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Argument analysis: Justices wade deep into the copyright weeds

Tuesday’s argument in Fourth Estate v. featured competing interpretations of the phrase “registration of the copyright claim has been made” in 17 U.S.C.§ 411(a), which requires copyright registration as a prerequisite for filing an infringement suit. Because much of the argument focused on niceties of textual interpretation, I’ll quote the language of the relevant subsection:

[N]o civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title. In any case, however, where the deposit, application, and fee required for registration have been delivered to the Copyright Office in proper form and registration has been refused, the applicant is entitled to institute a civil action for infringement if notice thereof, with a copy of the complaint, is served on the Register of Copyrights.

The lower court dismissed Fourth Estate’s copyright infringement suit on the ground that Fourth Estate had filed an application to register its copyright, but that the Copyright Office had not yet processed the application, so registration of Fourth Estate’s claim had not yet been made within the meaning of Section 411(a).

Justice Ruth Bader Ginsburg, who usually shows a keen interest in copyright cases, was not present for the argument, but the court announced that she would be participating in the decision, relying on the briefs and the transcript.

Aaron Panner, arguing for Fourth Estate, insisted that textual evidence in the statute proved that “registration … has been made” as soon as the copyright claimant has submitted an application accompanied by a deposit of a copy of the work and the registration fee. Panner argued that the statute uses the word “registration” in many places, sometimes to refer to the Register’s action in accepting a claim and issuing a certificate of registration and sometimes to refer to the copyright owner’s filing of a registration application. He maintained, though, that every time the statute uses the phrase “registration has been made,” it references the acts of the copyright owner rather than those of the Copyright Office.

Justice Elena Kagan said that she was persuaded by Panner’s argument that the statute used the word “registration” to mean different things in different sections, but that it was more difficult to accept the argument that it used the word “registration” to mean different things in two adjacent sentences within a single subsection. She observed that the first sentence used the language “registration has been made,” and the second sentence used the language “registration has been refused.” Both sentences are framed in the passive voice. Given that they are connected by the word “however,” Kagan suggested that it was hard to avoid the conclusion that both sentences use the word “registration” to mean the same thing, i.e., action by the Register.

Chief Justice John Roberts pointed out that the copyright statute confers additional benefits in connection with copyrights that are registered. How would a court know whether a claimant was entitled to those benefits unless the Copyright Office had granted or refused registration? Panner responded that in the vast majority of cases, the registration determination is ministerial.

Justice Sonia Sotomayor asked what would happen if the case went forward, judgment was entered, and later the Copyright Office denied registration. Panner replied that those cases don’t arise as a practical matter, but that the statute does have a provision permitting the Register to intervene in a copyright infringement suit. Panner reminded the court that copyright rights exist whether the claim is registered or not. He urged that his reading was necessary so that copyright plaintiffs would not be denied prompt injunctive relief. Justice Brett Kavanaugh asked Panner to say more about the problems copyright owners would face under the U.S. Court of Appeals for the 11th Circuit’s interpretation. Panner suggested that the delay would allow infringing files to be distributed widely over the internet.

Peter Stris, arguing for, insisted that the plain text of Subsection 411 requires the Register to act on a claimant’s application before suit may be filed. Stris argued that none of the provisions cited by Fourth Estate support the proposition that an application alone suffices for registration, but even if some parts of the statute used the word to refer to the copyright owner’s actions, Section 411(a) did not. Fourth Estate’s reading, he continued, would make several other provisions of the statute meaningless or superfluous, and it would undercut the ability of the registration process to clarify and limit the scope of copyright claims. Stris contended that opponents of registration had urged Congress repeatedly to eliminate the registration prerequisite, and that Congress had included a number of exceptions in the statute to ameliorate the problem. Because of those exceptions, the likelihood of a copyright owner’s actually facing a situation in which its copyright was unenforceable because of delay is vanishingly small. The question before the Supreme Court, though, isn’t whether a rule that treated application for registration as the equivalent of registration might be the best policy, but, rather, whether Congress had intended that result when it enacted the language of Section 411(a).

Jonathan Ellis argued for the United States, and agreed with’s interpretation. Ellis focused on the two sentences in Section 411(a), arguing that if the first sentence were read the way Fourth Estate contended it should be read, the second sentence would make no sense. At best, Fourth Estate’s construction requires that the Supreme Court read the word “registration” to refer solely to acts of the claimant in the first sentence and solely to acts of the Copyright Office in the second, and it’s implausible that Congress would have sought to express its meaning that way. Ellis then cited other provisions of the statute that he argued would make no sense unless “registration” were read to mean the Register’s issuance of a registration certificate.

Justice Neil Gorsuch raised the issue of problems caused by Copyright Office delays: Congress had assumed, he said, that the registration decision would be made promptly, and that wasn’t the case. Along similar lines, Kavanaugh — while agreeing that probably had the better textual argument — expressed concern about industry claims, made in friend-of-the-court briefs, that delaying suit until after the Register had acted would be devastating to copyright owners. Ellis answered that Congress had made statutory exceptions that allowed copyright owners to avoid those delays. In addition to the exceptions permitting suit over unregistered works, he explained, the notice-and-takedown provisions that Congress added to the statute in 1998 gave copyright owners an expeditious method for seeking the removal of infringing files from the internet.

Ellis also suggested, in response to Kavanaugh, that if the justices considered it appropriate to consult the legislative history of the provision, they would find further support for his position.

In rebuttal, Panner insisted that his primary argument is textual, but that it is important to read the statute to “protect copyright owners and give them their rights and remedies.” Whatever Congress intended to accomplish with the provisions designed to encourage registration, that purpose has been satisfied as soon as the copyright owner submits its registration application.

Throughout the argument, the justices appeared to be persuaded that Stris and Ellis have the better textual argument. Some of them suggested that they found Panner’s interpretation colorable, and that he had raised important policy concerns. Although this particular case is relatively minor, the court’s ruling could be determinative for other recently filed high-profile cases. None of the briefs devoted much ink to the legislative history of the provision, and Ellis only diffidently suggested that the justices might find persuasive evidence if they were to consult it. It will be interesting to see whether the court’s opinion(s) make any reference to it.

Editor’s Note: Analysis based on transcript of oral argument.

Recommended Citation: Jessica Litman, Argument analysis: Justices wade deep into the copyright weeds, SCOTUSblog (Jan. 9, 2019, 10:14 AM),