Copyright Law Blog: Exclusive Rights

Category Archives: Supreme Court

Costco v. Omega and the definition of importation

Shourin Sen - 26 April 2010 – 10:00 am

Filed under Distribution Right, First Sale, Supreme Court

As I mentioned in my previous post on Costco v. Omega, I would not be surprised if the Supreme Court’s opinion addresses issues that are outside of the narrow confines of the question presented. One of the issues that the Court may address is the definition of importation in Section 602 of the Act. Omega alleged that Costco committed copyright infringement directly under Section 106(3), and through importation of the watches under 602(a), which invokes the Section 106(3) exclusive right of distribution.

The interesting thing about this play is that Costco didn’t import the watches under a traditional use of the term. Costco acquired the watches from a third-party who brought the watches into the United States. The Copyright Act does not define importation or exportation, or distribution for that matter. According to Omega’s Renewed Motion for Interlocutory Summary Judgment:

Any party in the chain of distribution may be held liable for copyright infringement otherwise a distributor could avoid liability simply by using a straw to import the unauthorized copies. UMG Recordings, Inc. v. Disco Azteca Dist., Inc., 446 F. Supp. 2d 1164, 1173 (E.D. Ca. 2006) (“Disco Azteca”), citing Columbia Broadcasting Systems, Inc. v. Scorpio Music Dist., Inc., 569 F. Supp. 47, 48-49 (E.D. Pa. 1983) (“CBS”). Lack of intent or knowledge of the infringement is no defense to infringement. Educational Testing Service v. Simon, 95 F. Supp. 2d 1081, 1087 (numbered paragraph 33) (C.D. CaL. 1999). See also Parfums Givenchy, Inc. v. Drug Emporium, Inc., 38 F.3d 477, 482 (9th Cir. 1994) (“Parfums Givenchy”).

In C & C Beauty, the plaintiff owned a copyright in a two-dimensional artistic design on the box containing Amarige perfume which was manufactured abroad. 832 F.Supp. at 1381. Defendant was an importer of grey market products who imported and distributed the perfume products including the box containing the copyrighted design. Id. at 1382. The court recognized the validity of the plaintiffs copyright based on the prima facie evidence of the copyright registration. Id. at 1383. The Court looked at the pleadings and affidavits and found no question of fact regarding the actions of the defendant importing and distributing the perfume .
with the copyrighted box acquired abroad, without plaintiffs consent. Id. The Court found the test for infringement under § 602(a) had been met. ¡d. (Parfums Givenchy is based on the same set of facts as C&C Beauty. Id. at 1382.)

The Ninth Circuit did not address the issue of whether the receipt of unauthorized imported goods was an importation because it was outside of the scope of the appeal. The District Court had found that all of the claims were barred by the first-sale doctrine, sidestepping the importation issue.

I think raising the argument was a strong tactical play regardless of whether it’s successful. By arguing that Costco’s actions were an importation, Omega forced the District Court, Ninth Circuit and Supreme Court to evaluate how the meaning of Section 109 is informed by Section 602.

Supreme Court grants cert in Costco v. Omega

Shourin Sen - 20 April 2010 – 9:00 am

Filed under Extraterritoriality, First Sale, Importation, Supreme Court

On Monday (Patriots Day in New England) the Supreme Court granted certiorari in Costco v. Omega. I’ve provided a rundown of the case in late March so I will dispense with the background. A couple of comments on the Supreme Court’s decision to grant cert:

The most interesting part of blogging cases is watching the conversation between the different branches of government and the many layers of our judicial system. I was somewhat surprised when the Supreme Court invited the Solicitor General’s Office to brief cert but upon reflection it made sense. Congress, in enacting the Pro-IP Act, arguably re-framed a core component of copyright law without substantial debate before passage. The invitation by the Supreme Court may have been an attempt to force the Executive to take a position on an issue that was not given discussion before enactment.

To that end, I question whether the Supreme Court’s decision to grant cert in Costco is rooted in forcing debate on the contours of the first-sale doctrine. Oral arguments will provide a spotlight, even if the Supreme Court has no intention of disturbing the Ninth Circuit’s (and all of the other district courts’ that have addressed the issue) interpretation of Sections 109 and 602. If Congress does not amend the provisions in the near future it will likely become a lasting component of American copyright law, given the momentum it takes to pass any law in the U.S. The granting of cert, then, could be an attempt by the Supreme Court to ensure that the contours of the first sale doctrine accurately reflects current Congressional intent before momentum takes hold.

I would not be surprised if the Supreme Court’s opinion contains language on issues that are not directly at bar, such as whether parties can raise 109(a) as a defense in cases involving foreign-made copies so long as a lawful sale has occurred, or about the viability of the defense of copyright misuse.

The Solicitor General’s Office led with the argument that cert should be denied because there was no circuit split, instead of with its statutory analysis. The petitioners made the argument in opposition that the Court should grant cert because there was no circuit split, and unless the issue was addressed post-haste, it would likely become accepted cannon. I made the observation in my previous post on Costco that the Supreme Court appears to grant cert in copyright cases for issues that fundamentally affect the structure of copyright law, and circuit splits play a modest part of the evaluation process. The decision of the Supreme Court to grant cert in Costco provides more support for this contention.

The American Federation of Musicians, which is affiliated with the AFL-CIO, presumably favors the Ninth Circuit’s interpretation that Section 109 does not limit distribution rights in works manufactured outside of the United States. But the Ninth Circuit’s decision, Costco argued, will negatively impact American manufacturing, which I would assume is closer to the core of the AFL-CIO’s lobbying efforts. The AFL-CIO (AFM) elected not to brief on cert. It will be interesting to see if they jump in on merits. A petition could provide a signal of how much, if at all, labor unions are concerned about the Ninth Circuit decision’s possible negative impact on American manufacturing.

Previous posts on Costco v. Omega:

Court Documents:

§411(a) does not restrict a federal court’s subject-matter jurisdiction, Supreme Court

Shourin Sen - 3 March 2010 – 9:00 am

Filed under Jurisdiction, Registration, Supreme Court

On Tuesday, the Supreme Court reversed the Second Circuit and found that 17 U.S.C. 411(a) is merely a claim-processing rule, not a restriction on a federal court’s subject matter jurisdiction. I’ve discussed the background on this case a couple of times previously. The opinion was some of what I expected (very short, unanimous judgment, no ruling on whether district courts should or must dismiss an infringement claim brought on an unregistered work sua sponte, no discussion of the role of registration, no statement on the merits of the settlement) and some of what I didn’t expect (Thomas writing for the Court, joined by Roberts, Scalia, Kennedy and Alito, with a Ginsburg concurrence, joined by Stevens and Breyer.) Sotomayor recused herself from the case because she was the presiding district court judge in NY Times v. Tasini, the dispute underlying Reed Elsevier v. Muchnick.

This could have been a landmark copyright case if the Court had delved into a description of copyright registration or tried to answer whether registration was a hard-line requirement or more malleable. The Court avoided these evaluations, wisely in my humble opinion, and constrained its background discussion and analysis. Registration plays such a foundational role on so many issues in copyright that dicta and ancillary findings probably would have been twisted in all types of ways downstream. It seems better to leave play in the joints on many of the ancillary issues and push them to district and appellate courts, even if the outcomes will sometimes be inconsistent.

William & Mary Professor Scott Dodson on the civil procedure aspects of the case at Civ Pro and Federal Courts Law Blog. The majority and concurring opinion agreed that the two integral cases were Arbaugh v. Y & H Corp., 546 U. S. 500 (2006) and Bowles v. Russell, 551 U.S. 205 (2007). Both agreed that a passage from Arbaugh was controlling:

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. Applying that readily administrable bright line to this case, we hold that the threshold number of employees for application of Title VII is an element of a plaintiff’s claim for relief, not a jurisdictional issue.” 546 U. S., at 515–516 (citation and footnote omitted). [Italics added.]

The majority opinion and concurring opinion, however, conspicuously differed in their quotations from Arbaugh. Justice Thomas, writing for the majority, did not include the “bright line” language from Arbaugh that I italicized above. Justice Ginsburg, concurring, embraced the phrase “bright line” in four different places. Linguistics aside (but words matter) both the majority and concurring opinion seemed to apply the test from Arbaugh as the first and primary benchmark.

The second case both the majority and concurring opinion used prominently was Bowles v. Russell, 551 U.S. 205 (2007). Justice Thomas characterized Bowles as standing for the proposition that “context, including this Court’s interpretation of similar provisions in many years past, is relevant to whether a requirement as jurisdictional.” Applying Bowles to Reed, the majority found that §411(a)’s historical treatment was “jurisdictional,” and a “factor in the analysis,” but “not dispositive.” Found Justice Thomas, “The other factors discussed above demonstrate that §411(a)’s registration requirement is more analogous to the nonjurisdictional conditions we considered in Zipes and Arbaugh than to the statutory time limit at issue in Bowles.”

Justice Ginsburg, concurring, viewed Bowles as conflicting with Arbaugh, but found that it was possible to reconcile the case if it’s read as ” relying on a long line of this Court’s decisions left undisturbed by Congress.” Union Pacific R. Co. v. Locomotive Engineers and Trainmen Gen. Comm. of Adjustment, Central Region, 558 U. S. ___, ___ (2009) (slip op., at 13) (citing Bowles, 551 U. S., at 209–211).” Noted Ginsburg, “The same is true of our decision, subsequent to Bowles, in John R. Sand & Gravel Co. v. United States, 552 U. S. 130 (2008).”

Justice Ginsburg found that the judicial history interpreting 411(a) did not satisfy a Bowles analysis. Justice Ginsburg noted that the two hundred opinions on the topic were almost all “‘drive-by jurisdictional rulings’ thatshould be accorded ‘no precedential effect,’” Arbaugh, 546 U. S., at 511 (quoting Steel Co. v. Citizens for Better Envi-ronment, 523 U. S. 83, 91 (1998)); see Arbaugh, 546 U. S., at 511–513; ante, at 5–6.

So, it would appear that the majority and concurring opinions were distinguishable along a couple of fronts:

The majority opinion rejected the phrase “bright line” rule from Arbaugh to describe the case’s test, while the concurring opinion embraced it.
The majority opinion seemed to imply that all context (“context, including this Court’s interpretation of similar provisions in many years past”) should be taken into consideration under a Bowles analysis, while the concurring opinion could be read as limiting Bowles to narrowly applying only to long lines of Court decisions left untouched by Congress.
The majority opinion found that the historical legacy of 411(a) was that it was a jurisdictional requirement but that when all factors were considered, the provision did not restrict a federal court’s subject matter jurisdiction. The concurring opinion found that the cases interpreting 411(a) were merely drive-by jurisdictional rulings, and did not weigh in favor of a finding that 411(a) restricted a federal court’s subject matter jurisdiction.

Earlier posts on Reed Elsevier v. Muchnick:

Supreme Court grants cert in Reed Elsevier, et al., v. Muchnick, et al. (March 3, 2009)
Judge Posner weighs in on Reed Elsevier v. Muchnick (April 17, 2009)
Breaking News: Every pending copyright case lacks jurisdiction (May 20, 2009)
Merit briefs posted for Reed Elsevier v. Muchnick (May 27, 2009)
Solicitor General files amicus in Reed Elsevier arguing that 17 U.S.C. 411(a) is a rigid claim processing rule (June 17, 2009)
AIPLA files amicus in Reed Elsevier v. Muchnick (June 19, 2009)
Supreme Court docket roundup of copyright cases (June 30, 2009)
Copyright at the Supreme Court this week (Oct 5, 2009)
Supreme Court hears oral arguments in Reed Elsevier (Oct 8, 2009)
Form 19 and oral arguments in Reed Elesevier v. Muchnick (Nov 16, 2009)

Breaking news: Supreme Court overturns 2d Cir. in Reed Elsevier

Shourin Sen - 2 March 2010 – 1:51 pm

Filed under Google Books Settlement, Jurisdiction, Registration, Supreme Court

Here’s the slip opinion. Thomas wrote the majority. Ginsburg concurred in part and concurred with the judgment, joined by Breyer and Stevens. A full discussion of the opinion will come tomorrow morning. (H/t Irv Muchnick.)

Supreme Court denies cert in Arista Records v. Launch Media

Shourin Sen - 26 January 2010 – 1:26 pm

Filed under Compulsory License, Copyright Royalty Board, Digital Audio Transmission, Music, Supreme Court

On Monday, the Supreme Court denied Sony BMG’s cert petition in Arista Records, LLC v. Launch Media, Inc., 2009 WL 2568733 (2d. Cir. 2009). If a person offers an “interactive service,” as defined in the Act, she must pay an individual licensing fee for musical selections and not just the compulsory license rate set by the Copyright Royalty Board. The general rationale behind the provision is to ensure that webcasters must individually clear songs if they offer an on-demand musical service, not just pay the compulsory royalty rate.

Launch Media provided an internet radio site that allowed users to create stations from their preferences, such as a genre, artist or song. Sony argued it was an interactive service, defined in the Act as a service “that enables a member of the publc to receive a transmission of a program specially created for the recipient, or on request, a transmission of a particular sound recording …, which is selected by or on behalf of the recipient.”

The Second Circuit found that Launch Media service was not an “interactive service” and that the company only needed to obtain a compulsory license to offer musical selections. Sony BMG petitioned the Supreme Court, and was denied.

Form 19 and oral arguments in Reed Elesevier v. Muchnick

Shourin Sen - 16 November 2009 – 8:55 am

Filed under Registration, Supreme Court

There’s a section of last month’s Supreme Court oral arguments in Reed Elsevier v. Muchnick that I’ve been meaning to point to for a while. Counsel for the Petitioners, when arguing that registration is a case processing rule and not jurisdictional, raised Form 19:

MR. SIMS: . . . This Court’s own forms for copyright infringement, which were first promulgated in the 1930s, have patterned our argument and are contrary to the amicuses’. They have always treated the registration provision of the model complaint differently from the jurisdictional provisions. Those are in separate sections, not next to each other even.
CHIEF JUSTICE ROBERTS: We have forms for copyright infringement actions?
MR. SIMS: You do. The Federal Rule –
(Laughter.)
CHIEF JUSTICE ROBERTS: Live and learn.
MR. SIMS: And because they haven’t changed very much in 70 years, you probably haven’t spent much time with them.
JUSTICE GINSBURG: It’S Form 19.
MR. SIMS: Yes. It was originally Form 17. We have gone through the history. But I think there is really only one change and in every respect it is identical to what it was in 1938. And, again, as I say, it separates out the registration provision from the jurisdictional provision.

The federal Forms are adopted under Federal Rules of Civil Procedure Rule 84, which states that they are “sufficient under the [F.R.C.P.] and are intended to indicate the simplicity and brevity of statement which the rules contemplate.” (I like Chief Justice Roberts was unaware of Form 19.) Petitioners made the rather clever argument that registration was historically not a jurisdictional requirement through the fact that registration wasn’t included in the Form’s jurisdiction section:

COMPLAINT FOR COPYRIGHT INFRINGEMENT

AND UNFAIR COMPETITION

1.         <Statement of Jurisdiction. See Form 7.>

<a. For diversity-of-citizenship jurisdiction.> The plaintiff is [a citizen of State A] [a corporation incorporated under the laws of State A with its principal place of business in State A]. The defendant is [a citizen of State B] [a corporation incorporated under the laws of State B with its principal place of business in State B]. The amount in controversy, without interest and costs, exceeds the sum or value specified by 28 U.S.C. § 1332.

<b. For federal-question jurisdiction.> This action arises under [the United States Constitution; specify the article or amendment and the section] [a United States treaty; specify] [a federal statute, ___U.S.C. § ___].

<c. For a claim in the admiralty or maritime jurisdiction.> This is a case of admiralty or maritime jurisdiction. <To invoke admiralty status under Rule 9(h) use the following: This is an admiralty or maritime claim within the meaning of Rule 9(h).>

2.         Before <Date>, the plaintiff, a United States citizen, wrote a book entitled ____________ _________________________________________________.

3.         The book is an original work that may be copyrighted under United States law. A copy of the book is attached as Exhibit A.

4.         Between <Date> and <Date>, the plaintiff applied to the copyright office and received a certificate of registration dated <Date> and identified as <Date, Class, Number>.

5.         Since <Date>, the plaintiff has either published or licensed for publication all copies of the book in compliance with the copyright laws and has remained the sole owner of the copyright.

6.         After the copyright was issued, the defendant infringed the copyright by publishing and selling a book entitled <______________>, which was copied largely from the plaintiff’s book. A copy of the defendant’s book is attached as Exhibit B.

7.         The plaintiff has notified the defendant in writing of the infringement.

8.         The defendant continues to infringe the copyright by continuing to publish and sell the infringing book in violation of the copyright, and further has engaged in unfair trade practices and unfair competition in connection with its publication and sale of the infringing book, thus causing irreparable damage.

Therefore, the plaintiff demands that:

(a)        until this case is decided the defendant and the defendant’s agents be enjoined from disposing of any copies of the defendant’s book by sale or otherwise;

(b)        the defendant account for and pay as damages to the plaintiff all profits and advantages gained from unfair trade practices and unfair competition in selling the defendant’s book, and all profits and advantages gained from infringing the plaintiff’s copyright (but no less than the statutory minimum);

(c)        the defendant deliver for impoundment all copies of the book in the defendant’s possession or control and deliver for destruction all infringing copies and all plates, molds, and other materials for making infringing copies;

(d)       the defendant pay the plaintiff interest, costs, and reasonable attorney’s fees; and

(e)        the plaintiff be awarded any other just relief.

Date: <Date> <Signature of the attorney or unrepresented party>

________________________________________

<Printed name>

<Address>

<E-mail address>

<Telephone number>

Supreme Court hears oral arguments in Reed Elsevier

Shourin Sen - 8 October 2009 – 9:00 am

Filed under Jurisdiction, Supreme Court

Reed Elsevier v. Muchnick, Oral Arguments (Oct. 7, 2009).

The Supreme Court heard oral arguments in Read Elsevier v. Muchnick yesterday. There were some questions, by Chief Justice Roberts in particular, on the overall merits of whether 411(a) is a jurisdictional requirement or merely a case processing rule. But a large portion of the arguments, if not the lion’s share, centered on the more narrow question of whether to frame 411(a) as a strict rule (which courts could raise sua sponte, and could not be waived by a defendant), or a common defense (which courts cannot raise sua sponte, and which could be waived by litigants).

Justice Ginsberg played a large role in the questioning to the extent that I would be somewhat surprised if she isn’t the author of the opinion. Many of Justice Ginsburg’s questions seemed to probe particulars on how to frame a decision, and not the broad questions of the dispute. As a side note, Justice Sotomayor, who was as an intellectual property practitioner before being appointed to the Southern District of New York, did not ask a question during the arguments. [Edit: SCOTUSBLOG brings word that Justice Sotomayor recused herself from the appeal. Justice Sotomayor presided over N.Y. Times v. Tasini, the dispute underlying Reed Elseveier v. Muchnick, when it was heard in the S.D.N.Y.]

Justice Ginsburg early on raised questions about the advantages and disadvantages of a hard-line case processing rule:

JUSTICE GINSBURG: Do you agree with the –with the government that it’s mandatory for the district court but prohibited to the court of appeals? The government has this hybrid where, because of the public purposes served by registration, not only can but the district court should raise the failure to register on its own, but then the government says once you have a final judgment in district court, it’s no longer open for the court of appeals to raise it on its own.

Do you agree with that or do you say it’s for the defendants to raise, and if they don’t raise it, too bad?

MR. SIMS [Ed: Mr. Sims represented the petitioner, arguing that 411(a) is a case-processing rule]: Justice Ginsburg, we certainly agree with the government with respect to the court of appeals. With respect to the district court, on the one hand, my clients don’t — are satisfied with the government’s position. On the other hand, as Justice Scalia’s decision, I think, in Day v. McDonough pointed out, the traditional default rule really is that defenses are up to defendants to raise.

But if the Court felt that the provision was important enough so that it wanted to impose on district courts the obligation of strict policing, I think it could. But as I say, I have been practicing copyright law for 25 years; I’ve never seen a defendant who either missed a defense or chose not to raise it.

In this particular kind of situation where there is no reason at all, I think, to suspect that defense counsel will not raise 411 whenever — none of the cases that Ms. Merritt raises for example, involve situations of waiver, where the issues weren’t raised until the court of appeals — I think that the Court can rely, frankly, on defendants and on the ability of district judges to nudge defense counsel when they need nudging.

Justice Ginsberg also pressed the advocate from the Solicitor General’s Office on whether a court should be able to raise registration sua sponte:

Ms. Anders: [411(a)] is not jurisdictional, but it should not be fully waivable. The provision does not speak to the power of the courts to decide cases and therefore it does not limit the court’s jurisdiction to adjudicate infringement suits.

But, because of this phrase and mandatory language, the requirement should be strictly enforced whenever the defendant asserts it, and because the requirement serves important public interest that are independent of the concerns of the parties to any individual suit –

JUSTICE GINSBURG: So your position is that the district court really should have dismissed this case at the outset?

MS. ANDERS: I think that, in the ordinary case, the district court should — when — when the defendant waives the requirement, which would be the rare case, when the defendant doesn’t assert it. When the defendant waives the requirement, the district court should consider whether accepting that waiver would undermine the public interest behind 411.

Now, in this particular case, it may not have been an abuse of discretion for the district court to consider those interests and decide that here it would have been acceptable to accept the defendant’s waiver and permit the resolution to go forward because, in this case, the periodicals that — that are involved — the works at issue were primarily already in the possession of the Library of Congress, because they had been registered as — the periodicals themselves had been registered.

So the Library’s interest is not as strongly implicated here. In addition, this is a case in which there was going to be settlement, so the Court wasn’t going to need to adjudicate the copyright claims and therefore the opportunity for the register’s views to be taken into account was less important.

More questioning from Justice Ginsburg on the topic:

JUSTICE GINSBURG: You were candid to say that this is in a hybrid category, that the government was taking an intermediate position. Do you know of any other provision where the district court has an obligation to raise the question on its own motion that is yet not jurisdictional?

MS. ANDERS: I believe this Court has recognized that waiver doctrines in general are discretionary, and so, particularly in the area of res judicata, the Court has recognized in the Plaut v. Spendthrift Farm and Arizona v. California that the Court has some discretion to enforce res judicata on its own motion.

JUSTICE GINSBURG: Very, very limited. I think Arizona didn’t say any time there’s — there’s a preclusion plea, the Court can raise it on its own.

MS. ANDERS: That’s correct. I think also the plain error rule presupposes that there are some errors that the district court has a responsibility to correct on its own, even though neither party has brought the error to its attention. So in other words, the district court has the obligation to issue a legal ruling that neither party has asked for, and I think that kind of regime is appropriate here because the public interest at issue, the Library’s interest and the interest in the public record of copyright, those don’t depend on the defendant’s litigation decisions — they shouldn’t depend on the defendant’s particular strategic decisions within a particular case.

Justice Scalia delivered a pithy line, evincing some reticence towards framing 411(a) as a rule that courts could raise sua sponte:

JUSTICE SCALIA: But how — how would we get to hold what — what you say is the law? It seems, to me, once we decide it’s not jurisdictional and once we agree with you, that it doesn’t — at least in this case — didn’t have to be raised sua sponte by the district court.

That’s the end of the case, and so why do we have to engage in the further discussion, well, ordinarily, the district court must raise it on its own and — you know, and, if it doesn’t ordinarily –you know, the appellate court should.

Why do we have to get into that?

MS. ANDERS: I don’t think you have to get into it, Justice Scalia. I think –

JUSTICE SCALIA: Which means we shouldn’t.
(Laughter.)

Justice Ginsburg also raised Perfect 10, inc. v. Amazon.com, inc, 508 F.3d 1146 (9th Cir. 2006), and similar cases, where courts have found that they have jurisdiction to issue an injunction even if a plaintiff has not registered her work:

JUSTICE GINSBURG: Do they — if they are just suing, not for money but for an injunction, do they have to register before bringing an injunction suit?

MS. JONES MERRITT [Ed. Professor Merritt was appointed by the Court to represent the Second Circuit's judgment]: Yes, Your Honor, they do. In order to bring any action — if the injunction is based on infringement. So we’re — if the plaintiff brings an action for infringement and the remedy they seek is an injunction, then the copyright must be registered first.

There are some cases in the lower courts in which we have a plaintiff who has a longstanding pattern of infringements that a particular defendant has been engaged in against that plaintiff. The Owen Mills case is an example. A local photography studio was upset because a photo duplicating shop kept copying their copyrighted photographs. They entered an action for infringement, had registered several of the photographs.

The Court issued an injunction that covered future works as well, but those were all works within the same judicial controversy. So an injunction could reach further than a single registered work as long as we are talking about one single controversy.

In this case we don’t have an injunction, we have damages, and we have thousands of different controversies. As the Court knows the class action rules do not change the substantive law or the rules of — of jurisdiction. We have here thousands of different controversies that have been aggregated for convenience under rule 23(b)(3), but the court must have jurisdiction over each of those controversies. Or if we take the alternative route of Hallstrom, the hybrid approach, and we say that this is a mandatory requirement. Congress has been quite clear about this mandatory requirement, and that mandate must be satisfied with respect to every controversy in this class action.

Supreme Court asks SG to brief Costco v. Omega

Shourin Sen - 5 October 2009 – 7:00 pm

Filed under First Sale, Supreme Court

Well, we didn’t get a cert decision in Costco Wholesale Corporation v. Omega, S.A. but we did get a bombshell. The Supreme Court has invited the Solicitor General to file a brief on behalf of the United States. It’ll be interesting to see where this goes.

For any of you who want to know more about the process through which the Supreme Court “invites” a brief from the S.G., Tony Mauro of the Legal Times wrote a great article on the topic in 2003. Snipits below:

[M]ost of the time, when asked, the solicitor general’s advice carries great weight: In the last three terms, the Court has followed the SG’s invited recommendation 74 percent of the time.
* * * * *
Although there is no written rule, it is believed that the vote of three justices is needed to ask for the solicitor general’s views, one less than is needed to grant review. For that reason, an invitation is sometimes seen as a sign that three justices who want the Court to grant review are looking for a powerful ally to help them win a fourth vote.

And although framed as invitations, CVSGs are included on the list of orders issued by the Court. When the solicitor general files his brief in reply, he uses the odd formulation that it is being “submitted in response to the order of this Court inviting the Solicitor General to express the views of the United States.”

Indeed they are more like orders than invitations: They are not to be declined. But no firm deadline is established, and sometimes the SG’s office takes months to reply.
* * * * *
[D]elay can also occur because an invitation forces the government to study and take a stance on an issue that it would just as soon have avoided. Factions from all parts of the federal government and the private sector are called in, and intense lobbying often ensues.

“There are times when you very much hope to be asked. It can be an opportunity,” says former Reagan administration Solicitor General Charles Fried, now a professor at Harvard Law School. “But sometimes you very much hope you won’t be asked.”

Here are the documents from the Court docket:

Copyright at the Supreme Court this week

Shourin Sen - 5 October 2009 – 9:00 am

Filed under Academia, Complete Preemption, Importation, Jurisdiction, News, Registration, Supreme Court

This is big week for copyright at the Supreme Court. The Court will hear oral arguments in the twenty-year legal saga Reed Elsevier v. Muchnick on Wednesday. On that note, Emily M. Bass, the attorney who represented one of the two plaintiff groups in Tasini, has passed along word about an article she has posted at SSRN. The abstract:

‘Catch 411:’ Does Section 411 of the Copyright Act Restrict the Subject Matter Jurisdiction of Federal Courts Over Copyright Actions?

This commentary examines an issue that will soon be argued before the United States Supreme Court: whether 17 U.S.C. §411′s registration requirement restricts the subject matter jurisdiction of the federal courts over copyright infringement actions. The Second Circuit found that courts lack jurisdiction to adjudicate claims alleging the infringement of unregistered works. The issue of whether courts have jurisdiction over such claims is of tremendous importance: The U.S.’s collective intellectual product is perhaps its greatest asset. Since unregistered works are as susceptible to mass electronic infringement as registered works, and arguably much more numerous, a decision affirming the Second Circuit would deny the country effective means of defending key IP. This commentary examines the statutes involved, arguments that have been made and the Second Circuit Opinion. It poses four solutions to §411′s supposed jurisdictional conundrum and concludes that federal courts unquestionably possess jurisdiction over unregistered claims.

I will post a longer writeup tomorrow that I have been sitting on for the last couple of months. The post will look at how complete preemption should color our view on whether registration is a jurisdictional requirement. I know what all of you (or at least six of you) are thinking: the only way to kick a discussion of obscure jurisdictional issues up to eleven is to talk about complete preemption. It’s like adding bacon.

Today may be the day we hear whether the Supreme Court will grant cert in Omega SA et al v. Costco Wholesale Corporation. The Supreme Court has in the past released cert decisions for cases they consider during their fall long conference on the following Monday. The appeal was scheduled for conference on September 29, so that would put today as the date we would be likely to hear.

Costco filed a supplemental brief on September 28 (that addressed the S.D.N.Y.’s September 25 decision in Pearson Education, Inc. v. Ganghua) so the cert decision could be delayed.

Supreme Court docket roundup of copyright cases

Shourin Sen - 30 June 2009 – 9:00 am

Filed under Supreme Court

There was quite a bit of movement over the past few weeks on many of the Supreme Court cases that we’ve discussed. I thought it was time for a quick update.

Cable News Network, Inc., et al. v. CSC Holdings, Inc., et al.

The Supreme Court denied cert yesterday following on the heels of the Department of Justice’s brief arguing that the case wasn’t a suitable vehicle for review.

Reed Elsevier v. Muchnick

I’ve completed the document collection thanks to the ABA, which hosts merits and amicus briefs for all pending Supreme Court cases. The new documents are:

Costco Wholesale Corporation v. Omega, S.A

There were a series of amicus briefs filed in Costco before the deadline, none of which were from organized labor. So, it shows you what I know. The briefs are courtesy of Public Knowledge.

Free Enterprise Fund and Beckstead and Watts, LLP, Petitioners v. Public Company Accounting Oversight Board, et al.

Petitioner’s brief is due on July, 27 2009. Anyone who is following the Appointments Clause challenge to the Copyright Royalty Board, or considering potential ramifications for a challenge to the Register of Copyrights should be anxiously awaiting the filing from the Solicitor General. The DOJ has a tough sell in Free Enterprise Fund, given that the appointments at issue were made by a group of people, instead of an individual. At the same time, the case will likely establish a new standard of review for Appointments Clause challenges. It’ll be interesting to see what standard the DOJ suggests, both for the case at bar, and future Appointments Clause challenges.