Sua Sponte is acting independently, of one’s own accord. While the recently filed Elsevier et al. brief (http://www.abanet.org/publiced/preview/briefs/pdfs/07-08/08-103_Petitioner.pdf) characterizes the lower court’s behavior as sua sponte, after reading the opinion I’m not sure I agree. In fact, it appears the lower court, the second circuit court of appeals, was merely bringing forth arguments made by Elsevier et al. during settlement/mediation discussions. The lower court case was In Re: Literary Works in Electronic Databases Copyright Litigation, 509 F. 3d 116.
Now at the Supreme Court level, the case is named Reed Elsevier, Inc. v. Muchnick (but involves multiple parties on both sides of the issue). The case will be scheduled for oral argument in the October 2009 term of the Supreme Court. Currently, briefs are being filed in the case. The docket can be followed here:
Question presented is:
Does 17 U.S.C. §411(a) restrict the subject matter jurisdiction of the federal courts
over copyright infringement actions?
411(a) is a section of title 17 that requires registration of copyrighted works in order to institute an action for copyright. The language reads as follows:
(a) Except for an action brought for a violation of the rights of the author under section 106A(a), and subject to the provisions of subsection (b), 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. In any case, however, where 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 if notice thereof, with a copy of the complaint, is served on the Register of Copyrights. The Register may, at his or her option, become a party to the action with respect to the issue of registrability of the copyright claim by entering an appearance within sixty days after such service, but the Register's failure to become a party shall not deprive the court of jurisdiction to determine that issue.
The docket shows recent events in the case are as follows:
Mar 2 2009 Petition GRANTED limited to the following Question: Does 17 U. S. C. Sec. 411(a) restrict the subject matter jurisdiction of the federal courts over copyright infringement actions?
Mar 12 2009 The time within which to file the joint appendix and petitioners' brief on the merits is extended to and including May 18, 2009.
Apr 2 2009 Deborah Jones Merritt, Esq., of Columbus, Ohio, is invited to brief and argue this case, as amicus curiae, in support of the judgment below.
Apr 6 2009 The time for respondent Muchnick, et al. within which to file their brief on the merits in support of reversal is extended to and including June 1, 2009.
Apr 6 2009 The time within which to file brief of amicus curiae in support of the judgment below is extended to and including July 31, 2009.
Apr 6 2009 Any amicus curiae briefs in support of reversal are to be filed on or before June 8, 2009.
Apr 6 2009 Any amicus briefs in support of the judgment below are to be filed on or before August 7, 2009.
May 18 2009 Brief of respondents Letty Cottin Pogrebin, et al. in support filed.
May 18 2009 Joint appendix filed.
May 18 2009 Brief of petitioners Reed Elsevier, Inc., et al. filed.
So far, briefs on the same side of the issue (the publishers’ side) have been filed by Letty Cotin Pogrebin et al. and Reed Elsevier et al. The stance espoused in these briefs is that the second circuit was wrong in its holding and that the court should in fact have jurisdiction in order to certify the class and subsequently approve the offered settlement although some or most of the class involved in the settlement have copyrighted works that have never been registered as required under 411(a). Amicus briefs in support of the judgment below, i.e. the second circuit holding that the court does not have jurisdiction to certify the class and approve the offered settlement, do not have to be filed until August 7, 2009. Therefore, this case will be one to watch develop over the summer.
Basically, what happened in this case is that a class action settlement was reached subsequent to an earlier case New York Times Co. v. Tasini, 533 U.S. 483 (2001) . As part of the settlement process, a class must be defined and certified. If you recall, Tasini involved a dispute between freelance authors and newspapers at a time when writing went digital so quickly that corporate interests had failed to anticipate. With respect to the current Supreme Court case:
“This case presents an issue of exceptional importance to the nation’s freelance authors, newspaper and magazine publishers, archival databases, and the researching public. Its resolution will decide whether, in connection with the nationwide class action spawned by the New York Times v. Tasini case, the parties may globally settle their differences by compensating and releasing the claims of freelance authors with respect to all their contributions to the databases. Tasini expressly contemplated that databases, publishers, and authors could reach a court enforceable global settlement. On that basis, the parties and publisher spent over four years of intensive negotiations to reach an industry-wide settlement that was approved” (Elsevier Brief, p. 2).
The second circuit had been considering an appeal from the (lower) district court’s certification of the class in a class action lawsuit. “The precise issue on appeal was whether the district court had jurisdiction to certify a class consisting of claims arising from the infringement of unregistered copyrights and to approve a settlement with respect to those claims. It did not” (In Re, p. 2).
Tasini held that that if freelance authors’ writings were to be distributed and/or archived in electronic databases and formats, publishers had to have express licenses from those authors.
The second circuit (Judges Winter and Straub, Judge Walker dissenting) characterized Tasini as follows: “The contracts did not grant the publishers the right to electronically reproduce those works or license them for electronic reproduction by others. But the publishers did so anyway” (In Re, p. 4).
While in the present case, Elsevier et al. characterizes Tasini a bit differently:
“Tasini effectively compelled electronic publishers to purge their databases of many hundreds of thousands of newspaper and magazine articles for which written licenses had not been obtained. Obtaining such licenses retrospectively would be an insuperable task, given the sheer number of authors and works involved and the practical difficulties associated with finding the authors and executing individual agreements with each of them . . . following the second circuit’s Tasini decision, more than a score of freelance authors, supported by national authors’ rights trade organizations, filed lawsuits against online databases and certain publishers” (Elsevier, p. 2)
Here’s a quote from the brief filed May 18, 2009 by Reed Elsevier et al. describing how the issue now before the Supreme Court had arisen in the lower court, the second circuit:
“Shortly before argument, the second circuit panel sua sponte requested briefing on ‘whether the district court had subject matter jurisdiction over claims concerning the infringement of unregistered copyrights’ . . . All parties, including the objectors, responded that the district court had jurisdiction to approve the settlement” (p. 7).
But from my view, in the second circuit opinion, rather than acting completely independently of the parties involved, the court invoked the defendants’ (the publishers) arguments in reaching its decision:
“Before the mediator, defendants contended that this litigation possessed scant settlement value because the District Court could never certify the vast majority of the claims for inclusion in any proposed class.” Citing 411(a), the Defendants stated: “That rule . . . whose language could hardly be clearer, precludes the certification of any class respecting works in which a copyright has not been registered . . . the District Court lacks jurisdiction . . . to certify a class covering any unregistered works” (In Re, p. 5). The second circuit also pointed out that defendants provided survey evidence showing that only 1% of journalists registered their work and subsequently 99% of the claims at issue in the class were covering unregistered work.
So briefs asserting arguments in support of the second circuit decision have yet to be filed. This is an interesting case because it pits two sets of publishing stakeholders against each other in a rather unique fashion. (Publishers on one side, and authors and author trade organizations on the other side).
The case presents a sort of irony to some of the arguments made in comp/rhet that information should be set free, or that corporate interests should not over-regulate our use of information. In this case, the large publishers are arguing against their usual position – that information should be locked up, and in this case are arguing how sad it is that databases have had to be purged because copyright holders cannot be located (along the lines of the interests in the Orphan Works Act). In this case, publishers want to have free reign over the works of authors who did not expressly license their materials to be published in perpetuity in digital formats – freelance authors who I’m guessing were not paid much and were not provided health insurance, retirement, job security, and so on, i.e., marginalized peoples, in some ways.
My idea here is supported in some of the discussion in the second circuit opinion at issue. The class that was formed as a basis for the settlement before the lower court included three classes, A, B, and C.
“Category A claimants receive a flat fee. Category B claimants receive the greater of either a flat fee or a percentage of the original price of the work. By and large, Category C claimants also receive the greater of either a flat fee or a percentage of the original price of the work. Importantly, if the cost of all claims (plus the cost of notice, administration, and attorney’s fees) exceeds $18 million, then the amount paid to Category C claimants is reduced – potentially to zero – before the claims of Category A and B claimants are affected. This feature is called the ‘C-reduction.’” (In Re, p. 2) Category C claimants were largely those whose works had not been registered, and so the justification for their lower status in the settlement, according to the second circuit, was posited by the defendants as fair treatment since C claimants’ claims were for the most part worthless since they had not registered their works. The plaintiffs, according to the second circuit, basically agree with this.
So, what this boils down to is that the case is not really about whether or not information should be set free, but whether or not the publishing industry will benefit to the detriment of freelance authors, from inadequately anticipating the implications of the digital age rather suddenly befalling us in 2001.
I will be interested in following this case, and I’m willing to see how the arguments unfold. I also will commit more time to re-read Tasini and surrounding documents. But my inclination is to favor the holding in the second circuit that the court has no jurisdiction to approve a settlement that involves copyright claims and authors who have never registered their works.
I see some logical problems in the briefs I’ve read so far. If the court accepts the settlement via acknowledging jurisdiction, it is in effect preempting a copyright owner’s right to register their work – this seems a strange result. What I mean is, if the court had approved the settlement, it means that an author could register a work and be granted an official copyright, which would be meaningless due to the settlement. So that seems like a bizarre result. The other problem I have is that I interpret 411(a) as presenting a bar to the more powerful party in a copyright action, the copyright holder wishing to institute an action to enforce his/her rights. But in the present case, it’s being requested that 411(a) be used, or rather ignored, to present a bar to the weaker party in the copyright action, the author who never registered his/her work. In this case, the weaker party is *not* instituting the action. So, if the court would assume jurisdiction and rule in favor of taking rights from a party who had never registered their work, 411(a) would be inverted from what seems to me to be its intended purpose.
Further, the second circuit argued that if it were to assume jurisdiction in this case: “defendants’ position calls for an exception vastly broader than is found in any case by asking us to rule that registration of one party’s copyright would somehow provide jurisdiction over claims stemming from the unregistered copyrights of many other parties. We decline to do so” (In Re, p. 8).
So this is very problematic to me, and would produce inequitable results if it were embraced by the Supreme Court. In general I will be one to favor the weaker party in the lawsuit when the stronger party is moving against it, and thus has the burden. This is especially true in this case because the weaker party is not even present in the case both because of lacking registered works, and because of the possibility of being “represented” in the class (but remaining invisible) if it is indeed certified. The fair thing for the Supreme Court to do in this case is to affirm the second circuit. This seems very clear after reading the second circuit opinion which is available for free on its website using a search for docket number 05-5943.
http://www.law.cornell.edu/supct/html/00-201.ZS.html (New York Times v Tasini)
Citation for Second Circuit Opinion Being Appealed: 509 F.3d 116; 2007 U.S. App. LEXIS 27558; 85 U.S.P.Q.2D (BNA) 1217; Copy. L. Rep. (CCH) P29,494
Gale Group, Inc.
Dow Jones & Company, Inc.
Dow Jones Reuters Business Interaction, LLC
Knight Ridder, Inc.
Knight Ridder Digital
News Bank, Inc.
Pro Quest Company
Reed Elsevier, Inc.
Union-Tribune Publishing Company
Copley Press, Inc. EBSCA Industries, Inc.
Participating Publisher Tribune Company