Amicus Curiae Brief — Fourth Estate Public Benefit Corporation, Petitioner v. Wall-Street.com, LLC, et al.

Supreme Court briefSep 4, 2018

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No. 17-571

IN THE

Supreme Court of the United States

FOURTH ESTATE PUBLIC BENEFIT CORPORATION,

Petitioner,

WALL-STREET.COM, LLC,

Respondent.

On Writ of Certiorari to the

United States Court of Appeals

for the Eleventh Circuit

BRIEF OF AMICUS CURIAE

THE COPYRIGHT ALLIANCE

IN SUPPORT OF PETITIONER

J. Matthew Williams

Counsel of record

Eric J. Schwartz

Mitchell Silberberg &

Knupp LLP

1818 N St., NW, 7th Floor

Washington, DC 20036

Tel: (202) 355-7900

Email: mxw@msk.com

Counsel for Amicus Curiae

TABLE OF CONTENTS

Page

INTERESTS OF AMICUS CURIAE ................... 1

SUMMARY OF ARGUMENT.............................. 4

ARGUMENT ........................................................ 7

The Better Reading Of The Statutory

Language Favors The Application Rule. .. 7

II.

The Certificate Rule Harms Authors And

Other Copyright Owners. ........................ 10

III.

The Application Rule Gives Congress’

Objectives Effect. ..................................... 19

IV.

The Certificate Rule Is Not Necessary To

Satisfy The Objective Of Allowing The

In Infringement Actions. ......................... 23

The Policies Underlying The Copyright

Act Favor The Application Rule. ............ 27

CONCLUSION ................................................... 29

TABLE OF AUTHORITIES

Page(s)

CASES

A & M Records Inc. v. Napster, Inc.,

239 F.3d 1004 (9th Cir. 2001)..............................11

Anton Sport, Inc. v. Monkey Boy Graphix

Inc.,

No. CV 08-377-PHX-ROS, 2008 WL

11339089 (D. Ariz. July 22, 2008) .......................17

Application Sci. & Tech., LLC v. Statmon

Tech. Co.,

No. 05 C 6864, 2006 U.S. Dist. LEXIS

35885 (N.D. Ill. Apr. 21, 2006) ............................17

Balzer & Assocs., Inc. v. Union Bank & Tr.

Co.,

No. 3:09CV283-HEH, 2009 WL 1675707

(E.D. Va. June 15, 2009) ......................................11

Cabell v. Zorro Prods. Inc.,

No. 5:15-cv-00771-EJD, 2018 WL

2183236 (N.D. Cal. May 11, 2018) ......................18

Coles v Wonder,

283 F.3d 798 (6th Cir. 2002)................................20

Cosmetic Ideas, Inc. v. IAC/Interactive Corp.,

606 F.3d 612 (9th Cir. 2010)................ 6, 13, 14, 24

TABLE OF AUTHORITIES

(continued)

Page(s)

Data Gen. Corp. v. Grumman Sys. Support

Corp.,

36 F.3d 1147 (1st Cir. 1994) ................................20

Eldred v. Ashcroft,

537 U.S. 186 (2003)..............................................27

Epic Games, Inc. v. Altmeyer,

No. 08-CV-0764-MJR, 2008 WL 4853634

(S.D. Ill. Nov. 5, 2008) .........................................12

Fourth Estate Pub. Benefit Corp. v. WallStreet.com,

138 S. Ct. 2707 (2018)..........................................23

Fourth Estate Pub. Benefit Corp. v. WallStreet.com,

856 F.3d 1338 (11th Cir. 2017)............................22

Gerig v. Krause Publ’ns, Inc.,

33 F. Supp. 2d 1304 (D. Kan. 1999) ....................13

Golan v. Holder,

565 U.S. 302 (2012)..........................................9, 27

Harper & Row, Publishers, Inc. v. Nation

Enters.,

471 U.S. 539 (1985)..............................................12

iii

TABLE OF AUTHORITIES

(continued)

Page(s)

Int’l Kitchen Exhaust Cleaning Ass’n. v.

Power Washers of N. Am.,

81 F. Supp. 2d 70 (D.D.C. 2000) ..........................10

La Resolana Architects, PA v. Clay Realtors

Angel Fire,

416 F.3d 1195 (10th Cir. 2005)............................11

Latin American Music Co. v. ASCAP,

642 F.3d 87 (1st Cir. 2011) ..................................15

Lions Gate Films Inc. v. Does,

No. 2:14-cv-06033-MMM, 2014 WL

3895240 (C.D. Cal. Aug. 8, 2014) ........................12

Loree Rodkin Mgmt. Corp. v. Ross-Simons,

Inc.,

315 F. Supp. 2d 1053 (C.D. Cal. 2004) ................10

Mazer v. Stein,

347 U.S. 201 (1954)..............................................27

Metro-Goldwyn-Mayer Studios Inc. v.

Grokster, Ltd.,

545 U.S. 913 (2005)..............................................11

Petrella v. Metro-Goldwyn-Mayer, Inc.,

134 S. Ct. 1962 (2014)..........................................13

TABLE OF AUTHORITIES

(continued)

Page(s)

Reed Elsevier, Inc. v. Muchnick,

559 U.S. 154 (2010).............................. 9, 11, 18, 19

Scepter, Inc. v. Metal Bulletin Ltd.,

165 F. Supp. 3d 680 (M.D. Tenn. 2016) ..............18

Sega Enters. Ltd. v. MAPHIA,

857 F. Supp. 679 (N.D. Cal. 1994).......................12

Stuart Weitzman, LLC v. Microcomputer

Res., Inc.,

542 F.3d 859 (11th Cir. 2008)........................17, 18

Syntek Semiconductor Co. v. Microchip

Tech.,

307 F.3d 775 (9th Cir. 2002)................................23

Tavory v. NTP, Inc.,

495 F. Supp. 2d 531 (E.D. Va. 2007) ...................20

Torres-Negron v. J & N Records, LLC,

504 F.3d 151 (1st Cir. 2007) ................................20

Touchpoint Commc’ns., LLC v. Dentalfone,

LLC,

No. 3:15-cv-05240-JRC, 2016 WL 524260

(W.D. Wash. Feb. 10, 2016) .................................18

TABLE OF AUTHORITIES

(continued)

Page(s)

Vacheron & Constantin-Le Coutre Watches,

Inc. v. Bernus Watch Co.,

260 F.2d 637 (2d Cir. 1958) ...................................9

Williams v. Gaye,

885 F.3d 1150 (9th Cir. 2018)..............................20

STATUTES AND REGULATIONS

17 U.S.C.

§ 102 .....................................................................21

§ 408 .....................................................................21

§ 408(f)(2) .............................................................12

§ 408(f)(3) .............................................................13

§ 410 .....................................................................24

§ 410(b) .................................................................22

§ 410(c) .............................................................6, 15

§ 411(a) ......................................................... passim

§ 411(c) ...................................................................8

§ 412 ........................................................... 6, 15, 22

§ 502 .....................................................................11

§ 504 .....................................................................15

§ 507 .....................................................................13

§ 508 .................................................................6, 25

§ 512(g)(2).............................................................19

37 C.F.R.

§ 201.3(c) ..............................................................13

§ 201.3(d) ..........................................................5, 25

§ 202.16 ................................................................12

TABLE OF AUTHORITIES

(continued)

Page(s)

OTHER AUTHORITIES

BRUCE KELLER & JEFFREY CUNARD,

(Keith Voelker, 2d ed. 2017) ..........................19, 21

Kupferschmid on U.S. Copyright Office

Modernization Efforts and Appropriations

(Apr. 15, 2016),

https://copyrightalliance.org/wp-content/

uploads/2016/10/041516-CopyrightAlliance-Letter-USCO-Appropriations.pdf ...........3

Kupferschmid before the House Admin.

Comm. on Improving Customer Service

for the Copyright Community (Dec. 2,

2015), https://copyrightalliance.org/wpcontent/

uploads/2016/08/copyright_alliance_testi

mony_on_usco_it_systems_hearing_in_ho

use_admin_com_dec_2_2015_0.pdf .......................3

Kupferschmid before the House Comm. on

Appropriations Subcomm. on Legislative

Branch (Apr. 17, 2018),

https://copyrightalliance.org/wp-content/

vii

TABLE OF AUTHORITIES

(continued)

Page(s)

uploads/2018/04/House-Leg-BranchAppropration-Testimony.pdf .................................3

Kupferschmid before the House Comm. on

Appropriations Subcomm. on Legislative

Branch (May 3, 2017),

https://copyrightalliance.org/wp-content/

uploads/2017/05/House-Leg-BranchApprop-hrg-testimony-May-20171.pdf..................3

Modernization,

https://copyrightalliance.org/policy/positio

n-papers/copyright-office-modernization/ ............3

Rulemaking, 83 Fed. Reg. 24,054 (May

24, 2018) ...............................................................24

Form AO121, Report on the Filing or

Determination of an Action or Appeal

Regarding a Copyright,

http://www.uscourts.gov/sites/default/

files/ao121.pdf ......................................................25

H.R. REP. NO. 2419 (1956) .......................................13

H.R. REP. NO. 94-1476 (1976) ...........................8, 9, 14

viii

TABLE OF AUTHORITIES

(continued)

Page(s)

2 MELVILLE B. NIMMER & DAVID NIMMER,

NIMMER ON COPYRIGHT (Matthew Bender

2018) ................................................... 10, 16, 23, 26

9 MELVILLE B. NIMMER & DAVID NIMMER,

NIMMER ON COPYRIGHT (Matthew Bender

2018), App. 15-153 .................................................8

I PAUL GOLDSTEIN, GOLDSTEIN ON

Press Release, Office of the United States

Trade Representative, USTR Releases

2018 Special 301 Report on Intellectual

Property Rights (Apr. 2018) ................................27

S. REP. NO. 85-1014 (1957) .......................................13

S. REP. NO. 94-473 (1975) .....................................8, 13

S. REP. NO. 105-190 (1998) .......................................28

Statement of Marybeth Peters, The Register

of Copyrights before the Subcommittee on

Courts and Intellectual Property

Committee on the Judiciary, United

States House of Representatives, 105th

Congress, 1st Sess., Sept. 11, 1997, No

Electronic Theft (NET) Act of 1997 (H.R.

2265) .....................................................................28

TABLE OF AUTHORITIES

(continued)

Page(s)

Supplementary Register’s Report on the

General Revision of the U.S. Copyright

Law, H.R. Comm. Print, 89th Cong., 1st

Sess. 124 (1965) .....................................................8

Trac Reports, Inc., Fewer Copyright

Infringement Lawsuits Filed (2017),

http://trac.syr.edu/tracreports/civil/483/ .............25

U.S. Copyright Office, Annual Report (2017) ....19, 25

U.S. Copyright Office, Archive of Amicus

Briefs, https://www.copyright.gov/rulingsfilings/briefs/ .......................................................25

U.S. Copyright Office, Archive of Legal

Filings,

https://www.copyright.gov/rulingsfilings/411/ ............................................................25

U.S. Copyright Office, Registration

Processing Times,

https://www.copyright.gov/registration/do

cs/processing-times-faqs.pdf ........................2, 5, 26

U.S. Copyright Office, Remedies for

https://www.copyright.gov/docs/smallclai

ms/ ........................................................................16

TABLE OF AUTHORITIES

(continued)

Page(s)

U.S. GENERAL ACCOUNTING OFFICE,

GAO/AFMD-83-113, IMPROVING

PRODUCTIVITY IN COPYRIGHT

REGISTRATION (1982) .............................................4

United States District Courts: National

Judicial Caseload Profile,

http://www.uscourts.gov/sites/default/files

/data_tables/fcms_na_distprofile0331.201

8.pdf ......................................................................26

INTERESTS OF AMICUS CURIAE 1

The Copyright Alliance is a nonprofit,

nonpartisan, 501(c)(4) membership organization

dedicated to serving as the unified voice of the

hundreds of thousands of individuals and

organizations across the spectrum of copyright

disciplines, including authors, photographers,

performers, artists, software developers, musicians,

journalists, directors, songwriters, game designers

and many other individual creators. The Copyright

Alliance also represents the interests of book

publishers, motion picture studios, software

companies, music publishers, sound recording

companies, sports leagues, broadcasters, guilds,

unions, newspaper and magazine publishers, and

many more organizations.

The individual creators and producing

organizations represented by the Copyright Alliance

rely on copyright law to protect their originality,

efforts, and investments in the creation and

distribution of copyrighted works to the public for

educational,

commercial

and

entertainment

purposes. Accordingly, Copyright Alliance members

are frequently plaintiffs in copyright infringement

No party or counsel for any party authored any part of this brief

or made a monetary contribution intended to fund the

preparation and submission of this brief. All parties consent to

Amicus filing this brief.

cases and other cases involving copyrighted works,

seeking to protect their ownership rights and

investments. However, Copyright Alliance members

are also frequently defendants in such cases. For that

reason, they bring a balanced and experienced

perspective to the issue presented.

Amicus has a particular interest in the

resolution of the question presented in light of the

lengthy pendency times for registration applications,

which results from resource constraints and the lack

of modernization of the Copyright Office and its

information technology systems. 2 The Copyright

Alliance has testified before multiple Congressional

committees seeking to support the Copyright Office’s

efforts to modernize, increase its funding, and

separate its own governance from that of the Library

of Congress, whose interests and priorities frequently

The Register acts on applications submitted online in cases

where no additional correspondence is required between the

applications) within three to eleven months, seven months on

average;

paper

applications

without

correspondence

(approximately 3% of applications) take two to sixteen months,

nine on average; web applications with correspondence

(approximately 30% of applications) take three to sixteen

months, nine on average; and paper applications with

correspondence (approximately 2% of applications) take four to

twenty-eight months, sixteen months on average.

U.S.

Office,

Registration

Processing

Times,

https://www.copyright.gov/registration/docs/processing-timesfaqs.pdf.

do not align with those of the Copyright Office. 3 The

certiorari here to resolve the split in the Courts of

Appeals regarding whether 17 U.S.C. § 411(a) shuts

the courthouse door on any plaintiff whose

registration application has not yet been acted upon

by the Register. An application of the statute

consistent with its language and Congress’ intent

favors the Application Rule (i.e., allowing a plaintiff

E.g., Copyright Alliance, US Copyright Office Modernization,

https://copyrightalliance.org/policy/position-papers/copyrightoffice-modernization/ (last visited Aug. 24, 2018); Copyright

Alliance, Statement of Keith Kupferschmid before the House

Comm. on Appropriations Subcomm. on Legislative Branch (Apr.

17,

2018),

https://copyrightalliance.org/wpcontent/uploads/2018/04/House-Leg-Branch-ApproprationTestimony.pdf; Copyright Alliance, Statement of Keith

Kupferschmid before the House Comm. on Appropriations

Subcomm.

Legislative

Branch

(May 3,

2017),

https://copyrightalliance.org/wp-content/uploads/2017/05/

House-Leg-Branch-Approp-hrg-testimony-May-20171.pdf;

House Admin. Comm. on Improving Customer Service for the

Community

(Dec.

2015),

https://copyrightalliance.org/wp-content/uploads/2016/08/

copyright_alliance_testimony_on_usco_it_systems_hearing_in_

house_admin_com_dec_2_2015_0.pdf; Copyright Alliance, Letter

from Keith Kupferschmid on U.S. Copyright Office

Modernization Efforts and Appropriations (Apr. 15, 2016),

https://copyrightalliance.org/wp-content/uploads/2016/10/

041516-Copyright-Alliance-Letter-USCO-Appropriations.pdf.

The Copyright Alliance also supported the Copyright Office for

the Digital Economy Act and the Register of Copyrights

Selection and Accountability Act of 2017.

to file suit once a complete application is submitted).

Moreover, the Application Rule gives effect to the

purposes of the Copyright Act, including by providing

rights in timely and meaningful ways while

maintaining incentives to register works and

preserving the benefit to the lower courts of the

should intervene.

SUMMARY OF ARGUMENT

The Application Rule (i) is the better

application of the statutory text and history;

(ii) avoids the significant harms that would be worked

by the Certificate Rule (i.e., requiring that Office

action be completed prior to the filing of a complaint);

(iii) preserves Congress’ intent to incentivize

submissions of application information and deposit

copies; (iv) has no impact on the courts’ access to

advice from the Register of Copyrights; and

(v) furthers Congress’ objective of providing effective,

enforceable, exclusive rights to copyright owners, so

that they can pursue immediate relief for

infringements.

In 1981, the Copyright Office took five to six

weeks to issue or deny a registration certificate. U.S.

GENERAL ACCOUNTING OFFICE, GAO/AFMD-83-113,

IMPROVING

PRODUCTIVITY

REGISTRATION 1 (1982). And its leadership at that

time acknowledged that even that processing period

was too long – something to strive to reduce. Id. Now,

applications remain pending for many months, not

weeks. U.S. Copyright Office, Registration Processing

Times, https://www.copyright.gov/registration/docs/

processing-times-faqs.pdf.

The current time for the Copyright Office to

process an application (i.e., seven months for an

average online application and nine months for an

average paper application) is far too extended for a

lawsuit. An author, especially a small business or

individual creator, should not be forced to pay a steep

administrative tax – which is approximately twenty

times the normal fee, 37 C.F.R. § 201.3(d), and must

be paid in addition to that fee – to expedite her

application before filing suit against infringers. Even

waiting two weeks for the Copyright Office to process

an expedited application could result in massive

infringement occurring before injunctive relief would

become available. Fast-paced infringement in the

digital environment often causes significant harm in

very little time. Once she has submitted a complete

registration application, bureaucratic processes

should not stymie an author’s efforts to protect her

rights. This is especially true given that it is only U.S.

authors, not foreign authors, who are shut out of court

by the Certificate Rule. 17 U.S.C. § 411(a).

Congress’ policy objectives of incentivizing the

filing of registration applications – to populate the

public catalogue of information concerning copyright

ownership and to provide deposit copies to the Library

of Congress – are met by requiring the submission of

a complete registration application prior to the filing

of an infringement lawsuit. Cosmetic Ideas, Inc. v.

IAC/Interactive Corp., 606 F.3d 612, 620 (9th Cir.

2010). Congress intended other provisions of the

submit applications soon after the creation or

publication of their works by, for example,

conditioning the availability of statutory damages

and attorney’s fees on applying for registration prior

to initiation of infringement and providing prima

facie validity to the facts stated in a registration

certificate with an effective date of five years from

publication. See 17 U.S.C. §§ 410(c), 412. Those

provisions remain in force under the Application

Rule.

Moreover, for multiple reasons, the Application

Rule preserves the Register’s ability to advise the

courts during infringement actions. For example, the

infrequently, is notified by clerks of courts when

plaintiffs file infringement lawsuits. 17 U.S.C. § 508.

Thus, the Register, if she is inclined to have an

opportunity to weigh in early during litigation, could

simply expedite review of every application that is at

issue in pending litigation. The cost to the Copyright

Office for expediting applications is virtually non-

existent. 4

Or, if the Register chooses not to

voluntarily expedite applications, courts could stay

cases or rely on the doctrine of primary jurisdiction to

create time to request advice from the Register.

The negligible benefits, if any, of the Certificate

Rule pale in comparison to the countervailing harms

it would cause. The underlying policies of the

Application Rule.

ARGUMENT

The Better Reading Of The Statutory

Language Favors The Application Rule.

As more fully articulated in the brief of

Petitioner, the better reading of the statutory text

favors the Application Rule because the applicable

provision focuses on determining whether the

applicant has taken all steps available to her to obtain

a registration. Section 411(a) states: “[N]o civil 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.” Of course, the use of the

passive voice in the provision begs the question of

who must have made the registration. While section

411(a) does not itself expressly answer this question,

See note 12, infra regarding the high fees applicants must pay

associated with expedited registration.

other provisions within the Copyright Act – indeed,

within the same section – refer to copyright owners

making registrations.

E.g., 17 U.S.C. § 411(c)

(emphasis added) (permitting an action for

infringement of the copyright in “a work consisting of

sounds, images, or both, the first fixation of which is

made simultaneously with its transmission” if, among

other requirements, “the copyright owner . . .

makes registration for the work within three

months after its first transmission.”).

This reading is supported by the legislative

history, which repeatedly references copyright

owners making registrations. E.g., H.R. REP. NO. 941476, at 157 (1976) (“Under the bill, as under the law

now in effect, a copyright owner who has not

registered his claim can have a valid cause of action

against someone who has infringed his copyright, but

he cannot enforce his right in the courts until he has

made registration.”); S. REP. NO. 94-473, at 139

(1975) (same); Id. at 135 (“[R]egistration of a claim of

by ‘the owner of copyright or of any exclusive right

in the work’ at any time during the copyright term.”);

Supplementary Register’s Report on the General

Revision of the U.S. Copyright Law, H.R. Comm.

Print, 89th Cong., 1st Sess. 124 (1965), in 9

MELVILLE B. NIMMER & DAVID NIMMER, NIMMER ON

claim before he can enforce his rights in the

courts.”). 5

Opinions from this Court have similarly

referred to copyright owners registering their works.

E.g., Golan v. Holder, 565 U.S. 302, 314 n.11 (2012)

(“The Copyright Act retains . . . incentives for

authors to register their works . . . .”); Reed Elsevier,

Inc. v. Muchnick, 559 U.S. 154, 171 (2010) (Ginsburg,

concurring) (section 411(a) “instructs authors to

for infringement”).

Given all of the foregoing, the better reading of

the phrase “has been made” is “has been made by the

applicant.” After paying the fee, filing a proper

registration form, and providing a deposit copy to the

applicant can take to obtain a registration. Therefore,

under the best application of the statute, the

registration requirement is satisfied by filing a

complete application. Moreover, as discussed further

below, the Application Rule is consistent with

Congress’ intent and policy objectives relating to the

The fact that Congress was acting to overturn the Second

Circuit’s Vacheron & Constantin-Le Coutre Watches, Inc. v.

Bernus Watch Co., 260 F.2d 637 (2d Cir. 1958), decision, which

prevented plaintiffs from suing infringers after the Register’s

denial of an application, is further evidence that Congress did

not want the actions of the Register to determine when, and

whether, a plaintiff had access to the courts. See H.R. REP. NO.

94-1476, at 157.

practical impact the Certificate Rule would have on

creators and copyright owners.

II.

The Certificate Rule Harms Authors And

Other Copyright Owners.

Courts on both sides of the divide have

acknowledged that the Application Rule generates

better policy outcomes.

See, e.g., Int’l Kitchen

Exhaust Cleaning Ass’n. v. Power Washers of N. Am.,

81 F. Supp. 2d 70, 72 (D.D.C. 2000) (following

Application Rule: “To best effectuate the interests of

justice and promote judicial economy, the court

endorses the position that a plaintiff may sue once the

work, and filing fee.”); Loree Rodkin Mgmt. Corp. v.

Ross-Simons, Inc., 315 F. Supp. 2d 1053, 1056-57

(C.D. Cal. 2004) (following Certificate Rule but calling

it an “inefficient and peculiar result”) (quoting Ryan

v. Carl Corp., No. C 97-3873 FMS, 1998 WL 320817,

at *3 (N.D. Cal. June 15, 1998)).

Leading copyright commentators agree that

the Application Rule is the better reading of the

statute. 2 MELVILLE B. NIMMER & DAVID NIMMER,

NIMMER ON COPYRIGHT § 7.16[B][3][b][ii] (Matthew

Bender 2018) (“Given that the claimant has

submitted an application that has yet to be acted upon

at that juncture has done all that she can do, and will

ultimately be allowed to proceed regardless of how the

sense to create a period of ‘legal limbo’ in which suit

is barred.”); I PAUL GOLDSTEIN, GOLDSTEIN ON

approach is the better rule.”). In part, this conclusion

stems from the needless and harmful impacts felt by

harms include:

A temporary restraining order or

preliminary injunction, see 17 U.S.C. § 502, would

likely be unavailable to an author while she awaited

action from the Register, which would be a problem

despite the availability of expedited application

processing. See La Resolana Architects, PA v. Clay

Realtors Angel Fire, 416 F.3d 1195, 1204 (10th Cir.

2005), abrogated in part by Reed Elsevier, Inc. v.

Muchnick, 559 U.S. 154 (2010) (“Every remedy

outlined in Title 17, including injunctions, is

conditioned upon a copyright owner having registered

the copyright.”); Balzer & Assocs., Inc. v. Union

Bank & Tr. Co., No 3:09CV283-HEH, 2009 WL

1675707, at *4-5 (E.D. Va. June 15, 2009) (dismissing

request for injunctive relief due to lack of

registration). 6

Millions of infringing copies or performances of

a work can take place in days, or even minutes. See

Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd.,

545 U.S. 913, 923 (2005); A & M Records, Inc. v.

La Resolana Architects and Balzer, to the extent they treated

section 411(a) as a jurisdictional requirement, are inconsistent

with this Court’s later opinion in Muchnick.

Napster, Inc., 239 F.3d 1004, 1019 (9th Cir. 2001).

Accordingly, even if a copyright owner makes

registration of her work on the first day of publication,

massive amounts of infringement can occur before she

can obtain a registration certificate.

This problem is of unique concern in cases of

pre-release piracy, where a work has not yet hit the

legitimate market but is already being pirated at a

rapid pace. See, e.g., Sega Enters. Ltd. v. MAPHIA,

857 F. Supp. 679, 689 (N.D. Cal. 1994) (injunction

issued against, inter alia, online distribution of

unreleased video games); Lions Gate Films, Inc. v.

Does, No. 2:14-cv-06033-MMM, 2014 WL 3895240, at

*2, 5-7 (C.D. Cal. Aug. 8, 2014) (injunction issued

against online distribution of millions of copies of the

unreleased movie “Expendables 3”); Epic Games,

Inc. v. Altmeyer, No. 08-CV-0764-MJR, 2008 WL

4853634, at *6 (S.D. Ill. Nov. 5, 2008) (discussing the

“immediate irreparable harm” caused by Defendant

selling advanced copies of Plaintiff’s copyrighted

video game prior to the release of the game); see also

Harper & Row, Publishers, Inc. v. Nation Enters., 471

U.S. 539 (1985) (involving infringement of biography

of President Gerald Ford prior to its publication).

While some categories of copyrighted works are

eligible for pre-registration, not all categories of

works are. See 37 C.F.R. § 202.16 (covering, for

example,

only

“advertising

marketing

photographs,” and not other photographs); 17 U.S.C.

§ 408(f)(2) (instructing Register to issue regulations

to define “class[es] of works that . . . had a history of

infringement prior to authorized commercial

distribution”). And, even if all works could be preregistered, there is no purpose in slamming the

courthouse door on authors who elect not to register

prior to publication, which results in them having to

file two applications, rather than one. See 17 U.S.C.

§ 408(f)(3) (requiring second registration application

to be submitted “[n]ot later than 3 months after the

first publication of a work preregistered . . .”); see also

37 C.F.R. § 201.3(c) (fee for pre-registration

application is $140, four times the standard fee).

A plaintiff could lose her chance to sue

entirely if the statute of limitations, 17 U.S.C. § 507,

were to expire before the Register took action on an

application. Cosmetic Ideas, 606 F.3d at 620-21. At

least one court, Gerig v. Krause Publ’ns, Inc., 33 F.

Supp. 2d 1304, 1306 (D. Kan. 1999), has concluded

that a case may be back-dated to the effective date of

a registration for statute of limitations purposes, even

if the case could not be filed until the limitations

period technically ended. But there is no guarantee

that such an equitable approach would become

widespread.

In 1957, when Congress debated the statute of

limitations period to include in a revision of the 1909

different lengths, ranging from one year to eight

years. Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S.

Ct. 1962, 1969 (2014) (citing H.R. REP. NO. 2419, at 2

(1956)); see generally S. REP. NO. 85-1014 (1957). It is

significant that a two-year statute of limitations was

considered, and that Congress specifically chose three

years to provide injured parties with enough time to

commence actions. This implies that Congress did not

believe that a two-year period was adequate.

In 1976, Congress decided to retain the threeyear period because

the

1957

legislation

“represent[ed] a reconciliation of views.” S. REP. NO.

94-473, at 146. Yet, in practice, the three-year statute

of limitations, combined with adherence to the

Certificate Rule, would often create a de facto twoyear statute of limitations because applications often

remain pending at the Copyright Office for a year or

more. 7 As the Ninth Circuit stated, “[t]his result does

not square well with § 410(d)’s mandate that an

application’s effective registration date should be the

day that a completed application is received.”

Cosmetic Ideas, 606 F.3d at 620; see also H.R. REP.

NO. 94-1476, at 157 (noting that section 410(d) was

designed to “take[] account of the inevitable timelag

between receipt of the application and other material

and the issuance of the certificate . . . .”).

Plaintiffs could lose access to evidence

while they lack opportunity to pursue discovery.

Witnesses could die; documents could be deleted or

See note 2, supra.

destroyed; and memories could fade while a plaintiff

awaited action by the Register.

Plaintiffs who have not submitted

registration applications until the moment arrives to

file lawsuits would frequently, although not always,

already be precluded from seeking statutory damages

and attorneys’ fees, and, in some instances, would not

receive any evidentiary benefit from the registration

certificate. See 17 U.S.C. § 410(c) (denying prima

facie weight to registrations not applied for within

five years of publication); 17 U.S.C. § 412 (limiting

availability of remedies where infringement began

prior to the effective date of a registration certificate

for unpublished works or prior to the effective date of

a registration certificate for published works if the

effective date is not within three months of

publication). Given the cost of litigation, including

the expense of proving actual damages and ill-gotten

profits, 17 U.S.C. § 504, and that attorneys’ fees are

available to defendants regardless of the plaintiff’s

registration status of a work, Latin American Music

Co. v. ASCAP, 642 F.3d 87, 90 (1st Cir. 2011), such

plaintiffs are already at a disadvantage. Forcing

them to pay an expedited fee or to wait months to sue

makes matters even worse and could discourage the

filing of meritorious claims, especially for individual

creators of multiple, infringed works where the

expedited registration fees can quickly overwhelm

any possible economic returns in litigation.

As the Copyright Office itself has explained,

such challenges have a big impact on individual

authors and small businesses. 8

[W]hile a copyright owner may want to

stop an infringement that has caused a

relatively small amount of economic

damage, that owner may be dissuaded

from filing a lawsuit because the

prospect of a modest recovery may not

justify the potentially large expense of

litigation. While the Act offers the

possibility of statutory damages and

attorney’s fees, these benefits are not

available in all cases and parties may

not recover them until after the

court battle that requires payment of

significant up-front costs. 9

U.S. Copyright Office, Remedies for Copyright Small

Claims, https://www.copyright.gov/docs/smallclaims/.

Owners of large portfolios of copyrighted works would also be

harmed by the Certificate Rule, given the difficulties and costs

associated with registering each work in such portfolios.

The Copyright Alliance supports the Copyright Alternative in

Small-Claims Enforcement (CASE) Act of 2017, which would

create of a small claims board to be housed at the Copyright

Office to help to alleviate some of these problems.

Authors who are U.S. nationals would be

at a distinct disadvantage to authors who are foreign

nationals, and who need not register their

copyrighted works prior to filing suit in U.S. courts.

See 17 U.S.C. § 411(a) (limiting registration

requirement to “United States work[s]”); 2 MELVILLE

B. NIMMER & DAVID NIMMER, NIMMER ON COPYRIGHT

§ 7.16[B][1][b][ii].

This peculiar scenario, which

resulted from Congress’ approach to implementing

the Berne Convention on the Protection of Literary

and Artistic Works’ prohibition on statutory

formalities in 1989, id. at § 7.16[B][6][c], is less

perplexing when the Application Rule allows U.S.

authors into court after submitting completed

applications.

Would-be plaintiffs would potentially be

at a disadvantage to potential defendants, who, in

some courts, could file for declaratory relief without

regard to a work’s registration status. Compare

Application Sci. & Tech., LLC v. Statmon Tech. Co.,

No. 05 C 6864, 2006 U.S. Dist. LEXIS 35885, at *2

(N.D. Ill. Apr. 21, 2006) (holding no registration

required to seek declaration of non-infringement),

and Anton Sport, Inc. v. Monkey Boy Graphix Inc., No.

CV 08-377-PHX-ROS, 2008 WL 11339089, at *1–2 (D.

Ariz. July 22, 2008) (same), with Stuart Weitzman,

LLC v. Microcomputer Res., Inc., 542 F.3d 859, 863

(11th Cir. 2008), abrogated in part by Reed Elsevier,

Inc. v. Muchnick, 559 U.S. 154 (2010) (requiring

registration). 10 Potential defendants would thereby

gain a “leg up” in selection of the litigation’s forum

and the procedural posture of the case, in which the

defendant and potential counterclaimant could be

barred from filing compulsory counterclaims for

months (potentially resulting in waiver of those

claims).

See Touchpoint Commc’ns., LLC v.

Dentalfone, LLC, No. 3:15-cv-05240-JRC, 2016 WL

524260, at *4 (W.D. Wash. Feb. 10, 2016) (referring to

an infringement claim as a compulsory counterclaim

to a declaratory judgment complaint seeking a

declaration of non-infringement); Cabell v. Zorro

Prods. Inc., No. 5:15-cv-00771-EJD, 2018 WL

2183236, at *17 n. 12 (N.D. Cal. May 11, 2018) (“The

Court also notes that, because Defendants did not

counterclaim for infringement, it may be that they

have forever abandoned their ability to bring these

claims.”); Scepter, Inc. v. Metal Bulletin Ltd., 165 F.

Supp. 3d 680, 687 (M.D. Tenn. 2016) (citing Meathe v.

Ret, 547 Fed. Appx. 683, 687 (6th Cir. 2013), which

states that “a claim for infringement is a compulsory

counterclaim in a suit for declaratory judgment of

non-infringement.”) (internal quotations omitted).

If a copyright owner informs an online

service provider that user-uploaded content is

infringing and the user disputes that assertion, the

service provider may elect not to disable access to the

Stuart Weitzman is, in part, inconsistent with this Court’s

opinion in Muchnick, which held that section 411(a) is not

jurisdictional.

content if the copyright owner does not file a

complaint against the infringer within fourteen

business days. 17 U.S.C. § 512(g)(2). Under the

Certificate Rule, the copyright owner might not be

able to file a complaint within fourteen days,

depending on whether the Register takes action on a

pending application.

III.

The Application Rule Gives Congress’

Objectives Effect.

Congress adopted the requirement, embodied

in section 411(a), that authors of U.S. works register

those works before filing infringement actions, not to

benefit defendants (i.e., potential infringers), but

instead to serve “broader public and governmental

interests[.]” Brief for the United States as Amicus

Curiae Supporting Vacatur and Remand, at 11, Reed

Elsevier, Inc. v. Muchnick, 559 U.S. 154 (2010) (No.

08-103). Each of these public and governmental

interests is given full effect by the Application Rule.

One purpose of section 411(a) is to

incentivize depositing copies of works for the

collection of the Library of Congress. BRUCE KELLER

JEFFREY

CUNARD,

LAW:

PRACTITIONER’S GUIDE § 5:3 (Keith Voelker, 2d ed.

2017) (citing legislative history). The estimated value

of deposits received in 2017 was $40,821,089. U.S.

Annual Report”).

These deposits not only enable the Library to

serve as the nation’s leading archive of published

works, but also provide valuable evidence in

litigation. See, e.g., Williams v. Gaye, 885 F.3d 1150,

1169 (9th Cir. 2018), modified by 895 F.3d 1106 (9th

Cir. 2018) (discussing centrality of deposit copy in

case involving alleged infringement of musical

composition); Coles v Wonder, 283 F.3d 798, 802 (6th

Cir. 2002) (where plaintiff’s deposit copy was an

attempt at recreating a work he allegedly created

years earlier, he could not prove defendant could have

accessed the work prior to creating the allegedly

infringing work); Data Gen. Corp. v. Grumman Sys.

Support Corp., 36 F.3d 1147, 1161–62 (1st Cir. 1994),

abrogated in part by Reed Elsevier, Inc. v. Muchnick,

559 U.S. 154 (2010) (citing legislative history for the

assertion that the “key purpose” of the deposit

requirement “is to prevent confusion about which

work the author is attempting to register”); TorresNegron v. J & N Records, LLC, 504 F.3d 151, 163–64

(1st Cir. 2007) (concluding that a reconstruction,

created without direct access to the original, “cannot

constitute a ‘copy’ sufficient to satisfy the deposit copy

requirement”, and “[s]ubmission of a reconstruction

with a copyright registration application results in an

incomplete application”); Tavory v. NTP, Inc., 495 F.

Supp. 2d 531, 536 (E.D. Va. 2007), affirmed by 297 F.

App’x 976 (Fed. Cir. 2008) (finding that the deposit

requirement serves a “gatekeeping” and “evidentiary”

function and that the “copies that are submitted . . .

with an application for registration then become part

of a record by which claims of infringement are

tested”).

This purpose is fully vindicated by the

Application Rule. So long as plaintiffs continue to file

registration applications prior to filing lawsuits, as

they must under the Application Rule, the Library

will continue to receive deposits for its collections and

litigants and courts will continue to have access to

deposit copies during litigation.

Indeed, the

Certificate Rule could actually decrease the number

of applications filed and deposits submitted because

rights at all if they cannot pursue enforcement actions

quickly and in a cost-effective manner.

A second purpose of section 411(a) is to

incentivize copyright registration, which is

permissive, not mandatory, under the Copyright Act.

17 U.S.C. §§ 102, 408. The availability of copyright

registrations via their inclusion in the Copyright

Office’s online and hard-copy files, increases public

access to information concerning copyrighted works.

BRUCE KELLER & JEFFREY CUNARD, COPYRIGHT LAW:

A PRACTITIONER’S GUIDE § 5:3 (citing legislative

history).

The Application Rule provides a strong

incentive to provide ownership information in

registration applications by requiring their

submission prior to a plaintiff initiating a lawsuit.

The Certificate Rule, on the other hand, could result

in a decrease in the number of applications filed,

where the substantial delay in receiving a

registration certificate renders enforcement a less

effective or prohibitively expensive remedy.

Supporters of the Certificate Rule

maintain that Sections 507(b) and 411(a), considered

together, “reflect a statutory plan to encourage

registration.” See Fourth Estate Pub. Benefit Corp. v.

Wall-Street.com, 856 F.3d 1338, 1342 (11th Cir. 2017)

(“[A]n owner who files an application late in the

statute of limitations period risks losing the right to

enforce his copyright . . . . But this potential loss

encourages an owner to register his copyright soon

after he obtains the copyright and before

infringement occurs.”). However, other provisions in

the copyright law, including increased available

remedies and prima facie evidence for timely

certificates, are more effective incentives to register

early.

E.g., 17 U.S.C. §§ 410(b) (registration

certificate credited as prima facie evidence if dated

within five years of publication), 412 (advanced

remedies available if registration made prior to

commencement of infringement for unpublished

works or within three months of publication for

published works). These incentives apply in exactly

the same manner, regardless of whether the

Application Rule or the Certificate Rule applies,

because they are based on when the application was

filed, not when it was issued. Therefore, adopting the

Certificate Rule would do nothing to further

encourage authors who are not otherwise already

spurred by these stronger incentives to register.

IV.

The Certificate Rule Is Not Necessary To

Satisfy The Objective Of Allowing The

Infringement Actions.

The United States’ amicus brief at the petition

stage advocated that one objective of section 411(a)

that is not satisfied by submission of a registration

application and deposit is the timely provision to a

court of the Register’s conclusion regarding the

registerability and/or copyrightability of a work by a

claimant. Brief for the United States as Amicus

Curiae Supporting Grant of Certiorari, at 12, 14-15,

21-22, Fourth Estate Pub. Benefit Corp. v. WallStreet.com, 138 S. Ct. 2707 (2018) (No. 17-571).

However, there are multiple reasons why this

objective does not justify adopting the Certificate

Rule.

Courts may, when appropriate, stay

cases and/or request the Register’s opinions. 2

MELVILLE B. NIMMER & DAVID NIMMER, NIMMER ON

BRUCE KELLER & JEFFREY CUNARD, COPYRIGHT LAW:

A PRACTITIONER’S GUIDE § 5:3.1 (discussing doctrine

of primary jurisdiction); Syntek Semiconductor Co. v.

Microchip Tech., 307 F.3d 775, 780 (9th Cir. 2002)

(“Primary jurisdiction is not a doctrine that

implicates the subject matter jurisdiction of the

federal courts. Rather, it is a prudential doctrine

under which courts may, under appropriate

circumstances, determine that the initial decisionmaking responsibility should be performed by the

relevant agency rather than the courts.”).

There may be few cases where courts elect this

approach given that, even in cases where courts do

have the benefit of knowing the Register’s views,

either because she has acted on an application or

intervened in a case, courts always conduct their own

assessment of the case. See Cosmetic Ideas, 606 F.3d

at 621, n. 13 (“After the Register’s determination, the

courts are empowered to review any denial of a

certificate, and approval by the Register gives an

applicant only prima facie evidence of copyright,

leaving the courts to make the ultimate

determination in either instance.”). 11 This approach

makes sense given that the review process involved in

assessing registration applications is not extensive.

See id. (“The Register looks only to ensure that the

material deposited is ‘copyrightable subject matter’

and that the legal and formal requirements of the

Title have been met.”).

Of course, where a registration certificate has an effective date

within five years of first publication of a work, courts are

obligated to treat it as prima facie evidence of any fact stated on

the certificate. 17 U.S.C. § 410. The outcome of this appeal will

not alter that fact.

Nevertheless, in cases involving close

questions where the Register has not elected to

intervene prior to taking action on an application,

courts remain free to seek her advice.

Every plaintiff – not only plaintiffs

required to do so by section 411(a) – must notify the

17 U.S.C. § 508; Form AO121, Report on the Filing or

Determination of an Action or Appeal Regarding a

http://www.uscourts.gov/sites/default/

files/ao121.pdf. These notices provide the Register

with opportunities to move applications to the front of

the line; to take action; and to decide whether to

intervene. 12

infringement cases were filed. Trac Reports, Inc.,

http://trac.syr.edu/tracreports/civil/483/.

The

requests to provide advice to courts. 13 It appears that

The Copyright Office already has a process to allow litigants

to expedite the processing of their applications. While the

§ 201.3(d)) – which it intends soon to increase to $1,000 – the

reported internal cost to the Copyright Office of expediting a

registration is only $67. See Copyright Office Fees: Notice of

Proposed Rulemaking, 83 Fed. Reg. 24,054, 24,054, 24,059

(May 24, 2018).

Last year, the Copyright Office received only three requests

from courts for advice on registration issues. 2017 Annual

the Copyright Office did not affirmatively intervene

in any case in 2017. This fact, combined with the low

percentage of registration denials, puts the

circumstances in perspective.

registration applications, and only denied close to

18,000 (3% of the total; and, of these “denials” many

are likely due to incomplete applications – improper

fees, no deposit copies – rather than substantive legal

533,606 claims and denied only 12,656 claims. A

much smaller number of the denied applications

concerned works involved in infringement suits.

Thus, even if the Register were to elect not to

voluntarily move works involved in infringement

suits to the front of the application line, it is unlikely

very many of those applications would eventually be

denied or involve an issue the Register would need to

intervene to address.

Current application processing time is,

on average, seven months for online claims and nine

months for paper claims. U.S. Copyright Office,

Registration

Processing

Times,

https://

www.copyright.gov/registration/docs/processingtimes-faqs.pdf. Median federal court litigation takes

Report at 8. See also U.S. Copyright Office, Archive of Legal

Filings, https://www.copyright.gov/rulings-filings/411/; U.S.

Office,