Why Courts Should Dismiss Challenges to Copyright Registrations Issued in the Interregnum
Interregnum: A disruption of the regular order, esp. of government
The U.S. Copyright Office is sometimes described as a “hybrid” entity. As a department of the Library of Congress it sits in the legislative branch of government and its head, the Register of Copyrights, is appointed by the Librarian of Congress. Yet the Librarian is appointed by the head of the executive branch—the President—though confirmed by the Senate; and the Copyright Office is understood to exercise some “executive” powers (such as rate setting, examination and rejection of applications, and substantive rule making). Recently, these varying characteristics have come to bear on the Copyright Office as one of several recent developments exploring the breadth of Presidential authority.
On May 8, President Trump fired Carla Hayden, the Librarian of Congress, and appointed Todd Blanche as Acting Librarian. However, Robert Newlen, the Acting Librarian under the Library’s regulations declined to recognize Mr. Blanche’s appointment, explaining that the matter would be considered by Congress. On May 10, President Trump announced his firing of Shira Perlmutter as Register of Copyrights; shortly thereafter Blanche “ratified” that purported firing and designated Paul Perkins as acting Register of Copyrights.
On May 22, Perlmutter sued President Trump, Blanche and others, claiming that neither her purported firing by the President nor the “ratified” firing by Blanche was lawful; that only a Presidentially appointed and Senate confirmed Librarian of Congress could dismiss her; and that she remained the Register of Copyrights. After briefing by both sides—the defendants contending that the firings were lawful exercises of the President’s authority under both the Federal Vacancies Reform Act applying to executive entities and the Constitution—plaintiff’s motion for preliminary relief is pending before the DC District Court.
At this time, there are competing claims as to just who is the Register of Copyrights, and no resolution of that dispute by Congress or the courts. This issue may endure for some time given the preliminary nature of the relief sought, the likelihood of interlocutory and later appeals, and the larger context of ongoing debates over the breadth of Presidential executive power in which this is but one episode.
This uneasy state of affairs has caused considerable concern in the copyright-reliant industries over its impact on the Copyright Office’s regular order of business. A prominent concern is whether copyright registrations issued during this period of uncertainty will be subject to meaningful (or dilatory) challenges by defendants and/or rejected by the courts as not certified by the proper official. [1]
The reason for these concerns lies in Sections 410(a) and 411(a) of the Copyright Act. The former provides that registrations are to be made by “the Register” of Copyrights; the latter states that with limited exceptions “no civil action for infringement of the copyright in any United States work shall be instituted until registration of the copyright claim has been made….” Additionally, the Supreme Court has made it clear that “registration” in this Section means an issued registration, not merely the filing of an application, and—although there is a limited exception for an applicant’s “innocent” errors—it is not uncommon for dismissals to be sought, innocence contested, and/or complaints dismissed on the basis of allegedly defective though final registrations. So, if defendants were to challenge interregnum registrations as not certified by the proper official, a copyright owner’s need for prompt temporary relief or final resolution of an infringement claim may be substantially hindered or delayed, if not barred completely.
This purpose of this post is to urge that trial courts dismiss or decline to hear such challenges under the authority of the Supreme Court’s 2010 decision in Reed Elsevier v Muchnick.
The Reed Elsevier Decision
Before Reed Elsevier, copyright registration was widely and repeatedly characterized as a jurisdictional rule, one going to the very power of a court to hear a controversy and not subject to waiver or equitable excuse from compliance. In this case, the Supreme Court ruled that copyright registration was a “claims processing rule” only, and did not go to subject matter jurisdiction; this means that a trial court may excuse compliance with the registration-before-suit requirement of Section 411(a) in appropriate cases.
Although Reed Elsevier arose in unusual circumstances—the presence of both registered and unregistered works in a “universal” class settlement of infringement claims presented for court approval—that does not limitits holding or effect; to the contrary, it is one of many cases in the Court’s overt, explicit and adamant campaign to correct lower and appellate courts and—as admitted by the Court, its own earlier—“mischaracteriz[ation] [of] claims-processing rules or elements of a cause of action as jurisdictional. . .” Since the ruling, Reed Elsevier has been cited many times in copyright and other contexts for the point that Section 411(a) is not jurisdictional.
Nine years after Reed Elsevier the Supreme Court addressed copyright registration in Fourth Estate Public Benefit Corp. v. Wall Street.com. There the Court held that “registration” for the purpose of Section 411(a) occurs upon issuance of a certificate by the Copyright Office, not (as some cases had held) upon application. Although some will likely argue that this precludes excuse from compliance with Section 411(a), that is not the case. The Fourth Estate court looked at only the meaning of “registration” within the context of Section 411(a); it did not consider the application of equitable principles to avoid the claims processing rule of that section. Indeed, in VHT, Inc. v. Zillow Group Inc.—an appellate decision noted below that explicitly excused compliance with Section 411(a)—the Ninth Circuit observed that: “[a]lthough Fourth Estate overruled Ninth Circuit law [holding that registration was effective upon application] the Court did not address or implicate the Court’s earlier holding in Reed Elsevier that registration under Section 411(a) is a non-jurisdictional requirement.”
Characteristics of Claim Processing Rules
The principal difference between jurisdictional conditions and claims processing rules is that courts cannot create equitable excuses from or exceptions to jurisdictional requirements but may do so with respect to claims processing rules. This principle has been followed in many situations to adjust claims processing rules to the circumstances and equities of the case, such as with respect to statutes of limitations and others. As the Supreme Court has explicitly characterized Section 411(a) as akin to an “administrative exhaustion” requirement, it is notable that such exhaustion rules have also been categorized as claims processing rules subject to equitable consideration. And the Ninth Circuit directly spoke to the issue with respect to Section 411(a) of the CopyrightAct in VHT, Inc. v. Zillow Group, Inc. when it excused compliance with Section 411(a) under Reed Elsevier by a plaintiff that had filed its infringement action on the basis of an application before Fourth Estate ruled out that practice. As with Reed Elsevier, Zillow involved unusual circumstances, but for our purposes, adaptability of equitable considerations to varying circumstances is an essential feature of doctrine, not a basis for factual distinction.
Application of Reed Elsevier to Interregnum Registrations or Their Absence
The uncertainty regarding the validity of copyright registrations issued during this interregnum—to the extent based on an alleged absence of the proper official’s authority—is fertile ground for consideration of equitable excuse from Section 411(a). (There may be a closer question in the case of domestic plaintiffs who did not file an application or registration before suit; however, even there such parties should be given an opportunity to explain their deferral and its connection to the prevailing uncertainty.)
That is because the problem now faced by copyright owners is a particularly harsh and disabling one; not only is the owner susceptible to a motion to dismiss, but provisions of the Copyright Act that are deliberately designed to diminish the burden of registration will simply not be available. For example, a copyright owner who delays registration or is non-suited for its absence, may then register and seek injunctive relief, damages and profits even for infringements occurring before registration; and an applicant in a hurry to file a suit may obtain expedited processing. But additional, new, or speedy registrations are not meaningful to a copyright owner who is unable to obtain any registration free of likely challenges to its legitimacy as long as the current uncertainty continues. There is simply no amount of effort or diligence that a copyright owner can exercise that will not be futile.
Public Interest
In Reed Elsevier, the Government (as an amicus) argued that the registration requirement should “ordinarily”—but not always—be considered a “mandatory” though non-jurisdictional condition. Although the Supreme Court explicitly declined to address that question, it is worth noting that the Government asserted in its brief that “non-jurisdictional statutory threshold requirements are applied with varying degrees of vigorousness” and that a particular consideration is “the extent to which [non-jurisdictional] requirements protect institutional or public interests….”
It is certainly the case that Section 411(a) has public interest objectives—namely, to provide a public record of copyright claims, to allow expert review and pre-judicial screening of the claims, and to enrich the collections of the Library of Congress with the deposits accompanying applications for registration. But in the case of interregnum registrations, each public interest element will have been fulfilled: a public record of a claim to copyright in a specified work will have been made; the Examining Division of the Copyright Office will have exercised its diligence and expertise and concluded in favor of registrability; and the deposit copy accompanying the application will have been immediately available or accessed to the collections of the Library of Congress.
Conclusion
Copyright in any expressive work is not dependent on registration but is acquired automatically upon the creation of a work. Although registration provides the possibility of certain advantages to copyright owners it is not a condition of copyright’s existence, subsistence, duration, private enjoyment, or (unless required by contract) commercial exploitation. Furthermore, Section 411(a) is riddled with exceptions demonstrating at least that it is not a fundamental precept.
The private rights, livelihoods, investments, incentives, and public interest enabled and furthered by copyright law must be safeguarded. The insulation of interregnum registrations from challenges based on lack of authority attributable to the current political dispute is one approach that can and should serve that purpose.
This does not mean that the Copyright Office’s current state of affairs should be taken lightly. There are other significant actions and roles played by the Office under the Register’s statutory leadership that may be hindered or deferred (a contention made by Perlmutter though questioned by the Administration). Moreover, an excuse from Section 411(a) is not an entitlement but is subject to a trial judge’s determination, which may be affected by other factors not discussed here. Finally, the litigation that follows a waiver of Section 411(a) may be affected by other benefits of registration not addressed here that warrant further consideration, such as of availability of statutory damages and prima facie validity. But it bears recalling that just as with Section 411(a), every condition of registration as a requirement of these benefits—examination, public record, and deposit—will have been met.
Admittedly, the approach advocated here avoids and does not resolve the status of interregnum registrations, an objective that is ultimately the best solution for all concerned. But copyright enforcement, and hence copyright infringement litigation, is an essential component of creators’ and producers’ rights. It is thus in the interest of the system itself that collateral matters and formal barriers be avoided in the interim.
[1] On May 12, the Office paused issuing registrations; twelve business days later the Office resumed issuing registrations under its statutory seal, though without the customary signature of the Register. Some have expressed substantive concern over the lack of signature. This is probably overstated as the Copyright Act requires only the Office’s seal; yet application of the seal must be authorized, so the issue remains.
About the Author: Jon Baumgarten, who is presently a member of the Copyright Alliance Emeritus Council, served as General Counsel of the US Copyright Office from 1976 to 1979 when he returned to private practice, retiring from the Proskauer Rose law firm in 2011. With his colleagues, he represented the plaintiffs in the Reed Elsevier case highlighted in this note. Jonbaumgarten@icloud.com.