Category Archives: Supreme Court

AIPLA files amicus in Reed Elsevier v. Muchnick

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Shourin Sen - 19 June 2009 – 8:52 am
Filed under Jurisdiction, Registration, Supreme Court

The American Intellectual Property Law Association filed an amicus brief in Reed Elsevier on June 8.  The AIPLA’s brief appears to act, to a certain extent, as the opposition brief to the Department of Justice’s filing that we discussed on Wednesday.  Both the AIPLA and the Solicitor General argued that 411(a) is a claim processing rule and not a jurisdictional requirement.  But the central reach of the AIPLA’s brief is that the 411(a) shouldn’t be read rigidly as to bar claims from proceeding before the Copyright Office grants or rejects a registration application. Indeed, the AIPLA’s brief takes an additional step and forwards that a plaintiff shouldn’t even need to mail a registration before filing suit:

What is less clear is from the text and legislative history of the statute is whether Section 411(a) permits a copyright owner to file an infringement action before the Copyright Office has acted to either issue or deny a certificate of registration, or even before the copyright owner has filed an application.

Although courts are divided on the question, the correct view is that the registration requirement is akin to a procedural condition precedent to prosecuting a lawsuit that may be satisfied “along the way.” This broader view of the requirement conforms to general proposition argued by Judge Walker in his dissenting opinion below that the registration requirement is more of a “claims processing rule.” The narrow view of the requirement improperly introduces a subject matter jurisdiction character into the statute by measuring compliance with the requirement only at the moment the action is commenced.

Documents

Brief of American Intellectual Property Law Association as Amicus Curiae in Support of Petitioners

Prior writings on Reed Elsevier v. Muchnick

publishing law attorneys

Solicitor General files amicus in Reed Elsevier arguing that 17 U.S.C. 411(a) is a rigid claim processing rule

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Shourin Sen - 17 June 2009 – 1:42 am
Filed under Jurisdiction, Supreme Court

The Solicitor General filed an amicus brief in Reed Elsevier v. Muchnick last week advocating that the Second Circuit’s decision should be vacated and remanded. The brief first argues, similarly to the petitioners and respondents, that the registration requirement set forth in 17 U.S.C. 411(a) is a processing rule and not a jurisdictional requirement. But the section of the brief is somewhat perfunctory.

It appears, instead, that the primary reach of the brief is to advocate for the Supreme Court to interpret 411(a) as a rigid requirement: That courts should raise the issue of registration sua sponte and refuse to adjudicate suits where a plaintiff has failed to comply with 411(a). After an extensive factual introduction lauding the merits of registration, the brief’s first argument that 17 U.S.C. 411(a) doesn’t limit a federal court’s jurisdiction is six pages in length, while the section arguing that the Court should interpret 411(a) as a rigid rule runs twice that.

The Solicitor General, however, noted that 411(a) shouldn’t be read so rigidly to bar “industry-wide settlements” involving non-registered works.  This is important because if the Supreme Court were to read the 411(a) as a hardline requirement then, even if the registration provision isn’t a jurisdictional requirement, the parties’ settlement could potentially be barred.  The SG addressed the issue in the brief’s final page:

Under the circumstances of this case, the inclusion within the plaintiff class of individuals who had not registered their copyrights provides no sound basis for vacatur of the district court’s judgment on appeal. An industry-wide settlement is unquestionably in the public interest because it recognizes freelance authors’ copyright rights while ensuring the public availability of their works—a key concern of the Copyright Act. See Fogerty v. Fantasy, Inc., 510 U.S. 517, 527 (1994) (“[C]opyright law ultimately serves the purpose of enriching the general public through access to creative works.”); New York Times Co. v. Tasini, 533 U.S. 483, 505 (2001). The parties determined that a global settlement of all possible claims—including those based on currently unregistered works (which could be registered in the future)—was necessary in order to guarantee the availability within the electronic archives of all of the newspaper and magazine contents at issue. The parties then invested substantial time and resources, all of which would be rendered nugatory by enforcement of Section 411(a)’s registration requirement at this late stage.

There’s a lot going on in the brief and it’s definitely worth a read in its entirety. For example, you know people who advocate reading 411(a) as requiring a decision by the Copyright Office before bringing suit got a kick out of footnote 14:

Section 411(a) requires the plaintiff to possess a registration certificate, to have been refused registration, or to have preregistered, at the time the suit is commenced. Although some courts have held that Section 411(a)’s precondition to suit is satisfied by simply filing an application for registration, see, e.g., Apple Barrel Prods., Inc. v. Beard, 730 F.2d 384, 386-387 (5th Cir. 1984), those decisions are contrary to Section 411(a)’s plain text, and therefore incorrect . . .

The brief also illustrates how the upcoming opinion could either have a relatively narrow footprint outside of global settlement situations or fundamentally change many aspects of copyright litigation, depending on how the Supreme Court describes the registration process. If the opinion is written broadly, it could influence the following types of questions that we’ve addressed in the past few months:

  • How much deference should a court grant the Copyright Office’s determination that a work has sufficient originality?;
  • Should a plaintiff be barred from bringing suit on a copyright claim until after the Copyright Office has addressed a registration application, or should a plaintiff be able to proceed immediately after filing?;
  • Should courts grant architectural depictions filed as “Architectural Works” the exclusive rights granted under the Act to “Architectural Plans,” and vice versa?;
  • Should a determination by the Copyright Office that a work merits registration be taken into account when accessing whether a plaintiff’s suit is objectively unreasonable for purposes of awarding attorneys’ fees?

Document:

Prior writings on Reed Elsevier v. Muchnick:

publishing law attorneys

SG on Cablevision cert petition: “[A]rtificial truncation of the possible grounds for decision would make this case an unsuitable vehicle for clarifying the proper application of copyright principles”

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Shourin Sen - 1 June 2009 – 9:00 am
Filed under Supreme Court

Cable News Network, Inc., et al. v. CSC Holdings, Inc., et al. (Brief for the United States as Amicus Curiae)

The big news from this weekend is that the Solicitor General has filed a brief arguing against the Supreme Court granting cert in Cable News Network v. CSC Holdings. The SG’s amicus brief was filed in response to an order from the Supreme Court inviting the United States to weigh in on the case. To briefly review, Cablevision planned to offer a DVR-like service. The service would differ from preexisting DVRs in that it would allow users to record content housed on a hard drive at Cablevision locations, and not on a DVR at a user’s home. A group of content companies brought suit for copyright infringement arguing that Cablevision, by providing the service, would directly infringe their works. The Second Circuit found that (1) buffer copies weren’t sufficiently fixed to be considered copies for purposes of liability for copyright infringement; (2) even though Cablevision would house the content on its servers, it the consumers would make the copies; and (3), the playing of the content by consumers wouldn’t constitute a public performance.

The Solicitor General made two arguments against granting cert:

No Circuit split or conflict with Supreme Court precedent

The SG’s first argument was that the Second Circuit’s decision doesn’t conflict with precedent from other Circuit Courts or the Supreme Court:

The Second Circuit is the first appellate court to address the copyright implications of the shift from a set-top-based to a network-based system of enabling consumers to record and play back television programs of their own choosing. The decisions on which petitioners rely addressed different technologies and arose in different factual contexts. As a result, there is no conflict between the outcome of this case and any previous decision.

The Second Circuit’s decision, however, is unlikely to be the last appellate ruling to address these issues. Other cable providers may initiate services that are similar to respondents’ RS-DVR. Analogous issues also may arise with respect to other network-based services for copying and playing back copyrighted works. Deferring review of the legal issues raised by various network-based playback technologies would allow those
issues to be more fully explored by litigants and the lower courts. This Court would then be in a better position to address the legal significance, if any, of the differences between various technologies and services.

Stipulations make the case a bad vehicle for deciding issues

Secondly, the SG argued that the parties’ agreement not to litigate fair use and secondary liability made the case an unsuitable vehicle for clarifying the legal framework surrounding the RS-DVR:

Petitioners argue that the Court should use this case to “set a standard for copyright protection in the marketplace of automated access to and delivery of copyrighted works.” This case, however, presents an unsuitable vehicle for clarifying the applicable legal framework because the parties’ agreement not to litigate two critical issues—secondary liability and fair use—distorts the questions that remain and would prevent the Court from seeing whole the fundamental controversy in this case.

Less than a month into this litigation, the parties stipulated that petitioners would not pursue any claims based on principles of secondary liability, and that respondents would not raise any fair-use defense. As a result, neither the district court nor the court of appeals addressed those issues, and this Court would have no opportunity to consider them if it granted review. This case therefore presents no opportunity for the Court to “have the final say” even as to the legality of the particular (and currently unique) RSDVR service that respondents seek to offer.

Other commentators on the brief

Sherwin Siy from Public Knowledge:

This brief is a heartening development, showing that the Solicitor General’s office has made a thorough and thoughtful intervention. Hopefully the Court will think so as well.

Ben Sheffner from Copyrights & Campaigns:

Of course, DoJ does not get the last word; its brief is only a recommendation, which the Supreme Court is under no obligation to follow. That said, the Court does accord considerable respect to the solicitor general’s opinions, and the chances of cert. being granted — a long-shot in any case — just dropped dramatically.

John Palfrey from the Berkman Center:

The brief is terrific.

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