Valancourt Books, LLC v. Merrick Garland

United States Court of Appeals
FOR THE DISTRICT OF COLUMBIA CIRCUIT

Argued October 13, 2022 Decided August 29, 2023

No. 21-5203

VALANCOURT BOOKS, LLC,
APPELLANT

v.

MERRICK B. GARLAND, ATTORNEY GENERAL AND SHIRA
PERLMUTTER, IN HER OFFICIAL CAPACITY AS THE REGISTER OF
COPYRIGHTS OF THE U.S. COPYRIGHT OFFICE,
APPELLEES

Appeal from the United States District Court
for the District of Columbia
(No. 1:18-cv-01922)

Robert J. McNamara argued the cause for appellant. With
him on the briefs were Jeffrey H. Redfern and James D.
Jenkins.

Michael J. Mazzone was on the brief for amici curiae Zvi
S. Rosen and Brian L. Frye in support of appellant.

Jacqueline C. Charlesworth was on the brief for amicus
curiae Association of American Publishers, Inc. in support of
appellant.
 2
David Bookbinder was on the brief for amicus curiae the
Niskanen Center in support of appellant.

Laura E. Myron, Attorney, U.S. Department of Justice,
argued the cause for appellees. With her on the brief were
Brian M. Boynton, Principal Deputy Assistant Attorney
General, and Daniel Tenny, Attorney.

Jonathan Band and Erik Stallman were on the brief for
amici curiae American Library Association, et al. in support of
appellees.

Before: SRINIVASAN, Chief Judge, HENDERSON, Circuit
Judge, and EDWARDS, Senior Circuit Judge.

Opinion for the Court filed by Chief Judge SRINIVASAN.

SRINIVASAN, Chief Judge: Under Section 407 of the
Copyright Act, the owner of the copyright in a work must
deposit two copies of the work with the Library of Congress
within three months of its publication. The Copyright Office
enforces Section 407’s deposit requirement by issuing demand
letters informing noncomplying copyright owners that they
must either deposit copies or pay a fine.

In June 2018, the Copyright Office sent a letter to
Valancourt Books, LLC, an independent press based in
Richmond, Virginia, demanding physical copies of
Valancourt’s published books on the pain of fines. Valancourt
protested that it could not afford to deposit physical copies and
that much of what it published was in the public domain. In
response, the Office narrowed the list of demanded works but
continued to demand that Valancourt deposit copies of its
books with the Library of Congress or otherwise face a fine.
 3
Valancourt then brought this action against the Register of
Copyrights and the Attorney General. Valancourt challenges
the application of Section 407’s deposit requirement against it
as an unconstitutional taking of its property in violation of the
Fifth Amendment and an invalid burden on its speech in
violation of the First Amendment. The district court granted
summary judgment to the government on both claims.

We conclude that Section 407, as applied by the Copyright
Office in this case, worked an unconstitutional taking of
Valancourt’s property. The Office demanded that Valancourt
relinquish property (physical copies of copyrighted books) on
the pain of fines. And because the requirement to turn over
copies of the works is not a condition of attaining (or retaining)
copyright protection in them, the demand to forfeit property
cannot be justified as the conferral of a benefit—i.e., copyright
protection—in exchange for property. Our holding relates
solely to the Office’s demand for physical copies of
Valancourt’s copyrighted works: we have no occasion to
assess the Office’s offer during the litigation to accept
electronic copies in lieu of physical copies.

The Office now indicates that Valancourt could avoid
relinquishing the property by disavowing copyright protection.
But that ostensible option was never made known in any
regulation, guidance, or communication, and instead was
mentioned for the first time in this litigation. Whatever may be
the legal significance of an option of that sort if it were costless
and known to be available, it cannot save a demand for property
containing no suggestion whatever of its existence.

Because we conclude that Valancourt prevails on its claim
under the Takings Clause, we do not reach its claim under the
First Amendment, which ultimately would afford the same
scope of relief. We reverse the district court’s grant of
 4
summary judgment in the government’s favor and remand for
the entry of judgment to Valancourt and the award of relief
consistent with our decision.

I.

A.

The Copyright Clause of the Constitution grants Congress
the 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.”
U.S. Const. art. I, § 8, cl. 8. Congress first exercised that power
in 1790 by establishing a federal copyright regime. See
Copyright Act of 1790, ch. 15, 1 Stat. 124. That regime has
remained in place through the present day, even if some of its
particulars have varied over time.

Under the copyright laws in their current formulation,
creators of works such as literary works, musical works, and
graphic works enjoy copyright protection for the fruits of their
labor. “Copyright protection subsists . . . in original works of
authorship fixed in any tangible medium of
expression . . . from which they can be perceived, reproduced,
or otherwise communicated.” 17 U.S.C. § 102(a). Copyright
thus accrues automatically upon creation of an original work in
a tangible medium, and creators need not take any further
action such as publication or registration to gain the protection.

Copyright owners possess “exclusive rights to do and to
authorize” certain actions, including the rights to “reproduce
the copyrighted work in copies,” “prepare derivative works
based upon the copyrighted work,” and “distribute copies or
phonorecords of the copyrighted work to the public by sale or
other transfer of ownership, or by rental, lease, or lending.” Id.
 5
§ 106(1)–(3). Those rights generally last through “the life of
the author and 70 years after the author’s death.” Id. § 302(a).

At issue here is the mandatory deposit requirement found
in Section 407 of the Copyright Act. Id. § 407. That provision
states that “the owner of copyright or of the exclusive right of
publication in a work published in the United States shall
deposit, within three months after the date of such
publication . . . two complete copies of the best edition” of the
work. Id. § 407(a)(1). The “required copies . . . shall be
deposited in the Copyright Office for the use or disposition of
the Library of Congress.” Id. § 407(b). Because the deposit
requirement is triggered upon “publication,” id. § 407(a),
unpublished works are not subject to it. For most literary
works, the Copyright Office’s regulations presently require
deposit of only a single copy rather than two copies, although
the Office reserves the right to request a second copy. See 37
C.F.R. § 202.19(d)(2)(ix).

To enforce the mandatory deposit requirement, the
Copyright Office “may make written demand for the required
deposit on any of the persons obligated to make the deposit
under [Section 407(a)].” 17 U.S.C. § 407(d). If a copyright
owner fails to make the “required deposit” within three months
of a demand, she becomes liable for a “fine of not more than
$250 for each work” in addition to “the total retail price of the
copies or phonorecords demanded” (or, “if no retail price has
been fixed, the reasonable cost to the Library of Congress of
acquiring” those works). Id. § 407(d)(1)–(2). And if the
copyright owner “willfully or repeatedly fails or refuses to
comply with such a demand,” she becomes liable for an
additional $2,500 fine. Id. § 407(d)(3). As an indication of the
scale of Section 407’s operation, from fiscal year 2013 through
the first quarter of fiscal year 2019, the Copyright Office
 6
demanded 27,847 titles under the provision’s mandatory
deposit requirement.

Although the mandatory deposit requirement broadly
applies to published works, the Copyright Office’s regulations
give copyright owners an avenue to ask the Office for “special
relief” from the requirement. See 37 C.F.R. § 202.19(e). The
Office can also raise the possibility of special relief directly
with those who express concerns about compliance. Joint
Stipulations of Fact ¶ 59, J.A. 119. If granted by the Copyright
Office, special relief can exempt copyright owners from
Section 407’s requirements altogether or can authorize them to
deposit a quantity or format of copies of a work different from
the default statutory requirement of “two complete copies of
the best edition.” See 17 U.S.C. § 407(a)(1); 37 C.F.R.
§ 202.19(e)(1).

B.

Valancourt is an independent press that publishes rare and
out-of-print fiction. Run out of the Richmond, Virginia, home
of founder James Jenkins and his husband, Valancourt prints
copies of its books “on-demand,” i.e., in response to a specific
order or request. Although Valancourt has never deposited its
works under Section 407—nor registered them under Section
408, a separate provision of copyright law governing copyright
registration, see 17 U.S.C. § 408—Valancourt places copyright
notices in its books.

In June 2018, Valancourt received a letter from the
Copyright Office setting forth a demand under Section 407 for
“one complete copy” of 341 books published by Valancourt
“for the use or disposition of the Library of Congress.” Letter
from Michael Lind, Copyright Off. Acquisitions Specialist, to
James Jenkins (June 11, 2018), J.A. 130. True to the statute’s
 7
terms, the Office explained that failure to comply would make
Valancourt liable for a fine of up to $250 per work and the total
retail price of the copies demanded, as well as an additional
fine of $2,500 for a willful and repeated failure to comply. The
Office clarified that Valancourt’s obligation to deposit works
under Section 407 “exists regardless of whether copyright
registration [pursuant to Section 408] is sought.” Id.

Valancourt responded to the Copyright Office’s demand
the next day. It estimated that compliance with the demand
would cost over $2,500, and advised that, as a “very small
publisher,” it could not afford that sum. E-mail from James
Jenkins to Angela Coles, Copyright Off. Acquisitions Assistant
(June 12, 2018), J.A. 134. Valancourt also observed that some
of its books contained material in the public domain and that it
had already deposited some works through the Cataloging-in-
Publication program, a separate program run by the Library of
Congress. Valancourt requested that the Copyright Office
withdraw its demand and offered to sell copies of any of the
listed titles to the government at cost with no markup.

The Copyright Office responded in August 2018,
maintaining its position that Valancourt was obligated to
deposit books pursuant to Section 407. The Office explained
that deposits for Cataloging-in-Publication did not fulfill
Section 407’s requirements. After further research, however,
the Office had determined that some of Valancourt’s books
contained material exclusively in the public domain, and it thus
narrowed the list of demanded works to 240 books. The Office
enclosed an updated demand letter that reiterated the fines for
failure to deposit.
 8
C.

In August 2018, Valancourt brought this action against the
Attorney General and the Register of Copyrights. Valancourt
sought a declaration that the application of Section 407 is
unconstitutional under the First and Fifth Amendments, as well
as an injunction against the provision’s enforcement.
Valancourt contended that Section 407’s application violates
the First Amendment because it unlawfully burdens speech and
is overbroad, and that it also violates the Fifth Amendment
because it represents an uncompensated taking of property.

In March 2019, the Copyright Office reached out to
Valancourt’s counsel in an e-mail containing the header
“CONFIDENTIAL SETTLEMENT COMMUNICATION.”
E-mail from Daniel Riess, Trial Attorney, Fed. Programs
Branch, Dep’t of Just., to Robert McNamara, Counsel for
Valancourt (Mar. 11, 2019), J.A. 173. The communication
included an “offer, in full settlement for all of Valancourt’s
claims, [of] permission for Valancourt to deposit the 240
requested titles in electronic format.” Id. Invoking its
regulatory authority to grant special relief when mandatory
deposit would be an “unsustainable economic burden,” the
Office explained that its grant of special relief would also
“extend to any request by the Copyright Office for future
publications by Valancourt.” Id.; see 17 U.S.C. § 407(c); 37
C.F.R. § 202.19(e).

Valancourt rejected the Copyright Office’s offer. In its
subsequent briefing to the district court, it gave two reasons for
its rejection. First, Valancourt objected to the idea that it would
receive special treatment while other small publishers would
continue to be subject to Section 407’s mandatory deposit
requirement. Second, it did not believe it could comply with
the offer because it likely lost electronic copies of at least some
 9
of its works in part due to a home burglary. See Pl.’s Suppl.
Br. 2–3, Valancourt Books, LLC v. Perlmutter, 554 F. Supp. 3d
26 (D.D.C. 2021), No. 18-cv-1922.

The parties cross-moved for summary judgment. The
government represented that its settlement offer to accept
electronic copies stood regardless of whether Valancourt
agreed to settle its claims. Defs.’ Combined Memorandum in
Supp. of Their Mot. for Summ. J. & in Opp’n to Pl.’s Cross-
Mot. for Summ. J. at 20–21 n.8., Valancourt Books, 554 F.
Supp. 3d 26, No. 18-cv-1922. In December 2020, the district
court ordered supplemental briefing on whether the Copyright
Office’s offer to accept electronic copies had mooted the
dispute. See Order at 3, Valancourt Books, 554 F. Supp. 3d 26,
No. 18-cv-1922. Both parties agreed that Valancourt’s
potential rejection of the offer would not moot the dispute.

In July 2021, the district court granted summary judgment
in favor of the government. Valancourt Books, LLC v.
Perlmutter, 554 F. Supp. 3d 26 (D.D.C. 2021). The court first
concluded that the Copyright Office’s offer to accept electronic
copies of Valancourt’s works had not mooted the dispute but
instead had “narrowed” it to one about electronic copies. Id. at
32–33. The court then rejected both of Valancourt’s
constitutional claims.

On Valancourt’s Fifth Amendment claim, the court held
that Section 407 does not run afoul of the Takings Clause
because it represents a voluntary exchange for federal
copyright protection. Id. at 33–36. The court viewed Section
407 as a condition on the receipt of the governmental benefit
of copyright protection, and it characterized Valancourt as
having accepted that condition by voluntarily placing notices
of copyright on its books. Id. at 35. The court also pointed to
Valancourt’s refusal to disavow copyright protection despite
 10
the Copyright Office’s representation that, if Valancourt did so,
the Office would withdraw its deposit requirement. Id. at 38.
The court further mentioned that it is “not at all clear” how
principles developed in the context of real or personal property
would apply to the Copyright Office’s alternative demand of
electronic copies. Id. at 36.

The court next rejected Valancourt’s First Amendment
claim. It concluded that Section 407 does not burden speech at
all, and that, even if it were subject to First Amendment
scrutiny, it would survive because it does not burden more
speech than necessary. Id. at 40–41.

Valancourt now appeals. It challenges the district court’s
conclusion that the dispute has been narrowed to one about
electronic copies, as well as the court’s grant of summary
judgment to the government on Valancourt’s First and Fifth
Amendment claims.

II.

Because the scope of the dispute before us necessarily
affects our analysis of the merits of the challenge, we first
determine whether the dispute encompasses only the Copyright
Office’s offer to accept electronic copies of the copyrighted
works or also reaches the Office’s original demand for physical
copies. We agree with Valancourt that the dispute has not been
narrowed to encompass only electronic copies.

After Valancourt filed its complaint challenging the
Copyright Office’s demand for physical copies of copyrighted
works, the Office offered to accept electronic copies in lieu of
physical copies. That offer did not moot Valancourt’s
challenge to the demand for physical copies. A party’s
voluntary cessation of challenged conduct does not moot the
 11
challenge unless it is “absolutely clear” that the challenged
conduct will not recur after the litigation. Trinity Lutheran
Church of Columbia, Inc. v. Comer, 137 S. Ct. 2012, 2019 n.1
(2017) (quoting Friends of the Earth v. Laidlaw Env’t Servs.,
528 U.S 167, 189 (2000)); see, e.g., Adarand Constructors, Inc.
v. Slater, 528 U.S. 216, 221–25 (2000). No one argues that
standard is satisfied here, as the Office can continue to demand
physical copies from copyright holders (including Valancourt)
and has indicated no intention to cease doing so. Indeed, the
Office has not withdrawn its demand for physical copies in this
case itself—rather, it has only offered to accept electronic
copies as an alternative way to satisfy its continuing demand
for physical copies. We thus will address the Office’s demand
for physical copies, consistent with our general obligation to
decide cases within our jurisdiction. See, e.g., Lexmark Int’l,
Inc. v. Static Control Components, Inc., 572 U.S. 118, 126
(2014).

As for the Office’s offer to accept electronic copies as an
alternative, Valancourt advised the district court that the court
“need not address” whether electronic copies constitute
property subject to the Takings Clause because, regardless of
the Office’s offer, Valancourt would still need to deposit
physical copies of certain books for which it cannot produce
electronic copies. Pl.’s Suppl. Br. 7–8 & n.3, Valancourt
Books, 554 F. Supp. 3d 26, No. 18-cv-1922; see Jenkins Suppl.
Decl. ¶¶ 7, 9, J.A. 169–70. Valancourt does not ask our court
to assess the Office’s alternative demand for electronic copies,
either, instead requesting that we assess its “original
constitutional claims.” Valancourt Br. 20. The government
likewise does not ask us to go on to evaluate the Office’s
alternative demand for electronic copies if we invalidate the
baseline demand for physical copies. Rather, the government
generally defends its interpretation of Section 407 without
 12
eschewing its ability to enforce that provision through physical
copies.

Because neither party appears to ask us to reach the
question, and because the presentation of the case does not
require us to do so, we will not proceed to evaluate the
constitutionality of Section 407 as enforced through electronic
copies. “[I]n the first instance and on appeal . . . , we rely on
the parties to frame the issues for decision and assign to courts
the role of neutral arbiter of matters the parties present.”
United States v. Sineneng-Smith, 140 S. Ct. 1575, 1579 (2020)
(quoting Greenlaw v. United States, 554 U.S. 237, 243 (2008)).
The parties’ focus on physical copies explains why they, and
the district court, largely did not discuss how Section 407
would fare if enforced through only electronic copies. As the
district court recognized, that analysis might raise unique
questions. For example, the court observed, it “is not at all
clear” how the principles of the Takings Clause “developed in
the context of ‘real property’ . . . would apply to a requirement
that can be fulfilled by the transmission of digital copies.” 554
F. Supp. 3d at 36.

The parties’ understanding of the Copyright Office’s offer
as an alternative way to fulfill Section 407’s requirements
reinforces that this dispute is ultimately about physical copies.
Both parties stipulated that the Office’s offer was to accept
electronic copies “in lieu of physical copies.” Joint
Stipulations of Fact ¶ 61, J.A. 119. If the demand for physical
books is unconstitutional, as we conclude it is, the predicate for
the Office’s alternative offer then falls away, and we have no
need to assess its constitutionality. Accordingly, we will
evaluate only the Office’s demand for physical copies.
 13
III.

Valancourt contends that Section 407’s mandatory deposit
requirement, as enforced by the government, violates both the
Takings Clause of the Fifth Amendment and the First
Amendment. We review the district court’s grant of summary
judgment to the government de novo. Stoe v. Barr, 960 F.3d
627, 638 (D.C. Cir. 2020). We agree with Valancourt that
Section 407’s demand for physical copies of works, as applied
by the Copyright Office here, represents an uncompensated
taking of private property under the Takings Clause. We need
not reach Valancourt’s First Amendment claim, as it seeks the
same relief through that challenge.

A.

Under the Takings Clause of the Fifth Amendment, the
government has a “clear and categorical obligation” to provide
just compensation if it “physically acquires private property for
a public use.” Cedar Point Nursery v. Hassid, 141 S. Ct. 2063,
2071 (2021). A physical appropriation of property presents the
“clearest sort of taking,” id. (quoting Palazzolo v. Rhode
Island, 553 U.S. 606, 617 (2001)), which we assess “using a
simple, per se rule: The government must pay for what it
takes,” id. Although the Takings Clause often arises in the
context of real property, its requirements apply to personal
property as well: “The Government has a categorical duty to
pay just compensation when it takes your car, just as when it
takes your home.” Horne v. Dep’t of Agric., 576 U.S. 350, 358
(2015).

By requiring copyright owners to provide physical copies
of books, the mandatory deposit provision “effect[s] a ‘classic
taking in which the government directly appropriates private
property for its own use.’” Tyler v. Hennepin Cnty., 143 S. Ct.
 14
1369, 1376 (2023) (quoting Tahoe-Sierra Pres. Council, Inc.
v. Tahoe Reg’l Plan. Agency, 535 U.S. 302, 324 (2002)). When
copyright owners deposit copies of works with the Library of
Congress, they “lose the entire ‘bundle’ of property rights” in
the relinquished copies, including “the rights to possess, use
and dispose of” them. Horne, 576 U.S. at 361–62 (quoting
Loretto v. Teleprompter Manhattan CATV Corp., 458 U.S.
419, 435 (1982)). A government demand to turn over personal
property is “of such a unique character that it is a taking without
regard to other factors that a court might ordinarily examine.”
See id. at 362 (quoting Loretto, 458 U.S. at 432).

A demand for personal property would not be a taking,
however, if it involved a voluntary exchange for a
governmental benefit. If the property owner is “aware of the
conditions” of an exchange, and if the conditions are
“rationally related to a legitimate Government interest,”
presenting the exchange poses no takings problem. See
Ruckelshaus v. Monsanto Co., 467 U.S. 986, 1007 (1984). In
Monsanto, accordingly, the Court held that the Environmental
Protection Agency could validly condition registration of
pesticides on the disclosure of relevant trade secrets (a form of
property) because the disclosure requirement could be justified
as a condition on a “valuable Government benefit.” See id. By
consenting to the agency’s requirements for a license,
Monsanto demonstrated that it was “willing to bear [the]
burden” of disclosing trade secrets “in exchange for the ability
to market pesticides.” Id.

A voluntary exchange for a benefit like the one in
Monsanto does not exist, however, if the purported “benefit” is
illusory. In Horne v. Department of Agriculture, the Supreme
Court considered a regulation that required raisin growers to
give a percentage of their crop to the government as part of the
government’s efforts to maintain an orderly raisin market. 576
 15
U.S. at 354–55. Distinguishing Monsanto, the Court concluded
that the raisin provision effected a taking because the raisin
growers received no “special governmental benefit” in
exchange for forfeiting their raisins. Id. at 366. True, the
growers received the right to “[s]ell[] produce in interstate
commerce.” Id. But unlike the “license to sell dangerous
chemicals” granted in Monsanto, the right to sell produce was
a “basic and familiar use[] of property” that the growers already
enjoyed and were entitled to exercise. Id.

Here, as in Horne, copyright owners receive no additional
benefit for the works they forfeit pursuant to Section 407’s
deposit requirement. Mandatory deposit is not required to
secure the benefits of copyright. Copyright first “subsists”
when an author “fix[es]” a work “in any tangible medium of
expression.” 17 U.S.C. § 102(a). So, when a writer puts words
on a page, that work gains copyright; when an artist paints on
a canvas, that work gains copyright. Copyright thus is “both
instant and automatic,” in that it “vests as soon as a work is
captured in a tangible form, triggering a panoply of exclusive
rights that can last over a century.” Georgia v.
Public.Resource.Org, Inc., 140 S. Ct. 1498, 1513 (2020).
Authors need not take any affirmative step to obtain copyright:
it attaches immediately upon fixation of the work.

Nor is mandatory deposit required to continue retaining
copyright and its benefits. The mandatory deposit statute
authorizes the Copyright Office to make a demand for copies
in writing. If a copyright owner fails to make the required
deposit within three months of such a demand, the statute
stipulates that the owner will be liable for a range of fines: “a
fine of not more than $250 for each work,” a payment equal to
the “total retail price” of the demanded works, and an
additional fine of $2,500 if the copyright owner “willfully or
repeatedly fails or refuses to comply with” a demand. 17
 16
U.S.C. § 407(d). While copyright owners are subject to a series
of fines for failure to deposit, they retain copyright regardless
of whether they pay the fines. Indeed, the statute itself declares
that the deposit requirement is not a “condition[] of copyright
protection,” providing perhaps the clearest sign that mandatory
deposit is unrelated to retaining copyright. Id. § 407(a).

In urging us to view mandatory deposit as part of a
voluntary exchange, the government cites the many benefits
that copyright confers upon authors. But authors obtain those
benefits upon fixation, and mandatory deposit grants no
additional benefits. Tellingly, the government cannot point to
a single incremental benefit that copyright owners receive for
depositing works pursuant to Section 407. That provision then
cannot represent a voluntary exchange for a benefit—there is
no benefit at all.

In that respect, the difference between Sections 407 and
408 is illuminating. Unlike with Section 407, authors receive
additional benefits if they deposit their works along with an
application and filing fee pursuant to Section 408, the statutory
provision governing copyright registration. See id. § 408.
Notably, registration is a precondition to bringing an
infringement action. Id. § 411(a). Registration can also
provide copyright owners with prima facie evidence of the
validity of their copyright, id. § 410(c), and access to additional
remedies if they prevail in an infringement suit, id. § 412.

The government does not get any further by asserting that
copyright is a governmental benefit. We agree that copyright
is not a natural right. Rather, it is a uniquely governmental
benefit whose conferral the Copyright Office can validly
condition on meeting various requirements. See Wheaton v.
Peters, 33 U.S. (8 Pet.) 591, 663–64 (1834) (“No one can deny
that when the legislature are about to vest an exclusive right in
 17
an author or an inventor, they have the power to prescribe the
conditions on which such right shall be enjoyed . . . .”). But
mandatory deposit under Section 407 bears no relationship to
that benefit, and the governmental nature of the benefit does
not change that fact.

A review of the mandatory deposit provision’s history
shows how Section 407 became a burden untethered to any
benefit. For many years, the benefits of copyright were
intimately tied to mandatory deposit, and authors had to deposit
works to either obtain or maintain copyright and its related
benefits. The first copyright legislation required authors to
“deposit a printed copy” of their work to gain the benefit of
copyright. Copyright Act of 1790, ch. 15, § 3, 1 Stat. 124, 125.
The Copyright Act of 1909 then eliminated mandatory deposit
as a requirement to gain copyright protection, instead
conferring copyright upon publication of a work with a
copyright notice. See Copyright Act of 1909, Pub. L. No. 60-
349, § 9, 35 Stat. 1075, 1077. But mandatory deposit remained
necessary to maintain copyright: if the author failed to
“promptly” deposit two copies of the work after receiving a
demand from the Copyright Office, the copyright would
“become void” and the author would incur a fine. Id. §§ 12–
13, 35 Stat. at 1078.

Subsequent legislative developments eroded the quid pro
quo nature of mandatory deposit. The Copyright Act of 1976
made copyright automatic upon fixation of a work in a tangible
medium, and that regime persists today, meaning mandatory
deposit remains unnecessary to gain copyright. See Copyright
Act of 1976, Pub. L. No. 94-553, § 102(a), 90 Stat. 2541, 2544–
45. The Act also removed loss of copyright as a sanction for
failure to deposit, meaning mandatory deposit also became
unnecessary to maintain copyright. See id. § 407(d), 90 Stat.
at 2579.
 18

In 1988, Congress again amended the copyright regime,
this time to comply with the Berne Convention for the
Protection of Literary and Artistic Works, which prohibits its
members from conditioning copyright on “any formality.”
Berne Convention for the Protection of Literary and Artistic
Works, Sept. 9, 1886, as revised at Stockholm on July 14, 1967,
art. 6(2), 828 U.N.T.S. 221, 233. Congress complied by
eliminating an author’s obligation to include a copyright notice
when publishing his works to retain copyright, further
disentangling copyright protection from the actions an author
takes after obtaining it. See Berne Convention Implementation
Act of 1988, Pub L. No. 100-568, § 7, 102 Stat. 2853, 2857.
While the government relies on a Ninth Circuit decision that
upheld the mandatory deposit requirement against
constitutional challenges, that decision considered a prior
version of the statute, before the 1988 amendments. See Ladd
v. Law & Tech. Press, 762 F.2d 809 (9th Cir. 1985).

Those statutory changes brought us to the present-day
version of Section 407, whose obligations are triggered upon
publication but whose fulfillment provides no marginal benefit
to copyright owners. Valancourt does not dispute that prior
versions of the statute suffered no infirmity under the Takings
Clause. That is because mandatory deposit was long related
either to gaining or to maintaining the benefits of copyright,
making it part of the price of federal copyright protection.
While works copyrighted before the Copyright Act of 1976
went into effect are still governed by the preexisting regime, no
such copyrights are at issue in this case. See Copyright Act of
1976, Transitional and Supplementary Provisions § 110, 90
Stat. at 2600. Valancourt’s copyrights all fall under the current
copyright regime, which lacks the quid pro quo that
characterized previous versions of the statute.
 19
The government suggests it is counterintuitive to
determine that statutory changes making it easier to secure and
maintain copyright protection had the effect of rendering
mandatory deposit unconstitutional. But the relevant issue is
not the magnitude of the burden placed on authors to obtain
copyright. Rather, the key point is that the changes to
copyright law untethered the deposit requirement from the
benefits of copyright protection, erasing copyright’s status as
the product of a voluntary exchange akin to the one blessed in
Monsanto.

It is true that copyright owners can satisfy Section 407 by
paying a fine instead of forfeiting their property. But the
government understandably does not contend that the “option”
of paying a fine affects the analysis. A statute can effect a
taking even if the property owner never actually forfeits
property and is instead subject to a fine. In Horne, the
government assessed a fine of $480,000 and an additional civil
penalty of over $200,000 when the Hornes refused to give up
their raisins, and the Hornes brought suit when the government
tried to enforce the fine. 576 U.S. at 356. In that sense, the
Hornes were able to avoid giving over their raisins if they
instead chose to incur a fine. But the Court held that the raisin
reserve requirement effected a taking even though the only
action the government took was to impose a “fine and
associated civil penalty . . . when [the Hornes] resisted the
Government’s effort to take their raisins.” Id. at 370.

Just as the alternative of a fine in Horne did not save the
statute from constituting a taking, Section 407’s scheme of
fines does not save the statute here, either. A “demand for
money” that “operate[s] upon . . . an identified property
interest” can violate the Takings Clause because a “monetary
obligation burden[s]” ownership of property. Koontz v. St.
Johns River Water Mgmt. Dist., 570 U.S. 595, 613 (2013)
 20
(quoting E. Enters. v. Apfel, 524 U.S. 498, 540 (1998)
(Kennedy, J., concurring in the judgment and dissenting in
part)). Were we to find otherwise, the government could avoid
the strictures of the Takings Clause by purporting to “simply
give the owner a choice of either surrendering [property] or
making a payment equal to the [property’s] value.” Id. at 612.
Thus, “when the government commands the relinquishment of
funds linked to a specific, identifiable property interest” such
as a piece of personal property, the “‘per se [takings] approach’
is the proper mode of analysis.” See id. at 614 (alteration in
original) (quoting Brown v. Legal Found. of Wash., 538 U.S.
216, 235 (2003)).

B.

Seeking to characterize Section 407 as part of a voluntary
exchange, the government contends that a copyright owner can
readily disavow copyright protection and thereby avoid the
deposit requirement. By refraining from disavowing copyright
protection, the government argues, copyright owners like
Valancourt effectively consent to mandatory deposit. See
Gov’t Br. 39–41. We disagree.

If there were a simple, seamless, and transparent way to
opt out of copyright protection, perhaps mandatory deposit
would fall outside the realm of the Takings Clause because any
forfeiture of property might arguably be voluntary. For
example, the Supreme Court recently explained that even when
the government keeps excess proceeds from a foreclosure sale
beyond the amount a property owner owes the government, no
Takings Clause violation occurs if the government provides a
“process through which the owner [can] claim the surplus.”
Tyler, 143 S. Ct. at 1379 (citing and discussing Nelson v. City
of New York, 352 U.S. 103 (1956)). The availability of such a
process means the government has not “absolutely preclud[ed]
 21
an owner from obtaining” the surplus. Id. (quoting Nelson, 352
U.S. at 110). Here, then, a known and costless option by which
to abandon a copyright could be argued to provide copyright
owners with a comparable way to avoid having their property
unlawfully taken. While the copyright laws have evolved to
make it much easier for people to gain copyright in their works,
nothing in the current statutes appears to preclude optional
abandonment of that right.

We need not resolve whether a known and costless
abandonment option would make Section 407 constitutional,
however, because there is no indication that an option of that
sort generally exists. For an abandonment option to render
deposit under Section 407 a voluntary choice, the option would
have to at least be cognizable to copyright owners. Cf.
Landgraf v. USI Film Prods., 511 U.S. 244, 265 (1994)
(“Elementary considerations of fairness dictate that individuals
should have an opportunity to know what the law is and to
conform their conduct accordingly . . . .”); Fed. Express Corp.
v. U.S. Dep’t of Com., 39 F.4th 756, 773 (D.C. Cir. 2022) (the
government must “make the requirements of the law public and
afford the citizenry a reasonable opportunity to familiarize
itself with its terms and to comply” (internal quotation marks
and citation omitted)). As it stands, however, no statute,
regulation, or guidance suggests that an author can readily
disavow copyright protection and thereby avoid the associated
mandatory deposit requirement.

Expecting copyright owners to somehow glean the
existence of an unadvertised abandonment option and
subjecting them to demands on their property when they
unsurprisingly do not exercise the option “impermissibly
burden[s] the right not to have property taken without just
compensation.” See Koontz, 570 U.S. at 607. Short of mining
the filings in this case—and somehow knowing of the need to
 22
do so—copyright owners would have no way to learn about the
ostensibly seamless abandonment option the government now
posits. And Valancourt, which of course did not have the
filings in this case when it brought its action, had no way of
knowing about that option before it sued.

The statute itself gives no indication of any abandonment
option or how to effectuate it. Nothing in Section 407’s terms
would suggest to a copyright owner that she can avoid its
requirements by informing the Copyright Office that she would
prefer to abandon her copyright rather than deposit copies of
copyrighted works. Rather, the statute states that a copyright
owner “shall” make a deposit and prescribes fines for failing to
comply with a deposit demand from the Copyright Office. 17
U.S.C. § 407(a), (d). The statute then makes clear that
mandatory deposit is not a “condition[] of copyright
protection.” Id. § 407(a). To deduce that one could avoid
mandatory deposit by disavowing copyright protection would
require a copyright owner to infer essentially the opposite of
what the statute states. Nothing elsewhere in the copyright
statute suggests that owners can abandon their copyright to
avoid deposit, either. Copyright “subsists” as soon as one
“fixe[s]” a work “in any tangible medium,” and it generally
lasts from the creation of the work through “the life of the
author and 70 years after the author’s death.” Id.
§§ 102(a), 302(a).

Nor is there any indication that, in practice, the Copyright
Office informs copyright owners of an abandonment option
when issuing demands to enforce Section 407. To the contrary,
in its first communication to Valancourt, the Office explained
that Valancourt had to deposit one copy of each of the 341
listed works on the pain of fines. It did not suggest at any point
that Valancourt could avoid the deposit requirement by simply
disavowing its copyrights, much less explain how Valancourt
 23
could exercise that option in a way that would lead the Office
to withdraw its demand for copies of Valancourt’s copyrighted
works.

If anything, the Copyright Office’s demand letter implied
that Valancourt was obligated to deposit regardless of any
voluntary action it took, as the letter stated that the “obligation
to deposit published works under copyright protection exists
regardless of whether copyright registration is sought.” Letter
from Michael Lind, Copyright Off. Acquisitions Specialist, to
James Jenkins (June 11, 2018), J.A. 130. The Office also did
not mention what the government now says is a readily
realizable abandonment option even when Valancourt
expressed that it could not afford the costs of mandatory
deposit. Instead, the Office renewed its demand and explained
that the 240 works it had identified at that point were
“copyrightable materials subject to Copyright Mandatory
request/demand.” E-mail from Angela Coles, Copyright Off.
Acquisitions Assistant, to James Jenkins (Aug. 9, 2018), J.A.
137.

The Copyright Office’s own guidance requires copyright
owners to pay a $125 fee to register a notice of abandonment.
That guidance further diminishes any possibility of an owner’s
gaining the impression that there might be some costless
abandonment option readily realizable through—as the Office
now suggests—a simple communication to the Office. The
Office’s Compendium, an administrative manual it publishes,
states that copyright owners must mail a document and the
“appropriate filing fee” to the Office to record an abandonment.
U.S. Copyright Off., Compendium of U.S. Copyright Office
Practices § 2311 (3d ed. 2021),
https://copyright.gov/comp3/chap2300/ch2300-
recordation.pdf [https://perma.cc/669W-5KUR] (last visited
Aug. 12, 2023). The Office’s table of fees then stipulates that
 24
the base fee for recording a paper document, including a notice
of termination, is $125. Fees, U.S. Copyright Off.,
https://www.copyright.gov/about/fees.html
[https://perma.cc/7DNH-UEYH] (last visited Aug. 12, 2023).
It would appear to someone reviewing the Office’s
Compendium, then, that the only way to officially abandon
copyright entails the payment of a significant fee. While the
government now represents that the fee applies to recordation
of abandonment and not abandonment itself, there is no
indication in the Compendium or any other available source
that a costless abandonment option exists. When the only
reference to an abandonment option is one carrying a $125 fee,
copyright owners are unlikely to think they could easily
abandon copyright (and its attendant obligations like Section
407’s deposit obligation) without cost.

The government represents that copyright owners in fact
can abandon copyright simply by taking any overt action
indicating an intent to surrender copyright protection,
regardless of whether they pay $125 to record a notice of
abandonment. The government points to a line of decisions in
which courts have recognized abandonment through an overt
action as an affirmative defense to claims of copyright
infringement. See 4 Melville B. Nimmer & David Nimmer,
Nimmer on Copyright § 13.06 (Matthew Bender rev. ed.)
(describing the defense of abandonment of copyright). But the
government does not explain why copyright owners would
know of such a judicially created doctrine developed in the
context of infringement litigation, much less why even
knowledgeable copyright owners would think that
abandonment in that context would be effective to avoid
Section 407’s deposit requirement. Indeed, the government
itself suggested at oral argument that abandonment for one
purpose would not necessarily work for another, as it
represented that the version of copyright abandonment it now
 25
posits would suffice to avoid Section 407’s demand
requirement might not be effective to defend against
infringement claims. Oral Arg. 29:11–29:59.

In the end, the only affirmative indication of a costless
abandonment option is in the government’s statements in this
litigation. The government first referenced such an option in
its summary judgment briefing, in which it represented that
Valancourt and other copyright owners could escape their
Section 407 deposit obligation by informing the Copyright
Office of their wish to abandon copyright. See Mem. in Supp.
of Defs.’ Mot. for Summ. J. at 22, Valancourt Books, 554 F.
Supp. 3d 26, No. 18-cv-1922. It repeated that representation in
our court. See Gov’t Br. 39–41. But representations made only
in the course of litigation—and appearing in no statute,
regulation, or guidance—do not demonstrate that an
abandonment option was in fact cognizable to copyright
owners like Valancourt. Cf. Rhea Lana, Inc. v. Dep’t of Lab.,
824 F.3d 1023, 1030–31 (D.C. Cir. 2016) (explaining that
deference to an agency’s interpretation of its own regulation is
unwarranted “when it appears that the interpretation is nothing
more than a convenient litigating position, or a post hoc
rationalization advanced by an agency seeking to defend past
agency action against attack” (quoting Christopher v.
SmithKline Beecham Corp., 567 U.S. 142, 155 (2012));
Teesdale v. City of Chicago, 690 F.3d 829, 833 (7th Cir. 2012)
(concluding in the Section 1983 context that “[a] mere legal
position, without anything more, is insufficient to constitute an
official policy”).

The government also asserted at oral argument that
Valancourt should have recognized that copyright (and its
attendant obligations), like any other property right, can be
waived. See Oral Arg. 21:51–22:21. But it is telling that even
the government did not frame its argument that way in its
 26
briefing in the district court or our court. Instead, it
characterized abandonment of copyright as a principle specific
to copyright law rather than a broad truism of property law,
suggesting that such a principle is not so obviously applicable
in this context. And Section 407’s language and the Copyright
Office’s public materials would indicate to a copyright owner
that such a principle does not apply here. Multiple amici
accordingly contend that a costless and seamless abandonment
option is unapparent to the public, as they characterize the
abandonment option as illusory. See Ass’n of Am. Publishers
Amicus Br. 12–14; Niskanen Ctr. Amicus Br. 6–13; Rosen &
Frye Amicus Br. 31–32.

Had the government wanted to make clear that copyright
owners could avoid readily mandatory deposit by abandoning
their copyright, it knew how to do so, as evidenced by other
provisions in the Copyright Act and their corresponding
regulations. For example, the Act subjects copyrighted works
imported in violation of certain provisions to seizure and
forfeiture. See 17 U.S.C. §§ 602(a)(1)–(3), 603(c). One can
avoid forfeiting the relevant works, however, by providing
evidence that “a statement of abandonment has been filed and
recorded in the Copyright Office by the copyright owner in
accordance with the procedures of the Copyright Office,”
among other requirements. 19 C.F.R. § 133.51(b)(3)(i). As
one court recognized, that regulation exempts “work[s] for
which copyright protection is not claimed” from certain
importation restrictions. Authors League of Am., Inc. v. Oman,
790 F.2d 220, 221 (2d Cir. 1986). By codifying formal
abandonment of copyright as a mechanism to render certain
legal obligations inapplicable, the import regulation illustrates
how the government could communicate the availability of a
copyright abandonment option along with the option’s
implications for the mandatory deposit requirement. The
government, though, has not issued any such guidance.
 27

The government lastly argues that Valancourt consented to
the burdens of Section 407 by choosing to place copyright
notices on its works. But just as Valancourt did not consent to
mandatory deposit by refusing to disavow its copyrights, it did
not consent by including copyright notices in its works.
Nothing in the statute or the accompanying regulations
suggests that a copyright owner agrees to deposit two copies of
a work by using copyright notices. Although inclusion of a
copyright notice bore legal relevance in prior versions of the
statute, the statute now states that the mandatory deposit
requirement is triggered by mere “publication” of a work. 17
U.S.C. § 407(a).

The government thus cannot infer consent from
Valancourt’s actions—either from its refraining from
exercising an ostensibly costless abandonment option of which
there is no evidence of Valancourt’s knowledge, or from its
affixing a notice of copyright to its works without any
indication that doing so somehow amounted to consenting to
relinquish its property. Rather, in the circumstances, the
Copyright Office’s enforcement of Section 407 against
Valancourt worked an unconstitutional taking of property.

Our decision, as we have explained, is tied to the particular
circumstances: circumstances in which the Copyright Office
enforced Section 407 by issuing a demand letter indicating no
option other than surrendering the property at issue or paying a
fine, and in which Valancourt had no indication from any other
source of the existence of a costless option to disavow
copyright protection and thereby avoid complying with the sole
options described in the demand letter. We leave it to the
district court and the parties to fashion relief commensurate
with the parameters of our resolution.
 28
Because we conclude that the way the Copyright Office
enforced Section 407 against Valancourt works a taking, we
need not reach Valancourt’s challenge under the First
Amendment. Valancourt has not argued that the scope of relief
it seeks differs with respect to its First and Fifth Amendment
claims, and we are unaware of any reason to think that would
be the case. Were we to consider Valancourt’s First
Amendment claim, our analysis would proceed in much the
same fashion, as we would determine whether, on the facts of
this case, the Copyright Office’s enforcement of Section 407
against Valancourt runs afoul of the First Amendment. Indeed,
Valancourt acknowledged at oral argument that, as it relates to
physical copies, its claims under the Fifth and First
Amendments work in the same manner. See Oral Arg. 13:58–
15:50.

* * * * *

For the foregoing reasons, we reverse the judgment of the
district court and remand with instructions to grant summary
judgment to Valancourt consistent with our opinion.

So ordered.