throbber
No. 17-571
`
`In the
`Supreme Court of the United States
`
`FOURTH ESTATE PUBLIC BENEFIT CORPORATION,
`
`Petitioner,
`
`v.
`
`WALL-STREET.COM, LLC, et al.,
`
`Respondents.
`
`On Writ Of CertiOrari tO the United StateS COUrt
`Of appealS fOr the eleventh CirCUit
`
`BRIEF OF AMICUS CURIAE THE
`INTERNATIONAL TRADEMARK
`ASSOCIATION IN SUPPORT OF PETITIONER
`
`lawrenCe k. nodIne
`Counsel of Record
`Ballard sPahr llP
`999 Peachtree Street
`Atlanta, Georgia 30309
`(678) 420-9300
`nodinel@ballardspahr.com
`
`noel M. Cook
`owen wICkershaM
`& erICkson, P.C.
`455 Market Street, Suite 1910
`San Francisco, CA 94105
`(415) 882-3200
`
`Jason P. BlooM
`haynes and Boone, llP
`2323 Victory Avenue, Suite 700
`Dallas, Texas 75219
`(214) 651-5000
`
`Counsel for Amicus Curiae The
`International Trademark Association
`
`283167
`
`A
`
`(800) 274-3321 • (800) 359-6859
`
`

`

`i
`
`TABLE OF CONTENTS
`
`Page
`TABLE OF AUTHORITIES ...................................... ii
`INTEREST OF THE AMICUS CURIAE .................. 1
`SUMMARY OF ARGUMENT .................................... 6
`ARGUMENT .............................................................. 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
`this case Berne. .......................................... 7
`B. The registration interpretation is
`contrary to Berne. ...................................... 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
`E. The plain language of the Copyright
`Act supports the application
`interpretation. .......................................... 24
`CONCLUSION ......................................................... 26
`
`
`
`
`
`
`
`

`

`ii
`
`TABLE OF AUTHORITIES
`
` Page(s)
`
`Cases
`
`ATCS Int’l LLC v. Jefferson Contracting
`Corp.,
`807 F. Supp. 2d 516 (E.D. Va. 2011) ................... 22
`
`Benz v. Compania Naviera Hidalgo,
`S.A.,
`353 U.S. 138, 77 S. Ct. 699, 1 L. Ed.
`2d 709 (1957) ..........................................................9
`Clonus Assocs. v. DreamWorks,
`LLC, 417 F. Supp. 2d 248 (S.D.N.Y.
`2005) ..................................................................... 19
`Garcia v. Google, Inc.,
`786 F.3d 733 (9th Cir. 2015) ................................ 19
`Golan v. Holder,
`565 U.S. 302, 132 S. Ct. 873, 181 L.
`Ed. 2d 835 (2012) ...................................................8
`Murray v. Schooner Charming Betsy,
`6 U.S. (2 Cranch) 64 (1804) ...................................8
`Petrella v. Metro-Goldwyn-Mayer, Inc.,
`134 S. Ct. 1962, 188 L. Ed. 2d 979
`(2014) .................................................................... 17
`Robinson v. Shell Oil Co.,
`519 U.S. 337, 117 S. Ct. 843, 136 L.
`Ed. 2d 808 (1997) ...................................................7
`
`
`
`
`
`
`

`

`iii
`
`Subafilms, Ltd. v. MGM-Pathe
`Commc’ns Co.,
`24 F.3d 1088 (9th Cir. 1994) (en
`banc) .......................................................................8
`
`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.
`Ed. 2d 462 (1995) ...................................................9
`Washingtonian Publ’g Co. v. Pearson,
`306 U.S. 30, 59 S. Ct. 397, 83 L. Ed.
`470 (1939) ............................................................. 13
`
`Statutes
`Copyright Act of 1976, Pub. L. No. 94-
`553, § 101, 90 Stat. 2541 (17 U.S.C.
`101 et seq.) .................................................... passim
`15 U.S.C. § 1125 ........................................................ 14
`17 U.S.C. § 302(a) .......................................... 11, 13, 25
`17 U.S.C. § 408(a) .......................................... 11, 13, 25
`17 U.S.C. § 410(c) ...................................................... 22
`17 U.S.C. § 411(a) .............................................. passim
`17 U.S.C. § 507 .......................................................... 17
`
`
`
`
`
`
`

`

`iv
`
`Other Authorities
`Annual Report 4,
`https://www.copyright.gov/reports/a
`nnual/2017/ar2017.pdf ......................................... 21
`Fees,
`https://www.copyright.gov/about/fees
`.html#handling (last visited August
`31, 2018) ............................................................... 13
`INTA Mission Statement,
`http://www.inta.org/Governance/Pag
`es/StrategicPlan.aspx ............................................3
`Melville B. Nimmer, NIMMER ON
`COPYRIGHT, § 7.16[B][3][b][ii] .............................. 21
`Note, The Charming Betsy Canon,
`Separation of Powers, and
`Customary International Law, 121
`Harv. L. Rev. 1215, 1215 (2008) ............................8
`Registration Processing Times,
`https://www.copyright.gov/registrati
`on/docs/processing-times-faqs.pdf
`(last visited August 31, 2018) ........................ 12, 23
`Restatement (Third) of the Foreign
`Relations Law of the United States
`§ 114 (1987) ............................................................8
`S. Ct. R. 37.6 ................................................................1
`
`
`
`
`
`
`

`

`v
`
`Sandra Edelman & Fara Sunderji,
`Delay in Filing Preliminary
`Injunction Motions: 2015 Edition,
`105 THE TRADEMARK
`REPORTER 1012 (2015) ..................................... 19
`Special Handling,
`https://www.copyright.gov/help/faq/f
`aq-special.html (last visited August
`31, 2018) ............................................................... 18
`Sterling On World Copyright Law
`[2015] - Protection Criteria mn. 7.86 .................. 10
`U.S. Courts, United States District
`Courts—National Judicial Caseload
`Profile 1 (June 2018),
`http://www.uscourts.gov/sites/defaul
`t/files/data_tables/fcms_na_distprofil
`e0630.2018.pdf (last visited August
`31, 2018) ............................................................... 23
`
`
`
`
`
`
`
`
`
`
`

`

`1
`
`AMICUS CURIAE BRIEF OF THE
`INTERNATIONAL TRADEMARK
`ASSOCIATION IN SUPPORT OF PETITIONER
`The undersigned amicus curiae respectfully
`submits this brief in support of Petitioner.1
`
`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
`
`1
`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 counsel
`made such a monetary contribution to its preparation or
`submission. See S. Ct. R. 37.6.
`
`
`
`
`
`
`

`

`2
`
`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
`copyright owner may commence an infringement
`suit after delivering the proper deposit, application,
`and fee to the Copyright Office, but before the
`Register of Copyrights has acted on the application –
`concerns imposing additional burdens on INTA
`members and other intellectual property owners
`before they may enforce and protect their rights.
`
`
`
`
`
`
`

`

`3
`
`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.”2
`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
`copyright claims based on infringement of its logo,
`product packaging, or advertising content. The rule
`favored by the respondent would delay a brand
`owner’s ability to promptly bring all such related
`
`INTA Mission Statement,
`2
`http://www.inta.org/Governance/Pages/StrategicPlan.aspx (last
`visited August 31, 2018).
`
`
`
`
`
`
`

`

`4
`
`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 Petitioner’s arguments, would minimize this
`
`
`
`
`
`
`

`

`5
`
`disadvantage and try to create a more harmonious
`framework for international copyright protection.
`
`
`
`
`
`
`
`
`
`

`

`6
`
`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
`copyright claimant wait many months for the
`Copyright Office to issue a certificate, as it does 97
`percent of the time. This is a meaningless formality
`that Congress could not have intended.
`
`
`
`
`
`
`

`

`7
`
`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 411(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
`Copyright Office (the application interpretation),
`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).
`
`
`
`
`
`
`

`

`8
`
`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, Ltd. 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
`
`
`
`
`
`
`

`

`9
`
`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.
`for the principle of
`(1) Berne stands
`freedom from formalities.
`The United States acceded to Berne3 on
`October 31, 1988. Berne’s principle purpose is
`
`3 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.
`
`
`
`
`
`
`

`

`10
`
`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.4
`
`is
`
`interpretation
`registration
`(2) The
`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
`copyright protection. Intending to bring United
`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
`copyright protection attaches at the time a work is
`created, regardless of whether it is registered,
`
`
`4
`See Sterling On World Copyright Law [2015] - Protection
`Criteria mn. 7.86.
`
`
`
`
`
`
`

`

`11
`
`omitting administrative formalities for copyright
`protection. 17 U.S.C. § 302(a) (“[c]opyright 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 question 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
`
`
`
`
`
`
`

`

`12
`
`foreign copyrights, but to maximize
`enforcing
`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
`copyright enforcement. This approach
`is
`the
`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.5 Further, while
`
`5
`See Copyright.gov, Registration Processing Times,
`https://www.copyright.gov/registration/docs/processing-times-
`
`
`
`
`
`
`
`

`

`13
`
`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
`411(a).
`
`
`faqs.pdf (last visited August 31, 2018). See also Copyright.gov,
`Fees, https://www.copyright.gov/about/fees.html#handling (last
`visited August 31, 2018).
`
`
`
`
`
`
`

`

`14
`
`C. The
`Interpretation
`Registration
`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
`
`
`
`
`
`
`

`

`15
`
`marks, they have the right to enforce their
`trademark rights in federal court, including by
`seeking injunctive relief.
`the
`This
`is not so
`for copyrights under
`that
`registration
`interpretation.
`Under
`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.
`
`
`
`
`
`
`

`

`16
`
`interpretation
`registration
`(2) The
`owners
`of
`deprives
`copyright
`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
`copyright claimants of the ability to enforce their
`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).
`
`interpretation can
`(3) The registration
`deprive copyright claimants of the
`ability to enforce their rights when the
`expiration of the statute of limitations
`is approaching.
`registration
`the
`of
`critical downside
`A
`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.
`
`
`
`
`
`
`

`

`17
`
`Copyright claimants in such situations face two
`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
`
`
`
`
`
`
`

`

`18
`
`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.6
`
`(4) The registration interpretation could
`deprive copyright claimants of the
`ability to promptly obtain temporary
`restraining orders or preliminary
`injunctive relief.
`registration
`interpretation also hurts
`The
`copyright claimants who need temporary restraining
`orders or preliminary injunctions to stop irreparable
`
`Handling,
`6
`See
`Copyright.gov,
`Special
`https://www.copyright.gov/help/faq/faq-special.html (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.”).
`
`
`
`
`
`
`

`

`19
`
`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).7
`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 THE
`TRADEMARK REPORTER 1012 (2015),
`http://www.inta.org/TMR/Documents/Volume%20105/TMR_Vol
`105_No5_Edelman_Sunderji.pdf.
`
`
`
`
`
`
`
`

`

`20
`
`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
`Copyright
`Office’s
`pre-suit
`position
`on
`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.
`§ 411(a). The only distinction is that when a
`registration is denied, the copyright plaintiff must
`serve

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