Atari Games Corporation v. Ralph Oman, Register of Copyrights

By letter dated December 7, 1987, the Copyright Office reported its final action refusing to register a claim to copyright in the video game BREAKOUT, an audiovisual work created in 1975 by Atari, Inc., the predecessor of plaintiff-appellant Atari Games Corporation (Atari). The December 1987 letter, written on behalf of the United States Register of Copyrights (Register), stated that the video game in question "does not contain sufficient original visual or musical authorship to warrant registration." Invoking the judicial review prescriptions of the Administrative Procedure Act, 5 U.S.C. Secs. 701-706, Atari unsuccessfully challenged the agency's determination in the district court as "arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law." 5 U.S.C. Sec. 706(2)(A).1

In this appeal from the district court's entry of summary judgment for the Register, we hold that the Copyright Office did not intelligibly account for its ruling. Because we are unable to determine on the current record whether the Register's action comports with the demand of reasoned decisionmaking, we vacate the district court's judgment and remand the case to that court with instructions to return the matter to the Copyright Office for further consideration consistent with this opinion.

BREAKOUT, the audiovisual work that is the subject of this dispute, is a coin-operated, ball and paddle video game created in 1975 and successfully marketed by Atari in the following years.2 BREAKOUT's audiovisual display features a wall formed by red, amber, green, and blue layers of rectangles representing bricks. A player maneuvers a control knob that causes a rectangular-shaped representation of a paddle to hit a square-shaped representation of a ball against the brick wall. When the ball hits a brick, that brick disappears from its row, the player scores points, and a brick on a higher row becomes exposed. A "breakout" occurs when the ball penetrates through all rows of bricks and moves into the space between the wall and the top of the screen; the ball then ricochets in a zig-zag pattern off the sides of the screen and the top layer of the wall, removing bricks upon contact and adding more points to the player's score. Various tones sound as the ball touches different objects or places on the screen. The size of the paddle diminishes and the motion of the ball accelerates as the game is played.

By letter dated February 5, 1987, Atari sought expedited registration of a copyright claim in the audiovisual work embodied in BREAKOUT. Atari asserted an "urgent need for special handling because of prospective litigation in which [Atari] would be acting as plaintiff." See infra note 3. The Copyright Office responded promptly, but unfavorably. By letter dated February 13, 1987, Copyright Examiner Carmen Martorana declared the work not copyrightable. He reasoned that "[t]o be considered an audiovisual work for registration purposes, the work must contain related pictorial or graphic images, and at least one of those images must be copyrightable." BREAKOUT did not qualify, he wrote, because neither the " [c]ommon geometric shapes ... contained in th[e] work" nor "the coloring of th[o]se shapes" constituted copyrightable subject matter. Similarly, he stated, " [t]here is not enough original authorship to register a claim in the sounds." He further said that the "images ... created by playing the video game ... are also not registrable since they are created randomly by the player and not by the author of the video game."

By letter dated May 22, 1987, Shirley B. Wendell of the Examining Division denied reconsideration. She repeated that the common geometric shapes contained in BREAKOUT are not copyrightable, that adding color did not render the work copyrightable, and that "[t]he individual tones or sounds are not copyrightable."

By letter dated December 7, 1987, Harriet L. Oler, Chief of the Examining Division, denied further reconsideration and announced the agency's final action on the claim. She initially stated that the Register views the work "as a whole" to determine whether registration is warranted. However, to explain her conclusion that BREAKOUT "does not contain sufficient original visual or musical authorship to warrant registration," she separately treated the work's several parts:

[T]he use of a symbol for a wall drawn in a familiar tile type design is not copyrightable. The same is true of the image of a rectangle used in place of a paddle, a circle [sic] for a ball, and a common four colored stripe embellishing the wall.

The game's sounds, she added, "the three tones used before the ball, and the string of double tones used after it," do not "constitute any copyrightable audio authorship." She further stated that the arrangement of the "stationary screen display" contains no copyrightable authorship because "so few items" appear on the screen and "the arrangement is basically dictated by the functional requirements of this or similar backboard type games." Finally, she noted, Atari was not precluded "from registering a claim in the computer program."

Atari sought court review of the agency's final action. On cross-motions for summary judgment, the district court concluded that the Register reasonably applied controlling law to the facts before him. Describing the three letters from the Copyright Office as "thoughtful and well-orchestrated" expositions of the "pertinent considerations," the court held that the Register did not abuse his discretion in treating BREAKOUT as one of the "rare" instances of expressive value so slight as to be insufficient for copyright purposes. Atari Games Corp. v. Oman, 693 F.Supp. 1204, 1206, 1207 (D.D.C.1988).

II. The Significance of Registration in this Controversy

Section 410 of the Copyright Act, 17 U.S.C. Sec. 410, provides in part:

(a) When, after examination, the Register of Copyrights determines that, in accordance with the provisions of this title, the material deposited constitutes copyrightable subject matter and that the other legal and formal requirements of this title have been met, the Register shall register the claim and issue to the applicant a certificate of registration under the seal of the Copyright Office....

(b) In any case in which the Register of Copyrights determines that, in accordance with the provisions of this title, the material deposited does not constitute copyrightable subject matter or that the claim is invalid for any other reason, the Register shall refuse registration and shall notify the applicant in writing of the reasons for such refusal.

If registration is refused, the applicant may seek immediate judicial review, as Atari did here, in an action under the Administrative Procedure Act, 5 U.S.C. Secs. 701-706. See 17 U.S.C. Sec. 701(d). Alternatively, as noted in the Register's final decision, determination of the copyrightability of the work may be sought in the context of an infringement suit.

Section 411(a) of the Copyright Act, 17 U.S.C. Sec. 411(a), permits an infringement suit, despite the Register's refusal to register a copyright claim, if registration submissions to the Copyright Office were in proper form and the Register is notified so that he may exercise a right to intervene. See Nova Stylings, Inc. v. Ladd, 695 F.2d 1179 (9th Cir.1983) (holding mandamus no longer available to compel registration). Registration carries evidentiary weight in an infringement suit. Registration before or within five years after first publication of the work constitutes prima facie evidence of the validity of the copyright; registration after the five-year period may be accorded weight "within the discretion of the court." 17 U.S.C. Sec. 410(c). For Atari, then, registration of a copyright in BREAKOUT might have evidentiary force in an action against an alleged infringer3 and would assure against the Register's appearance in the infringement action as a party adverse to Atari on the issue of registrability.

III. Appellate Measurement of the Register's Action

Regarding the district court, our review stance in this case is not deferential:

Because an award of summary judgment reflects "a determination of law rather than fact," we do not defer to the District Court's conclusions but consider the matter de novo.

Nepera Chem., Inc. v. Sea-Land Serv., Inc., 794 F.2d 688, 699 (D.C.Cir.1986) (quoting Liberty Lobby v. Anderson, 746 F.2d 1563, 1572 (D.C.Cir.1984), vacated on other grounds, 477 U.S. 242, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986)). We accord due respect, however, to decisions made by the Copyright Office pursuant to authority vested in the Register by Congress. Accordingly, we review the Register's decision under an "abuse of discretion" standard. See John Muller & Co. v. New York Arrows Soccer Team, Inc., 802 F.2d 989, 990 (8th Cir.1986); Norris Indus., Inc. v. International Tel. & Tel. Corp., 696 F.2d 918, 922 (11th Cir.), cert. denied, 464 U.S. 818, 104 S.Ct. 78, 78 L.Ed.2d 89 (1983); Esquire, Inc. v. Ringer, 591 F.2d 796, 806 n. 28 (D.C.Cir.1978), cert. denied, 440 U.S. 908, 99 S.Ct. 1217, 59 L.Ed.2d 456 (1979). For the reasons stated below, we are unable to discern from the final agency action disqualifying BREAKOUT for registration just how the Register is applying the relevant statutory prescriptions. We therefore return the case for the requisite rational explanation. See, e.g., Fort Bragg Ass'n of Educators v. FLRA, 870 F.2d 698, 701 (D.C.Cir.1989); City of Vernon v. FERC, 845 F.2d 1042, 1046-49 (D.C.Cir.1988).

We initially summarize our concerns; then, to facilitate the Register's further consideration, and guard against rudderless administrative pronouncements, we develop those concerns more fully. See Pacific Northwest Newspaper Guild v. NLRB, 877 F.2d 998, 1003 (D.C.Cir.1989) ("core concern" of court, when petitioned to check against arbitrary and capricious administrative action, is to assure that executive agencies hew to principled "legal theory" and do not indulge in "ad hocery"); Kamargo Corp. v. FERC, 852 F.2d 1392, 1398 (D.C.Cir.1988) (denial of permit is arbitrary and capricious unless the Commission has "acceptable legal support under its authorizing statute"). First, we note the Copyright Act's definition of "audiovisual works" as "a series of related images ... intrinsically intended to be shown by the use of ... devices such as ... electronic equipment, together with accompanying sounds, if any, regardless of the nature of the material objects ... in which the works are embodied." 17 U.S.C. Sec. 101 (definitions). Although the Act uses the phrase "a series of related images," the Copyright Office, even in its final action, emphasized the non-copyrightability of the work's several parts--the wall, paddle, ball, and tones--and also treated "the stationary screen display." See supra p. 880. We are at a loss to understand why the Register did not more solidly link the final decision to the Act's apparent recognition that the whole--the "series of related images" --may be greater than the sum of its several or stationary parts.

Second, we do not grasp the standard of creativity the Copyright Office employed in determining whether to register BREAKOUT as an audiovisual work. Was it the normal standard under which a very modest degree of intellectual labor will suffice? See, e.g., West Publishing Co. v. Mead Data Cent., Inc., 799 F.2d 1219, 1223 (8th Cir.1986), cert. denied, 479 U.S. 1070, 107 S.Ct. 962, 93 L.Ed.2d 1010 (1987); 1 M. NIMMER & D. NIMMER, NIMMER ON COPYRIGHT Sec. 1.08[C] (1989). Or did the Office test BREAKOUT against a higher standard, one resembling the "substantial creativity" measuring rod sometimes used to judge derivative works? See 17 U.S.C. Sec. 103; Chamberlin v. Uris Sales Corp., 150 F.2d 512, 513 (2d Cir.1945) (compilations or other derivative works must contain "some substantial, not merely trivial, originality"). And if an elevated creativity requirement was employed, what justified use of a heightened standard?

Third, the cryptic character of the final agency decision leaves us uncertain whether the action regarding BREAKOUT is consistent with earlier and later pronouncements of the Copyright Office and courts. Put more particularly, we are concerned that the Register may have confused or blended in this case the analytically and operationally separate questions: (1) is a work registrable as one constituting "copyrightable subject matter," see 17 U.S.C. Sec. 410(a), (b); and (2) what is the extent of copyright protection--solid or thin--due a given "original work of authorship." The first question relates to the existence of copyright, the second, to the scope of protection.

"Copyright protection subsists ... in original works of authorship" including, among several categories of copyrightable subject matter, "audiovisual works." 17 U.S.C. Sec. 102(a)(6). Video games, case law confirms, rank as "audiovisual works" that may qualify for copyright protection. See, e.g., M. Kramer Mfg. Co. v. Andrews, 783 F.2d 421, 436 (4th Cir.1986); Midway Mfg. Co. v. Artic Int'l, Inc., 704 F.2d 1009, 1012 (7th Cir.), cert. denied, 464 U.S. 823, 104 S.Ct. 90, 78 L.Ed.2d 98 (1983); Stern Elecs., Inc. v. Kaufman, 669 F.2d 852, 857 (2d Cir.1982); Midway Mfg. Co. v. Dirkschneider, 543 F.Supp. 466, 479-80 (D.Neb.1981).

This court and others have defined the word "original" in the Copyright Act's term "original works of authorship," 17 U.S.C. Sec. 102(a), to mean "only that the work 'owes its origin to the author'--i.e., that the work is independently created, rather than copied from other works." Reader's Digest Ass'n v. Conservative Digest, Inc., 821 F.2d 800, 806 (D.C.Cir.1987) (quoting Alfred Bell & Co. v. Catalda Fine Arts, Inc., 191 F.2d 99, 102 (2d Cir.1951)). As the district court stated, "[t]here is no dispute in this case, and the Register expressly recognized, that BREAKOUT originated with or was independently created by Atari." Atari Games Corp., 693 F.Supp. at 1205.

While the Register concedes that BREAKOUT is an independent creation, he concluded that the game is not a "work of authorship" within the meaning of the statute. To constitute a "work of authorship," the material deposited with the Register must pass a "creativity" threshold, i.e., it must embody "some modest amount of intellectual labor." Baltimore Orioles, Inc. v. Major League Baseball Players Ass'n, 805 F.2d 663, 668 n. 6 (7th Cir.1986) (distinguishing the concepts "originality," "creativity," and "novelty," and observing that "[f]or a work to be copyrightable, it must be original and creative, but need not be novel"), cert. denied, 480 U.S. 941, 107 S.Ct. 1593, 94 L.Ed.2d 782 (1987).

The Register subjected BREAKOUT to a component-by-component analysis, and considered in the aggregate "the stationary screen display." See supra p. 880; see also Brief for Appellee at 11 (arguing that BREAKOUT "does not qualify for copyright because the components of the audiovisual display are not original works of authorship") (emphasis added). The Act, however, uses the definitional term "series of related images," 17 U.S.C. Sec. 101, and the case law correspondingly indicates that the Register's focus, even if initially concentrated on discrete parts, ultimately should be on the audiovisual work as a whole, i.e., the total sequence of images displayed as the game is played. Stern Elecs., 669 F.2d at 857 ("Assessing the entire effect of the [video] game [SCRAMBLE] as it appears and sounds, we conclude that its repetitive sequence of images is copyrightable as an audiovisual display."); see also 113 CONG. REC. 8587-88 (1967) (Congressman Poff) ("A series of related images includes any group of two or more images having some type of relationship in their subject matter which gives unity to the group as a whole. However, the fact that some or all of the individual images in the group would also constitute separate works does not prevent the group of images from being an audiovisual work.").

In the clarification forthcoming on reconsideration by the Copyright Office, we anticipate that the Register will take careful account of our recent opinion in Reader's Digest, 821 F.2d at 806, in which we observed:4

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.... Reader's Digest has combined and arranged common forms to create a unique graphic design and layout. This design is entitled to protection under the Copyright Act as a graphic work.

See also Apple Barrel Prods., Inc. v. Beard, 730 F.2d 384, 388 (5th Cir.1984) (component parts "neither original to the plaintiff nor copyrightable" may, in combination, create a "separate entity [that] is both original and copyrightable"); Roth Greeting Cards v. United Card Co., 429 F.2d 1106, 1109 (9th Cir.1970) (greeting cards held to be copyrightable although textual matter standing alone was not copyrightable; "all elements of each card, including text, art work, and association between art work and text, [must] be considered as a whole").

The level of creativity necessary and sufficient for copyrightability has been described as "very slight," "minimal," "modest." See, e.g., West Publishing Co., 799 F.2d at 1223; Thomas Wilson & Co. v. Irving J. Dorfman Co., 433 F.2d 409, 411 (2d Cir.1970), cert. denied, 401 U.S. 977, 91 S.Ct. 1200, 28 L.Ed.2d 326 (1971); 1 M. NIMMER & D. NIMMER, NIMMER ON COPYRIGHT Secs. 1.08[C], 2.01[B] (1989). In defense of the judgment that BREAKOUT does not pass the "modest" creativity threshold, appellate counsel for the Register pointed to the Copyright Office regulation providing that "familiar symbols or designs" and "mere variations of typographic ornamentation, lettering or coloring" are not subject to copyright. 37 C.F.R. Sec. 202.1. Again, we are concerned that the Register's attention may have trained dominantly on components, not on the work as a whole--the full "series of related images." 17 U.S.C. Sec. 101 (defining "audiovisual works"); see supra pp. 779-80, 882-83.

Furthermore, we note that simple shapes, when selected or combined in a distinctive manner indicating some ingenuity, have been accorded copyright protection both by the Register and in court. See, e.g., Soptra Fabrics Corp. v. Stafford Knitting Mills, Inc., 490 F.2d 1092, 1094 (2d Cir.1974) (concluding that fabric design consisting of strip of crescents with scalloping or ribbons and rows of semicircles "constitutes modest but sufficient originality so as to support the copyright"); Tennessee Fabricating Co. v. Moultrie Mfg. Co., 421 F.2d 279, 282 (5th Cir.) (holding that filigree pattern of intercepting straight and arc lines "possessed at least the minimal degree of creativity required for a copyright"), cert. denied, 398 U.S. 928, 90 S.Ct. 1819, 26 L.Ed.2d 91 (1970); Concord Fabrics, Inc. v. Marcus Bros. Textile Corp., 409 F.2d 1315, 1316 (2d Cir.1969) (treating as subject to copyright protection fabric design consisting of a circle within a square within a circle); In Design v. Lynch Knitting Mills, Inc., 689 F.Supp. 176, 178-79 (S.D.N.Y.) (upholding copyright of rhomboid pattern on a sweater), aff'd, 863 F.2d 45 (2d Cir.1988). We are thus uncertain whether or how the Register's decision on BREAKOUT harmonizes with prior Copyright Office actions and court rulings on the creativity threshold.5

In its brief on appeal, the Copyright Office compared Atari's claim for protection of its work "as a whole," to the protection copyright law affords to compilations and other derivative works. Brief for Appellee at 14. Derivative works, several decisions state, to be copyrightable, must meet a test of "substantial," not merely "minimal," creativity. See, e.g., Past Pluto Prods. Corp. v. Dana, 627 F.Supp. 1435, 1441 (S.D.N.Y.1986). To our knowledge, however, neither the Copyright Office nor any court has ranked as "derivative" a video game that, like the BREAKOUT game Atari produced in 1975, is not based on prior models. Cf. M. Kramer Mfg. Co., 783 F.2d at 428 (request for registration as a derivative work of video game building on prior models).

We recall here the suggestion initially made by the Copyright Office that BREAKOUT's images are created "by the player and not by the author of the video game." See supra pp. 879-80. We are mindful, however, of the cogent exposition of our sister circuit regarding another video game:

Although there is player interaction with the machine during the play mode which causes the audiovisual presentation to change in some respects from one game to the next in response to the player's varying participation, there is always a repetitive sequence of a substantial portion of the sights and sounds of the game, and many aspects of the display remain constant from game to game regardless of how the player operates the controls.

Williams Elecs., Inc. v. Artic Int'l, Inc., 685 F.2d 870, 874 (3d Cir.1982); accord Midway Mfg. Co., 704 F.2d at 1012 ("The player of a video game does not have control over the sequence of images that appears on the video game screen.... The most he can do is choose one of the limited number of sequences the game allows him to choose.").6

C. "Idea" or "expression," scenes a faire, and the distinction between registrability and scope of copyright protection

Copyright protection extends only to "expression," not to "ideas." 17 U.S.C. Sec. 102(b); Mazer v. Stein, 347 U.S. 201, 217, 74 S.Ct. 460, 470, 98 L.Ed. 630 (1954). The Register sees the two as merged in the BREAKOUT game. BREAKOUT contains no expression, he maintains, separable from the game itself, and therefore does not qualify as copyrightable subject matter. Eleven months prior to the final agency action in this case, the Fourth Circuit declared "untenable" lump categorization of video games as "idea" rather than "expression." M. Kramer Mfg. Co., 783 F.2d at 436-37.

The Fourth Circuit, in M. Kramer Mfg. Co., acknowledged and distinguished precedent holding that when the subject matter allows for only a very limited manner of expression, the idea and its expression remain a unit, so that there is no copyrightable material. Morrissey v. Procter & Gamble, 379 F.2d 675, 678-79 (1st Cir.1967) (copyright does not extend to rules for "sweepstakes" type sales promotion contest).7 But works in the computer's domain generally have not fit that bill, the M. Kramer Mfg. Co. panel observed. Instead, the variety of ways to perform the same function sustains the classification of such works as "expression." M. Kramer Mfg. Co., 783 F.2d at 436 (quoting Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240, 1253 (3d Cir.), cert. denied, 464 U.S. 1033, 104 S.Ct. 690, 79 L.Ed.2d 158 (1984)). Compare Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738, 742 (9th Cir.1971) (rejecting infringement of registered copyright claim brought by manufacturer of jeweled pin in the shape of a bee; court held that idea of pin and its expression were inseparable, defendants were therefore free to copy the idea and, consequently, to produce a jeweled bee pin that looked like plaintiff's) with Atari, Inc. v. Amusement World, Inc., 547 F.Supp. 222, 227 (D.Md.1981) (observing that "the idea of a video game involving asteroids is a much more general idea than the rather specific concept of a jewelled pin in the shape of a bee, and the former is capable of many forms of expression," i.e., differently designed and combined symbols, movements, and sounds). But cf. Stern Elecs., 669 F.2d at 857 (leaving open the issue whether "a sequence of images ... might contain so little in the way of particularized form of expression as to be only an abstract idea portrayed in noncopyrightable form").

In this light, we do not follow the Register's thought in describing BREAKOUT's arrangement as dictated by "functional requirements." See supra p. 880. Atari demonstrated that a large variety of "arrangements" or designs might have been devised in lieu of those featured in BREAKOUT, i.e., in place of the objects represented (multi-colored brick wall, square ball, and shrinkable rectangular paddle), the sounds employed (their tones and duration), and the speed and artificial direction of the ball's movement. See Addendum to Reply Brief for Appellant; Williams Elecs., Inc. v. Bally Mfg. Corp., 568 F.Supp. 1274, 1281 (N.D.Ill.1983) (observing that, unlike an arcade pinball game, the audiovisual aspects of a video game "are conceptually separable from its utilitarian aspects"); Patry, Electronic Audiovisual Games: Navigating the Maze of Copyright, 31 J. COPR. SOC'Y 1, 46 (1983) ("[E]ven the simplest game may have variations of sizes, shapes, sequences, colors and sounds.")

Nor can it convincingly be maintained that audiovisual display and computer program are so linked that it is necessary or sufficient for Atari to register a claim in the computer program. Cf. supra p. 880.8 Registering a claim in the program would not securely protect "the series of related images," 17 U.S.C. Sec. 101, for which Atari seeks an "original work of authorship" copyright seal. "[M]any different computer programs can produce the same 'results,' whether those results are an analysis of financial records or a sequence of images and sounds." Stern Elecs., 669 F.2d at 855. "[W]riting a new program to replicate the play of [a video game] requires a sophisticated effort, but it is a manageable task." Id.; see Patry, 31 J. COPR. SOC'Y at 5 ("A knock-off manufacturer could ... write a computer program which would exactly replicate the audiovisual display but which would not replicate the underlying computer program. In such an event, the registration of the computer program ... would be ineffective since it is the audiovisual display which is sought to be protected.").

Even if BREAKOUT contains "expression," the Register additionally suggests, the symbols displayed are so ordinary and commonplace as to fail under scenes a faire analysis. The term scenes a faire refers to stereotyped expressions, "incidents, characters or settings which are as a practical matter indispensable, or at least standard, in the treatment of a given topic." Alexander v. Haley, 460 F.Supp. 40, 45 (S.D.N.Y.1978). In Atari, Inc. v. North Am. Phillips Consumer Elecs. Corp., 672 F.2d 607 (7th Cir.), cert. denied, 459 U.S. 880, 103 S.Ct. 176, 74 L.Ed.2d 145 (1982), the court placed "[c]ertain expressive matter" in the video game PAC-MAN in a scenes a faire compartment. 672 F.2d at 616-17. But the panel in that case ultimately did not conclude that the expressions it treated as scenes a faire gained no copyright protection. Instead, the panel said that the items in question (maze, scoring table, tunnel exits, dots) should "receive protection only from virtually identical copying." Id. at 617. That statement indicates that "the scenes a faire doctrine limits only the scope of a given material's protection, not its copyrightability." Nash v. CBS, Inc., 691 F.Supp. 140, 144 (N.D.Ill.1988).

We are unable to detect from the final decision before us the standard the Register is using to differentiate material that cannot constitute copyrightable subject matter and therefore should not be registered, from material that may be copyrightable, although perhaps meriting only "thin" protection when the character of its "expression" is tested in an infringement suit. Cf. Continental Cas. Co. v. Beardsley, 253 F.2d 702, 704 (2d Cir.) (distinguishing between the existence of copyright and its scope ), cert. denied, 358 U.S. 816, 79 S.Ct. 25,