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

Supreme Court briefNov 13, 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 AND JERROLD D. BURDEN,

Respondents.

__________

On Writ of Certiorari

to the United States Court of Appeals

for the Eleventh Circuit

__________

REPLY 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

November 13, 2018

AARON M. PANNER

Counsel of Record

GREGORY G. RAPAWY

GRACE W. KNOFCZYNSKI

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.

TABLE OF CONTENTS

Page

RULE 29.6 STATEMENT ........................................... i

TABLE OF AUTHORITIES ...................................... iii

ARGUMENT ............................................................... 3

“REGISTRATION” IS “MADE” FOR

PURPOSES OF § 411(A) BY THE

A. The Statute Uses the Phrase “Make

Registration” and Its Variants To

Refer to Compliance with the Requirements of § 408(a) ............................... 3

B. Allowing a Copyright Owner To Sue

for Infringement Once the Copyright Owner Has Complied with the

Registration Requirement Comports

with the Structure of § 411(a) and

the Rest of the Copyright Act .................. 11

II.

THE ACT’S HISTORY CONFIRMS

THAT A COPYRIGHT OWNER MAY

INSTITUTE AN ACTION FOR INFRINGEMENT AFTER COMPLYING

WITH STATUTORY REQUIREMENTS

FOR REGISTRATION .................................. 16

III.

THE COPYRIGHT ACT’S SCHEME

OF RIGHTS AND REMEDIES FAVORS ALLOWING SUITS TO PROCEED ONCE THE COYPRIGHT

OWNER HAS COMPLIED WITH REQUIRED FORMALITIES ............................. 19

CONCLUSION.......................................................... 22

iii

TABLE OF AUTHORITIES

Page

CASES

Almendarez-Torres v. United States, 523 U.S.

224 (1998) .............................................................. 8

American Broad. Co. v. Aereo, Inc., 134 S. Ct.

2498 (2014) .....................................................16, 18

Brotherhood of R.R. Trainmen v. Baltimore &

O.R.R. Co., 331 U.S. 519 (1947) .......................... 10

Bruesewitz v. Wyeth LLC, 562 U.S. 223 (2011) ....... 19

Caraco Pharm. Labs., Ltd. v. Novo Nordisk

A/S, 566 U.S. 399 (2012) .................................... 14

Carol Barnhart Inc. v. Economy Cover Corp.,

773 F.2d 411 (2d Cir. 1985) ................................. 21

Chan v. Korean Air Lines, Ltd., 490 U.S. 122

(1989) ..................................................................... 4

Cosmetic Ideas, Inc. v. IAC/Interactivecorp.,

606 F.3d 612 (9th Cir. 2010) ............................... 19

Roth Greeting Cards v. United Card Co.,

429 F.2d 1106 (9th Cir. 1970) ......................... 2, 17

Vacheron & Constantin-Le Coultre Watches,

Inc. v. Benrus Watch Co., 260 F.2d 637

(2d Cir. 1958), .......................................2, 16, 17, 18

Washingtonian Publ’g Co. v. Pearson, 306 U.S.

30 (1939) .........................................................12, 19

White-Smith Music Publ’g Co. v. Goff, 187 F.

247 (1st Cir. 1911) ........................................... 2, 17

STATUTES AND REGULATIONS

Berne Convention Implementation Act of 1988,

Pub. L. No. 100-568, § 9(b)(1), 102 Stat. 2853,

2859 ...................................................................... 19

16, 17

§ 13, 35 Stat. 1078 ............................................... 17

90 Stat. 2541 ..................................................2, 3, 7,

9, 18, 19

§ 110, 90 Stat. 2600, reprinted in 17 U.S.C.

§ 407 note ............................................................... 7

17 U.S.C. § 102(a) ...........................................12, 19

17 U.S.C. § 205 ...................................................... 8

17 U.S.C. § 205(a) .................................................. 8

17 U.S.C. § 205(c) .................................................. 8

17 U.S.C. § 205(c)(1) .............................................. 8

17 U.S.C. § 405(b) .................................................. 6

17 U.S.C. § 406(a) .................................................. 9

17 U.S.C. § 406(a)(1).............................................. 8

17 U.S.C. § 406(a)(2).............................................. 8

17 U.S.C. § 408 .........................................1, 3, 6, 12

17 U.S.C. § 408(a) ............................................ 3, 10

17 U.S.C. § 408(b)(2)............................................ 15

17 U.S.C. § 408(c)(3) ........................................ 6, 10

17 U.S.C. § 408(f ) ............................................ 9, 15

17 U.S.C. § 408(f )(1) ............................................ 15

17 U.S.C. § 408(f )(3) ............................................ 10

17 U.S.C. § 410(c) .................................................. 6

17 U.S.C. § 410(d) ..........................................3, 5, 6,

11, 13, 15, 16

17 U.S.C. § 411(a) ..............................1, 2, 3, 4, 5, 6,

7, 8, 9, 11, 12, 13,

14, 15, 16, 17, 18, 20

17 U.S.C. § 411(b) ............................................ 4, 16

17 U.S.C. § 411(c) .....................................4, 5, 6, 11

17 U.S.C. § 412 ....................... 1, 3, 4, 5, 6, 9, 11, 20

17 U.S.C. § 412(2) .................................................. 5

17 U.S.C. § 508(a) ................................................ 22

17 U.S.C. § 708(a) ...........................................7, 8, 9

15 U.S.C. § 1173(a)(4) ............................................... 11

45 U.S.C. § 362(i) ...................................................... 11

37 C.F.R. § 202.16(c)(6)............................................. 15

LEGISLATIVE MATERIALS

H.R. Rep. No. 109-33. pt. 1 (2005) ............................ 10

S. 543, 91st Cong. (1969) ............................................ 4

S. 644, 92nd Cong. (1971) ........................................... 4

ADMINISTRATIVE MATERIALS

U.S. Copyright Office, Copyright Law Revision:

Report of the Register of Copyrights on the

General Revision of the U.S. Copyright Law

(Comm. Print 1961), available at https://

www.copyright.gov/history/other_reports.

html ......................................................................... 18

OTHER MATERIALS

Black’s Law Dictionary (4th ed. 1951) ................10, 11

Robert Kasunic, Copyright from Inside the

Box: A View from the U.S. Copyright Office, 39 Colum. J.L. & Arts 311 (2016) ................ 21

Webster’s Third New International Dictionary

(2002) ..............................................................10, 11

Respondents and the government cannot counter

textual evidence that the phrase “make registration”

and its passive-voice counterparts in the Copyright

Act – including in § 411(a) – denote the action of a

Accordingly, their primary argument – that the word

“registration” in the first sentence of § 411(a) unambiguously requires an affirmative determination by

the Copyright Office that a certificate of registration

should or should not issue before a copyright owner

can sue – is incorrect. On the contrary, respondents

and the government, to avoid an absurd reading of

§ 412, eventually admit that the statute makes clear

that registration is “made” on its effective date – but

that is the date when the copyright owner complies

with the requirements of § 408, not when the Register eventually grants registration. That reading is

consistent with petitioner’s position, not respondents’.

The remainder of § 411(a) – which preserves a

been refused” – does not support a different reading.

The first sentence of § 411(a) requires the copyright

owner to make registration before bringing an action,

and the rest of the provision clarifies the consequences

of the Copyright Office’s refusal to register a claim.

The fact that a copyright owner is expressly authorized to initiate suit after such a refusal – which the

first sentence might leave in doubt – hardly supports

the argument that a copyright owner may not initiate a suit after making registration in compliance

with the statute when the Office has not yet acted.

On the contrary, adopting respondents’ construction

would put the first and second sentences of § 411(a)

into conflict – which petitioner’s interpretation avoids.

The history of the provision supports the plain

meaning of the text because respondents’ interpretation recreates the very problem that the statute was

designed to solve: namely, that, before any infringement action can be brought, a copyright owner might

have to bring a mandamus action if the Register fails

to act. That is inconsistent with the view – adopted

by the First and Ninth Circuits before enactment of

the 1976 Act and embodied in § 411(a) – that, once a

mail” and “ha[s] done everything required of it under

the copyright law with respect to the deposit of copies

and registration,” it is entitled to bring suit. Roth

Greeting Cards v. United Card Co., 429 F.2d 1106,

1108-09 (9th Cir. 1970); see White-Smith Music

Publ’g Co. v. Goff, 187 F. 247, 247 (1st Cir. 1911); see

also Vacheron & Constantin-Le Coultre Watches, Inc.

v. Benrus Watch Co., 260 F.2d 637, 645 (2d Cir. 1958)

(Clark, C.J., dissenting) (noting that the Act “[q]uite

obviously . . . puts the condition of complying with

the law . . . upon the copyright owner before he sues”).

By rejecting the majority opinion in Vacheron, the

statute is likewise properly read to reject the view

that the Register should be the gatekeeper of copyright enforcement.

Arguments about underlying policy should be

largely beside the point because ordinary tools of

statutory interpretation yield a clear answer; in

any event, such arguments likewise favor reversal.

Respondents’ claim that petitioner takes issue with

the registration requirement or the policies underlying it is pretense: whether or not the Copyright

Office has the power to block infringement suits

by failing to act, copyright owners must comply with

the registration requirement before suing. Statutory

incentives for prompt registration reside elsewhere,

including in § 412. And the claim that the statute

embodies a policy of administrative finality or exhaustion is belied by the terms and structure of the

statute – including § 410(d), which puts courts’ determination on equal footing with the Register’s. In the

real world, as amici attest, action by the Register not

only is usually long in coming, but generally does not

address the disputed issues that a court will confront.

When such cases occur, courts can obtain the Register’s views. Such concerns offer no justification for

shielding infringers during the Copyright Office’s

inevitable delays, depriving copyright owners of their

intellectual property in the meantime.

ARGUMENT

I. “REGISTRATION” IS “MADE” FOR PURPOSES OF § 411(a) BY THE COPYRIGHT

OWNER

A. The Statute Uses the Phrase “Make Registration” and Its Variants To Refer to Compliance with the Requirements of § 408(a)

That the Copyright Act of 1976 uses the construction “make registration” and its variants to denote

action by the copyright owner (and not the Copyright

Office) matters for two reasons. First, it disproves

respondents’ claim that the word “registration” by

itself resolves this case. Second, because the statute

consistently uses the phrase to refer to the copyright

owner’s compliance with the requirements of § 408,

the interpretive principle that statutory phrases

should be given consistent meaning favors petitioner’s construction. Pet. Br. 21-29.

1. Respondents’ argument that the word “registration,” by itself, indicates that a suit can be brought

only after the Register acts cannot be reconciled with

either § 411(c) or § 412. Section 411(c) (which was

adopted as § 411(b), adjacent to § 411(a)) provides

that certain infringement actions can be brought

prior to registration if “the copyright owner . . . makes

registration for the work” within three months.

Section 412 bars statutory damages and attorney’s

fees for infringement of a published work prior to

registration unless “registration is made” within three

months.

The first provision makes express that registration

is “made” once the copyright owner complies with his

registration obligations; the second strongly implies

it. Pet. Br. 22-24. Reading the statute in this

straightforward way is fatal to respondents’ theory

that the word “registration” provides the answer to

the question presented, and respondents thus urge

the Court to disregard the language of § 411(c) as a

mistake – “copyright owner” is the “subject” of the

sentence, they argue, for “ease of drafting.” Resp. Br.

34 n.12. But if there were a conflict between the

subject and the predicate of the sentence, it would

have been noticed – no one would accidentally make

it a condition of suit that the “copyright owner . . .

grant registration” because that is not something the

“drafting error” unless that error is “obvious” and the

result it produces is “necessarily absurd,” Chan v.

Korean Air Lines, Ltd., 490 U.S. 122, 134 (1989),

which respondents have made no attempt to show.

1 It would be especially inappropriate to treat the language of

§ 411(c) as inadvertent because that language was first introduced in 1969, seven years before the passage of the Act. See

S. 543, 91st Cong. (1969); see also S. 644, 92nd Cong. (1971).

Respondents also make the unpalatable claim that,

under § 411(c), even if the copyright owner complies

with the registration requirement within three

months, the copyright owner may be unable to

maintain its suit if the Register has not acted within

three months. This view (which the government

rejects, see U.S. Br. 28) is, according to respondents,

“entirely logical” because it will “prevent powerful

stakeholders . . . from abusing Section 411(c).” Resp.

Br. 35. That argument is practically self-refuting – it

would be extraordinary for Congress to impose a

three-month deadline, enforced by loss of enforcement

rights, while leaving compliance with the deadline

out of the copyright owner’s hands.

Moreover, respondents lose their nerve in addressing § 412. Like § 411(c), § 412(2) imposes a threemonth deadline for “registration [to be] made,” but in

this case respondents argue that registration is (as

§ 410(d) makes clear) “made” on its “effective date”;

and the “effective date” is “keyed to the copyright

owner’s actions, not the Register’s.” Resp. Br. 33.

But respondents offer no reason why what is true for

§ 412 is not also true for § 411(a): registration is

“made” on the effective date of registration – i.e., “the

day on which an application, deposit, and fee . . .

have all been received in the Copyright Office.” 17

U.S.C. § 410(d). That reasoning supports petitioner,

not respondents.

The government’s effort to address these provisions

leads it to the same fatal concession. The government does not contest that § 411(c) indicates that it

is the copyright owner who “makes registration”; nor

does it contest that § 412 makes no sense if “registration is made” on the date of the Register’s action.

Instead, it argues that the three-month deadlines

in those provisions are of no concern because, under

§ 410(d), “no matter when the Copyright Office acts,

if registration is ultimately granted, its effective date

‘is the day on which an application, deposit, and fee

. . . have all been received in the Copyright Office.’ ”

U.S. Br. 28 (quoting § 410(d)). And, it says, “[a]s long

as the effective date of registration falls within the

three-month windows defined by Sections 411(c) and

412, the requirements of those provisions are met.”

Id. Again, if that is true for § 411(c) and § 412, so too

it is true for § 411(a): registration is made on the

effective date of registration, when the copyright

owner has complied with § 408.2

2. Respondents and the government likewise cast

no doubt on the conclusion that the statute elsewhere

uses the construction “make registration” to refer to

the copyright owner’s compliance with the registration requirement. For example, § 405(b) includes the

phrase “registration . . . has been made under section

408” – indicating that the copyright owner makes

registration by complying with that statutory provision. The government has no answer, failing to

address this provision at all. Respondents chalk this

up to another drafting error – registration is not

made under § 408 after all, they insist, because the

The statute does not use the phrase in a manner

consistent with respondents’ argument. This is true

as well of § 408(c)(3), which provides that “a single

2 The statute uses the phrase in just this sense in § 410(c) as

well, when it refers to a “certificate of a registration made before or within five years after first publication of the work.” For

this purpose, the registration must be “made” on its effective

date – not on the date of the Register’s action – to avoid making

nonsense of the incentives for registration, which apply to the

renewal registration may be made . . . upon the filing

of a single application and fee” – which says in so

many words that registration “may be made . . . upon

the filing of the application and fee” and not upon

any action by the Register. Neither respondents (at

36) nor the government (at 27) offer a response that

makes sense of the text Congress adopted.

Nor can respondents reconcile their view with

§ 110 of the 1976 Act; the government does not

even try. That provision states that “any deposit and

registration made after [the Copyright Act’s effective]

date in response to a demand under” the Act’s predecessor “shall be made in accordance with” the new

Act – indicating that the copyright owner does both.

17 U.S.C. § 407 note; cf. id. § 411(a) (referring to

registration “made in accordance with this title”).

Respondents’ only answer (at 38) is to rewrite the

provision – asserting that the owner responds to

the Register’s “demand by initiating the registration

process through its application,” and “the Register

completes that process by approving, i.e., making,

registration.” That is not what the Act says. It

instead indicates that, once the Register makes a

demand, the copyright owner makes both the deposit

and registration in response.

3. Furthermore, it is not true that the 1976 Act,

as adopted, ever used the phrase “registration has

been made” to denote Register’s grant of an application. Respondents (at 31) and the government (at 28)

rely on § 708(a), but that provision was altered

in 1982 to add the language that respondents and

the government cite, and it addresses fees, not the

litigation-significance of registration – which petitioner

pointed out (at 27-28) but the other side ignores. No

one would seriously argue that the same language in

§ 411(a) meant one thing in 1978 and another thing

in 1983; accordingly, § 708(a) provides no interpretive guidance. See Pet. Br. 27 (citing AlmendarezTorres v. United States, 523 U.S. 224, 237 (1998)).

The government argues (at 29) that § 205(c) could

be read to require that registration had already been

granted, but it does not dispute that § 205(c) only

protects a transferee who properly records a transfer

(which it can do irrespective of whether a certificate

of registration has issued3) if the statutory phrase

“registration has been made” refers to the copyright

owner’s compliance with the registration requirement,

not the Register’s administrative determination.4

That reading of § 205 is reinforced by § 406(a)(2),

which imposes liability for infringement notwithstanding good-faith reliance on a purported transfer

or license from a person erroneously named in a

person named in the notice and showing the ownership of the copyright had been recorded.” This means

of notice is an alternative to “registration . . . made in

the name of the owner of copyright,” § 406(a)(1), and

thus indicates that the existence of a certificate of

registration is not essential to proper recordation.

Section 406(a)(1) – which charges an infringer with

notice of ownership of copyright if “registration . . .

3 “Any transfer of copyright ownership or other document

pertaining to a copyright may be recorded in the Copyright

Office.” 17 U.S.C. § 205(a) (emphasis added).

4 Respondents’ claim (at 28) that it “would make no sense” to

charge persons with notice of a properly recorded document is

wrong – any person can check to see whether a transfer of a

the work.” 17 U.S.C. § 205(c)(1).

had been made in the name of the owner of copyright” – does not point to any different reading of

§ 411(a). The government asserts (at 29-30) the

statute’s use of “had been made” rather than “has

been made” implies that the reference is to the Register’s action, but does not explain why. Instead, the

provision refers to registration that “had been made”

rather than “has been made” for reasons of syntax: it

refers to an action (making registration) that must

take place prior to the beginning of the “undertaking”

giving rise to potential liability. And, contrary to

respondents’ assertion (at 29), it makes sense that a

potential infringer may be charged with notice of

ownership once the owner has complied with the

registration requirement: § 412 creates a similar

dramatic difference in the consequences of infringement, but everyone agrees that the copyright owner’s

remedies turn on the date of the copyright owner’s

compliance with the registration requirement, not

the Register’s action.5

Contrary to the government’s assertion (at 20), the

preregistration provision, § 408(f ), does not suggest

that “submission of the required materials is an

action distinct from ‘registration’ itself.” First of all,

as with § 708(a), the preregistration provision was

not part of the 1976 Act – it was adopted in 2005 –

and it thus carries less weight in determining the

meaning of § 411(a)’s original language.6 Further,

5 There is also no reason why – in connection with either

§ 406(a) or § 412 – the Register could not permit concerned

potential infringers to search pending registration applications.

6 For what it is worth, the House Report accompanying the

2005 legislation uses the verb “register” to refer to the copyright

owner’s action, not just the Register’s – that is, in the sense that

the government’s argument puts too much weight

on the subsection heading of § 408(f )(3), which reads

“[a]pplication for registration,” while the text of

§ 408(f )(3) refers not only to the application itself

but also to the fee and the deposit – that is, the

materials required for making registration. It is “not

. . . unusual” that a statutory heading “fails to refer

to all the matters which the framers of that section

wrote into the text,” Brotherhood of R.R. Trainmen v.

Baltimore & O.R.R. Co., 331 U.S. 519, 528 (1947),

and § 408(f )(3)’s heading does not outweigh Congress’s

textual statements that “the owner . . . may obtain

registration . . . by delivering” a deposit, application,

and fee, § 408(a) (emphasis added), and that “registration may be made . . . upon the filing of a[n] . . .

application and fee,” § 408(c)(3) (emphasis added).7

4. Dictionary definitions (discussed at Resp. Br.

30-31) do not suggest any different understanding.

The meaning of “registration” includes “an act . . . of

registering,” and to “register” can mean either “to

make or [to] secure an official entry of in a register.”

Webster’s Third New International Dictionary 1912

(2002) (“Webster’s Third”); see also Black’s Law

respondents wrongly suggest is contrary to plain language.

See H.R. Rep. No. 109-33, pt. 1, at 5 (2005) (explaining certain

circumstances under which “a copyright owner of a preregistered work can register his or her work under current law”)

(emphases added).

7 The government does not argue that there is any difference

between what is required under § 408(f )(3) and under § 408(a)

or § 408(c)(3), nor does its theory explain why Congress spelled

out the elements of registration in § 408(f )(3) rather than

simply referring to one of the other sections. There is no interpretive principle based on any counterfactual presumption that

Congress avoids using more words when fewer words would do.

Dictionary 1449 (4th ed. 1951) (“Black’s”) (definitions

of “registration” including “[r]ecording” or “enrollment”);8 Authors Guild Br. 12. To “make,” moreover,

can mean either “to execute in an appropriate

manner,” as with a will or deed; or to “carry out” or

“perform” an action. Webster’s Third 1363. Thus,

the copyright owner’s performance of the steps statutorily required to secure an official record of the

meaning of the phrase “make registration” – consistent with Congress’s usage of the phrase in § 411(c)

and § 412 and elsewhere; with this Court’s usage

in other cases about the Copyright Act, see Pet. Br.

22; and with other statutory usages identified by

amici, see NMPA Br. 11-12 n.5 (citing 15 U.S.C.

§ 1173(a)(4); 45 U.S.C. § 362(i)).

B. Allowing a Copyright Owner To Sue for

Infringement Once the Copyright Owner

Has Complied with the Registration Requirement Comports with the Structure of

§ 411(a) and the Rest of the Copyright Act

The understanding that § 411(a) authorizes actions

for infringement once a copyright owner has registered the work further comports with the structure of

rights and remedies established by the Copyright

Act. Respondents and the government offer no

explanation for why, under their reading, § 410(d)

would make the effective date of registration the date

The contemporaneous edition of Black’s further defined

(at 1449) a “registrant” as “one who registers anything (e.g., a

trade-mark) for the purpose of securing a right or privilege

granted by law on condition of such registration” – further

showing that legal usage then included an owner of intellectual

property as performing the act of registering that property.

on which the copyright owner complies with the

requirements of § 408, yet § 411(a) would bar suits

for infringement – including suits for injunctive relief

to put a stop to ongoing infringement – after that

effective date. They do not explain why the same

provision clarifies that the same effective date applies

if a court, rather than the Register, determines that

the copyright owner complied with the registration

requirement. See NMPA Br. 8. They offer no justification for rendering a copyright effectively valueless

during any period of administrative delay by the

right to exclude exists by virtue of fixation, not

compliance with any statutory formalities. 17 U.S.C.

§ 102(a). And they fail to confront the point –

persuasively argued by amici – that Washingtonian

Publishing Co. v. Pearson, 306 U.S. 30 (1939), establishes a presumption against a doubtful construction

that deprives a copyright owner of its exclusive rights.

See NMPA Br. 15-17. Nor do respondents offer any

structural evidence to contradict the conclusion that

the words of the statute require.

1. There is no force to the argument (Resp. Br.

20) that, because § 411(a) provides that a copyright

owner can initiate suit after the Register has refused

registration, it should be inferred that it cannot

initiate suit if the Register has not acted. Courts

applying the registration and deposit requirement of

the 1909 Act divided on the question of what should

happen where the Copyright Office refuses registration

notwithstanding the copyright owner’s compliance

with the requirements of the statute. The second

sentence of § 411(a) gives the answer by providing

that, in any case where the copyright owner has

made registration (that is, has delivered the required

application, deposit, and fee to the Copyright Office)

but registration has been refused, the copyright

owner may sue.

That had to be made explicit because, where

the Register has refused registration, whether the

statute is in doubt – the Register has found that

it has not. But that does not prevent a suit from

proceeding, in which, as § 410(d) provides, “a court of

competent jurisdiction” ultimately determines whether

the owner’s submission was “acceptable for registration.” Thus, the second sentence of § 411(a) is not an

exception to the categorical registration requirement

in the first sentence – it simply imposes an additional

procedural requirement and clarifies that the Register is entitled to intervene. That is a better reading

of the word “however,” which does not, in ordinary

language, signal contradiction. Pet. Br. 30.

The word “institute” in the second sentence of

§ 411(a) does not imply, as respondents suggest (at

23 n.6), that the Register’s action must always come

before a lawsuit begins. Rather, it mirrors the phrasing of the first sentence, which states that “no civil

action for infringement . . . shall be instituted until

. . . registration . . . has been made.” Usually (almost

always), registration is granted and the second sentence will not come into play. The second sentence

addresses the unusual case where registration has

been refused before the copyright owner institutes an

action. That does not speak to what should happen

when registration is refused after the suit is initiated,

but § 410(d) clarifies that, in such a case, the court

may find compliance with the registration requirement. Neither part of § 411(a) is offended where

a copyright owner complies with the registration

requirement before instituting an action and the

was acceptable: either way, the copyright’s effective

date of registration comes before the action’s date of

institution. Respondents argue that Congress used

the word “institute” to rule out the possibility of

“maintaining” a suit already initiated. But there is

no reason to draw that inference when the purpose of

the second sentence is to describe and provide special

procedures for a subclass of cases where suit can be

instituted. See also Pet. Br. 31 n.21 (House Report:

“a rejected claimant who has properly applied for

registration may maintain an infringement suit” if

notice is served).

The government argues (at 16) that Congress could

have made the proper result clearer by redrafting

the provision. But “the mere possibility of clearer

phrasing cannot defeat the most natural reading of a

statute,” Caraco Pharm. Labs., Ltd. v. Novo Nordisk

A/S, 566 U.S. 399, 416 (2012), especially where, as

here, the possibility of clearer phrasing cuts both

ways. The statute could have said: “no civil action

for infringement of the copyright in any United

States work shall be instituted until the deposit,

application, and fee required for registration have

been delivered to the Copyright Office in proper

form.” But the statute could also have said: “no civil

action for infringement of the copyright in any United

States work shall be instituted until the Register

grants or refuses registration.” These hypothetical

alternatives do not clarify the meaning of “registration . . . has been made” in § 411(a).

2. Petitioner’s reading does not render any provision of the Copyright Act superfluous. Cf. Resp. Br.

25-27; U.S. Br. 21-22.

First, the Act’s preregistration regime in § 408(f ) is

not superfluous because it confers remedies unavailable under anyone’s reading of § 411(a). Preregistration is available for a work that “is being prepared

for commercial distribution” but that is as yet unfinished, § 408(f )(1), let alone unpublished. Under

(which may not yet exist) is required; instead, the

submitting a description of the work. See 37 C.F.R.

§ 202.16(c)(6). As a result, the copyright owner can

obtain an injunction against threatened infringement

before the work is released for commercial distribution, when deposit may be difficult or impossible.

See § 408(b)(2) (requiring, in the case of a published

work, deposit of “two complete copies or phonorecords

of the best edition”). Moreover, even if a record label

registers a newly released song immediately and

seeks expedited treatment (which the Register may

not grant), unlawful copying and distribution over

the Internet may have destroyed the commercial

value of the song before the copyright owner can bring

any action. See Copyright Alliance Br. 11 (“Millions

of infringing copies or performances of a work can

take place in days, or even minutes.”). Preregistration helps avoid such results.

Second, § 410(d) is not superfluous because it clarifies that the effective date of registration is the date

on which the underlying materials were properly

submitted to the Register – whether the propriety of

that submission is determined by the Register or,

later, by a court. As no one disputes that the term

“registration” can be read to refer to the action of

the Register, eliminating potential disputes about

the date serves an obvious purpose. In short, under

§ 410(d), the effective date of registration is the date

that the copyright owner makes registration, not the

date that the Register registers the claim. As noted

above, that supports petitioner’s reading of the

statute, not respondents’.

Third, § 411(b) is not superfluous because it clarifies the evidentiary consequences of a certificate of

registration: absent what amounts to a fraudulent

application, the certificate proves that registration

has been made (and entitles the owner to certain

litigation advantages). The fact that, for purposes

of § 411(a), “registration” is “made” by the owner’s

submission of the required materials does not imply

anything about the evidentiary significance of a

certificate.

II. THE ACT’S HISTORY CONFIRMS THAT

A COPYRIGHT OWNER MAY INSTITUTE

AN ACTION FOR INFRINGEMENT AFTER

COMPLYING WITH STATUTORY REQUIREMENTS FOR REGISTRATION

The split of authority concerning the need for

action by the Register before an infringement suit

could proceed under the 1909 Act – and the statute’s

rejection of the view that such action was required –

provides a further reason to reverse the decision

under review. See Pet. Br. 32-36; American Broad.

Co. v. Aereo, Inc., 134 S. Ct. 2498, 2505-06 (2014).

Respondents (at 40) and the government (at 25-26)

argue that their proposed interpretation of the

statute sufficiently solves the problem the majority

in Vacheron created by eliminating the requirement

for a copyright owner to seek mandamus to obtain

review of the Register’s refusal to register a claim.

Their arguments fall short in two respects.

First, § 411(a) is inconsistent with the rationale of

Judge Hand’s opinion in Vacheron and consistent

with the rationale of other circuits and the dissent of

Judge Clark in Vacheron. Aside from a discussion of

conflicting and inconclusive precedent, the opinion

found “confirmation” for its view that the infringement

action could not proceed absent affirmative action by

the Register in “the text of the last sentence of § 13”

of the 1909 Act, which “denies the right to sue for

infringement ‘until the provisions of this title with

respect to the deposit of copies and registration of

such work shall have been complied with.’ ” 260 F.2d

at 640 (emphasis added). The court reasoned that,

because this provision required “more than the mere

‘deposit of copies,’ ” and because “the owner must

submit an application and pay the required fees in

order to make a deposit, we can think of no other

added condition for ‘registration’ but acceptance by

the Register.” Id. at 640-41 (citation omitted). As

the majority acknowledged (id. at 639), this is not

how the First Circuit read the statute in White-Smith

Music Publishing; the Ninth Circuit also rejected the

reading in Roth.

Judge Clark was likewise unpersuaded: he noted

that, where a “plaintiff has complied with the

requirements put upon it,” it should not be required

to “assume the risk of waiting – perhaps until its

right is lost by limitation or otherwise – until the

Vacheron, 260 F.2d at 645 (Clark, C.J., dissenting)

(footnote omitted). “So to conclude is to read this

serious prohibition into the single word ‘registration,’

thus giving it a meaning which not merely is not

required, but is actually belied by both the immediate context and the general statutory scheme of copy-

right.” Id. The 1976 Act adopts Judge Clark’s view:

it omits the distinct requirement of compliance with

the deposit requirement that had led Judge Hand to

a different result. Pet. Br. 34. Respondents cannot

account for this change in wording.

Second, respondents cannot dispute that their

reading leaves unaddressed the very problem that

Judge Clark highlighted in his dissent and that

§ 411(a), properly read, addresses. By requiring an

affirmative action by the Register before a suit is

permitted to proceed, the majority rule in Vacheron

forced the copyright owner to “assume the risk of

waiting” for the Register to act. 260 F.2d at 645

(Clark, C.J., dissenting). Commentary on the proposed revision deplored in particular the potential

need for a copyright owner to bring mandamus before

it could bring a civil action for infringement. See Pet.

Br. 35. Under respondents’ view, if the Copyright

Office delays acting for months or years, neither

registering a claim nor refusing registration – as it

did here until the case was ripe for this Court’s

review – the copyright owner’s sole remedy is, as

the Vacheron majority held, to file for mandamus.

Statutes should not be read to perpetuate the

problem they were adopted to solve. See Aereo, 134

S. Ct. at 2505-06.

Committee reports and other commentary surrounding the adoption of the 1976 Act provide no support

for respondents’ view. The House Report accompanying the 1976 Act (to which respondents repeatedly

refer) does not speak to the specific question presented; any clues it provides to the meaning of the

statute point in petitioner’s direction. See Pet. Br. 23

n.17, 31 n.21. The same is true of the Copyright

Office’s 1961 Report, which expressed the Office’s

view that an “application for registration” is what is

required before a copyright owner can file suit. See

id. at 23 n.17, 35. Respondents (but not the government) cite (at 24) reports accompanying the Berne

Convention Implementation Act of 1988 to suggest

that a determination by the Register is a prerequisite

to suit, but “[p]ost-enactment legislative history

(a contradiction in terms) is not a legitimate tool of

statutory interpretation.” Bruesewitz v. Wyeth LLC,

562 U.S. 223, 242 (2011). Respondents’ reliance on

such statements underscores their lack of friends in

the crowd of legislative materials pertinent to the

1976 Act.

III. THE COPYRIGHT ACT’S SCHEME OF

RIGHTS AND REMEDIES FAVORS ALLOWING SUITS TO PROCEED ONCE THE

COYPRIGHT OWNER HAS COMPLIED

WITH REQUIRED FORMALITIES

Respondents do not deny that the Act grants

action by any agency. See 17 U.S.C. § 102(a). Nor

do they deny what this Court made clear long before

the Act was adopted: in the absence of any possible

enforcement action, a copyright provides hardly any

protection at all. See Washingtonian Publ’g, 306 U.S.

at 40 (“Without right of vindication a copyright is

valueless.”). Yet they also do not deny that, in some

cases, their reading will bar copyright owners from

seeking meaningful relief for infringement. See

Cosmetic Ideas, Inc. v. IAC/Interactivecorp., 606 F.3d

612, 620 (9th Cir. 2010). Respondents’ effort to make

that result seem less jarring is unavailing.

First, there is no merit to the claim that such disadvantages are an inevitable result of any registration requirement or are necessary to encourage early

registration. On the contrary, this case has nothing

to do with whether the registration requirement is

good policy, because there is no dispute that a copyright owner must register its work before suing. See

rule “is fully vindicated” under petitioner’s reading).

Nor does it make sense to misread § 411(a) to create

an incentive for early registration: § 412 already

creates ample incentives for prompt registration of

any published work by depriving copyright owners

of statutory damages and attorney’s fees if they

fail to make registration within three months of

publication. It would be odd for Congress to preserve

these remedies for any copyright owner who makes

registration within three months while depriving the

same copyright owner of the ability to bring an action

for an injunction to stop infringing conduct that

begins before the Register acts. The statute does not

direct that result.

Second, claims that requiring administrative finality will reduce the burdens of meritless copyright

infringement suits give the registration process an

importance in the copyright regime that is neither

warranted by the statute nor consistent with actual

administrative practice.9 As explained above and in

petitioner’s opening brief, the determination of the

to a court’s determination of the scope of an

author’s right to exclude under the Copyright Act;

9 Neither respondents nor their amici cite any case in which

the registration requirement forestalled meritless litigation;

because registration is generally granted if formalities are satisfied, their reading of the requirement will not deter determined

litigants. It can, however, protect willful infringers when registration is delayed. See ITA Br. 19.

any question of copyright eligibility – as well as any

other question concerning registrability of a claim –

must be determined de novo by a court. The views of

the Copyright Office are frequently afforded little, if

any, deference. See Carol Barnhart Inc. v. Economy

Cover Corp., 773 F.2d 411, 414 (2d Cir. 1985) (district

court “in as good a position as the Copyright Office to

decide” question of copyrightability); ABA Br. 22 n.17

(citing cases). The idea that the Copyright Office

should be permitted to determine which authors

should and which authors should not be afforded a

timely remedy – with such determinations depending

on the vagaries of internal operations – invites

injustice and threatens loss of substantial rights

based on the luck of the draw.10

Furthermore, as those whose livelihood depends on

protection of intellectual property attest, the Copyright Office process does not and was never intended

to “weed out” claims on the merits. See ABA Br. 1921. As the Associate Register of Copyrights recently

acknowledged, “[a]s a practical matter, I really don’t

want deference or an evidentiary presumption to be

afforded” based on the determinations of the Copyright Office. Robert Kasunic, Copyright from Inside

the Box: A View from the U.S. Copyright Office,

39 Colum. J.L. & Arts 311, 322 (2016). The Office

grants 97% of applications; those not granted often

languish over questions of how to categorize works

that are unquestionably copyrightable (as occurred in

this case). See NMPA Br. 21-22 (describing delays of

10 Respondents’ reading creates a further paradox in that

courts have held that an accused infringer may bring a

declaratory-judgment action even though the copyright owner

is not permitted to sue. See Copyright Alliance Br. 17-18.

more than three years without any administrative

determination). The Copyright Office admittedly

makes no meaningful review of a work’s originality,

and its decision to grant registration will only rarely

purport to clarify the scope of any rights in a

copyrightable work. Prior administrative review

therefore will rarely be relevant to the question

whether the defendant has invaded the copyright

owner’s exclusive rights.

In any such case, moreover, the Register will have

the opportunity to make its views known. Under

§ 508(a), the Copyright Office must be promptly

informed of the pendency of any infringement suit.

And if a defendant raises a substantial issue of registrability implicating the Copyright Office’s expertise,

the courts can use the ordinary tools of litigation

management to ensure that the Register can weigh

in first. Pet. Br. 40-41. Accordingly, to the extent

a benefit of the registration requirement is that it

permits courts to take advantage of the Copyright

Office’s expertise, that benefit is preserved in every

case, not just those filed after the Copyright Office

has made its determination.

CONCLUSION

The judgment of the court of appeals should be

reversed.

Respectfully submitted,

JOEL B. ROTHMAN

JEROLD I. SCHNEIDER

SCHNEIDER ROTHMAN

INTELLECTUAL PROPERTY

LAW GROUP, PLLC

4651 N. Federal Highway

Boca Raton, Florida 33431

(561) 404-4350

November 13, 2018

AARON M. PANNER

Counsel of Record

GREGORY G. RAPAWY

GRACE W. KNOFCZYNSKI

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)

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.