The U.S. Copyright Office recently released a revised draft of the Compendium of Copyright Office Practices, Third Edition ("Compendium"). An administrative manual spanning over 1,200 pages, the Compendium articulates the statutory duties of the Copyright Office and serves as a guide to those who frequently work with Office staff. This update is the first proposed change to the Compendium since its comprehensive revision in December 2014.

After a significant review of its internal practices, the Copyright Office published the third edition of the Compendium in draft form on June 1, 2017, along with a summary of its revisions and a set of release notes. According to the Copyright Office, the Compendium revisions seek to clarify how and when the Office communicates with applicants and how it handles duplicate claims, deposit requirements, and claims involving multiple works. The Office also added new illustrative examples to demonstrate how the Office will manage particular situations. In addition to the majority of changes, which focus on clarifying existing Office policies and procedures, the new draft also provides useful guidance on how the Office will apply the Supreme Court’s recent decision in Star Athletica, LLC v. Varsity Brands, Inc., 137 S. Ct. 1002 (2017).

In Star Athletica, the Supreme Court interpreted §101 of the Copyright Act to determine when a "pictorial, graphic, or sculpture feature" attached to a functional article is eligible for copyright protection. The case involved Varsity Brands’ cheerleading uniforms that contained two-dimensional designs consisting of "lines, chevrons, and colorful shapes." Varsity Brands sued Star Athletica, claiming that its competitor was selling cheerleading uniforms with substantially similar designs. Varsity Brands argued that although the uniforms themselves were plainly useful, the specific designs incorporated on each uniform are protectable as separate features. The Court agreed, finding that the design elements of the uniforms qualified for copyright protection because they satisfied the two-prong test under §101. More specifically, the Court stated that the artistic feature of a useful article is eligible for protection if the feature "(1) can be perceived as a two- or three-dimensional work of art separate from the useful article and (2) would qualify as a protectable pictorial, graphic, or sculptural work—either on its own or fixed in some other tangible medium of expression—if it were imagined separately from the useful article into which it is incorporated." See Venable’s article discussing the case in more detail here.

The Copyright Office revised its policies and procedures to reflect the Supreme Court’s newly articulated standard for copyrightability of useful articles. In our experience, the Copyright Office is expanding its consideration of useful articles and increasing registration. Indeed, the following sections of the Compendium have been revised and indicate consideration of the nuanced change, and potential expansion of copyrightability for design elements of useful articles:

  • Section 903.1 ("Pictorial, Graphic, and Sculptural Works") now incorporates the Supreme Court’s test and includes "the separable features of two-dimensional and three-dimensional useful articles" as a separate example of one of the common types of works that are eligible for copyright protection.
  • Section 906.8 ("Functional and Useful Elements") expands protection of useful articles from "decorative ornamentation" to "two- or three-dimensional artistic features incorporated into the design of a useful article."
  • Section 924 ("Registration Requirements for the Design of a Useful Article") quotes the newly articulated test and states that revised registration guidance is forthcoming: "The U.S. Copyright Office is developing updated guidance on the registration of pictorial, graphic, and sculptural features incorporated into the design of useful articles. The Compendium will be updated once this guidance is finalized."

Among other procedural modifications, the revisions to the Compendium provide consistent clarification for the standards for registration of useful articles. The revisions are still in draft form and are subject to change, and we expect further updates as noted. Public comments can be submitted until July 30, 2017.