In the Ninth Circuit, Plaintiffs Need Only Apply
Court Adopts “Application Approach” to Registration as a Precondition to Filing Suit

The Ninth Circuit has chosen sides in the debate over what constitutes “registration” sufficient to file suit, adopting what has come to be referred to as the “application approach.”  Cosmetic Ideas, Inc. v. IAC/InteractiveCorp, __ F.3d __ (9th Cir. 2010)Section 411(a) of the Copyright Act provides that “no action for infringement of the copyright in any United States work shall be instituted until registration of the copyright claim has been made in accordance with this title.”  In order to register a copyright, the claimant must file with the Copyright Office (1) an application, (2) a deposit copy of the work being registered, and (3) a filing fee.  If, upon examination, the Copyright Office determines that the material deposited is copyrightable and that the other requirements of the statute have been met, then it registers the claim and issues a certificate of registration.  The Copyright Act gives no guidance, however, as to whether “registration” for purposes of filing suit occurs upon submission of the application, deposit copy and filing fee (the “application approach”), or whether it occurs after the Copyright Office determines that the material deposited is copyrightable and “registers” the copyright (the “registration approach”).  Courts have split on the question. Compare, e.g., La Resolana Architects v. Clay Realtors Angel Fire, 416 F.3d 1195 (10th Cir. 2005) (collecting cases and adopting registration approach) with In re Napster, Inc., 191 F. Supp. 2d 1087 (N.D. Cal. 2002) (application approach).

The court started its search for an answer in the plain language of the Copyright Act.  Sections 408 through 412 each addresses some aspect of registration.  Portions of sections 410 and 411 suggest that registration requires the Copyright Office to take affirmative steps after the filing of the application, deposit copy and fee, indicating that the registration approach is the correct one.  But the court found that other sections lead to the opposite conclusion.  Section 408, for example, states that a copyright owner “may obtain registration . . . by delivering to the Copyright Office” the application, deposit copy and fee.  Moreover, § 410(d) provides that the effective date of registration is the date the application, deposit copy and fee are received by the Copyright Office – not when the Copyright Office takes action to register or deny the claim.

Because the court found the plain language of the Act conflicting, it turned to the purpose of the statute and its underlying policies.  Though the 1976 Act made registration optional, Congress valued having a robust registry of existing copyrights.  Accordingly, it built various incentives into the Act to encourage copyright owners to register and deposit copies of their works.  For example, in order to be eligible to recover statutory damages and attorney’s fees in the event of infringement, the copyright owner must have registered the work before the infringement began.  The registration certificate is prima facie evidence of the validity of the copyright and the facts stated in the form when the work is registered before, or within five years of, publication of the work.  Perhaps most importantly, registration is a prerequisite to bringing a lawsuit for copyright infringement.

In view of these incentives, the court found that the “application approach better fulfills Congress’s purpose of providing broad copyright protection while maintaining a robust federal register.”  The application approach avoids “unnecessary delay” in litigation by allowing a plaintiff to sue immediately after filing the application for registration, rather than waiting for the Register to take action, during which time the infringer could continue to profit from its wrongful conduct.  Moreover, a plaintiff could lose its rights due to the statute of limitations while waiting for registration to issue.  Given that § 411(a) allows a plaintiff to litigate its claim even if the Copyright Office rejects registration, the court found it made little sense to put potential plaintiffs in such a state of “legal limbo.”

With the Ninth Circuit now having signed on to the “application approach,” the tally of circuits which have weighed in on the issue stands as follows:

Application approach: Fifth, Seventh and Ninth Circuits

Registration approach: Tenth and Eleventh Circuits

District courts in circuits which have not yet ruled on the issue remain all over the map – sometimes even within the same district.

Practice tip

Before filing suit, it pays to know whether your circuit has weighed in on this issue, and if so, whether it adopted the application or registration approach. If you find yourself in a “registration” jurisdiction and are eager to file suit on an unregistered copyright, consider taking advantage of the “special handling” registration process, which provides for expedited registration of the claim upon payment of a premium filing fee (currently, $760 instead of the $35 charged for normal handling of electronically filed claims). Particulars of this process can be found in Copyright Office Circular 10.

Snatching Settlement From the Jaws of Defeat
Supreme Court Holds Registration a Precondition to Suit, Not Jurisdictional

Section 411(a) of the Copyright Act provides that “no civil action for infringement of the copyright in any United States work shall be instituted until . . . registration of the copyright claim has been made. . .” For decades, courts have ruled and commentators (including myself) have pronounced that registration is a “jurisdictional prerequisite” to the filing of an infringement action. Yesterday, however, the Supreme Court ruled that “Section 411(a)’s registration requirement is a precondition to filing a claim that does not restrict a federal court’s subject-matter jurisdiction.”  Reed Elsevier, Inc. v. Muchnick, 559 U.S. __ (2010). The case follows a recent Supreme Court trend against so-called “drive-by jurisdictional rulings,” which reflexively characterize limitations as jurisdictional in nature without conducting a thorough analysis to distinguish true jurisdictional conditions from mere claim-processing rules or preconditions to filing suit.

The opinion, authored by Justice Thomas, relies heavily on the text and structure of the Copyright Act in reaching its conclusion. Though the word “jurisdiction” appears in § 411(a), the section does not expressly state that its registration requirement is jurisdictional. The section concludes by stating:

“The Register [of Copyrights] may, at his or her option, become a party to the action with respect to the issue of registrability of the copyright claim . . . but the Register’s failure to become a party shall not deprive the court of jurisdiction to determine that issue.”

The Court found that the limiting phrase “that issue” refers only to a court’s authority to determine the registrability of a copyright claim which has been denied by the Register of Copyrights, even if the Register does not appear in the infringement action. Congress added this provision to relieve copyright claimants of the necessity of seeking mandamus against the Register of Copyrights before bringing suit, which had been a requirement under prior law. Thus, the use of the word “jurisdiction” in this context does not authorize a court, as a general matter, to adjudicate claims for infringement of unregistered works.

Moreover, § 411(a) explicitly allows courts to hear claims with respect to three particular types of unregistered works: (1) foreign works; (2) claims involving the rights of attribution and integrity under § 106A; and (3) works which the Register of Copyrights denied registration. And § 411(c) authorizes courts to adjudicate infringement actions involving certain types of broadcast works if the copyright owner declares an intention to seek registration and then registers the work within three months of its transmission. The Court reasoned that it would be “at least unusual to ascribe jurisdictional significance to a condition subject to these sorts of exceptions.” Structurally, § 411(a)’s registration requirement is located in a provision separate from those granting federal courts subject-matter jurisdiction over copyright claims (28 U.S.C. §§ 1331, granting jurisdiction over federal questions generally, and 1338(a), addressing copyright claims specifically), lending further weight to the argument that Congress did not intend the section to act as a limit on judicial power.

The Court also analyzed § 411(a) against the backdrop of two recent cases in which the Court differentiated between jurisdictional and claim-processing rules. In the first, Arbaugh v. Y & H Corp., 546 U.S. 500 (2006), the Court held that Title VII’s definition of an employer subject to the statute as including only those having fifteen or more employees was an element of a plaintiff’s claim for relief, not a jurisdictional issue. The applicable jurisdictional section of Title VII made no reference to the 15-employee threshold, which instead appeared in a separate provision that did “not speak in jurisdictional terms or refer in any way to the jurisdiction of the district courts.”

In Bowles v. Russell, 551 U.S. 205 (2007) – an opinion also authored by Justice Thomas – the Court held that the 14-day deadline in the Federal Rules of Appellate Procedure for filing notices of appeal was “mandatory and jurisdictional,” and could not be extended by court order. Interestingly, the Bowles opinion relied much more heavily on judicial precedent than on statutory text (“We have long and repeatedly held that the time limits for filing a notice of appeal are jurisdictional in nature”), an argument that failed to win the day in Reed Elsevier despite record citations to over 200 lower court opinions characterizing § 411(a) as jurisdictional. Justice Ginsburg, concurring in Reed-Elsevier, attempted to reconcile this apparent divergence by noting that Bowles relied on a “long line of [Supreme Court] decisions left undisturbed by Congress,” whereas the cited 411(a) decisions issued from lower courts and amounted to “drive-by jurisdictional rulings that should be accorded no precedential effect.”

Why It Matters

Jurisdictional rules “speak to the power of the court rather than to the rights or obligations of the parties,” whereas claim-processing rules establish a substantive element of a particular claim. Because a court has no power to act without jurisdiction, a jurisdictional requirement may not be waived either intentionally or unintentionally by the parties or by the court. The question of the court’s jurisdiction may be raised at any time during the litigation, including after judgment and on appeal. And the court may raise the issue itself (“sua sponte”) even if the parties do not. In Arbaugh, the defendant employer did not raise the employee-numerosity issue until after it lost at trial. Had the requirement been jurisdictional in nature, the trial court would have been required to throw out the jury verdict and dismiss the case entirely (in fact, the trial court so concluded and the Fifth Circuit affirmed). Instead, the Supreme Court held that it constituted an element of the plaintiff’s claim. The objection that a plaintiff has failed to state a cause of action may not be made after judgment; thus, it is likely that on remand the defendant employer would have been found to have waived the objection.

In Reed-Elsevier, the jurisdictional issue arose only on appeal after lengthy proceedings below. The Reed-Elsevier case stemmed from the Supreme Court’s 2001 opinion in New York Times Co. v. Tasini, 533 U.S. 483 (2001), in which the Court held that the publishers of various online databases such as LEXIS/NEXIS infringed the copyrights of freelance authors by reproducing their works electronically without permission. On remand, the case was consolidated with other lawsuits brought by freelance authors based on the same theory of liability.

The consolidated Reed-Elsevier complaint asserted claims by named plaintiffs, each of whom owned at least one copyrighted work registered pursuant to § 411(a), and also purported to state claims on behalf of a class of authors, some of whom had not registered their copyrighted works. Because of the size and complexity of the consolidated action, the District Court referred the case to mediation. The parties conducted extensive negotiations over a period of three years before reaching a proposed settlement agreement in 2005. The parties then moved to certify a settlement class and to approve the settlement agreement. A handful of freelance authors objected to the settlement. The District Court overruled the objections, certified the class, and approved the settlement agreement.

The objectors appealed, raising both procedural and substantive objections to the settlement agreement. At no time, however, did any party argue that the District Court lacked subject-matter jurisdiction over the unregistered copyright claims. (Indeed, no party objected to subject-matter jurisdiction even before the Supreme Court; the Court was forced to appoint amicus counsel to play devil’s advocate and argue against jurisdiction.) Shortly before oral argument, the Court of Appeals, acting on its own initiative, ordered the parties to submit briefs on the question whether § 411(a) deprived the District Court of subject-matter jurisdiction over those claims. A divided panel of the Second Circuit held that the District Court lacked jurisdiction to certify a class and to approve a settlement involving unregistered works.

The Supreme Court’s opinion leaves unresolved the procedural and substantive objections to the settlement raised below, which will be addressed on remand. But the parties have at least survived to fight another day, rather than seeing the culmination of three years of arduous negotiations evaporate at the flick of the Second Circuit’s pen.

The Supreme Court also declined to address the question whether § 411(a)’s registration requirement is a “mandatory precondition” to suit that district courts may enforce sua sponte by dismissing claims even absent objection by the opposing party. And as a related matter, debate continues to rage at the district court level as to what, precisely, constitutes registration adequate to initiate suit. Must a plaintiff actually receive the registration certificate from the Copyright Office in order to proceed, or is the submission of the application, deposit copy and application fee sufficient? Compare, e.g., In re Napster, Inc., 191 F. Supp. 2d 1087 (N.D. Cal. 2002) with La Resolana Architects v. Clay Realtors Angel Fire, 416 F.3d 1195 (10th Cir. 2005). Resolution of these issues must await another day.

Berne, Baby Berne
Court upholds registration requirement as prerequisite for statutory damages and attorney’s fees

The United States became a member of the Berne Convention for the Protection of Literary and Artistic Works effective March 1, 1989.  The Berne Convention is the foremost multilateral copyright treaty in effect today; most of the economically significant countries in the world adhere to it.  The most significant accomplishment of the Berne Convention was to eliminate the requirement of any “formalities” as a prerequisite to copyright protection.  I’ve always thought of this as the “black tie optional” rule for copyright; works are protected by copyright in Berne member countries even if they are published without a copyright notice and if they are never registered for copyright protection.  Before the U.S. signed onto Berne, works published without a copyright notice risked injection into the public domain.  Today, works are protected from the moment they are fixed in a tangible medium of expression, without need for notice or registration. 

Registration remains essential, however, for the enforcement of copyright in domestic works and for the availability of certain remedies.  Under Section 412 of the Copyright Act, in order to be eligible to recover statutory damages for infringement and attorney’s fees, a copyright owner must have registered the work before the infringement began (or within three months of first publication of the work).  Statutory damages are critical in cases where it is difficult to prove actual damages, and provide copyright owners with significant leverage in settlement negotiations.  Thus, Section 412 acts as a powerful incentive for authors and owners to register their works promptly. 

In Elsevier B.V. v. UnitedHealth Group, Inc., 2010 U.S. Dist. LEXIS 3261 (S.D.N.Y. Jan. 14, 2010), the Southern District of New York addressed the question whether, by virtue of the Supremacy Clause, the Berne Convention supersedes Section 412 with respect to unregistered foreign works.  In other words, may plaintiffs suing to enforce copyrights in unregistered foreign works recover statutory damages and attorney’s fees?  The answer hinged on whether Berne was a “self-executing” treaty under U.S. law – that is, a treaty which becomes law upon ratification.  By contrast, Congress must affirmatively enact treaties which are not self-executing in order for their provisions to take effect under domestic law.  

The court concluded that the Berne Convention was not self-executing.  In adopting the Berne Convention Implementation Act, Congress explicitly stated that the treaty was “not self-executing under the Constitution and the laws of the United States”; that U.S. obligations under Berne “may be performed only pursuant to appropriate domestic law”; and that U.S. copyright law, as amended by the Implementation Act, satisfied U.S. obligations under Berne.  Moreover, Article 36 of Berne itself states that the treaty is not self-executing:

“(1) Any country party to this Convention undertakes to adopt, in accordance with its constitution, the measures necessary to ensure the application of this convention. 

(2) It is understood that, at the time a country becomes bound by this Convention, it will be in a position under its domestic law to give effect to the provisions of this Convention.” 

Congress passed the Implementation Act specifically to revise U.S. law to comply with the Berne Convention.  Though the Implementation Act amended other sections of the Copyright Act, it deliberately left Section 412 unchanged.  For instance, Congress eliminated the requirement in Section 411(a) that foreign works be registered as a prerequisite to maintain an infringement action, finding the requirement to constitute a prohibited formality.  On the other hand, Congress concluded that the statutory incentives for registration in Section 412 “are not preconditions for the ‘enjoyment and exercise’ of copyright” because “they do not condition the availability of all meaningful relief on registration, and therefore are not inconsistent with Berne.” 

Because the Berne Convention was not self-executing, the court concluded that it could not preempt Section 412 of the Copyright Act.  Owners of foreign works who might seek to enforce their copyrights in the United States would thus be well advised to register their works in order to maximize the tools and remedies available to them in the event of infringement.

Stop! In the Name of Copyright – Interim Copyright Office Regulation Exempts Mandatory Deposit of Online Works

Effective February 24, 2010, electronic works published in the United States only in online, and not physical, form will be exempt from mandatory deposit unless the Copyright Office makes a demand for deposit of such works. The interim regulation will identify categories of online works subject to demand, the first of which will be electronic serials. The regulation will also establish procedures for issuing and responding to a deposit demand; redefine the term “complete copy” as applied to deposit of online-only works; and establish criteria for determining the “best edition” of online works to be deposited. The Copyright Office will seek comments on the implementation of the regulation later in 2010. A more detailed discussion of the contents of and rationale behind the interim regulation can be found at 75 Fed. Reg. 3863.

It is important to remember that mandatory deposit is distinct from the deposit requirement associated with registration. Copies deposited with an application for registration serve to identify the work. The purpose of mandatory deposit, on the other hand, is to provide the Library of Congress with an archival copy of all works published in the United States. Although copyright registration is optional, all copyrightable works that are published in the United States (with limited exceptions) are subject to mandatory deposit.

Within three months of publication, two copies of the “best edition” of every copyrightable work must be deposited with the Copyright Office. No application for registration need accompany the mandatory deposit; however, a deposit made in connection with registration will satisfy the mandatory deposit requirement.

At any time after a work is published, the Register of Copyrights may demand the required deposit copy. If the required deposit is not made within three months of this demand, the person or entity obligated to make the deposit may be liable for a fine, plus the retail price of the copies. Copyright Office Circular 7d discusses the requirements of mandatory deposit in more detail.