Clarifying without Giving Clarity – U.S. Supreme Court Rules in Copyright Case (by guest blogger, Brad R. Maurer)Friday, March 5, 2010 23:06
Guest blogger and colleague Brad R. Maurer, also of Baker & Daniels, summarizes a recent Supreme Court decision in today’s post. As Brad explains, the new case has little practical impact on business owners at this time, other than to serve as a reminder to register creative works at the U.S. Copyright Office early and often.
Clarifying without Giving Clarity: Supremes Hold Copyright Act Section 411(a) Non-Jurisdictional, But Decline to Decide Whether a Mandatory Prerequisite to Suit
On March 2, 2010, the United States Supreme Court released its slip opinion in Reed Elsevier, Inc. v. Muchnick, _U.S._ (2010), holding that the copyright registration requirement found in 17 U.S.C. §411(a) is not jurisdictional in nature such that the failure of an owner to register a work of authorship with the US Copyright Office deprives a federal court of subject matter jurisdiction in a copyright infringement lawsuit. However, the Supreme Court declined to answer the practical question of whether copyright registration, even if not jurisdictional, is a mandatory prerequisite before a party may file a copyright infringement lawsuit.
The issue arose in the context of a disputed class action settlement reached between freelance writers, online databases and publishers related to the electronic reproduction of articles. Interestingly, the Second Circuit Court of Appeals raised the jurisdictional issue sua sponteand, after plaintiffs and defendants both argued that the Section 411(a) was not jurisdictional, held that Section 411(a) was jurisdictional—thereby threatening a hard-negotiated settlement reached between the parties. Because none of the parties supported the Second Circuit’s holding, the Supreme Court appointed an amicus curiae to defend the Second Circuit’s jurisdictional finding on appeal.
In reversing the Second Circuit, the Supreme Court noted the potentially confusing distinctions between jurisdictional conditions and claim-processing rules. Starting with the premise that a statute must clearly state it is jurisdictional, the Supreme Court’s analysis focused on the “legal character” of a requirement as discerned by “looking to the condition’s text, context, and relevant historical treatment.” That analysis led the Supreme Court to conclude that Section 411(a) is not jurisdictional.
While the Court’s decision saved the hard fought settlement reached in the underlying case, sadly, it failed to resolve the important question of whether, under Section 411(a), copyright registration is a mandatory prerequisite to filing a copyright infringement suit. As a result, litigants in copyright infringement lawsuits involving as yet unregistered works may continue to argue the issue armed with divergent and conflicting opinions from the various federal circuit courts of appeal. Therefore, as a practical matter, if an owner suspects infringement of a work of authorship, it would be well advised to file an application to register the work with the US Copyright Office post haste.
–Brad R. Maurer