Choice of Law and the Copyright Office

17 USC 411(b)(2) has a provision by which a court either on its own or at the request of a party may ask the Register of Copyrights for her opinion advising the court whether inaccurate information on an issued registration, if known, would have caused the Register of Copyrights to refuse registration. This was the only piece of copyright legislation to pass from the 110th Congress, the Enforcement of Intellectual Property Rights Act of 2008. Whatever the purpose, the effect of this “peculiar” amendment, Fashion Avenue Sweater Knits, LLC v. Poof Apparel Corp., 2021 WL 1035117, at *2 (C.D. Cal. 2021). has been to delay federal courts in their expeditious adjudication of infringement claims. Whether the Office's advice is useful is in the eye of the beholder, or more aptly put the side the Office's letter ends up supporting. 

A March 7 letter from the Register to a district court in Washington State takes a position that I find quite surprising. Here is a link to the Office's letter to the court. (HT to Neil Turkewitz). The registration at issue was issued to a Finnish citizen who was involved in the creation of a motion picture produced in Finland along with other Finnish citizens and a band. The work is said to have been completed in 2012 and first published in Germany the same year. In 2018 a Finnish court determined that plaintiff here was not a joint author and had no rights in the work. In the US court plaintiff alleged that the Finnish court's ruling was limited to economic rights in the movie, and that without dispute he claimed to possess moral rights, i.e., the right to claim authorship.  I don't know why that mattered since the US does not recognize such rights and I believe the suit here was over economic rights although I don't know for sure. Plaintiff alleged in the Washington litigation that Valve Corporation, a video game distributor, had infringed copyright in the movie. Plaintiff had filed an application for registration from the US Copyright Office as a joint author on August 11, 2023. After much correspondence, and refinement of the nature of authorship, the Office issued a registration with an effective date of September 28, 2023, with plaintiff listed as a joint author of the movie. Valve challenged that and asked the court for a referral under 411(b)(2), which was granted. Valve noted that the Finnish court had rejected Plaintiff to be any kind of author and therefore the Office, had it know this, would have refused registration. In its March 7, 2025 letter to the court, the Register indicated she would have registered the work anyway. 

The surprising elements of the Register's letter are the complete absence of not only any choice of law analysis, but a complete absence of any citations to the unanimous decisions of US courts that under circumstances like this, US courts, applying US choice of law, look to the country of origin of the work to determine ownership issues. The leading case is Itar-Tass Russian News Agency v. Russian Kurier, Inc., 153 F.3d 82 (2d Cir. 1998). Here is what the court of appeals held:

We start our analysis with the Copyrights Act itself, which contains no provision relevant to the pending case concerning conflicts issues.We therefore fill the interstices of the Act by developing federal common law on the conflicts issue. See D'Oench, Duhme & Co. v. FDIC, 315 U.S. 447, 62 S.Ct. 676, 86 L.Ed. 956 (1942); id. at 472, 62 S.Ct. 676 (Jackson, J., concurring) (“The law which we apply to this case consists of principles of established credit in jurisprudence, selected by us because they are appropriate to effectuate the policy of the governing Act.”). In doing so, we are entitled to consider and apply principles of private international law, which are “ ‘part of our law.’ ” Maxwell Communication Corp. v. Societe Generale, 93 F.3d 1036, 1047 (2d Cir.1996) (quoting Hilton v. Guyot, 159 U.S. 113, 143, 16 S.Ct. 139, 40 L.Ed. 95 (1895)).

The choice of law applicable to the pending case is not necessarily the same for all issues. See Restatement (Second) of Conflict of Laws § 222 (“The courts have long recognized that they are not bound to decide all issues under the local law of a single state.”). We consider first the law applicable to the issue of copyright ownership.

Conflicts rule for issues of ownership. Copyright is a form of property, and the usual rule is that the interests of the parties in property are determined by the law of the state with “the most significant relationship” to the property and the parties. See id. The Restatement recognizes the applicability of this principle to intangibles such as “a literary idea.” Id. Since the works at issue were created by Russian nationals and first published in Russia, Russian law is the appropriate source of law to determine issues of ownership of rights. That is the well-reasoned conclusion of the Amicus Curiae, Prof. Patry, and the parties in their supplemental briefs are in agreement on this point.

The Register is of course free to disagree, although the Office has no institutional competence for choice of law. What I find striking is the absence of any discussion of the governing law regarding the critical issue. The Office, after all, does not make law. It can, with the Librarian's approval enact regulations, which courts can give deference to as they see fit. No regulations were at issue here. The Office has its Compendium but that is a practice guide for examiners, and has no legal effect of any kind. To cite to the Compendium as a source for its position is to merely cite to yourself. I understand that the referral asked for advice about what the Register would have done if she had known about the Finnish court ruling. The letter explains she would have registered it anyway, which is the Office's prerogative. It is in explaining that decision where my questions arise. The Register states: "The U.S. Constitution and Copyright Act are the exclusive sources of protection in the United States." The word "protection" as used here is generally true but its use here is inapt since the issue is not "protection" as in "is this work protected or infringed in the U.S. " both of which are matters exclusively governed by U.S. domestic law; rather the issue is one of ownership. On that, the courts have uniformly looked to the law of the country of origin. They have done so, it must be stressed again, as a matter of applying U.S. conflict of laws principles.  In deciding that one does so, Itar-Tass was not making that decision under Russian law, the Berne Convention or any other foreign source. As Judge Newman wrote: "We start our analysis with the Copyrights Act itself, which contains no provision relevant to the pending case concerning conflicts issues.We therefore fill the interstices of the Act by developing federal common law on the conflicts issue." 

The Register's reliance on U.S. law is only partial reliance: it is partial reliance because it fails to apply the U.S. federal common law of conflicts of law that Itar-Tass and every other court thereafter has followed on applicable facts.  That's U.S. law too. It is surprising that law was not at least discussed. One hopes the district judge to whom the letter was sent will.