Justices Consider Publishing in Digital Age

WASHINGTON (CN) - The Supreme Court heard arguments Wednesday over the confluence of federal court jurisdiction and copyright law in the new age of digital publishing.

In the case, class actions were consolidated where authors had sued companies that reportedly published their works electronically when they were only authorized to publish in print.

A district court judge certified three classes during the settlement proceedings, but, after dissatisfied writers appealed the settlement terms, the Second Circuit cited the Copyright Act in vacating the settlement entirely. The ruling said the district court lacked jurisdiction to settle because some of the claims did not satisfy the prerequisite of registration.

All the parties opposed the ruling, so a law professor was appointed to defend the appellate court's decision before the Supreme Court.

The Copyright Act states that, "no action for infringement shall be instituted until preregistration or registration of the copyright claim."

In a break from tradition, the justices allowed the laweyers to do most of the talking, intervening only once in a while.

Professor Deborah Merritt from Ohio State University defended the Second Circuity ruling and said the prerequisite is non-waivable, and must be enforced even if no party wants it to be.

But Charles Sims of Proskauer Rose spoke for both the writers and the publishers in arguing that the district court had jurisdiction to settle the case, waiving the preregistration requirement.

Merritt replied that Congress was clear when it specified that all people claiming copyright infringement must register beforehand, focusing on the national benefit of the registry.

"It does not contain a limitations period, as statutes of limitations do," Merritt said, referring to a provision of the Copyright Act. "It simply says, 'No action shall be instituted.' No waiver."

She argued that Congress had 60 years before it of courts interpreting the language of the provision when it revised the provision in 1976, when it changed "No action shall be maintained" to "No action shall be instituted" to make clear that it meant the provision applies at the beginning of the action.

As early as the 1920s, the Second Circuit held that the provision was non-waivable, so Congress knows how the act is being interpreted, she said. It did not make any other changes to the provision, strongly suggesting that Congress endorses the court's interpretation.

"What the parties want to do here, of course, is to waive the provision," Merritt said.

"It's not a very big deal to register your copyright, right?" Chief Justice John Roberts asked.

Merritt replied that, "one may register an entire year's worth of work on a single form for $65," suggesting that it is not a huge inconvenience.

"What Congress said, before somebody can bring an infringement action in the Federal court, we want them to confer a public benefit. We want them to register the copyright so that other people can find the owner and request permission," Merritt continued.

If the writers are not required to register before they giver their rights to the defendants in the settlement, then they would not appear on the national copyright registry.

But Sims said that there is no indication that Congress meant to restrict district court jurisdiction of its usual power to settle cases.

Sims said that Congress could have clearly specified if it had wanted to make registration jurisdictional.

"If it was jurisdictional, just a jurisdictional dismissal, the jurisdiction could be cured by going to the Copyright Office and your suit could then proceed," Justice Antonin Scalia noted.

But Sims maintained that this should not have been necessary, that the provision is not mandatory, meaning the court would not have needed to raise the issue on its own, when none of the parties raised it.

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