Stites & Harbison, PLLC

On March 2, the U.S. Supreme Court issued a decision that clarified the role of copyright registration under U.S. law.  In Reed Elsevier, Inc. v. Muchnick, No. 08-103, a majority of the Court held that the Copyright Act’s Section 411(a), despite its seemingly clear language mandating registration with the Copyright Office, does not restrict a federal court’s subject-matter jurisdiction in a copyright infringement action.  Federal courts had previously divided on the issue of whether a plaintiff was required to obtain a final decision on registration from the Copyright Office before filing a lawsuit in court. 

The high court distinguished between a procedural “precondition” such as registration under Section 411(a), and requirements that are truly jurisdictional, namely “prescriptions delineating the classes of cases (subject matter jurisdiction) and the persons (personal jurisdiction)” implicating a court’s authority.  The decision’s reasoning follows that of the American Intellectual Property Law Association’s amicus curiae brief, co-authored by Stites & Harbison attorney, Amy Sullivan Cahill.

The Court’s holding does not suggest that copyright registration is no longer relevant.  In fact, registration of works with the U.S. Copyright Office remains a mandatory precondition, though not a jurisdictional requirement, to litigating a copyright infringement claim.  Copyright registration offers a number of other procedural and substantive legal advantages to copyright owners, including the ability to recover statutory damages and attorney’s fees. 

The Reed case arose from a set of consolidated class actions brought primarily by freelance authors.  Although many of the class members had registered their works with the Copyright Office, a small number had not.  After three years of mediation, the parties reached a settlement under which the authors would be compensated, in varying degrees, for the unauthorized copying of their works electronically.  Although ten authors objected to the proposed settlement, the District Court for the Southern District of New York approved the agreement’s terms as fair, reasonable, and adequate under Federal Rule of Civil Procedure 23(e).  On appeal, the Second Circuit Court of Appeals reversed the District Court’s approval on grounds that it lacked subject matter jurisdiction to enter a judgment with respect to those claims that arose in connection with unregistered works.

Justice Thomas was joined in the majority opinion by Justices Roberts, Scalia, Kennedy, and Alito.  Justices Ginsberg, Stevens, and Breyer filed a separate opinion concurring in part and concurring in the judgment.  Although the case was heard during the first term following her appointment to the Court, Justice Sotomayor did not participate in the decision because of her former association with the Second Circuit Court of Appeals.

Amy Sullivan Cahill is Counsel in the firm's Louisville office where her practice focuses on trademark and copyright litigation, counseling and advertising review, trademark prosecution, licensing and transactional matters including in the area of clinical research trials.