`IN THE
`Supreme Court of the United States
`___________
`
`FOURTH ESTATE PUBLIC BENEFIT CORP.,
`
`
`No. 17-571
`
`Petitioner,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`v.
`
`WALL-STREET.COM, LLC, AND JERROLD D. BURDEN,
`
`
`
`
`
`
`
`
`
`
`
`Respondents.
`
`___________
`
`On Writ of Certiorari to the
`United States Court of Appeals
`for the Eleventh Circuit
`___________
`
`BRIEF OF WASHINGTON LEGAL FOUNDATION
`AS AMICUS CURIAE IN SUPPORT OF RESPONDENTS
`
`___________
`
`
`CORY L. ANDREWS
` Counsel of Record
`CORBIN K. BARTHOLD
`WASHINGTON LEGAL FOUNDATION
`2009 Massachusetts Ave., NW
`Washington, DC 20036
`(202) 588-0302
`candrews@wlf.org
`
`
`
`
`
`
`
`
`
`
`
`October 18, 2018
`
`
`
`
`QUESTION PRESENTED
`Whether, under § 411(a) of the Copyright Act,
`
`a copyright owner may file an infringement suit
`after delivering the requisite deposit, application,
`and fee to the Copyright Office—but before the
`Register of Copyrights has acted on the application
`for registration.
`
`
`
`
`
`
`
`
`
`iii
`
`TABLE OF CONTENTS
`
`
`TABLE OF AUTHORITIES ................................... iv
`
`INTEREST OF AMICUS CURIAE ......................... 1
`
`STATEMENT OF THE CASE ................................. 2
`
`SUMMARY OF ARGUMENT .................................. 4
`
`ARGUMENT ............................................................ 7
`
`I.
`
`THE REGISTRATION APPROACH BEST
`ACCOMPLISHES CONGRESS’S VITAL AIMS ........ 7
`
`A.
`
`The Registration Approach Best
`Ensures a Robust Copyright
`Registry ............................................... 8
`
`
`B.
`
`
`C.
`
`The Registration Approach Best
`Conserves Judicial Resources .......... 11
`
`The Registration Approach Best
`Sustains the Library of Congress..... 15
`
`
`II.
`
`THE PETITIONER’S PRACTICAL CONCERNS
`ARE OVERSTATED .......................................... 16
`
`
`CONCLUSION ....................................................... 21
`
`
`
`
`
`
`
`
`iv
`
`TABLE OF AUTHORITIES
`
`
`Page(s)
`
`Cases:
`
`Am. Broad. Cos., Inc. v. Aereo, Inc.,
` 134 S. Ct. 2498 (2014) ........................................... 1
`
`Cosmetic Ideas, Inc. v. IAC/Interactivecorp,
` 606 F.3d 612 (9th Cir. 2010) ................... 3, 8, 9, 11
`
`Hallstrom v. Tillamook Cnty.,
` 493 U.S. 20 (1989) ............................................... 17
`
`Kernel Records Oy v. Mosley,
` 694 F.3d 1294 (11th Cir. 2012) ............................. 3
`
`Kregos v. Associated Press,
` 795 F. Supp. 1325 (S.D.N.Y. 1992) ............... 19, 20
`
`La Resolana Architects, PA v. Clay Realtors
` Angel Fire, 416 F.3d 1195 (10th Cir. 2005),
` abrogated on other grounds by Reed Elsevier,
` Inc. v. Muchnick, 559 U.S. 154 (2010) .................. 3
`
`Metro-Goldwyn-Mayer Studios, Inc. v. Grokster,
` Ltd., 545 U.S. 913 (2005) ...................................... 1
`
`M.G.B. Homes, Inc. v. Ameron Homes, Inc.,
` 903 F.2d 1486 (11th Cir. 1990) ......................... 3, 4
`
`Petrella v. Metro-Goldwyn-Mayer, Inc.,
` 134 S. Ct. 1962 (2014) ............................... 5, 14, 19
`
`
`
`
`
`
`
`
`
`
` v
`
`
`
`Page(s)
`
`Positive Black Talk, Inc. v. Cash Money Records
` Inc., 394 F.3d 357 (5th Cir. 2004), abrogated
` on other grounds by Reed Elsevier, Inc. v.
` Muchnick, 559 U.S. 154 (2010) ............................. 3
`
`Psihoyos v. John Wiley & Sons, Inc.,
` 748 F.3d 120 (2d Cir. 2014) ................................ 19
`
`Reed Elsevier, Inc. v. Muchnick,
` 559 U.S. 154 (2010) ............................................... 3
`
`Torres-Negón v. J & N Records, LLC,
` 504 F.3d 151 (1st Cir. 2007) ............................... 11
`
`William A. Graham Co. v. Haughey,
` 568 F.3d 425 (3d Cir. 2009) ................................ 19
`
`Statutes:
`
`Copyright Act of 1976, Pub. L. No. 94-553,
` 90 Stat. 2541 (1976) .....................................passim
`
` 17 U.S.C. § 407(b) ................................................ 15
`
` 17 U.S.C. § 408(b) ................................................ 15
`
` 17 U.S.C. § 408(f) .......................................... 20, 21
`
` 17 U.S.C. § 410(c) ................................................ 13
`
` 17 U.S.C. § 410(d) ................................................ 18
`
` 17 U.S.C. § 411(a) .........................................passim
`
`
`
`
`
`
`
`
`
`vi
`
` Page(s)
` 17 U.S.C. § 411(b) ................................................ 13
`
` 17 U.S.C. § 412 .................................................... 18
`
` 17 U.S.C. § 501 ...................................................... 2
`
` 17 U.S.C. § 507(b) ................................................ 18
`
` 17 U.S.C. § 508 .................................................... 14
`
` 17 U.S.C. § 508(a) .......................................... 13, 14
`
`Miscellaneous:
`
`H.R. Rep. No. 94-1476 (1976) .................................. 8
`
`H.R. Rep. No. 100-609 (1988) ............................ 8, 13
`
`Letter from Ralph Oman, Register of Copyrights,
` to L. Ralph Mecham, Director, Administrative
` Office of the U.S. Courts (June 4, 1987) ............. 12
`
`Library of Congress, About the Library:
` Fascinating Facts, http://www/loc.gov/about/
` fascinating-facts/html ......................................... 15
`
`Library of Congress, Annual Report of the
` Librarian of Congress for the Fiscal Year
` Ending September 30, 2007 (2008) ..................... 15
`
` Willam F. Patry, Patry on Copyright (2017) ...... 19
`
` 6
`
`
`
`
`
`
`
`
`
`
`
`
`vii
`
`Page(s)
`
`Report of the Register of Copyrights on the
` General Revision of the U.S. Copyright Law,
` 87th Cong., Copyright Law Revision
` (H.R. Judiciary Comm. Print 1961) .................. 8, 9
`
`S. Rep. No. 100-352 (1988) ........................... 7, 12, 16
`
`U.S. Copyright Office, Circular 1—Copyright
` Basics (Rev. 09/2017) ............................................ 9
`
`U.S. Copyright Office, Circular 10—Special
` Handling (Rev. 09/2017) ..................................... 20
`
` U.S. Copyright Office, Compendium of U.S.
` Copyright Office Practices (3d ed. 2017) ............... 7
`
`U.S. Copyright Office, Fiscal 2017 Annual
` Report (2018) ....................................................... 15
`
`U.S. Copyright Office, “Preregister Your Work,”
` at https://copyright.gov/prereg............................ 20
`
`U.S. Copyright Office, “Registration Processing
` Times,” (October 2, 2018) .................................... 19
`
`Robert Wedgeworth & Barbara Ringer, The
` Library of Congress Advisory Committee on
` Copyright Registration and Deposit—Letter
` and Report of the Co-Chairs 17 Colum.-VLA
` J.L. & Arts 271 (1994) ......................................... 10
`
`
`
`
`
`
`
`
`
`
`
` 1
`
`
`
`INTEREST OF AMICUS CURIAE*
`
`
`Washington Legal Foundation is a nonprofit,
`public-interest law firm and policy center with
`supporters in all 50 states. WLF promotes and
`defends free enterprise, individual rights, limited
`government, and the rule of law. Since its founding
`in 1977, WLF has appeared as an amicus curiae in
`important copyright cases, urging the Court to
`interpret and apply the Copyright Act as Congress
`intended. See, e.g., Am. Broad. Cos., Inc. v. Aereo,
`Inc., 134 S. Ct. 2498 (2014); Metro-Goldwyn-Mayer
`Studios, Inc. v. Grokster, Ltd., 545 U.S. 913 (2005).
`
`WLF has long supported a federal regime of
`
`robust copyright protection under the Copyright Act,
`to foster and reward the creativity and genius
`essential to a flourishing free-market economy.
`
`
`To that end, WLF believes that the decision
`below, by requiring the Copyright Office to issue or
`refuse a registration certificate before a copyright is
`“registered” under § 411(a), best accomplishes
`Congress’s carefully balanced policy aims. As WLF
`will show, those broad public concerns go far beyond
`protecting the interests of a copyright-infringement
`plaintiff in any given suit.
`
`
`
`
`
`
`
`* No party’s counsel authored any part of this brief. No
`person or entity, other than WLF and its counsel, helped pay
`for the preparation or submission of this brief. All parties have
`consented to the filing of WLF’s brief.
`
`
`
`
`
`
`
`
` 2
`
`
`
`STATEMENT OF THE CASE
`
`
`
`Section 411(a) of the Copyright Act precludes
`a copyright holder from bringing a copyright-
`infringement suit until either (1) “registration of the
`copyright claim has been made” under the Act or (2)
`the required deposit, application, and fee have been
`“delivered to the Copyright Office in proper form”
`and “registration has been refused.” 17 U.S.C.
`§ 411(a).
`
`The petitioner, Fourth Estate Public Benefit
`Corporation, creates online news content and—while
`retaining the copyright—licenses that content to
`third-party websites. Pet. App. 2a. The respondents,
`Wall-Street.com and its owner, Jerrold Burden,
`published some of the petitioner’s news articles
`under a licensing agreement. Ibid. But after the
`respondents
`cancelled
`that agreement,
`they
`allegedly continued displaying
`the petitioner’s
`copyrighted content without permission. Ibid.
`
`for
`The petitioner sued the respondents
`
`copyright infringement under § 501 of the Copyright
`Act. Pet. App. 15a-22a. Though the complaint
`alleged that the petitioner had applied “to register
`[the] articles with the Register of Copyrights,” id. at
`18a, it failed to allege that the Copyright Office ever
`acted on that application.
`
` While the petitioner’s copyright application
`
`was pending, the respondents moved to dismiss the
`complaint. They argued that § 411(a) allows a
`plaintiff to sue for infringement “only after the
`Register of Copyrights approves or denies an
`application to register a copyright.” Pet. App. 3a. The
`
`
`
`
`
`
`
`
` 3
`
`
`
`district court agreed, rejecting the petitioner’s
`suggestion that merely having “an application to
`register * * * pending at the time of the suit” is
`“sufficient to survive a motion to dismiss.” Id. at 13a.
`
`
`The Eleventh Circuit affirmed. Pet. App. 1a-
`10a. Observing that “the question when registration
`occurs has split the circuits,” the appeals court noted
`that the Tenth Circuit follows the “registration
`approach,” which “requires a copyright owner to
`plead that the Register of Copyrights has acted on
`the application—either by approving or denying it—
`before a copyright owner can file an infringement
`action.” Id. at 4a (citing La Resolana Architects, PA
`v. Clay Realtors Angel Fire, 416 F.3d 1195, 1197
`(10th Cir. 2005), abrogated on other grounds by Reed
`Elsevier, Inc. v. Muchnick, 559 U.S. 154 (2010)).
`
`The Fifth and Ninth Circuits, the appeals
`court explained, follow the “application approach,”
`which only “requires a copyright owner to plead that
`he has filed
`‘the deposit, application, and fee
`required for registration’ * * * before filing a suit for
`infringement.” Pet. App. 4a (citing Cosmetic Ideas,
`Inc. v. IAC/Interactivecorp, 606 F.3d 612, 619 (9th
`Cir. 2010), and Positive Black Talk, Inc. v. Cash
`Money Records Inc., 394 F.3d 357, 365 (5th Cir.
`2004), abrogated on other grounds by Muchnick, 559
`U.S. at 154).
`
`The Eleventh Circuit recognized that its own
`circuit precedent may have already embraced the
`registration approach. Id. at 6a (citing Kernel
`Records Oy v. Mosley, 694 F.3d 1294, 1302 n.8 (11th
`Cir. 2012), and M.G.B. Homes, Inc. v. Ameron
`Homes, Inc., 903 F.2d 1486, 1488 n.4 (11th Cir.
`
`
`
`
`
`
`
`
` 4
`
`
`
`1990)). But the court went on to reexamine § 411(a)
`and reaffirm
`its earlier endorsement of
`the
`registration approach.
`
`the
`“makes clear,”
`The Copyright Act
`Eleventh Circuit found, that registration is “a
`process that requires action by both the copyright
`owner and the Copyright Office.” Pet. App. 6a. While
`the statute requires the copyright owner to begin the
`registration process—by filing an application, a fee,
`and a deposit of its work—it directs the Copyright
`Office
`to
`“examine”
`those
`submissions and
`“determine” whether
`to approve
`or
`refuse
`registration. Ibid. The petitioner’s arguments about
`“legislative history and policy,” the court held,
`couldn’t overcome
`the Copyright Act’s plain
`meaning: “[f]iling an application does not amount to
`registration.” Id. at 6a-9a.
`
`On that basis, the appeals court entered
`judgment for the respondents. Several weeks later,
`the Copyright Office refused
`the petitioner’s
`registration application for failing to “meet the legal
`or formal requirements for registration.” U.S. Cert.
`Br. App. 3a-9a. Among other defects, the petitioner
`had improperly submitted “multiple articles for
`registration” within a single application. Id. at 7a-
`8a.
`
`
`SUMMARY OF ARGUMENT
`
`The Copyright Act establishes a copyright
`holder’s rights and remedies under federal law.
`While formal registration with the Copyright Office
`isn’t a condition of copyright protection, it is a
`condition for filing a copyright-infringement suit.
`
`
`
`
`
`
`
`
` 5
`
`
`
`Section 411(a) of the Copyright Act provides that “no
`action for infringement of the copyright in any
`United States work shall be
`instituted until
`preregistration or registration of the copyright claim
`has been made in accordance with this title” or until
`the Register has refused registration. 17 U.S.C.
`§ 411(a).
`
`
`As the respondents and the Unites States
`have convincingly shown, the text, structure, and
`history
`of
`the Copyright Act
`support
`the
`commonsense view that copyright “registration”
`means more than just applying for registration. That
`is, registration under § 411(a) occurs when the
`Copyright Office acts on the application—either by
`issuing a certificate or by refusing one. “Although
`registration is ‘permissive,’ both the certificate and
`the original work must be on file with the Copyright
`Office before a copyright owner can sue
`for
`infringement.” Petrella v. Metro-Goldwyn-Mayer,
`Inc., 134 S. Ct. 1962, 1977 (2014) (citing § 411(a)).
`
`The petitioner’s contrary view—that merely
`applying for a registration certificate accomplishes
`registration under
`the Copyright Act—flouts
`fundamental canons of statutory construction and
`does violence to the unambiguous words of the
`statute. WLF won’t
`rehash
`those statutory-
`construction arguments here.
`
`WLF wishes to emphasize, however, that the
`petitioner’s reading of § 411(a) severely disrupts
`Congress’s careful balancing of
`incentives and
`deterrents in the Copyright Act. Contrary to the
`petitioner’s narrow
`focus,
`the Copyright Act
`advances federal policy concerns that go well beyond
`
`
`
`
`
`
`
`
` 6
`
`
`
`the mere convenience of plaintiffs suing for alleged
`infringement.
`
`registration
`copyright
`vigorous
`First,
`promotes a robust public registry that puts the world
`on notice of copyrighted works. Second, pre-suit
`registration conserves judicial resources by ensuring
`that federal courts have the benefit of the Register’s
`considered view in copyright litigation. And third, by
`encouraging authors to deposit their creative works
`with the Copyright Office, § 411(a) gives the Library
`of Congress a vital source of works for its permanent
`acquisitions. In contrast, the petitioner’s extra-
`statutory approach
`to
`copyright
`registration
`advances none of these broader policy goals.
`
`
`The petitioner offers a parade of horribles that
`supposedly arise from copyright-registration lag
`time. According to the petitioner, requiring a
`copyright owner to wait to sue until the Copyright
`Office acts on the registration application forces the
`owner “to endure the ongoing theft of intellectual
`property.” Pet. Br. 41. But the Copyright Office
`provides an expedited registration option for all
`pending or prospective copyright litigants. And while
`§ 411(a) inconveniences an unregistered copyright
`owner by forcing her to register before bringing an
`infringement suit, the time the Copyright Register
`takes to process her application won’t reduce the
`damages she ultimately recovers.
`
`
`its
`filed
`the petitioner
`Here, because
`copyright-infringement suit before the Register of
`Copyrights acted on the registration application, the
`Eleventh Circuit rightly affirmed dismissal of the
`petitioner’s suit.
`
`
`
`
`
`
`
`
` 7
`
`
`
`ARGUMENT
`
`THE REGISTRATION APPROACH
`BEST
`ACCOMPLISHES CONGRESS’S VITAL AIMS.
`
`“The mere submission of an application to the
`U.S. Copyright Office does not amount to a
`registration. This is corroborated by the statute and
`the
`legislative history.” U.S. Copyright Office,
`Compendium of U.S. Copyright Office Practices
`§ 625.5 (3d ed. 2017). The petitioner
`insists,
`however, that “a copyright owner’s statutory rights
`do not depend on administrative action.” Pet. Br. 37.
`That is certainly true. But a copyright owner’s
`available remedies depend on precisely that.
`
`All the more because § 411(a) promotes
`distinct public ends that go well beyond the mere
`convenience of litigants bringing infringement suits.
`The Copyright Act “is underpinned by a number of
`incentives—legal, business, and personal—all of
`which point an author or other copyright proprietor
`toward the option of registration.” S. Rep. No. 100-
`352, at 20 (1988).
`
`By conditioning the right to sue for copyright
`infringement on
`review by
`the Register of
`Copyrights, Congress sought to maintain a public
`registry of copyright ownership, to conserve judicial
`resources, and to enlarge the Library of Congress’s
`collection of original works. Contrary to the
`petitioner’s view, each of those ends is best advanced
`by the Eleventh Circuit’s registration approach.
`
`
`I.
`
`
`
`
`
`
`
`
`
`
` 8
`
`
`
`A.
`
`The Registration Approach Best
`Ensures
`a Robust Copyright
`Registry.
`
`
`
`As Congress has explained, registration as a
`prerequisite to suit “helps to ensure the existence of
`a central, public record of copyright claims.” H.R.
`Rep. No. 100-609, at 42 (1988). Since 1790, a federal
`copyright registry has enabled a free market in
`creative works, allowing consumers to
`identify
`copyrighted works and their owners. Under the
`Copyright Act of 1909, federal copyright protection
`attached only upon publication, and even then only if
`the required notice, registration, and deposit
`occurred. But in 1976, Congress overhauled federal
`copyright law to create a uniform system giving
`“federal copyright protection to all works at the time
`of creation.” Cosmetic Ideas, 606 F.3d at 618 (citing
`Pub. L. No. 94-553, 90 Stat. 2541 (1976); H.R. Rep.
`No. 94-1476, at 129 (1976)).
`
`Though Congress eliminated the mandatory
`registration of copyrights, it didn’t jettison the
`important goal of maintaining a public registry. On
`the
`contrary, Congress was
`concerned
`that
`“[c]opyright registration for published works, which
`is useful and important to users and the public at
`large, would no longer be compulsory, and should
`therefore be induced in some practical way.” H.R.
`Rep. 94-1476, at 158. In early deliberations
`preceding the 1976 revision, the Register of
`Copyrights lamented that “[i]t is often cumbersome
`for would-be users to seek out the copyright owner
`and get permission.” Report of the Register of
`Copyrights on the General Revision of the U.S.
`
`
`
`
`
`
`
`
` 9
`
`
`
`Copyright Law, 87th Cong., Copyright Law Revision
`6 (H.R. Judiciary Comm. Print 1961).
`
`So Congress insisted that before a copyright
`holder may sue to enforce her copyright, she must
`either obtain a certificate of registration or be
`refused one. A certificate of registration “creates a
`public record of key facts” including “the title of the
`work, the author of the work, the name and address
`of the claimant or copyright owner, the year of
`creation, and information about whether the work is
`published, has been previously registered, or
`includes preexisting materials.” U.S. Copyright
`Office, Circular 1—Copyright Basics, at 5 (Rev.
`09/2017), https://www.copyright.gov/circs/circ01.pdf.
`
`True enough, “copyright holders frequently
`
`register specifically for the purpose of being able to
`bring suit.” Cosmetic Ideas, 606 F.3d at 619. To stop
`the infringement, a copyright holder whose works
`are being infringed presumably desires to bring suit
`as soon as possible. But that is precisely why the
`Eleventh Circuit’s construction of § 411(a) best
`ensures a comprehensive public registry.
`
`
`To work as intended, a public copyright
`registry must include both infringed and uninfringed
`works. So Congress needed some way to motivate
`copyright holders to register their works before
`infringement occurs. Only by requiring copyright
`claimants to obtain a certificate of registration
`before being able to sue for infringement could
`Congress guarantee greater public access to all
`copyrighted works.
`
`
`
`
`
`
`
`
`
`10
`
`By barring suit until the Copyright Office has
`acted on a registration application, the Eleventh
`Circuit’s approach discourages a copyright holder
`from registering belatedly only after suffering an
`infringement. Of course, a copyright holder can avoid
`any
`inconvenience simply by registering her
`copyrighted work soon after she creates it. The
`registration approach thus ensures that more
`copyright holders will register more of their works
`sooner, resulting in a more robust and accurate
`registry.
`
`
`The petitioner’s application approach, by
`contrast, rewards delay and invites an incomplete
`registry. Under the petitioner’s reading of § 411(a),
`dilatory copyright owners suffer only the slightest
`delay if they wait until infringement before applying
`for a certificate. They may sue for infringement as
`soon as the Register receives their application
`materials. Even worse, the petitioner’s approach
`gives copyright owners no incentive to register
`uninfringed works. Indeed, if this Court were to
`adopt the petitioner’s view, the federal copyright
`registry would likely become little more than a
`repository of previously infringed works. But that
`would defeat the purpose of having a public registry.
`
`In sum, the registration approach best
`
`supports “a comprehensive and reliable copyright
`database, available freely to the public.” Robert
`Wedgeworth & Barbara Ringer, The Library of
`Congress Advisory Committee
`on Copyright
`Registration and Deposit—Letter and Report of the
`Co-Chairs 17 Colum.-VLA J.L. & Arts 271, 280
`(1994). Such a registry has proven all the more
`
`
`
`
`
`
`
`
`11
`
`communications
`the
`“[a]s
`valuable
`gathers momentum.” Ibid.
`
`
`B.
`
`The Registration Approach Best
`Conserves Judicial Resources.
`
`revolution
`
`
`
`The decision below furthers another vital
`public-policy purpose—judicial economy. Far from a
`“needless formality,” Cosmetic Ideas, 606 F.3d at
`620, requiring a plaintiff to obtain (or to fail to
`obtain) a registration certificate as a prerequisite to
`suit insulates the federal courts from dubious
`copyright-infringement claims by “allow[ing] the
`Copyright Office to make an initial judgment about
`the validity of copyrights, based on its experience
`and expertise.” Torres-Negón v. J & N Records, LLC,
`504 F.3d 151, 161 (1st Cir. 2007). This “reduce[s] the
`burdens of litigation by giving that judgment some
`weight in subsequent litigation.” Ibid.
`
`
`But allowing copyright-infringement claims
`for uncertified works (as the petitioner urges) would
`extract more, not fewer, judicial resources from the
`federal courts. A party bringing an infringement suit
`without a registration certificate “bears a greater
`evidentiary burden of proving the validity of its
`copyright.” Cosmetic Ideas, 606 F.3d at 621 n.14.
`And yet, a court obliged to scrutinize plaintiffs’
`attempts to clear that higher evidentiary burden
`must expend extra time and resources to do so.
`
`Without a registration certificate to help
`streamline the issues for litigation, a claimant must
`prove authorship, copyrightability, and the lack of
`any competing claim with priority. And those
`showings, in turn, require more evidentiary filings,
`
`
`
`
`
`
`
`
`12
`
`motions, and arguments—all consuming more of the
`court’s time and attention.
`
`registration approach
`the
`contrast,
`In
`motivates potential claimants to organize and
`explicitly define the contours of their creative works
`ahead of unforeseen litigation. Rightly understood,
`§ 411(a) “greatly ease[s] the strain on the courts by
`providing a reliable record and screening process.”
`Letter from Ralph Oman, Register of Copyrights, to
`L. Ralph Mecham, Director, Administrative Office of
`the U.S. Courts (June 4, 1987). That is why
`eliminating
`the Copyright Act’s
`registration
`prerequisite to suit would “grievously compromise”
`the “speedy and inexpensive resolution of copyright
`litigation in the federal courts.” Ibid.
`
`Indeed, § 411(a)’s registration requirement
`often relieves the court
`from ever having to
`adjudicate an infringement claim. After all, a
`putative plaintiff whose registration application is
`denied by the Copyright Office will often forgo suing
`rather than challenge the Register’s determination.
`Likewise, a copyright defendant confronted with a
`claimant’s bona fide registration certificate is much
`more likely to settle than to litigate. So after “the
`Copyright Office makes its preliminary findings,
`many potential court cases just disappear.” Letter
`from Oman to Mecham, supra.
`
`Congress feared that, without § 411(a)’s
`meaningful precondition to suit, claimants could
`force courts “to rule on an increased number of novel
`copyright
`issues, without
`benefit
`of
`an
`administrative record to expedite their proceedings.”
`S. Rep. 100-352, at 23. Rather than arrest that fear,
`
`
`
`
`
`
`
`
`13
`
`the petitioner’s reading of § 411(a) exacerbates it.
`Under the application approach, copyright claimants
`with dubious claims could require “courts—often in
`the context of a shortfused temporary restraining
`order or a preliminary injunction—to rule directly on
`their
`claims without
`risking
`the negative
`implications that would arise from a possible
`Copyright Office denial of registration.” Ibid.
`
`In other words, the Register’s grant or denial
`of a certificate materially “assists the courts in
`resolving the underlying copyright dispute.” H.R.
`Rep. No. 100-609, at 41. Above all, Congress wanted
`the courts, as well as copyright holders, to benefit
`from the presumption of validity that attaches to a
`registered copyright. So if registration occurs within
`five years of the work’s first publication, the
`certificate is “prima facie evidence of the validity of
`the copyright and of the facts stated in the
`certificate.” 17 U.S.C. § 410(c).
`
`Section 411 also empowers the Copyright
`Office’s active participation in many infringement
`suits after the Register’s initial registration decision.
`The Copyright Office may partake in litigation not
`only when a plaintiff sues for infringement after his
`registration application has been denied, see
`§ 411(a), but also when the defendant alleges that
`the plaintiff’s
`certificate
`contains deliberately
`misleading information, see § 411(b).
`
`Nor is that all. Congress enlisted district
`courts to ensure that claimants satisfy § 411(a)’s
`registration requirement. Section 508(a) instructs
`district courts “[w]ithin one month after the filing of
`any action under this title,” to “send written
`
`
`
`
`
`
`
`
`14
`
`notification to the Register of Copyrights [of] * * *
`the names and addresses of the parties and the title,
`author, and registration number of each work
`involved in the action.” § 508(a) (emphasis added).
`And the court must update these notices by advising
`the Register of the registration numbers of any new
`works added to the litigation. Ibid.
`
`insist that courts
`Why would Congress
`provide notice of
`infringement actions to the
`Copyright Office? To ensure
`that premature
`claimants will complete the otherwise voluntary
`registration process before being allowed to proceed
`in court. By directing district courts to send
`registration numbers to the Copyright Office, § 508’s
`notice requirement allows courts to identify—for
`dismissal—deficient,
`unregistered
`infringement
`claims at the outset of litigation, even if the
`defendant otherwise may have waived pre-suit
`registration.
`
`Under the Copyright Act, obtaining—not
`merely applying
`for—a copyright certificate
`is
`mandatory before burdening the courts. “Key
`evidence in [infringement] litigation, then, will be
`the certificate, the original work, and the allegedly
`infringing work.” Petrella, 134 S. Ct. at 1977
`(emphasis added). Congress
`insisted that the
`Copyright Office have a chance to weigh in before
`saddling the courts with litigation. That way, federal
`courts enjoy the benefit of the Copyright Office’s
`expertise before expending precious time and
`resources.
`
`
`
`
`
`
`
`
`
`
`
`
`15
`
`C.
`
`The Registration Approach Best
`Sustains the Library of Congress.
`
`
`
`The Library of Congress is the world’s largest
`library, housing “more than 167 million items on
`approximately 838 miles of bookshelves.” Library of
`Congress, About the Library: Fascinating Facts,
`http://www/loc.gov/about/fascinating-facts/html. “The
`collections include more than 39 million books and
`other printed materials, 3.6 million recordings, 14.8
`million photographs, 5.5 million maps, 8.1 million
`pieces of sheet music and 72 million manuscripts.”
`Ibid. By motivating authors to deposit their creative
`works with the Copyright Office, § 411(a)’s pre-suit
`registration requirement provides the Library of
`Congress with a major source of works for its
`acquisitions.
`
`the
`When a copyright holder deposits
`
`registration copy of its work with the Register of
`Copyrights, the Copyright Office then forwards that
`work to the Library of Congress’s permanent
`collection. See 17 U.S.C. § 407(b), 408(b). “Each year,
`the Copyright Office registers more than 500,000
`claims and
`transfers more
`than 1 million
`copyrighted works to the Library’s collection.”
`Library of Congress, Annual Report of the Librarian
`of Congress for the Fiscal Year Ending September 30,
`2007, at 25 (2008). In fiscal year 2017, the Copyright
`Office “forwarded more than 658,045 copies of works
`with a value of almost $41 million to the Library’s
`collections.” U.S. Copyright Office, Fiscal 2017
`Annual Report, at 10 (2018).
`
`
`As the oldest federal cultural institution in
`the United States, the Library of Congress confers a
`
`
`
`
`
`
`
`
`16
`
`vital public benefit. By conditioning the right to sue
`for copyright infringement on registration, Congress
`sought to expand the Library of Congress’s collection
`of copyrighted works. As Congress recognized,
`§
`411(a)’s pre-suit
`registration
`requirement
`“provides the Library of Congress with an efficient
`means of obtaining copies of copyrighted works.” S.
`Rep. 100-352, at 19.
`
`
`
`Just as it best ensures a robust public registry
`includes both
`infringed and uninfringed
`that
`copyrighted works, the registration approach best
`supplies the Library of Congress with the broadest
`assortment of unique works. Not so the petitioner’s
`application approach, which removes any incentive
`for copyright holders to provide a copy of every work
`to the Copyright Office, leaving the Library of
`Congress deprived of countless uninfringed works.
`
`II.
`
`THE PETITIONER’S PRACTICAL CONCERNS
`ARE OVERSTATED.
`
`
`
`Urging the Court to sweep aside the plain text
`and broad public purposes of § 411(a), the petitioner
`contends that requiring a copyright owner to await
`registration before suing forces that owner “to
`endure the ongoing theft of intellectual property
`rights.” Pet. Br. 41. What’s more, the petitioner says,
`“if the Act’s statute of limitations elapses before the
`Office acts on the application, the copyright owner
`may forever lose any ability to enforce the very
`rights the Act grants.” Ibid.
`
`These fears are unfounded. If anything, such
`concerns are best addressed by the registration
`approach.
`
`
`
`
`
`
`
`
`17
`
`1. “[I]t makes little sense,” the petitioner says,
`for Congress “to give the Copyright Office the power
`to block suit through bureaucratic delay.” Pet. Br.
`20. But that assertion begs the question. After all,
`federal copyright remedies are matters of legislative
`grace. And the Copyright Act generally protects not
`the creator of a work, but the owner of a copyright.
`
`To register timely before filing suit isn’t that
`onerous. And like any other intellectual-property
`litigation, federal copyright-infringement actions are
`filed by highly specialized attorneys who are
`presumed to know the C