Valancourt Books v. Perlmutter

Post publish date: July 23, 2021

Valancourt Books is a small, independent press that publishes rare and out-of-print fiction through a print-on-demand service. In June 2018, the Copyright Office, pursuant to Section 407’s deposit requirements, sent Valancourt a demand letter for mandatory deposit of 341 of the titles it publishes. The Copyright Office later reduced the number of requested deposits to 240 and also informed Valancourt that it would accept electronic copies instead of print copies.

Nonetheless, Valancourt filed a complaint against the Copyright Office in August of 2018, seeking to enjoin the federal government from demanding deposit copies and alleging the mandatory deposit provisions are an unconstitutional taking of property without just compensation in violation of the Fifth Amendment and an unconstitutional burden on free speech in violation of the First Amendment. The complaint also argued that because all original works are protected by copyright from the moment they are created, the deposit requirement no longer operates as an element of a quid pro quo.

The Copyright Office responded by filing a motion for summary judgment, arguing the constitutional claims have no merit and that the deposit requirement constitutes a voluntary exchange with the government for statutory benefits. Valancourt opposed the motion and filed a cross motion for summary judgment, arguing that the Copyright Office had threatened the publisher with “hefty fines” and that Valancourt has a “fundamental right to retain its property against the government’s interest in obtaining that property (which it could freely purchase) without paying for it.”

On July 23, 2021, the District Court for the District of Columbia issued a memorandum opinion, granting summary judgment in favor of the Copyright Office. The court considered both of Valancourt’s constitutional claims and determined that both claims failed. First, the Court found that Section 407’s deposit requirement isn’t an unconstitutional taking, but rather a voluntary exchange in return for the benefit of federal copyright protection. The court explained that the Supreme Court held in Ruckelshaus v. Monsanto Co. that statues that confer benefits on a citizen may condition the receipt of that benefit on the submission of private property and do not constitute an unconstitutional taking of property in violation of the Fifth Amendment. Second, the court found that the deposit requirement is not a violation of the First Amendment because it does not unduly burden speech and is not a content based restriction on speech because all publications in the United States must comply. The court went on to say that any burden posed by the deposit requirement is not disproportionate to the benefits enjoyed by Valancourt and the general public, namely creating a public repository to promote the arts and sciences.


District Court

Opinion (July 23, 2021)

Plaintiffs’ Reply Memorandum (September 13, 2019)

Defendants’ Combined Response Memorandum (August 23, 2019)

Plaintiffs’ Memorandum in Opposition to Defendants’ Motion and in Support of Plaintiffs’ Cross-Motion for Summary Judgment (August 2, 2019)

Joint Stipulations of Fact (July 3, 2019)

Defendants’ Memorandum in Support of Summary Judgment (July 3, 2019)

Answer (November 21, 2018)

Complaint (August 16, 2018)

Green (EFF) v. DOJ

Post publish date: June 15, 2021

The Electronic Frontier Foundation (EFF), on behalf of various putative plaintiffs, challenged the constitutionality of the anti-circumvention provisions of the Digital Millennium Copyright Act (DMCA), contained in 17 U.S.C. 1201(a), 1203, and 1204, as well as the Library of Congress’ triennial rulemaking procedure. In particular, EFF argued that the Library of Congress’ failure to grant exemptions for the use of motion picture clips for various allegedly non-infringing uses violated the First Amendment and the Administrative Procedure Act.

On June 27, 2019, the District Court of DC granted in part and denied in part defendants’ motion to dismiss a challenge brought by security researchers, represented by EFF, to Section 1201’s anticircumvention and antitrafficking provisions.

The court dismissed the claims that Section 1201 is a facially overbroad First Amendment violation and that it is an unconstitutional prior restraint.

It did hold that plaintiffs adequately pled an as-applied First Amendment challenge: the court determined that the anticircumvention and antitrafficking provisions trigger intermediate scrutiny because they are content-neutral, but they burden substantially more speech than is necessary to further the government’s interest. The court noted that it must take the facts alleged by plaintiffs in the complaint as true and construe them in the light most favorable to the plaintiffs; at this juncture, any facts supporting the government’s assertion that “the anti-trafficking restriction in [section] 1201(a)(2) would be less effective if individuals and companies such as [p]laintiffs were allowed to disseminate decryption technologies, even if they intended the dissemination to serve a limited purpose,” and that they “would undermine the effectiveness of access controls, thus interfering with the online market for copyrighted works by deterring copyright owners from making works available online at all” were not in the record.

Finally, the court held that the triennial rulemaking process is not subject to the Administrative Procedure Act. The court concluded that while the Copyright Act subjects the Register of Copyrights to the APA, the APA only applies to a “final agency action”, and the triennial rulemaking process is consummated by the Librarian of Congress (based on the recommendation of the Register). The Librarian, the court here held, is not subject to the APA.

On July 15, 2021, the U.S. District Court for the District of Columbia denied the plaintiffs’ request for preliminary injunction.


Court: DC District Court

Status: This case is pending before the U.S. District Court for the District of Columbia. The defendants’ motion to dismiss was granted in part and denied in part. The plaintiffs’ request for preliminary injunction was denied.

Party Filings

Oracle America v. Google

Post publish date: April 5, 2021

Oracle America sued Google for patent and copyright infringement based on Google’s use of Oracle’s Java API in its Android software in the Northern District of California. The case first focused on whether the Java APIs in question were protected under copyright, which in May 2014, the Federal Circuit held that they were. The case was heard again in the Northern District of California, but this time on Google’s claims that its use was fair use. In May 2016, a jury found in favor of Google, holding that its use of Oracle’s Java API was fair use. Oracle filed a motion to challenge the verdict, which the district court denied in June 2016.

Oracle appealed to the Federal Circuit on the adverse fair use ruling and Google cross-appealed to preserve the claim that the Java APIs were not copyrightable. In March 2018, the Federal Circuit reversed the district court’s decision and remanded for a trial on damages. The Court weighed the first and fourth factor heavily in favor of Oracle, the second factor in favor of Google, and weighed the third factor as neutral. After balancing all factors, the Court found that Google’s use was not a fair use as a matter of law. The Court also denied Google’s cross appeal regarding the copyrightability of the Java APIs at issue, holding that the Court’s previous opinion in 2014 resolved that question.

Google filed a cert petition with the Supreme Court in January 2019, asking the Court to review both Federal Circuit decisions. The Supreme Court called for the views of the Solicitor General April 29, 2019. The Solicitor General recommended the Court deny the petition, saying the Federal Circuit correctly held both that neither Section 102(b) nor the merger doctrine forecloses copyright protection and no reasonable jury could find fair use on this record and that further review was not warranted.

On November 15, 2019, the Supreme Court granted Google’s cert petition. The questions presented were:

1. Whether copyright protection extends to a software interface.

2. Whether, as the jury found, petitioner’s use of a software interface in the context of creating a new computer program constitutes fair use.

On April 5, 2021, the Supreme Court issued its decision, holding that Google’s unauthorized use of Oracle’s declaring code qualifies as fair use. In its 6–2 decision (delivered by Justice Breyer, with Justices Thomas & Alito dissenting), the Supreme Court ruled that “for argument’s sake,” Oracle’s underlying code is copyrightable but that all four fair use factors weigh in favor of Google. The opinion states that “Google’s copying of the Java SE API, which included only those lines of code that were needed to allow programmers to put their accrued talents to work in a new and transformative program, was a fair use of that material as a matter of law.” While the Court found that Google’s copying qualified as fair use, it rejected Google’s argument that fair use defenses must be resolved by a jury, explaining that fair use is ultimately a legal question and “the right of trial by jury does not include the right to have a jury resolve a fair use defense.” Justice Thomas’ dissenting opinion is critical of the majority’s fair use analysis, arguing that it mistakenly attempts to distinguish between different types of computer code and that it conflates transformative use with derivative use. 


Procedural History

Status: Decided by the Supreme Court

Supreme Court (2021)

Opinion (April 5, 2021)

Oracle Brief (February 12, 2020)

Google Opening Brief (January 6, 2020)

Amicus Briefs

In support of Respondent
In support of Neither Party
In support of Petitioner

Cert Petition (2019)

Solicitor General Brief (Sept. 27, 2019)

Google Reply Brief (April 10, 2019)

Oracle Response in Opposition (Mar. 27, 2019)

Google Petition for Writ of Certiorari (Feb. 25, 2019)

Amicus Briefs

In support of Petitioner

Federal Circuit (2018)

Google’s petition for rehearing en banc (May 29, 2018)

Federal Circuit Decision (March 27, 2018)

Amicus Briefs

In Support of Oracle

In Support of Google

Federal Circuit (2014)

Federal Circuit Decision (May 9, 2014)

Remand

NDCA Order Denying Rule 50 Motions (June 8, 2016)

NDCA Jury Verdict (May 26, 2016)

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Dr. Seuss Enterprises v. ComicMix

Post publish date: November 1, 2020

Dr. Seuss Enterprises sued ComicMix for copyright and trademark infringement after ComicMix sought to publish a “mashup” of the famous Seuss work “Oh the Places You’ll Go” with characters and elements from the Star Trek franchise. ComicMix ran a Kickstarter campaign to help fund the printing and commercial distribution of their work.

In response to the complaint, ComixMix asserted that its copying of Dr. Seuss’s work was protected by fair use. In a March 2019 order on cross-motions for summary judgment, the Southern District Court of California agreed. Dr. Seuss Enterprises has appealed to the Ninth Circuit.

Ninth Circuit

Amicus briefs in support of Dr. Seuss Enterprises (August 12, 2019)

Dr. Seuss Enterprises opening brief (August 5, 2019)

Southern District Court of California

Order on cross-motions for summary judgment (March 12, 2019)

Order granting in part and denying in part motion to dismiss (June 9, 2017)

Complaint (Nov. 10, 2016)

Lang Van v. VNG

Post publish date:

Lang Van, a leading producer and distributor of Vietnamese music and entertainment, filed a copyright infringement suit against VNG, a company based in Vietnam that operates a music streaming website. Lang Van alleges that VNG’s Zing music website and app, which VNG makes available in the U.S., offers thousands of Lang Van’s copyrighted works without authorization and that Lang Van receives no compensation for VNG’s use.

Despite providing its app and website to millions of users in the U.S., the District Court for the Central District of California found that VNG “didn’t purposefully direct its activities toward California” and granted defendant’s motion to dismiss for lack of personal jurisdiction. Lang Van appealed to the Ninth Circuit, arguing that the district court erred by determining that Lang Van had not established a prima facie case under the first, second, and third prongs of the specific jurisdiction test and that the court did not properly apply the Ninth Circuit’s test for purposeful direction because it did not consider all of the relevant evidence submitted by Lang Van.


Procedural History

Central District of California (Nov. 21, 2019)

Status: On appeal to the Ninth Circuit.

Court: Ninth Circuit

Amicus briefs

UMG Recordings v. Kurbanov

Post publish date: June 1, 2020

Record labels filed a copyright infringement suit against the operator of two popular “stream ripping” sites based out of Russia. The labels allege the sites “quickly and seamlessly capture the audio tracks contained in videos streamed from YouTube” that users access, “convert those audio tracks to an MP3”, “copy and store the audio files”, “and then distribute copies of those files from their servers to users in the United States”–all without authorization from the copyright owners (and in violation of YouTube’s own terms of service). Labels allege this conduct amounts to direct and indirect infringement.

A district court granted defendant’s motion to dismiss based on lack of personal jurisdiction, holding that the sites “are semi-interactive, the interactions with the users are non-commercial, and there were no other acts by the Defendant that would demonstrate purposeful targeting” of the forum specifically or the United States generally.

The record labels appealed that decision to the Fourth Circuit, arguing that the district court erred because the sites had a large U.S. customer base that it purposefully targeted and profited from, and it had multiple and sustained contacts with both the forum and the U.S.

In June 2020, the Fourth Circuit reversed and remanded the district court’s dismissal for lack of personal jurisdiction. The opinion finds that “Kurbanov’s contacts sufficiently show he purposefully availed himself of the privilege of conducting business in Virginia” and that “Appellants’ copyright infringement claims arise out of Kurbanov’s activities directed at Virginia.”


Procedural History

Status: Reversed and remanded. (June 2020)

Fourth Circuit

Opinion (June 26, 2020)

Answering Brief of Defendant-Appellee Kurbanov (Apr. 12, 2019)

MPAA Amicus Brief in support of Plaintiff-Appellants (Mar. 19, 2019)

Association of American Publishers Amicus Brief in support of Plaintiff-Appellants (Mar. 19, 2019)

Copyright Alliance and IACC Amicus Brief in support of Plaintiff-Appellants (Mar. 19, 2019)

Opening Brief of Plaintiff-Appellants, UMG Recordings, et al (Mar. 12, 2019)

Eastern District Court of Virginia

ED VA order on motion to dismiss (Jan. 22, 2019)

UMG Recordings, et al, v. Kurbanov complaint (Aug. 3, 2018)

Georgia v. Public.Resource.Org, Inc.

Post publish date: April 1, 2020

The State of Georgia contracts with a private publisher to edit and publish its official state code (OCGA), which includes not only all the laws enacted by the state legislature, but also judicial decision summaries, editor’s notes, research references, notes on law review articles, summaries of the opinions of the Attorney General of Georgia, indexes, and title, chapter, article, part, and subpart captions. These are selected and coordinated by the publisher, subject to oversight by Georgia. Georgia holds a copyright in the OCGA and grants the publisher the exclusive right to publish and sell print and digital copies of the OCGA. The publisher is also required to make the unannotated statutory provisions freely available, provide a number of free copies of the OCGA to a number of state and local institutions, such as libraries, and cap the total costs of the OCGA.

Public Resource, a non-profit organization, purchased a copy of the OCGA, digitized it, and uploaded it to its own website, making it freely available. Georgia filed a suit alleging direct and indirect copyright infringement. On cross-motions for summary judgment, the Northern District Court of Georgia disagreed with defendant’s argument that the OCGA was not copyrightable as an “edict of law” and held that the copying was not permitted under the fair use doctrine.

On appeal, the Eleventh Circuit reversed, holding that the OCGA is not copyrightable. It concluded that the official annotations represent a direct exercise of sovereign power, and are therefore attributable to the constructive authorship of the People, making them intrinsically public domain material. Georgia appealed to the Supreme Court, which has agreed to review the case. The question presented is “Whether the government edicts doctrine extends to—and thus renders copyrightable—works that lack the force of law, such as the annotations in the Official Code of Georgia Annotated.”

In April 2020, the Supreme Court held that the state of Georgia is not entitled to copyright protection for its official annotated code. In a 5-4 decision delivered by Chief Justice Roberts (joined by Sotomayor, Kagan, Gorsuch, & Kavanaugh), the Court upheld the Eleventh Circuit’s finding that because Georgia’s annotations are authored by an arm of the legislature in the course of its legislative duties, the government edicts doctrine puts them outside the reach of copyright protection. Justice Thomas (joined by Alito and Breyer) and Justice Ginsburg (joined by Breyer) filed dissenting opinions.

Supreme Court

Opinion (April 27, 2020)

Merits

Brief of Petitioners (August 23, 2019)

Amicus briefs in support of Petitioners

Cert Stage

Reply of Petitioners (May 24, 2019)

Brief of Respondent (May 10, 2019)

Amicus briefs supporting Respondent

Petition for Cert (March 1, 2019)

Amicus briefs supporting Petitioner

Proceedings Below

Code Revision Commission and the State of Georgia v. Public.Resource.Org, Eleventh Circuit decision (October 19, 2018)

Code Revision Commission and the State of Georgia v. Public.Resource.Org, Order on Defendant’s Motion for Summary Judgment and Plaintiff’s Motion for Partial Summary Judgment, Northern District of Georgia (March 23, 2017)

Allen v. Cooper

Post publish date:

In Allen v. Cooper, the Fourth Circuit reversed the Eastern District of North Carolina’s holding that photographer and videographer Frederick Allen was entitled to sue the State of North Carolina for allegedly infringing his copyrights.

Allen, and his production company Nautilus Productions, have been the exclusive photographers of the shipwreck of Queen Anne’s Revenge since 1998. In 2013, Allen found out that the State had allegedly been using his videos online without his consent. While the parties entered into a settlement agreement, requiring the State to compensate Allen for the use of the copyrighted material prior to the settlement date, Allen found out that the State had continued to use Allen’s copyrighted works after the settlement agreement without compensation both online and in print. In addition, the State government passed a law making all photographs and video material of shipwrecks in custody of North Carolina public record and available for use without limitations.

As a result, Allen filed a suit for declaratory judgment, arguing that the statute violates the Takings and Due Process clauses of the Constitution. The State argued that the Copyright Remedy Clarification Act did not effectively abrogate state sovereign immunity, and that individuals were still precluded from suing states for copyright infringement. After the lower court found for Allen, the State appealed to the US Court of Appeals for the Fourth Circuit. The U.S. Court of Appeals for the Fourth Circuit joined other circuits in holding that the Copyright Remedy Clarification Act does not validly abrogate Eleventh Amendment immunity.

In March 2020, in a 9-0 opinion, the Supreme Court held that Congress lacked authority to abrogate the states’ sovereign immunity from copyright infringement suits in the Copyright Remedy Clarification Act of 1990.


Supreme Court

Opinion (March 23, 2020)

Petition for certiorari

Allen petition for writ of certiorari (Supreme Court Jan. 4, 2019)

Allen application to extend time for filing cert petition (4th Cir. Oct. 18, 2018)

Amicus briefs

• Ralph Oman Amicus Brief supporting Allen (Supreme Court Feb. 7, 2019)

• RIAA Amicus Brief supporting Allen (Supreme Court Feb. 7, 2019)

• David Nimmer, et al, Amicus Brief supporting Allen (Supreme Court Feb. 7, 2019)

Merits stage

Cooper (North Carolina) Brief (Supreme Court Sept. 20, 2019)

Allen Brief (Supreme Court Aug. 6, 2019)

Amicus briefs

• Professor Simone Rose in support of Cooper (Sept. 27, 2019)

• West Virginia and 30 other states in support of Cooper (Sept. 27, 2019)

• ALA, ACRL, ARL, SAA, and SPN in support of Cooper (Sept. 27, 2019)

• Association of Public and Land-Grant Universities and Association of American Universities in support of Cooper (Sept. 27, 2019)

• Law Professors in support of Cooper (Sept. 27, 2019)

• Public Law Scholars in support of Allen (August 13, 2019)

• Ralph Oman in support of Allen (August 13, 2019)

• Constitutional Accountability Center in support of Allen (August 13, 2019)

• SIIA in support of Allen (August 13, 2019)

• ASMP, NPPA, NANPA, GAG, APA, and DMLA in support of Allen (August 13, 2019)

• RIAA, A2IM, and NMPA in support of Allen (August 13, 2019)

• Dow Jones & Co. in support of Allen (August 13, 2019)

• Law Professors in support of Allen (August 13, 2019)

• Oracle America in support of Allen (August 13, 2019)

• Washington Legal Foundation in support of Allen (August 13, 2019)

• Intellectual Property Law Association of Chicago in support of Allen (August 13, 2019)

• Association of the Bar of the City of New York in support of Allen (August 13, 2019)

• Copyright Alliance in support of Allen (August 13, 2019)

Fourth Circuit Court of Appeals

Opinion (July 10, 2018)

Allen Reply Brief (4th Cir. Dec. 18, 2017)

North Carolina Opening Brief (4th Cir. Aug. 21, 2017)

Amicus Briefs

• Copyright Alliance Amicus Brief supporting Allen (4th Cir. Oct. 20, 2017)

• Ralph Oman Amicus Brief supporting Allen (4th Cir. Oct. 20, 2017)

Eastern District Court of North Carolina

Order on motion to dismiss (Mar. 23, 2017)

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