Perhaps we won't hear much about this during his confirmation hearings, but some readers here may find it significant to learn that Judge Roberts has penned one reported intellectual property opinion during his tenure with the United States Court of Appeals for the D.C. Circuit and participated in decisions on two others.

On April 8, 2005, Judge Roberts issued the decision of the court in Universal City Studios LLLP v. Peters, 402 F.3d 1238 (D.C. Cir. 2005).

The case involved royalty claims filed by co-plaintiff copyright owners Universal Studios and MGM Studios ("copyright owners"). Under 17 U.S.C. §§ 111, 119, the copyright owners were entitled to file claims to collect from a common fund of royalties paid by cable and satellite companies for their retransmission of copyrighted broadcasts. The claims were required to be submitted during the month of July. By regulation (under 37 C.F.R. § 252.4), proof of a timely submission could be made either by showing actual receipt in July, a July postmark, or a receipt for certified mail dated in July. The copyright owners filed claims that arrived by certified mail in the Copyright Office on August 2. Neither could produce a certified mail receipt and the claims were rejected as untimely.

Judge Roberts affirmed summary judgment in favor of the Copyright Office, finding that the regulations establishing a bright line rule were clear, the Office's refusal to grant a waiver was not an abuse of discretion because the essence of the rule was to prohibit case-by-case inquiries into the time of mailing, and that rejection of the claims did not violate the owners' due process rights. Id. at 1242-44.

Judge Roberts also participated in the decisions rendered in Luck's Music Library, Inc. v. Gonzales, 407 F.3d1262 (D.C. Cir. 2005), and Recording Indus. Ass'n of Am. v. Verizon Internet Servs., 351 F.3d 1229 (D.C. Cir. 2003).

In Luck's Music Library, the plaintiffs challenged Section 514 of the Uruguay Round Agreements Act, codified as 17 U.S.C. § § 104A, 109, which established copyrights in various works that had previously entered the public domain. The plaintiffs argued that this provision violated the Copyright Clause of the Constitution, U.S. Const. art. I, § 8, cl. 8, because "rewarding prior works will not provide any significant incentive to create new works . . . ." Id. at 1263.

In dismissing the plaintiffs' claims, the court noted that the Copyright Clause both granted power and limited the exercise of that power. However, contrary to the plaintiffs' claim, the Copyright Clause did not create any categorical ban on Congress's ability to remove works from the public domain. While the Copyright Clause limited changes in copyright laws that affected the structure of incentives for works already created, any incentive did not have to be great. In fact, under the Supreme Court's recent Eldred v. Ashcroft decision, it was arguable that a direct incentive was not required. Although the extra incentive afforded by § 514 was meager, it was sufficient. A bright line rule against laws removing works from the public domain was not required by public policy or other laws.

In the Verizon case, the RIAA sought to enforce its anti-infringement efforts against individual users of P2P file sharing programs by serving subpoenas upon Verizon, via the DMCA subpoena provision (17 U.S.C. § 512(h)), to discover the names of two of Verizon's internet subscribers. Verizon challenged the subpoenas, asserting constitutional arguments protecting free speech and insisting that § 512(h) did not authorize the issuance of a subpoena to an ISP acting solely as a conduit for communications the content of which is determined by others.

The court ruled in favor of Verizon and found, considering both the terms of § 512(h) and the overall structure of 17 U.S.C.S. § 512, that a subpoena could be issued only to an ISP engaged in storing on its servers material that was infringing or the subject of infringing activity, and not to a mere conduit ISP. Section 512(h) applied to an ISP storing infringing material on its servers in any capacity, as a temporary cache of a web page created by the ISP, as a web site stored on the ISP's server, or as an information locating tool hosted by the ISP, but did not apply to an ISP routing infringing material to or from a personal computer owned and used by a subscriber.

Thanks to our summer law clerk Darah Smith, a University of Chicago law student, for her assistance in researching and drafting this report.  Her valuable contribution is gratefully acknowledged.