ATARI GAMES CORPORATION, Appellant, v.

Ralph OMAN, Register of Copyrights.

No. 88-5296.

United States Court of Appeals, District of Columbia Circuit.

Argued Sept. 18, 1989. Decided Oct. 31, 1989.

Appeal from the United States District Court for the District of Columbia (Civil Action No. 88-0021).

A. Sidney Katz, with whom James P. White and Laurie A. Haynie, Chicago, 111., were on the brief, for appellant.

Nathan Dodell, Asst. U.S. Atty., with whom Jay B. Stephens, U.S. Atty., John D. Bates, R. Craig Lawrence, Asst. U.S. At-

tys., Dorothy Schrader, General Counsel, and William Roberts, Washington, D.C, Atty., Copyright Office, were on the brief, for appellee.

Before RUTH BADER GINSBURG, SILBERMAN and D.H. GINSBURG, Circuit Judges.

Opinion for the Court filed by Circuit Judge RUTH BADER GINSBURG.

Opinion concurring in the judgment filed by Circuit Judge SILBERMAN.

RUTH BADER GINSBURG, Circuit Judge: 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. §§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. § 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

1.

See 17 U.S.C. § 701(d) (specifying that most actions taken by the Register of Copyrights are subject to the provisions of the Administrative Procedure Act). 2.

Copyrights registered in June 1983 in the home version of BREAKOUT and in the arcade matter to the Copyright Office for further consideration consistent with this opinion.

I. Background and Prior Proceedings 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. She reasoned that "[t]o be considered an audiovisual work for registration purposes, the work must contain related pictorial or graphic images, and at game SUPER BREAKOUT were not timely brought to the attention of the district court and form no part of the record before this court. See Atari Games v. Oman, No. 88-0021 (D.D.C. Aug. 18, 1988) (memorandum order denying motion for reconsideration).

least one of those images must be copyrightable." BREAKOUT did not qualify, she 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, she stated, "[t]here is not enough original authorship to register a claim in the sounds." She 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. § 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. §§ 701-706. See 17 U.S.C. § 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. § 411(a), permits an infringement