Freelanceruling 1
Freelanceruling 1
Freelanceruling 1
20 —v.—
28 MICHAEL CASTLEMAN INC., E.L. DOCTOROW, TOM DUNKEL, ANDREA DWORKIN , JAY FELDMAN,
29 JAMES GLEICK, RONALD HAYMAN , ROBERT LACEY , RUTH LANEY , PAULA MCDONALD , P/K
30 ASSOCIATES , INC., LETTY COTTIN POGREBIN , GERALD POSNER, MIRIAM RAFTERY , RONALD M.
31 SCHWARTZ, MARY SHERMAN, DONALD SPOTO, ROBERT E. TREUHAFT AND JESSICA L. TREUHA FT
32 TRUST , ROBIN VAUGHAN , ROBLEY WILSON, MARIE WINN, NATIONAL WRITERS UNION, THE
33 AUTHORS GUILD , INC. AND AMERICAN SOCIETY O F JOURNALISTS AND AUTHORS ,
34
*
The appeal filed under Docket No. 06-0223-cv(CON) was dismissed by Court Order on
May 17, 2006.
1 Plaintiffs-Appellees,
2
3 EDWARD ROEDER ,
4
5 Appellant.
6 _______________
7 Before:
9 _______________
10 Appeal from an order and judgment of the United States District Court for the Southern
11 District of New York (George B. Daniels, Judge) certifying a class of freelance authors and
12 approving a settlement of their copyright infringement claims arising from the unauthorized
13 electronic reproduction of their work. The overwhelming majority of class members’ claims
14 concern the infringement of unregistered copyrights. We hold that the District Court lacked
15 jurisdiction over those claims. We therefore vacate the certification and settlement approval, and
18 _______________
**
As putative members of the class, Judges Winter and Walker have filed
contemporaneously a separate opinion explaining their decision against recusal in this case. See
In re: Literary Works in Elec. Databases Copyright Litig., — F.3d — (2d Cir. Nov. 19, 2007).
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1 Monica, CA; Michael Denniston, Bradley, Arant, Rose & White, LLP, Birmingham,
2 AL; Christopher M. Graham, Levett Rockwood P.C., Westport, CT; Raymond
3 Castello, Fish & Richardson PC, New York, NY, on the brief), for Defendants-
4 Appellees.
5
6 MICHAEL J. BONI, Kohn Swift & Graf, P.C., Philadelphia, PA (Joshua D. Snyder,
7 Kohn Swift & Graf, P.C.; Diane S. Rice, Hosie MacArthur LLP, San Francisco, CA;
8 A.J. De Bartolomeo, Girard Gibbs & De Bartolomeo LLP, San Francisco, CA; Gary
9 Fergus, Fergus, A Law Firm, San Francisco, CA, on the brief), for Plaintiffs-
10 Appellees.
11 _________________________________
13 This class action copyright litigation arises from the unauthorized electronic reproduction
14 of various written works. Named plaintiffs and class members consist mainly of freelance
15 writers who contracted with publishers to author the works for publication in print media, and
16 retained the copyrights in those works. The contracts did not grant the publishers the right to
17 electronically reproduce those works or license them for electronic reproduction by others. But
19 Plaintiffs then brought this class action on the theory that such electronic reproduction
20 infringed their copyrights. After years of negotiations, class and defense counsel finally agreed
21 on a settlement. Following lengthy motion practice, the District Court for the Southern District
22 of New York certified a class and approved the settlement. We review that order and judgment
23 on this appeal.
24 The overwhelming majority of claims within the certified class arise from the
25 infringement of unregistered copyrights. We have held, albeit outside the class action context,
26 that district courts lack statutory subject matter jurisdiction over infringement claims arising from
27 unregistered copyrights. See Well-Made Toy Mfg. Corp. v. Goffa Int’l Corp., 354 F.3d 112, 115
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1 (2d Cir. 2003); Morris v. Bus. Concepts, Inc., 259 F.3d 65, 72 (2d Cir. 2001). The District Court
3 The precise issue on appeal is whether the District Court had jurisdiction to certify a class
4 consisting of claims arising from the infringement of unregistered copyrights and to approve a
5 settlement with respect to those claims. We hold that it did not. We therefore vacate its order
6 and judgment and remand the case for proceedings consistent with this opinion.
7 BACKGROUND
8 In New York Times Co. v. Tasini, 533 U.S. 483, 488 (2001), the Supreme Court held that
9 § 201(c) of the Copyright Act does not permit publishers to reproduce freelance works
10 electronically when they lack specific authorization to do so. Tasini effectively requires
11 publishers wishing to electronically reproduce written works to obtain a separate license to do so.
12 Shortly after the Court decided Tasini, three preexisting class action infringement suits, which
13 had been suspended pending the decision, were activated and consolidated in the Southern
14 District of New York. A fourth, nearly identical action was coordinated with that consolidated
16 In this case there are basically two kinds of plaintiffs: individual authors and trade groups
17 representing authors. Defendants also fall into two classes: companies that publish original
18 electronic content, such as the New York Times Co., and companies that operate databases that
19 license content from publishers, such as Thomson Corporation, the owner of Westlaw.
20 The named plaintiffs, and the class members they purport to represent, produced written
21 works for certain defendants on a freelance basis. Based on their copyrights in those freelance
22 works, plaintiffs assert claims for two types of infringement. They first claim that publishers,
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1 such as the New York Times Co., infringed their copyrights. This infringement allegedly
2 occurred when the publishers licensed the articles for print publication only but also reproduced
3 the articles in their electronic databases. Since the publishers needed but never received a license
4 for this second, electronic reproduction, plaintiffs allege that it constitutes infringement.
5 Plaintiffs next claim that the electronic database services infringed their copyrights. This
6 infringement allegedly occurred when those companies licensed the articles from the publishers
7 and then reproduced the articles in their own electronic databases. Because the publishers never
8 possessed the right to electronically reproduce the articles, plaintiffs urge, the publishers could
9 not grant any license for electronic reproduction. Thus, any such license that the publishers sold
10 to the aggregators and databases was legally ineffective. Consequently, according to plaintiffs,
12 Since Tasini established the basic soundness of plaintiffs’ liability theory, the District
13 Court swiftly referred the parties to mediation. Before the mediator, defendants contended that
14 this litigation possessed scant settlement value because the District Court could never certify the
15 vast majority of the claims for inclusion in any proposed class. Defendants noted that section
16 411(a) of the Copyright Act provides that “no action for infringement of the copyright in any
17 United States work shall be instituted until preregistration or registration of the copyright claim
18 has been made in accordance with this title.” 17 U.S.C. § 411(a) (emphases in defendants’
19 mediation submission). “That rule,” defendants wrote, “whose language could hardly be clearer,
20 precludes the certification of any class respecting works in which a copyright has not been
21 registered.” Defendants then cited authority for the proposition that the District Court “lacks
22 jurisdiction . . . to certify a class covering any unregistered works.” Citing survey evidence
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1 showing that freelancers register less than one percent of their works, defendants noted that this
2 jurisdictional failure likely affected more than 99 percent of the claims at issue.
3 Despite this looming jurisdictional issue, the desire to achieve global peace in the
4 publishing industry spurred the parties through more than three years of “often heated”
5 negotiations until they reached an agreement in 2005. The agreement defines the class, “for
21 The settlement sorts plaintiffs’ claims into three groups. Category A claims concern
22 copyrights that were registered prior to any infringement. Because these copyrights were
23 registered before the infringing reproduction, they are eligible for statutory damages and
24 attorney’s fees under the Copyright Act. See 17 U.S.C. § 412. Category B claims concern
25 copyrights that were registered after the infringing reproduction but before December 31, 2002.
26 Under the Copyright Act, these claims qualify for actual damages only. See id. Category C
27 claims, by far the most numerous, regard copyrights registered after December 31, 2002 or not
28 registered at all.
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1 The settlement also assigns a damages formula to each type of claim. Category A
2 claimants receive a flat fee. Category B claimants receive the greater of either a flat fee or a
3 percentage of the original price of the work. By and large, Category C claimants also receive the
4 greater of either a flat fee or a percentage of the original price of the work. Importantly, if the
5 cost of all claims (plus the cost of notice, administration, and attorney’s fees) exceeds $18
6 million, then the amount paid to Category C claimants is reduced – potentially to zero – before
7 the claims of Category A and B claimants are affected. This feature is called the “C-reduction.”
8 Having reached an agreement, plaintiffs and defendants moved the District Court for
9 class certification and settlement approval. Objectors opposed the motion on the ground, inter
10 alia, that the settlement was inadequate and unfair to Category C claimants because they were
11 paid little and singled out for reduction if the total claims exceeded $18 million. Objectors also
12 maintained that the disparate treatment of Category C claimants illustrates that named plaintiffs,
13 who each possess at least some registered copyrights, did not adequately represent those absent
15 Defendants responded that Category C claimants were adequately represented and treated
16 fairly because their claims were essentially worthless. In justifying the C-reduction, defendants
17 renewed their jurisdictional argument, urging that Category C claims mainly concerned “works in
18 which [the] copyright had never been registered, and which were not, therefore, within the
19 court’s subject matter jurisdiction.” Somewhat similarly, plaintiffs maintained that “freelance
20 authors typically did not register their works and thus lacked standing to bring an infringement
21 action.”
22 After prolonged proceedings, the District Court granted final class certification and final
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1 settlement approval in September of 2005. The District Court never considered whether it had
2 jurisdiction to certify a class consisting mostly of claims arising from unregistered copyrights, or
4 Objectors appealed, again challenging the settlement’s fairness and the adequacy of
5 named plaintiffs’ representation. Prior to oral argument, we became concerned that the District
6 Court and the parties had passed over a nettlesome jurisdictional question. We ordered the
7 parties to submit letter briefs “addressing the issue of whether the District Court had subject
9 Literary Works in Elec. Databases Copyright Litig., No. 05-5943-cv (2d Cir. Jan. 31, 2007).
10 Those submissions were timely filed and we further questioned the parties at oral argument.
11 DISCUSSION
12 We review de novo whether the District Court had subject matter jurisdiction. See, e.g.,
13 DiTolla v. Doral Dental IPA of New York, 469 F.3d 271, 275 (2d Cir. 2006). In the following
14 sections, we first ask whether the Copyright Act’s registration requirement is jurisdictional and
15 then ask whether each claim within the class must satisfy that requirement. We answer both
16 questions affirmatively. Since most of the claims within this purported class do not satisfy the
18 U.S.C. § 1367, remedies that jurisdictional defect. We conclude that it does not. Based on those
19 determinations, we ultimately hold that the District Court lacked jurisdiction to certify the instant
22 Federal district courts possess only limited jurisdiction, which Congress regulates by
-8-
1 statute. See U.S. Const. art. III, § 1; Exxon Mobile Corp. v. Allapattah Servs., Inc., 545 U.S. 546,
2 552 (2005). In a copyright action, a district court initially derives its jurisdiction from two
3 sources: 28 U.S.C. §§ 1331 and 1338. Section 1331 provides district courts with a general grant
4 of original jurisdiction over “all civil actions arising under the Constitution, laws, or treaties of
5 the United States.” Section 1338 more specifically grants district courts original jurisdiction over
6 “any civil action arising under any Act of Congress relating to . . . copyrights.”
7 But these provisions are not necessarily the end of the matter. Congress may supplement
8 or limit these basic provisions with additional requirements “expressed in a separate statutory
9 section from jurisdictional grants.” Barnhart v. Peabody Coal Co., 537 U.S. 149, 159-60 n.6
10 (2003). Section 411(a) of the Copyright Act, which regulates a district court’s authority to
11 adjudicate a copyright claim, is one such additional provision. It provides that “no action for
12 infringement of the copyright in any United States work shall be instituted until preregistration or
13 registration of the copyright claim has been made in accordance with this title.” 17 U.S.C. §
15 Whether this requirement is jurisdictional is not up for debate in this Circuit. On two
16 recent occasions, we have squarely held that it is. See Well-Made Toy Mfg. Corp. v. Goffa Int’l
17 Corp., 354 F.3d 112, 114, 115 (2d Cir. 2003) (affirming dismissal for lack of “subject matter
19 Business Concepts, Inc., 259 F.3d 65, 72, 73 (2d Cir. 2001) (holding “that subject matter
1
We note that only “United States works” must be registered. 17 U.S.C. § 411(a). Some
claims within the class may arise from unregistered copyrights in foreign works, over which the
District Court would possess jurisdiction. We leave it to the District Court and the parties to sort
those claims on remand.
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1 jurisdiction was lacking because the registration requirement of section 411(a) was not satisfied”
3 We are far from alone in this regard; there is widespread agreement among the circuits
4 that section 411(a) is jurisdictional. See La Resolana Architects, PA v. Clay Realtors Angel Fire,
5 416 F.3d 1195, 1200 (10th Cir. 2005) (“Section 411(a) is the jurisdictional lynchpin to copyright
6 infringement actions[.]”); Positive Black Talk Inc. v. Cash Money Records Inc., 394 F.3d 357,
7 365 (5th Cir. 2004) (noting that section 411(a) “supplement[s]” the “broad underlying”
9 prerequisite”); Xoom, Inc. v. Imageline, Inc., 323 F.3d 279, 283 (4th Cir. 2003) (“Copyright
11 Copyright Act.”); Murray Hill Publ’ns, Inc. v. ABC Commc’ns, Inc., 264 F.3d 622, 630 n.1 (6th
12 Cir. 2001) (noting that while copyright protection exists prior to registration, “[t]he registration
13 requirement under section 411[a] is a jurisdictional prerequisite to the right of the holder to
14 enforce the copyright in federal court”); Brewer-Giorgio v. Producers Video, Inc., 216 F.3d
15 1281, 1285 (11th Cir. 2000) (“It is well settled in this Court that the registration requirement is a
17 alterations incorporated)); Data Gen. Corp. v. Grumman Sys. Support Corp., 36 F.3d 1147, 1163
18 (1st Cir. 1994) (describing registration under section 411(a) as a “jurisdictional requirement”).
19 Given our own binding precedent, not to mention the persuasive authority of our sister
20 circuits, we again conclude that section 411(a)’s registration requirement limits a district court’s
22 The parties advance several arguments that effectively ask us to overrule our holdings in
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1 Morris and Well-Made. The short answer to these arguments is that this panel simply cannot
2 overrule a prior panel’s holding. See Jones v. Coughlin, 45 F.3d 677, 679 (2d Cir. 1995) (“A
3 decision of a panel of this Court is binding unless and until it is overruled by the Court en banc
4 or by the Supreme Court.”). Nevertheless, for the sake of completeness we explain why these
5 arguments fail.
6 The parties first urge that section 411(a) is jurisdictional in a very minimal sense. They
7 claim that if a plaintiff brings a single claim based on a registered copyright, the district court
8 acquires jurisdiction over any and all related copyright claims, even if those other claims arise
9 from unregistered copyrights. Defendants contend that “§ 411(a) is merely the plaintiff’s ticket
10 to court,” that once stamped, allows him to raise all sorts of claims arising from unregistered
11 copyrights. Although defendants are not necessarily bound by earlier arguments, their current
12 tact cuts against their position before the mediator and the District Court, where they broadly
13 maintained that “works in which [the] copyright had never been registered . . . were not . . .
15 Anyway, our holding in Well-Made shuts the door on this line of argument. There, the
16 plaintiff brought two infringement claims: one based on the infringement of its registered
17 copyright in a 20-inch doll, the other based on the infringement of its unregistered copyright in a
18 derivative 48-inch doll. 354 F.3d at 115. The district court decided the first claim on the merits
2
The parties have attempted to harmonize their positions by contending that while the
District Court lacked jurisdiction to certify a litigation class, it nevertheless had jurisdiction to
certify the settlement-only class. But the jurisdictional statutes do not draw this line. We believe
that a district court’s jurisdiction must be proper in either event; the purpose of the certification
does not alter fundamental – and constant – statutory jurisdictional requirements. See infra at 16-
20.
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1 but dismissed the second claim for lack of jurisdiction. Id. We affirmed on both scores. Id. at
2 115, 117. We specifically upheld the dismissal, for lack of jurisdiction, of the claim based on the
3 unregistered copyright even though the plaintiff had paired that claim with a related claim
4 stemming from the registered copyright in the 20-inch doll. Id. at 115-16. Thus, the existence of
5 a claim based on a registered copyright does not bring within a district court’s jurisdiction all
7 In similar vein, defendants also point out that other courts have enjoined the infringement
8 of unregistered copyrights when at least one of the plaintiff’s copyrights-in-suit was registered.
9 See, e.g., Perfect 10, Inc. v. Amazon.com, Inc., 487 F.3d 701, 710 n.1 (9th Cir. 2007); Olan Mills,
10 Inc. v. Linn Photo Co., 23 F.3d 1345, 1349 (8th Cir. 1994); Pac. and S. Co. v. Duncan, 744 F.2d
11 1490, 1499 n.17 (11th Cir. 1984). This is another, although more limited, variation on the theme
12 that where one of the plaintiff’s claims arises from a registered copyright, section 411(a) vests
13 jurisdiction over any related infringement claim. There are several problems with this argument.
14 First, we have never held that a district court may enjoin the infringement of unregistered
15 copyrights so long as the underlying action arises from a registered copyright held by the same
17 available, that relief is properly limited to situations, as were found to exist in Olan Mills and
18 Pacific and Southern Co., where a defendant has engaged in a pattern of infringement of a
19 plaintiff’s registered copyrights and can be expected to continue to infringe new copyrighted
20 material emanating in the future from the plaintiff. See Olan Mills, Inc., 23 F.3d at 1349; Pac.
3
The single case the parties cite for this proposition, Sailor Music v. Gap Stores, Inc., 668
F.2d 84 (2d Cir. 1981) (per curiam), does not even approach the issue, let alone decide it.
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1 and S. Co., 744 F.2d at 1499. That sort of prophylactic relief furthers the purposes of the
2 Copyright Act generally and does not undermine the intended effect of section 411(a). To the
3 extent that Perfect 10, Inc. suggests a broader exception, we decline to follow it. In any event,
4 defendants’ position calls for an exception vastly broader than is found in any case by asking us
5 to rule that registration of one party’s copyright would somehow provide jurisdiction over claims
6 stemming from the unregistered copyrights of many other parties. We decline to do so.4
7 In addition to the parties’ arguments, we have considered whether the Supreme Court’s
8 recent decision in Eberhart v. United States, 546 U.S. 12 (2005) (per curiam), “casts doubt” on
9 Morris and Well-Made; if so, we may reconsider our holdings in those cases. Loyal Tire & Auto
10 Center, Inc. v. Town of Woodbury, 445 F.3d 136, 145 (2d Cir. 2006); see also Pease v. Hartford
11 Life and Accident Ins. Co., 449 F.3d 435, 443-46 (2d Cir. 2006). We conclude that Eberhart
13 In Eberhart, the Supreme Court held that the seven-day time limit for moving under
14 Federal Rule of Criminal Procedure 33 was not jurisdictional. 546 U.S. at 13. The Court
15 underscored the “‘critical difference between a rule governing subject-matter jurisdiction and an
16 inflexible claim-processing rule,’” and slotted Rule 33’s time limit within the latter category. Id.
18 A key difference between section 411(a) and Rule 33 renders Eberhart inapplicable.
19 Rule 33 merely sets forth a time limit for moving in a case that undoubtedly already falls within
4
Objectors also urge that jurisdiction is proper under our decision in Wal-Mart Stores,
Inc. v. Visa U.S.A. Inc., 396 F.3d 96 (2d Cir. 2005). Simply put, that case does not address any
jurisdictional question and is inapposite. It addresses only the circumstances under which a
release comports with due process, and whether a specific settlement was fair to absent class
members – issues that are not implicated here.
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1 the district court’s subject matter jurisdiction. The rule is nothing more than an “‘emphatic time
2 prescription[] in [a] rule[] of court’” that regulates motion practice within a jurisdictionally-
3 sound cause of action – namely, a prosecution for a violation of federal law. Id. at 18 (quoting
4 Kontrick, 540 U.S. at 454). By contrast, section 411(a) creates a statutory condition precedent to
5 the suit itself. In so doing, it “‘delineat[es] the classes of cases . . . falling within a court’s
6 adjudicatory authority.’” Id. at 19 (quoting Kontrick, 540 U.S. at 455); see also Bowles v.
7 Russell, 127 S. Ct. 2360, 2364-65 (2007) (distinguishing between “procedural rules adopted by
8 the Court for the orderly transaction of its business,” which are “not jurisdictional,” from
9 statutory “limits enacted by Congress,” which typically are jurisdictional (internal quotation
10 marks omitted)).5 Given that fundamental difference between Rule 33 and section 411(a),
5
The dissent suggests that because copyright protection may exist before registration,
section 411(a) should be seen as a mere “enforcement mechanism” that does not affect
jurisdiction. Dissent at 5. However, as the dissent acknowledges, the crucial distinction
between a claim-processing rule and a jurisdictional bar is whether the provision at issue is
“essential to the existence of the [underlying] claim.” Id. (quoting Richardson v. Goord, 347
F.3d 431, 434 (2d Cir. 2003) (per curiam); see also Paese v. Hartford Life Accident Ins. Co., 449
F.3d 435, 444-45 (2d Cir. 2006); Coleman v. Newburgh Enlarged City Sch. Dist., --- F.3d ---,
2007 WL 2768745, at *8 (2d Cir. Sept. 25, 2007) (Straub, J., concurring). Under the plain
language of the Copyright Act, registration or preregistration must occur before a plaintiff can
assert a valid claim. See 17 U.S.C. § 411(a) (“no 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.”) (emphases added); 17 U.S.C. § 501(b) (“The legal
or beneficial owner of an exclusive right under a copyright is entitled, subject to the requirements
of section 411, to institute an action for any infringement.”) (emphasis added). In other words, a
copyright claim does not exist absent registration or preregistration – and the law is clear that
courts lack subject matter jurisdiction over claims that Congress has specified do not yet exist.
See, e.g., Bowles, 127 S. Ct. at 2365 (“Within constitutional bounds, Congress decides what
cases the federal courts have jurisdiction to consider. Because Congress decides whether federal
courts can hear cases at all, it can also determine when, and under what conditions, federal courts
can hear them.”). Thus, the fact that a copyright holder may possess rights prior to registration
does not alter section 411(a)’s jurisdictional bar; Congress has chosen to prohibit copyright
holders – and, hence, courts – from enforcing any such rights until after that holder has filed for
registration. See Brewer-Giorgio, 216 F.3d at 1285 (“Although a copyright need not have been
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1 Eberhart’s holding does not cast doubt on Morris and Well-Made.
registered in all cases before it may be infringed, the owner of that copyright must register the
copyright before a federal court can entertain an infringement suit.”); Murray Hill Publ’ns, Inc.,
264 F.3d at 630 n.1 (noting that although “[a]n author may have a copyright in all works of
authorship regardless of whether he registers that copyright,” section 411(a)’s “registration
requirement . . . is a jurisdictional prerequisite to the right of the holder to enforce the copyright
in federal court”).
The dissent places a great deal of emphasis on the fact that section 411(a) provides that a
copyright holder “is entitled to institute an action for infringement” if he properly files for
registration but is refused registration by the Copyright Office. 17 U.S.C. § 411(a). But this
provision only confirms that, absent proper filing for registration, copyright holders are not
entitled to bring an action in federal court. Indeed, the last sentence of section 411(a) clarifies
that the section speaks in jurisdictional terms, as opposed to addressing mere “administrative
prerequisites,” Dissent at 6, by noting that so long as a copyright holder properly files for
registration, “the Register’s failure to become a party shall not deprive the court of jurisdiction to
determine [the issue of registrability].” 17 U.S.C. § 411(a).
6
The dissent contends that the legislative history of Title 17 “confirms” that section
411(a) is a claim-processing rule and not a jurisdictional bar. Dissent at 6-9. But the legislative
history cited by the dissent only confirms the undisputed fact that “registration is not a condition
of copyright protection.” 17 U.S.C. § 408(a) (emphasis added). Under the copyright laws,
copyright protection – which “subsists . . . in original works of authorship fixed in any tangible
medium of expression . . . .,” 17 U.S.C. § 102, and generally begins at the time of a work’s
“creation,” 17 U.S.C. § 302(a) – is entirely distinct from whether a copyright holder is permitted
to institute an action in federal court. On that score, the legislative history of the Copyright Act
and its amendments is crystal clear: Congress intended section 411(a) to prevent courts from
hearing the claims of copyright holders who do not first file for registration. The House Report
to the 1976 amendments to the Act, for example, notes that “The first sentence of section 411(a)
restates the present statutory requirement that registration must be made before a suit for
copyright infringement is instituted.” H.R. Rep. No. 94-1476 at 157 (1976), reprinted in 1976
U.S.C.C.A.N. 5659, 5773. The Report goes on to note that “a copyright owner who has not
registered his claim . . . cannot enforce his rights in the courts until he has made registration.” Id.
The Senate, in its consideration of the 1988 amendments to the Act, pointed out that “As a result
of Section 411(a), compliance with copyright registration procedures is a statutory prerequisite to
the right of an author or other copyright proprietor to seek any redress, whether by injunction,
damages or both, for infringement of the work,” and that without registration, “judicial
enforcement of the claim to copyright cannot be obtained.” S. Rep. No. 100-352 at 13-14 (1988),
reprinted in 1988 U.S.C.C.A.N. 3706, 3718-19; see also id. at 19, reprinted in 1988
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1
2 II. Each Claim within the Certified Class Must Satisfy Section 411(a)’s Registration
3 Requirement
4
5 Having established that section 411(a) imposes a jurisdictional requirement, we must
6 decide whether each claim within the certified class must satisfy that requirement. The parties
7 urge that jurisdiction is proper so long as the named plaintiffs’ works were registered. Based
8 upon the named plaintiffs’ registrations, the parties maintain, the District Court had jurisdiction
10 disagree.
11 Initially, we note that the class action certification device, Federal Rule of Civil
12 Procedure 23, does not offer any alternative source of jurisdiction in the class action context. See
13 28 U.S.C. § 2072(b) (providing that the federal “rules shall not abridge, enlarge or modify any
14 substantive right”); Fed. R. Civ. P. 82 (“These rules shall not be construed to extend or limit the
15 jurisdiction of the United States district courts.”); Amchem Prods., Inc., v. Windsor, 521 U.S.
16 591, 613 (1997). We therefore must look to the language of section 411(a), as well as any
17 applicable case law, to determine how the registration requirement applies in the class action
18 context. See generally Zahn v. Int’l Paper Co., 414 U.S. 291, 299-301 (1973) (reasoning that
20 member’s claim depends on the language of statute), result overruled by 28 U.S.C. § 1367.
21 Again, section 411(a) provides, in relevant part, that “no action for infringement of the
22 copyright in any United States work shall be instituted until preregistration or registration of the
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1 copyright claim has been made in accordance with this title.” 17 U.S.C. § 411(a) (emphasis
2 added). The question, as we see it, is whether the phrase “the copyright claim” refers to all the
3 claims within the class or only those claims of the named plaintiffs.
4 On the literal level, the language is not dispositive. The phrase “the copyright claim”
5 does not require, or even tend toward, one reading. But case law does provide some useful
7 To begin with, we have applied Article III’s jurisdictional requirements to each member
8 of a class. See Denney v. Deutsche Bank AG, 443 F.3d 253, 264 (2d Cir. 2006) (“[N]o class may
9 be certified that contains members lacking Article III standing.”). Since statutory and
10 constitutional jurisdictional requirements are equally binding, see U.S. Const. art. III, § 1; Exxon
11 Mobile Corp., 545 U.S. at 553 (noting “the bedrock principle that federal courts have no
12 jurisdiction without statutory authorization”), the same approach should hold here.
13 And case law indicates that it does. In Zahn, the Supreme Court considered whether the
14 diversity statute, 28 U.S.C. § 1332, requires each class member to satisfy the amount-in-
15 controversy requirement. 414 U.S. at 301. The Court held that the phrase “matter in
16 controversy” in § 1332(a) refers to each class member’s claim and therefore requires each claim
17 to satisfy the statute’s amount-in-controversy requirement. In so holding, the Court reasoned that
18 Rule 23 does not authorize one plaintiff to “ride on another’s coattails.” Id. at 301 (internal
19 quotation marks omitted). In order to alter this result, Congress needed to pass, and did pass, a
21 Two years later, in Weinberger v. Salfi, 422 U.S. 749, 764 (1975), the Court addressed
22 whether a district court properly certified a class of Social Security claimants who asserted that
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1 they had been denied benefits wrongfully. Like the Copyright Act, the Social Security Act
2 contains a provision limiting jurisdiction over social security claims: section 205(g) of the Social
3 Security Act, which grants subject matter jurisdiction over only “final” decisions of the
5 In determining whether the district court had jurisdiction to certify the class in
6 Weinberger, the Supreme Court applied this finality requirement to all the claims within the
7 class. It concluded that the named plaintiffs’ claims satisfied the finality requirement but that
8 claims of absent class members did not. Id. at 764 (“As to class members, however, the
9 complaint is deficient in that it contains no allegations that they have even filed an application
10 with the Secretary, much less that he has rendered any decision, final or otherwise . . . . The class
11 thus cannot satisfy the requirements for jurisdiction under [section 205(g)].”). Given this
12 statutory jurisdictional defect, “the District Court was without jurisdiction over so much of the
13 complaint as concerns the class, and it should have entered an appropriate order of dismissal.”
14 Id. Weinberger thus supports the proposition that when a statute imposes a jurisdictional
16 Four years later, the Court reaffirmed this approach in Califano v. Yamaski, 442 U.S. 682
17 (1979). There, the Court held that section 205(g) of the Social Security Act permits social
18 security claimants to seek relief via the class action device. But the Court carefully reiterated that
19 each class member must meet the jurisdictional requirements of section 205(g). Id. at 701
20 (holding that claimants could bring social security class action “at least so long as the
21 membership of the class is limited to those who meet the requirements of § 205(g)”). Stating the
22 proposition more generally, the Court wrote, “Where the district court has jurisdiction over the
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1 claim of each individual member of the class, Rule 23 provides a procedure by which the court
2 may exercise that jurisdiction over the various individual claims in a single proceeding.” Id.
3 We see no reason to interpret or apply the jurisdictional requirement of section 411(a) any
4 differently. In light of these precedents, we hold that the phrase “the copyright claim” in section
5 411(a) refers to each claim within a purported class, and thus requires that each class member’s
6 claim arise from a registered copyright. Only when each claim satisfies that jurisdictional
7 prerequisite may the district court utilize Rule 23 to “exercise [its] jurisdiction over the various
10 Although section 411(a) deprived the District Court of jurisdiction to certify a class
11 containing claims stemming from unregistered copyrights, the supplemental jurisdiction statute
12 might provide an alternate source of jurisdiction. In relevant part, the statute provides as follows:
7
The dissent argues that in the context of a settlement-only class action, jurisdiction exists
so long as the plaintiffs possess constitutional standing, even if other statutory jurisdictional
prerequisites, such as that erected by section 411(a), are not met. This argument finds no support
in the case law and runs afoul of the general rule that the class action device cannot be used to
enlarge the jurisdiction of the federal courts. See Amchem Prods., Inc., 521 U.S. at 613. In the
RICO and mass tort contexts posited by the dissent, Congress has erected no additional statutory
jurisdictional bars beyond the need for constitutional standing. See Denney, 443 F.3d at 266
(“RICO standing is not jurisdictional.”). Thus, our holding has no effect on the ability of courts
to, for example, certify a class in a mass tort action involving claims that may not yet be ripe
because the issue in such cases is standing, not jurisdiction. As we have already explained,
section 411(a) is an additional jurisdictional bar to the institution of copyright actions, and this
bar cannot be ignored solely because this case is a settlement-only class action.
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1 28 U.S.C. § 1367(a) (emphasis added).
2 In Exxon Mobile Corp., the Court held that § 1367(a) confers supplemental jurisdiction in
3 a diversity class action over state law claims that fail to satisfy § 1332(a)’s amount-in-
4 controversy requirement, so long as (1) at least one claim satisfies that requirement and (2) all the
5 other claims are part of the same case or controversy. 545 U.S. at 559-60. But the Court has
6 never held that § 1367(a) confers supplemental jurisdiction over jurisdictionally-deficient federal
7 claims asserted together with another, jurisdictionally-proper claim. See generally Handberry v.
8 Thompson, 436 F.3d 52, 62 (2d Cir. 2006) (“In 28 U.S.C. § 1367(a), Congress provided federal
9 district courts with so-called supplemental jurisdiction to decide certain state-law claims.”
10 (emphasis added)).
11 We think that the text of the statute precludes that sort of application. See generally
12 United States v. Gayle, 342 F.3d 89, 92 (2d Cir. 2003) (“Statutory construction begins with the
13 plain text and, if that text is unambiguous, it usually ends there as well.”). Section 1367(a)
14 excepts from its reach those cases in which another federal statute denies jurisdiction. 28 U.S.C.
16 provided otherwise by Federal statute”); Exxon Mobile Corp., 545 U.S. at 559 (“Section 1367(a)
17 commences with the direction that . . . other relevant statutes[] may provide specific exceptions .
18 . . .”); see also id. (“When the well-pleaded complaint contains at least one claim that satisfies
19 the amount-in-controversy requirement, and there are no other relevant jurisdictional defects,
20 the district court, beyond all question, has original jurisdiction over that claim.” (emphasis
21 added)). In our view, section 411(a) is a federal statute that “provide[s] otherwise” within the
22 meaning of § 1367(a) and presents another “relevant jurisdictional defect[]” of the sort to which
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1 the Supreme Court alluded in Exxon Mobile Corp. After all, federal courts have exclusive
2 jurisdiction over copyright claims, 28 U.S.C. § 1338(a), and section 411(a) bars claims based on
3 unregistered copyrights. It would make a hash of those provisions for us to hold that § 1367(a) –
4 somehow – vests federal courts with jurisdiction over claims based on unregistered copyrights.
5 True, section 411(a) does not refer to § 1367(a). But we have held that another statute
6 need not expressly refer to § 1367(a) to curtail its reach. See Handberry, 436 F.3d at 62 (holding
7 that 18 U.S.C. § 3626(a)(1)(A) limits § 1367(a) even though the former statute makes no
8 reference to § 1367(a)).
9 For these reasons, we conclude that § 1367(a) did not provide the District Court with
10 jurisdiction over the claims arising from the alleged infringement of unregistered copyrights.
11 CONCLUSION
12 Because the District Court lacked jurisdiction to certify the class and approve the
13 settlement agreement, we VACATE and REMAND for proceedings consistent with this opinion.
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1 JOHN M. WALKER, JR., Circuit Judge, dissenting:
15 under the applicable law, leads me to conclude that the fact that
18 settlement.
-1-
1 delineating the classes of cases (subject matter jurisdiction)
20 fact that “we have treated the rule-based time limit for criminal
-2-
1 facilitate the enforcement of copyrights, I conclude that
6 A.G., 443 F.3d 253 (2d Cir. 2006), that not all members of a
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1 Section 411(a) of Title 17 provides that “no action for
4 claim has been made in accordance with this title.” I turn first
7 (2004). It does not. See Boos v. Runyon, 201 F.3d 178, 182 (2d
14 1331, but her case ‘[arose]’ under a federal law, Title VII, that
24 U.S. Dep’t of Justice, 461 F.3d 101, 107 (2d Cir. 2006) (noting
-4-
1 that 8 U.S.C. § 1252(d) stipulates that courts of appeals may
3 by 480 F.3d 104 (2d Cir. 2007), and it simply sets forth a
16 Goord, 347 F.3d 431 (2d Cir. 2003) (per curiam), we concluded
-5-
1 exhaustion requirement is not jurisdictional and may be waived).
20 litigation.
22 411(a) does not create rights but is rather like the enforcement
-6-
1 condition of copyright protection.”); H.R. Rep. No. 94-1476, at
7 copyright owner who has not registered his claim can have a valid
9 but he cannot enforce his rights in the courts until he has made
16 requirements of [Title 17] have been met.’” H.R. Rep. No. 94-
21 Fabrics Corp., 558 F.2d 1090, 1092 n.1 (2d Cir. 1977) (citation
22 omitted); see Paul Morelli Design, Inc. v. Tiffany & Co., 200 F.
-7-
1 section 410(c), a certificate is to ‘constitute prima facie
11 U.S. Dep’t of Justice, 480 F.3d 104, 118-20 (2d Cir. 2007)
1
In fact, the copyright-registration requirement is less
stringent than the exhaustion requirement of Title VII: a
copyright holder need not obtain a “right to sue” letter from the
relevant administrative body. Compare 42 U.S.C. §
2000e-5(e)-(f), with 17 U.S.C. § 411(a) (noting that when “the
deposit, application, and fee required for registration have been
delivered to the Copyright Office in proper form and registration
has been refused, the applicant is entitled to institute an
action for infringement”), 2-7 Nimmer on Copyright § 7.16
[B][1][a][I] (“[A] party who seeks to register may proceed to
litigate the claim, regardless of whether the Copyright Office
ultimately issues the certificate, or by contrast denies it.”),
and 17 U.S.C. § 410(d) (“The effective date of a copyright
registration is the day on which an application, deposit, and
fee, which are later determined by the Register of Copyrights or
by a court of competent jurisdiction to be acceptable . . . have
all been received.” (emphasis added)).
-8-
1 exhaust could be waived); Paese v. Hartford Life Accident Ins.
2 Co., 449 F.3d 435, 446 (2d Cir. 2006) (ERISA); Boos, 201 F.3d at
3 182 (Title VII); Sellers v. M.C. Floor Crafters, Inc., 842 F.2d
4 639, 642 n.2 (2d Cir. 1988) (Labor Management Relations Act of
23 added)).
-9-
1 exceptions. Cf. Bowles, 127 S. Ct. 2365 n.4 (noting that
3 Chertoff, 471 F.3d 45, 58 (2d Cir. 2006) (noting that the Title
6 Zipes v. Trans World Airlines, Inc., 455 U.S. 385, 393 (1982)));
7 Mosely v. Bd. of Educ., 434 F.3d 527, 532-33 (7th Cir. 2006).
11 Beard, 730 F.2d 384, 387 (5th Cir. 1984) (permitting plaintiff to
12 file suit despite the fact that the Copyright Office had yet to
14 Cash Money Records Inc., 394 F.3d 357, 366 (5th Cir. 2004) (“The
19 Inc. v. Ameron Homes, Inc., 903 F.2d 1486, 1488-89 (11th Cir.
23 telling because “[i]t has long been the case that ‘the
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1 time of the action brought.’” Grupo Dataflux v. Atlas Global
6 Perfect 10, Inc. v. Amazon.com, Inc., 487 F.3d 701, 710 n.1 (9th
7 Cir. 2007); Olan Mills Inc. v. Linn Photo Co., 23 F.3d 1345, 1349
8 (8th Cir. 1994); Pac. & S. Co., Inc. v. Duncan, 744 F.2d 1490,
9 1499 & n.17 (11th Cir. 1984). These circuits have reasoned that,
17 10, Inc., 487 F.3d at 710 n.1 (“[T]he Copyright Act gives courts
-11-
1 protection,” and to the congressional policy of making available
4 220 F. Supp. 2d 1024, 1039 (N.D. Iowa 2002) (“Where the owner of
8 registration.”).
2
Convention for the Protection of Literary and Artistic
Works, Sept. 9, 1886 (Paris Text 1971), S. Treaty Doc. No. 99-27
(1986).
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1 however, a precondition for the exercise of any of the . . .
2 rights conferred by copyright, . . . [the] metaphysical
3 distinction between the existence of a right to prevent
4 unauthorized use of a copyrighted work, and the exercise of
5 that right, [should not be] maintain[ed].
6
7 S. Rep. No. 100-352, at 16-17 (1988), reprinted in 1988
14 Clay Realtors Angel Fire, 416 F.3d 1195, 1206 & n.11 (10th Cir.
15 2005).
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1 Seventh Circuit has aptly explained, it is hard to see how the
4 Corr., 182 F.3d 532, 536 (7th Cir. 1999) (explaining under the
5 Prison Litigation Reform Act that “Perez was injured (if at all)
12 Antitrust Litig., 289 F.3d 98, 107-08 (D.C. Cir. 2002) (holding
3
I thus disagree with the majority that all members of a
settlement-only class must possess both constitutional and
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1 F.3d 113 (2d Cir. 2003), a RICO class action, we held that RICO
12 action because the RICO claim was the only federal claim and, for
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1 context. We have, for example, approved the settlement of mass-
4 injuries at some point in the future -- but who, while they may
8 996 F.2d 1425 (2d Cir. 1993). And I am not disposed to undo such
11 could have in the future and could then litigate. Cf. H.R. Rep.
12 No. 94-1476 (“[A] copyright owner who has not registered his
13 claim can have a valid cause of action against someone who has
18 Warner Bros. Inc. v. Am. Broad. Cos., 654 F.2d 204, 207 (2d Cir.
20 Copyright Office, bear upon the validity of the copyright and its
-16-
1 infringement has suffered an injury-in-fact whether or not he has
-17-
1 III. Well-Made Toy, Morris, and Weinberger Are Distinguishable
5 (2d Cir. 2003), and Morris v. Business Concepts, Inc., 259 F.3d
17 dolls, 354 F.3d at 114, Well-Made Toy sought damages from the
4
I note in passing that although in Moore v. PaineWebber,
Inc., 189 F.3d 165, 169 n.3 (2d Cir. 1999), we “suggested in
dictum that RICO’s causation requirement raises a jurisdictional
issue,” Lerner, 318 F.3d at 128 (discussing Moore), the author of
the majority opinion in the instant case recently joined Lerner,
which dismissed that suggestion and held that “‘RICO standing’ .
. . is not jurisdictional in nature,” id. at 129 (Sotomayor, J.,
joined by Straub & Goldberg, JJ.).
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1 defendant based on the defendant’s alleged reproduction of the
7 map incorporated the substance of the first map (unlike the dolls
-19-
1 matter jurisdiction was lacking because the registration
6 F.2d 452, 453 (2d Cir. 1989)). Thus, Morris is hardly a beacon
-20-
1 Act that channels social security and medicare claims through an
5 which provides both the standing and the substantive basis for
-21-
1 settlement on jurisdictional grounds.5 I respectfully dissent.
5
On the merits, the failure to create a sub-class
consisting of those members holding primarily “C-class” claims,
and separate representation for those members, is a serious
problem in my view, because the named representatives hold more
“A-class” and “B-class” claims than most class members, and thus
have an incentive to favor holders of A- and B-class claims over
holders of primarily C-class claims. Cf. United Ind. Flight
Officers, Inc. v. United Air Lines, Inc., 756 F.2d 1274, 1284
(7th Cir. 1985) (“No named plaintiff is a member of subclass 2
alone.”) (emphasis added); Bogosian v. Gulf Oil Corp., 561 F.2d
434, 449 (3d Cir. 1977). Objectors point out that such
favoritism may have occurred -- as the so-called “C-reduction,”
see Maj. Op. at 7, ensures that C-class claim holders are paid
little or perhaps nothing. Nevertheless, the majority’s
conclusion today reduces the value of unregistered copyright
claims to zero, rendering the merits of the settlement a moot
point.
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