Affirmed by published opinion. Judge TRAXLER wrote the opinion, in which Judge WIDENER and Judge DUNCAN joined.
TRAXLER, Circuit Judge.
William Darden filed this action under the Administrative Procedure Act against Marybeth Peters, Register of Copyrights, seeking to set aside a decision of the United States Copyright Office denying Darden's applications for copyright registration. See 5 U.S.C. § 706(2)(A); 17 U.S.C. § 701(e). Finding no abuse of discretion in the Register's refusal to issue a copyright registration for Darden's works, we affirm the district court's grant of summary judgment to the Register.
Darden created a website called "appraisers.com," an online referral service for consumers to locate real estate appraisers throughout the United States. The website features a series of maps that enable a user to find an appraiser in a desired location by pointing to and clicking on the appropriate map. The homepage of appraisers.com features a stylized map of the United States that serves as a link to a separate page displaying a detailed map of any state selected by the user. The state maps, in turn, are divided into counties; the consumer can retrieve a list of local appraisers by selecting the appropriate county.
In developing his website, Darden hired Sean Pecor, a web designer, to create the maps. Pecor started with a digital Census map of the United States, colored the map blue, and added shading to give the map a three-dimensional effect. Pecor selected a font to use in labeling the states, and he added call-out labels as well. Pecor used the same process for the individual maps of each state. After completing the project, Pecor assigned Darden any copyright interest he held in the maps and the design of the website.
In May 2002, Darden filed an application with the Copyright Office seeking to register his website, which he titled "APPRAISERS dotCOM" for purposes of the application, as a technical drawing. Darden described APPRAISERSdotCOM as a derivative work based on "US Census black and white outline maps" and "clip art." J.A. 125. Darden's application identified "graphics, text, colors, and arrangement" as the material that he added to the preexisting work and in which he claimed copyright protection. J.A. 125. Additionally, Darden filed a separate application for registration of the work "Maps for APPRAISERSdotCOM." J.A. 286. Darden described his "Maps" work as a derivative work that, similar to the "APPRAISERSdotCOM" work, was based on preexisting "US Census black and white outline maps." J.A. 287. He claimed copyright ownership in the additions made by Pecor to the preexisting census maps: "font and color selection; visual effects such as relief, shadowing, and shading; labeling; call-outs." J.A. 287.
The Examining Division of the Copyright Office rejected both applications. With respect to Darden's claim in the Maps themselves, the examiner concluded that the work "lack[ed] the authorship necessary
As for Darden's application to register his APPRAISERSdotCOM web pages as a technical drawing, the examiner first noted that the work "does not appear to contain any technical drawing." J.A. 120. Regarding Darden's claim for "graphics," the examiner determined that "[a]ll of the graphic elements appear to consist only of the preexisting outline maps and some simple colored rectangles" and thus the added material was not sufficiently original to warrant copyright protection. J.A. 120. Darden's variations in color were rejected on the same basis. The examiner observed, however, that "[t]he work contains text and perhaps a compilation which can support a copyright claim, if they are original" and indicated that Darden could pursue registration of an original compilation by filing a new or amended application that "omitt[ed] any reference to `technical drawing,' `graphics,' or `colors.'" J.A. 120.
Darden sought reconsideration by the Examining Division of the Copyright Office. With respect to his application for registration of the Maps work, Darden argued that the maps had a sufficient level of creativity to warrant copyright protection because of "the special combination of font and color selection; visual effects such as relief, shadowing, and shading; labeling; and call-outs. The information the maps convey could easily be provided in other ways; thus, the author should be allowed to protect his creative efforts." J.A. 100. In support of his request for reconsideration, Darden submitted a written "declaration" from Sean Pecor who asserted that, even though he used preexisting census maps as the basis of his work, "each map was altered to such a degree that each line on each map is measurably changed from the digital originals . . . obtained from the U.S. Census." J.A. 116. Specifically, Pecor "resized the maps and redrew many of the anti-aliased lines" so that "during scale down of [the maps], [the images would not] get a `chunky' look." J.A. 116.
Darden submitted an amended application for registration of the APPRAISERSdotCOM work. The revised application indicated that the nature of authorship was a "compilation and arrangement of maps, text, graphics, and data" as opposed to a technical drawing as indicated in the original application. J.A. 107. Darden described the new material in which he claimed copyright as "[t]ext; map designs and formats; compilation, formating, and arrangement of text, maps, graphics, and listing data." J.A. 108. Darden made clear that he was asserting no claim in "the content of the listing data." J.A. 108.
J.A. 94. The examiner concluded that the changes made to Darden's maps work "amount[ed] primarily to layout and format as well as de minimis compilation" and therefore lacked "a sufficient amount of originality and creativity to support a copyright registration." J.A. 97-98. With respect to the APPRAISERSdotCOM work, the examiner again suggested the possibility of a registrable claim "in only the `text and compilation of data'" but indicated that a new application, revised to limit the claim to "`text and compilation of data,'" was required. J.A. 98.
Darden then sought review of the denial of his applications by the Copyright Office Board of Appeals. Darden's argument was essentially identical to that asserted in his request for reconsideration:
J.A. 87. Darden also presented his own declaration in which he stated that he had "received calls from people and companies asking whether I would license our maps for them to use on their web sites . . . [demonstrating that] people recognize the maps as being unique and proprietary to us." J.A. 92.
The Board of Appeals again affirmed the denial of registration for both the Maps and the APPRAISERSdotCOM works. With regard to the copyright claim in the maps themselves, the Board concluded, as did the Examining Division, that the maps were merely "representations of the preexisting census maps in which the creative spark is utterly lacking or so trivial as to be virtually nonexistent." J.A. 74 (internal quotation marks omitted). The Board also noted that any marketplace confusion created by the use of Darden's maps by third parties was irrelevant to the question of whether the maps were copyrightable, as were requests to Darden by website browsers for license to use the maps. As for the APPRAISERSdotCOM application, the Board of Appeals affirmed the denial of registration "due to the expansive scope of the claim." J.A. 76. Although the Board of Appeals endorsed the notion that there could well be copyrightable elements included on the website, Darden's claim as stated in his registration application—for "text, maps, and formatting of an Internet web page"—was simply "too broad" to warrant protection. J.A. 76.
Darden then brought this action against the Register of Copyrights under the Administrative
The Copyright Act provides that "all actions taken by the Register of Copyrights under this title are subject to the provisions of the Administrative Procedure Act." 17 U.S.C. § 701(e).
The district court concluded that the proper standard of review under the APA is the familiar "abuse of discretion" standard whereby a reviewing court will "set aside agency action, findings, and conclusions" that are "arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law." 5 U.S.C. § 706(2)(A). This is consistent with the few federal decisions—most of which were issued by the same court—addressing the proper review standard under the APA for courts directly reviewing a registration decision. See Atari Games Corp. v. Oman, 979 F.2d 242, 243 (D.C.Cir.1992) ("Atari II"); OddzOn Prods., Inc. v. Oman, 924 F.2d 346, 347-48 (D.C.Cir.1991); Atari I, 888 F.2d at 881; Coach, Inc. v. Peters, 386 F.Supp.2d 495, 497 (S.D.N.Y.2005). See generally 3 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 12.11[B], at 12-208 (2005).
Darden does not contest the general applicability of the APA to his claim; indeed, he expressly brought this action under the APA. Darden contends, however, that the district court incorrectly applied the abuse of discretion standard set forth in section 706(2)(A) of the APA. Darden suggests instead that section 706(2)(B) applies to a challenge of the Register's denial of a copyright registration application and mandates a de novo standard of review. Section 706(2)(B) directs that the reviewing court set aside agency actions the court finds to be "contrary to constitutional right, power, privilege, or immunity." 5 U.S.C. § 706(2)(B). Under the APA, constitutional questions that arise during APA review fall expressly within
Darden cites no authority even remotely suggesting that any court has ever regarded the agency's routine decision to deny registration as having constitutional ramifications for the claimant. Darden derives the basis for his argument from Article I of the United States Constitution which grants Congress the power to provide copyright protection to the extent Congress sees fit. See U.S. Const. Art. I, § 8, cl. 8 (granting Congress legislative power "[t]o promote the Progress of Science and useful Arts, by securing . . . to Authors and Inventors the exclusive Right to their respective Writings and Discoveries"). Congress is under no mandate from this clause, however, to provide copyright protection. See Silvers v. Sony Pictures Entertainment, Inc., 402 F.3d 881, 883 (9th Cir.2005) ("As is clear from its text, that clause of the Constitution grants no substantive protections to authors. Rather, Congress is empowered to provide copyright protection."). Copyright is solely a creature of statute; whatever rights and remedies exist do so only because Congress provided them. See Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 431, 104 S.Ct. 774, 78 L.Ed.2d 574 (1984). Thus, as there is no constitutional right to copyright registration, the Register's refusal to register Darden's claim cannot be "contrary to constitutional right" as it must be for section 706(2)(B) to apply.
Darden next contends that because the Register's decision was based on the agency's incorrect resolution of a legal question, i.e., whether Darden's claim lacked sufficient originality to be registrable, the Register's decision is subject to de novo review. More particularly, Darden argues that the Register's refusal to find sufficient originality in his submitted works despite the "extremely low" amount of creativity required for a work to be copyrightable, Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991), was an erroneous conclusion that must be set aside under the "not in accordance with law" provision of section 706(2)(A) of the APA. Additionally, Darden cites various decisions noting, in the context of copyright infringement litigation, "that copyrightability is always an issue of law" for the court. Gaiman v. McFarlane, 360 F.3d 644, 648 (7th Cir.2004); see Yankee Candle Co. v. Bridgewater Candle Co., 259 F.3d 25, 34 n. 5 (1st Cir.2001); Collezione Europa U.S.A. v. Hillsdale House, 243 F.Supp.2d 444, 452 (M.D.N.C.2003).
We reject Darden's argument. Essentially, Darden is claiming that the Register simply reached the wrong result, not that the Register applied the wrong legal standard or misapprehended or ignored the controlling legal principles. See Turgeau v. Administrative Review Bd., 446 F.3d 1052, 1057 (10th Cir.2006) (explaining that under § 706(2)(A) "[f]ailure to apply the correct legal standard or to provide this court with a sufficient basis to determine that appropriate legal principles have been followed is grounds for reversal") (internal quotation marks omitted). Review under section 706(2)(A) is "narrow" and the reviewing court is not permitted to substitute its own judgment for the judgment of the agency. Motor Vehicle Mfrs. Ass'n v. State Farm Mut. Auto. Ins. Co.,
Darden makes no assertion of this kind here; he merely argues that the agency should have concluded that the Maps and APPRAISERS dotCOM works contained the requisite level of creativity, citing Feist and other precedents. At every level of internal agency review, however, the Copyright Office recognized Feist as having established the contours of the originality element of a copyright claim. Because Darden has failed to identify any relevant factor or legal principle that the Register failed to consider, the agency's decision cannot be set aside as "contrary to law."
Finally, Darden argues that the Register's determination that a copyright claim lacked sufficient originality to warrant registration is subject to de novo review in the context of an infringement action under section 411(a) of the Copyright Act. He contends that de novo review of the copyrightability issue should also apply in the context of APA review for the sake of efficiency and predictability. We cannot agree.
Congress has afforded disappointed copyright applicants two separate methods of seeking redress for the decision of the Copyright Office not to register a copyright claim. First, as we explained previously, the applicant may file a review action under the APA against the Register of Copyrights for the sole purpose of having the denial of registration set aside. See 17 U.S.C. §§ 410(a), 701(e). Darden's action, of course, is such a case. Second, the claimant may seek judicial review of the rejected registration as part of an infringement action against an alleged infringer under section 411(a) of the Copyright Act.
Both kinds of actions involve, to one degree or another, consideration of whether a copyrightable claim has been presented. The Register has a statutory duty to examine applications for registration to determine if "the material deposited constitutes copyrightable subject matter and . . . the other legal and formal requirements of [the Copyright Act] have been met." 17 U.S.C. § 410(a). Whether the Register issues the certificate of registration or not, the Register necessarily makes a determination about the validity of the copyright claim. And, with respect to a copyright infringement action, the plaintiff must establish "ownership of a valid copyright and copying of constituent elements of the work that are copyrightable." Compaq Computer Corp. v. Ergonome Inc., 387 F.3d 403, 407 (5th Cir.2004) (internal quotation marks omitted). Copyright ownership, in turn, requires "proof of originality and copyrightability." Id. at
Darden's argument notwithstanding, it is not a foregone conclusion that courts owe no deference whatsoever to the Register's decision in the context of an infringement action under section 411(a). Indeed, courts are split on this issue. Compare John Muller & Co. v. New York Arrows Soccer Team, 802 F.2d 989, 990 (8th Cir. 1986) (applying abuse of discretion standard to infringement claim); Norris Indus. v. I.T. & T. Corp., 696 F.2d 918, 922 (11th Cir.1983) (same), with Carol Barnhart, Inc. v. Economy Cover Corp., 773 F.2d 411, 414 (2d Cir.1985) (according no deference to Register's copyrightability conclusion); OddzOn Prods., 924 F.2d at 347-50 (same). We need not weigh in on this issue, however, as Darden brought this action against the Register under the APA seeking review of the denial of registration for insufficient originality in his works. Even if no deference is due to the Register's decision by courts adjudicating infringement actions under section 411(a), we must apply the standards set forth in the APA. To do otherwise would be to ignore the clear and unambiguous language of the statute, which we cannot do. Accordingly, we review the decision to register Darden's works for abuse of discretion.
Darden next contends that even if the Register's decision is reviewed under a discretionary standard, it must be set aside because his Maps and APPRAISERSdotCOM works met the minimum standard of originality required for a copyrightable claim. Again, we disagree.
The Copyright Act affords copyright protection for "original works of authorship fixed in any tangible medium of expression," including "pictoral, graphic, and sculptural works." 17 U.S.C. § 102(a)(5). A work must be original to be copyrightable; indeed, the "sine qua non of copyright is originality." Feist, 499 U.S. at 345, 111 S.Ct. 1282. To be "original," the work in question must have been "independently created by the author (as opposed to copied from other works)," and it must "possess[ ] at least some minimal degree of creativity." Id. The threshold level of creativity required for copyrightability is low such that the "vast majority of works make the grade quite easily, as they possess some creative spark." Id. Nevertheless, "[t]here remains a narrow category of works in which the creative spark is utterly lacking or so trivial as to be virtually nonexistent." Id. at 359, 111 S.Ct. 1282. The Copyright Office established a regulation providing examples of the types of works that fall into the category of works that lack a minimum level of creativity and do not qualify for copyright protection, including "[w]ords and short phrases such as names, titles, and slogans; familiar symbols or designs; mere variations of typographic ornamentation, lettering or coloring; mere listing of ingredients or contents." 37 C.F.R. § 202.1(a).
The originality requirement applies to derivative works as well. See 17 U.S.C. § 101 (defining derivative work as a work "based upon one or more preexisting works"). The author's copyright protection in a "derivative work only extends to the elements that he has added to the work." Dam Things from Denmark v. Russ Berrie & Co., 290 F.3d 548, 563 (3d Cir.2002). And, the author's contributions must satisfy the originality requirement. See Feist, 499 U.S. at 359, 111 S.Ct. 1282.
We first consider the refusal of the Copyright Office to register Darden's
Darden points out that courts have recognized that maps have "have an inherent pictorial or photographic nature that merits copyright protection." Mason v. Montgomery Data, Inc., 967 F.2d 135, 142 (5th Cir.1992); see Streetwise Maps, Inc. v. VanDam, Inc., 159 F.3d 739 (2d Cir.1998). The general proposition that maps are categorically eligible for copyright registration, however, does not establish that the maps at issue here are copyrightable.
Darden also argues that the Copyright Office abused its discretion by failing to credit evidence showing that real estate appraisers, other real estate companies, and Darden's customers associate these particular maps with Darden's company. For example, Darden has "received phone calls from people and companies asking whether [he] would license [the] maps for them to use." J.A. 92. And, Darden's customers have reported confusion after encountering a competitor's website that had downloaded Darden's maps. Recognizing the maps, the customers believed that Darden operated the competitor's website. Darden asserts that this evidence of association demonstrates that the maps were unique, creative and original.
We disagree. Source identification is the hallmark of trademark law, not copyright. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768-69, 112 S.Ct. 2753, 120 L.Ed.2d 615 (1992). Furthermore, a work is copyrightable at the time of its creation or not at all. Evidence that customers associated the work with Darden is an indication of commercial success over time, not originality. See Paul Morelli Design, Inc. v. Tiffany & Co., 200 F.Supp.2d 482, 487-89 (E.D.Pa. 2002).
We conclude that the Register properly refused to register Darden's Maps work. Because there was no abuse of discretion, we decline to set aside the decision of the Copyright Office.
With respect to the APPRAISERSdotCOM work, Darden argues that the Register should have granted his application to copyright his website as a compilation. The Copyright Act defines a compilation as a "work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated,
Darden's revised application indicated that he was claiming protection in the website's "text; map designs and formats; compilation, formatting, and arrangement of text, maps, graphics, and listing data." J.A. 108. In rejecting Darden's claim, the Copyright Office noted that a website may well contain copyrightable elements, but its formatting and layout is not registrable. Compilation authorship is limited to the original selection, coordination and arrangement of the elements or data contained within a work. See Satava, 323 F.3d at 812.
We conclude that the Copyright Office acted well within its discretion in concluding that Darden failed to present a copyrightable compilation.
For the foregoing reasons, we conclude that the Copyright Office did not abuse its discretion in rejecting Darden's application for registration of his Maps and APPRAISERSdotCOM works. Accordingly, we affirm the order of the district court granting the Register's motion for summary judgment and denying Darden's cross-motion for summary judgment.