Case 1:18-cv-01922-ABJ Document 30 Filed 07/23/21 Page 1 of 26
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`VALANCOURT BOOKS, LLC,
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`Plaintiff,
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`v.
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`SHIRA PERLMUTTER,
`in her official capacity as the
`Register of Copyrights
`of the U.S. Copyright Office, et al.,
`
`
`Civil Action No. 18-1922 (ABJ)
`
`UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF COLUMBIA
`____________________________________
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`Defendants.
`____________________________________)
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`MEMORANDUM OPINION
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`Plaintiff Valancourt Books, LLC (“Valancourt”) is an independent press based in
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`Richmond, Virginia, and it brought this action on August 16, 2018, against defendants Shira
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`Perlmutter, in her official capacity as the Register of Copyrights of the United States Copyright
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`Office (“Copyright Office”), and Merrick Garland, in his capacity as Attorney General of the
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`United States.1 Compl. [Dkt. # 1] ¶¶ 9–10. Plaintiff alleges that the requirement in the Copyright
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`Act that copies of every new work eligible for copyright must be deposited with the Copyright
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`Office, 17 U.S.C. § 407, is an unconstitutional taking of private property that violates the Fifth
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`Amendment and a burden on freedom of speech that violates the First Amendment. Id. ¶¶ 1–4.
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`Plaintiff seeks a declaration that the deposit requirement is unconstitutional and an injunction
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`blocking enforcement of the Copyright Office’s mandatory book deposit requirement (“deposit
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`requirement”). Id. ¶ 5.
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`1
`Defendants have been automatically substituted pursuant to Federal Rule of Civil
`Procedure 25(d).
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`

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`Case 1:18-cv-01922-ABJ Document 30 Filed 07/23/21 Page 2 of 26
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`On July 3, 2019, defendants moved for summary judgment on all counts. Defs.’ Mot. for
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`Summ. J. [Dkt. # 17] (“Defs.’ Mot.”); Mem. in Support of Mot. for Summ. J. [Dkt. # 17-1]
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`(“Defs.’ Mem.”). On August 2, 2019, plaintiff opposed the motion and cross-moved for summary
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`judgment. Pl.’s Combined Cross Mot. for Summ. J. and Opp. to Defs.’ Mot. [Dkt. # 18]
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`(“Pl.’s Cross Mot.”); Pl.’s Mem in Supp. [Dkt. # 18-1] (“Pl.’s Mem.”). Upon consideration of the
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`entire record2 and for the reasons stated below, the Court will grant defendants’ motion and deny
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`plaintiff’s cross motion.
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`I.
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`History of the Copyright Act and its requirements
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`BACKGROUND
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`The Copyright Clause of the Constitution provides that “Congress shall have Power . . . To
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`promote the Progress of Science . . . by securing [to Authors] for limited Times . . . the exclusive
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`Right to their . . . Writings.” U.S. Const., art. I, § 8, cl. 8. Congress first exercised this authority
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`in 1790 when it established federal copyright protections for written work. See Copyright Act of
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`1790, 1 Stat. 124, 125.
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`Among the conditions imposed by Congress in connection with copyright protection, there
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`is a requirement to provide the Library of Congress with copies of most newly published material.
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`The deposit requirement has existed in some form from the first Congress to the present day,
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`2
`See Joint Stipulations of Fact [Dkt. # 17-3] (“Joint SOF”); Pl.’s Suppl. Statement of
`Undisputed Material Facts [Dkt. # 18-2] (“Pl.’s Suppl. SOF”); Decl. of James Jenkins
`[Dkt. # 18-3] (“First Jenkins Decl.”); Defs.’ Mem. in Opp. to Pl.’s Cross Mot. for Summ. J.
`[Dkt. # 20] (“Defs.’ Opp.”); Defs.’ Reply to Pl.’s Opp. to Mot. for Summ. J. [Dkt. # 21]
`(“Defs.’ Reply”); Defs.’ Revised Resp. to Pl.’s Suppl. Statement of Undisputed Material Facts
`[Dkt. # 22] (“Defs.’ Resp. to Suppl. SOF”); Pl.’s Reply to Defs.’ Opp. to Cross Mot. for Summ. J.
`[Dkt. # 23] (“Pl.’s Cross Reply”). The Court will use the Bates numbers for pin cites.
`2
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`Case 1:18-cv-01922-ABJ Document 30 Filed 07/23/21 Page 3 of 26
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`except for a period of six years in the mid-19th century.3 Copyright protection was initially
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`conditional upon the deposit of a printed copy of a work, and in 1834, the Supreme Court upheld
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`this requirement as constitutional. See Wheaton v. Peters, 33 U.S. 591, 662–64 (1834).
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`In 1865, Congress empowered the Librarian of Congress to demand copies of works that
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`had not been deposited within one month of their publication, and failure to comply would result
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`in forfeiture of the work’s copyright. Act of Mar. 3, 1865, ch. 126, § 3, 13 Stat. 540, 540. Two
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`years later, Congress added a $25 penalty for non-compliance. Act of Feb. 18, 1867, ch. 43, § 1,
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`14 Stat. 395, 395. By 1909, Congress amended the Copyright Act to require that two copies of a
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`work be deposited with the Copyright Office, “after [a] copyright [was] secured by publication of
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`the work with . . . notice.” Act of Mar. 4, 1909, § 12, 35 Stat. 1075, 1078. In the event the two
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`copies were not deposited, the Register of Copyright could make a formal demand that the deposit
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`be made within three months, or the copyright holder would risk both forfeiture of the copyright
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`and the imposition of a $100 fine. Id. § 13.
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`In 1976, section 407 of the Copyright Act was enacted; it eliminated the copyright
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`forfeiture penalty for failure to meet the deposit requirement, but increased the fine to $250 per
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`work. Copyright Act of 1976, Pub. L. No. 94-553, § 407(a), (d)(1), 90 Stat. 2541, 2579, codified
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`as amended at 17 U.S.C. § 407(a), (d)(1).
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`In 1988, Congress amended section 407 by the Berne Convention Implementation Act.
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`Berne Convention Implementation Act of 1988, Pub. L. No. 100-568, §8, 102 Stat. 2853,
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`amending 17 U.S.C. § 101 et seq. It explained that this modification was made in order to bring
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`U.S. copyright law in line with that of other countries; in amending section 407, Congress did not
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`3
`See Copyright Act 1790, ch. 15, §§ 3–4, 1 Stat. 124, 125; Act of Aug. 10, 1846, ch. 178, §
`10, 9 Stat. 102, 106; Act of Mar. 3, 1865, ch. 126, § 2, 13 Stat. 540, 540; Act of Mar. 3, 1891, ch.
`565, § 3, 26 Stat. 1106, 1107; Act of Mar. 4, 1909, ch. 320, § 9, 35 Stat. 1075, 1077.
`3
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`Case 1:18-cv-01922-ABJ Document 30 Filed 07/23/21 Page 4 of 26
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`change the deposit requirement, but it eliminated copyright notice as a condition of copyright.
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`See Joint SOF ¶ 42, citing the Berne Convention for the Protection of Literary and Artistic Works.4
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`The language of section 407 has not been subsequently amended.
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`Today, the Copyright Act provides that “the owner of copyright . . . shall deposit [in the
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`U.S. Copyright Office], within three months after the date of . . . publication . . . two complete
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`copies of the best edition” of the published work. 17 U.S.C. § 407(a).5 If the owner of the
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`copyright does not provide copies of the work to the Copyright Office, the Register of Copyrights
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`may send a written demand, and if the copyright owner still has not complied after three months,
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`a fine of $250 plus the price of the work at retail may be levied. 17 U.S.C. § 407(d). If there is a
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`“willful” or “repeated” failure to comply with the deposit requirement, an additional fine of up to
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`$2,500 may be imposed on the copyright owner. Id.
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`4
`See also Ex. 1 to Defs.’ Mot., Committee on the Judiciary Report on the Berne Convention
`Implementation Act of 1988, [Dkt. # 17-2] (“Congressional Report”) at 45 (“Since noncompliance
`with the mandatory deposit requirement does not result in forfeiture of any copyright protection,
`[it] is compativle [sic] with Berne. However, elimination of the copyright notice as a condition of
`copyright requires an amendment to section 407 of the Copyright Act.”).
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`There are, in fact, two deposit requirements in the Copyright Act: section 407, which is
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`tied to the act of publication and section 408, which is tied to the copyright registration process.
`Because this dispute challenges the constitutionality of section 407, the Court will not discuss the
`deposit requirement imposed by section 408.
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`Case 1:18-cv-01922-ABJ Document 30 Filed 07/23/21 Page 5 of 26
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`The Register of Copyrights is authorized to promulgate exceptions to the deposit
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`requirement in certain situations:
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`The Register of Copyrights may be regulation [sic] exempt any categories
`of material from the deposit requirements of this section, or require deposit
`of only one copy or phonorecord with respect to any categories. Such
`regulations shall provide either for complete exemption from the deposit
`requirements of this section, or for alternative forms of deposit aimed at
`providing a satisfactory archival record of a work without imposing
`practical or financial hardships on the depositor, where the individual author
`is the owner of copyright in a pictorial, graphic, or sculptural work and (i)
`less than five copies of the work have been published, or (ii) the work has
`been published in a limited edition consisting of numbered copies, the
`monetary value of which would make the mandatory deposit of two copies
`of the best edition of the work burdensome, unfair, or unreasonable.
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`17 U.S.C. § 407(c).
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`II.
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`Factual and procedural background6
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`Plaintiff Valancourt is an independent press based in Richmond, Virginia, that publishes
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`“rare, neglected, and out-of-print fiction” and operates on a print “on-demand” model out of the
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`owners’ home. Joint SOF ¶¶ 4, 12, 23.7 On June 11, 2018, plaintiff received a demand letter from
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`the Copyright Acquisition Division of the Copyright Office requesting a copy of all 341 books in
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`its catalog. Id. ¶ 71–73; Ex. A. to Joint SOF [Dkt. # 17-3] (“First Email from Copyright Office”);
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`Ex. B. to Joint SOF [Dkt. # 17-3] (“First Demand Letter”); Ex. C to Joint SOF [Dkt. # 17-3] (“First
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`Sample Notice for Mandatory Deposit of Copies”). Plaintiff replied on June 12, 2018, asking the
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`Copyright Office to withdraw its request and offering to sell the books “at [Valancourt’s] costs
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`6
`The following facts are undisputed unless otherwise noted.
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` 7
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`The parties agreed to file a stipulation of material facts in lieu of engaging in discovery.
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`See Joint SOF. However, both parties have supplemented this joint statement. See Pl.’s Suppl.
`SOF; see also Defs.’ Resp. to Suppl. SOF.
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`Case 1:18-cv-01922-ABJ Document 30 Filed 07/23/21 Page 6 of 26
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`with no markup.” Joint SOF ¶ 76; Ex. D to Joint SOF [Dkt. # 17-3] (“First Email from
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`Valancourt”).
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`At the time of this exchange in June 2018, Valancourt had already sent more than one
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`hundred of the 341 requested titles to the Library of Congress in exchange for catalog control
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`numbers. But it “determined that the cost of sending each new title . . . was greater than the value
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`the business obtained from the catalog control number, and [it] discontinued the practice.”
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`Joint SOF ¶ 62.
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`On August 9, 2018, the Copyright Office reiterated its position that plaintiff was required
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`to deposit “any book contain[ing] . . . ‘copyrightable’ material,” Compl. ¶ 55, and it informed
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`plaintiff that Valancourt’s earlier practice of depositing works in exchange for a catalog control
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`number did not meet the deposit requirement of section 407. Joint SOF ¶ 78; Ex. E to Joint SOF
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`[Dkt. #17-3] (“Second Email from Copyright Office”). The Copyright Office’s updated demand
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`letter reduced the total number of requested books from 341 to 240; it explained a review of the
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`titles in plaintiff’s catalog revealed that a number of the books consisted entirely of reprinted
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`material from the public domain. Id. ¶ 79; see also Ex. F to Joint SOF [Dkt. # 17-3]
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`(“Updated Demand Letter”); Ex. G to Joint SOF [Dkt. # 17-3] (“Second Sample Notice for
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`Mandatory Deposit of Copies”).
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`On August 16, 2018, plaintiff filed the instant lawsuit. See Compl. In March of 2019,
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`the Copyright Office notified plaintiff that it would be permitted to submit the 240 requested
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`copies of its works electronically, rather than in print. Joint SOF ¶¶ 59– 61 (noting that
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`Valancourt’s June 12, 2018 email “was not treated as a request for ‘special relief’” pursuant to
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`37 C.F.R. § 202.19(e)(3)); see also Pl.’s Suppl. SOF ¶¶ 7–8; First Jenkins Decl. ¶ 10; Defs.’ Resp.
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`to Suppl. SOF ¶¶ 7–8.
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`Case 1:18-cv-01922-ABJ Document 30 Filed 07/23/21 Page 7 of 26
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`In December 2020, the Court ordered the parties to supplement their submissions,
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`“addressing whether defendants’ offer to accept electronic copies in lieu of physical copies of the
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`requested works renders the dispute moot,” and it asked the defendants to clarify their offer to
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`accept electronic copies of plaintiff’s works. Order of December 11, 2020 [Dkt. # 24] (“December
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`2020 Order”) at 3; see also Pl.’s Suppl. Brief [Dkt. # 25] (“Pl.’s Suppl.”); Suppl. Decl. of James
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`Jenkins [Dkt. # 25-1] (“Suppl. Jenkins Decl.”); and Defs.’ Suppl. Brief Addressing Mootness
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`[Dkt. # 26] (“Defs.’ Suppl.”). Defendants have clarified that the Copyright Office’s offer to accept
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`electronic copies applies to both the 240 works at issue and all future Valancourt works as well.
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`Defs.’ Suppl. at 6. The parties have also addressed the impact of the Supreme Court’s recent
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`opinion in Cedar Point Nursery v. Hassid, 141 S. Ct. 2063 (2021). See Pl.’s Notice of Suppl.
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`Authority [Dkt. # 27]; see also Defs.’ Resp. to Pl.’s Notice [Dkt. # 28].
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`STANDARD OF REVIEW
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`Summary judgment is appropriate “if the movant shows that there is no genuine dispute as
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`to any material fact and the movant is entitled to judgment as a matter of law.” Fed. R. Civ.
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`P. 56(a). The party seeking summary judgment “bears the initial responsibility of informing the
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`district court of the basis for its motion, and identifying those portions of the pleadings,
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`depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any,
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`which it believes demonstrate the absence of a genuine issue of material fact.” Celotex Corp. v.
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`Catrett, 477 U.S. 317, 323 (1986) (internal quotation marks omitted). To defeat summary
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`judgment, the non-moving party must “designate specific facts showing that there is a genuine
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`issue for trial.” Id. at 324 (internal quotation marks omitted).
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`The mere existence of a factual dispute is insufficient to preclude summary judgment.
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`Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247–48 (1986). A dispute is “genuine” only if a
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`Case 1:18-cv-01922-ABJ Document 30 Filed 07/23/21 Page 8 of 26
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`reasonable fact-finder could find for the non-moving party; a fact is “material” only if it is capable
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`of affecting the outcome of the litigation. Id. at 248; Laningham v. U.S. Navy, 813 F.2d 1236, 1241
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`(D.C. Cir. 1987).
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`“The rule governing cross-motions for summary judgment . . . is that neither party waives
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`the right to a full trial on the merits by filing its own motion; each side concedes that no
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`material facts are at issue only for the purposes of its own motion.” Sherwood v. Wash. Post,
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`871 F.2d 1144, 1148 n.4 (D.C. Cir. 1989), quoting McKenzie v. Sawyer, 684 F.2d 62, 68 n.3
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`(D.C. Cir. 1982). In assessing each party’s motion, “[a]ll underlying facts and inferences are
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`analyzed in the light most favorable to the non-moving party.” N.S. ex rel. Stein v. Dist. of
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`Columbia, 709 F. Supp. 2d 57, 65 (D.D.C. 2010), citing Anderson, 477 U.S. at 247.
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`ANALYSIS
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`I.
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`The dispute between the parties has been narrowed, but not rendered moot, by
`the Copyright Office’s offer to accept electronic copies in lieu of physical copies.
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`Before reaching plaintiff’s constitutional claims, the Court must decide the threshold
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`jurisdictional question of whether this dispute is moot in light of the Copyright Office’s offer to
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`accept electronic versions of the outstanding 240 works and all future works.
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`Federal courts are courts of limited jurisdiction, and the law presumes that “a cause lies
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`outside this limited jurisdiction.” Kokkonen v. Guardian Life Ins. Co. of Am., 511 U.S. 375, 377
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`(1994); see also Gen. Motors Corp. v. EPA, 363 F.3d 442, 448 (D.C. Cir. 2004) (“As a court of
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`limited jurisdiction, we begin, and end, with an examination of our jurisdiction.”); see also
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`Conserv. Force, Inc. v. Jewell, 733 F.3d 1200, 1204 (D.C. Cir. 2013) (“Federal courts lack
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`jurisdiction to decide moot cases because their constitutional authority extends only to actual cases
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`or controversies.”), quoting Iron Arrow Honor Soc’y v. Heckler, 464 U.S. 67, 70 (1983). Subject
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`matter jurisdiction may not be waived, and “courts may raise the issue sua sponte.” NetworkIP,
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`Case 1:18-cv-01922-ABJ Document 30 Filed 07/23/21 Page 9 of 26
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`LLC v. FCC, 548 F.3d 116, 120 (D.C. Cir. 2008), quoting Athens Cmty. Hosp., Inc. v. Schweiker,
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`686 F.2d 989, 992 (D.C. Cir. 1982). Indeed, a federal court must raise the issue because it is
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`“forbidden . . . from acting beyond [its] authority, and ‘no action of the parties can confer
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`subject-matter jurisdiction upon a federal court.’” Id., quoting Akinseye v. Dist. of Columbia,
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`339 F.3d 970, 971 (D.C. Cir. 2003).
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`Moreover, the “fundamental and longstanding principle of judicial restraint” requires a
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`court to “avoid reaching constitutional questions in advance of the necessity of deciding them.”
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`Lyng v. Nw. Indian Cemetery Protective Ass’n, 485 U.S. 439, 445 (1988) (collecting cases).
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`Plaintiff explains that it rejected the offer to comply electronically for two reasons. First,
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`it “objected to the idea that [Valancourt] would receive ‘special’ treatment for no articulated
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`reason” while defendants could threaten to cripple other small publishers. Pl.’s Suppl. at 2.
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`Second, it explained that its works were not already accessible in that format, and that “finding
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`digital copies of its old books would require Valancourt’s cofounders to spend several hours
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`searching old computers and looking through external storage media” and converting them to .pdf
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`or .doc formats. Pl.’s Suppl. at 2–3. It asserts that the controversy is live because: (1) the “special
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`relief” is an unaccepted settlement offer; (2) plaintiff cannot rely on the policy change because
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`defendants could potentially withdraw the promise to accept electronic copies; and (3) even the
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`demand for electronic copies gives rise to a concrete, ongoing injury. Pl.’s Suppl. at 2–4.
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`Defendants acknowledge that the action would not be moot if plaintiff were to refuse to
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`send the required copies electronically, but they emphasize that their offer reduces the burden on
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`plaintiff substantially. Defs.’ Suppl. at 2.
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`A case is moot if “events have so transpired that the decision will neither presently affect
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`the parties’ rights nor have a more-than-speculative chance of affecting them in the future.” Clarke
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`Case 1:18-cv-01922-ABJ Document 30 Filed 07/23/21 Page 10 of 26
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`v. United States, 915 F.2d 699, 701 (D.C. Cir. 1990), quoting Transwestern Pipeline Co. v. FERC,
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`897 F.2d 570, 575 (D.C. Cir. 1990). In determining whether a dispute is moot, the Court must
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`“defin[e] the wrong that the defendant is alleged to have inflicted.” Zukerman v. U.S. Postal Serv.,
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`961 F.3d 431, 442 (D.C. Cir. 2020), quoting Clarke, 915 F.2d at 703. Plaintiff’s stated concerns
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`about unfairness to other companies that are not parties to this dispute do not factor in the
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`determination of whether the case presents a live controversy. See Pl.’s Suppl. at 2. But plaintiff
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`alleges that in order to comply with the alternative means of satisfying the deposit requirement, it
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`must spend time and energy, however minimal, to search its electronic records and update the
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`formatting of its materials to meet modern standards. See id. at 2–3. Plaintiff concedes that the
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`harm that it currently faces is less burdensome in light of the Copyright Office’s concession.
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`See id. at 4; Defs.’ Suppl. at 6. But a lessening of the harm does not moot the entire case; “it is
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`well understood that ‘the fact that one aspect of a lawsuit becomes moot does not automatically
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`deprive a court . . . over remaining, live aspects of the case.’” Zukerman, 961 F.3d at 443, quoting
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`Foretich v. United States, 351 F.3d 1198, 1210 (D.C. Cir. 2003).
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`Therefore, because plaintiff has rejected the Copyright’s Office’s offer to accept electronic
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`copies of its works, the Court concludes that the dispute is live.
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`II.
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`Plaintiff’s Fifth Amendment claim fails because the deposit requirement is not an
`unconstitutional taking, but it is a voluntary exchange in return for federal
`copyright protection.
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`In Count One of the complaint, plaintiff alleges that the deposit requirement in section 407
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`of the Copyright Act is an unconstitutional taking because the government is demanding copies of
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`publishers’ works for its own use without providing compensation to the affected private parties.
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`Compl. ¶ 1; Pl.’s Mem. at 18. But this argument is not supported by Supreme Court precedent or
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`by the persuasive decision of the only circuit that has considered the issue.
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`A. The deposit requirement does not contravene Supreme Court authority.
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`The U.S. Constitution states that “nor shall private property be taken for public use, without
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`just compensation.” U.S. Const. amend V (“Takings Clause”). But the Supreme Court has
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`explained that a statute that confers a “benefit” on a citizen may condition the receipt of that benefit
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`on the submission of private property in exchange without running afoul of the Takings Clause.
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`Ruckelshaus v. Monsanto Co., 467 U.S. 986, 1007 (1984).
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`In Monsanto, the Supreme Court held that the Environmental Protection Agency could
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`require chemical companies to disclose health and environmental safety information, including
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`proprietary trade secret information, as a condition of their receipt of a license to market certain
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`products. The court reasoned that because the chemical manufacturers received a “valuable
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`Government benefit” – the license to sell the chemicals – the mandate to disclose the information
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`was not an unlawful taking. Id. at 1007.
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`In its initial memorandum, plaintiff maintained that the holding in Monsanto did not
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`survive the Supreme Court’s subsequent opinion in Horne v. Dep’t of Agric., 576 U.S. 350 (2015).
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`Pl.’s Mem. at 23–24.
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`In that case, the Supreme Court was asked to consider the constitutionality of a
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`Departmental requirement that raisin farmers set aside a percentage of their crop each year so that
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`the agency could moderate the raisin market. Horne, 576 U.S. at 364–65. The Court started with
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`the proposition that a “classic taking [is one] in which the government directly appropriates private
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`property for its own use,” id. at 357, quoting Tahoe-Sierra Pres. Council, Inc. v. Tahoe Reg’l Plan.
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`Agency, 535 U.S. 302, 324 (2002), and it noted that there is no dispute that in the case of real
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`property, “such an appropriation is a per se taking that requires just compensation.” Id. at 358
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`(emphasis in original). The Court went on to hold that there was nothing in the text or the history
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`Case 1:18-cv-01922-ABJ Document 30 Filed 07/23/21 Page 12 of 26
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`of the clause or its own precedents to suggest that the rule would be different in the case of the
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`appropriation of personal property: “[t]he Government has a categorical duty to pay just
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`compensation when it takes your car, just as when it takes your home.” Id.
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`With respect to the dispute before it, the Supreme Court noted that the growers were
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`obligated to physically surrender the actual raisins, and that the government assumed possession
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`and control “as if [it] held full title and ownership.” Id. at 362. Given those facts, the Court
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`concluded that the regulatory reserve requirement was an unconstitutional taking because the raisin
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`growers were required to give up the full measure of their property rights simply because they
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`chose to participate in the raisin market. Id. at 364–65.
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`The Court distinguished the regulatory reserve requirement in Horne from the participation
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`in a “voluntary exchange” at issue in Monsanto because the right to participate in the open market
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`for raisins was not a “governmental benefit” – any grape grower could choose to do it – while a
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`license to sell chemicals was a valuable opportunity that was not otherwise available to
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`manufacturers, and could therefore be conditioned upon the submission of something of value to
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`the government in return. 576 U.S. at 365–66.
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`Selling produce in interstate commerce, although certainly subject to
`reasonable government regulation, is similarly not a special governmental
`benefit that the Government may hold hostage, to be ransomed by the
`waiver of constitutional protection. Raisins are not dangerous pesticides;
`they are a healthy snack.
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`Id. at 366; see also id. (“We have already rejected the idea that Monsanto may be extended by
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`regarding basic and familiar uses of property as a ‘Government benefit’ on the same order as a
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`permit to sell hazardous chemicals.”), citing Nollan v. Cal. Coastal Comm’n, 483 U.S. 825, 834 n.2
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`(1987) (distinguishing Monsanto because “the right to build on one’s own property – even though
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`its exercise can be subjected to legitimate permitting requirements – cannot remotely be described
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`Case 1:18-cv-01922-ABJ Document 30 Filed 07/23/21 Page 13 of 26
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`as a ‘governmental benefit.’”). Thus, while the Court came to a different conclusion in Horne, the
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`Court did not, and it did not purport to, overrule Monsanto.
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`Notwithstanding plaintiff’s arguments to the contrary, the deposit requirement is more akin
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`to the Monsanto exchange for a benefit only the government can confer than to the Horne mandate
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`to relinquish specific property simply because one has decided to engage in interstate commerce.
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`Publishers are not required to make the deposit in order to print books or to sell them; the obligation
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`is a condition of the receipt of the governmental benefit of copyright protection.
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`Plaintiff includes a notice of copyright in its books. See Ex. 1 to Defs.’ Reply [Dkt. # 20-1]
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`(“Sample Copyright Notice”); see also Compl. ¶ 30. As defendants explain, “the result of that
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`voluntary choice was that the public was informed as to whether th[o]se works were copyrighted,
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`potential infringers were thereby deterred, and no innocent-infringement defense is available to
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`any such infringers.” Defs.’ Reply at 15. Since, as the defendants point out, “[p]laintiff has taken
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`voluntary action to receive the benefits afforded under federal copyright law, and has declined to
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`take action to opt out of receiving such benefits,” Defs.’ Mem. at 21 (capitalizations omitted), the
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`case is governed by Monsanto; plaintiff is voluntarily engaging in the exchange of copies of its
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`works for copyright protection, and it is receiving something beyond mere participation in the
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`Case 1:18-cv-01922-ABJ Document 30 Filed 07/23/21 Page 14 of 26
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`market in return, so the deposit requirement does not constitute a physical taking without just
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`compensation.8
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`Finally, the Court notes that the Supreme Court recently addressed its Takings Clause
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`jurisprudence again in the context of the use of real property in Cedar Point Nursery v. Hassid,
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`141 S. Ct. 2063 (2021). See Pl.’s Notice of Suppl. Authority [Dkt. # 27]; see also Defs.’ Resp. to
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`Pl.’s Notice [Dkt. # 28]. Plaintiff submits that the case is dispositive in its favor, but it serves to
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`confirm the Court’s conclusion that Monsanto remains good law and that it governs this situation.
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`In Cedar Point Nursery, the Court held that a California regulation that authorized union
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`organizers to appear on farm property to talk with employees, even when the farm owners had
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`denied them access, was unconstitutional. 141 S. Ct. at 2080. It reasoned that the entry was a
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`taking of private property under the Fifth Amendment without just compensation because the
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`government created a right to “invade” and occupy the private property. Id.
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`The Supreme Court repeated the basic principles that had been recited in Horne: “[w]hen
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`the government physically acquires private property for . . . public use, the Takings Clause imposes
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`a clear and categorical obligation to provide the owner with just compensation.” Cedar Point
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`Nursery, 141 S. Ct. at 2071. It compared the situation before it to a “tak[ing] away” of real
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`property, id. at 2074, and stated that “[g]overnment action that physically appropriates property is
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`8
`Plaintiff submits that the benefit it derives from copyright law is “effectively nonexistent”
`unless and until the copyright holder registers the copyright pursuant to section 408 of the
`Copyright Act. See Pl.’s Mem. at 23 (“[A] publisher required to deposit under § 407 gives up its
`property and receives nothing back; both before and after deposit, the publisher’s sole ‘benefit’ is
`the background existence of the copyright system itself.”). But plaintiff has elected to hold itself
`out to would-be infringers as covered under the umbrella of the Copyright Act, and it can register
`its copyright at any time and enforce the protection afforded by the government that it announces
`in its notice. And plaintiff already enjoys some of the benefits of copyright protection
`without registration. See also Defs.’ Opp. at 9 n.2 (noting the benefits of copyright protection,
`even in the absence of registration, include anti-circumvention protection, remedies for copyright
`infringement, notice and takedown provisions, and criminal copyright protection).
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`Case 1:18-cv-01922-ABJ Document 30 Filed 07/23/21 Page 15 of 26
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`no less a physical taking [when] it arises from a regulation.” Id. at 2072, citing Horne,
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`576 U.S. at 361.
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`It is not at all clear how this principle developed in the context of “real property,” or even
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`actual personal property such as the raisins, would apply to a requirement that can be fulfilled by
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`the transmission of digital copies that would not divest the publisher of its interest in any tangible
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`property whatsoever.
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`More important, though, the Court specifically distinguished the taking in Cedar Point
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`Nursery from a conditional action, and reiterated that it is not unconstitutional to require a party to
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`transfer property in exchange for a government benefit: “the government may require property
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`owners to cede a right of access as a condition of receiving certain benefits, without causing a
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`taking.” Cedar Point Nursery, 141 S. Ct. at 2079. The Court cited Monsanto as an example of a
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`conditional government “grant of a benefit such as a permit, license, or registration” that explicitly
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`falls outside the per se takings framework established in Cedar Point Nursery. Id. This reinforces
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`the Court’s conclusion that the deposit requirement is constitutional under Monsanto line of
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`precedent and can be easily distinguished from Horne.
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`B. The available circuit authority supports the constitutionality of the deposit
`requirement.
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`There is no Supreme Court case specifically addressing the deposit requirement under the
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`Takings Clause. In 1985, however, the Ninth Circuit took up the issue, and the Court finds its
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`analysis instructive for purposes of the instant case.
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`In Ladd v. Law & Tech. Press, 762 F.2d 809 (9th Cir. 1985), the Register of Copyrights
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`brought an action against a copyright holder to recover the statutory penalties for failure to meet
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`the deposit requirement. The copyright holder refused to pay the fees, arguing both that the deposit
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`requirement was not “necessary and proper” to execute the powers granted to Congress under
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`Case 1:18-cv-01922-ABJ Document 30 Filed 07/23/21 Page 16 of 26
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`Article I, section 8 of the Constitution, and that it was a taking of private property without just
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`compensation in violation of the Fifth Amendment. Id. at 812–13. The Registrar of Copyrights
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`took the position that it was a condition that was legitimately attached to the grant of a benefit.
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`Id. at 813.
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`The Ninth Circuit noted that “[t]here is no question but that the materials are private
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`property and that deposit with the Library is for a public use,” b