Foley & Lardner LLP

03 March 2009
Legal News: IP Litigation

Supreme Court Grants Certiorari to Decide Significance of Copyright Registrations

On March 2, 2009, the U.S. Supreme Court granted a writ of certiorari in Reed Elsevier, Inc. v. Muchnik, No. 08-103. This case presents a potentially crucial issue for copyright owners seeking to enforce their rights in court: Must a copyright owner obtain a copyright registration before a federal court can hear a lawsuit claiming infringement of the copyrighted work? More precisely, the Supreme Court frames the question as: Does 17 U.S.C. § 411(a) restrict the subject matter jurisdiction of federal courts over copyright infringement actions?

Section 411(a) of the Copyright Act (Act) provides that “no civil action for infringement of the copyright in any … work shall be instituted until preregistration or registration of the copyright claim has been made” in accordance with the Act. The Act also expressly permits copyright owners to file infringement lawsuits if they applied for copyright registration but their application was rejected. Thus, filing for a copyright registration is essential to initiating an infringement suit.

The U.S. Circuit Courts of Appeals, however, are split on the issue of whether a copyright owner is merely required to have properly filed an application for copyright registration (along with the requisite fee and deposit requirements), or whether it is necessary for the U.S. Copyright Office to have acted on the application (i.e., approved the registration or rejected the application) before an owner can file suit. The distinction can be vitally important for copyright owners because it can take months for the Copyright Office to act on an application, but owners often want to file suit immediately to enjoin infringing activity.

Reed Elsevier may resolve this split, although it is not certain to do so given the case’s unusual facts. Specifically, Reed Elsevier involves the proposed settlement of a class-action copyright infringement suit brought mainly by freelance authors against publishers who republished the authors’ works on the Internet. Although the named plaintiffs in the suit had obtained copyright registrations for their works, most of the other class members had not. After years of negotiation, the parties sought court approval for a settlement, which is necessary in a class-action suit. The district court approved the settlement, but the Court of Appeals for the Second Circuit vacated that decision, holding that the courts could not approve the settlement because they did not have subject matter jurisdiction over the claims of copyright owners who had not registered their works.

Given the way the Supreme Court has framed the issue on appeal, it seems likely that the Court’s decision will involve a close examination of the text and purpose of § 411, which could provide important guidance about how quickly a copyright owner can initiate a lawsuit after filing its application for registration.


Legal News Alert is part of our ongoing commitment to providing up-to-the-minute information about pressing concerns or industry issues affecting our clients and our colleagues. If you have any questions about this update or would like to discuss this topic further, please contact your Foley attorney or the following:

Sharon R. Barner
Chair, IP Department
Chicago, Illinois
312.832.4569
sbarner foley.com

Larry L. Shatzer
Chair, IP Litigation Practice
Washington, D.C.
202.672.5568
lshatzer foley.com

Jeffrey A. Simmons
Partner, IP Litigation Practice
Madison, Wisconsin
608.258.4267
jsimmons foley.com