The opinion of the court was delivered by: JOHN SPRIZZO, Senior District Judge
MEMORANDUM OPINION AND ORDER
Plaintiffs, Coach, Inc. and Coach Services, Inc. (collectively
"Coach"), bring this action, pursuant to 5 U.S.C. § 702, seeking
an Order of this Court directing defendant, Marybeth Peters,
Register of Copyrights of the United States Copyright Office
("defendant" or "Register"), to register its "Signature CC Fabric
Design" ("Coach 1") and "Signature CC Fabric Design (Black)"
("Coach 2") (collectively "works"), in their names. Both parties
bring motions, pursuant to Rule 56 of the Federal Rules of Civil
Procedure, for summary judgment. For the reasons set forth below,
the Court denies plaintiffs' motion and grants defendant's
Coach, a well-known company that designs handbags and other
consumer products, see Pls.' Statement of Uncontroverted Facts
("Pls.' St.") ¶¶ 4, 7-9; Am. Compl. ("Compl.") ¶ 4, designed the
now ubiquitous works at issue in this action, see Pls.' St. ¶¶
5-9; Administrative R. of Coach 1 ("A.R. 1"), Ex. 3, Letter of
Norman H. Zivin, dated Aug. 15, 2002 ("Aug. Zivin Letter"), Ex. A
("Articles"); see also Decl. of Daniel J. Ross, dated Feb.
12, 2004, Exs. N, O. Plaintiffs describe the works as
"consist[ing] of a distinctive pattern comprising two linked
elements facing each other in a mirrored relationship and two
unlinked elements in a mirrored relationship and positioned
perpendicular to the linked elements."*fn1 Pls.' St. ¶ 10.
Plaintiffs filed applications with the United States Copyright
Office to register Coach 1 and Coach 2 on August 15, 2001 and August 20,
2002, respectively. Id. ¶¶ 15, 21.
The application to register Coach 1 was initially denied by
letter dated December 18, 2001. A.R. 1, Ex. 6. Following a
request for reconsideration, that decision was upheld in a letter
dated July 17, 2002. A.R. 1, Ex. 4. Plaintiffs sought a second
reconsideration on August 15, 2002, Aug. Zivin Letter, which was
denied by the Copyright Office Board of Appeals by letter dated
September 17, 2003, A.R. 1, Ex. 1. That decision constituted
"final agency action." A.R. 1, Ex. 1 at 8.
In an eight-page decision, the Board of Appeals determined that
Coach 1 could not be copyrighted "because it does not contain the
required amount of original artistic, that is, pictorial or
graphic authorship." Id. at 1. Describing Coach 1 as a "pattern
consist[ing] of two linked `C's' facing each other alternating
with two unlinked `C's' facing in the same direction," id. at
4, the Board of Appeals concluded that relevant case law,
regulations, and the Compendium of Copyright Office Practices
precluded a finding of copyrightability because letters of the
alphabet cannot be copyrighted and because Coach 1's variations
and arrangements of the letter "C" were simply not sufficient to
establish the necessary amount of creativity required for
copyright protection, id. at 3-8. In addition, the Board of
Appeals rejected plaintiffs' argument that the work's commercial
and critical success supported its copyright. Id. at 6-7.
The application of Coach 2 met a similar fate. Pls.' St. ¶¶
21-26. Following two requests for reconsideration, the Board of
Appeals, in a letter dated December 4, 2003, refused to copyright
Coach 2. Administrative R. of Coach 2 ("A.R. 2"), Ex. 1. The
Board determined that, with the exception of its color, Coach 2
was identical to Coach 1, and therefore it concluded that the
same rationales for denial were applicable.*fn2 Id.
Plaintiffs filed a complaint dated October 16, 2003, and an
amended complaint dated December 8, 2003, in which they ask this
Court to review, pursuant to the Administrative Procedure Act
("APA"), 5 U.S.C. §§ 701-706, defendant's refusal to register the
works, Compl. ¶ 1, and to "order defendant and the officers,
agents, employees, successors and servants of defendant to
register [the works] in the name of [plaintiffs]," Compl. at 5.
The Court heard Oral Argument on the parties' Cross-Motions for
Summary Judgment on June 14, 2004. Expressing concern about the
legal ramifications that a decision on those motions would have
in any future infringement actions brought by plaintiffs, the
Court denied both motions and placed this case on suspense,
pending an infringement action brought by plaintiffs. See Tr.,
dated June 14, 2004, at 24-29. At a regularly-scheduled Pre-Trial
Conference held on June 20, 2005, plaintiffs indicated that they
had no intention of bringing an infringement action, and both
parties requested that the Court revisit their Cross-Motions for
A court may only grant summary judgment when "there is no
genuine issue as to any material fact and . . . the moving party
is entitled to a judgment as a matter of law." Fed.R.Civ.P.
56(c). When ruling upon cross-motions for summary judgment, the
court must evaluate each motion separately and must draw all
reasonable inferences against the party whose motion is under
consideration. See Boy Scouts of Am. v. Wyman, 335 F.3d 80,
88 (2d Cir. 2003).
Pursuant to 17 U.S.C. § 701(e) the decision of the Register of
Copyrights to deny an application for registration is reviewable
under the APA. The Act provides that a court may set aside agency
action where it is "arbitrary, capricious, an abuse of
discretion, or otherwise not in accordance with law," 5 U.S.C. § 706(2) (A), and
therefore the Register's decision is entitled "to a significant
degree of deference," The Homer Laughlin China Co. v. Oman, No.
90-3160, 1991 U.S. Dist. LEXIS 10680, at *3 (D.D.C. July 30,
1991), which will only be upset if the Register fails to
"intelligibly account for [her] ruling" or if her decision is not
the product of "reasoned decisionmaking," Atari Games Corp. v.
Oman, 888 F.2d 878, 879 (D.C. Cir. 1989); see also Custom
Chrome, Inc. v. Ringer, No. Civ. A. 93-2634, 1995 WL 405690, at
*3-5 (D.D.C. June 30, 1995); Jon Woods Fashions, Inc. v.
Curran, No. 85 Civ. 3203, 1988 WL 38585, at *2-3 (S.D.N.Y. Apr.
The Court begins its analysis by noting that, since review
under the APA is limited to a consideration of the administrative
record, see Natural Res. Def. Council v. Muszynski,
268 F.3d 91, 96-97 (2d Cir. 2001), all parties agree that there are no
genuine issues of material fact and therefore summary judgment is
appropriate, see Pls.' Mem. at 6; Def.'s Mem. at 13. In
addition, the Court notes that given the limited scope of review
and the deferential standard applied to the Register's decision,
the Court's ruling in this action is necessarily not equivalent
to a finding that the works at issue here are not copyrightable
and therefore this ruling should not preclude such a finding in a
future infringement action. See OddzOn Prods., Inc. v. Oman,
924 F.2d 346, 347 (D.C. Cir. 1991).
In the present case, plaintiffs argue that this Court should
"order defendant and the officers, agents, employees, successors
and servants of defendant to register [the works] in the name of
[plaintiffs]," Compl. at 5, because defendant incorrectly
determined that the works lacked sufficient creativity, Pls.'
Mem. at 7-8, failed to consider the works as a whole, id. at
10, 13, improperly viewed the "elements" as "C's," id. at 11,
12, and failed to take into account that the commercial and
critical success of the works indicates that "the public and the
trade view the [w]orks as containing artistic merit," Pls.' Mem.
in Opp'n at 7; Pls.' Mem. at 11. This Court cannot agree. First, plaintiffs have cited no
authority, and the Court is aware of none, that would allow this
Court, on a review under the APA, to order defendant to register
the works. See, e.g., Atari Games Corp. v. Oman,
979 F.2d 242, 247 (D.C. Cir. 1992) (remanding case for a second time "for
renewed consideration consistent with this court's opinion").
This is especially true since relief in the form of mandamus is
unavailable because of the other adequate remedies available to
plaintiffs, namely this review under the APA, see Jon Woods
Fashions, Inc., 1988 WL 38585, at *2, and the ability to bring
an infringement action "notwithstanding the refusal of the
Register to register the claim to copyright," Nova Stylings,
Inc. v. Ladd, 695 F.2d 1179, 1181-82 (9th Cir. 1983).
Second, plaintiffs have not shown that defendant's decision not
to register the works was arbitrary and capricious. To the
contrary, defendant's decision is explained in a thorough,
well-reasoned, and well-articulated letter. See A.R. 1, Ex. 1.
Acknowledging at the outset that the amount of creativity
required for registration is "minimal," id. at 3, defendant
proceeded to explain why the works at issue fall ...