Munro v. United States Copyright Office

CourtDistrict Court, District of Columbia
DecidedMarch 18, 2024
DocketCivil Action No. 2022-2909
StatusPublished

This text of Munro v. United States Copyright Office (Munro v. United States Copyright Office) is published on Counsel Stack Legal Research, covering District Court, District of Columbia primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

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Munro v. United States Copyright Office, (D.D.C. 2024).

Opinion

UNITED STATES DISTRICT COURT FOR THE DISTRICT OF COLUMBIA

BRUCE MUNRO,

Plaintiff,

v. Civil Action No. 22-2909 (TJK) UNITED STATES COPYRIGHT OFFICE et al.,

Defendants.

MEMORANDUM OPINION

This copyright case concerns a three-dimensional sculpture completed by Bruce Munro in

2012. Munro applied to the U.S. Copyright Office for copyright registration of his sculpture, but

the Copyright Office denied his application. After two unsuccessful requests for reconsideration,

Munro sued the Copyright Office and the Register of Copyrights over the denial. Both parties

moved for summary judgment. For the reasons explained below, the Court finds that the Copyright

Office did not abuse its discretion in deciding that Munro’s sculpture lacks the necessary level of

creativity to warrant copyright protection. Thus, it will deny Munro’s motion and grant Defend-

ants’.

I. Statutory and Procedural Background

The Copyright Act of 1976 protects certain categories of “original works of authorship

fixed in any tangible medium of expression.” 17 U.S.C. § 102(a). One of those categories is

“pictorial, graphic, and sculptural works,” which includes “two-dimensional and three-dimen-

sional works of fine, graphic, and applied art, photographs, prints and art reproductions, maps,

globes, charts, diagrams, models, and technical drawings.” Id. §§ 102(a)(5), 101. That a copy-

rightable work must be “original” is not only mandated by the statute but also a constitutional requirement. Feist Publ’ns v. Rural Tel. Serv. Co., 499 U.S. 340, 346 (1991). The Supreme Court

has explained that a work is considered “original” if it “was independently created by the author

(as opposed to copied from other works), and [if] it possesses at least some minimal degree of

creativity.” Id. at 345.

Under the Copyright Act, a copyright owner may institute a civil action for infringement

of his copyright. 17 U.S.C. § 501(b). The Act also allows an owner to register qualifying works

with the Register of Copyrights. Id. § 408. Registration is not a condition of copyright protection,

but a copyright owner may not pursue an infringement action in court without first applying for

registration. See Fourth Est. Pub. Benefit Corp. v. Wall-Street.com, LLC, 139 S. Ct. 881, 887

(2019) (“[A]lthough an owner’s rights exist apart from registration, registration is akin to an ad-

ministrative exhaustion requirement that the owner must satisfy before suing to enforce ownership

rights.”) (internal citation omitted). Moreover, registration confers certain advantages. For exam-

ple, a valid registration can create “a rebuttable presumption” as to the validity of a copyright

during an infringement action. Am. Soc’y for Testing & Materials v. Public.Resource.Org, Inc.,

597 F. Supp. 3d 213, 230 (D.D.C. 2022), aff’d, 82 F.4th 1262 (D.C. Cir. 2023).1

In August 2019, Munro submitted a registration application to the Copyright Office for his

work “Untitled sphere, stem, spike, filament 3D sculptural design.” ECF No. 35 at 5. The work

is a three-dimensional sculpture completed in 2012. Id. As described in the Administrative Rec-

ord, its structure consists of a clear glass orb sitting above a spike-ended transparent acrylic tubular

stem, with a fiber optic light running through the stem and into the glass orb where it is wound

1 This rebuttable presumption only applies if the work was registered before or within five years after its first publication. If the work was registered more than five years after its first pub- lication, the evidentiary weight of the registration rests “within the discretion of the court.” Am. Soc'y for Testing & Materials, 597 F. Supp. 3d at 230 (citing 17 U.S.C. § 410(c)).

2 against the orb’s interior curved wall. Id. at 31, 54. The application was accompanied by four

two-dimensional photographs depicting the sculpture—two of which are reproduced below:

Id. at 6–7.

Munro’s initial application was refused by a Copyright Office Registration Specialist who

characterized the sculpture as a “useful article” that “does not contain any non-useful design ele-

ment that could be copyrighted and registered.” Id. at 16. Three months later, Munro requested

reconsideration of that refusal, in which he argued that the sculpture contains an “artistic expres-

sion . . . that is separable from the Work’s utilitarian function of illumination.” Id. at 20. In April

2020, the Copyright Office reaffirmed its initial decision but expanded on its reasoning. Although

now agreeing with Munro that the sculpture did possess design elements that are conceptually

separable from the purely utilitarian function of the sculpture, it still found that its separable design

3 was not sufficiently original to warrant copyright protection. Id. at 24. The Copyright Office

explained that because “the separable features of this design are common and familiar shapes, and

because the combination and arrangement of these features do not contain the requisite amount of

creativity,” it would again refuse registration. Id. at 26.

Munro requested reconsideration a second time. He argued mainly that the sculpture, taken

as a whole and through its separable features, demonstrated a sufficient level of creativity for cop-

yrightability. Id. at 33–35. Second requests for reconsideration are heard by the Copyright Office

Review Board, and in May 2021, the Board issued a final decision affirming the registration denial.

Id. at 54–60. It confirmed the Copyright Office’s determination that the sculpture was more than

a useful article, but after walking through Munro’s arguments, it concluded that the sculpture was

insufficiently creative to be copyrightable. Id. at 58–60.

One month later, Munro sued in another district, seeking an order reversing the denial of

his application and compelling the Copyright Office to register his sculpture. The case was trans-

ferred to this Court in September 2022, and both parties now move for summary judgment. ECF

Nos. 29, 30.

II. Legal Standards

Although both parties seek summary judgment, the ordinary summary-judgment standard

under Federal Rule of Civil Procedure 56 does not apply. Munro “seeks review of agency action

under the APA,” so the Court “sits as an appellate tribunal.” Am. Bioscience, Inc. v. Thompson,

269 F.3d 1077, 1083 (D.C. Cir. 2001). That is, the Court has no factfinding role because the case

presents “a question of law.” Id. It must ask “whether the agency action is supported by the

administrative record and otherwise consistent with the APA standard of review.” Citizens for

Resp. & Ethics in Wash. v. SEC, 916 F. Supp. 2d 141

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