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March 2010

Failure to Comply with the Copyright Registration Requirement of Section 411 Does Not Deprive Federal District Courts of Subject-Matter Jurisdiction

Reed Elsevier, Inc. v. Muchnick, _____ U.S. _____ (2010)

On March 2, 2010, the Supreme Court found that the copyright registration requirement of 17 U.S.C. § 411(a) was not jurisdictional, and failure to comply would not deprive federal district courts of subject-matter jurisdiction.

The Copyright Act, under 17 U.S.C. § 411(a), generally requires copyright holders to register their works before bringing a lawsuit for copyright infringement. While the named plaintiffs in the underlying, consolidated class action lawsuit owned at least one registered copyright, the class included both plaintiffs who had registered their copyrighted works and plaintiffs who had not. The United States District Court for the Southern District of New York referred the parties to mediation, and after three years of negotiations, the parties reached a settlement agreement in March 2005. The district court certified the class for settlement and approved the settlement agreement, overruling objections made by Irvin Muchnick and nine other authors, who in turn appealed.

The Second Circuit Court of Appeals sua sponte concluded that the district court lacked jurisdiction to certify the class and approve the settlement agreement.

On writ of certiorari, the United States Supreme Court reversed and remanded. In an opinion that was joined by Justices Roberts, Scalia, Kennedy, and Alito, Justice Thomas stated that a statutory precondition to filing a lawsuit is not automatically a jurisdictional prerequisite. Instead, the analysis must focus on the "legal character" of the requirement, which may be discerned by looking to the text, context, and relevant historical treatment of the statute.

The Court looked to the text and found that Section 411(a) did not clearly state that its registration requirement was jurisdictional. The Court also looked to the context, and found that Section 411(a) was located in a provision "separate" from the sections that granted federal courts subject-matter jurisdiction over copyright infringement actions, 28 U.S.C. §§ 1331 and 1338. Neither Section 1331 nor Section 1338 conditioned its jurisdictional grant on copyright registration.

The Court found no other factors to suggest that the registration requirement was jurisdictional. Instead, Section 411(a) expressly allows federal court to adjudicate infringement claims involving unregistered works in limited circumstances: (1) where the work is not a U.S. work, (2) where the infringement claim concerns rights of attribution and integrity under Section 106A, and (3) where the holder attempted to register the work and registration was refused. Section 411(c) also permits federal court adjudication where the author declares an intention to secure copyright in the work and registers the work within three months after its first transmission.

The Court clarified that its holding in Bowles v. Russell, 551 U.S. 205 (2007) was consistent with its instant holding: "Bowles did not hold that any statutory condition devoid of an express jurisdictional label should be treated as jurisdictional simply because courts have long treated it as such." Instead, the Court insisted that Bowles stands for the proposition that historical treatment of similar provisions is merely relevant to whether a statutory requirement is jurisdictional, where there are no contradictory factors.

The Court thus found that the district court had jurisdiction to approve the settlement, and reversed and remanded the case to the Second Circuit Court of Appeals.

The Supreme Court specifically declined to address "whether Section 411(a)'s registration requirement is a mandatory precondition to suit that?district courts may or should enforce sua sponte by dismissing copyright infringement claims involving unregistered works."

Justices Ginsburg, Stevens, and Breyer concurred in part and in the judgment. In her concurring opinion, Justice Ginsburg stated that Bowles relied specifically on a long line of Supreme Court decisions. While the amicus curiae cited over 200 opinions that characterized Section 411(a) as jurisdictional, none were opinions issued by the Supreme Court that would carry any precedential effect.

Practical Effects

For copyright infringement plaintiffs: This decision assures that where the registration of the copyright at issue is pending, federal district courts will have subject-matter jurisdiction of the infringement lawsuit.

For copyright infringement defendants: Where the copyright is not yet registered, a Rule 12(b)(6) motion to dismiss (for failure to state a claim on which relief may be granted) is now proper, not a Rule 12(b)(1) motion (for lack of subject-matter jurisdiction). The burden of preparation may be the same in both instances. Of course, if the registration is pending, it may not be worth the time and expense to bring either motion, since the plaintiff can simply re-file.

For everyone: This decision serves as an important reminder for authors to register their works, as federal registration allows a greater range of recoverable damages. The benefit of having this greater range of recoverable damages greatly outweighs the minimal costs of registration. Authors who produce a high volume of works, such as photographers, may also wish to contact their attorneys to install periodic plans for registration and maintenance.

Please click here to read the Court's opinion.

Intellectual Property

Yuo-Fong Amato
Richard P. Sybert


Intellectual Property