[Federal Register Volume 74, Number 152 (Monday, August 10, 2009)]
[Rules and Regulations]
[Pages 39900-39903]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: E9-19101]


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LIBRARY OF CONGRESS

Copyright Office

37 CFR Part 201

[Docket No. RM 2009-5]


Fees for Special Handling of Registration Claims

AGENCY: Copyright Office, Library of Congress.

ACTION: Temporary rule.

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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 work\1\ 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.
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    \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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    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

[[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\
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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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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[percnt] 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[percnt] of all claims 
submitted on paper applications. Only 5[percnt] 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[percnt]) 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

[[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

0
In consideration of the foregoing, part 201 of 37 CFR chapter II is 
amended as follows:

PART 201--GENERAL PROVISIONS

0
1. The authority citation for part 201 continues to read as follows:

    Authority: 17 U.S.C. 702.

0
2. Part 201 is amended by adding Sec.  201.15 to read as follows:


Sec.  201.15  Special Handling of Pending Claims Requiring Expedited 
Processing for purposes of Litigation.

    (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,

[[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.
    Approved by:
James H. Billington,
The Librarian of Congress.
[FR Doc. E9-19101 Filed 8-7-09; 8:45 am]
BILLING CODE 1410-33-S