No. 22-1078
`
`In the
`Supreme Court of the United States
`
`WARNER CHAPPELL MUSIC, INC., et al.,
`
`v.
`
`SHERMAN NEALY, et al.,
`
`Petitioners,
`
`Respondents.
`
`On Writ Of CertiOrari tO the United StateS
`COUrt Of appealS fOr the eleventh CirCUit
`
`BRIEF OF FORMER REGISTER OF COPYRIGHTS
`RALPH OMAN AS AMICUS CURIAE IN SUPPORT
`OF RESPONDENTS
`
`VIncent LeVy
`Counsel of Record
`Brendon deMay
`BrIan t. GoLdMan
`SaMueL h. FInn
`hoLweLL ShuSter
`& GoLdBerG LLP
`425 Lexington Avenue
`New York, New York 10017
`(646) 837-5151
`vlevy@hsgllp.com
`
`Counsel for Amicus Curiae
`
`
`
`In the
`Supreme Court of the United States
`
`WARNER CHAPPELL MUSIC, INC., et al.,
`
`v.
`
`SHERMAN NEALY, et al.,
`
`Petitioners,
`
`Respondents.
`
`On Writ Of CertiOrari tO the United StateS
`COUrt Of appealS fOr the eleventh CirCUit
`
`BRIEF OF FORMER REGISTER OF COPYRIGHTS
`RALPH OMAN AS AMICUS CURIAE IN SUPPORT
`OF RESPONDENTS
`
`VIncent LeVy
`Counsel of Record
`Brendon deMay
`BrIan t. GoLdMan
`SaMueL h. FInn
`hoLweLL ShuSter
`& GoLdBerG LLP
`425 Lexington Avenue
`New York, New York 10017
`(646) 837-5151
`vlevy@hsgllp.com
`
`Counsel for Amicus Curiae
`
`
`
`
`
`
`
` i
`
`
`
`TABLE OF CONTENTS
`
`
`TABLE OF AUTHORITIES ........................................ ii
`
`INTEREST OF THE AMICUS CURIAE ................... 1
`
`SUMMARY OF THE ARGUMENT ............................ 2
`
`ARGUMENT ................................................................ 4
`
`I.
`
`The Text, Structure, And History Of The
`Copyright Act Instructs That A Discovery
`Accrual Rule Is Appropriate ......................... 5
`
`A. The Text And History Of The Act
`Suggests A Discovery-Accrual Rule ......... 6
`
`B. The Common Law At The Time Of Sec-
`tion 507(b)’s Enactment Supports A Dis-
`covery Accrual Rule ................................ 17
`
`II. The Legislative History Of Section 507(b)
`Suggests Congress Intended Claims Under
`The Act To Accrue Upon Discovery. ............ 21
`
`CONCLUSION .......................................................... 24
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`ii
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`
`Abramski v. United States,
`573 U.S. 169 (2014) .................................................. 5
`
`American Textile Mfrs. Inst., Inc. v. Donovan,
`452 U.S. 490 (1981) ................................................ 12
`
`Atl. Sounding Co., Inc. v. Townsend,
`557 U.S. 404 (2009) ................................................ 15
`
`Booth v. Warrington,
`(1714) 2 Eng. Rep. 111 (H.L.) ................................ 20
`
`Bridgeport Music, Inc. v. Rhyme Syndicate
`Music,
`376 F.3d 615 (6th Cir. 2004) .................................... 4
`
`Cada v. Baxter Healthcare Corp.,
`920 F.2d 446 (7th Cir. 1990) .................................. 20
`
`Carol Barnhart Inc. v. Economy Cover Corp.,
`773 F.2d 411 (2d Cir. 1985) ............................... 7, 10
`
`Comcast of Ill. X v. Multi-Vision Elecs., Inc.,
`491 F.3d 938 (8th Cir. 2007) .................................... 4
`
`Connecticut Nat’l Bank v. Germain,
`503 U.S. 249 (1992) ................................................ 21
`
`Cooper v. NCS Pearson, Inc.,
`733 F.3d 1013 (10th Cir. 2013) ................................ 4
`
`Food Mktg. Inst. v. Argus Leader Media,
`139 S. Ct. 2356 (2019) ............................................ 17
`
`
`
`
`
`
`
`
`
`iii
`
`Gaiman v. McFarlane,
`360 F.3d 644 (7th Cir. 2004) .................................... 4
`
`Holmberg v. Armbrecht,
`150 F.2d 829 (2d Cir. 1945) ................................... 18
`
`Holmberg v. Armbrecht,
`327 U.S. 392 (1946) ................................................ 18
`
`Hotaling v. Church of Jesus Christ of Latter-
`Day Saints,
`118 F.3d 199 (4th Cir. 1997) .................................... 4
`
`Lawson v. FMR LLC,
`571 U.S. 429 (2014) ................................................ 15
`
`Maracich v. Spears,
`570 U.S. 48 (2013) .................................................... 5
`
`Martinelli v. Hearst Newspapers, LLC,
`65 F.4th 231 (5th Cir. 2023) .................................... 4
`
`Mazer v. Stein,
`347 U.S. 201 (1954) .................................................. 7
`
`McMahon v. United States,
`342 U.S. 25-26 (1951) ............................................. 13
`
`Merck & Co., Inc. v. Reynolds,
`130 S. Ct. 1784 (2010) ............................................ 17
`
`Moviecolor Ltd. v. Eastman Kodak Co.,
` 288 F.2d 80 (2d Cir. 1961) .................................... 18
`
`Muscarello v. United States,
`524 U.S. 125 (1998) ................................................ 12
`
`Nealy v. Warner Chappell Music, Inc.,
`60 F.4th 1325 (11th Cir. 2023) ................................ 4
`
`
`
`
`
`
`
`
`
`iv
`
`Petrella v. Metro-Goldwyn-Mayer, Inc.,
`572 U.S. 663 (2014) .................................................. 4
`
`Reading Co. v. Koons,
`271 U.S. 58 (1926) .................................................... 5
`
`Samantar v. Yousuf,
`560 U.S. 305 (2010) ................................................ 17
`
`Sohm v. Scholastic Inc.,
`959 F.3d 39 (2d Cir. 2020) ....................................... 4
`
`Sosa v. Alvarez–Machain,
`542 U.S. 692 (2004) ................................................ 13
`
`South Sea Co. v. Wymondsell,
`(1732) 24 Eng. Rep. 1004 (Ch.) .............................. 20
`
`Starz Entm’t, LLC v. MGM Domestic
`Television Distrib., LLC,
`39 F.4th 1236 (9th Cir. 2022) .................................. 4
`
`Sw. Airlines Co. v. Saxon,
`596 U.S. 450 (2022) .................................................. 9
`
`Taylor v. Meirick,
`712 F.2d 1112 (7th Cir. 1983) ................................ 19
`
`Torres v. Lynch,
`578 U.S. 452 (2016) .................................................. 5
`
`United States v. McFadden,
`13 F.3d 463 (1st Cir. 1994) .................................... 15
`
`United States v. Wong Kim Ark,
`169 U.S. 649 (1898) ................................................ 12
`
`Urie v. Thompson,
`337 U.S. 163 (1949) .............................. 18, 19, 21, 23
`
`
`
`
`
`
`
`
`
` v
`
`
`
`Warner Chappell Music v. Sherman Nealy,
`2023 WL 6319656 (U.S. Sept. 29, 2023) .................. 4
`
`Warren Freedenfeld Assocs. v. McTigue,
`531 F.3d 38 (1st Cir. 2008) ...................................... 4
`
`William A. Graham Co. v. Haughey,
`568 F.3d 425 (3d Cir. 2009) ........................... 4, 6, 14
`
`Zoltek Corp. v. United States,
`672 F.3d 1309 (Fed. Cir. 2012) .............................. 14
`
`
`
`Congressional Record
`
`103 Cong. Rec. 12505 (July 23, 1957) ......................... 8
`
`H.R. 8873 (Willis Bill),
` 85th Cong., 1st Sess. (July 23, 1957) .. 7-9, 11-12, 14
`
`H.R. Rep. No. 94-1476 (1976) .................................... 15
`
`H.R. Rep. No. 2419 (1956) ........................................ 22
`
`Hearing Before the Subcommittee on Patents,
`Trademarks, and Copyrights (June 29, 1960) ........ 9
`
`S. 22, 94th Cong. (Feb. 19, 1976) .............................. 10
`
`S. 2075 (O’Mahoney-Wiley-Hart Bill),
`86th Cong., 1st Sess. (May 28, 1959) ....................... 9
`
`S. Rep. No. 85-1014 (1957) ........................................ 23
`
`
`
`Statutes
`
`21 Jac. I. ch. 16, §§ II, VII (1623) .............................. 20
`
`28 U.S.C. 1498 ........................................... 2, 14, 15, 16
`
`
`
`
`
`
`
`
`
`vi
`
`Copyright Act
`17 U.S.C. 101 et seq. ................... 1-3,5-7, 9-17, 21-22
`
`Digital Millenium Copyright Act
`17 U.S.C. 1301 et seq. ....................................... 11, 16
`
`
`
`Other Authorities
`
`39 J. Pat. Off. Soc’y 596 (1957) ................................... 7
`
`Antonin Scalia & Bryan A. Garner, Reading
`Law: The Interpretation of Legal Texts
`(2012) ........................................................................ 9
`
`David E. Harrell, Difficulty Counting
`Backwards from Three: Conflicting
`Interpretations of the Statute of Limitations
`on Civil Copyright Infringement, 48 SMU
`L. Rev. 669 (1995)..................................................... 6
`
`Report of the Register of Copyrights (1958) ............... 8
`
`
`
`
`
`
`
`
`
` 1
`
`
`
`INTEREST OF AMICUS CURIAE1
`
`Amicus curiae Ralph Oman served as the Register
`of Copyrights from 1985 to 1993. As Register, he ad-
`vised Congress on copyright policy and testified more
`than forty times on proposed copyright legislation and
`treaties, and on the state of the U.S. Copyright Office.
`Before then, Mr. Oman served on the staff of the Sen-
`ate Subcommittee on Patents, Trademarks, and Cop-
`yrights, including as Chief Counsel from 1982 to 1985.
`He was personally involved in the final stages of the
`drafting and passage of the Copyright Act of 1976, 17
`U.S.C. 101 et seq. As Register, Mr. Oman was respon-
`sible for helping transition U.S. copyright law from
`the analog to the digital age and was part of the gov-
`ernment team that convinced the world community to
`protect computer software as a literary work under
`national copyright laws. Mr. Oman recently retired
`from the George Washington University Law School,
`where he served as the Pravel, Hewitt, Kimball, and
`Kreiger Professorial Lecturer in Intellectual Property
`and Patent Law and taught copyright law for thirty
`years.
`
`Mr. Oman now writes to urge this Court to decide
`only the narrow, remedies-focused question directed
`by the Question Presented, and not to opine on the
`propriety of the discovery-accrual rule in Section
`507(b) of the Copyright Act. If, however, the Court
`does opine on the propriety of the discovery-accrual
`
`
`
`1 No counsel for a party authored this brief in whole or in part,
`and no person other than Amicus’ counsel made a monetary con-
`tribution to fund the preparation or submission of this brief.
`
`
`
`
`
`
`
`
`
` 2
`
`
`
`rule, it should affirm that Section 507(b) incorporates
`a discovery rule. Particularly given his prior service in
`the development of U.S. copyright law, Mr. Oman has
`a direct interest in the proper resolution of the issues
`presented by this case.
`
`SUMMARY OF THE ARGUMENT
`
`The text and history of U.S. copyright statutes sup-
`port applying a “discovery rule” under Section 507(b).
`Since 1957, when Congress first enacted a statute of
`limitations for civil cases of copyright infringement in
`Section 507(b), Congress has specifically considered
`two very different textual approaches: a broadly writ-
`ten accrual clause on the one hand, and a narrowly
`written clause that expressly embodies a three-year
`look-back limitation on recovery. The broad language
`appears in Section 507(b). The narrow look-back lan-
`guage appears in a handful of other specific provisions
`of copyright law, but not in Section 507(b).
`
`That choice must be given meaning. These few
`other statutes represent a clear statutory exception to
`the broad accrual rule in Section 507(b). And these dif-
`fering statutes are not the result of an oversight. In
`1957, Congress specifically considered this narrowly
`written look-back clause for a proposed portion of the
`Copyright Act, but Congress chose not to include that
`language in Section 507(b). Since 1957, Congress has
`enacted narrowly written look-back clauses in other
`copyright statutes, but Congress has never amended
`the broad language in Section 507(b).
`
`
`
`
`
`
`
`
`
` 3
`
`
`
`These instances where Congress enacted an ex-
`press look-back period triggered by the date of in-
`fringement reflected a specific balance of policy con-
`siderations; in each instance, Congress expanded cop-
`yright protection in a targeted way, such as by waiv-
`ing sovereign immunity for suits against the govern-
`ment. But that expansion came at a price: a limitation
`on the ability to recover for infringement.
`
`Petitioners brush past the textual distinctions
`throughout U.S. copyright statutes and instead ask
`this Court to conclude that Section 507(b) has the
`same meaning as language that Congress specifically
`rejected for Section 507(b) and has specifically enacted
`in other provisions of copyright law. That rewriting of
`the statute must be rejected.
`
`Petitioners also misconstrue the common-law ori-
`gins of the discovery rule. As this Court’s cases show,
`claim “accrual” traditionally and conventionally refers
`to the moment when the plaintiff had notice of the
`claim. That rule does not depend on whether the
`plaintiff suffers any specific harm such as fraud or dis-
`ease, but instead turns on whether the injury is latent
`and might not be readily apparent. As the Courts of
`Appeals have recognized for decades, that framework
`applies comfortably to copyright infringement, which
`can be difficult to detect.
`
`Accordingly, contrary to Petitioners’ main conten-
`tion, Section 507(b) is not an example of courts sup-
`posedly inventing an unjustified doctrine that the dis-
`covery rule applies when the statute is silent on the
`issue—the alleged bad wine of recent vintage. To the
`
`
`
`
`
`
`
`
`
` 4
`
`
`
`contrary, the Copyright Act is not silent on the issue,
`and this appeal is the wrong vehicle to make sweeping
`pronouncements about the discovery-accrual rule.
`
`ARGUMENT
`
`The Question Presented asks “[w]hether, under
`the discovery accrual rule applied by the circuit courts
`and the Copyright Act’s statute of limitations . . . a
`copyright plaintiff can recover damages for acts that
`allegedly occurred more than three years before the
`filing of a lawsuit.” Eleven federal courts of appeals
`apply the discovery-accrual rule to the Copyright Act.2
`
`As Petitioners recognize, this Question Presented
`“assumes that the Copyright Act contains a ‘discovery
`accrual rule applied by the circuit courts.’” Pet’r Br.
`
`
`
`2 See Warren Freedenfeld Assocs. v. McTigue, 531 F.3d 38, 44 (1st
`Cir. 2008); Sohm v. Scholastic Inc., 959 F.3d 39, 50 (2d Cir. 2020);
`William A. Graham Co. v. Haughey, 568 F.3d 425, 433-37 (3d Cir.
`2009); Hotaling v. Church of Jesus Christ of Latter-Day Saints,
`118 F.3d 199, 202 (4th Cir. 1997); Martinelli v. Hearst Newspa-
`pers, LLC, 65 F.4th 231, 233 (5th Cir. 2023); Bridgeport Music,
`Inc. v. Rhyme Syndicate Music, 376 F.3d 615, 621 (6th Cir. 2004);
`Gaiman v. McFarlane, 360 F.3d 644, 653 (7th Cir. 2004); Com-
`cast of Ill. X v. Multi-Vision Elecs., Inc., 491 F.3d 938, 944 (8th
`Cir. 2007); Starz Entm’t, LLC v. MGM Domestic Television Dis-
`trib., LLC, 39 F.4th 1236, 1238 (9th Cir. 2022); Cooper v. NCS
`Pearson, Inc., 733 F.3d 1013, 1015 (10th Cir. 2013); Nealy v.
`Warner Chappell Music, Inc., 60 F.4th 1325, 1330 (11th Cir.
`2023), cert. granted in part sub nom. Warner Chappell Music v.
`Sherman Nealy, No. 22-1078, 2023 WL 6319656 (U.S. Sept. 29,
`2023). Although Petitioners and amici suggest the discovery-ac-
`crual rule should perhaps depend on whether the claim concerns
`copyright ownership or copyright infringement, nothing in the
`text of the Copyright Act supports drawing such a distinction.
`
`
`
`
`
`
`
`
`
` 5
`
`
`
`31. Petitioners take aim at that assumption in the bal-
`ance of its brief, suggesting that this Court’s decision
`in Petrella v. Metro-Goldwyn-Mayer, Inc. “compel[s]”
`discarding the discovery rule, id. at 13, even though
`Petrella expressly says otherwise, 572 U.S. 663, 670
`n.4 (2014). But Petitioners’ gambit to have this Court
`discard the discovery-accrual rule is misguided and ig-
`nores key textual, structural, and historical evidence
`that demonstrates that this Court’s instruction to as-
`sume that the discovery rule applies was entirely
`proper. This Court should not disturb the lower courts’
`unanimous application of the discovery-accrual rule
`for federal copyright infringement claims.
`
`I. The Text, Structure, And History Of The
`Copyright Act Instructs That A Discovery
`Rule Is Appropriate
`
`Petitioners’ invitation to discard the discovery rule
`turns nearly entirely on their argument concerning in-
`terpretation of the word “accrues.” Pet’r Br. 17. Peti-
`tioners’ mode of analysis misses the mark.
`
`Rather, in interpreting Section 507(b) of the Copy-
`right Act, this Court “must, as usual, interpret the rel-
`evant words not in a vacuum, but with reference to the
`statutory context,” Torres v. Lynch, 578 U.S. 452, 459
`(2016) (interpreting the statutory phrase, “described
`in”), as well as by “reference to the statutory . . . ‘struc-
`ture, history, and purpose,’” Abramski v. United
`States, 573 U.S. 169, 179 (2014) (interpreting “per-
`son”) (quoting Maracich v. Spears, 570 U.S. 48, 60
`(2013) (interpreting “in connection with”)). That is be-
`
`
`
`
`
`
`
`
`
` 6
`
`
`
`cause, as this Court has instructed, “the word ‘ac-
`crued’” lacks “any definite technical meaning which by
`itself would enable us to say whether the statutory pe-
`riod begins to run at one time or the other; but the
`uncertainty is removed when the word is interpreted
`in the light of the general purposes of the statute and
`of its other provisions[.]” Reading Co. v. Koons, 271
`U.S. 58, 61-62 (1926).
`
`On this score, the Copyright Act’s “structure, his-
`tory, and purpose,” Abramski, 573 U.S. at 179, all
`speak with a single voice: Section 507(b)’s three-year
`statute of limitations accrues, or begins to run, “when
`the plaintiff discovers, or with due diligence should
`have discovered, the injury that forms the basis for the
`claim.” William A. Graham Co. v. Haughey, 568 F.3d
`425, 433 (3d Cir. 2009).
`
`A. The Text And History Of The Act Suggests
`A Discovery Rule
`
`The Copyright Act, enacted in 1909, prescribed a
`three-year statute of limitations for criminal copy-
`right infringement; however, the statute did not set
`forth a limitations period for civil infringement ac-
`tions. See David E. Harrell, Difficulty Counting Back-
`wards from Three: Conflicting Interpretations of the
`Statute of Limitations on Civil Copyright Infringe-
`ment, 48 SMU L. Rev. 669, 671 (1995). Thus, “[i]n civil
`infringement actions, federal courts continued to ap-
`ply the statutes of limitations of the state in which
`suit was filed.” Ibid.
`
`
`
`
`
`
`
`
`
` 7
`
`
`
`In 1957, Congress amended the Copyright Act of
`1909 to provide a three-year limitations period for
`civil copyright infringement: “No civil action shall be
`maintained under the provisions of this title unless it
`is commenced within three years after the claim ac-
`crued.” 17 U.S.C. 507(b). Petitioners say that, at the
`time of this amendment, Congress “kn[ew] how to en-
`act a broad discovery rule when it wishes,” and cite in
`support a hodgepodge of statutes that have nothing to
`do with copyright infringement. Pet’r Br. 20-21 (citing,
`e.g., antitrust and customs laws). But this argument
`ignores key provisions germane to copyright infringe-
`ment—and indeed, part of the proposed 1957 amend-
`ments to the Act itself—that show, beyond any doubt,
`that Congress understood Section 507(b) to encom-
`pass a discovery-accrual rule.
`
`1. The most compelling evidence on this front con-
`cerns Congress’s decades-long debates over whether
`to extend copyright protection to a narrow type of
`work, and the statutes of limitations Congress consid-
`ered in those proposed bills at the same time Congress
`drafted Section 507(b).
`
`Going back to the early 20th century, Congress re-
`peatedly considered extending copyright protection to
`designs of useful articles and other industrial designs,
`such as designs of chairs or lamps. For example, under
`pre-1957 and current law, the design of a table lamp
`is not copyrightable, but if the base of the lamp is a
`statuette in the shape of dancing figures, then that
`part of the lamp is copyrightable because the base is
`either physically or conceptually separable from the
`
`
`
`
`
`
`
`
`
` 8
`
`
`
`functional elements of the lamp. Mazer v. Stein, 347
`U.S. 201, 219 (1954); see Carol Barnhart Inc. v. Econ-
`omy Cover Corp., 773 F.2d 411, 416 (2d Cir. 1985). Be-
`ginning in 1914, bills were introduced in Congress to
`extend protection to industrial designs, but those bills
`were met with resistance.
`
`Highly relevant to this appeal is a bill introduced
`in 1957 by Congressman Edwin Willis. That 1957 bill
`sought to extend copyright protection to designs of
`useful articles, as well as to provide a statute of limi-
`tations for civil copyright infringement actions con-
`cerning such designs. See H.R. 8873 (Willis Bill), 85th
`Cong., 1st Sess. (July 23, 1957) (reprinted in 39 J. Pat.
`Off. Soc’y 596 (1957)). As Congressman Willis ex-
`plained, H.R. 8873 was to amend the Copyright Act
`itself: “the bill contains a section in relation to the cop-
`yright law and an amendment of the copyright law—
`title 17, United States Code.” 103 Cong. Rec. 12505
`(July 23, 1957). This 1957 bill was a major event—its
`design-protection provision “had been developed over
`a period of 3 years by the Coordinating Committee on
`Designs of the National Council for Patent Law Asso-
`ciations, with the Copyright and Patent Offices partic-
`ipating in drafting and discussing the measure.” See
`Report of the Register of Copyrights, at 7 (1958),
`https://www.copyright.gov/reports/annual/archive/ar-
`1958.pdf. The design provision of the bill ultimately
`did not pass; however, Congress did enact Section
`507(b) (71 Stat. 633), which is the relevant statute of
`limitations for civil copyright infringement actions to-
`day.
`
`
`
`
`
`
`
`
`
` 9
`
`
`
`The Willis Bill would have provided only a diluted
`version of copyright protection for designs of useful ar-
`ticles. For example, the term of protection was limited
`to five to ten years. H.R. 8873, Section 5.
`
`The more important limitation, for present pur-
`poses, was that the design provision of the 1957 bill
`contained express language that would limit relief for
`infringement to acts in the three years pre-dating the
`complaint: “No recovery . . . shall be had for any in-
`fringement committed more than three years prior to
`the filing of the complaint.” Id. at Section 23(b). This
`language did two things. First, it stated that the date
`the “infringement” was “committed”—not the date of
`discovery—is the trigger for the limitations period.
`Second, it limited damages to the three years predat-
`ing the complaint.
`
`This language was not incorporated into the text of
`Section 507(b), even though Congress was considering
`that text simultaneously. If Congress had intended in
`1957 for Section 507(b) to embody a date-of-infringe-
`ment accrual rule or a three-year look-back, it knew
`how to revise Section 507(b) to say exactly that. In-
`stead, Congress retained the much broader formula-
`tion in Section 507(b). That choice should be given
`meaning. See Sw. Airlines Co. v. Saxon, 596 U.S. 450,
`457-58 (2022) (discussing the meaningful-variation
`canon) (quoting Antonin Scalia & Bryan A. Garner,
`Reading Law: The Interpretation of Legal Texts 170
`(2012)).
`
`Proving the point, just two years later, the design
`provision of the 1957 Willis Bill was reintroduced as a
`
`
`
`
`
`
`
`
`
`10
`
`stand-alone measure with minor amendments in the
`Senate, where it received a hearing before the Patent,
`Trademark and Copyright Subcommittee. S. 2075
`(O’Mahoney-Wiley-Hart Bill), 86th Cong., 1st Sess.
`(May 28, 1959). This bill, S. 2075, like its predecessor,
`contained the same limitation—no recovery would be
`available for “any infringement committed more than
`three years prior to the filing of the complaint.” See id.
`at Section 23(b) (reprinted in Hearing Before the Sub-
`committee on Patents, Trademarks, and Copyrights
`(June 29, 1960)). By this time, of course, Section
`507(b) had been enacted. If Petitioners were correct
`that Section 507(b) already embodied a date-of-com-
`mission rule and a three-year look-back, then S. 2075
`would have simply used the language from Section
`507(b). But S. 2075 did not do that. Instead, S. 2075
`proposed a different and narrower right of recovery for
`holders of this potential new form of copyright. Thus,
`in 1957 and again in 1959, Congress was aware of the
`difference between the broad accrual language in Sec-
`tion 507(b) and the narrow look-back language Con-
`gress was considering for design copyrights. These
`drafting choices should be given meaning.
`
`This history repeated itself when Congress next
`examined the Copyright Act—a similar version of this
`design-protection bill as a stand-alone title of the com-
`prehensive copyright reform legislation (94th Con-
`gress, S. 22) passed the Senate in February 1976. Ami-
`cus had a front-row seat, literally, during such pas-
`sage, sitting in the jump seat in the first row next to
`Senator Hugh Scott of Pennsylvania, who was the co-
`floor manager of S. 22. This design-protection title was
`
`
`
`
`
`
`
`
`
`11
`
`subsequently stripped out of S. 22 by the House, which
`deemed copyright protection for industrial designs un-
`desirable. See Carol Barnhart Inc., 773 F.2d at 416-17
`n.4. Even so, it should be noted that the dropped pro-
`vision contained the same date-of-infringement and
`three-year look-back language as the failed 1957 and
`1959 bills. S. 22, Section 222(b). It should also be noted
`that Congress, in finally enacting the general revision
`in 1976, albeit without the design protection title, was
`careful not to change the broad language of Section
`507(b) or to adopt the limitation language of the in-
`dustrial design title.
`
`The terminus of this history was in 1998, when
`Congress amended the Copyright Act to include copy-
`right protection for designs of boat hulls—the Vessel
`Hull Design Protection Act (“VHDPA”). See Digital
`Millennium Copyright Act, Pub. L. No. 105-304, tit. V,
`112 Stat. 2860, 2905 (1998), codified at 17 U.S.C. 1301
`et seq. The VHDPA used as a template the design bills
`that Congress considered in 1957, 1959, and 1976; the
`text of the VHDPA grants copyright protection to “an
`original design of a useful article” but then defines
`“useful article” to mean boat hulls. 17 U.S.C.
`1301(a)(1), (b)(2).3 The VHDPA contains a “Statute of
`
`
`
`3 The text of the core provisions of the 1957 Willis Bill and the
`VHDPA are remarkably similar. The 1957 Willis Bill states: “The
`author of an original ornamental design of a useful article, or his
`legal representatives or assigns, may secure the protection pro-
`vided by this Act upon complying with and subject to the provi-
`sions hereof. An ornamental design of a useful article, hereinaf-
`ter referred to as ‘design,’ is a design of the article that includes
`features of shape, pattern, configuration, or ornamentation in-
`
`
`
`
`
`
`
`
`
`12
`
`Limitations” that expressly bars recovery “for any in-
`fringement committed more than 3 years before the
`date on which the complaint is filed.” 17 U.S.C.
`1323(c).4 Again, Congress did not amend Section
`507(b) to add any look-back provision.
`
`Congress’s decades-long efforts to amend the Cop-
`yright Act to grant protection for designs of useful ar-
`ticles is precisely the type of statutory history that
`sheds light on statutory meaning. See United States v.
`Wong Kim Ark, 169 U.S. 649, 653-54 (1898) (“In con-
`struing any act of legislation, . . . regard is to be had,
`not only to all parts of the act itself, and of any former
`act of the same lawmaking power, of which the act in
`question is an amendment, but also to the condition
`and to the history of the law[.]”).
`
`Here, that meaning is clear. There was no reason
`to draft the date-of-infringement and look-back provi-
`sion in the 1957 bill and enact them in the VHDPA if
`Section 507(b)’s much broader language already em-
`bodied those rules. If Congress intended claims under
`Section 507(b) to “accrue” upon infringement rather
`
`
`
`tended to give the article an attractive, artistic, or distinctive ap-
`pearance and not merely utilitarian or functional in purpose.”
`H.R. 8873, Section 1(a)–(b)(1). The VHDPA states: “The designer
`or other owner of an original design of a useful article which
`makes the article attractive or distinctive in appearance to the
`purchasing or using public may secure the protection provided by
`this chapter upon complying with and subject to this chapter.” 17
`U.S.C. 1301(a)(1).
`
`4 Section 507(b) of Title 17 governs the timeliness of any civil ac-
`tion maintained under Chapter 13 (i.e., the VHDPA), for the rea-
`sons explained at Resp. Br. n.3.
`
`
`
`
`
`
`
`
`
`13
`
`than discovery, recovery would always be limited to
`acts committed in the three years predating the com-
`plaint, and the text of the look-back provision would
`have no meaning. Petitioners’ interpretation “thereby
`offend[s] the well-settled rule that all parts of a stat-
`ute, if possible, are to be given effect.” American Tex-
`tile Mfrs. Inst., Inc. v. Donovan, 452 U.S. 490, 513
`(1981).
`
`There is only one way to give meaning to the lan-
`guage in the Willis Bill, S. 2075, and ultimately the
`VHDPA and to reconcile it with Section 507(b). See
`Muscarello v. United States, 524 U.S. 125, 135 (1998)
`(interpreting “carry” and explaining interpretation of
`“the statutory scheme” must “make[] sense”). In-
`fringement claims accrue upon discovery under Sec-
`tion 507(b), but claims under the VHDPA accrue upon
`infringement—a specific statutory exception that
`proves the rule.
`
`2. The VHDPA and its predecessors dating back to
`1957 are not outliers.
`
`First, there are textual clues within the Copyright
`Act that point to the same result. For one, Section
`504(d), enacted at the same time as the VHDPA, pro-
`vides enhanced damages for certain infringement of
`the public performance right found in Section 110(5).
`17 U.S.C. 504(d). Section 504(d) strikes a unique bal-
`ance—it increases the magnitude of damages for one
`type of infringement but with a cap on the duration,
`limiting such damages to “the preceding period of up
`to 3 years.” 17 U.S.C. 504(d). Again, if Section 507(b)
`
`
`
`
`
`
`
`
`
`14
`
`already imposed that cap, then Section 504(d) would
`be surplusage.
`
`Moreover, Section 507(a) of the Copyright Act—
`which deals with criminal infringement—measures
`the limitations period from the time the “cause of ac-
`tion arose.” (emphasis added). That language embod-
`ied an injury-accrual rule. McMahon v. United States,
`342 U.S. 25-26, 27 (1951) (discussing similar language
`in the Admiralty Act). Section 507(b), however,
`measures the limitations from the period “after the
`claim accrued.” (emphasis added). This distinction is
`meaningful. “[W]hen the legislature uses certain lan-
`guage in one part of the statute and different language
`in another, the court assumes different meanings
`were intended.” Sosa v. Alvarez–Machain, 542 U.S.
`692, 711 n.9 (2004) (quotation omitted). If the drafters
`of Section 507(b) had intended to impose an injury-ac-
`crual rule, they simply would have borrowed the lan-
`guage to that effect from Section 507(a). But they did
`not, and the better interpretation of Section 507(b) is
`that it embodies a more flexible rule that triggers the
`statute of limitations based on when the copyright
`holder knew or should have known it had a claim. Wil-
`liam A. Graham Co., 568 F.3d at 434-35.
`
`Second, other statutory provisions of copyright law
`tell the same story.
`
`A jurisdiction statute, 28 U.S.C. 1498(b), strips the
`government of sovereign immunity for copyright in-
`fringement and establishes exclusive jurisdiction in
`the Court of Federal Claims for copyright suits
`against the government. Zoltek Corp. v. United States,
`
`
`
`
`
`
`
`
`
`15
`
`672 F.3d 1309, 1319 (Fed. Cir. 2012). Congress added
`Section 1498(b) in 1960—the prior version of the stat-
`ute covered only patent claims—and it remains in ef-
`fect today. See 74 Stat. 855. Section 1498(b) contains
`the same look-back limitation that Congress consid-
`ered in the 1957 Willis Bill and eventually enacted in
`the VHDPA in 1998: “Except as otherwise provided by
`law, no recovery shall be had for any infringement of
`a copyright covered by this subsection committed
`more than three years prior to the filing of the com-
`plaint or counterclaim for infringement in the action .
`. . .” 28 U.S.C. 1498(b). As with the VHDPA and its
`predecessors, as well as Section 504(d), Congress’s
`need to specify a look-back limitation suggests that
`discovery accrual is the default rule for copyright in-
`fringement under Section 507(b).
`
`Although not part of the Copyright Act itself, Sec-
`tion 1498 deals expressly with copyright infringe-
`ment, and it was enacted in 1960—just a few years
`after Congress added Section 507(b) to the Copyright
`Act. The “provisions’ parallel text and purposes coun-
`sel in favor of interpreting the two provisions consist-
`ently,” Lawson v. FMR LLC, 571 U.S. 429, 459 (2014),
`and the only way to reconcile the language of private-
`party accrual under Section 507(b) and public-party
`accrual under Section 1498(b) is to interpret Section
`507(b)’s limitations period as accruing upon discovery,
`not injury. See United States v. McFadden, 13 F.3d
`463, 467 (1st Cir. 1994) (Breyer, C.J., dissenting)
`(“[C]ourts normally try to read language in different,
`but related, statutes, so as best to reconcile those stat-
`utes[.]”).
`
`
`
`
`
`
`
`
`
`16
`
`While considering various amendments to the Cop-
`yright Act in 1976, Congress could have amended Sec-
`tion 507(b) to borrow the text of Section 1498(b) and
`extend it to
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
