Copyright Law Blog: Exclusive Rights

On Tuesday, the Supreme Court reversed the Second Circuit and found that 17 U.S.C. 411(a) is merely a claim-processing rule, not a restriction on a federal court’s subject matter jurisdiction. I’ve discussed the background on this case a couple of times previously. The opinion was some of what I expected (very short, unanimous judgment, no ruling on whether district courts should or must dismiss an infringement claim brought on an unregistered work sua sponte, no discussion of the role of registration, no statement on the merits of the settlement) and some of what I didn’t expect (Thomas writing for the Court, joined by Roberts, Scalia, Kennedy and Alito, with a Ginsburg concurrence, joined by Stevens and Breyer.) Sotomayor recused herself from the case because she was the presiding district court judge in NY Times v. Tasini, the dispute underlying Reed Elsevier v. Muchnick.

This could have been a landmark copyright case if the Court had delved into a description of copyright registration or tried to answer whether registration was a hard-line requirement or more malleable. The Court avoided these evaluations, wisely in my humble opinion, and constrained its background discussion and analysis. Registration plays such a foundational role on so many issues in copyright that dicta and ancillary findings probably would have been twisted in all types of ways downstream. It seems better to leave play in the joints on many of the ancillary issues and push them to district and appellate courts, even if the outcomes will sometimes be inconsistent.

William & Mary Professor Scott Dodson on the civil procedure aspects of the case at Civ Pro and Federal Courts Law Blog. The majority and concurring opinion agreed that the two integral cases were Arbaugh v. Y & H Corp., 546 U. S. 500 (2006) and Bowles v. Russell, 551 U.S. 205 (2007). Both agreed that a passage from Arbaugh was controlling:

If the Legislature clearly states that a threshold limitation on a statute’s scope shall count as jurisdictional, then courts and litigants will be duly instructed and will not be left to wrestle with the issue. But when Congress does not rank a statutory limitation on coverage as jurisdictional, courts should treat the restriction as nonjurisdictional in character. Applying that readily administrable bright line to this case, we hold that the threshold number of employees for application of Title VII is an element of a plaintiff’s claim for relief, not a jurisdictional issue.” 546 U. S., at 515–516 (citation and footnote omitted). [Italics added.]

The majority opinion and concurring opinion, however, conspicuously differed in their quotations from Arbaugh. Justice Thomas, writing for the majority, did not include the “bright line” language from Arbaugh that I italicized above. Justice Ginsburg, concurring, embraced the phrase “bright line” in four different places. Linguistics aside (but words matter) both the majority and concurring opinion seemed to apply the test from Arbaugh as the first and primary benchmark.

The second case both the majority and concurring opinion used prominently was Bowles v. Russell, 551 U.S. 205 (2007). Justice Thomas characterized Bowles as standing for the proposition that “context, including this Court’s interpretation of similar provisions in many years past, is relevant to whether a requirement as jurisdictional.” Applying Bowles to Reed, the majority found that §411(a)’s historical treatment was “jurisdictional,” and a “factor in the analysis,” but “not dispositive.” Found Justice Thomas, “The other factors discussed above demonstrate that §411(a)’s registration requirement is more analogous to the nonjurisdictional conditions we considered in Zipes and Arbaugh than to the statutory time limit at issue in Bowles.”

Justice Ginsburg, concurring, viewed Bowles as conflicting with Arbaugh, but found that it was possible to reconcile the case if it’s read as ” relying on a long line of this Court’s decisions left undisturbed by Congress.” Union Pacific R. Co. v. Locomotive Engineers and Trainmen Gen. Comm. of Adjustment, Central Region, 558 U. S. ___, ___ (2009) (slip op., at 13) (citing Bowles, 551 U. S., at 209–211).” Noted Ginsburg, “The same is true of our decision, subsequent to Bowles, in John R. Sand & Gravel Co. v. United States, 552 U. S. 130 (2008).”

Justice Ginsburg found that the judicial history interpreting 411(a) did not satisfy a Bowles analysis. Justice Ginsburg noted that the two hundred opinions on the topic were almost all “‘drive-by jurisdictional rulings’ thatshould be accorded ‘no precedential effect,’” Arbaugh, 546 U. S., at 511 (quoting Steel Co. v. Citizens for Better Envi-ronment, 523 U. S. 83, 91 (1998)); see Arbaugh, 546 U. S., at 511–513; ante, at 5–6.

So, it would appear that the majority and concurring opinions were distinguishable along a couple of fronts:

The majority opinion rejected the phrase “bright line” rule from Arbaugh to describe the case’s test, while the concurring opinion embraced it.
The majority opinion seemed to imply that all context (“context, including this Court’s interpretation of similar provisions in many years past”) should be taken into consideration under a Bowles analysis, while the concurring opinion could be read as limiting Bowles to narrowly applying only to long lines of Court decisions left untouched by Congress.
The majority opinion found that the historical legacy of 411(a) was that it was a jurisdictional requirement but that when all factors were considered, the provision did not restrict a federal court’s subject matter jurisdiction. The concurring opinion found that the cases interpreting 411(a) were merely drive-by jurisdictional rulings, and did not weigh in favor of a finding that 411(a) restricted a federal court’s subject matter jurisdiction.

Earlier posts on Reed Elsevier v. Muchnick:

Supreme Court grants cert in Reed Elsevier, et al., v. Muchnick, et al. (March 3, 2009)
Judge Posner weighs in on Reed Elsevier v. Muchnick (April 17, 2009)
Merit briefs posted for Reed Elsevier v. Muchnick (May 27, 2009)
Solicitor General files amicus in Reed Elsevier arguing that 17 U.S.C. 411(a) is a rigid claim processing rule (June 17, 2009)
AIPLA files amicus in Reed Elsevier v. Muchnick (June 19, 2009)
Supreme Court hears oral arguments in Reed Elsevier (Oct 8, 2009)
Form 19 and oral arguments in Reed Elesevier v. Muchnick (Nov 16, 2009)