Amicus Curiae Brief — Fourth Estate Pub. Benefit Corp. v. Wall-Street.com, LLC, 139 S. Ct. 45 (2018) (No. 17-571)

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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, et al.,

Respondents.

On Wait or Certiorari TO THE Unrrep States Court

or APPEALS FOR THE ELEVENTH CIRCUIT

BRIEF OF AMICUS CURIAE THE

INTERNATIONAL TRADEMARK

ASSOCIATION IN SUPPORT OF PETITIONER

Noe. M. Cook LAWRENCE K. Nopine

OweEN WICKERSHAM Counsel of Record

& Erickson, P.C. BALLARD Spanr LLP

455 Market Street, Suite 1910 999 Peachtree Street

San Francisco, CA 94105 Atlanta, Georgia 30309

(415) 882-3200 (678) 420-9300

nodinel@ballardspahr.com

Jason P. BLoom

HAYNES AND Boong, LLP

2323 Victory Avenue, Suite 700

Dallas, Texas 75219

(214) 651-5000

Counsel for Amicus Curiae The

International Trademark Association

233167 |

COUNSEL PRESS

(800) 274-3221 » (800) 359-6859

TABLE OF CONTENTS

Page

TABLE OF AUTHORITIES .................cccccccccsceeseeeeees ii

INTEREST OF THE AMICUS CURIAE .................. 1

SUMMARY OF ARGUMENT..........................00000c00005 6

IIIT teithiensionsitdtapaseiadanlassildistiabithnicsinsilésihimnidbaeepbaniasbin 7

A. Because the meaning of Section

411(a) is unclear, the Court should

construe the statute to be consistent

with the intent of Congress to

adhere to international treaties, in

ican accttadennssnstcnsdsaceccconsncecs 7

B. The registration interpretation is

gE ea 9

C. The registration interpretation

deprives copyright owners of

important enforcement rights. ................ 14

D. Requiring the issuance or denial of a

registration decision is bad policy

and makes no practical sense................ 20

Kk. The plain language of the Copyright

Act supports the application

SITTIN ciara ccinirrcrensen caendogiamonenesatnenendee 24

CONCLUSION

SEE EEE EEE EERE OEE O HERE EEE EERE H

Cases

Page(s)

ATCS Int'l LLC v. Jefferson Contracting

Corp.,

807 F. Supp. 2d 516 (E.D. Va. 2011)

Benz v. Compania Naviera Hidalgo,

S.A.,

353 U.S. 138, 77 S. Ct. 699, 1 L. Ed.

Bd TOD (1067)........cccccccccccccccccsecoseceesese

Clonus Assocs. v. DreamWorks,

LLC, 417 F. Supp. 2d 248 (S.D.N.Y.

Garcia v. Google, Inc.,

786 F.3d 733 (9th Cir. 2015).............

Golan v. Holder,

565 U.S. 302, 132 S. Ct. 873, 181 L.

Eid. 2d 835 (2012) ..........ccccceeeeeeeeneeeeee

Murray v. Schooner Charming Betsy,

6 U.S. (2 Cranch) 64 (1804)..............

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

134 S. Ct. 1962, 188 L. Ed. 2d 979

Robinson v. Shell Oil Co.,

519 U.S. 337, 117 S. Ct. 843, 136 L.

Ed. 2d 808 (1997) ............-ceeeeseeeeeeesees

Subafilms, Ltd. vu. MGM-Pathe

Commce’ns Co.,

24 F.3d 1088 (9th Cir. 1994) (en

Universal Furniture Int'l, Inc. v.

Collezione Europa USA, Inc.,

618 F.3d 417 (4th Cir. 2010)................................ 22

Vimar Seguros y Reaseguros, S.A. v.

M/V Sky Reefer,

515 U.S. 528, 115 S. Ct. 2333, 132 L.

| eee 9

Washingtonian Publ’g Co. v. Pearson,

306 U.S. 30, 59 S. Ct. 397, 83 L. Ed.

A Ee 13

Statutes

553, § 101, 90 Stat. 2541 (17 U.S.C.

LE passim

TTT iiss ce crnnemnemsnennenenuanennennsennenscnnenane 14

FEET 11, 13, 25

is cnremccenenensnepvevecesonseess 11, 13, 25

cies taitiniccennnnemmnmnneinennetnanewnagnnnen 22

ae re ran cat ccmramennencensnnns passim

| 17

Other Authorities

Fees,

https://www.copyright. gov/about/fees

-htmhandling (last visited August

$B, Fie cccccescsewsecccscscensesescunenevesessenscessesees

INTA Mission Statement,

http://www.inta.org/Governance/Pag

es/StrategicPlan.aspx ............................«

Melville B. Nimmer, NIMMER ON

Note, The Charming Betsy Canon,

Separation of Powers, and

Customary International Law, 121

Harv. L. Rev. 1215, 1215 (2008)...............

Registration Processing Times,

https://www.copyright.gov/registrati

on/docs/processing-times-faqs.pdf

(last visited August 31, 2018)...................

Restatement (Third) of the Foreign

Relations Law of the United States

piapebenesenn l

Sandra Edelman & Fara Sunderji,

Delay in Filing Preliminary

Injunction Motions: 2015 Edition,

105 THE TRADEMARK

REPORTER 1012 (2015) ............................000000000 19

Special Handling,

https://www.copyright. gov/help/faq/f

aq-special.html (last visited August

Sterling On World Copyright Law

[2015] - Protection Criteria mn. 7.86 .................. 10

U.S. Courts, United States District

Profile 1 (June 2018),

http://www.uscourts.gov/sites/defau!

t/files/data_tables/fems_na_distprofil

e0630.2018_pdf (last visited August

AMICUS CURIAE BRIEF OF THE

INTERNATIONAL TRADEMARK

ASSOCIATION IN SUPPORT OF PETITIONER

The undersigned amicus curiae respectfully

submits this brief in support of Petitioner. !

INTEREST OF THE AMICUS CURIAE

Founded in 1878, amicus curiae The

International Trademark Association (INTA) is a

not-for-profit organization dedicated to serving its

members and society as a trusted and influential

advocate for the economic and social value of brands.

It supports the advancement of trademarks and

related intellectual-property concepts as essential

elements of trade and commerce. INTA has more

than 7,200 members in 191 countries. Its members

include intellectual property owners as well as law

firms and other professionals who regularly assist

brand owners in the creation, registration,

protection, and enforcement of their trademarks and

related intellectual property. All INTA members

share the goal of promoting an understanding of the

' Both Petitioner and Respondent have filed blanket

consents to the filing of amicus briefs in support of either party.

This brief was authored solely by INTA and its counsel No

party or counsel for a party made a monetary contribution

intended to fund the preparation or submission of this brief. No

person other than amicus curiae, its members, and its counse!

made such a monetary contribution to its preparation or

submission. See S. Ct. R. 37.6.

essential role that brands and related intellectual

property play in fostering effective commerce, fair

competition, and informed decision-making by

consumers.

INTA (formerly known as the United States

Trademark Association) was founded in part to

encourage the enactment of federal trademark

legislation after the invalidation on constitutional

grounds of the United States’ first trademark act.

Since then, INTA has been instrumental in making

recommendations and assisting legislators in

connection with almost all major trademark

legislation and, more recently, legislation involving

other forms of intellectual property. INTA also

participates as amicus curiae in numerous cases

involving significant trademark and_ related

intellectual property issues. INTA members are

frequent parties in a wide variety of intellectual

property-related litigation as both plaintiffs and

defendants.

INTA has a particular interest in this case

because the question presented -— whether a

suit after delivering the proper deposit, application,

and fee to the Copyright Office, but before the

concerns imposing additional burdens on INTA

members and other intellectual property owners

before they may enforce and protect their rights.

Over the years, INTA has expanded from looking

at trademark law in isolation to considering how

other areas of intellectual property law may

complement the protections trademark law provides

to brand owners. Its Mission Statement expressly

refers to “supporting trademarks and related

intellectual property (IP) to foster consumer trust,

economic growth, and innovation.”?

INTA standing committees on copyright and

right of publicity, which are comprised of both

leading outside counsel and preeminent senior in-

house counsel from companies all over the world,

have become a critical part of INTA’s mission to

support intellectual property in order to foster

consumer trust, economic growth, and innovation.

INTA has extended its reach into these

complementary areas of law because it has become

increasingly clear that intellectual property issues

do not present themselves in neat categories in the

real world. To the contrary, it would not be unusual

for a party to seek to protect its brand by bringing

trademark claims based on a word mark and

product packaging, or advertising content. The rule

favored by the respondent would delay a brand

owner's ability to promptly bring all such related

2 _INTA Mission Statement,

http://www .inta.org/Governance/P ages/StrategicP lan. aspx (last

visited August 31, 2018).

claims simultaneously. This is particularly harmful

due to the frequent need for immediate injunctive

relief.

Finally, INTA is vitally interested in this case

because it is an international organization with

members around the world. As an international

organization, one of INTA’s concerns and central

policies has always been to promote the

harmonization of intellectual property laws. The

Berne Convention for the Protection of Literary and

Artistic Works (“Berne”) fosters and promotes

reduced formalities in copyright law, for all

signatory nations, such that creators of

copyrightable works can more easily protect their

rights. Such international harmonization of

intellectual property law is critical in today’s global

economy because works and products are often sold,

viewed, read, or otherwise distributed in multiple

jurisdictions simultaneously. To have fundamentally

different intellectual property regimes in different

jurisdictions unnecessarily complicates and burdens

the efforts of intellectual property owners and

creators to protect their interests and those of the

consuming public. The United States is a signatory

to Berne, yet the Copyright Act, no matter how

interpreted, imposes more burdens on the creators of

United States works than creators of foreign works,

putting domestic works at a disadvantage. The

interpretation that INTA advocates, consistent with

the Petitioners arguments, would minimize this

disadvantage and try to create a more harmonious

framework for international copyright protection.

SUMMARY OF ARGUMENT

Because the meaning of 17 U.S.C. § 411(a),

providing that lawsuits for infringement of any

United States copyright shall not be instituted until

“registration of the copyright claim has been made,”

is ambiguous, it should be interpreted to be

consistent with the Berne Convention for the

Protection of Literary and Artistic Works (“Berne”),

to which the United States acceded in 1988. Article

5(2) of Berne requires that “[t]he enjoyment and the

exercise of [copyright] rights shall not be subject to

any formality....” In light of the Congressional

intent manifested by Congress’s accession to Berne,

Section 411(a) should be construed to minimize

formal obstacles to enforcing copyrights:

Registration of a claim to copyright is “made” when

an application, deposit, and fee are filed. This

interpretation (hereinafter the “application

interpretation”) best effectuates Congress’s intent

when it acceded to Berne. By contrast, the

interpretation proposed by Respondent (hereinafter

the “registration interpretation”) requires that a

percent of the time. This is a meaningless formality

that Congress could not have intended.

ARGUMENT

A. Because the Meaning of Section 411(a)

Is Unclear, the Court Should Construe

the Statute To Be Consistent with the

Intent of Congress to Adhere to

International Treaties, in this Case

Berne.

The meaning of Section 411(a) is ambiguous.

Although INTA supports Petitioner's interpretation

of Section 41 1(a), the circuit split on this issue is the

best evidence that the meaning of the section is

uncertain and that this Court must look to the

broader context to discern its meaning.

When, as here, statutory language proves

unclear, this Court discerns the statute’s meaning by

looking to the purpose and “broader context of the

statute as a whole.” Robinson v. Shell Oil Co., 519

U.S. 337, 341, 117 S. Ct. 843, 136 L. Ed. 2d 808

(1997).

Some circuits have interpreted Section 411(a) to

mean that a copyright claimant may file suit upon

submitting an application, deposit, and fee to the

while others have held that a copyright claimant

must await the Copyright Office’s decision to grant

or deny registration, which can take several months,

before it may sue (the registration interpretation).

The circuits disagree because the statute is

ambiguous. Because the statutory language is

uncertain, it should be construed to effectuate the

intent Congress expressed when it acceded to

Berne’s fundamental provision—that there be no

formal obstacles to enforcing copyrights.

A 210-year-old canon of statutory construction

holds that “an act of Congress ought never to be

construed to violate the law of nations if any other

possible construction remains.” Murray v. Schooner

Charming Betsy, 6 U.S. (2 Cranch) 64, 118 (1804);

see also Restatement (Third) of the Foreign Relations

Law of the United States § 114 (1987); Note, The

Charming Betsy Canon, Separation of Powers, and

Customary International Law, 121 Harv. L. Rev.

1215, 1215 (2008) (discussing the “deeply embedded”

canon of construction).

It is important to ensure that the country is

engaged in “full participation in the dominant

system of international copyright protection.” Golan

v. Holder, 565 U.S. 302, 335, 132 S. Ct. 873, 181 L.

Ed. 2d 835 (2012).This includes “exemplary

compliance” with the United States’ international

obligations. Id. See also Subafilms, Lid. v. MGM-

Pathe Commc’ns Co., 24 F.3d 1088, 1097 (9th Cir.

1994) (en banc) (warning about an approach that

might “undermine Congress’s objective of achieving

‘effective and harmonious copyright laws among all

nations.”). Accordingly, judicial rulings that could

ignore our international obligations would undercut

the country’s positions and the perception that the

United States is a trusted partner in multilateral

endeavors. See Vimar Seguros y Reaseguros, S.A. v.

M/V Sky Reefer, 515 U.S. 528, 539, 115 S. Ct. 2333,

132 L. Ed. 2d 462 (1995); Benz v. Compania Naviera

Hidalgo, S.A., 353 U.S. 138, 147, 77 S. Ct. 699, 1 L.

Ed. 2d 709 (1957) (cautioning against courts

“run[ning] interference in such a delicate field of

international relations . . . [without] the affirmative

intention of the Congress clearly expressed”).

The application interpretation, which is more

consistent with international copyright law than the

registration interpretation, protects the enforcement

rights of copyright claimant, and comports with the

language and intent of the Copyright Act.

B. The Registration Interpretation Is

Contrary to Berne.

(1) Berne stands for the principle of

freedom from formalities.

The United States acceded to Berne® on

October 31, 1988. Berne’s principle purpose is

* Berne Convention for the Protection of Literary and

Artistic Works of September 9, 1886, completed at PARIS on

May 4, 1896, revised at BERLIN on November 13, 1908,

completed at BERNE on March 20, 1914,

revised at ROME on June 2, 1928, at BRUSSELS on June 26,

1948, at STOCKHOLM on July 14, 1967, and at PARIS on July

24, 1971, and amended on September 28, 1979.

freedom from formalities. Berne Article 5(2) provides

“[t}he enjoyment and the exercise of [copyright]

rights shall not be subject to any formality... .” The

underlying principle is to make the attachment and

enforcement of copyright as simple as_ possible.

Consequently, only a small number of countries still

require formalities to be fulfilled as a pre-condition

of bringing an action.‘

(2) The registration interpretation is

inconsistent with Berne.

The United States was not an initial signatory to

Berne. Rather, for more than a century, the United

States refused to join Berne, primarily because the

United States, unlike other developed countries,

required certain formalities as a precondition to

States law into conformity with international norms,

Congress amended and modified the Copyright Act

so that citizens could enjoy the international benefits

of Berne participation.

To that end, Congress included several provisions

in the Copyright Act to harmonize it with Berne’s

purpose and intent. First, the Act provides that

created, regardless of whether it is registered,

‘ See Sterling On World Copyright Law [2015] - Protection

Criteria mn. 7.86.

omitting administrative formalities for copyright

protection. 17 U.S.C. § 302(a) (“[clopyright in a

work... subsists from its creation”); 17 U.S.C.

§ 408(a) (“registration is not a condition of copyright

protection”). In addition, Section 411(a), requiring

that registration of the copyright claim “has been

made” as a prerequisite to suit, specifically exempts

foreign works. 17 U.S.C. §411(a). Therefore, the

enforcement obstacles imposed by Section 411(a)

(under both the registration and application

interpretations) only apply to United States works—

owners of foreign works are exempted from even

filing an application before filing suit. While Section

411(a)s exemption of foreign works was intended to

comply with Berne’s requirements, the registration

interpretation adopted by the Eleventh Circuit in the

decision below still creates an obstacle for owners of

United States works that contravenes Berne’s

purpose.

The fundamental questior for this Court is

whether Congress intended that the obstacles that

Section 411(a) imposes on United States copyright

owners be large (the registration interpretation) or

small (the application § interpretation). Given

Congress’s efforts to reduce formalities in compliance

with Berne, the answer is the latter—Congress

intended to minimize formalities. It is not likely that

Congress had the inconsistent intention to minimize

(indeed to completely eliminate) obstacles to

enforcing foreign copyrights, but to maximize

obstacles to enforcing United States copyrights.

It is more consistent with Berne to conclude that

Congress intended to maintain a _ minimal

registration requirement for United States

copyrights, as reflected in the application

interpretation of Section 411(a). Certainly this

interpretation is more consistent with Congress’s

intent when acceding to Berne and implementing

amendments necessary to make that possible.

Requiring owners of United States works to even

apply for a copyright registration prior to enforcing

their rights imposes a formality that contravenes

Berne. But, given the minimal application fee and

the ease with which an application, deposit, and fee

can be submitted to the Copyright Office, the burden

of the application requirement is relatively minor

and certainly closer to the enforcement rights

afforded foreign copyright owners.

By contrast, the registration interpretation of

Section 411(a) maximizes the formal barriers to

antithesis of Berne. Requiring a claimant to wait

several months or face the financial burden of paying

an $800 special handling fee to be able to enforce its

rights turns Berne on its head.® Further, while

5 See Copyright.gov, Registration Processing Times,

https://www copynght. gov/registration/docs/processing-times-

Sections 302(a) and 408(a) comply with Berne by

providing that copyright ownership attaches upon

creation of a work (without formalities), the full

value and purpose of copyright ownership cannot be

achieved if not accompanied by enforcement rights.

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

30, 40, 59 S. Ct. 397, 83 L. Ed. 470 (1939) (Without

right of vindication a copyright is valueless.”)

The registration interpretation imposes the type

of burdensome formalities that Congress intended to

eliminate when acceding to Berne. It is unlikely that

Congress intended to eliminate formal obstacles for

foreign copyright owners while maintaining

substantial obstacles for owners of United States

works. Rather, it is more plausible that Congress

intended that United States works should face only

minimal obstacles to enforcement consistent with a

registration system. That minimal approach is

reflected in the application interpretation of Section

41 l(a).

faqs. pdf (last visited August 31, 2018). See also Copyright.gov,

Fees, https://www copyright. gov/about/fees. htmi#handling (last

visited August 31, 2018).

Cc. The Registration Interpretation

Deprives Copyright Owners of

Important Enforcement Rights.

(1) The registration interpretation creates

an obstacle to enforcing copyright

interests that is not required to enforce

trademark rights.

For brand owners, the registration interpretation

is additionally problematic because it imposes

obstacles to copyright enforcement that are not

present for trademark enforcement. There are many

instances, including with respect to logos and

designs, when copyright and trademark protection

overlap. And, there are other instances, including

with respect to counterfeit goods and online

infringement, when a party may separately infringe

a brand owner's trademark rights (e.g., product

packaging or a domain name) and copyright

interests (e.g., product manuals or website content).

In those instances, brand owners often must assert

both copyright and trademark claims.

Although brand owners routinely seek to register

their logos and other trademarks with the United

States Patent and Trademark Office, registration is

not a prerequisite to suit. Rather, brand owners can

enforce their common law trademark rights under

the Lanham Act without first obtaining, or even

applying for, a registration. See 15 U.S.C. § 1125.

Thus, even if brand owners have not registered their

marks, they have the right to enforce their

trademark rights in federal court, including by

seeking injunctive relief.

This is not so for copyrights under the

registration interpretation. Under that

interpretation, copyright owners who have not

registered their works must pay a substantial

special handling fee to expedite registration or delay

their enforcement by several months while waiting

for the Copyright Office to grant (or deny)

registration. Thus, under the registration

interpretation, brand owners needing to quickly

enforce their trademark and copyright interests may

be barred from doing so, potentially resulting in

disadvantageous delay or the pursuit of multiple

lawsuits involving overlapping acts of infringement.

This approach to enforcement is not only inefficient.

It also creates a risk of inconsistent outcomes and

may otherwise impact the outcome on the merits.

By contrast, under the application interpretation,

brand owners can quickly attain the right to enforce

their copyrights by submitting an application,

deposit, and fee and thus simultaneously enforce

their copyrights and trademarks without

unnecessary delay or excessive administrative costs.

The application interpretation therefore benefits

both brand owners and the efficient administration

of justice.

(2) The registration interpretation

deprives copyright owners of

expeditious enforcement rights.

The registration interpretation harms copyright

claimants who need to act quickly when (1) the

statute of limitations expires within three years; or

(2) irreparable harm caused by infringement

requires a temporary restraining order or

preliminary injunctive relief. In both cases, a delay

of several months (or even several days) can deprive

rights. The alternative of paying a hefty fee for

special handling discourages enforcement. Non-

profit entities, small businesses, and individuals of

modest means would feel this loss of enforcement

rights most keenly, especially when numerous

infringed works require individual registrations (and

special handling fees).

(3) The registration interpretation can

deprive copyright claimants of the

ability to enforce their rights when the

expiration of the statute of limitations

is approaching.

A critical downside of the registration

interpretation is that it may deprive copyright

claimants of the ability to enforce their rights when

the Copyright Act’s three-year statute of limitations

will expire during the multi-month period it takes

the Copyright Office to make a registration decision.

problematic options: (1) expedite processing of the

application by paying a special handling fee which,

at $800, is twice the $400 filing fee for a federal

lawsuit (without any in forma pauperis waiver) and

nearly 15 times the standard fee for a copyright

registration application; or (2) forego their rights to

enforce their copyrights. While a special handling fee

may be an acceptable cost to some claimants in some

situations, such a fee could deter many claimants

from enforcing their rights entirely, especially with

respect to claimants with limited resources or who

are seeking to protect multiple copyrighted works.

The statute of limitations for copyright

infringement runs from three years after a claim has

accrued. 17 U.S.C. § 507. Accrual occurs when an

infringement is discovered. See Petrella v. Metro-

Goldwyn-Mayer, Inc., 134 S. Ct. 1962, 1969 n.4, 188

L. Ed. 2d 979 (2014) (noting that nine Courts of

Appeals have adopted the discovery rule in copyright

infringement cases). This Court held in Petrella that

a copyright owner can only recover damages for the

three-year period leading up to suit. See id. at 1973

(‘[A] successful [copyright] plaintiff can gain

retrospective relief only three years back from the

time of suit. No recovery may be had for

infringement in earlier years.”). Under the

registration interpretation, the statute of limitations

might run before the Copyright Office makes a

registration decision, or damages might be limited

depending on the scope of infringement in the three

years prior to a_ registration decision and

concomitant institution of suit. Such a result would

be inequitable in light of the fact, as discussed below,

that the Copyright Office issues registrations

certificates in 97 percent of cases, and claimants

have the right to file suit upon the denial of a

registration.

Even in cases of special handling, the Copyright

Office has no statutory obligation to issue a

registration decision within any period of time, and

the statute of limitations could run in many cases

even when special handling is requested at

significant cost.®

(4) The registration interpretation could

deprive copyright claimants of the

ability to promptly obtain temporary

restraining orders or preliminary

injunctive relief.

The registration interpretation also hurts

orders or preliminary injunctions t» stop irreparable

6 See Copyright. gov, Special Handling,

https://www .copyright.gov/help/faq/faq-special. htm! (last visited

August 31, 2018) (Once a request for special handling is#

received and approved, every attempt is made to process the

claim or recordation within five working days. However, no

guarantee is made that the work can be processed within this

time.”).

harm caused by copyright infringement. When an

infringing advertisement will air in two days or an

infringing artwork will be shipped out of the country

in four days, even special handling would not allow

for a registration decision in time. In such cases, the

registration interpretation serves no useful purpose

but to deprive copyright owners of their enforcement

rights.

Additionally, the delay caused by the registration

interpretation could prevent a copyright owner from

obtaining injunctive relief. Some courts have held

that delay in seeking an injunction counters a

finding of irreparable harm in the copyright context.

See Garcia v. Google, Inc., 786 F.3d 733, 746 (9th

Cir. 2015) (five-month delay in seeking to enjoin

video weighed against finding of irreparable harm);

see also Clonus Assocs. v. DreamWorks, LLC, 417 F.

Supp. 2d 248 (S.D.N.Y. 2005) (delay of less than one

month, but after film release, weighed against

finding of irreparable harm).’

Accordingly, by requiring claimants to wait

several months for a registration decision before

7 Sandra Edelman & Fara Sunderji, Delay in Filing

Preliminary Injunction Motions: 2015 Edition, 105 Tit

TRADEMARK REPORTER 1012 (2015),

http://www.inta.org/TMR/Documents/Volume%20105/TMR_ Vol

105_No5_Edelman_Sunderji.pdf.

filing suit, the registration interpretation could

prevent claimants from obtaining preliminary

injunctive relief. The application interpretation

avoids this result and allows copyright claimants to

quickly and effectively enforce their rights, just as

Berne and Congress intended.

D. Requiring the Issuance or Denial of a

Registration Decision Is Bad Policy

and Makes No Practical Sense.

(1) The delay caused by the registration

interpretation serves no _ practical

purpose.

The delay (or substantial expense) imposed by

the registration interpretation not only contravenes

Berne, but it does so without providing any real

benefit to copyright owners, the judicial system, or

the Copyright Office. Any minimal benefit courts

and litigants may derive from knowing the

copyrightability is outweighed by the burdens

imposed by the registration interpretation.

Requiring copyright claimants to wait months to

sue (or pay a burdensome special handling fee)

serves little purpose because the Copyright Act

explicitly permits claimants to file suit whether a

registration is granted or denied. See 17 U.S.C.

§41l(a). The only distinction is that when a

registration is denied, the copyright plaintiff must

serve notice of its lawsuit and a copy of the

complaint on the Register of Copyrights, who has the

option to intervene on the issue of registrability. /d.

Because the denial of a registration does not deprive

litigants of the right to sue, it makes no practical

sense for the pendency of a decision to strip

claimants of their enforcement rights. Under the

registration interpretation, claimants are not

required to wait until a certificate is issued; rather

they are forced to wait until the Copyright Office

makes a decision. Depriving United States copyright

claimants of their enforcement rights based on

nothing more than the administrative delays of a

government office is inequitable, and contravenes

Berne.

The Copyright Office grants copyright

registration certificates 97 percent of the time.* This

statistic demonstrates that the Copyright Office’s

registration decisions are more an administrative

formality than an in-depth legal analysis regarding

copyrightability. The 97 percent grant rate calls into

question the notion that courts benefit from having

the opinion of the Copyright Office before lawsuits

begin. On the contrary, at 97 percent, the decision to

8 Melville B. Nimmer, NIMMER ON COPYRIGHT, § 7.16[B][3][b][ii]

(citing Brief of the United States, at 4 n.2, Reed Elsevier, Inc. v.

Muchnick 559 U.S. 154, 130 S.Ct. 1237, 176 L. Ed. 2d 18

Report 4,

visited August 31, 2018).

grant a registration looks like a rubber stamp. This

is just the kind of administrative hurdle—imposing

great burden but providing little benefit—that Berne

seeks to eliminate.

Requiring litigants and courts to wait for the

courts are not bound by the Copyright Office’s

decisions as to _ copyrightability. Indeed, a

registration decision issued before or within five

years of publication of a work is prima facie evidence

of the validity of the copyright and facts stated in the

certificate. 17 U.S.C. §410(c). But for works

registered more than five years after publication,

courts have discretion to decide what, if any, weight

should be given to the certificate. Jd. Even when a

registration certificate constitutes prima facie

evidence of validity, courts may still reject that

finding and find registered material to be

uncopyrightable. See Universal Furniture Int'l, Inc.

v. Collezione Europa USA, Inc., 618 F.3d 417, 428

summarily issuing registrations . . . counsels against

placing too much weight on registrations as proof of

a valid copyright”); see also ATCS Intl LLC v.

Jefferson Contracting Corp., 807 F. Supp. 2d 516,

518 (E.D. Va. 2011) (“Under these circumstances, the

presumption of copyright validity that attaches to

the CSDs by virtue of their registration does not

clearly establish a valid, protectable copyright.”).

Because the Copyright Office’s decisions are not

binding on courts, requiring litigants and courts to

await those decisions before filing suit makes little

practical sense. Moreover, to the extent courts

applying the application interpretation would like to

know the Copyright Office’s position on registrability

before making certain rulings in litigation, they are

entitled to institute a stay (or delay their ruling)

until the Copyright Office renders a decision. The

application interpretation thus enables claimants

facing a statute of limitations deadline to file suit

and preserve their claims without having to wait for

a Copyright Office decision.

Also, in most cases where the application

interpretation is applied, the Copyright Office will

have made a registration decision well before the

case reaches trial. On average, civil cases in United

States district courts reach trial approximately 27

months after filing. Depending on various factors,

the Copyright Office, on average, takes between 7

and 16 months to issue a registration certificate. !°

Therefore, while it can take considerable time for

the Copyright Office to make a registration decision,

* U.S. Courts, United States District Courts—National Judicial

Caseload Profile 1 (June 2018),

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

_distprofile0630.2018.pdf (last visited August 31, 2018).

‘0 See Copyright.gov, Registration Processing Times,

https://www copyright. gov/registration/docs/processing-times-

faqs. pdf (last visited August 31, 2018).

when an application is filed shortly before a lawsuit

is filed, the Copyright Office would generally make a

registration decision well before the average time to

trial. In those cases in which the Copyright Office

has not yet made a decision before trial, courts are at

liberty to continue the trial date, if appropriate, until

the Copyright Office makes a decision. In any event,

delaying trial is far more equitable than delaying the

institution of suit, because, as set forth above,

delaying the institution of suit can deprive claimants

of their enforcement rights entirely.

E. The Plain Language Of the Copyright

Act Supports the Application

Interpretation.

The application interpretation is supported by

the plain language of the Copyright Act. The

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.” 17 U.S.C. § 411(a).

Petitioner correctly reads “registration ... has been

made” to mean that an application, deposit, and fee

have been filed. This interpretation is buttressed by

the fact that the very next sentence of Section 411(a)

explicitly provides that an applicant may file suit if

the Copyright Office denies its application. 17 U.S.C.

§ 411(a). Thus, as Petitioner notes, “has been made,”

under the application interpretation, refers to action

by the copyright claimant rather than the Copyright

Office. Otherwise, the Copyright Act is attaching too

much consequence to the pace at which the

diligent claimants of the ability to control their own

destinies. Petitioner's reading, and the application

interpretation, logically comport with the language

and purpose of the Copyright Act, as well as Berne’s

purpose and intent.

Interpreting “has been made” to mean the

submission of an application, deposit, and fee (the

application interpretation) serves the Copyright Act

(and Berne’s) purpose of removing unnecessary

formalities to securing and enforcing copyright

interests. The Copyright Act clearly aims to

harmonize with Berne by providing that copyright in

a work subsists from the time of creation (without

the need for registration) and by exempting foreign

works from even the application requirement before

suit can be filed. See 17 U.S.C. § 302(a) (“[clopyright

in a work . . . subsists from its creation”); 17 U.S.C.

§ 408 (a) (‘registration is not a condition of copyright

protection.”); 17 U.S.C. § 411(a) (excluding foreign

works from pre-suit registration requirement). It

follows, then, that the Act would not impose on

United States copyright owners the unnecessary

formality of having to obtain a_ registration

certificate (or denial) before a lawsuit can be

instituted. Rather, the accession to Berne reflects

Congressional intent to minimize administrative

burdens. Accordingly, Section 411(a) logically only

requires the submission of a deposit, application,

and fee in order for a party to file suit to enforce its

copyrights.

CONCLUSION

The Court should rule in favor of Petitioner.

September 4, 2018 Respectfully submitted,

NOEL M. Cook LAWRENCE K. NODINE

OWEN WICKERSHAM & Counsel of Record

ERICKSON, P.C. BALLARD SPAHR LLP

455 Market St., Suite 1910 999 Peachtree Street

San Francisco,CA 94105 Atlanta, Georgia 30309

(415) 882-3200 678-420-9422

nodinel@ballardspahr.com

JASON P. BLOOM

HAYNES AND BOONE, LLP

2323 Victory Avenue,

Suite 700

Dallas, Texas 75219

(214) 651-5655

COUNSEL FOR AMICUS CURIAE

THE INTERNATIONAL TRADEMARK ASSOCIATION

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.