Statement of Marybeth Peters
The Register of Copyrights
before the
Subcommittee on Courts and Intellectual Property
Committee on the Judiciary

United States House of Representatives
106th Congress, 1st Session

June 24, 1999

Recordation of Security Interests in Intellectual Property

Mr. Chairman, members of the Subcommittee, I am pleased to testify today on a proposal of the American Bar Association Joint Task Force on Security Interests in Intellectual Property labeled the "Federal Intellectual Property Security Act." While it is widely known that the Copyright Office has registered copyright claims since 1870, it is less commonly known that this Office has also recorded transfers of copyrighted materials from that date. Today, transfers of huge catalogs or libraries of copyrighted works occur frequently. Recordation of transfers - including security interests - is one of the core functions of the Copyright Office.

Our testimony today is based upon our expertise and experience in the administration of copyright law. We do not profess to be experts in the law or business of secured transactions. Nor would we presume to speak to the merits of the ABA proposal insofar as it may address needed reforms in the patent and trademark laws. In preparing for this hearing, we have consulted with representatives of various segments of the copyright community who have a stake in the system of recordation of transfers of interests in copyrights. We also recognize that lending institutions have an interest in a system that reliably and efficiently provides constructive notice of interests in copyrights, including security interests. We hope that today's hearing will represent the beginning of a dialog between those who believe that the framework of the current system is fundamentally sound - a view that we believe is shared by most copyright owners - and those who perceive a need for a system that better accommodates the requirements of their lending practices.

As I have suggested, it is the Copyright Office's understanding that some businesses producing copyrighted property and many financial institutions may support the ABA proposal. However, the Copyright Office also believes that the current recordation system, which requires the submission of actual documents and makes them part of the public record, is preferred by most copyright owners. Additionally, many prefer that constructive notice be limited to documents that specifically identify works and support the requirement that the work identified in the document be registered. I believe these are real strengths of the current system.

The current copyright recordation system had its origins in the first copyright statute assigning copyright responsibilities to the Librarian of Congress. In the Copyright Act of 1870, section 89 [later recodified as section 4955] provided as follows:

"That copyrights shall be assignable by law, by any instrument of writing, and such assignment shall be recorded in the Office of the librarian of Congress within sixty days after its execution, in default of which it shall be void as against any subsequent purchaser or mortgagee for valuable consideration, without notice."

Courts interpreting the provision ruled that the requirement of recordation was mandatory.

The 1909 Copyright Act enlarged the grace period but otherwise maintained the essence of the previous recordation system. Section 44 [later recodified as section 30] provided as follows:

"Every assignment of copyright shall be recorded in the copyright office within three calendar months after its execution in the United States or within six months after its execution without the limits of the United States, in default of which it shall be void as against any subsequent purchaser or mortgagee for a valuable consideration without notice, whose assignment has been duly recorded."

As with the 1870 Act, courts interpreted the recordation provision in the 1909 Act to be mandatory. With respect to mortgages, the Second Circuit ruled in 1921 that copyrights can only be mortgaged under the federal copyright law.

Based on our review of the background to the adoption of the general revision of the Copyright Act in 1976, it seems clear that Congress intended to create a federal system of copyrighted works which included a registry of claims to copyright and of transfers of copyright ownership. The 1961 Report of the Register of Copyrights on copyright law revision noted that although the previous law's requirement of recordation in the Copyright Office applied only to "assignments," it was not entirely clear under that law whether "assignments" included exclusive licenses or other transfers of less than all rights. The Report proposed that the law be clarified to state that other instruments, such as wills, trust indentures, decrees of distribution, mortgages and discharges, and corporate mergers should be considered transfers of copyright ownership. The Office recommended that the new statute specifically cover exclusive licenses and all other transfers of ownership. (Emphasis added).

The Register stated that the purposes of a recordation system for copyright transfers were:

(1) to enable a transferee to give constructive notice to all third persons of the transfer of ownership to him; and

(2) to enable third persons to determine from the record who is the owner.

These goals were also enumerated by Alan Latman in his study of the recordation system. To meet these goals, the recordation system had to embrace all instruments by which the ownership of copyright is transferred in whole or in part. The Report of the Register stated that "records of copyright ownership are particularly important in view of the nature of copyright as a form of intangible and incorporeal property not capable of physical possession."

With respect to what should be filed, the Office stated that there "should be practical assurance that the instrument recorded is precisely the same as the one executed." Therefore, the Office recommended that the statute explicitly require that any instrument filed for recordation bear the actual signature of the person executing it or a sworn or official certification that it is a true copy. The Office stated that constructive notice should be confined to the facts specified in recorded instruments. Unrecorded documents could not get such effect. Moreover, the Office rejected blanket transfers. The Register's Report stated that "in some cases a recorded transfer will cover 'all the copyrights' owned by the transferor with no identification of the individual works," and concluded that constructive notice should be confined to copyright in works specifically identified by the recorded instrument. Otherwise, it might be "extremely difficult and time-consuming for a third person to ascertain whether the copyright in a particular work is covered by such a blanket transfer."

The transfer provisions in the current law reflect the goals and recommendations of the Register. They were determined early in the revision process; the recordation provision of the first revision bill in 1964 was virtually identical to section 205 of the current law. During the next twelve years (i.e., up to and including the passage of the Copyright Act of 1976), this section generated no controversy.

Today processing transfers of copyright ownership involves several steps. The original document that transfers copyright ownership which bears the actual signature of the person who executed it must be submitted for recordation; alternatively, a copy of the document may be submitted if it is accompanied by a sworn or official certification that it is a true copy of the original signed document. A Document Cover Sheet may be used to facilitate the cataloging process. Documents are verified, numbered, cataloged, and imaged for the public record. Certificates of recordation are issued; they bear the date of recordation and the volume and document number identifying the recorded document. The original document is returned to the sender with the certificate. An online record is created of recorded documents which is searchable by parties and titles. In addition, registration numbers, if any, the nature of document, the date of execution and other bibliographic data appearing in the document are included in the online record. Processing time is currently about 6 months.

Before 1990, no question had been raised about the scope of the recordation provision. That changed with the decision of In re Peregrine Entertainment Ltd.,116 B.R. 194 (C.D. Cal. 1990), which held that the only way to perfect a security interest in copyrighted works was to record the security interest with the U.S. Copyright Office. This was the intent of the drafters of the 1976 Act. However, after Peregrine some questioned whether section 205 of Title 17 was intended to be the sole method of perfection for security interests in copyrighted works. Moreover, the banking industry apparently believes the UCC filing system for security interests should play a prominent role in financing arrangements regarding copyrighted property.

The Peregrine decision was followed by two additional cases with similar holdings. In re AEG Acquisition Corp., 127 B.R. 34 (Bank. C.D. Cal. 1991), amended, 161 B.R. 50 (9^th Cir. BAP 1993); In re Avalon Software, Inc., 209 B.R. 517 (Bank. D. Ariz. 1997). Recently, the United States Court of Appeals for the Ninth Circuit held in Broadcast Music, Inc. v. Hirsch, 104 F.3d 1163 (9^th Cir. 1997), that an assignment to creditors of an interest in royalties from a copyrighted work is not a transfer of copyright ownership or a "document pertaining to a copyright" under section 205, and therefore need not be recorded with the Copyright Office. The Court distinguished Peregrine as a case involving a security interest in a copyright subject to recordation under section 205.

The Peregrine decision stimulated a study of the recordation system and a movement towards reform. The proposed Copyright Reform Act of 1993, H.R. 897, 103^rd Cong. 1^st Sess., would have permitted perfection of security interests by either a UCC filing or recordation with the Copyright Office. The bill also proposed other changes, such as the elimination of the requirement that the work be registered in order to be accorded constructive notice. Register of Copyrights Ralph Oman did not oppose reversing the Peregrine decision, but advised against making precipitous changes without adequate study. The American Bar Association and other interested groups testified in favor of reform, but desired a more comprehensive reform incorporating a registry of security interests in all intellectual property including patents and trademarks. The provisions were deleted from the proposed legislation in order to study whether a single system could be developed.

The ABA proposal would create a dual system permitting the perfection of security interests in federal intellectual property through a UCC filing at the state level or a filing of a new type of "federal financing statement" at the federal level. The proposed system would be radically different than the present system.

UCC filing systems are maintained by the Secretaries of State of the various states; under the ABA proposal, security interests filed at the state level would be filed in the state where the debtor lives. Alternatively, under section (b)(2)(B) of the proposal, holders of security interests in federal intellectual property would also have the option of filing a federal financing statement with the appropriate federal intellectual property agency. The federal financing statement, which would broadly describe the covered intellectual property rights, would encumber all copyrights owned by the debtor without specifying actual works. The proposal encourages the Copyright Office and the Patent and Trademark Office to create a system of joint administration; it does not mandate one unitary system. Priority between state filings and federal filings would be given to the first-to-file.

While the basic system for recording transfers of copyright under section 205 would remain the same, in two areas there would be important changes. First, the one-month grace period in section 205 would be eliminated in favor of a first to file system. Second, procedures for recording transfers secured through a default of a security interest would be substantially different from the requirements for recording other transfers.

In preparation for this hearing, we met with representatives of a number of copyright industries. They stated their preference for a continuation of the present system. We asked what the problem was that the ABA proposal was trying to address; they indicated it was after acquired property, i.e., the needs of venture capitalists and the needs of start-up companies seeking investment capital. When we asked how they dealt with works that have yet to be created, a representative of a major motion picture company stated that periodic registrations are made for the work as it progresses (e.g., registrations of various versions of a screenplay). We recognize that this may not be a solution for all of the copyright industries.

In our meeting, a number of concerns were expressed. One had to do with the proposal to have only a financing statement which might simply refer to intangibles and not include any specific titles. A second had to do with the fact that the actual document would not be on file in any public place. As our comments will indicate, we share these concerns. The copyright owners also expressed other concerns which I am sure they will bring to your attention.

We believe that most copyright owners oppose elimination of the exclusivity of the federal copyright system. At this point, it appears that for the sake of clarity and simplicity a federal system is better than coexisting federal and state systems. Clearly, the ABA's proposal represents a radical change in the recordation system. It deserves a full and deliberate study. Later in this testimony, I will mention a couple of ways in which the current system might be modified to accommodate the needs of lenders.

The Copyright Office has comments on a number of aspects of the ABA proposal, including: (1) changes in the section 205 system for recording copyright transfers other than security interests; (2) permitting perfection of security agreements without requiring specific identification of the works by titles or registration numbers; (3) making an exception, for security agreements, to the requirement that the actual document embodying the transfer of copyright be submitted for recordation; (4) the interplay between state UCC systems and the federal system; (5) the feasibility of and need for a joint administration of the system of recording security interests in federal intellectual property; and (6) administrative burdens posed by the proposed system. Our specific comments in these six areas are as follows:

1. Changes in the section 205 recordation system under the copyright law.

The ABA proposal would modify the section 205 recordation system in two areas. First, the one-month (two months for documents executed outside the United States) grace period in section 205(d) would be eliminated in favor of a first to file system. Second, procedures for recording transfers secured through a default of a security interest would be substantially different from the requirements for recording other transfers.

The current system giving priority to the first to execute, with a grace period for recordation, has been in place since 1870. The system provides that between two conflicting transfers, the first purchaser is protected as long as the transfer is recorded, in the manner required to give constructive notice, within one month of its execution in the United States or two months after its execution outside of the United States, or at any time before recordation in such manner of the later transfer. Otherwise, the later transfer prevails if it is recorded first in the manner to give constructive notice provided it was taken in good faith and without notice of the earlier transfer. The ABA proposes going to a first to record system. There are advantages to the ABA proposal. A system with a grace period means that a prospective purchaser cannot be completely certain that the silence of the record insures his protection. He cannot detect from the record an earlier purchase that has not been recorded; and the later recordation of the prior purchase will defeat him if takes place within one month after its execution.

On the other hand, the concept of an initial grace period is deeply rooted in U.S. copyright law. See Latman, Study No. 19 at 121. Latman notes that the drafters of the Uniform Conditional Sales Act in 1922 provided for a 10 day period during which a purchaser was protected against subsequent purchases even if he had not yet recorded; this was warranted by considerations of distance and unavoidable delays. Latman went on to note that such considerations were less persuasive in light of modern facilities for transmission of documents but that recordation in Washington, D.C. for transactions occurring throughout the United States might call for some grace period.

It is difficult to predict what the effect of abolition of a grace period would be. Despite tremendous advances in communication and transportation, a document executed today in Washington, D.C. can be submitted for recordation before a document executed yesterday in Moscow or even Los Angeles. The factors that justified a grace period in the 1870, 1909 and 1976 Acts may still be present today, although even proponents of the grace period cannot deny that the length of the period could be shortened considerably.

With respect to recordation of transfers secured through default of security agreements, section 3(b)(4)(G) would establish special procedures based on recording financing statements rather than the actual security agreements. Thus, for transfers of ownership that result from such defaults, the public record would be confined to a statement by the secured party identifying what was transferred as a result of the default. This would be in contrast to the public record for all other types of transfers, which would still require the recordation of the actual document of transfer. The result could be an impairment of the comprehensiveness and integrity of the public records of copyright ownership.

Moreover, the Office would have to establish different procedures with respect to records of transfer of ownership, depending upon whether the transfer was in exercise of a secured party's post-default rights or remedies. Administratively, it is difficult and burdensome to establish different procedures according to the type of document which is being recorded. We see no reason to abandon the current legal requirement that the actual document be submitted; in fact, we regard the requirement to be a strength of the current system. The Copyright Office therefore has serious concerns about the creation of a second category of procedures within section 205.

2. The perfection of security agreements not limited to specific titles of registered works.

Ideally, a public record of copyrighted works should permit title searches to ascertain who owns rights in a particular work, and the nature of those rights. That is the clear goal of the current system, which allows any document to be recorded, but gives constructive notice only to documents which specifically identify works by title or registration number. Recordation of transfers performs a vital informational function; titles of works covered by a transfer are extremely important and seem indispensable if the recording system is to be effective.

Under the ABA proposal, federal financing statements making general statements as to "intangibles" or "intellectual property" would cover all copyrights owned by the debtor. Since there is no requirement that federal financing statements identify the specific property which the statement covers, it would be impossible to ascertain through a search of the public record the works encumbered by the financing statement. As a result, clearing titles through a search of the public record could become impossible. Adding to the complexity would be the perfection of security interests in federal intellectual property which had been secured at the state level through UCC filing. We discuss this below.

3. The lack of recordation of the actual security agreement, which best defines the rights of the parties.

As mentioned above, the documents submitted for recordation are reproduced and maintained in the Copyright Imaging System. Before October, 1997, they were reproduced on microfilm. Retrieving documents is a central feature of the public record, enabling a determination of the precise language used by the parties in transferring, allocating or encumbering various rights. We believe there are clear advantages to a public record that provides public access to the very document that accomplishes a transfer of rights, rather than mere access to one party's characterization of the rights transferred to that party.

Under the ABA proposal, recordation of security agreements in either the federal system or the state UCC system would be accomplished by submission of a fairly simple financing statement completed by the financial institution. There is no requirement that the debtor sign the financing statement, and inaccuracies do not invalidate the filing "as long as such errors or omissions are not seriously misleading." The fact that the debtor would have no input to the filing of financing statements raises the possibility of abuse. Third parties interested in knowing what rights have been encumbered would find little useful information in the public record; there would be no means to gain access to the actual security agreement (and the language therein which states what rights are being encumbered) or to learn anything beyond the general description such as "intangibles" or "intellectual property." We recognize that there would be legal advantages for the financing institution to describe the encumbered property as broadly as possible, but we believe that those advantages would be outweighed by the disadvantages described above.

4. The interplay between state UCC systems and the federal system.

On previous occasions, the Copyright Office has not objected to proposals to overrule the Peregrine decision through statutory modification of the copyright law. This position was based on an assumption that this was what copyright owners as well as lenders wanted. However, after conferring with copyright owners we have concluded that there is no consensus that Peregrine should be overturned. Moreover, the ABA's proposed two-level system that would replace the current system seems unduly complicated.

Judge Kozinski noted in Peregrine that a recording system works by virtue of the fact that interested parties have a specific place to look in order to discover with certainty whether a particular interest has been transferred or encumbered. He wrote, "[t]o the extent there are competing recordation schemes, this lessens the utility of each...." He stated that "[i]t is for that reason that parallel recordation schemes for the same types of property are scarce as hen's teeth.... No useful purposes would be served -- indeed much confusion would result -- if creditors were permitted to perfect security interests by filing with either the Copyright Office or state offices." He added, "if state methods of perfection were valid, a third party (such as a potential purchaser of copyright) who wanted to learn of any encumbrances thereon would have to check not merely the indices of the U.S. Copyright Office, but also the indices of any relevant secretary of state. Because copyrights are incorporeal--they have no fixed situs--a number of state authorities would be relevant. Thus, interested third parties could never be entirely sure that all relevant jurisdictions have been searched." He found that such a system could hinder the purchase and sale of copyrights and frustrate Congress's policy that copyrights be readily transferable in commerce.

We believe that Judge Kozinski made a compelling case for a single federal recording system for transfers of copyrights, including security interests. However, the single system need not necessarily be as comprehensive as suggested in Peregrine. We recognize at least two areas where there may be room for the filing of security interests with the states rather than with the Copyright Office: (1) security interests in receivables, and (2) recordation of security interests for purposes of constructive notice to other secured creditors, as distinguished from constructive notice to other assignees.

The Copyright Office agrees that the Peregrine decision, insofar as it relates to recordation of security interests in copyrights themselves, reflects the copyright law. Until Peregrine, there was no dissatisfaction of which we are aware with the recordation provisions of the law. We are aware that the banking community and some copyright owners believe that the Peregrine decision should be overturned, and we recognize that they are motivated by legitimate concerns. There may be gaps in the current system that should be addressed.

One controversial aspect of Peregrine is Judge Kozinski's conclusion that federal copyright law preempts state methods of perfecting security interests not only in copyrights, but also in related accounts receivable. We do not believe section 205 necessarily requires that conclusion, and we do not believe that the policies underlying section 205's centralized recordation system necessarily require such a result. The Ninth Circuit may have undercut this aspect of the Peregrine ruling in Hirsch when it ruled that assignments of a right to receive royalties are not subject to section 205's recordation requirement. To the extent that financial institutions and their borrowers are concerned that their ability to engage in secured transactions is adversely affected by this aspect of Peregrine, it may be that the problem is relatively easy to resolve. A system that recognizes recordation of security interests in receivables at the state level likely would do no harm to the policies underlying section 205.

We also recognize that secured lenders desire to establish the priority of their liens vis-a-vis other lenders by resorting to the UCC system with which they are familiar. It may be that the considerations that led Congress to adopt a unitary filing system for copyright transfers do not require that the federal system be utilized for purposes of prioritizing rights of creditors among themselves. Thus, it may make sense to recognize perfection of security interests in copyrights at the state level for the limited purpose of allocating rights among lien creditors. On the other hand, it would do violence to the statutory scheme if a secured creditor who simply files a UCC-1 with a state secretary of state could obtain priority over a bona fide purchaser for value of all rights in a copyrighted work who has diligently searched the Copyright Office records and has discovered that those records reveal that the seller has clear title to the rights being sold. A secured creditor who wishes to secure his or her rights against the entire world, including those who have purchased all rights in a copyrighted work, should be required to use the centralized system established to provide constructive notice to the world.

5. The feasibility of joint administration of the system of recording security interests in federal intellectual property.

The major systems of federal intellectual property protection are copyright, patent, and trademark. The concepts and laws underlying these systems of protection are very different, and we believe administering these rights in the different agencies with specialized expertise enhances efficiency rather than inefficiency. Our other comments make clear that we view as strengths of the current system the requirement that the affected works be identified specifically and the requirement that the document of transfer be recorded and available for public inspection. These features may be irrelevant to the needs of the patent and trademark systems. We do not believe the case has been made for standardizing the system of recordation of security interests or other transfers in all federal intellectual property; therefore, we see no need or benefit from coordination of the various recordation systems.

6. Establishing a Totally New System of Recordation For Security Interests at the Federal Level

We have additional concerns about some of the details of the proposed new federal system for recording security interests which removes them from the system used for recording transfers of copyright ownership. We have already indicated some reasons why the proposed system based on federal financing statements seems inferior to the present system. The proposed system is also more complicated in many ways and would impose administrative burdens that do not seem warranted.

Under the ABA proposal, each filing statement would have to be date-stamped with the hour of filing. This is not currently done. Statements would lapse after 10 years unless a continuation statement is filed before the lapse. If the continuation statement is filed by someone other than the secured party of record, it must be accompanied by a separate assignment statement authenticated by the secured party of record. The system anticipates terminations and release statements as well as transfer statements.

Such a system would take time to develop and establish, require additional personnel and a new computer system. It would force all users to learn this potentially complicated new system. Additionally, a filing in the proposed new federal system may not prevail if there was first perfection at the state level. In short, the benefits of such a system appear to be outweighed by its burdens.

Conclusions

Records of copyright ownership are increasingly important in our global, networked society. The current recordation system has been in place since 1870. Enactment of the ABA proposal would change many of the established practices. The Copyright Office would not oppose any change on which a broad consensus has been achieved. However, the Office believes many of the proposed changes are controversial. Today's hearing serves a useful function as a starting point for discussion and debate about these issues. We caution, however, that any changes should be considered only after a careful study of the current system, of the needs of copyright owners, creditors and other users of the recordation system, and of the desirability and feasibility of changing the system that has for so long served the interests of the copyright community.