Earlier this month the U.S. Supreme Court decided its only copyright case of the current term, Reed Elsevier, Inc. v. Muchnick, -- U.S. --, 2010 WL 693679. The decision, however, turned out to be more about civil procedure than copyright law. Observers who had hoped the Court might answer some basic questions about the prerequisites for filing a copyright infringement suit will be disappointed by the narrow scope of the Court's holding.
The decision involves the Copyright Act's requirement that, in general, works must be formally registered with the U.S. Copyright Office before filing a copyright infringement lawsuit. In Reed Elsevier, the Court examined whether that requirement actually restricts the subject matter jurisdiction of federal courts and prohibits them from hearing suits involving unregistered works. The Court held that it does not.
The case involved the settlement of a class action brought by freelance authors, generally newspaper and magazine writers, whose works had been reproduced in electronic databases without their consent. The class was large and affected a significant portion of the publishing industry. After several years of negotiations, the parties reached a global settlement that was approved by the district court.
The class, however, contained many authors who had not registered their works with the Copyright Office. The Court of Appeals for the Second Circuit ruled that the Copyright Act's registration requirement is jurisdictional and, as a result, the district court could not certify the class or approve the settlement. It was this jurisdictional question that was before the Supreme Court.
The relevant provision of the Copyright Act is 17 U.S.C. § 411(a), which provides, in part, that “no civil 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 accordance with this title.” Copyright owners often do not think or want to spend the money to register their copyrights until they discover someone infringing, which can result in a significant delay or added expense in filing a suit. It can take nine months or more for the Copyright Office to issue a registration certificate. An expedited registration process is available for certain types of works, but that can still take several weeks and costs at least an additional $760.
Some courts have ruled that a copyright owner does not need to wait weeks or months for a registration certificate to issue before filing suit. Instead, they hold that an owner can file suit as soon as it receives confirmation that all of its application materials have been received by the Copyright Office, which reduces the delay in filing suit to just a few days. Other courts, however, hold that a suit cannot be filed until the certificate issues.
It was this split among the courts that some observers hoped would be clarified by the Supreme Court's ruling in Reed Elsevier. But, the Court failed to address that issue. Instead, the Court focused narrowly on the question of whether § 411(a) restricts the subject matter jurisdiction of federal courts. The Court held that the statute is not jurisdictional and, as a result, does not prohibit federal courts from adjudicating claims involving unregistered works. Such jurisdictional issues, however, are unlikely to arise in most copyright infringement cases. The Court's opinion is a primer on how to analyze statutes for jurisdictional purposes but appears to offer little of practical significance for copyright owners.
Perhaps future courts will find a way to use the Reed Elsevier decision to clarify the law regarding registration. Until then, the best advice for copyright owners is to register any works that they fear will be infringed or be mentally prepared for a delay in filing suit if unregistered works are infringed.