IN THE SUPREME COURT OF THE UNITED STATES
`
`_______________
`
`
`No. 23A
`
`MERRICK B. GARLAND, ATTORNEY GENERAL, AND
`SHIRA PERLMUTTER, IN HER OFFICIAL CAPACITY AS THE REGISTER OF
`COPYRIGHTS OF THE U.S. COPYRIGHT OFFICE, APPLICANTS
`
`v.
`
`VALANCOURT BOOKS, LLC
`_______________
`
`APPLICATION FOR AN EXTENSION OF TIME
`WITHIN WHICH TO FILE A PETITION FOR A WRIT OF CERTIORARI
`TO THE UNITED STATES COURT OF APPEALS
`FOR THE DISTRICT OF COLUMBIA CIRCUIT
`
`_______________
`
`
`
`
`
`Pursuant to Rules 13.5 and 30.3 of the Rules of this Court,
`
`the Solicitor General respectfully requests a 30-day extension of
`
`time, to and including April 12, 2024, within which to file a
`
`petition for a writ of certiorari to review the judgment of the
`
`United States Court of Appeals for the District of Columbia Circuit
`
`in this case. The court of appeals entered its judgment on August
`
`29, 2023, and denied a petition for rehearing on December 14, 2023.
`
`Unless extended, the time within which to file a petition for a
`
`writ of certiorari will expire on March 13, 2024. The jurisdiction
`
`of this Court would be invoked under 28 U.S.C. 1254(1). Copies of
`
`the opinion of the court of appeals, which is reported at 82 F.4th
`
`1222, and the orders denying rehearing are attached. App, infra,
`
`1a-30a.
`
`

`

`2
`
`1.
`
`This case concerns a longstanding requirement that the
`
`owners of copyrighted published works deposit two copies of the
`
`work with the Library of Congress. 17 U.S.C. 407. As amended in
`
`1988, Section 407 of Title 17 states that except as exempted by
`
`the Register of Copyrights, “the owner of copyright or of the
`
`exclusive right of publication in a work published in the United
`
`States shall deposit, within three months after the date of such
`
`publication * * * two complete copies of the best edition” of
`
`the work with the Copyright Office “for the use or disposition of
`
`the Library of Congress.” 17 U.S.C. 407(a)-(b). The law does not
`
`require deposit of the work before copyright protection vests;
`
`copyright protection attaches to copyrightable works automatically
`
`upon their fixation in a tangible medium of expression. 17 U.S.C.
`
`102(a).
`
`If a copyright owner does not deposit copies of a work after
`
`publication (and if suitable copies have not otherwise been
`
`delivered to the Office through registration), the Copyright
`
`Office may make a written demand for the deposit upon the publisher
`
`or the copyright owner. If a demand has been made, the copyright
`
`owner or publisher has three months to comply before it is subject
`
`to fines and costs for the Library to purchase the work. 17 U.S.C.
`
`407(d).
`
`2.
`
`Respondent Valancourt Books is a book publisher in
`
`Richmond, Virginia. In June 2018, the Copyright Office sent an
`
`email to respondent requesting deposit of 341 published books.
`
`
`
`

`

`3
`
`C.A. App. 122-123, 126-132. The request included specific notices
`
`for deposit of each work, and stated that if respondent was unable
`
`to supply any individual book, it should return the relevant notice
`
`with a written explanation. Id. at 122-123. Respondent responded
`
`to the demand stating that it did not keep excess physical copies
`
`of its books because it relied on a print-on-demand business model
`
`and that printing and shipping the books would be cost-prohibitive.
`
`Id. at 123, 133-135. Respondent also stated that it had provided
`
`some of the works to the Library in connection with a voluntary
`
`deposit program. Id. at 133-135. The Copyright Office later sent
`
`respondent a new letter with a revised demand reducing the number
`
`of requested works and setting new dates for compliance. Id. at
`
`141.
`
`Respondent subsequently filed this suit in the United States
`
`District Court for the District of Columbia. Respondent alleged
`
`that the requirement to deposit copies of new copyrightable works
`
`is an unconstitutional taking of private property under the Fifth
`
`Amendment and a burden on freedom of speech in violation of the
`
`First Amendment. The district court rejected respondent’s
`
`arguments, granting summary judgment for applicants on the ground
`
`that the Copyright Act confers a statutory benefit that is
`
`conditioned on the receipt of two copies of the work and thus does
`
`not run afoul of the Constitution. C.A. App. 185. The court
`
`explained that “[p]ublishers are not required to make the deposit
`
`in order to print books or to sell them; the obligation is a
`
`
`
`

`

`4
`
`condition of the receipt of the governmental benefit of copyright
`
`protection.” Id. at 187. The district court also rejected
`
`respondent’s First Amendment claim. Id. at 198.
`
`3.
`
`The court of appeals reversed. App., infra, 1a-28a.
`
`The court held that the mandatory deposit requirement violates the
`
`Just Compensation Clause because it allows “the government [to]
`
`directly appropriate[] private property for its own use.” Id. at
`
`13a (quoting Tyler v. Hennepin Cty., 143 S. Ct. 1369, 1376 (2023)).
`
`The court rejected the government’s argument that the deposit
`
`requirement represents a “voluntary exchange for a government
`
`benefit.” Id. at 14a. The court also rejected the government’s
`
`argument that the mandatory deposit requirement was permissible
`
`because copyright owners can “disavow copyright protection and
`
`thereby avoid the deposit requirement.” Id. at 20a. Because the
`
`court of appeals found that the mandatory deposit requirement
`
`violates the Just Compensation Clause, it did not address
`
`respondent’s First Amendment claim.
`
`4.
`
`The Solicitor General has not yet determined whether to
`
`file a petition for a writ of certiorari in this case. Additional
`
`time is needed for further consultation within the Department of
`
`Justice and with the Copyright Office and Library of Congress
`
`regarding the potential legal and practical ramifications of the
`
`court of appeals’ decision. Additional time is also needed, if a
`
`petition is authorized, to permit its preparation and printing.
`
`
`
`

`

`
`
`Respectfully submitted.
`
`5
`
`
`
`
`
`
`
`FEBRUARY 2024
`
`
`ELIZABETH B. PRELOGAR
` Solicitor General
` Counsel of Record
`
`
`
`

`

`APPENDIX
`
`
`Court of appeals opinion (Aug. 29, 2023)....................1a
`Court of appeals orders denying applicants’ petition for
`rehearing (Dec. 14, 2023) ................................29a
`
`
`
`

`

`USCA Case #21-5203 Document #2014518
`
`Filed: 08/29/2023 Page 1 of 28
`
`United States Court of Appeals
`FOR THE DISTRICT OF COLUMBIA CIRCUIT
`
`Argued October 13, 2022
`
`Decided August 29, 2023
`
`No. 21-5203
`
`VALANCOURT BOOKS, LLC,
`APPELLANT
`
`v.
`
`MERRICK B. GARLAND, ATTORNEY GENERAL AND SHIRA
`PERLMUTTER, IN HER OFFICIAL CAPACITY AS THE REGISTER OF
`COPYRIGHTS OF THE U.S. COPYRIGHT OFFICE,
`APPELLEES
`
`Appeal from the United States District Court
`for the District of Columbia
`(No. 1:18-cv-01922)
`
`Robert J. McNamara argued the cause for appellant. With
`him on the briefs were Jeffrey H. Redfern and James D.
`Jenkins.
`
`Michael J. Mazzone was on the brief for amici curiae Zvi
`S. Rosen and Brian L. Frye in support of appellant.
`
`Jacqueline C. Charlesworth was on the brief for amicus
`curiae Association of American Publishers, Inc. in support of
`appellant.
`
`(1a)
`
`

`

`USCA Case #21-5203 Document #2014518
`
`Filed: 08/29/2023 Page 2 of 28
`
`2
`David Bookbinder was on the brief for amicus curiae the
`Niskanen Center in support of appellant.
`
`Laura E. Myron, Attorney, U.S. Department of Justice,
`argued the cause for appellees. With her on the brief were
`Brian M. Boynton, Principal Deputy Assistant Attorney
`General, and Daniel Tenny, Attorney.
`
`Jonathan Band and Erik Stallman were on the brief for
`amici curiae American Library Association, et al. in support of
`appellees.
`
`Before: SRINIVASAN, Chief Judge, HENDERSON, Circuit
`Judge, and EDWARDS, Senior Circuit Judge.
`
`Opinion for the Court filed by Chief Judge SRINIVASAN.
`
`SRINIVASAN, Chief Judge: Under Section 407 of the
`Copyright Act, the owner of the copyright in a work must
`deposit two copies of the work with the Library of Congress
`within three months of its publication. The Copyright Office
`enforces Section 407’s deposit requirement by issuing demand
`letters informing noncomplying copyright owners that they
`must either deposit copies or pay a fine.
`
`In June 2018, the Copyright Office sent a letter to
`Valancourt Books, LLC, an independent press based in
`Richmond, Virginia, demanding physical
`copies of
`Valancourt’s published books on the pain of fines. Valancourt
`protested that it could not afford to deposit physical copies and
`that much of what it published was in the public domain. In
`response, the Office narrowed the list of demanded works but
`continued to demand that Valancourt deposit copies of its
`books with the Library of Congress or otherwise face a fine.
`
`2a
`
`

`

`USCA Case #21-5203 Document #2014518
`
`Filed: 08/29/2023 Page 3 of 28
`
`3
`Valancourt then brought this action against the Register of
`Copyrights and the Attorney General. Valancourt challenges
`the application of Section 407’s deposit requirement against it
`as an unconstitutional taking of its property in violation of the
`Fifth Amendment and an invalid burden on its speech in
`violation of the First Amendment. The district court granted
`summary judgment to the government on both claims.
`
`We conclude that Section 407, as applied by the Copyright
`Office in this case, worked an unconstitutional taking of
`Valancourt’s property. The Office demanded that Valancourt
`relinquish property (physical copies of copyrighted books) on
`the pain of fines. And because the requirement to turn over
`copies of the works is not a condition of attaining (or retaining)
`copyright protection in them, the demand to forfeit property
`cannot be justified as the conferral of a benefit—i.e., copyright
`protection—in exchange for property. Our holding relates
`solely to the Office’s demand for physical copies of
`Valancourt’s copyrighted works: we have no occasion to
`assess the Office’s offer during the litigation to accept
`electronic copies in lieu of physical copies.
`
`The Office now indicates that Valancourt could avoid
`relinquishing the property by disavowing copyright protection.
`But that ostensible option was never made known in any
`regulation, guidance, or communication, and instead was
`mentioned for the first time in this litigation. Whatever may be
`the legal significance of an option of that sort if it were costless
`and known to be available, it cannot save a demand for property
`containing no suggestion whatever of its existence.
`
`Because we conclude that Valancourt prevails on its claim
`under the Takings Clause, we do not reach its claim under the
`First Amendment, which ultimately would afford the same
`scope of relief. We reverse the district court’s grant of
`
`3a
`
`

`

`USCA Case #21-5203 Document #2014518 Filed: 08/29/2023 Page 4 of 28
`
`4
`summary judgment in the government’s favor and remand for
`the entry of judgment to Valancourt and the award of relief
`consistent with our decision.
`
`
`I.
`
`A.
`
`
`
`
`
`The Copyright Clause of the Constitution grants Congress
`the power to “promote the Progress of Science and useful Arts,
`by securing for limited Times to Authors and Inventors the
`exclusive Right to their respective Writings and Discoveries.”
`U.S. Const. art. I, § 8, cl. 8. Congress first exercised that power
`in 1790 by establishing a federal copyright regime. See
`Copyright Act of 1790, ch. 15, 1 Stat. 124. That regime has
`remained in place through the present day, even if some of its
`particulars have varied over time.
`
`
`Under the copyright laws in their current formulation,
`creators of works such as literary works, musical works, and
`graphic works enjoy copyright protection for the fruits of their
`labor. “Copyright protection subsists . . . in original works of
`authorship
`fixed
`in
`any
`tangible medium
`of
`expression . . . from which they can be perceived, reproduced,
`or otherwise communicated.” 17 U.S.C. § 102(a). Copyright
`thus accrues automatically upon creation of an original work in
`a tangible medium, and creators need not take any further
`action such as publication or registration to gain the protection.
`
`
`Copyright owners possess “exclusive rights to do and to
`authorize” certain actions, including the rights to “reproduce
`the copyrighted work in copies,” “prepare derivative works
`based upon the copyrighted work,” and “distribute copies or
`phonorecords of the copyrighted work to the public by sale or
`other transfer of ownership, or by rental, lease, or lending.” Id.
`
`
`
`4a
`
`

`

`USCA Case #21-5203 Document #2014518 Filed: 08/29/2023 Page 5 of 28
`
`5
`§ 106(1)–(3). Those rights generally last through “the life of
`the author and 70 years after the author’s death.” Id. § 302(a).
`
`
`At issue here is the mandatory deposit requirement found
`in Section 407 of the Copyright Act. Id. § 407. That provision
`states that “the owner of copyright or of the exclusive right of
`publication in a work published in the United States shall
`deposit, within
`three months after
`the date of such
`publication . . . two complete copies of the best edition” of the
`work. Id. § 407(a)(1). The “required copies . . . shall be
`deposited in the Copyright Office for the use or disposition of
`the Library of Congress.” Id. § 407(b). Because the deposit
`requirement is triggered upon “publication,” id. § 407(a),
`unpublished works are not subject to it. For most literary
`works, the Copyright Office’s regulations presently require
`deposit of only a single copy rather than two copies, although
`the Office reserves the right to request a second copy. See 37
`C.F.R. § 202.19(d)(2)(ix).
`
`
`To enforce the mandatory deposit requirement, the
`Copyright Office “may make written demand for the required
`deposit on any of the persons obligated to make the deposit
`under [Section 407(a)].” 17 U.S.C. § 407(d). If a copyright
`owner fails to make the “required deposit” within three months
`of a demand, she becomes liable for a “fine of not more than
`$250 for each work” in addition to “the total retail price of the
`copies or phonorecords demanded” (or, “if no retail price has
`been fixed, the reasonable cost to the Library of Congress of
`acquiring” those works). Id. § 407(d)(1)–(2). And if the
`copyright owner “willfully or repeatedly fails or refuses to
`comply with such a demand,” she becomes liable for an
`additional $2,500 fine. Id. § 407(d)(3). As an indication of the
`scale of Section 407’s operation, from fiscal year 2013 through
`the first quarter of fiscal year 2019, the Copyright Office
`
`
`
`5a
`
`

`

`USCA Case #21-5203 Document #2014518 Filed: 08/29/2023 Page 6 of 28
`
`6
`demanded 27,847 titles under the provision’s mandatory
`deposit requirement.
`
`Although the mandatory deposit requirement broadly
`applies to published works, the Copyright Office’s regulations
`give copyright owners an avenue to ask the Office for “special
`relief” from the requirement. See 37 C.F.R. § 202.19(e). The
`Office can also raise the possibility of special relief directly
`with those who express concerns about compliance. Joint
`Stipulations of Fact ¶ 59, J.A. 119. If granted by the Copyright
`Office, special relief can exempt copyright owners from
`Section 407’s requirements altogether or can authorize them to
`deposit a quantity or format of copies of a work different from
`the default statutory requirement of “two complete copies of
`the best edition.” See 17 U.S.C. § 407(a)(1); 37 C.F.R.
`§ 202.19(e)(1).
`
`
`B.
`
`
`
`Valancourt is an independent press that publishes rare and
`out-of-print fiction. Run out of the Richmond, Virginia, home
`of founder James Jenkins and his husband, Valancourt prints
`copies of its books “on-demand,” i.e., in response to a specific
`order or request. Although Valancourt has never deposited its
`works under Section 407—nor registered them under Section
`408, a separate provision of copyright law governing copyright
`registration, see 17 U.S.C. § 408—Valancourt places copyright
`notices in its books.
`
`
`In June 2018, Valancourt received a letter from the
`Copyright Office setting forth a demand under Section 407 for
`“one complete copy” of 341 books published by Valancourt
`“for the use or disposition of the Library of Congress.” Letter
`from Michael Lind, Copyright Off. Acquisitions Specialist, to
`James Jenkins (June 11, 2018), J.A. 130. True to the statute’s
`
`
`
`6a
`
`

`

`USCA Case #21-5203 Document #2014518 Filed: 08/29/2023 Page 7 of 28
`
`7
`terms, the Office explained that failure to comply would make
`Valancourt liable for a fine of up to $250 per work and the total
`retail price of the copies demanded, as well as an additional
`fine of $2,500 for a willful and repeated failure to comply. The
`Office clarified that Valancourt’s obligation to deposit works
`under Section 407 “exists regardless of whether copyright
`registration [pursuant to Section 408] is sought.” Id.
`
`
`Valancourt responded to the Copyright Office’s demand
`the next day. It estimated that compliance with the demand
`would cost over $2,500, and advised that, as a “very small
`publisher,” it could not afford that sum. E-mail from James
`Jenkins to Angela Coles, Copyright Off. Acquisitions Assistant
`(June 12, 2018), J.A. 134. Valancourt also observed that some
`of its books contained material in the public domain and that it
`had already deposited some works through the Cataloging-in-
`Publication program, a separate program run by the Library of
`Congress. Valancourt requested that the Copyright Office
`withdraw its demand and offered to sell copies of any of the
`listed titles to the government at cost with no markup.
`
`
`in August 2018,
`The Copyright Office responded
`maintaining its position that Valancourt was obligated to
`deposit books pursuant to Section 407. The Office explained
`that deposits for Cataloging-in-Publication did not fulfill
`Section 407’s requirements. After further research, however,
`the Office had determined that some of Valancourt’s books
`contained material exclusively in the public domain, and it thus
`narrowed the list of demanded works to 240 books. The Office
`enclosed an updated demand letter that reiterated the fines for
`failure to deposit.
`
`
`
`
`7a
`
`

`

`USCA Case #21-5203 Document #2014518 Filed: 08/29/2023 Page 8 of 28
`
`8
`C.
`
`
`
`In August 2018, Valancourt brought this action against the
`Attorney General and the Register of Copyrights. Valancourt
`sought a declaration that the application of Section 407 is
`unconstitutional under the First and Fifth Amendments, as well
`as an
`injunction against
`the provision’s enforcement.
`Valancourt contended that Section 407’s application violates
`the First Amendment because it unlawfully burdens speech and
`is overbroad, and that it also violates the Fifth Amendment
`because it represents an uncompensated taking of property.
`
`
`In March 2019, the Copyright Office reached out to
`Valancourt’s counsel in an e-mail containing the header
`“CONFIDENTIAL SETTLEMENT COMMUNICATION.”
`E-mail from Daniel Riess, Trial Attorney, Fed. Programs
`Branch, Dep’t of Just., to Robert McNamara, Counsel for
`Valancourt (Mar. 11, 2019), J.A. 173. The communication
`included an “offer, in full settlement for all of Valancourt’s
`claims, [of] permission for Valancourt to deposit the 240
`requested titles in electronic format.” Id. Invoking its
`regulatory authority to grant special relief when mandatory
`deposit would be an “unsustainable economic burden,” the
`Office explained that its grant of special relief would also
`“extend to any request by the Copyright Office for future
`publications by Valancourt.” Id.; see 17 U.S.C. § 407(c); 37
`C.F.R. § 202.19(e).
`
`
`Valancourt rejected the Copyright Office’s offer. In its
`subsequent briefing to the district court, it gave two reasons for
`its rejection. First, Valancourt objected to the idea that it would
`receive special treatment while other small publishers would
`continue to be subject to Section 407’s mandatory deposit
`requirement. Second, it did not believe it could comply with
`the offer because it likely lost electronic copies of at least some
`
`
`
`8a
`
`

`

`USCA Case #21-5203 Document #2014518 Filed: 08/29/2023 Page 9 of 28
`
`9
`of its works in part due to a home burglary. See Pl.’s Suppl.
`Br. 2–3, Valancourt Books, LLC v. Perlmutter, 554 F. Supp. 3d
`26 (D.D.C. 2021), No. 18-cv-1922.
`
`
`The parties cross-moved for summary judgment. The
`government represented that its settlement offer to accept
`electronic copies stood regardless of whether Valancourt
`agreed to settle its claims. Defs.’ Combined Memorandum in
`Supp. of Their Mot. for Summ. J. & in Opp’n to Pl.’s Cross-
`Mot. for Summ. J. at 20–21 n.8., Valancourt Books, 554 F.
`Supp. 3d 26, No. 18-cv-1922. In December 2020, the district
`court ordered supplemental briefing on whether the Copyright
`Office’s offer to accept electronic copies had mooted the
`dispute. See Order at 3, Valancourt Books, 554 F. Supp. 3d 26,
`No. 18-cv-1922. Both parties agreed that Valancourt’s
`potential rejection of the offer would not moot the dispute.
`
`
`In July 2021, the district court granted summary judgment
`in favor of the government. Valancourt Books, LLC v.
`Perlmutter, 554 F. Supp. 3d 26 (D.D.C. 2021). The court first
`concluded that the Copyright Office’s offer to accept electronic
`copies of Valancourt’s works had not mooted the dispute but
`instead had “narrowed” it to one about electronic copies. Id. at
`32–33. The court then rejected both of Valancourt’s
`constitutional claims.
`
`On Valancourt’s Fifth Amendment claim, the court held
`that Section 407 does not run afoul of the Takings Clause
`because it represents a voluntary exchange for federal
`copyright protection. Id. at 33–36. The court viewed Section
`407 as a condition on the receipt of the governmental benefit
`of copyright protection, and it characterized Valancourt as
`having accepted that condition by voluntarily placing notices
`of copyright on its books. Id. at 35. The court also pointed to
`Valancourt’s refusal to disavow copyright protection despite
`
`
`
`9a
`
`

`

`USCA Case #21-5203 Document #2014518 Filed: 08/29/2023 Page 10 of 28
`
`10
`the Copyright Office’s representation that, if Valancourt did so,
`the Office would withdraw its deposit requirement. Id. at 38.
`The court further mentioned that it is “not at all clear” how
`principles developed in the context of real or personal property
`would apply to the Copyright Office’s alternative demand of
`electronic copies. Id. at 36.
`
`
`The court next rejected Valancourt’s First Amendment
`claim. It concluded that Section 407 does not burden speech at
`all, and that, even if it were subject to First Amendment
`scrutiny, it would survive because it does not burden more
`speech than necessary. Id. at 40–41.
`
`
`Valancourt now appeals. It challenges the district court’s
`conclusion that the dispute has been narrowed to one about
`electronic copies, as well as the court’s grant of summary
`judgment to the government on Valancourt’s First and Fifth
`Amendment claims.
`
`
`II.
`
`Because the scope of the dispute before us necessarily
`affects our analysis of the merits of the challenge, we first
`determine whether the dispute encompasses only the Copyright
`Office’s offer to accept electronic copies of the copyrighted
`works or also reaches the Office’s original demand for physical
`copies. We agree with Valancourt that the dispute has not been
`narrowed to encompass only electronic copies.
`
`After Valancourt filed its complaint challenging the
`Copyright Office’s demand for physical copies of copyrighted
`works, the Office offered to accept electronic copies in lieu of
`physical copies. That offer did not moot Valancourt’s
`challenge to the demand for physical copies. A party’s
`voluntary cessation of challenged conduct does not moot the
`
`
`
`
`
`10a
`
`

`

`USCA Case #21-5203 Document #2014518 Filed: 08/29/2023 Page 11 of 28
`
`11
`challenge unless it is “absolutely clear” that the challenged
`conduct will not recur after the litigation. Trinity Lutheran
`Church of Columbia, Inc. v. Comer, 137 S. Ct. 2012, 2019 n.1
`(2017) (quoting Friends of the Earth v. Laidlaw Env’t Servs.,
`528 U.S 167, 189 (2000)); see, e.g., Adarand Constructors, Inc.
`v. Slater, 528 U.S. 216, 221–25 (2000). No one argues that
`standard is satisfied here, as the Office can continue to demand
`physical copies from copyright holders (including Valancourt)
`and has indicated no intention to cease doing so. Indeed, the
`Office has not withdrawn its demand for physical copies in this
`case itself—rather, it has only offered to accept electronic
`copies as an alternative way to satisfy its continuing demand
`for physical copies. We thus will address the Office’s demand
`for physical copies, consistent with our general obligation to
`decide cases within our jurisdiction. See, e.g., Lexmark Int’l,
`Inc. v. Static Control Components, Inc., 572 U.S. 118, 126
`(2014).
`
`
`As for the Office’s offer to accept electronic copies as an
`alternative, Valancourt advised the district court that the court
`“need not address” whether electronic copies constitute
`property subject to the Takings Clause because, regardless of
`the Office’s offer, Valancourt would still need to deposit
`physical copies of certain books for which it cannot produce
`electronic copies. Pl.’s Suppl. Br. 7–8 & n.3, Valancourt
`Books, 554 F. Supp. 3d 26, No. 18-cv-1922; see Jenkins Suppl.
`Decl. ¶¶ 7, 9, J.A. 169–70. Valancourt does not ask our court
`to assess the Office’s alternative demand for electronic copies,
`either,
`instead requesting
`that we assess
`its “original
`constitutional claims.” Valancourt Br. 20. The government
`likewise does not ask us to go on to evaluate the Office’s
`alternative demand for electronic copies if we invalidate the
`baseline demand for physical copies. Rather, the government
`generally defends its interpretation of Section 407 without
`
`
`
`11a
`
`

`

`USCA Case #21-5203 Document #2014518 Filed: 08/29/2023 Page 12 of 28
`
`12
`eschewing its ability to enforce that provision through physical
`copies.
`
`Because neither party appears to ask us to reach the
`question, and because the presentation of the case does not
`require us to do so, we will not proceed to evaluate the
`constitutionality of Section 407 as enforced through electronic
`copies. “[I]n the first instance and on appeal . . . , we rely on
`the parties to frame the issues for decision and assign to courts
`the role of neutral arbiter of matters the parties present.”
`United States v. Sineneng-Smith, 140 S. Ct. 1575, 1579 (2020)
`(quoting Greenlaw v. United States, 554 U.S. 237, 243 (2008)).
`The parties’ focus on physical copies explains why they, and
`the district court, largely did not discuss how Section 407
`would fare if enforced through only electronic copies. As the
`district court recognized, that analysis might raise unique
`questions. For example, the court observed, it “is not at all
`clear” how the principles of the Takings Clause “developed in
`the context of ‘real property’ . . . would apply to a requirement
`that can be fulfilled by the transmission of digital copies.” 554
`F. Supp. 3d at 36.
`
`The parties’ understanding of the Copyright Office’s offer
`as an alternative way to fulfill Section 407’s requirements
`reinforces that this dispute is ultimately about physical copies.
`Both parties stipulated that the Office’s offer was to accept
`electronic copies “in lieu of physical copies.”
` Joint
`Stipulations of Fact ¶ 61, J.A. 119. If the demand for physical
`books is unconstitutional, as we conclude it is, the predicate for
`the Office’s alternative offer then falls away, and we have no
`need to assess its constitutionality. Accordingly, we will
`evaluate only the Office’s demand for physical copies.
`
`
`
`
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`USCA Case #21-5203 Document #2014518 Filed: 08/29/2023 Page 13 of 28
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`13
`III.
`
`
`
`Valancourt contends that Section 407’s mandatory deposit
`requirement, as enforced by the government, violates both the
`Takings Clause of the Fifth Amendment and the First
`Amendment. We review the district court’s grant of summary
`judgment to the government de novo. Stoe v. Barr, 960 F.3d
`627, 638 (D.C. Cir. 2020). We agree with Valancourt that
`Section 407’s demand for physical copies of works, as applied
`by the Copyright Office here, represents an uncompensated
`taking of private property under the Takings Clause. We need
`not reach Valancourt’s First Amendment claim, as it seeks the
`same relief through that challenge.
`
`
`A.
`
`
`
`
`Under the Takings Clause of the Fifth Amendment, the
`government has a “clear and categorical obligation” to provide
`just compensation if it “physically acquires private property for
`a public use.” Cedar Point Nursery v. Hassid, 141 S. Ct. 2063,
`2071 (2021). A physical appropriation of property presents the
`“clearest sort of taking,” id. (quoting Palazzolo v. Rhode
`Island, 553 U.S. 606, 617 (2001)), which we assess “using a
`simple, per se rule: The government must pay for what it
`takes,” id. Although the Takings Clause often arises in the
`context of real property, its requirements apply to personal
`property as well: “The Government has a categorical duty to
`pay just compensation when it takes your car, just as when it
`takes your home.” Horne v. Dep’t of Agric., 576 U.S. 350, 358
`(2015).
`
`
`By requiring copyright owners to provide physical copies
`of books, the mandatory deposit provision “effect[s] a ‘classic
`taking in which the government directly appropriates private
`property for its own use.’” Tyler v. Hennepin Cnty., 143 S. Ct.
`
`
`
`13a
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`USCA Case #21-5203 Document #2014518 Filed: 08/29/2023 Page 14 of 28
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`14
`1369, 1376 (2023) (quoting Tahoe-Sierra Pres. Council, Inc.
`v. Tahoe Reg’l Plan. Agency, 535 U.S. 302, 324 (2002)). When
`copyright owners deposit copies of works with the Library of
`Congress, they “lose the entire ‘bundle’ of property rights” in
`the relinquished copies, including “the rights to possess, use
`and dispose of” them. Horne, 576 U.S. at 361–62 (quoting
`Loretto v. Teleprompter Manhattan CATV Corp., 458 U.S.
`419, 435 (1982)). A government demand to turn over personal
`property is “of such a unique character that it is a taking without
`regard to other factors that a court might ordinarily examine.”
`See id. at 362 (quoting Loretto, 458 U.S. at 432).
`
`
`A demand for personal property would not be a taking,
`however,
`if
`it
`involved a voluntary exchange for a
`governmental benefit. If the property owner is “aware of the
`conditions” of an exchange, and if the conditions are
`“rationally related to a legitimate Government interest,”
`presenting the exchange poses no takings problem. See
`Ruckelshaus v. Monsanto Co., 467 U.S. 986, 1007 (1984). In
`Monsanto, accordingly, the Court held that the Environmental
`Protection Agency could validly condition registration of
`pesticides on the disclosure of relevant trade secrets (a form of
`property) because the disclosure requirement could be justified
`as a condition on a “valuable Government benefit.” See id. By
`consenting to the agency’s requirements for a license,
`Monsanto demonstrated that it was “willing to bear [the]
`burden” of disclosing trade secrets “in exchange for the ability
`to market pesticides.” Id.
`
` A
`
` voluntary exchange for a benefit like the one in
`Monsanto does not exist, however, if the purported “benefit” is
`illusory. In Horne v. Department of Agriculture, the Supreme
`Court considered a regulation that required raisin growers to
`give a percentage of their crop to the government as part of the
`government’s efforts to maintain an orderly raisin market. 576
`
`
`
`14a
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`USCA Case #21-5203 Document #2014518 Filed: 08/29/2023 Page 15 of 28
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`15
`U.S. at 354–55. Distinguishing Monsanto, the Court concluded
`that the raisin provision effected a taking because the raisin
`growers received no “special governmental benefit” in
`exchange for forfeiting their raisins. Id. at 366. True, the
`growers received the right to “[s]ell[] produce in interstate
`commerce.” Id. But unlike the “license to sell dangerous
`chemicals” granted in Monsanto, the right to sell produce was
`a “basic