Reed Elsevier, Inc. v. Muchnick

Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154 (2010), was a decision by the Supreme Court of the United States involving copyright law. The Court held that failure to register a copyright under Section 411 (a) of the United States Copyright Act does not limit a Federal Court's jurisdiction over claims of infringement regarding unregistered works.

Background and facts of the case

Copyright lawsuits for unregistered works

The case is part of a long series of controversies in US courts about the remedies available for authors who failed to register their copyrights before bringing suit. As of 2014, no case was known where an author was considered to have a legitimate excuse for not having first registered its copyright.

District Court proceedings Reed Elsevier Inc. (et al.), the petitioners of this case, publish electronic content for other companies, such as The New York Times. The respondents, Irvin Muchnick, (et al.), are freelance writers and trade groups who represent other writers. In the 1980s, Elsevier gathered newspaper, magazine and journal articles and converted them to electronic format. It then sold access to these files without permission from the original writers. This resulted in the respondents initiating a class-action lawsuit against Elsevier for copyright infringement in the Southern District Court of New York. The Supreme Court of the United States had previously held, in New York Times Co. v. Tasini, that § 201(c) of the United States Copyright Act bars publishers from reproducing freelance works electronically without authorization specifically for the purpose. Tasini brought about the removal of "hundreds of thousands" of print media republished by those without proper permission. Eventually, the parties in Elsevier agreed to settle. Their agreement required compensation (up to $18 million) to the original publishers of the works that were reprinted without authorization. In return, the authors would release the publishers from liability regarding the unauthorized articles. As the District Court prepared for the settlement, the plaintiffs, led by Muchnick, objected to the settlement, questioning its fairness, but not the District Court's jurisdiction over the matter. The District Court overruled this objection and granted the settlement in September 2005. The objectors appealed this decision to the Second Circuit Court of Appeals.

Appellate Court proceedings

The Second Circuit held, sua sponte, that the District Court did not have jurisdiction over the previous claims, nor authority for settlement approval with respect to those claims. The Second Circuit cited § 411 (a) of the United States Copyright Act as support, as the act states: "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 accordance with this title.” The Second Circuit both vacated and remanded the prior court's judgement. The Supreme Court granted certiorari on March 2, 2009.

Supreme Court proceedings

The United States Supreme Court granted certiorari to review Elsevier on March 2, 2009. The court addressed the question, "Does 17 U.S.C. §411(a) restrict the subject matter jurisdiction of the federal courts over copyright infringement actions?". This rule states:

[N]o 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. In any case, however, where the deposit, application, and fee required for registration have been delivered to the Copyright Office in proper form and registration has been refused, the applicant is entitled to institute a civil action for infringement if notice thereof, with a copy of the complaint, is served on the Register of Copyrights. The Register may, at his or her option, become a party to the action with respect to the issue of registrability of the copyright claim by entering an appearance within sixty days after such service, but the Register’s failure to become a party shall not deprive the court of jurisdiction to determine that issue. The petitioners argued that the registration requirement of §411(a) is a mandatory prerequisite to initiating a lawsuit based on claim of infringement and is not a restriction on the federal court's jurisdiction.See Brief for Petitioners at 15, Reed Elsevier, Inc. v. Muchnick, No. 08-103, (U.S. argued Oct. 7, 2009). Speaking on the purpose of the statute, they also argued that Congress never intended the registration requirement to affect jurisdiction and that the circuit courts interpreting this had failed to present the "bright line" test present in Arbaugh v. Y & H Corp.Id. at 40-45 (citing Arbaugh v. Y & H Corp., 546 U.S. 500, 516 (2006) (“If the Legislature clearly states that a threshold limitation on a statute’s scope shall count as jurisdictional, then courts and litigants will be duly instructed and will not be left to wrestle with the issue.. . . But when Congress does not rank a statutory limitation on coverage as jurisdictional, courts should treat the restriction as nonjurisdictional in character.”)). Regardless of whether or not §411(a) is jurisdictional, the petitioners pointed out that the restriction would apply only to initiating actions, not settling them, as jurisdiction over an action generally extends to settlements that release claims that the court lacked authority to try.See id. at 45-48. The petitioners cautioned the court that, if the Second Circuit's "drive-by" jurisdictional characterization of §411(a) were allowed to stand, it would block “the ability of parties to reach negotiated resolutions of their disputes involving unregistered works” and leave “the nation’s electronic databases and archives. . . permanently depleted."See Id. at 3. The Respondents presented similar arguments, expressing that §411(a) does not limit jurisdiction but rather functions as a 'claim-processing rule,' as a prerequisite to lawsuit that could either be enforced or waived by defendants.See Brief for Respondents Pogrebin et al. in Support of Petitioners at 5, Reed Elsevier, Inc. v. Muchnick, No. 08- 103, (U.S. argued Oct. 7, 2009); see also Brief for the Muchnick Respondents at 18-32, Reed Elsevier, Inc. v. Muchnick, No. 08-103, (U.S. argued Oct. 7, 2009). To support this, Respondents cited several circuit court opinions where the jurisdiction requirement was waived or eased and thus treated "in a manner fundamentally inconsistent with its being subject matter jurisdictional.”Brief for Respondents (Pogrebin et al.) at 5. Respondents also argued that, even if the district court lacked subject matter jurisdiction in regard to the case, it possessed supplemental jurisdiction because the claims of the authors with unregistered copyrights arose from the same case or argument as those authors holding registered copyrights.See id. at 18-23; see also Brief for the Muchnick Respondents at 36-44. The United States, acting as Amicus curiae, advocated vacatur of the Second Circuit's decision. They, similarly to Petitioners, argued that §411(a) does not limit a federal court's subject matter jurisdiction, but acts as a mandatory prerequisite to lawsuit that should be strictly enforced, when raised by a party.See Brief for the United States as Amicus Curiae Supporting Vacatur and Remand at 20-25, Reed Elsevier, Inc. v. Muchnick, No. 08-103, (U.S. argued Oct. 7, 2009). The United States argued that, even though district courts should normally enforce §411(a) Sua sponte (even without a defendant's motion for dismissal), once the case has reached the court of appeals, the district court would have expended its resources enough for the strict application of §411(a) to be considered a waste of judicial resources.See id. at 25-31. As a result, the U.S. argued that non-compliance with the registration requirement should not be seen as a basis for vacating the district court's ruling.See id. at 30. As both parties argued for the same outcome, the Supreme Court appointed Deborah Jones Merritt to serve as amicus curiae, supporting the second circuit's judgement. Merritt argued that, not only does §411(a) clearly restrict the subject matter jurisdiction of federal courts,See Brief of Court-Appointed Amicus Curiae in Support of the Judgment Below at 17-26, Reed Elsevier, Inc. v. Muchnick, No. 08-103, (U.S. argued Oct. 7, 2009). but courts, scholars, and legislators have previously interpreted §411(a) as being jurisdictional.See id. at 26-44. She also argued that §411(a) serves vital public purposes such as supporting a public record of copyright claims, shielding federal courts from the burden of unnecessary litigation, potentially preventing and protecting defendants from frivolous lawsuits, and furthering the collections of the Library of Congress.See id. at 44-57. 17 U.S.C. §407 requires copyright owners, within three months of publication, to deposit two copies of their work with the U.S. Copyright Office for inclusion in the Library of Congress. This requirement ensures that the nation’s public library contains copies of every work published in the United States. 17 U.S.C. §407(a). She then argued that the integrity of the judicial process precludes the parties from waiving §411(a) because both parties invoked the jurisdictional bar before District Court to defend the fairness of their settlement, which rewarded the owners with registered copyrights at the expense of owners with unregistered copyrights.See Brief of Court-Appointed Amicus Curiae at 57-65. Finally, Merritt argued that neither a special rule for settlement nor the supplemental jurisdiction act cured this jurisdictional defect for two reasons: (1) Courts must have jurisdiction over class actions in order to terminate the claims of absent class members and (2) the many authors and databases involved in this lawsuit did not constitute a single case or controversy.See id. at 65-69. The Computer and Communications Industry Association (CCIA) also presented an amicus brief supporting the second circuit's judgement. Similarly to Professor Merritt, the CCIA cast the registration requirement as a necessary protection for Internet service providers, noting that, "[w]hen every blog and tweet might be protectable under copyright, the registration requirement dramatically reduces technology companies’ potential exposure to copyright infringement claims"Brief for Amici Curiae Computer & Communications Industry Association and Netcoalition in Support of the Judgment Below at 3, Reed Elsevier, Inc. v. Muchnick, No. 08-103, (U.S. argued Oct. 7, 2009). They argued that the Second Circuit's opinion was correctly decidedSee id. at 23-35. and that Petitioners' writ of certiorari should be dismissed on two grounds. First, there was no case or controversy before the court because Petitioners themselves argued in lower courts that §411(a) was jurisdictional in nature.See id. at 7-18. Second, circuit courts were in agreement that §411(a) limits federal courts' subject matter jurisdiction; therefore, there was no circuit split, which is the traditional grounds on which the Supreme Court grants certiorari. Thus, the CCIA urged that the Supreme Court dismiss the writ. The court heard oral argument on October 7, 2009.

Holding