Twist to Claiming Copyright Protection

Valancourt Books, LLC v. Perlmutter et al.

Well … it seems US District Judge Amy Berman Jackson, sitting in the US District Court for the District of Columbia (that would be in Washington DC) has added a new twist to the claiming of copyright protection. You have to register the work with the US Copyright Office to include notice of copyright protection in the work.

This could have … ahem … interesting fallout for things like websites and blogs.

You can read the opinion here.

Brief Background

Valencourt Books, LLC (“Valencourt”) is a very small (as in home-based), independent publisher that publishes rare, neglected, or out-of-print fictional works on demand. The works that Valencourt prints bear a copyright notice, but Valencourt does not register any copyright in the works it publishes with the US Copyright Office. Valencourt put copyright notice in its published books, but did not register that copyright and did not provide the Copyright Office with its requisite two copies. Under such circumstances, the Copyright Office takes the view that the claimant is claiming the protection of federal law without complying with the requirements of federal law. They can send out a demand letter and issue fines ranging from $250 per unregistered-but-claimed work to $2500 per unregistered-but-claimed work.

The Copyright Office issued its demand.

Valencourt replied that the requirement for copies runs afoul of the Takings Clause of the Fifth Amendment to the US Constitution and that no, it would not provide the requisite two copies to the Copyright Office because doing so was an undue burden on a very small business.

The Copyright Office, pre-litigation, countered this complaint by offering to accept electronic copies of the works, even though the works had been published (ordinarily, the Copyright Office requires printed copies to be provided for published works). However, Valencourt rejected the offer because they didn’t want any special treatment from the Copyright Office … the settlement proposed by the Copyright Office is an exception to the requirement and does not change the Office’s requirement for physical copies from other small publishers … and because the works were not already accessible in electronic format and getting them into that format would be an undue burden on Valencourt’s owners and employees.

Valencourt sued the US Copyright Office (Shira Perlmutter is the Register of Copyrights) claiming that the deposit requirement violates the First and Fifth Amendments to the Constitution. The Copyright Office countered with the claim that Valencourt was claiming copyright protection without complying with the requirements for that protection.

Valencourt alleges that the Copyright Office’s deposit requirement is an unconstitutional taking of private property because “…the government is demanding copies of publishers’ works for its own use without providing compensation to the affected parties.” Compl ¶ 1; Pl.’ Mom. at 18. Judge Jackson didn’t buy it. Citing Ruckelshaus v. Monsanto Co., 467 US 986, 1007 (1984), she explains that SCOTUS precedent establishes that “…a statute that confers a “benefit” [like copyright protection – comment added] on a citizen may condition the receipt of that benefit on the submission of private property in exchange without running afoul of the Takings Clause.” Slip Op. at 11. So … the Copyright Office can indeed “take” the two best copies of the work to be copyrighted in exchange for copyright protection without violating the Takings Clause. This is no surprise; deposits of copyrighted materials have been required since the first US copyright law came into existence in the 1790s.

Deposit Requirement and Free Speech

This section of the case contains no surprises. The deposit requirement is not subject to strict scrutiny because it is entirely … ENTIRELY … content-neutral. The deposit requirement does not attempt to limit speech; the requirement is the same for any work being registered regardless of the content of that work. Also, the burden imposed upon the copyright claimant by the deposit requirement is hardly unreasonable in relation to the benefit the requirement confers on the public.

Copyright, Registration, and Notice

The interesting part of the case is the issue of the copyright notice in publications that are not registered with the Office. The Court hides this in its discussion of the Takings Clause, but it’s important.

Valencourt includes copyright notice in its books and thus (1) informs the public that the works are copyrighted, (2) deters potential infringers, and (3) removes any innocent infringement defense. The claiming of copyright is just as voluntary as is the registration for copyright, and, since the enforcement of copyright protection is limited to those who have registered their works (see 17 USC 411), copyright in unregistered works cannot be enforced. Because plaintiff does not volunteer to register copyright in the works and certainly does not volunteer to send copies of the works to the Copyright Office, Plaintiff does not get to claim, by including notice of copyright in the published works, the benefits conferred by its notice of copyright.

This is huge. Just think of all those websites and blogs out there that have a copyright notice on them that are unregistered. Suddenly, it’s clear that the existence of the notice can trigger the demand letter from the Copyright Office and the subsequent fines.


Upcoming Copyright Office Event on 2/17/2021 to Honor RBG

This should be well worth attending. Sadly, I will miss the live stream, but I look forward to the YouTube event.

From the Copyright Office’s blog post:

“To celebrate Justice Ginsburg’s impact on copyright, join the Copyright Office on February 17 from 1:00 to 2:30 p.m. eastern time for “Copyright Office Presents: The Enduring Legacy of Justice Ruth Bader Ginsburg.” This virtual event will feature a conversation between Paul Goldstein of Stanford Law School and Jane Ginsburg of Columbia Law School on Justice Ginsburg’s jurisprudence. Cohen, West, and Wang will also discuss how Justice Ginsburg inspired their own copyright-protected works. While the advanced registration to attend the Zoom event has closed, the Copyright Office will also live stream the event on its YouTube Channel. No registration is required to view the live stream. If you miss the event, the video will later be available on the Office’s YouTube Channel.”

The Day The Music Died

US Supreme Court Associate Justice Ruth Bader Ginsburg (3/15/1933-9/18/2020), the unlikely rock star and cultural icon known affectionately as “Notorious RBG,”  who loved her family, loved the law, loved the opera, and loved her country (not necessarily in that order), left this earth yesterday. She had just reached the halfway point between 87 and 88.

Words cannot express how her passing saddens me. I never met Justice Ginsburg (though I did see her on the SCOTUS bench on the day I was admitted to practice before SCOTUS), but I certainly knew her. I knew her through the humanity reflected in her decisions. I knew her through her fast friendship with her SCOTUS foil Antonin Scalia. I knew her through the many quips and quotes that trickled down from her lips to the public’s lives. I knew her for the gargantuan impact this tiny woman had on the law and on the world. I miss her. I join the world in praying for her and her family.

One of my cats is named Ginsburg, after her; that cat’s littermate is named after Justice Scalia. When they came into my life two years ago, I thought it would be fun to commemorate that unlikely friendship with these kittens’ names.

I can’t remember the Notorious RBG in any better way than in her own words. CBS News did a good interview with her when she was only 83 years old. Here’s the segment of that interview that is available on YouTube.

Rest in peace, Justice Ginsburg. If anyone deserves a rest, you do. You leave us with one hell of a great legacy.

WiLan v. Apple Computer

So. The Jury Has Spoken. And Apple’s stock will dip a bit. That, for those looking to buy AAPL, might be a good thing; for those already invested in AAPL, it’s not a good thing.

But will Apple actually be on the hook to pay $85M to WiLan? Well see. Apple’s pockets are deep enough to be able to appeal the decision; since this is a patent case, that appeal will likely be heard before the US Court of Appeals for the Federal Circuit, which holds exclusive jurisdiction over patent appeals. If one of the parties is unhappy with that decision, that party may actually file a writ of certiorari with the US Supreme Court. And who knows … SCOTUS might actually grant that writ and hear the case.

Meanwhile, though, Apple owes WiLan $85M.

Will Phonetic Profanity Be OK to Register as a Trademark??

SCOTUS granted certiorari to and recently heard arguments on the case of a guy trying to register FUCT as a trademark. The question: Can a phonetically profane word be registered as a trademark?

The US Patent & Trademark Office denied registration of the mark based on its obvious similarity to the past participle of a verb commonly recognized as profane. The case has wended its way through the appellate process (US District Court for DC, Federal Circuit) and now sits before the Nine Wise Ones where it asks them to decide whether a long-standing rule prohibiting the registration of profane words interferes with the trademark holder’s First Amendment free-speech rights. They heard oral arguments on 15 April 2019.

The Roberts Court has a history with disparaging marks, having allowed SLANTS (which the USPTO denied based on its derogatory reference to Orientals) only last year. But SLANTS is not outright profanity. FUCT, phonetically, is. It’ll be interesting to see what this blatantly conservative Court does with FUCT. Seems to me that either the trademark holder will be FUCT or the public will be.

Matal v. Tam, ___ US ___ (2017)

SCOTUS handed down a HUGE trademark decision yesterday.

Matal v. Tam declares the language of 15 USC 1052(a), which prevents the registration of marks that may “disparage . . . or bring . . . into contemp[t] or disrepute” any “persons, living or dead” to be unconstitutional under the First Amendment’s Free Speech clause.


This opens up a whole new world of potential trademark registrations.


Free Legal Opinions and Orders Easily Accessible

This is pretty cool.

The Free Law Project is working to make available in one place all the free materials available on PACER. That includes opinions and orders from every federal court in the nation.

“Public Access to Court Electronic Records (PACER) is an electronic public access service that allows users to obtain case and docket information online from federal appellate, district, and bankruptcy courts, and the PACER Case Locator. PACER is provided by the Federal Judiciary in keeping with its commitment to providing public access to court information via a centralized service.” Note that the information is “public” access, not “free” access. Many documents on PACER require payment (at the whopping rate of $0.10/page, which can add up pretty fast if you’re talking about briefs and pleadings and motions and all the rest of it). The paid pages will not be available through the Free Law Project, but it will be easier to access the many opinions and orders that are available on PACER for free.

Cheerleader Outfit Designs ARE Covered by Copyright

Star Athletica, L.L.C. v. Varsity Brands, Inc., et al., 580 US ___, a newly (22 March 2017) decided copyright case, finds that the design elements of a cheerleading outfit can be covered by copyright.

According to the syllabus of the case, SCOTUS holds: “A feature incorporated into the design of a useful article is eligible for copyright protection only if the feature (1) can be perceived as a two- or three-dimensional work of art separate from the useful article, and (2) would qualify as a protectable pictorial, graphic, or sculptural work—either on its own or fixed in some other tangible medium of expression—if it were imagined separately from the useful article into which it is incorporated. That test is satisfied here.”

This case is interesting because it tells us where lies the line between industrial design, which is not protected by copyright (it may be protected by patent), and artistic design, which is. Courts have disagreed where that line lies.

Here, the District Court held that the designs did not qualify for protection under copyright because the designs served the useful purpose of identifying the outfits as “cheerleading uniforms.” The designs are therefore utilitarian, cannot be separated out to stand on their own, and therefore cannot be protected by copyright (you can read the District Court’s opinion at 2014 WL 819422 (WD Tenn., Mar. 1, 2014)).

The US Court of Appeals for the Sixth Circuit disagreed; they held, with one dissent that upheld the District Court’s opinion, that the graphic designs are indeed “separately identifiable” because a cheerleading costume without design is still identifiable as a cheerleading costume, so the graphics on such a garment can indeed be separated out and separately displayed and are thus protectable under copyright (read the 6th Circuit’s opinion at 799 F. 3d 468, 471 (2015)).

The Supreme Court affirms the 6th Circuit.

So what does this case teach us? We now know that designs on clothing CAN be separated out from the clothing, making the design on the clothing, even if the design relates to the function of the clothing, protectable under copyright.

We know that “The statute … provides that the “design of a useful article” can include two-dimensional “pictorial” and “graphic” features, and separability analysis applies to those features just as it does to three-dimensional “sculptural” features.”

We know that “…a feature of the design of a useful article is eligible for copyright if, when identified and imagined apart from the useful article, it would qualify as a pictorial, graphic, or sculptural work either on its own or when fixed in some other tangible medium.”

Copyright remains one of the most case-by-case determinations around. The findings of this case have yet to be tested on utilitarian items other than clothing; we’ll watch this with some interest to see what, if anything, happens.

Cuozzo v. Lee, 579 US ____ (2016)

I was present in the Courtroom for the announcement of the Cuozzo decision by SCOTUS. This decision makes it clear that inter partes review by the USPTO is not appealable, and that the USPTO can institute such review sua sponte (by its own initiative). It’s an interesting decision.

35 USC §314(d) says that the “determination by the [Patent Office] whether to institute an inter partes review under this section shall be final and nonappealable.” (Emphasis added.)

35 USC §312 says that petitions must be pleaded “with particularity.” Those words, in its view, mean that the petition should have specifically said that claims 10 and 14 are also obvious in light of this same prior art. Garmin’s petition, the Government replies, need not have mentioned claims 10 and 14 separately, for claims 10, 14, and 17 are all logically linked; the claims “rise and fall together,” and a petition need not simply repeat the same argument expressly when it is so obviously implied.

The “No Appeal” provision’s language must, at the least, forbid an appeal that attacks a “determination . . . whether to institute” review by raising this kind of legal question and little more. §314(d).

Moreover, a contrary holding would undercut the Patent Office’s significant power to revisit and revise earlier patent grants. Congress would not likely have granted the Patent Office this reexam authority if it had thought that the agency’s final decision could be unwound under some minor statutory technicality related to its preliminary decision to institute inter partes review. Congress has told the Patent Office to determine whether inter partes review should proceed, and it has made the agency’s decision “final” and “nonappealable.” §314(d). SCOTUS’s conclusion that courts may not revisit this initial determination gives effect to this statutory command.

However, the Court limits its green-lighting of the USPTO’s unappealable reviews: “… we need not, and do not, decide the precise effect of §314(d) on appeals that implicate constitutional questions, that depend on other less closely related statutes, or that present other questions of interpretation that reach, in terms of scope and impact, well beyond “this section.”” The Court does not “…categorically preclude review of a final decision where a petition fails to give “sufficient notice” such that there is a due process problem with the entire proceeding, [or] enable the agency to act outside its statutory limits by, for example, canceling a patent claim for “indefiniteness under §112” in inter partes review.”

On Admission to the SCOTUS Bar

It’s done.

I am now a member of the bar admitted to practice before the United States Supreme Court. I have met all their experience, character and fitness requirements; Chief Justice Roberts granted the motion to admit me on Monday, 20 June 2016.

So what?

For most people, it’s not a big deal when a lawyer gets admitted to this bar; SCOTUS air is pretty rarified and not a lot of cases that apply to the Court actually get heard. Your likelihood of ever getting a case in front of the Nine Wise Ones are probably pretty low. However, when your case IS granted certiorari (i.e., the Court agrees to hear it), you need a lawyer admitted to that bar to argue it before the bench for you.

For the lawyer, it’s a very big deal indeed. This is the highest court in the United States. It’s seriously cool to be on the roster of lawyers allowed to file and argue a case here. Will I ever actually argue a SCOTUS case? I certainly hope not. But it’s nice to have this cannon in my arsenal.