Page:Darden v. Peters - 2007.djvu/9

Rh 463 U.S. 29, 43, 103 S.Ct. 2856, 77 L.Ed.2d 443 (1983). Rather, the court is to determine “whether the decision was based on a consideration of the relevant factors,” West Virginia v. Thompson, 475 F.3d 204, 212 (4th Cir.2007) (quoting Citizens to Preserve Overton Park, Inc. v. Volpe, 401 U.S. 402, 416, 91 S.Ct. 814, 28 L.Ed.2d 136 (1971)), or whether “the agency has relied on factors which Congress has not intended it to consider, [or] entirely failed to consider an important aspect of the problem,” Motor Vehicle Mfrs., 463 U.S. at 43, 103 S.Ct. 2856; see Thompson, 475 F.3d at 212.

Darden makes no assertion of this kind here; he merely argues that the agency should have concluded that the Maps and APPRAISERSdotCOM works contained the requisite level of creativity, citing Feist and other precedents. At every level of internal agency review, however, the Copyright Office recognized Feist as having established the contours of the originality element of a copyright claim. Because Darden has failed to identify any relevant factor or legal principle that the Register failed to consider, the agency’s decision cannot be set aside as “contrary to law.”

Finally, Darden argues that the Register’s determination that a copyright claim lacked sufficient originality to warrant registration is subject to de novo review in the context of an infringement action under section 411(a) of the Copyright Act. He contends that de novo review of the copyrightability issue should also apply in the context of APA review for the sake of efficiency and predictability. We cannot agree.

Congress has afforded disappointed copyright applicants two separate methods of seeking redress for the decision of the Copyright Office not to register a copyright claim. First, as we explained previously, the applicant may file a review action under the APA against the Register of Copyrights for the sole purpose of having the denial of registration set aside. See 17 U.S.C. §§ 410(a), 701(e). Darden’s action, of course, is such a case. Second, the claimant may seek judicial review of the rejected registration as part of an infringement action against an alleged infringer under section 411(a) of the Copyright Act.

Both kinds of actions involve, to one degree or another, consideration of whether a copyrightable claim has been presented. The Register has a statutory duty to examine applications for registration to determine if “the material deposited constitutes copyrightable subject matter and … the other legal and formal requirements of [the Copyright Act] have been met.” 17 U.S.C. § 410(a). Whether the Register issues the certificate of registration or not, the Register necessarily makes a determination about the validity of the copyright claim. And, with respect to a copyright infringement action, the plaintiff must establish “ownership of a valid copyright and copying of constituent elements of the work that are copyrightable.” Compaq Computer Corp. v Ergonome Inc., 387 F.3d 403, 407 (5th Cir.2004) (internal quotation marks omitted). Copyright ownership, in turn, requires “proof of originality and copyrightability.” Id. at