29 November 2007

We Can't Hear You

The Second Circuit — with lots of help from its own inept past jurisprudence, some inept lawyering (in this and in a past case), and some poor writing in the statute — has managed, yet again, to blow a case on the border between copyright and civil procedure. This time, though, there will be waves.

First, a little bit of history. The Tasini matter was massively screwed up by inept lawyering on the plaintiffs' side; it should have been filed as a class action, but wasn't. This both limited the remedies available — by the time the case came back down from the Supreme Court, the statute of limitations for all but the four plaintiffs had long expired — and allowed, even encouraged, the courts to evade dealing with the publishing industry's historical disdain for the people who provide its product. Regardless of these problems, though, Tasini ultimately stands for a fairly simple proposition: If a publishing contract does not transfer the right to place works into an electronic database, the publisher may not rely on the purported "new edition privilege" in the Copyright Act to do so. In a broader sense, Tasini also means that the alleged benefit to the authors from alleged wider public exposure to their works is irrelevant — the choice belongs to the copyright holder, not to others.

The case just decided by the Second Circuit ("Database") is a class action, purportedly on behalf of almost all US authors, that was consolidated from four others shortly after the Supreme Court decided Tasini. The main problem is a simple one: The majority of the works at issue in Database were not registered with the Copyright Office. Thus, under the Second Circuit's own prior cases — primarily the ill-considered Morris and Well-Made Toys decisions — there was no federal subject-matter jurisdiction, and therefore no federal case. Unfortunately, this argument fails for two independent reasons.

  1. First, the Second Circuit says that the registration requirement in § 411(a) is "jurisdictional." So do many other courts. However, examining the actual language of the statute, and comparing it to the Supreme Court's most-relevant opinion on whether statutory language makes a requirement jurisdictional or merely an element of the claim — and the Second Circuit's discussion evades the issue by quoting from the wrong part of a different opinion,1 and substitutes another, see slip op. at 13-15 — at minimum undermines that precedent and requires a fresh look at it, not merely reliance on the past. Unfortunately, the dissent also misses this issue.

    I realize that I'm in somewhat of a minority on this. Many, and perhaps most, commentators on copyright issues think of — 411(a) as inherently jurisdictional. Not only do I believe that is bad policy, but it is also inconsistent with the "formalities" language in the Berne Convention, at least as broad logic. Further, it is also inconsistent with the evolution of "subject matter jurisdiction" up to the time the 1976 Act was drafted, and remains in tension with the docket-control-oriented development of "subject matter jurisdiction" in the Rehnquist Court era.

  2. Second, and perhaps more importantly for this particular case, the Second Circuit neglected to consider other law in which jurisdiction is dubious, but still allows class action settlements. First-year civil procedure courses always include at least one or two mass-tort cases, usually one of the black-lung-disease/asbestosis trilogy. Even though the injury had not yet occurred, the courts uniformly held that they had jurisdiction to enforce those settlements. In tort law (as opposed to statutory law, like copyright), the failure of injury is more than merely an element of the case — it is closer to jurisdictional. This analogy should have received at least some consideration, but it did not.

And so, we're stuck with reliance on the past yet again. Rather ironic, isn't it, that the subject matter is something that wasn't even conceived of at the time the 1976 Act was being drafted? Even WestLaw and Lexis came afterward!

So, in any event, what does all of this mean? Largely, it means that the electronic aggregators are going to get to skate away, and that authors who did not make the economically unwise decision to register each and every freelance piece (admittedly, group registration could have reduced, but not eliminated, this burden) are left holding the bag... thanks, largely, to bad strategic thinking and lawyering in Tasini when it was originally filed.2

Not all pirates have black sails and fly the Jolly Roger. Some of them wear pinstriped suits.

  1. The key to Bowles is to follow the comparisons back to their sources. The opinion explicitly says "this kind of language is jurisdictional {string cite} and this kind is not {string cite}." As luck would have it, the string cites are spread across both the text of the opinion and four footnotes. And, as luck would also have it, the language in § 411(a) is somewhere between the two... which, at minimum, means that the presumption that § 411(a) is jurisdictional because the Second Circuit has said so in the past must be reexamined.

    Even worse, the Second Circuit neglected an opinion that is directly on point: Arbaugh v. Y&H Corp., 546 U.S. ___, 126 S. Ct. 1235 (2006), which took a similarly settled treatment of a statutory prerequisite to suit as "jurisdictional" and unsettled it, holding that the number of employees is an element of the claim and not an element of subject-matter jurisdiction. The language of § 411(a) is closer to the "element of the case" language (in Arbaugh) than the "jurisdictional" language, which points again at the lousy writing in the statute. I would have been happier if the Supreme Court had said "If you don't use the magic word 'jurisdiction,' you have instead described an element of the claim"... which leads directly into the next point above.

    This is merely another example of the Second Circuit's abject refusal to reconsider "long-settled" questions in the face of changes in statutory language and/or Supreme Court jurisprudence. Yes, I know that stare decisis is an important part of the common law; stagnation, however, is not.

  2. My clients are covered otherwise and have nothing to worry about. I had little trust in the ability of the counsel and the courts to navigate between Charybdis (copyright) and Scylla (civil procedure) in the Second Circuit... so my clients opted out and pursued individual remedies. Thus, I have no direct interest in this one — just the interest in seeing the law stated properly.