Reed Elsevier v. Muchnick

Citation

In re Literary Works in Electronic Databases Copyright Litigation, 509 F.3d 116, 85 U.S.P.Q.2d (BNA) 1217 (2d Cir. 2007) (full-text), rev'd and remanded, Reed Elsevier, Inc. v. Muchnick, __ U.S. __, 130 S.Ct. 1237 (2010) (full-text).

Factual Background

Shortly after the U.S. Supreme Court decided New York Times Co. v. Tasini, three preexisting class action copyright infringement suits, which had been suspended pending that decision, were activated and consolidated in the U.S. District Court for the Southern District of New York. A fourth, nearly identical action was coordinated with that consolidated action. Together, these claims comprise the litigation discussed in this article. Like Tasini, Reed Elsevier v. Muchnick was a class action lawsuit.

The plaintiffs in Reed Elsevier consisted of individual authors and trade groups representing authors who produced written works for certain publishers on a freelance basis. The publishers had licensed the articles from the freelance authors for print publication but later reproduced the articles in their electronic databases without compensating or otherwise obtaining the consent of the authors. Based on their copyrights in the freelance works, the plaintiffs brought suit against the publishers and the electronic database services for copyright infringement.

After the Tasini decision had affirmed the plaintiffs’ right to control electronic reproduction of their works, the district court referred the parties to mediation. In 2005, after three years of negotiations, the parties reached an agreement that sorted plaintiffs’ claims into three groups for compensation purposes. Category A claims concerned copyrights that were eligible for statutory damages and attorney’s fees under the Copyright Act. Category B claims concerned copyrights that qualified for actual damages only. Category C claims, by far the most numerous, largely involved copyrights that were unregistered, and therefore their owners were precluded from bringing individual suits for damages of any sort.

The settlement assigned a damages formula to each type of claim. Category A claimants received a flat fee. Category B claimants received the greater of either a flat fee or a percentage of the original price of the work. Category C claimants also received the greater of either a flat fee or a percentage of the original price of the work. However, if the cost of all claims (plus the cost of notice, administration, and attorney’s fees) exceeded $18 million, then the amount paid to Category C claimants was reduced — potentially to zero — before the claims of Category A and B claimants were affected. This feature was called the “C-reduction.” In return for financial compensation, the plaintiffs agreed to release all past, present, and future claims against the defendants related to their articles’ appearance in electronic databases.

District Court Proceedings

Having reached an agreement, the plaintiffs and defendants moved the district court for class certification and settlement approval. Objectors opposed the motion on the ground that the settlement was inadequate and unfair to Category C claimants because they were paid little and singled out for reduction if the total claims exceeded $18 million. Objectors also maintained that the disparate treatment of Category C claimants illustrated that the named plaintiffs, who each possessed at least some registered copyrights, did not adequately represent those absent class members who possessed only unregistered copyrights. The defendants responded that Category C claimants were adequately represented and treated fairly because they would otherwise have been unable to bring actions for infringement at all under 17 U.S.C. §411(a) because their copyrights were unregistered.

After prolonged proceedings, the district court granted final class certification and final settlement approval in September 2005. Objectors appealed, again challenging the settlement’s fairness and the adequacy of the named plaintiffs’ representation.

Appellate Court Proceedings

Before hearing oral argument, the Second Circuit Court of Appeals “became concerned that the District Court and the parties had passed over a nettlesome jurisdictional question” and sua sponte ordered the parties to address “whether the District Court had subject matter jurisdiction over claims concerning the infringement of unregistered copyrights.” Due to their mutual interest in achieving class certification and settlement approval at this stage, both plaintiffs and defendants argued that the Copyright Act’s registration requirement is not jurisdictional in nature. They contended that, if a plaintiff brings a single claim based on a registered copyright, the district court acquires jurisdiction over any and all related copyright claims, even if those other claims arise from unregistered copyrights. They also argued that jurisdiction in this case was proper because the named plaintiffs’ works were registered.

A divided panel of the Second Circuit disagreed. The majority opinion first observed that Congress provides federal courts with only limited subject matter jurisdiction. District courts derive their jurisdiction in copyright actions from two sections of Title 28 of the U.S. Code, §1331 and §1338. The first is a general grant of original jurisdiction over civil actions arising under federal law, and the second provides courts with a more specific grant of original jurisdiction over copyright infringement cases. However, the appellate court asserted that Congress has supplemented these basic jurisdictional grants with a separate statutory section — §411(a) of the Copyright Act, which “limits a district court’s subject matter jurisdiction to claims arising from registered copyrights only.”

Relying on its opinions in Well-Made Toy Mfg. Corp. v. Goffa Int'l Corp. and Morris v. Business Concepts, Inc. and distinguishing the Supreme Court’s ruling in Eberhart v. United States, the appellate court held that the requirement of copyright registration prior to an infringement suit is jurisdictional and that the phrase “copyright claim” referred to each claim within a purported class. Thus, because many of the plaintiffs’ copyrights were unregistered, the Second Circuit held that the district court lacked the authority to certify the class. It also held that this “jurisdictional defect” precluded supplemental jurisdiction under 28 U.S.C. §1367(a) as well.

Judge Walker dissented, arguing that, although the Second Circuit had labeled §411(a) as jurisdictional in the past, the Supreme Court’s ruling in Eberhart, which encouraged lower courts to “more carefully distinguish between true jurisdictional bars and claim-processing rules that may be waived,” merited a re-evaluation of the copyright registration requirement. Categorizing Section 411(a) as an “enforcement mechanism” rather than a “rights-creating statute” and relying on Second Circuit precedent that “not all members of a settlement-only class need to possess a valid cause of action under the applicable law,” he concluded that “the fact that some of the otherwise presumably valid copyrights have not been registered is an insufficient basis for undoing this class-action settlement.”

U.S. Supreme Court Proceedings

The U.S. Supreme Court granted certiorari to review the case on the following question: “Does 17 U.S.C. §411(a) restrict the subject matter jurisdiction of the federal courts over copyright infringement actions?”

17 U.S.C. §411(a) reads as follows:

[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.

Petitioners in the case (Reed Elsevier et al.) argued that the Section 411(a) registration requirement is a mandatory prerequisite to suit, not a restriction on the court’s jurisdiction. Drawing on the text, structure, legislative history, and purpose of the statute, they argued that Congress never intended the registration requirement to be jurisdictional and that circuit courts interpreting it thus had failed to implement the “bright line” test articulated in Arbaugh v. Y&H Corp. Even if Section 411(a) is jurisdictional, petitioners argued that the restriction applies only to instituting actions, not settling them, because jurisdiction over an action generally extends to approving settlements that release claims the court lacked authority to try. They warned that, if the Second Circuit’s “drive-by” jurisdictional characterization of Section 411(a) were allowed to stand, it would thwart “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.”

Respondents (Pogrebin et al. and Irvin Muchnick et al.) advanced similar arguments, stating that Section 411(a) is not a bar to jurisdiction but rather a claim-processing rule, a prerequisite to suit that could be enforced or waived by the defendants. As support, respondents cited several circuit court opinions in which the jurisdiction requirement was waived or relaxed and therefore treated “in a manner fundamentally inconsistent with its being subject matter jurisdictional.” They also argued that, even if the district court had lacked original subject matter jurisdiction over the case, it had supplemental jurisdiction because the claims of the Category-C authors with unregistered copyrights arose out of the same case or controversy as the claims of the Category-A and B authors whose copyrights were registered.

The United States, as amicus curiae, also supported vacatur of the Second Circuit’s judgment. Like petitioners, the U.S. argued that Section 411(a) does not limit a federal courts’ subject matter jurisdiction, but rather serves as a mandatory prerequisite to suit that should be strictly enforced when raised by a party. The U.S. argued that, while district courts should ordinarily enforce §411(a) sua sponte even if the defendant did not move to dismiss on those grounds, once the case has reached the court of appeals, the district court has already expended significant resources, so insisting on a rigid application of §411(a) would waste judicial resources. Therefore, according to the U.S., non-compliance with the registration requirement in this case provided no basis for vacating the district court’s judgment.

With both petitioners and respondents advocating the same outcome — that the Supreme Court overturn the Second Circuit’s ruling — an unusual situation arose in which no party argued for the Court to affirm the judgment below. As a result, the Court appointed Professor Deborah Jones Merritt to serve as amicus curiae in support of the Second Circuit’s judgment. According to Professor Merritt, not only does the plain language of §411(a) clearly restrict the subject-matter jurisdiction of federal courts, but courts, legislators, and scholars have traditionally interpreted §411(a) as being jurisdictional.

Furthermore, she argued that §411(a) serves such vital public purposes as supporting a public record of copyright claims, shielding federal courts from burdensome litigation, protecting defendants from frivolous lawsuits, and supplying the Library of Congress collections.

Next, she argued that the integrity of the judicial process precludes the parties from waiving §411(a) because both parties invoked the jurisdictional bar before the district court to defend the fairness of their settlement, which rewarded the owners of registered copyrights at the expense of unregistered copyright owners. Finally, Professor Merritt argued that neither a special rule for settlement nor the supplemental jurisdiction act cured this jurisdictional defect because (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.

The Computer and Communications Industry Association (CCIA) also provided an amicus brief in support of the Second Circuit’s judgment. Echoing Professor Merritt’s arguments, 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.” CCIA argued that the Second Circuit’s opinion was correctly decided and that the petitioners’ writ of certoriari should be dismissed on two grounds. First, there was no case or controversy before the court because petitioners themselves argued in the lower courts that §411(a) was jurisdictional in nature. Second, circuit courts were in agreement that §411(a) limits federal courts’ subject matter jurisdiction; therefore, there was no circuit split, the traditional grounds on which the Supreme Court grants certiorari. For these reasons, CCIA urged that the Supreme Court dismiss the petitioners’ writ.

The Supreme Court heard oral argument on October 7, 2009, although it has not yet issued its opinion. The outcome of this case will not only affect the particular settlement at issue, but may well have broader implications for authors, publishers, and the general public.