In its March 2, 2010 decision in Reed Elsevier, Inc. v. Muchnick, No. 08-103, the U.S. Supreme Court determined that the registration requirement for filing lawsuits under the Copyright Act does not present a jurisdictional bar – despite the more than 200 lower court opinions holding that it does. For most cases, however, it is questionable how much this decision changes the law from a practical standpoint.
Section 411 of the Copyright Act states that, with certain exceptions, “no action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made.” In other words, although you have a copyright the moment you create a work, you cannot sue on that copyright unless you have registered the work with the U.S. Copyright Office. Over the years, courts have been clear that this requirement is jurisdictional, taking away any subject matter jurisdiction to hear copyright claims on unregistered works.
In Reed Elsevier, the original plaintiffs brought a class action copyright case concerning the copying of plaintiffs’ works into electronic databases. The named plaintiffs all had registered copyrights, but the class covered both registered and unregistered works. After three years of mediation, the parties agreed to settle. There were objections to the settlement by certain copyright owners, but none on the grounds that the settlement could not cover unregistered works. The district court approved the settlement over these objections. On appeal, the Second Circuit sua sponte raised the issue of whether the settlement must be rejected because it covered unregistered works. In briefing, even the objectors argued that settlements should be allowed to cover unregistered works, but the court rejected these arguments and held that courts simply lacked jurisdiction to approve such settlements. The case was appealed to the Supreme Court (where the Court had to appoint an attorney to argue for affirming the Second Circuit, given that all parties were against the jurisdictional holding).
The Supreme Court reversed the Second Circuit and held that Section 411’s requirement, although a precondition to filing a lawsuit, is not jurisdictional. Therefore, under the Court’s ruling, the fate of an unregistered work claim rests in the hands of the defendants, and the registration requirement can be waived, as it was in this instance. The Court stated that for a statute to have a jurisdictional requirement, as opposed to a mere precondition for bringing suit or an element of a claim, the wording must “clearly state” that the requirement is “jurisdictional.” The Court found Section 411 lacking in this regard, and noted that the registration requirement is in a separate sentence from the provision granting the federal courts jurisdiction over copyright claims. The Court also determined that the various exceptions to the registration requirement gave weight to the idea that registration was a mere condition for certain types of claims and was not jurisdictional in nature.
The Court found unavailing the cases that had previously found Section 411 to be jurisdictional. It did not believe its opinion to be precluded by Bowles v. Russell, 551 U.S. 205 (2007), which stated that courts should continue to treat a statutory provision as jurisdictional if prior courts have consistently done so and if Congress has not disturbed that interpretation: if there is no clear wording in the statute showing a jurisdictional bar, and the same types of requirements in other statutes have not been considered jurisdictional in the past, there is no reason to continue to follow the lower courts rulings.1
A Narrow Ruling
In practical terms, the Court’s decision is extremely narrow. It did not decide whether courts can sua sponte raise the issue of dismissing claims of infringement of unregistered works when there is no waiver by defendants, and it certainly did not address whether defendants who wished to challenge lawsuits brought by owners of unregistered works were affected in any way. The case also did not touch upon an issue that has troubled many courts for some time with differing rulings: whether copyright cases should be allowed to continue, despite a defendant’s objections, when the copyright application has been filed, but registration has not yet issued.
As a result, although there is a good deal of interest in this opinion, it is one that is unlikely to affect the general garden-variety copyright case. The registration requirement of Section 411 may not be jurisdictional, but registration is still needed to bring a valid copyright claim. Most cases brought by plaintiffs owning unregistered works will continue to be quickly and easily dismissed in early motion practice.
Reed Elsevier will most likely affect cases that concern mass-scale infringement claims or class action claims. Defendants who want to settle mass claims once and for all will be able to use this decision to wrap up both registered and unregistered works in a single settlement – although to the extent that defendants in those cases want to be able to dismiss unregistered works from such claims, they will likely still be able to do so. In small cases, plaintiffs may be more likely to get a waiver from defendants who would rather defend a case now than later, since even when cases are dismissed on lack of registration grounds, the dismissal is typically without prejudice.
Finally, regarding the split as to whether one can sue while registration is pending, since registration with the Copyright Office is now taking almost two years and even expedited registration can take a few months, the lack of a jurisdictional bar may make courts more sympathetic to hearing claims on works with pending applications for copyright registration.