Reed Elsevier v. Muchnick, Oral Arguments (Oct. 7, 2009).

The Supreme Court heard oral arguments in Read Elsevier v. Muchnick yesterday. There were some questions, by Chief Justice Roberts in particular, on the overall merits of whether 411(a) is a jurisdictional requirement or merely a case processing rule. But a large portion of the arguments, if not the lion’s share, centered on the more narrow question of whether to frame 411(a) as a strict rule (which courts could raise sua sponte, and could not be waived by a defendant), or a common defense (which courts cannot raise sua sponte, and which could be waived by litigants).

Justice Ginsberg played a large role in the questioning to the extent that I would be somewhat surprised if she isn’t the author of the opinion. Many of Justice Ginsburg’s questions seemed to probe particulars on how to frame a decision, and not the broad questions of the dispute. As a side note, Justice Sotomayor, who was as an intellectual property practitioner before being appointed to the Southern District of New York, did not ask a question during the arguments. [Edit: SCOTUSBLOG brings word that Justice Sotomayor recused herself from the appeal. Justice Sotomayor presided over N.Y. Times v. Tasini, the dispute underlying Reed Elseveier v. Muchnick, when it was heard in the S.D.N.Y.]

Justice Ginsburg early on raised questions about the advantages and disadvantages of a hard-line case processing rule:

JUSTICE GINSBURG: Do you agree with the –with the government that it’s mandatory for the district court but prohibited to the court of appeals? The government has this hybrid where, because of the public purposes served by registration, not only can but the district court should raise the failure to register on its own, but then the government says once you have a final judgment in district court, it’s no longer open for the court of appeals to raise it on its own.

Do you agree with that or do you say it’s for the defendants to raise, and if they don’t raise it, too bad?

MR. SIMS [Ed: Mr. Sims represented the petitioner, arguing that 411(a) is a case-processing rule]: Justice Ginsburg, we certainly agree with the government with respect to the court of appeals. With respect to the district court, on the one hand, my clients don’t — are satisfied with the government’s position. On the other hand, as Justice Scalia’s decision, I think, in Day v. McDonough pointed out, the traditional default rule really is that defenses are up to defendants to raise.

But if the Court felt that the provision was important enough so that it wanted to impose on district courts the obligation of strict policing, I think it could. But as I say, I have been practicing copyright law for 25 years; I’ve never seen a defendant who either missed a defense or chose not to raise it.

In this particular kind of situation where there is no reason at all, I think, to suspect that defense counsel will not raise 411 whenever — none of the cases that Ms. Merritt raises for example, involve situations of waiver, where the issues weren’t raised until the court of appeals — I think that the Court can rely, frankly, on defendants and on the ability of district judges to nudge defense counsel when they need nudging.

Justice Ginsberg also pressed the advocate from the Solicitor General’s Office on whether a court should be able to raise registration sua sponte:

Ms. Anders: [411(a)] is not jurisdictional, but it should not be fully waivable. The provision does not speak to the power of the courts to decide cases and therefore it does not limit the court’s jurisdiction to adjudicate infringement suits.

But, because of this phrase and mandatory language, the requirement should be strictly enforced whenever the defendant asserts it, and because the requirement serves important public interest that are independent of the concerns of the parties to any individual suit –

JUSTICE GINSBURG: So your position is that the district court really should have dismissed this case at the outset?

MS. ANDERS: I think that, in the ordinary case, the district court should — when — when the defendant waives the requirement, which would be the rare case, when the defendant doesn’t assert it. When the defendant waives the requirement, the district court should consider whether accepting that waiver would undermine the public interest behind 411.

Now, in this particular case, it may not have been an abuse of discretion for the district court to consider those interests and decide that here it would have been acceptable to accept the defendant’s waiver and permit the resolution to go forward because, in this case, the periodicals that — that are involved — the works at issue were primarily already in the possession of the Library of Congress, because they had been registered as — the periodicals themselves had been registered.

So the Library’s interest is not as strongly implicated here. In addition, this is a case in which there was going to be settlement, so the Court wasn’t going to need to adjudicate the copyright claims and therefore the opportunity for the register’s views to be taken into account was less important.

More questioning from Justice Ginsburg on the topic:

JUSTICE GINSBURG: You were candid to say that this is in a hybrid category, that the government was taking an intermediate position. Do you know of any other provision where the district court has an obligation to raise the question on its own motion that is yet not jurisdictional?

MS. ANDERS: I believe this Court has recognized that waiver doctrines in general are discretionary, and so, particularly in the area of res judicata, the Court has recognized in the Plaut v. Spendthrift Farm and Arizona v. California that the Court has some discretion to enforce res judicata on its own motion.

JUSTICE GINSBURG: Very, very limited. I think Arizona didn’t say any time there’s — there’s a preclusion plea, the Court can raise it on its own.

MS. ANDERS: That’s correct. I think also the plain error rule presupposes that there are some errors that the district court has a responsibility to correct on its own, even though neither party has brought the error to its attention. So in other words, the district court has the obligation to issue a legal ruling that neither party has asked for, and I think that kind of regime is appropriate here because the public interest at issue, the Library’s interest and the interest in the public record of copyright, those don’t depend on the defendant’s litigation decisions — they shouldn’t depend on the defendant’s particular strategic decisions within a particular case.

Justice Scalia delivered a pithy line, evincing some reticence towards framing 411(a) as a rule that courts could raise sua sponte:

JUSTICE SCALIA: But how — how would we get to hold what — what you say is the law? It seems, to me, once we decide it’s not jurisdictional and once we agree with you, that it doesn’t — at least in this case — didn’t have to be raised sua sponte by the district court.

That’s the end of the case, and so why do we have to engage in the further discussion, well, ordinarily, the district court must raise it on its own and — you know, and, if it doesn’t ordinarily –you know, the appellate court should.

Why do we have to get into that?

MS. ANDERS: I don’t think you have to get into it, Justice Scalia. I think –

JUSTICE SCALIA: Which means we shouldn’t.
(Laughter.)

Justice Ginsburg also raised Perfect 10, inc. v. Amazon.com, inc, 508 F.3d 1146 (9th Cir. 2006), and similar cases, where courts have found that they have jurisdiction to issue an injunction even if a plaintiff has not registered her work:

JUSTICE GINSBURG: Do they — if they are just suing, not for money but for an injunction, do they have to register before bringing an injunction suit?

MS. JONES MERRITT [Ed. Professor Merritt was appointed by the Court to represent the Second Circuit's judgment]: Yes, Your Honor, they do. In order to bring any action — if the injunction is based on infringement. So we’re — if the plaintiff brings an action for infringement and the remedy they seek is an injunction, then the copyright must be registered first.

There are some cases in the lower courts in which we have a plaintiff who has a longstanding pattern of infringements that a particular defendant has been engaged in against that plaintiff. The Owen Mills case is an example. A local photography studio was upset because a photo duplicating shop kept copying their copyrighted photographs. They entered an action for infringement, had registered several of the photographs.

The Court issued an injunction that covered future works as well, but those were all works within the same judicial controversy. So an injunction could reach further than a single registered work as long as we are talking about one single controversy.

In this case we don’t have an injunction, we have damages, and we have thousands of different controversies. As the Court knows the class action rules do not change the substantive law or the rules of — of jurisdiction. We have here thousands of different controversies that have been aggregated for convenience under rule 23(b)(3), but the court must have jurisdiction over each of those controversies. Or if we take the alternative route of Hallstrom, the hybrid approach, and we say that this is a mandatory requirement. Congress has been quite clear about this mandatory requirement, and that mandate must be satisfied with respect to every controversy in this class action.