No. 17-571
`
`
`IN THE
`Supreme Court of the United States
`__________
`
`
`
`
`
`FOURTH ESTATE PUBLIC BENEFIT CORPORATION,
`Petitioner,
`
`
`v.
`
`
`WALL-STREET.COM, LLC AND JERROLD D. BURDEN,
`Respondents.
`
`__________
`
`On Petition for a Writ of Certiorari
`to the United States Court of Appeals
`for the Eleventh Circuit
`__________
`
`SUPPLEMENTAL BRIEF FOR PETITIONER
`__________
`
`
`JOEL B. ROTHMAN
`JEROLD I. SCHNEIDER
`SCHNEIDER ROTHMAN
` INTELLECTUAL PROPERTY
` LAW GROUP, PLLC
`4651 N. Federal Highway
`Boca Raton, Florida 33431
`(561) 404-4350
`
`
`June 5, 2018
`
`AARON M. PANNER
` Counsel of Record
`GREGORY G. RAPAWY
`COLLIN R. WHITE
`KELLOGG, HANSEN, TODD,
` FIGEL & FREDERICK, P.L.L.C.
`1615 M Street, N.W.
`Suite 400
`Washington, D.C. 20036
`(202) 326-7900
`(apanner@kellogghansen.com)
`
`
`
`
`
`
`IN THE
`Supreme Court of the United States
`__________
`
`
`
`
`
`FOURTH ESTATE PUBLIC BENEFIT CORPORATION,
`Petitioner,
`
`
`v.
`
`
`WALL-STREET.COM, LLC AND JERROLD D. BURDEN,
`Respondents.
`
`__________
`
`On Petition for a Writ of Certiorari
`to the United States Court of Appeals
`for the Eleventh Circuit
`__________
`
`SUPPLEMENTAL BRIEF FOR PETITIONER
`__________
`
`
`JOEL B. ROTHMAN
`JEROLD I. SCHNEIDER
`SCHNEIDER ROTHMAN
` INTELLECTUAL PROPERTY
` LAW GROUP, PLLC
`4651 N. Federal Highway
`Boca Raton, Florida 33431
`(561) 404-4350
`
`
`June 5, 2018
`
`AARON M. PANNER
` Counsel of Record
`GREGORY G. RAPAWY
`COLLIN R. WHITE
`KELLOGG, HANSEN, TODD,
` FIGEL & FREDERICK, P.L.L.C.
`1615 M Street, N.W.
`Suite 400
`Washington, D.C. 20036
`(202) 326-7900
`(apanner@kellogghansen.com)
`
`
`
`
`
`RULE 29.6 STATEMENT
`Pursuant to this Court’s Rule 29.6, petitioner
`Fourth Estate Public Benefit Corporation states that
`it is a public benefit corporation that has not issued
`any stock.
`
`
`
`
`
`ii
`
`TABLE OF CONTENTS
`
`Page
`RULE 29.6 STATEMENT ........................................... i
`TABLE OF AUTHORITIES ...................................... iii
`ARGUMENT ............................................................... 1
`I. THE COURT SHOULD GRANT THE
`PETITION TO RESOLVE THE CON-
`CEDED CIRCUIT SPLIT ABOUT THE
`COPYRIGHT ACT’S REGISTRATION
`REQUIREMENT ............................................. 1
`II. FOR PURPOSES OF § 411(a), A
`COPYRIGHT OWNER MAKES REG-
`ISTRATION BY SUBMITTING THE
`REQUIRED MATERIALS TO THE
`COPYRIGHT OFFICE .................................... 2
`CONCLUSION ............................................................ 6
`
`
`
`
`
`
`
`
`
`
`
`
`
`iii
`
`TABLE OF AUTHORITIES
`
`Page
`
`STATUTES
`Copyright Act (17 U.S.C.) ....................................1, 2, 3
`
`17 U.S.C. § 205 ...................................................... 4
`
`17 U.S.C. § 205(a) .................................................. 4
`
`17 U.S.C. § 205(b) .................................................. 5
`
`17 U.S.C. § 205(c) .................................................. 4
`
`17 U.S.C. § 406(a) .................................................. 5
`
`17 U.S.C. § 406(a)(1) .............................................. 5
`
`17 U.S.C. § 408(c)(3) .............................................. 2
`
`17 U.S.C. § 410(a) .................................................. 2
`
`17 U.S.C. § 410(b) .................................................. 2
`
`17 U.S.C. § 410(d) ............................................... 5-6
`
`17 U.S.C. § 411(a) ....................................... 1, 2, 3, 6
`
`17 U.S.C. § 411(c) .................................................. 2
`
`17 U.S.C. § 412 ...................................................... 6
`
`17 U.S.C. § 412(2) .................................................. 2
`
`
`
`
`
`
`
`The government agrees that this case turns on a
`question that has split the circuits: at what point
`“registration of [a] copyright claim has been made”
`within the meaning of § 411(a) of the Copyright Act,
`17 U.S.C. § 411(a). It also rejects respondents’
`position that this Court should leave this conflict
`unresolved and urges the Court to grant review. On
`all those scores, the government is right.
`But it is wrong on the merits, because it cannot
`square its position with the Copyright Act’s text.
`The Court should resolve the question presented
`only after full briefing, but the key point is that the
`Copyright Act consistently uses the phrase “makes
`registration” or a passive-voice counterpart to refer to
`an action of the copyright owner. The government’s
`effort to overcome that textual evidence yields no
`reason to hold that Congress used the same phrase to
`mean anything else in § 411(a). The Court should
`therefore grant the petition, order merits briefing,
`and reverse the judgment.
`ARGUMENT
`I. THE COURT SHOULD GRANT THE
`PETITION TO RESOLVE THE CONCEDED
`CIRCUIT SPLIT ABOUT THE COPYRIGHT
`ACT’S REGISTRATION REQUIREMENT
`The government and the parties agree that the
`Eleventh Circuit’s decision deepens an entrenched
`circuit conflict about the question presented. U.S.
`Br. 9-10; Opp. 2-5. And the government agrees with
`petitioner that the Court should resolve that split
`in this case. U.S. Br. 9-12. For those reasons, the
`Court should grant the petition.
`In particular, the government correctly explains
`that, because this case arrives on a motion to
`dismiss, any question about whether petitioner in
`
`
`
`
`
`2
`fact submitted the materials required for registration
`does not affect whether this case cleanly presents the
`legal issue in a meaningful context. U.S. Br. 11-12.
`Petitioner disputes the government’s assertions
`regarding the date on which its application was
`complete; it has no record of receiving the letters
`attached to the government’s brief and no record of
`having resubmitted payment. In short, petitioner
`stands by the factual allegations in the complaint.
`That factual question will be ripe for resolution on
`remand if the Court reverses the Eleventh Circuit’s
`judgment. Moreover, because petitioner regularly
`relies on the Copyright Act to protect its online
`works, it has every incentive to ensure that the
`question presented is correctly decided not only for
`this case but also for future cases.
`II. FOR PURPOSES OF § 411(a), A COPY-
`RIGHT OWNER MAKES REGISTRATION
`BY SUBMITTING THE REQUIRED MATE-
`RIALS TO THE COPYRIGHT OFFICE
`A. The government devotes much of its merits
`presentation to proving an undisputed proposition:
`that the Copyright Act sometimes uses the word
`“registration” to refer to an action of the Copyright
`Office. See Pet. 21 (noting that 17 U.S.C. § 410(a)
`and (b) so use the word). But the statute also
`repeatedly uses variants of the construction “makes
`registration” to refer to the copyright owner’s
`submission of an application and compliance with
`the required formalities. See Pet. 19-21 (cataloging
`Congress’s use of those variants in 17 U.S.C.
`§§ 408(c)(3) and (e), 411(c), and 412(2)). As the petition
`explains, that is how Congress used that construction
`in § 411(a).
`
`
`
`
`
`3
`The government argues that the second sentence
`of § 411(a) – which permits a copyright owner “to
`institute a civil action” after “registration has been
`refused” – supports the conclusion that the Register
`must act on an application before any suit can
`be initiated. U.S. Br. 14-15; see also Opp. 9. But
`that hardly follows: the second sentence of § 411(a)
`imposes an additional procedural requirement in
`cases initiated after registration is refused. It does
`not preclude initiation of a suit in cases where the
`copyright owner has made registration but the Regis-
`ter has not acted, and it does not speak to the proce-
`dure that should be followed in those unusual cases
`where registration is refused after a suit is initiated.
`As petitioner has explained (Pet. 18-19), the govern-
`ment’s reading of the second sentence of § 411(a)
`creates an internal contradiction that petitioner’s
`reading avoids; the government’s attempt (at 19-20)
`to wave away the point is unavailing.
`B. The government does not directly contest the
`point that the phrase “registration has been made”
`is used in the statute to refer to the action of the
`copyright owner, not any subsequent action by the
`Register. Instead, it argues (at 20) that, on its read-
`ing of the statute, the copyright owner’s actions are
`not “divorced from the process by which copyright
`‘registration’ is ‘made.’” But that far vaguer claim
`sidesteps petitioner’s point: the Copyright Act’s
`consistent use of “makes registration” to refer to
`something done by the copyright owner, rather than
`by the Copyright Office, is strong evidence that the
`statute uses the same phrase in the same way in
`§ 411(a).
`The government also argues (at 21) that the stat-
`ute sometimes uses the phrase in a way that refers to
`
`
`
`
`
`4
`the actions of the Register, but the two provisions it
`cites do not support the government’s reading.
`1. Section 205 – which permits recordation in
`the Copyright Office of “document[s] pertaining to a
`copyright,” including those that pertain to a transfer
`of ownership, 17 U.S.C. § 205(a) – supports petition-
`er’s reading of the statute, not the government’s.
`Section 205(c) provides that recordation “gives all
`persons constructive notice of the facts stated in the
`recorded document” “only if” “(1) the document, or
`material attached to it, specifically identifies the
`work to which it pertains so that, after the document
`is indexed by the Register of Copyrights, it would be
`revealed by a reasonable search under the title or
`registration number of the work”; and “(2) registration
`has been made for the work.” Id. § 205(c).
`This provision does not suggest that the phrase
`“registration has been made” refers to the action of
`the Copyright Office rather than to the action of the
`copyright owner. It points in the opposite direction.
`Suppose that (1) an author took out a loan against
`the value of the author’s copyright in a work;
`(2) the lender had a security interest in the copyright;
`(3) the author had applied for registration; but
`(4) the registration certificate had not yet been
`issued. Under petitioner’s reading of the phrase
`“registration has been made,” the lender gains
`protection against a subsequent transferee of the
`copyright by recording the lien in the manner
`prescribed in § 205(a) as long as the author has made
`registration of the work by sending the required
`application, copies, and fee – whether or not the
`Copyright Office has yet issued a certificate of regis-
`tration.
`
`
`
`
`
`5
`The statute expressly provides that the “Register of
`Copyrights shall . . . record the document” – that is,
`the document pertaining to the copyright – “and
`return it with a certificate of recordation.” Id. § 205(b)
`(emphasis added). Thus, whether or not a certificate
`of registration has issued, parties will have construc-
`tive notice of the recorded document because they
`will be able to find the indexed document “under
`the title . . . of the work” – even if a “registration
`number” is not yet available. On the government’s
`reading, the lender would be in jeopardy until the
`registration certificate issued, but there is no evident
`reason that Congress would have desired that result,
`and nothing in the statute supports it.
`2. Section 406(a) – which addresses the conse-
`quences of an error in a copyright notice on copies
`distributed before March 1, 1989 – is at most
`ambiguous. That provision makes clear that an error
`in a copyright notice (1) does not affect “validity
`or ownership of the copyright” but (2) does provide
`a “complete defense” to “any person who innocently
`begins an undertaking that infringes the copyright”
`if the person “proves that he or she was misled by the
`notice and began the undertaking in good faith under
`a purported transfer or license from the person
`named” in the copyright notice. 17 U.S.C. § 406(a).
`There are two situations, however, in which that
`defense is unavailable, including if “registration for
`the work had been made in the name of the owner of
`copyright.” Id. § 406(a)(1).
`The government insists (at 19) that, because this is
`a “constructive notice” provision, it would make no
`sense to deprive an infringer of the defense before
`registration is granted and recorded. But because
`the “effective date of a copyright registration,” 17
`
`
`
`
`
`6
`U.S.C. § 410(d), is the date that the copyright owner
`files the application and required copies and fees,
`it is possible under either competing reading of the
`statute that the infringer would lose the defense as of
`that date. That result is not surprising: the statute
`similarly limits awards of “statutory damages or
`of attorney’s fees” for infringement of copyright in
`unpublished, unregistered works – presumably for
`similar reasons related to fair notice – but expressly
`authorizes them for infringement after the “effective
`date” of registration. Id. § 412. The statute grants
`a copyright owner the benefit of registration as of
`the date that the owner had done everything to
`make registration. Section 411(a) – which authorizes
`a civil action at the same juncture – fits comfortably
`into that statutory framework.
`CONCLUSION
`The petition for a writ of certiorari should be
`granted.
`
`
`JOEL B. ROTHMAN
`JEROLD I. SCHNEIDER
`SCHNEIDER ROTHMAN
` INTELLECTUAL PROPERTY
` LAW GROUP, PLLC
`4651 N. Federal Highway
`Boca Raton, Florida 33431
`(561) 404-4350
`
`
`June 5, 2018
`
`Respectfully submitted,
`
`AARON M. PANNER
` Counsel of Record
`GREGORY G. RAPAWY
`COLLIN R. WHITE
`KELLOGG, HANSEN, TODD,
` FIGEL & FREDERICK, P.L.L.C.
`1615 M Street, N.W.
`Suite 400
`Washington, D.C. 20036
`(202) 326-7900
`(apanner@kellogghansen.com)
`
`
`
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