Second Circuit Holds Copyright Class Action Claims Must Be Based on Registered Copyright
By Andrew Ungberg — Edited by Wen Bu
In Re Literary Works in Electronic Databases Copyright Litigation
Second Circuit, November 29, 2007, No. 05-5943-cv(L)
On November 29, the Court of Appeals for the Second Circuit vacated and remanded a decision of the District Court for the Southern District of New York to certify a class of freelance authors and accept a settlement of their copyright infringement claims. The claims arose from unauthorized reproduction of the authors’ works on internet sites and web databases.
The Second Circuit vacated the district court’s ruling on jurisdictional grounds. Citing Section 411(a) of the Copyright Act, which provides that claims will not be instituted until preregistration or registration of the copyright claim has been made, the court held that the district court lacked jurisdiction over the claims raised by the majority of the class members, who had not registered their works. The court held that because § 411(a) requires each class member’s claims to be based on a registered copyright, the district court lacked the authority to both certify the class and accept any settlement.
Richard Pérez-Peña of the New York Times reports on the decision.
Google’s William Patry sharply disagrees with the court’s reading of § 411(a).
Judge Walker dissented, arguing that the majority fundamentally misunderstood the nature of § 411(a), treating it as a jurisdictional bar when in reality it is a claim-processing rule. Relying on Eberhart v. United States, 546 U.S. 12 (2005) and a series of other Supreme Court decisions to define the distinction, he argued that § 411(a) is more like claim-processing rules than a jurisdictional bar because the rule primarily allows consideration of the Copyright Office’s views on the validity of a copyright (which is not at issue in a settlement), is a prerequisite only to particular remedies, and is limited through a number of recognized exceptions. He stated that as Congress passed the Act to facilitate the enforcement of copyrights, the statute makes registration a prerequisite to recover damages, but not all members of a settlement-only class need to hold registered copyrights for the court to have jurisdiction over their claims.
Interestingly, Judge Walker and Judge Winter are possible members of the plaintiff class but declined to recuse themselves, issuing a separate opinion explaining their non-recusal.