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###### Library of Congress

###### Copyright Office

          - 37 CFR Part 201
          - [Docket No. RM 2009-5]

# AGENCY:

Copyright Office, Library of Congress.

# ACTION:

Temporary rule.

# SUMMARY:

The Copyright Office of the Library of Congress is publishing an interim rule relating to fees for special handling of registration claims that have been pending for at least six months. Special handling is the expedited processing of an application and is granted in certain circumstances when compelling reasons are present. Ordinarily a special handling fee is charged for special handling in addition to the regular fee for an application to register a copyright claim. Because of current delays in the processing of applications for registration occurring in the course of the Office’s implementation of its business process reengineering program, the Office has determined that the special handling fee shall not be assessed for conversion of a pending application to special handling status when the application has been pending for more than six months and the applicant has satisfied the Office that expedited handling of the registration is needed because the applicant is about to file a suit for copyright infringement.

# EFFECTIVE DATES:

This rule is effective August 10, 2009 through July 1, 2011.

# FOR FURTHER INFORMATION CONTACT:

David O. Carson, General Counsel, or Stephen Ruwe, Attorney-Advisor, Copyright GC/I&R, P.O. Box 70400, Washington, D.C. 20024-0400, Telephone (202) 707-8380. Telefax: (202) 707-8366.

# SUPPLEMENTARY INFORMATION:

                    Although the copyright law provides that a work of authorship obtains copyright protection from the moment it is fixed in a tangible medium of expression and that copyright registration is not a prerequisite for such protection, copyright registration nevertheless is required in order to obtain certain remedies for copyright infringement. Section 411 of the Copyright Act provides that, with certain exceptions, a suit for infringement of a United States work1                     may not be filed until registration of the copyright claim has been made or refused by the Copyright Office. Section 412 provides that, with certain exceptions, the remedies of statutory damages and awards of attorney's fees are not available to a copyright owner when (1) infringement of copyright in an unpublished work commenced before the effective date of its registration; or (2) infringement of copyright commenced after first publication of the work and before the effective date of its registration, unless such registration was made within three months after the first publication of the work.                

                    Because the effective date of registration is “the day on which an application, deposit, and fee, which are later determined by the Register of Copyrights or by a court of competent jurisdiction to be acceptable for registration, have all been received in the Copyright Office,” 17 U.S.C. 410(d), a delay by the Copyright Office in its processing of an application for copyright registration will not adversely affect the ability of a copyright owner to                           ( print page 39901)                        obtain an award of statutory damages or attorney's fees. No matter how long it takes for the Office to issue the certificate of registration, the effective date of registration will be the date the application, fee and deposit arrived at the Copyright Office.                

                    However, a delay in the issuance of a certificate of registration can create difficulties for a copyright owner of a United States work who wishes to file a suit for copyright infringement. The copyright owner will have to wait until the Office has either registered the copyright or refused to register the copyright; the copyright owner may not file suit the moment the application, fee and deposit have been submitted to the Copyright Office.                     *See*17 U.S.C. 411(a).2

### Special Handling

                    In recognition that copyright owners sometimes need to file suits for copyright infringement before they can reasonably expect the Office to issue (or refuse to issue) a certificate of registration, the Copyright Office has long offered a service called “Special Handling.” Special Handling provides expedited processing of an application for copyright registration.                     *See*                     Copyright Office Circular 10, at http://www.copyright.gov/​circs/​circ10.pdf, which states, “Special handling is the expedited processing of an application for registration of a claim to copyright or for the recordation of a document pertaining to copyright. It is granted in certain circumstances to those who have compelling reasons for this service. It is subject to the approval of the chief of the Receipt Analysis and Control Division, who must consider the workload of the Copyright Office at the time the request is made.” Special Handling may be justified for any of the following three reasons: pending or prospective litigation, customs matters, or contract or publishing deadlines that necessitate the expedited issuance of a certificate. Once a request for special handling is received and approved, every attempt is made to process the claim within five working days, although the Office cannot guarantee that all applications for which Special Handling has been approved will be processed within that time. For more details on Special Handling,                     *see*                     Circular 10.                     *See also*                     Notice of Policy Decision, Policy Decision Announcing Fee for Special Handling Of Applications for Copyright Registration, 47 FR 19254 (May 4, 1982); Policy Decision: Revised Special Handling Procedures, 56 FR 37528 (Aug. 7, 1991).                

                    Since 1982, the Copyright Office has charged a fee for special handling, in addition to the basic fee for an application for copyright registration. As the Office explained when it first imposed the Special Handling fee, “In the past the Copyright Office absorbed the additional costs of special handling but cannot continue to do so in the face of the rising number of such requests and the fiscal restraints under which it must operate. ... A claim that receives special handling must be processed outside of the normal work flow necessitating individual handling at each step and individual routing between work stations. A separate system of controls must be maintained for the special handling of claims to assure both that they move expeditiously through the necessary procedures and that they can be located quickly if the need should arise. Each of these activities involves more employee time than claims in the normal work flow since employees could otherwise be more efficiently occupied processing ordinary claims.” 47 FR at 19254.                     *See also*                     Notice of Policy Decision, Policy Decision Announcing Increase in the Fee for Special Handling of Applications for Copyright Registration, 49 FR 39741 (Oct. 10, 1984). Special Handling fees, along with other Copyright Office fees, are set forth at 37 CFR 201.3(d).                     *See also*                     Final Rule: Fees, 74 FR 32805 (July 9, 2009).                

### Delays in Registration Processing

As the Office has implemented its business process reengineering program, which has involved converting the registration system from the old, paper-based process to a new system of electronic processing and included a reorganization of the operations of the Office that has given new duties to copyright registration specialists, the pendency rates for applications for registration have risen to unacceptably high levels due to issues relating to the transition to the new system, especially with respect to paper applications. As a result, some applicants whose applications have been pending for several months may find that events occurring after an application was submitted require the applicant to seek expedited registration. In particular, an applicant may discover that a work that is the subject of a pending application has been infringed since the application was submitted. Because a suit for copyright infringement may not be instituted until after the work has been registered (or after registration has been refused), the applicant may need to convert the pending application to Special Handling.

Although the Office believes that as a general proposition, the imposition of an additional fee for Special Handling is fully justified, it is difficult to justify imposition of that fee for expedited registration of a claim when both (1) the applicant needs a certificate of registration in order to file an imminent suit for copyright infringement, and (2) the application has been pending longer than would ordinarily be reasonable to expect. We note that before the commencement of the delays caused by the conversion to the new registration processing system, 90%% of all registration claims were processed within 6 months. Currently, a similar percentage of claims that are submitted electronically are processed within 6 months, but it is taking up to 19 months to process 90%% of all claims submitted on paper applications. Only 5%% of claims submitted on paper applications are processed within 6 months.

### Waiver of Special Handling Fee

Under the circumstances, the Office has concluded that it is appropriate to waive the fee for conversion of a pending application to Special Handling status in cases where (1) the applicant satisfies the Office that the applicant is about to file suit for infringement of the copyright in the work that is the subject of the application; and (2) the application has been pending for more than 6 months without any action by the Copyright Office. The first requirement is based on the recognition that a copyright owner simply cannot file a copyright infringement suit unless the Office has acted upon an application for registration. Because of this requirement, a copyright owner who has been waiting for longer than it would ordinarily take for a registration decision and who now needs to file a suit for copyright infringement should not have to pay an additional fee in order to “expedite” the registration.

                    The second requirement is based on the fact that prior to the inception of the current delays, almost all (90%%) applicants could expect to receive their certificates of registration within 6 months. Because an applicant could ordinarily expect to receive the certificate within that time frame, 6 months is an appropriate period of time after which persons meeting the first requirement should be relieved of the                           ( print page 39902)                        obligation to pay for Special Handling. However, there is less justification for providing such relief in cases where the delay is due, in whole or in part, to the fact that the Office had to correspond with the applicant due to questions about the application. For that reason, an application must have been pending for more than six months without any action (including correspondence) by the Copyright Office.                

In order to ensure that the Special Handling fee is waived only in cases where litigation is truly imminent and the need for Special Handling is therefore crucial, persons requesting conversion of their applications to Special Handling status with a waiver of the Special Handling fee must supply satisfactory proof that they are about to file a copyright infringement suit by submitting to the Copyright Office General Counsel (1) an affidavit or a declaration under penalty of perjury, signed by the applicant or by the applicant's attorney, identifying the work for which registration is pending and which is the subject of the request for Special Relief and providing basic information about the prospective litigation, including the identity of the defendant and the court in which suit will be filed, and (2) a draft of the complaint that will be filed once the certificate of registration has been issued. The purpose of these requirements is to ensure that waivers of the Special Handling fee are given only in cases where Special Handling is in fact needed in order to facilitate imminent litigation.

                    In order to facilitate identification of the pending claim that is the subject of the request, the request should include the exact title of the work as it appears on the application, as well as the name(s) of the author(s) and claimant(s), the date the application was submitted to the Copyright Office and the means (                    *e.g.*, by mail, by hand delivery, or by electronic submission) by which it was submitted, and a description of the deposit. A person requesting conversion of a pending copyright registration application to Special Handling status should also, whenever possible, provide a photocopy of the application.                

This interim regulation will expire on July 1, 2011. The Office anticipates that by that date, processing time for applications will have returned to normal and that almost all claims (apart from those that require correspondence because of problems or questions pertaining to the application) will be processed within 6 months.

# List of Subjects in 37 CFR Part 201

      - Copyright
      - General provisions

## Final Rule

In consideration of the foregoing, part 201 of 37 CFR chapter II is amended as follows:

# PART 201—GENERAL PROVISIONS

1. The authority citation for part 201 continues to read as follows: 

Authority:17 U.S.C. 702.

2. Part 201 is amended by adding § 201.15 to read as follows: 

§ 201.15 

(a) Special Handling is the expedited processing of an application for registration of a claim to copyright or for the recordation of a document pertaining to copyright. It is granted in cases where a compelling need for the service exists due to pending or prospective litigation, customs matters, or contract or publishing deadlines that necessitate the expedited issuance of a certificate of registration.

                            (b)                             *Fee.*                             The fee for Special Handling is set forth at section 201.3(d) of this chapter.                        

                            (c)                             *Waiver of fee.*                             When no action (including communication from the Copyright Office) has been taken on an application for registration within six months after the time the application, fee and deposit were received by the Copyright Office, the applicant may request Special Handling of the application and request that the fee for Special Handling be waived. The fee may be waived only when the applicant satisfies the Copyright Office that the applicant is about to file suit for infringement of the copyright in a work that is the subject of the application.                        

                            (d)                             *Form of request for Special Handling and for waiver of fee.*                             A request for Special Handling and for a waiver of the Special Handling fee must be submitted in the form of an affidavit or declaration under penalty of perjury pursuant to 28 U.S.C. 1746, signed by either the applicant or an attorney acting on behalf of the applicant, which                        

(1) Provides the following information relating to the application for registration:

(i) The exact title of the work for which registration is sought, as reflected on the application;

(ii) The name(s) of the author(s) of the work, as reflected on the application;

(iii) The name(s) of claimants, as reflected on the application;

(iv) The date the application was submitted to the Copyright Office;

                            (v) The means (                            *e.g.*, by hand delivery, by electronic submission, by first class mail, by Express Mail, or by registered or certified mail) by which the application was submitted to the Copyright Office; and                        

(vi) A description of the material deposited for registration, to assist in identifying the deposit;

(2) Includes a copy of the application that was submitted to the Copyright Office, or states that the applicant does not have access to a copy of the application;

(3) States that the applicant or a person acting with the authorization of the applicant is about to file suit for infringement of the copyright in a work that is the subject of the application;

(4) Identifies the defendant(s) and the court in which the suit will be filed; and

(5) Includes a copy of the complaint for copyright infringement that the applicant or a person acting with the authorization of the applicant intends to file in a United States District Court or the United States Court of Federal Claims. The copy of the complaint may omit allegations identifying the certificate of copyright registration, but must otherwise be complete.

                            (e)                             *Submission of request for Special Handling and for waiver of fee.*                             The materials identified in paragraph (d) of this section may be delivered to the Copyright Office by hand or by United States Postal Service Express Mail. Delivery by regular United States mail or overnight delivery services such as Federal Express and United Parcel Service cannot be accepted. The materials shall be delivered as follows:                        

                            (1)                             *By hand.*                             (i) If hand-delivered by a private party, the materials shall be placed in an envelope addressed to “Request for Waiver of Special Handling Fee, Office of the General Counsel, U.S. Copyright Office” and brought to the James Madison Building, Library of Congress, U.S. Copyright Office, Room 401, 101 Independence Avenue, SE, Washington, DC 20559, between 8:30 a.m. and 5 p.m. E.D.T.                        

(ii) If hand-delivered by a commercial courier, the materials shall be placed in an envelope or package, no larger than 12 inches by 18 inches by 4 inches, addressed to “Request for Waiver of Special Handling Fee, Office of the General Counsel, U.S. Copyright Office, LM 403, James Madison Building, Library of Congress, 101 Independence Avenue, SE, Washington, DC 20559” and delivered to the Congressional Courier Acceptance Site (“CCAS”), located at 2nd and D Streets, NE, Washington, DC between 8:30 a.m. and 4 p.m.

                            (2)                             *By Express Mail.*                             If sent by Express Mail, the materials should be placed in an envelope or package, no larger than 12 inches by 18 inches by 4 inches,                                   ( print page 39903)                                addressed to “Request for Waiver of Special Handling Fee, Office of the General Counsel, U.S. Copyright Office, Copyright GC/I&R, P.O. Box 70400, Washington, DC 20024,” and deposited with the United States Postal Service.                        

Dated: July 29, 2009.

Marybeth Peters,

Register of Copyrights.

James H. Billington,

The Librarian of Congress.

# Footnotes

1.                             While a detailed definition of “United States work” may be found at 17 U.S.C. 101 (definition of “United States work”), we offer a somewhat simplified description here: A “United States work” is a work that (1) is first published in the United States (unless it was simultaneously published in a country that has a copyright treaty relationship with the United States and where the term of copyright protection is shorter than the term in the United States), (2) is first published in a country with which the United States has no copyright treaty relations, and the authors of which are all nationals, domiciliaries, or habitual residents of the United States, or (3) is unpublished and all the authors of which are nationals, domiciliaries, or habitual residents of the United States.                    
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2.                             A minority of courts have misread section 411(a) as providing that the prerequisite of copyright registration has been satisfied the moment the application, fee and deposit have been received in the Copyright Office. That interpretation of the statute ignores the text and purpose of section 411(a).                         *See La Resolana Architects, PA v. Clay Realtors Angel Fire*, 416 F.3d 1195 (10th Cir. 2005); Brief for the United States as Amicus Curiae Supporting Vacatur and Remand at 24 n.14,                         *Reed Elsevier, Inc. v. Muchnick*, No. 08-103 (U.S. June 8, 2009).                    
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[FR Doc. E9-19101 Filed 8-7-09; 8:45 am]

BILLING CODE 1410-33-S