In Reed Elsevier Inc v. Muchnick, et. al. 559 U.S. __ (2010), the Supreme Court has clarified that while the registration requirement contained in § 411(a) of the United States Copyright Act, 17 U.S.C. § 411(a) (the “Copyright Act”), is a precondition to filing a copyright infringement claim, a copyright holder’s failure to comply with that requirement does not restrict a federal court’s subject-matter jurisdiction over infringement claims involving unregistered works.

Case History

In 2000-2001, a number of freelance writers brought copyright infringement suits against a group of publishers claiming their works were electronically published without authorization. During the pendency of those suits, the Supreme Court issued its seminal decision in New York Times Co. v. Tashini, 533 U.S. 483 (2001) holding that § 201(c), 17 U.S.C. § 201(c), of the Copyright Act prohibits publishers from electronically reproducing freelance works without authorization. The freelance writers’ cases, which had been stayed pending the Tashini decision, were consolidated in the Southern District of New York.

After three years of mediation, the parties reached a settlement agreement which covered owners of both registered and unregistered works. The parties then moved the district court to certify the class and approve the settlement. Dissatisfied members of the plaintiff class (“objectors”) challenged the fairness of the settlement. The district court overruled the objections, certified the class, approved the settlement and entered final judgment. On appeal by the objectors, the Second Circuit, sua sponte, held that the district court lacked subject matter jurisdiction under § 411(a) of the Copyright Act, 17 U.S.C. § 411(a), to certify the class or to approve the settlement with respect to claims arising from unregistered copyrighted works. 17 U.S.C. § 411(a) provides that, except for certain claims involving works of visual art, no civil action for infringement shall be instituted until preregistration or registration of the copyrighted work has been made with the U.S. Copyright Office. The Supreme Court granted certiorari of the Second Circuit’s decision on March 2, 2009.

Supreme Court Opinion

Finding that the language of § 411(a) does not clearly state that the registration requirement is “jurisdictional” and noting that § 411(a)’s registration requirement is located in a provision separate from those granting federal courts subject-matter jurisdiction over copyright infringement claims, the Court, relying on an analogous Title VII statutory interpretation decision in Arbaugh v. Y&H Corp., 546 U.S. 500 (2006), classified the registration requirement in § 411(a) as a “claims-processing rule” or “precondition to suit” rather than a jurisdictional requirement. In so holding, the Court also distinguished its prior decision in Bowles v. Russell, 551 U.S. 205 (2007), finding the historical treatment of § 411(a) by other courts as a “jurisdictional requirement” a relevant but not dispositive factor.

The Court rejected a separate argument that the publishers were judicially estopped from asserting a right to waive objection to the authors’ failure to register. The Court expressed no opinion on the merits of the settlement. Moreover, the Court declined to address whether the district court in this case or district courts generally may or should enforce § 411(a)’s registration requirement, sua sponte, by dismissing copyright infringement claims involving unregistered works.

The Concurring Opinion clarified the majority’s distinction of Bowles, noting that the Bowles Court had relied “on longstanding decisions of this Court” whereas in the present case the identified historical treatment of § 411(a) did not involve Supreme Court precedent.

Practical Implications

This case involves parties – plaintiffs, defendants and objectors – who all want a substantive address of the proposed settlement. None of these parties previously raised an issue on the § 411(a) registration requirement. The Court’s decision will give these parties the opportunity to get an opinion on the merits of the settlement agreement, unless the lower court decides on its own to raise the “precondition” of § 411(a) as a basis for dismissing the case.

As for broader implications, this decision offers guidance on the analysis of statutory conditions for a cause of action in terms of the jurisdictional versus elemental aspects of the claim(s). If both a plaintiff and a defendant in a case are not of one mind to see an issue get to the court for evaluation, the decision may have little impact in such a case – a motion for a failure to state a claim or for a judgment on the pleadings would likely result in a court enforcing the statutory precondition.

When plaintiffs and defendants have the desire to get an issue decided, notwithstanding a shortcoming as to a statutory condition, this decision at least offers such parties the opportunity to get the issue considered by the court. However, the Court’s decision will not preclude a district court, on its own, from dismissing claims on the basis of a deficient establishment of a precondition, such as the precondition that a copyright infringement action cannot be brought until the copyrighted work has been registered (or preregistered) with the U.S. Copyright Office. Further, when a district court is handling a copyright infringement case involving unregistered works, the district court may strongly encourage the parties to settle rather than face the possibility of having the matter dismissed by the court on its own for the plaintiff’s failure to satisfy the “precondition” requirement of § 411(a) (especially where the plaintiff would ultimately be able to satisfy the “precondition” requirement by obtaining an expedited registration from the U.S. Copyright Office and then refile its case against the defendant).

This article was prepared by Tara Vold (tvold@fulbright.com or 202 662 4657) and J. Paul Williamson (pwilliamson@fulbright.com or 202 662 4545) from Fulbright’s Intellectual Property and Technology Practice Group. For additional information, please feel free to contact Tara Vold or J. Paul Williamson.