Ladd v. Law & Technology Press

• Decision Date: 07 June 1985
• Docket Number: No. 84-5847,84-5847
• Citation: 762 F.2d 809
• Parties: , 1985 Copr.L.Dec. P 25,802, 11 Media L. Rep. 2439 David L. LADD, Register of Copyrights, Plaintiff-Counterdefendant-Appellee, v. LAW & TECHNOLOGY PRESS, Defendant-Counterclaimant-Appellant.
• Court: U.S. Court of Appeals — Ninth Circuit

Page 809

762 F.2d 809

226 U.S.P.Q. 774, 1985 Copr.L.Dec. P 25,802,

11 Media L. Rep. 2439

David L. LADD, Register of Copyrights Plaintiff-Counterdefendant-Appellee, v. LAW & TECHNOLOGY PRESS, Defendant-Counterclaimant-Appellant.

No. 84-5847.

United States Court of Appeals Ninth Circuit.

Argued and Submitted Feb. 6, 1985.

Decided June 7, 1985.

John Fargo, Washington, D.C., for Ladd.

Michael D. Scott, Manhattan Beach, Cal., for Law & Technology Press.

On appeal from the United States District Court for the Central District of California.

Before BOOCHEVER and BEEZER, Circuit Judges, and CARROLL, ^* District Judge.

BOOCHEVER, Circuit Judge:

Law & Technology Press (Press) refused to deposit two copies of its publication with the Library of Congress as is required by the copyright law. Press claims that the deposit requirement is an unconstitutional taking under the fifth amendment and an unconstitutional burden on the press under the first amendment. Press also contends that the trial court abused its discretion by granting summary judgment for the government without permitting Press discovery. We conclude that there were no genuine issues of material fact, nor were there additional facts to be elicited which could have altered the outcome of the case. The grant of summary judgment without discovery was therefore proper. The deposit requirement is not an unconstitutional taking because it validly conditions the enjoyment of copyright, although failure to make the deposit does not subject the copyright to forfeiture. Moreover, the deposit requirement as a condition for the voluntarily sought benefit of copyright does not burden the expression or dissemination of ideas, and does not implicate first amendment rights. We therefore affirm.

Press is a California corporation which owns the copyright in the periodical The Scott Report. Press published nine issues of The Scott Report, each with copyright notice, in 1982. Under 17 U.S.C. Sec. 407 (1982), Press was required to deposit two copies of each issue with the Copyright Office for the Library of Congress, ¹ but did not do so. Pursuant to section 407, appellee Ladd, the Register of Copyrights, sent a demand notice to Press seeking deposit of the copyrighted issues of The Scott Report. Press refused to comply on the ground that section 407 was unconstitutional, and suggested that if the Library wanted The Scott Report, it become a paid subscriber. Ladd subsequently initiated this suit to recover the statutory penalties for failure to deposit: a $250 fine for each issue not deposited, and the retail price of the two copies of each issue. Press answered, admitting its failure to deposit, asserting the statute's unconstitutionality as a defense, contending that the government impermissibly had selected it for prosecution because of its vocal opposition to the law, and counterclaiming for a declaratory judgment of unconstitutionality and an injunction forbidding the enforcement of the law against Press.

Ladd filed a motion for summary judgment three and one-half weeks after Press answered the complaint. In its opposition to the motion, Press asked the court for a continuance during which Press could conduct discovery on factual issues raised in the motion. Without permitting discovery, the district court granted summary judgment for Ladd on all claims and counterclaims. On appeal, Press has not raised the selective prosecution issue.

I. LACK OF DISCOVERY

We review the district court's decisions on discovery before summary judgment for abuse of discretion. See Portland Retail Druggists Association v. Kaiser Foundation Health Plan, 662 F.2d 641, 646 (9th Cir.1981); Program Engineering, Inc. v. Triangle Publications, Inc., 634 F.2d 1188, 1193 (9th Cir.1980). The party opposing summary judgment must have an opportunity to respond to the motion, which includes time for discovery of facts essential to its opposition. Portland Retail, 662 F.2d at 645. However, appellant had the burden of showing the trial court what facts it hoped to discover which would raise issues of material fact. Taylor v. Sentry Life Insurance Co., 729 F.2d 652, 656 (9th Cir.1984) (per curiam).

Press failed to meet this burden. In its opposition to summary judgment, Press did not identify any specific facts that it hoped to discover, merely stating that it wished to take discovery on "the issues raised in these papers." Of the nineteen items listed in Press' Statement of Genuine Issues of Material Fact, nine are issues of law rather than fact. Seven relate to just compensation for the deposit of the copyrighted works. Compensation was not a material issue due to the district court's decision that there was no taking as a matter of law. The remaining three items relate to Press' claim of selective prosecution. Because Press has abandoned this issue on appeal, lack of discovery on the issue is irrelevant at this point.

II. SUMMARY JUDGMENT

Summary judgment is proper if there is no genuine issue of material fact and the moving party should prevail as a matter of law. Fed.R.Civ.P. 56(c); Gould v. Mutual Life Insurance Co., 735 F.2d 1165, 1166 (9th Cir.1984). Review of a summary judgment is de novo. Taylor, 729 F.2d at 654. As Press is unable to point to any genuine issue of triable fact, we proceed to review of the district court's conclusions of law.

A. Is the Deposit Requirement Necessary and Proper?

All versions of the Copyright Act have been enacted pursuant to the power granted Congress by article I, section 8, clause 8 of the Constitution: "The Congress shall have Power ... To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries." In carrying out the Copyright Clause, Congress can make "all Laws which shall be necessary and proper for carrying into Execution the foregoing Powers." U.S. Const. art. I, Sec. 8, cl. 18.

Press argues that the library deposit requirement is not necessary and proper to carry out the Copyright Clause and is invalid. Press contends that the Copyright Clause gives Congress the power to advance the arts and sciences only by granting copyrights and patents. However, Press cites no authority for this proposition. ² While no case has directly addressed whether the library deposit is necessary and proper to the Copyright Clause, there is abundant authority that the primary purpose of the clause is to promote the arts and sciences for the public good, not to grant an economic benefit to authors and inventors. E.g., Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417, 104 S.Ct. 774, 782, 78 L.Ed.2d 574 (1984); Zacchini v. Scripps-Howard Broadcasting Co., 433 U.S. 562, 576-77, 97 S.Ct. 2849, 2857-58, 53 L.Ed.2d 965 (1977); Schnapper v. Foley, 667 F.2d 102, 111 (D.C.Cir.1981) (quoting 1 M. Nimmer, Nimmer on Copyright Sec. 1.03[B] (1981), to the effect that the first phrase of the Copyright Clause expands rather than limits congressional authority in the area), cert. denied, 455 U.S. 948, 102 S.Ct. 1448, 71 L.Ed.2d 661 (1982); Berlin v. E.C. Publications, Inc., 329 F.2d 541, 543-44 (2d Cir.), cert. denied, 379 U.S. 822, 85 S.Ct. 46, 13 L.Ed.2d 33 (1964). Moreover, long-established principles of constitutional construction make clear that the lack of express constitutional authority for the deposit requirement does not preclude its validity and that the necessary and proper clause should be liberally construed. See The Legal Tender Cases, 79 U.S. (12 Wall.) 457, 533-39, 20 L.Ed. 287 (1872) (in construing range of "necessary and proper" clause, look to purposes of enumerated powers, not solely to express words of powers); McCulloch v. Maryland, 17 U.S. (4 Wheat.) 316, 404-21, 4 L.Ed. 579 (1819) (mandating an expansive construction of the "necessary and proper" clause as essential to the functioning of a national government). Thus, a provision of the Copyright Act which sustains a national library for the public use is necessary and proper. We further note that the Supreme Court, albeit in passing, has recognized without questioning its constitutionality that the deposit requirement's purpose is to enforce contributions of desirable books to the Library of Congress. See Washingtonian Publishing Co. v. Pearson, 306 U.S. 30, 41, 59 S.Ct. 397, 402, 83 L.Ed. 470 (1939) (delay in copyright deposit and registration does not invalidate copyright); see also National Conference of Bar Examiners v. Multistate Legal Studies, Inc., 692 F.2d 478, 485-86 (7th Cir.1982) (copyright regulation allowing deposit of excised portion of testing materials valid), cert. denied, --- U.S. ----, 104 S.Ct. 69, 78 L.Ed.2d 83 (1983).

B. Fifth Amendment Issues

The first copyright act, Act of May 31, 1790, ch. 15, Sec. 3, 1 Stat. 124, 125, contained a deposit clause which the Supreme Court held a constitutional condition of copyright. Wheaton v. Peters, 33 U.S. (8 Pet.) 591, 663-66, 8 L.Ed. 1055 (1834) (Congress created copyright and may condition those rights upon deposit). However, that deposit was with the copyright office for administrative purposes relating to the grant of copyright. In 1846, Congress changed the deposit requirement, directing that one copy of each copyrighted work be deposited in the Smithsonian Institution and the Library of Congress. ³ Act of Aug. 10, 1846, ch. 178, Sec. 10, 9 Stat. 102, 106. As the Supreme Court stated in Washingtonian, the purpose of this deposit requirement, of which section 407 is the current version, is not proof or preservation of copyright but the acquisition of books for the Library. Washingtonian, 306 U.S. at 41, 59 S.Ct. at 402. Until 1976, failure to deposit with the Library of Congress resulted in a forfeiture of copyright. Congress changed the deposit enforcement provisions because

[a] realistic fine, coupled with the increased inducements for voluntary registration and deposit under other sections of the bill,...