throbber
No. __-____
`
`
`IN THE
`Supreme Court of the United States
`__________
`
`
`
`
`
`FOURTH ESTATE PUBLIC BENEFIT CORPORATION,
`Petitioner,
`
`
`v.
`
`
`WALL-STREET.COM, LLC AND JERROLD D. BURDEN,
`Respondents.
`
`__________
`
`On Petition for a Writ of Certiorari
`to the United States Court of Appeals
`for the Eleventh Circuit
`__________
`
`PETITION FOR A WRIT OF CERTIORARI
`__________
`
`
`JOEL B. ROTHMAN
`JEROLD I. SCHNEIDER
`SCHNEIDER ROTHMAN
` INTELLECTUAL PROPERTY
` LAW GROUP, PLLC
`4651 N. Federal Highway
`Boca Raton, Florida 33431
`(561) 404-4350
`
`
`October 13, 2017
`
`AARON M. PANNER
` Counsel of Record
`GREGORY G. RAPAWY
`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)
`
`
`
`

`

`QUESTION PRESENTED
`Section 411(a) of the Copyright Act provides (with
`qualifications) that “no civil action for infringement
`of [a] 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). The question presented
`is:
`Whether “registration of [a] copyright claim has
`been made” within the meaning of § 411(a) when the
`copyright holder delivers the required application,
`deposit, and fee to the Copyright Office, as the Fifth
`and Ninth Circuits have held, or only once the
`Copyright Office acts on that application, as the
`Tenth Circuit and, in the decision below, the
`Eleventh Circuit have held.
`
`
`
`
`

`

`
`
`ii
`
`PARTIES TO THE PROCEEDINGS
`Petitioner Fourth Estate Public Benefit Corporation
`was the plaintiff and the appellant in the proceed-
`ings below.
`Respondents Wall-Street.com, LLC and Jerrold D.
`Burden were the defendants and the appellees in the
`proceedings below.
`
`
`

`

`
`
`iii
`
`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.
`
`

`

`
`
`iv
`
`TABLE OF CONTENTS
`
`Page
`QUESTION PRESENTED .......................................... i
`PARTIES TO THE PROCEEDINGS ......................... ii
`RULE 29.6 STATEMENT ......................................... iii
`TABLE OF AUTHORITIES ..................................... vii
`OPINIONS BELOW ................................................... 1
`JURISDICTION .......................................................... 1
`STATUTORY PROVISIONS INVOLVED ................. 1
`INTRODUCTION ....................................................... 1
`STATEMENT .............................................................. 3
`A. Statutory Background .................................... 3
`B. Factual Background ........................................ 6
`C. Proceedings Below .......................................... 7
`REASONS FOR GRANTING THE PETITION ......... 9
`I. THE COURT SHOULD GRANT
`REVIEW TO RESOLVE A CONFLICT
`AMONG THE COURTS OF APPEALS
`ON A MATTER OF SIGNIFICANT
`PRACTICAL IMPORTANCE ......................... 9
`A. The Courts Of Appeals Are Divided
`On The Question Presented And
`Will Remain So Absent This Court’s
`Review ........................................................ 9
`B. The Question Presented Is Important ...... 15
`C. This Case Provides An Appropriate
`Vehicle For Resolution Of The
`Question Presented ................................. 17
`
`

`

`
`
`v
`II. THE ELEVENTH CIRCUIT’S DECI-
`SION CONFLICTS WITH THE COPY-
`RIGHT ACT ................................................... 17
`A. A Careful Reading Of The Statute’s
`Text Establishes That The Eleventh
`Circuit’s Construction Is Incorrect .......... 18
`B. The Eleventh Circuit’s Interpreta-
`tion
`Is
`Inconsistent With The
`Copyright Act’s Scheme Of Rights
`and Remedies ........................................... 22
`CONCLUSION .......................................................... 26
`APPENDIX
`Opinion of the United States Court of Appeals
`for the Eleventh Circuit, Fourth Estate Pub.
`Benefit Corp. v. Wall-Street.com, et al., No.
`16-13726 (May 18, 2017) ........................................... 1a
`Order of the United States District Court for
`the Southern District of Florida Granting
`Motion To Dismiss, Fourth Estate Pub. Benefit
`Corp. v. Wall-Street.com, et al., Civil Action
`No. 16-60497-Civ-Scola (May 23, 2016) ................. 11a
`Complaint for Copyright Infringement, Fourth
`Estate Pub. Benefit Corp. v. Wall-Street.com,
`et al., Civil Action No. 16-60497-Civ-Scola
`(S.D. Fla. filed Mar. 11, 2016) (exhibits omitted) ... 15a
`Statutory Provisions Involved .................................. 23a
`Copyright Act (17 U.S.C.):
`17 U.S.C. § 101 (excerpt) ............................. 23a
`17 U.S.C. § 408 ............................................. 23a
`17 U.S.C. § 409 ............................................. 28a
`
`

`

`
`
`vi
`17 U.S.C. § 410 ............................................. 29a
`17 U.S.C. § 411 ............................................. 30a
`17 U.S.C. § 412 ............................................. 32a
`17 U.S.C. § 501 ............................................. 33a
`17 U.S.C. § 502 ............................................. 35a
`Letter from Supreme Court Clerk regarding
`grant of extension of time for filing a petition
`for a writ of certiorari (Aug. 7, 2017) ..................... 36a
`
`
`
`
`
`
`
`
`

`

`
`
`vii
`
`TABLE OF AUTHORITIES
`
`Page
`
`CASES
`Alicea v. Machete Music, 744 F.3d 773 (1st Cir.
`2014) ..................................................................... 14
`Apple Barrel Prods., Inc. v. Beard, 730 F.2d 384
`(5th Cir. 1984) .................................................10, 12
`Barber v. Thomas, 560 U.S. 474 (2010) ................... 21
`Brooks-Ngwenya v. Indianapolis Pub. Sch.,
`564 F.3d 804 (7th Cir. 2009) ............................... 14
`Caner v. Autry, 16 F. Supp. 3d 689 (W.D. Va.
`2014) ..................................................................... 14
`Chevrestt v. American Media, Inc., 204 F. Supp.
`3d 629 (S.D.N.Y. 2016) ........................................ 14
`Chicago Bd. of Educ. v. Substance, Inc.,
`354 F.3d 624 (7th Cir. 2003) ............................... 14
`Cosmetic Ideas, Inc. v. IAC/Interactivecorp.,
`606 F.3d 612 (9th Cir. 2010) .............. 10, 11, 12, 26
`FDA v. Brown & Williamson Tobacco Corp.,
`529 U.S. 120 (2000) ............................................. 22
`Gaiman v. McFarlane, 360 F.3d 644 (7th Cir.
`2004) ..................................................................... 14
`Gattoni v. Tibi, LLC, No. 16 Civ. 7527 (RWS),
`2017 WL 2313882 (S.D.N.Y. May 25, 2017) ....... 14
`K-Beech, Inc. v. Doe, Civil Action No. 11-7083,
`2012 WL 262722 (E.D. Pa. Jan. 30, 2012) .......... 14
`La Resolana Architects, PA v. Clay Realtors
`Angel Fire, 416 F.3d 1195 (10th Cir. 2005) ....... 13,
`14, 15, 24
`
`

`

`
`
`viii
`Lakedreams v. Taylor, 932 F.2d 1103 (5th Cir.
`1991) ................................................................10, 12
`Liteky v. United States, 510 U.S. 540 (1994) ...... 18-19
`Mays & Assocs. Inc. v. Euler, 370 F. Supp. 2d
`362 (D. Md. 2005) ................................................ 14
`Microsoft Corp. v. i4i Ltd. P’ship, 564 U.S. 91
`(2011) ................................................................... 25
`North Jersey Media Grp. Inc. v. Sasson, Civ.
`No. 2:12-3568 (WJM), 2013 WL 74237
`(D.N.J. Jan. 4, 2013) ............................................ 14
`Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S.
`Ct. 1962 (2014)....................................................... 5
`Positive Black Talk Inc. v. Cash Money Records
`Inc., 394 F.3d 357 (5th Cir. 2004) ..................10, 12
`Prunte v. Universal Music Grp., 484 F. Supp.
`2d 32 (D.D.C. 2007) ............................................. 15
`Psihoyos v. John Wiley & Sons, Inc., 748 F.3d
`120 (2d Cir. 2014) ............................................ 5, 14
`Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154
`(2010) .......................................................... 5, 10, 15
`Strategy Source, Inc. v. Lee, 233 F. Supp. 2d 1
`(D.D.C. 2002) ....................................................... 15
`Syntek Semiconductor Co. v. Microchip Tech.
`Inc., 307 F.3d 775 (9th Cir. 2002) ....................... 25
`
`
`
`

`

`
`
`ix
`STATUTES AND REGULATIONS
`Copyright Act of 1909, ch. 320, 35 Stat. 1075 .......... 23
`Copyright Act of 1976, Pub. L. No. 94-553,
`90 Stat. 2541 ........................................................ 20
`Copyright Act (17 U.S.C.) .................................. passim
`17 U.S.C. § 101 ...............................................10, 17
`17 U.S.C. § 102(a) ....................................... 3, 22, 25
`17 U.S.C. § 106 ...................................................... 3
`17 U.S.C. § 408(a) ..................................... 1, 3, 8, 22
`17 U.S.C. § 408(b) .................................................. 3
`17 U.S.C. § 408(c)(3) ............................................ 20
`17 U.S.C. § 408(e) ................................................ 20
`17 U.S.C. § 408(f) ................................................ 21
`17 U.S.C. § 409 ...................................................... 3
`17 U.S.C. § 410(a) ............................. 3, 7, 13, 20, 21
`17 U.S.C. § 410(b) ............................... 4, 7, 8, 13, 21
`17 U.S.C. § 410(c) ....................................... 6, 24, 25
`17 U.S.C. § 410(d) ............................. 4, 8, 12, 14, 23
`17 U.S.C. § 411(a) ...................... 1, 5, 6, 7, 9, 10, 12,
`13, 15, 16, 17, 18, 22
`17 U.S.C. § 411(b) ................................................ 18
`17 U.S.C. § 411(c) ...........................................19, 21
`17 U.S.C. § 412 ...............................................20, 21
`17 U.S.C. § 412(2) ...........................................20, 21
`17 U.S.C. § 501(a) .................................................. 5
`17 U.S.C. § 501(b) .................................................. 5
`
`

`

`
`
`x
`17 U.S.C. § 502 ...................................................... 5
`17 U.S.C. § 504(a) .................................................. 5
`17 U.S.C. § 507(b) .................................................. 5
`28 U.S.C. § 1254(1) ..................................................... 1
`37 C.F.R. § 202.5 ......................................................... 4
`
`LEGISLATIVE MATERIALS
`H.R. Rep. No. 94-1476 (1976), reprinted in
`1976 U.S.C.C.A.N. 5659 ........................... 20, 22, 23
`
`
`ADMINISTRATIVE MATERIALS
`U.S. Copyright Office:
` Compendium of U.S. Copyright Office Prac-
`tices (3d ed. 2017), https://www.copyright.
`gov/comp3/docs/compendium.pdf ...................15, 16
` Fiscal 2016 Annual Report, available at
`https://www.copyright.gov/reports/annual/2
`016/ar2016.pdf ................................................... 4, 5
`
`
`OTHER MATERIALS
`Brief for the United States as Amicus Curiae
`Supporting Vacatur and Remand, Reed
`Elsevier, Inc. v. Muchnick, 559 U.S. 154
`(2010) (No. 08-103) (U.S. filed June 8,
`2009), https://www.justice.gov/sites/default/
`files/osg/briefs/2008/01/01/2008-0103.mer.
`ami.pdf ................................................................. 15
`
`

`

`
`
`xi
`2 Melville B. Nimmer & David Nimmer,
`Nimmer on Copyright (2008)............................... 11
`2 Melville B. Nimmer & David Nimmer,
`Nimmer on Copyright (2013).............. 12, 13, 22, 25
`5 William F. Patry, Patry on Copyright (2012) ........ 13
`Webster’s New International Dictionary (2d ed.
`1950) ..................................................................... 19
`
`
`
`
`
`
`

`

`The Fourth Estate Public Benefit Corporation respect-
`fully petitions for a writ of certiorari to review the
`judgment of the Eleventh Circuit.
`OPINIONS BELOW
`The opinion of the court of appeals (App. 1a-10a) is
`reported at 856 F.3d 1338. The order of the district
`court granting respondents’ motion to dismiss (App.
`11a-14a) is not reported (but is available at 2016 WL
`9045625).
`
`JURISDICTION
`The court of appeals entered its judgment on
`May 18, 2017. On August 7, 2017, Justice Thomas
`extended the time for filing a certiorari petition
`to and including October 13, 2017. App. 36a. The
`jurisdiction of this Court is invoked under 28 U.S.C.
`§ 1254(1).
`STATUTORY PROVISIONS INVOLVED
`Relevant provisions of the Copyright Act (17 U.S.C.)
`are reproduced at App. 23a-35a.
`INTRODUCTION
`The Eleventh Circuit’s decision deepens division
`among the circuits about a question that arises at the
`start of most copyright infringement cases: whether
`the copyright holder registered the work with the
`Copyright Office before suing for infringement, as
`§ 411(a) of the Copyright Act requires. The Fifth
`Circuit and the Ninth Circuit have held that, if a
`copyright holder files an application, deposits a copy
`of the work, and pays the required fee, as required by
`§ 408(a) of the Copyright Act, the copyright holder
`has “made” the required “registration” within the
`meaning of § 411(a) – whether or not the Register of
`Copyrights has acted on that application. In the
`decision below, the Eleventh Circuit rejected that
`
`

`

`
`
`2
`view, joining the Tenth Circuit in holding that a
`copyright owner may not sue infringers until after
`the Copyright Office has acted on the application and
`registered (or refused to register) the copyright claim.
`The Court should grant the petition. The question
`presented not only recurs repeatedly in copyright
`infringement cases but also frequently leads to
`wasteful litigation; worse, the interpretation adopted
`by the Eleventh Circuit can deprive the owner of
`a valid copyright of statutory remedies for infringe-
`ment. Courts, including several courts of appeals,
`and scholars have addressed the question and reached
`opposing views, and there is no prospect that further
`litigation will resolve the conflict among the circuits.
`The judgment below turns wholly on the answer to
`the question, making this case an appropriate vehicle
`for this Court to resolve it.
`Further, the Eleventh Circuit’s decision is incor-
`rect. The Copyright Act uses the phrase “registration
`. . . has been made” to refer to the action of the
`copyright holder in following the required procedures
`for registration of a copyright claim. The court of
`appeals misread the statute by focusing solely on the
`word “registration” – which by itself can refer to the
`action of the copyright holder or the Copyright Office
`– rather than reading the word in context. Moreover,
`the correct statutory reading leads to a far more
`sensible result, because the rule adopted in the
`decision under review leads to pointless delay and
`may prejudice the rights of copyright owners despite
`their compliance with the statute’s requirements.
`
`

`

`
`
`3
`
`STATEMENT
`A. Statutory Background
`1. The Copyright Act protects “original works
`of authorship fixed in any tangible medium of
`expression . . . from which they can be perceived,
`reproduced, or otherwise communicated.” 17 U.S.C.
`§ 102(a). As soon as a work is created, the copyright
`owner holds exclusive rights “to do and to authorize”
`others to do certain things with the work. Id. § 106.
`Accordingly, unlike useful inventions – which are
`protected by exclusive rights only after a patent
`application has been reviewed and approved by the
`Patent and Trademark Office (“PTO”) and a patent
`issued – original works of authorship are protected
`by virtue of their creation, not an affirmative govern-
`ment grant.
`The Copyright Act also contains provisions for
`registration of copyrights – even though “[s]uch
`registration is not a condition of copyright protection.”
`17 U.S.C. § 408(a). The copyright owner “may obtain
`registration of the copyright claim” by depositing a
`copy (or, in the case of published works, two copies)
`of the work, along with “the prescribed application
`and fee” with the Copyright Office. Id. § 408(a), (b);
`see also id. § 409 (describing required elements of the
`application). The Register of Copyrights is required
`to conduct an examination, and, if the Register
`determines that “the material deposited constitutes
`copyrightable subject matter and that the other legal
`and formal requirements of this title have been met,”
`the Register “shall register” the claim and issue a
`“certificate of registration.” Id. § 410(a). The statute
`provides that the “effective date of a copyright regis-
`tration” is not the date of issuance of the certificate
`but is instead “the day on which an application,
`
`

`

`
`
`4
`deposit, and fee, which are later determined . . . to be
`acceptable for registration, have all been received in
`the Copyright Office.” Id. § 410(d).
`If, on the other hand, the Register determines that
`“the material deposited does not constitute copy-
`rightable subject matter or that the claim is invalid
`for any other reason,” the Register “shall refuse
`registration” and notify the applicant of the reasons
`for refusal. Id. § 410(b).1
`Relatively few works are registered each year, and
`only a small number of applications are refused for
`any reason.2 In 2016, according to Copyright Office
`statistics, the Register received a little more than
`half a million claims and processed approximately
`470,000. It refused registration on 12,656 claims, or
`less than 3%.3 It is not clear what percentage of
`those rejections involved questions of copyrightable
`subject matter, but the very small number of requests
`for administrative review following a rejection – in
`Fiscal 2016, only 320 such requests involving 436 claims
`were made – may indicate that many rejections
`
`
`1 Copyright Office regulations provide for internal adminis-
`trative review of an examiner’s decision to refuse registration –
`a procedure referred to as “reconsideration.” See 37 C.F.R.
`§ 202.5. The statute does not have any specific provision for
`judicial review of a refusal decision, and a copyright owner need
`not obtain such review to sue for infringement.
`2 The number of potentially copyrightable works created
`each year is practically limitless: a child’s thank-you note to
`her aunt would likely qualify. Unless the author anticipates
`enforcing her statutory rights, there is little reason to register.
`3 See U.S. Copyright Office, Fiscal 2016 Annual Report 9,
`available at https://www.copyright.gov/reports/annual/2016/
`ar2016.pdf.
`
`

`

`
`
`5
`are for “legal or procedural reasons” other than copy-
`rightability.4
`2.
`“Anyone who violates any of the exclusive
`rights of the copyright owner . . . is an infringer of
`the copyright.” 17 U.S.C. § 501(a). The copyright
`owner “is entitled . . . to institute an action for . . .
`infringement.” Id. § 501(b). A federal court with
`jurisdiction over an infringement action may grant
`a temporary or permanent injunction, see id. § 502;
`an infringer is also liable for either “the copyright
`owner’s actual damages and any additional profits of
`the infringer” or “statutory damages,” id. § 504(a).
`The copyright owner must file that suit “within three
`years after the claim accrued.” Id. § 507(b); see
`generally Petrella v. Metro-Goldwyn-Mayer, Inc., 134
`S. Ct. 1962 (2014).5
`Before bringing such an action, owners of a
`copyright in a United States (but not foreign) work
`must “register their works.” Reed Elsevier, Inc. v.
`Muchnick, 559 U.S. 154, 157 (2010). Specifically,
`§ 411(a) of the Copyright Act provides that “no civil
`action for infringement of [a] copyright in any United
`States work shall be instituted until . . . registration
`of the copyright claim has been made in accordance
`with this title.” 17 U.S.C. § 411(a). The right to pro-
`ceed with litigation does not depend on whether the
`registration is granted, though a certificate of regis-
`tration obtained before or promptly after publication
`
`4 Id.; see id. (noting that 2016 ended with “more than 316,000
`claims on hand in the system, nearly 29,000 of which required
`more information from applicants”).
`5 The courts of appeals have uniformly held that an infringe-
`ment claim accrues on the date the copyright owner knew, or
`should have known, of the infringement. See Psihoyos v. John
`Wiley & Sons, Inc., 748 F.3d 120, 124 (2d Cir. 2014) (collecting
`cases).
`
`

`

`
`
`6
`confers certain litigation advantages. In particular,
`if a plaintiff has a certificate of a registration “made
`before or within five years after first publication of
`the work,” the certificate “shall constitute prima facie
`evidence of the validity of the copyright and of the
`facts stated in the certificate”; the “evidentiary
`weight to be accorded” a certificate granted there-
`after is left to the court’s discretion. Id. § 410(c).
`In a case where registration has been refused,
`however, the applicant is nevertheless “entitled to
`institute a civil action for infringement.” Id. § 411(a).
`In such a case, the plaintiff is required to serve a
`copy of the complaint on the Copyright Office, and
`the Register may intervene “with respect to the issue
`of registrability of the copyright claim.” Id. But the
`litigation may proceed irrespective of the Register’s
`participation. See id.
`B. Factual Background
`Fourth Estate “is an independent news organiza-
`tion” whose journalists produce “high quality, timely,
`accurate and compelling journalism.” App. 15a-16a
`(Compl. ¶¶ 1-2). Fourth Estate owns the copyrights
`in those journalists’ works and licenses them to a
`cloud-based news organization called AHN Feed
`Syndicate; AHN Feed Syndicate, in turn, licenses
`them to others. App. 16a, 18a (id. ¶¶ 2, 4, 14-15).
`Fourth Estate retains the right to sue for copyright
`infringement. App. 16a (id. ¶ 2).
`This case concerns one of AHN Feed Syndicate’s
`former
`licensees, Wall-Street.com, LLC
`(“Wall-
`Street”). Wall-Street secured a license to put some of
`Fourth Estate’s works on the Internet. App. 18a (id.
`¶ 17). Under that license, if Wall-Street canceled
`its account with AHN Feed Syndicate, Wall-Street
`was to “stop display of all Feed Syndicate provided
`content and permanently take down, remove and/or
`
`

`

`
`
`7
`delete all cached, saved, archived, stored or data-
`based content or data.” Id. (id. ¶ 18). Wall-Street
`canceled its account but continued to copy and
`distribute 244 of Fourth Estate’s works. App. 18a-
`19a (id. ¶¶ 15, 19); see Compl. Ex. 1, ECF 1-2.
`In March 2016, Fourth Estate sued Wall-Street,
`seeking an injunction and damages. App. 21a-22a
`(Compl. at 7). Before it did so, it filed its application
`for registration with the Copyright Office; it did
`not wait for the Office to act on that application.
`App. 18a (id. ¶ 14). Nineteen months later – more
`than half the length of the Copyright Act’s statute of
`limitations – that application remains pending.
`C. Proceedings Below
`that
`Wall-Street moved
`to dismiss, arguing
`§ 411(a) bars Fourth Estate from suing until after
`the Register of Copyrights acts on its application.
`The district court granted the motion. App. 13a.
`Recognizing that this case “require[d] [it] to decide
`an issue that has divided the circuits,” App. 1a, the
`Eleventh Circuit held that the text of the Copyright
`Act required dismissal – aligning itself with the
`Tenth Circuit and expressly rejecting the contrary
`view of the Fifth Circuit and the Ninth Circuit.
`App. 4a-6a. The court stated that the Act “defines
`registration as a process that requires action by both
`the copyright owner and the Copyright Office.”
`App. 6a. The copyright owner files an application,
`deposits a copy, and pays the required fee; the Regis-
`ter “then examines the material” and determines
`whether it is registrable. Id. The court held that the
`use of the phrase “after examination” in § 410(a) –
`which describes the procedure that the Register must
`follow in registering a claim – “makes explicit that
`an application alone is insufficient for registration.”
`Id. Furthermore, § 410(b) authorizes the Register
`
`

`

`
`
`8
`to “refuse registration”; the court believed that, if
`“registration occurred as soon as an application was
`filed, then the Register of Copyrights would have
`no power to ‘refuse registration.’” App. 7a (quoting
`17 U.S.C. § 410(b)).
`The court rejected Fourth Estate’s contrary argu-
`ments based on other provisions of the statute. The
`court read § 408(a) – which states that a copyright
`owner “may obtain registration of the copyright claim
`by delivering” the required materials to the Register,
`17 U.S.C. § 408(a) – to say nothing about when
`registration occurs, but only about “the conditions a
`copyright owner must satisfy to obtain registration.”
`App. 7a. It likewise found it insignificant that § 410(d)
`provides that the effective date of registration is the
`date the application is complete, rather than the date
`the Copyright Office acts on an application. In the
`court’s view, that section supports its rule because
`“registration occurs only after the Register of Copy-
`rights deems an application ‘to be acceptable.’” App.
`8a (quoting 17 U.S.C. § 410(d)).
`The court also acknowledged the harsh result that
`its rule, together with the statute of limitations,
`can bring about: “an owner who files an application
`late in the statute of limitations period risks losing
`the right to enforce his copyright in an infringement
`action because of the time needed to review an appli-
`cation.” Id. “But,” in the court’s view, “this potential
`loss encourages an owner to register his copyright
`soon after he obtains the copyright and before
`infringement occurs.” Id. The court also refused to
`consider the Copyright Act’s legislative history and
`animating policy, instead finding the language that
`other courts of appeals had interpreted differently to
`be “unambiguous.” App. 9a.
`
`

`

`
`
`9
`REASONS FOR GRANTING THE PETITION
`The Eleventh Circuit’s decision deepens an
`acknowledged circuit split about the meaning of the
`statutory phrase “registration . . . has been made” in
`§ 411(a). In the Fifth and Ninth Circuits, a copyright
`owner may sue to enforce exclusive rights once the
`materials required for registration have been submit-
`ted to the Copyright Office. But, in the Tenth and
`Eleventh Circuits, a copyright owner has no remedy
`for infringement until after the Copyright Office has
`acted on the application.
`That conflict, on a matter of great practical signifi-
`cance, will not be resolved without this Court’s
`review. Furthermore, the rule adopted by the court
`below and previously by the Tenth Circuit misreads
`the statutory language, by (incorrectly) construing
`the word “registration” in isolation and failing to
`construe the operative phrase, “registration . . . has
`been made” – phrasing the statute uses repeatedly to
`refer to the actions of the copyright holder. The
`court’s decision in this case invites wasteful litigation
`and jeopardizes copyright owners’ ability to enforce
`their statutory rights. This case provides an ideal
`opportunity to resolve the issue correctly once and
`for all.
`I. THE COURT SHOULD GRANT REVIEW
`TO RESOLVE A CONFLICT AMONG THE
`COURTS OF APPEALS ON A MATTER OF
`SIGNIFICANT PRACTICAL IMPORTANCE
`A. The Courts Of Appeals Are Divided On
`The Question Presented And Will Remain
`So Absent This Court’s Review
`Four courts of appeals have resolved the question
`presented, dividing evenly on the issue.
`
`

`

`
`
`10
`1. The Ninth Circuit and the Fifth Circuit
`have held that “receipt by the Copyright Office of
`a complete application satisfies the registration
`requirement of § 411(a).” Cosmetic Ideas, Inc. v.
`IAC/Interactivecorp., 606 F.3d 612, 621 (9th Cir.
`2010); see Positive Black Talk Inc. v. Cash Money
`Records Inc., 394 F.3d 357, 365 (5th Cir. 2004),
`abrogated in part on other grounds by Reed Elsevier,
`Inc. v. Muchnick, 559 U.S. 154, 160 n.2 (2010);
`Lakedreams v. Taylor, 932 F.2d 1103, 1108 (5th Cir.
`1991); Apple Barrel Prods., Inc. v. Beard, 730 F.2d
`384, 386-87 (5th Cir. 1984).
`In Cosmetic Ideas, after noting that the
`a.
`circuits were already divided on the issue, the Ninth
`Circuit determined that § 411(a) itself “gives no
`guidance in interpreting the meaning of ‘registration,’”
`which is “unhelpfully” defined elsewhere in the stat-
`ute as “‘a registration of a claim in the original or the
`renewed and extended term of copyright.’” 606 F.3d
`at 616 (quoting 17 U.S.C. § 101). The court found the
`“language of the statute as a whole” likewise to be
`ambiguous. Id. at 616-17.
`Because the court found the statutory language to
`be ambiguous, it sought to “discern its meaning by
`looking to ‘the broader context of the statute as a
`whole’ and the purpose of the statute.” Id. at 618.
`The court concluded that allowing a copyright holder
`to sue once it had submitted its complete application
`“better fulfills” the purpose of the statute. Id. at 619.
`The court noted that this approach “avoids unneces-
`sary delay . . . , which could permit an infringing
`party to continue to profit from its wrongful acts.”
`Id. The court emphasized that § 411(a) “allows a
`party, after applying for registration, to litigate the
`claim whether the Copyright Office accepts or rejects
`the registration.” Id. Requiring a copyright holder to
`
`

`

`
`
`11
`wait until the Copyright Office has acted “‘create[s]
`a period of “legal limbo” in which suit is barred.’”
`Id. at 620 (quoting 2 Melville B. Nimmer & David
`Nimmer, Nimmer on Copyright § 7.16[B][1][a][i] (2008)).
`At the same time, allowing a copyright owner to sue
`while the application is pending does not “impair[]
`the central goal of copyright registration” because the
`copyright holder is nevertheless obligated “to submit
`the information necessary to add the copyright to the
`federal registry.” Id.
`The court also found that the “requirement of
`affirmative approval or rejection before suit . . .
`amounts to little more than just the type of needless
`formality Congress generally worked to eliminate in
`the 1976 Act.” Id. And, “in addition to being general
`inefficient, in the worst-case scenario the registration
`approach could cause a party to lose its ability to
`sue,” given the three-year statute of limitations. Id.
`“This result does not square well with § 410(d)’s
`mandate that an application’s effective registration
`date should be the day that a completed application
`is received.” Id.
`The court also rejected the argument that “defer-
`ence to the Register” required a different result. Id.
`at 621. First, as a practical matter, because of the
`pace of litigation, the Copyright Office will typically
`have acted before a case is decided, and the Copy-
`right Office, if it rejects an application, will still have
`an opportunity to intervene in the pending litigation.
`See id. Moreover, “the Register’s decision of whether
`or not to grant a registration certificate is largely
`perfunctory, and is ultimately reviewable by the
`courts.” Id. Thus, review by the Copyright Office
`and underlying litigation “can occur simultaneously
`with little or no prejudice to any involved parties.”
`Id.
`
`

`

`
`
`12
`b. The result in Cosmetic Ideas accords with the
`result earlier reached and repeatedly reaffirmed by
`the Fifth Circuit, which, as the first court of appeals
`to address the issue, held that, “to bring suit for
`copyright infringement, it is not necessary to prove
`possession of a registration certificate. One need
`only prove payment of the required fee, deposit of the
`work in question, and receipt by the Copyright Office
`of a registration application.” Apple Barrel, 730 F.2d
`at 386-87; see also Lakedreams, 932 F.2d at 1108
`(5th Cir. 1991); accord Positive Black Talk, 394 F.3d
`at 365.
`To support that conclusion, the Fifth Circuit relied
`on Professor Nimm

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