While a few courts, misled by Nimmer, ignore the Section 411(a) requirement that subject matter jurisdiction exists only if plaintiff has received an actual registration certificate or a rejection on institution of the suit, the vast majority follow the statute. An opinion issued on January 4th in the Eastern District of Wisconsin... shows some courts may take the requirement too seriously.
"Section 411(a) Bites Plaintiff Twice" (my ellipses). Although I am usually loathe to agree with the "opinion elements" of Nimmer, this time I think Professor Patry is incorrect on a matter of civil procedure.
(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 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.
(b) In the case of a work consisting of sounds, images, or both, the first fixation of which is made simultaneously with its transmission, the copyright owner may, either before or after such fixation takes place, institute an action for infringement under section 501, fully subject to the remedies provided by sections 502 through 506 and sections 509 and 510, if, in accordance with requirements that the Register of Copyrights shall prescribe by regulation, the copyright owner—
(1) serves notice upon the infringer, not less than 48 hours before such fixation, identifying the work and the specific time and source of its first transmission, and declaring an intention to secure copyright in the work; and
(2) makes registration for the work, if required by subsection (a), within three months after its first transmission.
This inelegant drafting certainly does lead to some confusion. Is the registration requirement properly treated as jurisdictional, or as an element of the claim? A recent Supreme Court decision implies that the answer is not so clearly "jurisdictional" as many1 decisions on copyright assume.
Justice Ginsburg began her unanimous opinion with the not-so-cryptic observation that "This case concerns the distinction between two sometimes confused or conflated concepts: federal-court subject-matter jurisdiction over a controversy; and the essential ingredients of a federal claim for relief." Although the case concerns a different statute entirely, Justice Ginsburg's analysis of Title VII of the Civil Rights Act of 1964 — prohibiting employment discrimination on the basis of sex — seems to apply to § 411 of the Copyright Act, too.
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.
Arbaugh v. Y&H Corp., 546 U.S. ____ (2006), slip op. at 14 (emphasis added; footnote and internal citation omitted).
The question, then, is whether § 411 "clearly states" that the presence of a registration certificate "shall count as jurisdictional." Clearly? No. It is certainly not as clear as the examples Justice Ginsburg cites in footnote 11, the note I omitted in that passage — each of which uses the word "jurisdiction." Section 411 does not. Instead, § 411 imposes a curable requirement... and if a requirement for suit that is omitted in the complaint can be cured, it is not (by definition) a failure of subject matter jurisdiction, but a failure to state a claim. And, by that standard, treating § 411 as jurisdictional is improper; it is instead an element of the claim.
That may seem a highly technical and formalistic distinction. It is; however, there is a big difference between the two to a civil procedure geek (like me). It's a particularly significant difference when jurisdiction over copyright actions is exclusively federal (28 U.S.C. § 1338 uses the word "jurisdiction").