Print PDF

Mandatory deposit of copyright works is unconstitutional

January 22, 2024
Cantor Colburn IP Newsletter February/March 2024

To the frustration and annoyance of many, the Copyright Act requires the owner of a copyright in a work to deposit two copies of the work with the U.S. Library of Congress within three months of its publication. Those parties should be encouraged by how the U.S. Court of Appeals for the District of Columbia ruled when it was recently asked for the first time to address the requirement’s constitutionality.

Publisher checks out of requirement

The question arose in a lawsuit filed by Valancourt Books, a small on-demand publisher of rare and out-of-print fiction. In 2018, it received a letter from the U.S. Copyright Office demanding physical copies of 341 of its published books for the Library of Congress, under threat of fines.

Valancourt responded that it couldn’t afford to deposit physical copies and that much of what it published was in the public domain. The Copyright Office narrowed the list of demanded works but continued to threaten a fine for noncompliance.

Valancourt sued the government. It contended that the deposit requirement in Section 407 of the Copyright Act amounted to an unconstitutional taking of its property under the Fifth Amendment of the U.S. Constitution. After a trial court ruled for the government before trial, Valancourt appealed.

Court turns the page

The appeals court agreed with Valancourt that the Copyright Office’s application of Sec. 407 against it was an unconstitutional taking of the publisher’s property. The Takings Clause requires the government to provide “just compensation” if it physically acquires private property for a public use.

Requiring physical copies of works is “classic taking,” the court said, but copyright owners receive no additional benefit (compensation) from forfeiting works. Mandatory deposit isn’t necessary to obtain or maintain copyright protection, which arises automatically.

The court also dismissed the Copyright Office’s claim that Valancourt could avoid relinquishing the property by disavowing copyright protection. It pointed out that such an option has never been made known in any regulation, guidance or communication — it was mentioned for the first time during the case. Regardless, the court found that the option couldn’t save a demand for property that didn’t disclose the option.

Not necessarily the final chapter

It’s worth noting that the court tied its decision to the particular circumstances of the case: 1) the Copyright Office issuing a demand letter with no option other than surrendering the property or paying a fine, and 2) Valancourt having no indication from any other source of the option to disavow copyright protection. In such circumstances, the court said, a pretrial judgment for the publisher was warranted.

© 2023

View Document(s):