In Reed Elsevier, Inc. v. Muchnick, the U.S. Supreme Court determined that the Copyright Act’s registration requirement does not present a jurisdictional bar – despite more than 200 lower court opinions holding that it does. Practically speaking, however, the holding might not affect many cases.
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.” Over the years, courts have consistently held this registration requirement to be jurisdictional, taking away a court’s ability to hear copyright claims on unregistered works.
Reed Elsevier was a class action concerning the copying of works into electronic databases. The named plaintiffs owned registered copyrights, but the class (and the settlement) covered registered and unregistered works. The Second Circuit overturned an approval of the settlement, holding that there can be no jurisdiction for unregistered works.
The Supreme Court reversed and held that section 411’s requirement, although a precondition to filing a lawsuit, is not jurisdictional. Therefore, 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 ruled 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. It noted as persuasive both the various exceptions to the requirement and the fact that the provision granting federal court jurisdiction over copyright claims is separate from the need for registration.
The Court stated that its ruling was not precluded by Bowles v. Russell, 551 U.S. 205 (2007), which held that a statutory provision should be treated as jurisdictional if prior courts have consistently done so and if Congress has not disturbed that interpretation. Here, in addition to the lack of clear wording in the statute, the same types of requirements in other statutes had not been considered jurisdictional in the past, and many of the section 411 lower court decisions were mere “drive-by jurisdictional rulings” that need not be followed.
In practical terms, the Court’s decision is extremely narrow. It did not decide whether courts can sua sponte dismiss or raise the issue of dismissing claims on unregistered works when there is no waiver by the defendants; nor does it appear to affect defendants who wish to challenge such claims. The case also did not touch upon an issue that has resulted in conflicting rulings among the courts: whether copyright cases should be allowed to continue, despite a defendant’s objections, when a copyright application has been filed, but registration has not yet been issued.
As a result, Reed Elsevier is unlikely to affect the general garden-variety copyright case. The registration requirement 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 class action cases and wide-scale infringement 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 if 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.