24 Jan Registering Your Copyright in Graphic Design: Fighting Back if the Copyright Office Says No
by Linda Joy Kattwinkel, Esq.
You’ve probably run across the “urban myth” that graphic design is not copyrightable. I think this myth started with the U.S. Copyright Office, a government agency that is responsible for registering copyrights. While the Copyright Office must necessarily interpret copyright law to do its job, its interpretations are not legally binding. Only Congress and federal courts have the power to make and enforce copyright law. Some years ago, the Office developed an internal policy that “graphic design” is not registerable. Even though the law specifically states that graphic works are protected by copyright (see 17 U.S.C. § 101 – definition of “Pictorial, graphic, and sculptural works”), the Office has been routinely rejecting copyright applications for graphic design, especially if the application uses the words “graphic design” or “layout” to describe the work.
I believe this misguided policy reflects a misinterpretation of copyright law regarding blank forms. Some courts have ruled that blank business forms are functional rather than creative works because the forms are used to record information rather than to convey content. Copyright does not protect functional works, therefore blank forms are not eligible for copyright.
The Office seems to think that “blank form” is equivalent to “layout” or “format,” which in turn is equivalent to “graphic design.” The Office has missed the critical distinction between a blank form, which someone else fills out, and graphic design. If graphic design is a “layout” or a “format,” it’s one that is already full of content. There’s nothing “blank” about it! (Unfortunately, the people responsible for setting policies in the Copyright Office do not have visual arts backgrounds. They seem particularly clueless with respect to graphic and commercial arts. There is a serious lack of understanding regarding what graphic design is, and how our industry works.)
In the language of copyright law, graphic design is properly described as a “compilation work” because it is “a work formed by the collection and assembling of preexisting materials or data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship.” 17 U.S.C. § 101. (Technically, graphic design may also be a “collective work,” if you also created some of the text or images. A collective work is encompassed in the legal definition of a compilation). Thus, instead of using the words “graphic design” or “layout,” when applying for copyright registration, I identify the nature of the work as a “compilation” or “selection, coordination, and arrangement of text and images.”
Recently the Copyright Office asserted an alternate rationale for refusing to register graphic design. In several applications to register my client’s copyrights for its product catalogs, I included a claim for the graphic design of the catalogs as “compilation of artwork, photographs, and text.” I received a letter from the Office, which said that if such language refers to the “layout or format of the material in the catalogs,” it had to be removed because: “For registration purposes, layouts and formats are considered to be ideas.” This new rationale is based on a standard tenet of copyright law that copyright protects only creative expression, not the underlying idea or concept which might be embodied in that expression.
But here is the good news: After I filed a Reply with extensive arguments against the refusal, the Copyright Office withdrew its objection and registered the compilation authorship claim for all of the catalogs. Here is the full text of my Reply letter, which successfully rebutted the Copyright Office’s refusal to register the graphic design:
Via Federal Express
Ivan Proctor, Examiner
Visual Arts Section, Copyright Office
Library of Congress
Washington, D.C. 20559-6000
Re: Control Number: 61-323-1189(O)
Pannapitta / Catalog Everyday 4 April 2003 and 5 others
filed on behalf of Sanrio Company, Ltd.
Dear Mr. Proctor:
In response to your letter of March 17, 2005, please consider the following:
Our claim for “compilation of artwork, photographs, and text” in space 6b was objected to on grounds that “layouts and formats are considered to be ideas.”
Under the Copyright Act, A “compilation” is a work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship.” 17 U.S.C. § 101.
Federal courts have long recognized that the selection and arrangement of artwork, photographs and text comprises copyrightable expression as a compilation. The contention that such arrangements are merely “ideas” is explicitly rejected. See, e.g.,
Roth Greeting Cards v. United Card Co., 429 F.2d 1106, 1109 (9th Cir. 1970) (finding infringement of greeting card designs: “proper analysis of the problem requires that all elements of each card, including text, arrangement of text, art work, and association between art work and text, be considered as a whole. Considering all of these elements together, the Roth cards are, in our opinion, both original and copyrightable. In reaching this conclusion we recognize that copyright protection is not available for ideas, but only for the tangible expression of ideas. We conclude that each of Roth’s cards, considered as a whole, represents a tangible expression of an idea and that such expression was, in totality, created by Roth”) (citations omitted, emphasis added);
Roulo v. Russ Berrie & Co., 886 F.2d 931, 939-40 (7th Cir. 1989) (affirming jury instructions and finding infringement of greeting card designs: “[Defendant] insists that the jury was allowed to consider elements of similarity unprotected by copyright laws, such as the size of the cards, the color of the paper and ink, and border designs, the general concept of stripes, the ellipses and the single-side formula. While it is true that these elements are not individually capable of protection, just as individual words do not deserve copyright protection, it is the unique combination of these common elements which form the copyrighted material. The district court correctly instructed the jury that . . . ‘the combination of these elements in an arrangement or layout is entitled to copyright protection, however, if you find that the arrangement to be original and unique.’ Defendant fails to acknowledge that its [greeting cards] not only used the same unprotectable elements as [plaintiff’s cards], but also used them in a format nearly identical to [plaintiff’s cards]”) (emphasis added);
Carol Cable Co. v. Grand Auto, Inc., 1987 WL 14544, *6 (N.D.Cal. 1987) (holding package design copyrightable as a compilation: “Furthermore, the work is copyrightable insofar as it represents a particular expression of an idea, embodied in the particular graphic design, text and color scheme of the packaging, rather than simply the idea itself”);
Reader’s Digest Assn v. Conservative Digest, 821 F.2d 800, (D.D.C. 1987) (design of magazine cover qualifies for protection as an original work of authorship: “None of the individual elements of the Reader’s Digest cover —ordinary lines, typefaces, and colors— qualifies for copyright protection. But the distinctive arrangement and layout of those elements is entitled to protection as a graphic work”) (emphasis added);
Southern Bell Telephone and Telegraph Co. v. Associated Telephone Directory Publishers, 1983 WL 1143, *5 (N.D.Ga. 1983), aff’d, 756 F.2d 801 (11th Cir. 1985) (layout of yellow pages is protected by copyright: “The information and design of that information contained in a telephone directory may be in the public domain or the property of the advertiser, but the effort involved in preparing art work and layout, and in the selection, compilation and arrangement of the information contained therein constitutes a work of authorship subject to copyright protection”) (emphasis added).
In Feist, the Supreme Court confirmed that compilations comprise copyrightable expression even where the selection and arrangement is minimal:
“The compilation author typically chooses which facts to include, in what order to place them, and how to arrange the collected data so that they may be used effectively by readers. These choices as to selection and arrangement, so long as they are made independently by the compiler and entail a minimal degree of creativity, are sufficiently original that Congress may protect such compilations through the copyright laws.” Feist Pub. v. Rural Tel. Serv. Co., 499 U.S. 340, 348 (1991). “Originality requires only that the author make the selection or arrangement independently (i.e., without copying that selection or arrangement from another work), and that it display some minimal level of creativity. The requisite level of creativity is extremely low; even a slight amount will suffice. The vast majority of works make the grade quite easily, as they possess some creative spark, ‘no matter how crude, humble or obvious’ it might be”) Id. (citations omitted) (emphasis added).
Following Feist, the courts continue to consistently hold that even simple compilations of artwork, photographs, and text constitute original copyrightable expression. See, e.g.,
Schiller & Schmitdt, Inc. v. Nordisco Corp., 969 F.2d 410, 414 (7th Cir. 1992) (plaintiff holds valid copyright in a catalog “viewed as a compilation of public domain materials” comprising selection and arrangement of three photographs side-by-side: plaintiff “did not own the copyright on any of the photos in the catalog, but the catalog contained other material that was original— the layouts of the product photographs”) (emphasis added);
CMM Cable Rep, Inc. v. Ocean Coast Properties, 97 F.3d 1504, 1515 (1st Cir. 1996) (affirming that although individual phrases in plaintiff’s brochure were unprotected, brochure as whole, including its graphical arrangement, was “undisputedly an original work” protected by copyright);
Gemini Ind., Inc. v. Labtec Ent., Inc., 1993 WL 580807, *4 (W.D.Wash. 1993) (holding package design copyrightable as a compilation under Feist: “[plaintiff] seeks to protect only its particular arrangement of elements. The Court has little difficulty concluding that [plaintiff] is entitled to this protection”) (emphasis added);
Casa Editrice Bonechi, S.R.L. v. Irving Weisdorf & Co., Ltd., 1998 WL 193246 (S.D.N.Y. 1998) (book cover graphic design consisting of “a photograph of the Empire State Building as seen from the air, with the words ‘New York’ written in a rectangular band in the upper left corner” is copyrightable: “even if the individual elements of a book cover design are not protectible, ‘the distinctive arrangement and layout of those elements . . . is entitled to protection as a graphic work’”) (citing Reader’s Digest, supra) (emphasis added);
Oriental Art Printing, Inc. v. Goldstar Printing Corp., 175 F.Supp.2d 542, 548 (S.D.N.Y. 2001), aff’d in part, dismissed in part on other grounds, 2002 WL 480613 (2d Cir. 2002) (finding menu design copyrightable and infringed under Feist: “while plaintiff’s photographs are not original, the overall design in which they are contained does contain the requisite originality to render it a copyrighted work”) (emphasis added);
X-IT Products, LLC v. Walter Kidde Portable Equip., 155 F.Supp.2d 577, (E.D.Va. 2001) (holding package design copyrightable: “[A]lthough certain elements of a product’s labeling such as particular words and slogans are not copyrightable, artistic packaging, design, and labels as a whole are”) (emphasis in original);
FMC Corp. v. Control Solutions, Inc., 2005 WL 1140332 (E.D.Pa. 2005) (holding pesticide product label design copyrightable under Feist standards, despite inclusion of government-mandated text: “[Plaintiff’s] choice of language and layout for the non-mandated portions of the label would not fall into this ‘utterly-lacking-spark’ category”).
See also Vasquez v. Ybarra, 150 F.Supp.2d 1157, (D.Kn. 2001) (holding copyrightable the “overall layout” of a menu combining one image with headings and columns of type); Dahlen v. Michigan Licensed Beverage Assn, 132 F.Supp.2d 574, (E.D.Mich. 2001) (finding the”layout” of plaintiff’s poster “possesses the requisite ‘minimal level of creativity’ to qualify for copyright protection” under Feist standards).
All of these cases establish that the selection and arrangement of artwork, photographs, and text, whether referred to as a “layout,” “format” or a “graphic work,” constitutes copyrightable authorship as a compilation. To create the subject catalogs, Sanrio chose “which [artwork, photographs and text] to include, in what order to place them, and how to arrange [them] so that they may be used effectively by readers. These choices as to selection and arrangement, so long as they are made independently by the compiler and entail a minimal degree of creativity, are sufficiently original that Congress may protect such compilations through the copyright laws.” Feist, 499 U.S. at 348. The Copyright Office itself has consistently recognized the copyrightability of such authorship by issuing many registrations to this same applicant for other catalogs in which similar compilation authorship was claimed. See, e.g., Regis. Nos. VA 1-295-673, VA 1-057-051, VA 915-666, VA 948-045, VA 948-047, VA 948-048, VA 948-049, VA 948-050, VA 948-051, VA 948-052, VA 948-053, VA 963-781.
Accordingly, the six subject applications are entitled to registration as originally filed. We respectfully request that the registrations be issued with the claim of compilation authorship included in space 6b. Please contact me if there are any further problems or questions. Thank you.
Sincerely,
OWEN, WICKERSHAM & ERICKSON, P. C.
By Linda Joy Kattwinkel
I don’t know if the success in this case means that the Copyright Office has retreated from its office-wide policy against registering graphic design, or if I merely convinced the one Examiner that was assigned to these particular applications. We may still need to fight such refusals on a case-by-case basis. Time will tell.
Meanwhile, I encourage you to continue to apply for copyright registration of your graphic design. I would recommend using the compilation authorship description—stay away from “graphic design,” “layout” or “format” when describing your work. If you get a refusal letter from the Copyright Office, don’t give up. Fight back with the law on your side.
If the Copyright Office issues a letter of refusal, you will have an opportunity to submit a Reply letter to argue against the decision. The refusal letter will come with instructions for how to file your Reply. You are welcome to use all or part of my letter above in your Reply. While this particular refusal was about catalog designs, the arguments and case law are equally applicable to any form of graphic design. If your Reply is successful, the refusal will be withdrawn. Usually there is no communication about this—you just find out when the registration issues. If the Reply is not successful, you will get another letter with instructions for how to appeal the decision further. Please let me know what happens (see my contact information below).
Finally, remember that copyright registration is different than copyright protection. Copyright protection applies as soon as you create your graphic design. Registration is an extra formality that brings with it important advantages. Generally, registration is a pre-requisite to bringing a lawsuit for infringement. However, the Copyright statute ensures that courts have the authority to overturn Copyright Office decisions regarding registration. Thus, if you apply for copyright registration but your application is rejected, you are still entitled to your day in court. As part of the lawsuit, you can ask the court to review and reverse the Copyright Office’s inappropriate refusal to grant your registration.
So if the Copyright Office rejects your application to register your graphic design, it does not mean your work is not copyrighted. It remains appropriate, and important, to include your copyright notice on your work.
© 2006 Linda Joy Kattwinkel. The author hereby grants to graphic artists, their agents and representatives, the limited, nonexclusive right and license to reproduce, adapt and submit to the U.S. Copyright Office text from the letter reproduced herein, Control Number: 61-323-1189(O), for the purpose of overcoming refusals to register copyrights. Advance written consent must be obtained for any other use.
The information in this article is provided to help you become familiar with legal issues that may affect graphic artists. Legal advice must be tailored to the specific circumstances of each case, and nothing provided here should be used as a substitute for advice of legal counsel.
Linda Joy Kattwinkel was an illustrator/graphic designer before her current practice as an attorney and mediator for artists with Owen, Wickersham and Erickson in San Francisco. Her clients include corporate intellectual property owners such as Sanrio (“Hello Kitty”) as well as individual artists and designers. She is a member of the referral panel of California Lawyers for the Arts and has been mediating and arbitrating arts-related disputes since 1987. Linda Joy’s artwork has been exhibited in various venues over the past thirty years. As often as possible, she paints in plein air and at her studio in San Francisco. Linda Joy can be reached at 415-882-3200 or ljk@owe.com.