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Monday, April 5, 2010

The Copyright Registration Requirement and Federal Court Jurisdiction: A Legal Analysis of Reed Elsevier, Inc. v. Muchnick

Brian T. Yeh
Legislative Attorney

Although an author need not register his or her work with the U.S. Copyright Office to obtain copyright protection, registration is a statutory prerequisite to bringing suit for infringement of the copyright, as mandated by 17 U.S.C. §411(a). The question in Reed Elsevier, Inc. v. Muchnick is whether this section of the Copyright Act restricts the subject-matter jurisdiction of the federal courts over copyright infringement claims involving unregistered works. 

The plaintiffs in Reed Elsevier, consisting of individual authors and trade groups representing authors, brought a class action lawsuit against several publishers when those publishers licensed the authors' articles for print publication but failed to secure an additional license to reproduce them electronically. The Supreme Court had earlier affirmed the plaintiffs' right to control electronic reproduction of their copyrighted works in its 2001 opinion New York Times, Co. v. Tasini. After this opinion, the district court in Reed Elsevier referred the parties to mediation. After more than three years of negotiations, the parties reached an $18 million agreement that sorted the plaintiffs into three categories based, in part, on whether or not their copyrights had been registered. The settlement assigned a different damages formula to each category, with owners of registered copyrights receiving more than owners whose copyrights were unregistered. 

Several freelance authors who fell within "Category C" (composed of unregistered copyrights) objected to the settlement agreement, arguing that the settlement was unfair and inadequate because they were paid too little. Proponents of the settlement responded that "Category C" claimants were treated fairly because, as owners of unregistered copyrights, they would normally be barred from bringing infringement suits at all under 17 U.S.C. §411(a). The district court granted final class certification and approved the settlement in September of 2005. The objectors appealed the district court's decision to the U.S. Court of Appeals for the Second Circuit. Before oral argument, the Second Circuit asked the parties to address whether the district court had subject-matter jurisdiction over claims concerning the infringement of unregistered copyrights, or whether §411(a) restricted the court's jurisdiction. 

Both the authors and publishers argued that §411(a) is not jurisdictional in nature. However, a divided panel of the Second Circuit disagreed, holding that the requirement of copyright registration prior to an infringement suit is jurisdictional and therefore, because many of the plaintiff's copyrights were unregistered, the district court lacked the power to certify the class and approve the settlement. The publishers appealed the appellate court's decision to the U.S. Supreme Court. 

In a unanimous decision issued on March 2, 2010, the U.S. Supreme Court reversed the judgment of the Second Circuit panel. The Court characterized the Copyright Act's registration requirement as a claim-processing rule rather than a jurisdictional condition. Therefore, a copyright holder's failure to satisfy the statutory registration requirement does not deprive a federal court of jurisdiction to adjudicate his copyright infringement claim. While the Supreme Court held that the Reed Elsevier district court possesses the authority to approve the settlement between the authors and the publishers, the Court offered no opinion on the fairness, reasonableness, or adequacy of the settlement. On remand, the court of appeals must now consider the settlement's merits and decide whether to uphold the district court's approval of the settlement. The Supreme Court also expressly declined to decide whether §411(a) is a mandatory precondition to suit that district courts may or should enforce sua sponte by dismissing copyright infringement claims that involve unregistered works.

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Date of Report: March 18, 2010
Number of Pages: 14
Order Number: R40944
Price: $29.95

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