Valancourt Books, LLC v. Perlmutter

• Decision Date: 23 July 2021
• Docket Number: Civil Action No. 18-1922 (ABJ)
• Citation: 554 F.Supp.3d 26
• Parties: VALANCOURT BOOKS, LLC, Plaintiff, v. Shira PERLMUTTER, in her official capacity as the Register of Copyrights of the U.S. Copyright Office, et al., Defendants.
• Court: U.S. District Court — District of Columbia

554 F.Supp.3d 26

VALANCOURT BOOKS, LLC, Plaintiff,

v.Shira PERLMUTTER, in her official capacity as the Register of Copyrights of the U.S. Copyright Office, et al., Defendants.

Civil Action No. 18-1922 (ABJ)

United States District Court, District of Columbia.

Signed July 23, 2021

Jeffrey H. Redfern, Renee Flaherty, Robert J. McNamara, Pro Hac Vice, Institute for Justice, Arlington, VA, for Plaintiff.

Daniel Riess, U.S. Department of Justice, Civil Division, Washington, DC, for Defendants Merrick B. Garland, Shira Perlmutter.

MEMORANDUM OPINION

AMY BERMAN JACKSON, United States District Judge

Plaintiff Valancourt Books, LLC ("Valancourt") is an independent press based in Richmond, Virginia, and it brought this action on August 16, 2018, against defendants Shira Perlmutter, in her official capacity as the Register of Copyrights of the United States Copyright Office ("Copyright Office"), and Merrick Garland, in his capacity as Attorney General of the United States.¹ Compl. [Dkt. # 1] ¶¶ 9–10. Plaintiff alleges that the requirement in the Copyright Act that copies of every new work eligible for copyright must be deposited with the Copyright Office, 17 U.S.C. § 407, is an unconstitutional taking of private property that violates the Fifth Amendment and a burden on freedom of speech that violates the First Amendment. Id. ¶¶ 1–4. Plaintiff seeks a declaration that the deposit requirement is unconstitutional and an injunction blocking enforcement of the Copyright Office's mandatory book deposit requirement ("deposit requirement"). Id. ¶ 5.

On July 3, 2019, defendants moved for summary judgment on all counts. Defs.’ Mot. for Summ. J. [Dkt. # 17] ("Defs.’ Mot."); Mem. in Support of Mot. for Summ. J. [Dkt. # 17-1] ("Defs.’ Mem."). On August 2, 2019, plaintiff opposed the motion and cross-moved for summary judgment. Pl.’s Combined Cross Mot. for Summ. J. and Opp. to Defs.’ Mot. [Dkt. # 18] ("Pl.’s Cross Mot."); Pl.’s Mem in Supp. [Dkt. # 18-1] ("Pl.’s Mem."). Upon consideration of the entire record² and for the reasons stated below, the Court will grant defendants’ motion and deny plaintiff's cross motion.

BACKGROUND

I. History of the Copyright Act and its requirements

The Copyright Clause of the Constitution provides that "Congress shall have Power ... To promote the Progress of Science ... by securing [to Authors] for limited Times ... the exclusive Right to their ... Writings." U.S. Const., art. I, § 8, cl. 8. Congress first exercised this authority in 1790 when it established federal copyright protections for written work. See Copyright Act of 1790, 1 Stat. 124, 125.

Among the conditions imposed by Congress in connection with copyright protection, there is a requirement to provide the Library of Congress with copies of most newly published material. The deposit requirement has existed in some form from the first Congress to the present day, except for a period of six years in the mid-19th century.³ Copyright protection was initially conditional upon the deposit of a printed copy of a work, and in 1834, the Supreme Court upheld this requirement as constitutional. See Wheaton v. Peters , 33 U.S. 591, 662–64, 8 Pet. 591, 8 L.Ed. 1055 (1834).

In 1865, Congress empowered the Librarian of Congress to demand copies of works that had not been deposited within one month of their publication, and failure to comply would result in forfeiture of the work's copyright. Act of Mar. 3, 1865, ch. 126, § 3, 13 Stat. 540, 540. Two years later, Congress added a $25 penalty for non-compliance. Act of Feb. 18, 1867, ch. 43, § 1, 14 Stat. 395, 395. By 1909, Congress amended the Copyright Act to require that two copies of a work be deposited with the Copyright Office, "after [a] copyright [was] secured by publication of the work with ... notice." Act of Mar. 4, 1909, § 12, 35 Stat. 1075, 1078. In the event the two copies were not deposited, the Register of Copyright could make a formal demand that the deposit be made within three months, or the copyright holder would risk both forfeiture of the copyright and the imposition of a $100 fine. Id. § 13.

In 1976, section 407 of the Copyright Act was enacted; it eliminated the copyright forfeiture penalty for failure to meet the deposit requirement, but increased the fine to $250 per work. Copyright Act of 1976, Pub. L. No. 94-553, § 407(a), (d)(1), 90 Stat. 2541, 2579, codified as amended at 17 U.S.C. § 407(a), (d)(1).

In 1988, Congress amended section 407 by the Berne Convention Implementation Act. Berne Convention Implementation Act of 1988, Pub. L. No. 100-568, § 8, 102 Stat. 2853, amending 17 U.S.C. § 101 et seq. It explained that this modification was made in order to bring U.S. copyright law in line with that of other countries; in amending section 407, Congress did not change the deposit requirement, but it eliminated copyright notice as a condition of copyright. See Joint SOF ¶ 42, citing the Berne Convention for the Protection of Literary and Artistic Works.⁴ The language of section 407 has not been subsequently amended.

Today, the Copyright Act provides that "the owner of copyright ... shall deposit [in the U.S. Copyright Office], within three months after the date of ... publication ... two complete copies of the best edition" of the published work. 17 U.S.C. § 407(a).⁵ If the owner of the copyright does not provide copies of the work to the Copyright Office, the Register of Copyrights may send a written demand, and if the copyright owner still has not complied after three months, a fine of $250 plus the price of the work at retail may be levied. 17 U.S.C. § 407(d). If there is a "willful" or "repeated" failure to comply with the deposit requirement, an additional fine of up to $2,500 may be imposed on the copyright owner. Id.

The Register of Copyrights is authorized to promulgate exceptions to the deposit requirement in certain situations:

The Register of Copyrights may be regulation [sic] exempt any categories of material from the deposit requirements of this section, or require deposit of only one copy or phonorecord with respect to any categories. Such regulations shall provide either for complete exemption from the deposit requirements of this section, or for alternative forms of deposit aimed at providing a satisfactory archival record of a work without imposing practical or financial hardships on the depositor, where the individual author is the owner of copyright in a pictorial, graphic, or sculptural work and (i) less than five copies of the work have been published, or (ii) the work has been published in a limited edition consisting of numbered copies, the monetary value of which would make the mandatory deposit of two copies of the best edition of the work burdensome, unfair, or unreasonable.

17 U.S.C. § 407(c).

II. Factual and procedural background⁶

Plaintiff Valancourt is an independent press based in Richmond, Virginia, that publishes "rare, neglected, and out-of-print fiction" and operates on a print "on-demand" model out of the owners’ home. Joint SOF ¶¶ 4, 12, 23.⁷ On June 11, 2018, plaintiff received a demand letter from the Copyright Acquisition Division of the Copyright Office requesting a copy of all 341 books in its catalog. Id. ¶ 71–73; Ex. A. to Joint SOF [Dkt. # 17-3] ("First Email from Copyright Office"); Ex. B. to Joint SOF [Dkt. # 17-3] ("First Demand Letter"); Ex. C to Joint SOF [Dkt. # 17-3] ("First Sample Notice for Mandatory Deposit of Copies"). Plaintiff replied on June 12, 2018, asking the Copyright Office to withdraw its request and offering to sell the books "at [Valancourt's] costs with no markup." Joint SOF ¶ 76; Ex. D to Joint SOF [Dkt. # 17-3] ("First Email from Valancourt").

At the time of this exchange in June 2018, Valancourt had already sent more than one hundred of the 341 requested titles to the Library of Congress in exchange for catalog control numbers. But it "determined that the cost of sending each new title ... was greater than the value the business obtained from the catalog control number, and [it] discontinued the practice." Joint SOF ¶ 62.

On August 9, 2018, the Copyright Office reiterated its position that plaintiff was required to deposit "any book contain[ing] ... ‘copyrightable’ material," Compl. ¶ 55, and it informed plaintiff that Valancourt's earlier practice of depositing works in exchange for a catalog control number did not meet the deposit requirement of section 407. Joint SOF ¶ 78; Ex. E to Joint SOF [Dkt. #17-3] ("Second Email from Copyright Office"). The Copyright Office's updated demand letter reduced the total number of requested books from 341 to 240; it explained a review of the titles in plaintiff's catalog revealed that a number of the books consisted entirely of reprinted material from the public domain. Id. ¶ 79; see also Ex. F to Joint SOF [Dkt. # 17-3] ("Updated Demand Letter"); Ex. G to Joint SOF [Dkt. # 17-3] ("Second Sample Notice for Mandatory Deposit of Copies").

On August 16, 2018, plaintiff filed the instant lawsuit. See Compl. In March of 2019, the Copyright Office notified plaintiff that it would be permitted to submit the 240 requested copies of its works electronically, rather than in print. Joint SOF ¶¶ 59–61 (noting that Valancourt's June 12, 2018 email "was not treated as a request for ‘special relief’ " pursuant to 37 C.F.R. § 202.19(e)(3) ); see also Pl.’s Suppl. SOF ¶¶ 7–8; First Jenkins Decl. ¶ 10; Defs.’ Resp. to Suppl. SOF ¶¶ 7–8.

In December 2020, the Court ordered the parties to supplement their submissions, "addressing whether defendants’ offer to accept electronic copies in lieu of physical copies of the requested works renders the dispute moot," and it asked the defendants to clarify their offer to accept electronic copies of plaintiff's works. Order of December 11, 2020 [Dkt. # 24] ("December 2020 Order") at 3; see also Pl.’s Suppl. Brief [Dkt. # 25] ("Pl.’s Suppl."); Suppl. Decl. of James Jenkins [Dkt. # 25-1] ("Suppl. Jenkins Decl."); and Defs.’ Suppl. Brief Addressing Mootness [Dkt. # 26] ("De...