Copyright Registration is “Precondition” to Filing a Claim—But is NOT “Jurisdictional”

In Elsevier v. Muchnick, the US Supreme Court held: “a statutory condition requiring a party to take some action before filing a lawsuit is not automatically ‘a jurisdictional prerequisite to suit.’”

Elsevier involved a class action copyright case.  A class of freelance journalists was certified by the district court (SDNY) to finalize a settlement agreement involving class copyright claims against online publishers and electronic databases.  The class included both journalists who had registered their work with the US Copyright Office under 17 USC 411(a), and journalists who had not registered their work.

On appeal, the Second Circuit Court of Appeals raised a subject matter jurisdictional challenge to composition of the class, sua sponte, refusing to recognize class certification.  The US Supreme Court reversed, affirming the class certification.

17 USC 411(a) provides, inter alia and with certain exceptions, that “no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title.”  

The Court explained this precondition is part of the Copyright Act’s remedial scheme. “It establishes a condition—copyright registration—that plaintiffs ordinarily must satisfy before filing an infringement claim and invoking the Act’s remedial provisions.”

On the other hand, the term “jurisdiction” refers to a court’s adjudicatory authority. “Accordingly, the term ‘jurisdictional’ properly applies only to ‘prescriptions delineating the classes of cases (subject matter jurisdiction) and the persons (personal jurisdiction)’ implicating that authority.’”

While perhaps clear in theory, the distinction between jurisdictional conditions and claim-processing rules can be confusing in practice. Courts—including this Court—have sometimes mischaracterized claim-processing rules or elements of a cause of action as jurisdictional limitations, particularly when that characterization was not central to the case, and thus did not require close analysis.

In Arbaugh v. Y & H Corp., the US Supreme Court described the general approach to distinguish “jurisdictional conditions” from “claim-processing requirements” of a claim:

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 non-jurisdictional in character.

The Court then considered whether §411(a) “clearly states” that its registration requirement is “jurisdictional;”  and ruled that it does not.

First, and most significantly, §411(a) expressly allows courts to adjudicate infringement claims involving unregistered works in three circumstances: where the work is not a U. S. work, where the infringement claim concerns rights of attribution and integrity under §106A, or where the holder attempted to register the work and registration was refused.

Separately, §411(c) permits courts to adjudicate infringement actions over certain kinds of unregistered works where the author “declare[s] an intention to secure copyright in the work” and “makes registration for the work, if required by subsection (a), within three months after [the work’s] first transmission.” 17 U. S. C. §§411(c)(1)–(2).

It would be at least unusual to ascribe jurisdictional significance to a condition subject to these sorts of exceptions.

In concluding that the District Court had jurisdiction to approve the settlement, the Supreme Court “expressed no opinion” on the settlement’s merits.  The Court also declined to address whether §411(a)’s registration requirement is a “mandatory precondition to suit.”

The Court’s opinion was delivered by Mr. Justice Clarence Thomas.  The Court’s other conservative members joined the opinion: Justice Roberts, Justice Scallia, and Justice Alito.  Justice Kennedy also joined the majority opinion.   Justice Ginsberg filed a concurring opinion that was joined by Justice Breyer and Justice Stevens.  Justice Sotomayor did not participate.