the work; the date of the deposit of copies; the date of publication of the work (if published); identification of the registration entry by class designation and number; and the receipt of the affidavit of manufacture in the United States (with the date of printing or publication as stated therein) in the case of a book for which the statute requires such an affidavit.

43

These facts alone do not prove that the copyright claim is valid: a court might still hold the claim invalid because the subject matter is not copyrightable, or because the work is not original," or because the claimant is not the rightful owner of the copyright, or for some other reason.

45

Nevertheless, since the certificate identifies the author (which may imply an assertion that the work is his origination) and the claimant (which may imply an assertion that he is the owner), as well as the work, and since the courts apparently assume that the Copyright Office considers the questions of copyrightability and compliance with statutory requirements, courts have frequently spoken of the certificate as being prima facie evidence of the validity and ownership of the copyright claim.46 And in practice, numerous transactions have

The Office does not undertake to investigate the accuracy of statements in the application as to authorship, ownership, date of publication, etc. Occasionally, where a statement of fact appears on its face to be questionable, the Office may ask the applicant for confirmation.

40 In the Report of the Librarian of Congress, 1901, at page 287, he said: "The Copyright Office ・・・ has no authority to question any claim as to authorship or proprietorship or give consideration to conflicting claims, and for obvious reasons can give no statement of opinion upon questions of copyright which affect the rights of contending parties."

41 See pp. 88, 90 and 91, supra.

42 See p. 88, supra.

43 See, for example, Taylor Instrument Cos. v. Fawley-Brost Co. 139 F. 2d 98 (7th Cir. 1943). See also

note 15 supra.

44 See note 38 supra.

4 See notes 39 and 40 supra.

46 See Kaplan, The Registration of Copyright [Study No. 17 in the present series of Committee Prints). p. 29.

been based on the assumption that the certificate is evidence of the existence and ownership of copyright.

Be that as it may, while the Copyright Office cannot determine the originality or ownership of a work, the copies deposited are all that is needed to determine whether the work is of a copyrightable character; and it has been the practice of the Copyright Office for many years to examine the deposits and make this determination, and to refuse registration for material it considers clearly not copyrightable. It is generally understood " that the issuance of a certificate implies that the Copyright Office considers the work to be copyrightable, though its determination on this point is subject to review by the

courts.

It has been thought that the refusal of the Copyright Office to register uncopyrightable material serves to inform applicants and the public of the scope of the copyright law. It is believed to be of some assistance also to the courts insofar as they give weight to the probative value of registration and the interpretation of the law by the Copyright Office.

Conversely, if the Copyright Office were to register claims and issue certificates without regard to the copyrightability of the material, the result would be to mislead the applicant and the public. What materials are copyrightable is a rather esoteric question on which the general public is not well informed. Many applications are received in the Copyright Office for the registration of uncopyrightable material such as titles, names, ideas, mechanical devices, tools, toys, and almost anything imaginable, usually under a misapprehension by the applicant of the copyright law. In some instances, protection may be available under the trademark or patent laws. Registration of a copyright claim in such material would lull the applicant into a false sense of security in believing he had copyright protection, instead of seeking advice and other means of protecting his interests; and the public would often be given the false impression that the material is copyrighted. Further consequences also seem evident: the registration records would be cluttered with unfounded claims; registration records and certificates would be unreliable and would lose much of their probative value for copyright claimants, for other persons dealing with them, and for the courts; and many unfounded claims would probably become the source of litigation.

B. ERRONEOUS REFUSAL OF REGISTRATION

On the other side of the coin are the consequences to an applicant who may have a valid claim for which registration is refused. Copyrightability is sometimes a close question. In general, the Copyright Office has leaned toward making registration in doubtful cases. Even so, some cases arise in which applicants who are refused registration believe they have a valid claim.

No case has been found in which a court has held copyrightable a work which the Copyright Office refused to register on the ground of

* See, for example, the discussion supra, pp. 88, 89 of Stein v. Mazer.

uncopyrightability.48 There have been several cases, on the other hand, in which the courts have held a work which was registered to be uncopyrightable.49

Section 13 provides that

No action or proceeding shall be maintained for infringement of copyright in any work until the provisions of this title with respect to the deposit of copies and registration of such work shall have been complied with.

It has sometimes been argued that the Register has no authority to refuse registration when the proper deposit, application, and fee have been submitted, because under section 13 an erroneous refusal would deprive the claimant of his right to have his copyright protected in court.50 This raises the question of the recourse open to a claimant who seeks to enforce a claim which he believes to be valid but which the Copyright Office has refused to register.

51

In a case decided in 1911, White-Smith Music Publishing Co. v. Goff, although the plaintiff had applied for and been refused registration of a claim to renewal copyright, the court considered the merits of the plaintiff's claim in an infringement action, holding the claim unfounded. The court said:

[The plaintiff] offered registration under the statute, and, although registration was refused, yet it fully complied with the requirements of law, and is entitled to maintain this suit if it had any stututory right to the extension.52 In this view section 13 would permit the claimant to bring an infringement action if he had submitted the required deposit, application, and fee for registration, even though registration had been refused, and the court would determine the question of the validity of the claim in that action.

Several later decisions contain broad statements to the effect that no suit can be brought without registration.53 In all these cases, however, it appears that the plaintiffs had not followed the required procedure to obtain registration; and in two of these cases the courts expressly stated that the complaints were being dismissed without prejudice. Apparently the plaintiff's could thereafter have obtained registration and instituted new suits.

54

In the recent case of Vacheron Constantin-Le Coultre Watches, Inc. v. Benrus Watch Co., where registration for a wristwatch had been refused, the district court 55 in an infringement action held the wristwatch not copyrightable. In a footnote the court expressed doubt as to whether the suit could be entertained unless the plaintiff first brought an action to compel the Register to make registration, but

49 In the Bouvé cases, supra notes 22, and 23, where the refusal of registration was reversed by the court, there was no question of copyrightability. The question was whether registration should be made on the basis of a collection of materials in the form of page proofs said to be published as a book, rather than on the basis of the separate portions of the same material published in various periodicals.

In Vacheron v. Benrus Watch Co., dealing with a copyright claim in the design of a wrist watch, for which registration had been refused on the ground of non-copyrightability, the District Court (155 F. Supp. 932 (S.D.N.Y. 1957)) held the design not copyrightable. In the Circuit Court of Appeals (260 F. 2d 637 (2d Cir. 1958)) the majority did not consider this question, but held that no action could be brought on the copyright claim without the certificate of registration; Judge Clark, dissenting, considered the design copyrightable.

49 See note 43 supra.

Brief for Appellee, pp. 60, 61, Bouvé v. Twentieth Century Fox Film Corporation, 122 F. 2d 51 (D.C. Cir. 1941); Brief of Appellants, Bailie and Fiddler v. Fisher, pp. 8, 9, 258 F. 2d 425 (D.C. Cir. 1958). $1 187 F. 247 (1st Cir. 1911).

In the decision of the Second Circuit Court in Vacheron v. Benrus Watch Co., 260 F. 2d 637 (2d Cir. 1958), the majority opinion referred to this statement as "dicta," with Judge Clark disagreeing on this point in his dissenting opinion.

43 New York Times Co. v. Star Co., 195 Fed. 110 (S.D.N.Y. 1912); Lumiere v. Pathe Exchange, 275 Fed. 428 (2d Cir. 1921); Rosedale v. News Syndicate, 39 F. Supp. 357 (S.D.N.Y. 1951); Algonquin Music Inc. v. Mills Music Inc., 93 F. Supp. 268 (8.D.N.Y. 1950).

In the Rosedale and Algonquin cases, supra note 53.

155 F. Supp. 932 (8.D.N.Y. 1957).

added that it was unnecessary to pass upon this question since the copyright claim was being held invalid. On appeal in the Second Circuit Court,56 Judge Hand declined to consider the question of copyrightability, and held that even if copyrightability were assumed, the suit could not be maintained without registration. Judge Lumbard, in a concurring opinion did not discuss this question. Chief Judge Clark, dissenting, considered that the wristwatch was copyrightable and that the refusal of registration was erroneous. In this situation, he said:

the Register must carry out the provisions of the law and has no judicial or discretionary functions***. [It is his duty to obey the law and *** mandamus will issue to require him to do so.

As to the plaintiff's right to sue though registration was refused, Judge Clark said in his dissent:

I doubt if the ministerial grant of a certificate is a condition precedent to a suit for copyright; but however this question is answered, it seems to me clear that a plaintiff situated as is this one is entitled to at least *** an injunction preventing further wrongdoing until it is able to seek mandamus against the Register in the District of Columbia.

Citing White-Smith Music Pub. Co. v. Goff, supra, Judge Clark intimated that he would go further and have the court determine the validity of the copyright claim in the infringement suit.

As noted above, the authority of the Register of Copyrights is ministerial in registering the claims of persons entitled to copyright, though in executing this ministerial function he must apply, and hence construe, the law governing the question of whether the applicant for registration is entitled to copyright. It seems clear that he has no discretionary authority in the sense of establishing the legal right of claimants to secure copyright or to obtain registration; and his ministerial application of the law in granting or refusing registration is therefore subject to review by the courts. Accordingly, it seems to be settled that a claimant who is refused registration may bring an action in the nature of mandamus against the Register to compel him to make registration if the court concludes that the claim is entitled to registration under the provisions of the law. The unsettled question is whether a claimant who has fulfilled the procedural requirements (deposit, application, and fee) for registration but has been refused registration on the ground that the copyright claim is invalid, must first secure registration by a mandamus action against the Register before he can maintain a suit for infringement; or whether he may sue for infringement without registration and have the validity of his claim determined in that suit.

In a revision of the copyright law, assuming that some kind of registration system is provided for, this last question should be clarified.

It might be argued, on the one hand, that the requirement of registration as a precondition to instituting an infringement suit is desirable to forestall suits based on unfounded claims; that an erroneous refusal of registration for a valid claim could be corrected by mandamus proceedings; and that in any suit to establish the validity of a claim which the Register has held to be invalid, the Register should be a party to present his view to the court. In

se 260 F.2d 637 (2d Cir. 1958).