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