Ex©lusive Rights

Brooks-Ngwenya v. Indianapolis Public Schools, 2009 WL 996998 (7th Cir. 2009)

The First Circuit’s decision on webcasting in Tenenbaum wasn’t the only copyright news made yesterday.  In what was an otherwise mundane appeal, the Seventh Circuit (Posner, Williams, Tinder) indirectly addressed the Supreme Court’s upcoming oral argument in Reed Elsevier v. Muchnick.   The order was written per curium, so I suppose we don’t really know if it was Posner writing.  (But it was Posner writing.)

The facts of Brooks-Ngwenya v. Indianapolis Public Schools are rather uneventful.  A former classroom assistant brought an action against a school system for, among other things, copyright infringement of an educational program that she created.   Brook-Ngwenya’s infringement claim failed because, instead of trying to prove copying of any of her materials, she attempted to show copying of the ideas underlying the teaching program.   As the Seventh Circuit wrote, “[i]t is not the idea that is protected, but rather the original expression of the idea.”

The Seventh Circuit, however, also addressed the issue of whether a failure to follow the registration requirements set forth in 17 U.S.C. 411(a) is a prerequisite for subject matter jurisdiction.  Brooks-Ngwenya was denied copyright registration by the Register of Copyrights.   Having applied for registration and been rejected, Brook-Ngwenya was able to bring suit under 411(a), provide that she notify the Register of Copyrights of the suit, which she failed to do.   Notification is required under the statute so that the Register of Copyrights can intervene during the litigation, if she elects to do so.

The issue of whether compliance with the Copyright Act’s registration requirements is a prerequisite for a court to have subject matter jurisdiction over a copyright case is the same issue, albeit in a different context, that is presented in Reed Elsevier v. Muchnick.   The Seventh Circuit found that ”federal courts have exclusive jurisdiction of copyright cases, 28 U.S.C. § 1338(a); I.A.E., Inc. v. Shaver, 74 F.3d 768, 774 n. 4 (7th Cir.1996), and section 411(a) simply prescribes the manner in which courts exercise that jurisdiction.”

The Supreme Court has granted certiorari to decide whether compliance with the registration requirements is a precondition to the subject-matter jurisdiction of the federal courts. In re Literary Works in Electronic Databases Copyright Litigation, 509 F.3d 116 (2d Cir.2007), cert. granted (U.S. Mar. 2, 2009) (No. 08-103). But however that issue is resolved, the Copyright Office had acted on Brooks-Ngwenya’s application before she filed this lawsuit, and section 411(a) is explicit that an applicant refused registration may still sue for infringement. 17 U.S.C. § 411(a); Gaiman v. McFarlane, 360 F.3d 644, 655 (7th Cir.2004); Torres-Negrón v. J & N Records, LLC, 504 F.3d 151, 160 (1st Cir.2007).

But the applicant must notify the Register of Copyrights. For 17 U.S.C. § 411(a) provides (emphasis added) that

in any case … 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 a civil 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 notification requirement is undemanding: the complaint must merely be sent by registered or certified mail to the general counsel of the Copyright Office. Complaints Served on the Register of Copyrights Pursuant to 17 U.S.C. § 411(a), 37 C.F.R. § 205.13. The requirement “merely provides that the Office must be accorded a second opportunity to express its views on the claim’s validity after suit is filed if it has refused to recognize the claim before the suit is filed. Of course, the court is not bound by the views expressed by the Register in a case in which suit is filed despite his refusal to register the claim.” S. Rep. No. 100-352, at 14 n. 2 (1988), 1988 U.S.C.C.A.N. 3706, 3719 n. 2.

There is no evidence that Brooks-Ngwenya gave notice of her suit to the Register of Copyrights. So if serving notice on the Register is a jurisdictional requirement, we must enforce it even if the parties and the district court ignored it. Arizonans for Official English v. Arizona, 520 U.S. 43, 73, 117 S.Ct. 1055, 137 L.Ed.2d 170 (1997); United States v. Smith, 438 F.3d 796, 799 (7th Cir.2006). If instead it is simply a case-processing rule, we still must decide whether the district court should have insisted on strict compliance. Korsunskiy v. Gonzales, 461 F.3d 847, 849 (7th Cir.2006).

The Supreme Court has cautioned that “jurisdiction” is a word with “ ‘many, too many, meanings,’ “ Steel Co. v. Citizens for a Better Environment, 523 U.S. 83, 90, 118 S.Ct. 1003, 140 L.Ed.2d 210 (1998) (quoting United States v. Vanness, 85 F.3d 661, 663, n. 2 (D.C.Cir.1996)), and admonished litigants and courts alike not to describe every mandatory rule as “jurisdictional.” Kontrick v. Ryan, 540 U.S. 443, 455, 124 S.Ct. 906, 157 L.Ed.2d 867 (2004). “The law is full of rules that are mandatory in the sense that courts must enforce them punctiliously if a litigant insists. Rules are not jurisdictional, however, no matter how unyielding they may be, unless they set limits on the federal courts’ adjudicatory competence.” Farzana K. v. Indiana Department of Education, 473 F.3d 703, 705 (7th Cir.2007).

The federal courts have exclusive jurisdiction of copyright cases, 28 U.S.C. § 1338(a); I.A.E., Inc. v. Shaver, 74 F.3d 768, 774 n. 4 (7th Cir.1996), and section 411(a) simply prescribes the manner in which courts exercise that jurisdiction. Moreover, “the Register’s failure to become a party shall not deprive the court of jurisdiction to determine that issue.” 17 U.S.C. § 411(a). The suit proceeds with or without his participation and therefore the statutory notification provision does not prescribe what class of cases the court may hear.

Even though nonjurisdictional, the notification requirement is a prerequisite to suit. Congress wanted to ensure that the Copyright Office could intervene and defend its refusal to register a work, In re Literary Works, 509 F.3d at 131 (dissenting opinion); S. Rep. No. 100-352, at 14 n. 2, 1988 U.S.C.C.A.N. 3706, 3719 n. 2, as in other statutes that require notification of and an opportunity for intervention in a private suit. Examples are qui tam actions under the

False Claims Act, United States ex rel. Lujan v. Hughes Aircraft Co., 67 F.3d 242, 245 (9th Cir.1995), and a federal employee’s obligation to notify the Equal Employment Opportunity Commission before bring a suit for employment discrimination. Forester v. Chertoff, 500 F.3d 920, 928 (9th Cir.2007). While not “strictly jurisdictional” these requirements are nevertheless “mandatory.” Hallstrom v. Tillamook County, 493 U.S. 20, 31, 110 S.Ct. 304, 107 L.Ed.2d 237 (1989).

But courts enforce mandatory (though nonjurisdictional) rules-even if the parties do not raise them-in a variety of ways. If the failure to follow the statutory procedure has caused irreparable harm, the suit should be dismissed. United States ex rel. Pilon v. Martin Marietta Corp., 60 F.3d 995, 1000 (2d Cir.1995). If not, no sanction may be necessary. United States ex rel. Lujan v. Hughes Aircraft Co., supra, 67 F.3d at 245. Similarly, if the attorney general was not notified of a constitutional challenge to a statute, belated notification might satisfy the requirement of notification. Tonya K. ex rel. Diane K. v. Board of Education, 847 F.2d 1243, 1247 (7th Cir.1988); In re Young, 82 F.3d 1407, 1412 (8th Cir.1996).

The district court should have insisted on Brooks-Ngwenya’s compliance with the requirement that she notify the Copyright Office about her lawsuit. Otherwise the Register would have no opportunity to choose to defend the decision to deny registration. But the point is now academic, because the Register did weigh in during the litigation, not by intervening but by granting Brooks-Ngwenya’s renewed application. Copyright Catalog, http:// cocatalog.loc.gov. We are free to recognize that fact even though the district court was incorrectly persuaded by IPS that it could not. Island Software & Computer Serv., Inc. v. Microsoft Corp., 413 F.3d 257, 261 (2d Cir.2005) (concluding that court may take judicial notice of registry). The purpose of the notification requirement having been fulfilled, we can proceed to the merits.