Yes Virginia, there is a 411(a)

My disagreements with Nimmer's view on 17 USC 411(a)'s requirement that a "work of the United States" have been actually registered (or refused registration) before suit can be instituted has bored too many readers to repeat. This week, a friend from California emailed me that the issue had come up at a hearing and the judge remarked from the bench: "Mr.
Patry is not alone in finding Mr. Nimmer to be wrong on this point." Those are the things that can make my week, a sign of how utterly pathetic my so-called scholarly life is.

Yesterday, the Second Circuit gave some teeth to the debate in a decision that will have very far-ranging consequences beyond the narrow nebbishy "no ticket-no get into court" issue, and that is settlement agreements. After the Supreme Court's Tasini opinion, the parties engaged in protracted negotiations, and finally reached a settlement agreement that involved class certification; the original suit was not a class action, but was instead brought by named individual freelancers. The district judge certified the class and approved the settlement; there were objectors, including those who had authored unregistered works; they appealed, and were successful, with the court of appeals vacating and holding courts lack subject matter jurisdiction to certify and approve settlements arising from the infringement of unregistered claims.

In so doing the court of appeals also took the opportunity to note "we have never held that a district court may enjoin the infringement of unregistered copyrights so long as the underlying action arises from a registered copyright held by the same party," a point I have also argued. The court did hold open the possibility of injunctions "where a defendant has engaged in a pattern of infringement of a plaintiff's registered copyrights and can be expected to continue to infringement new copyrighted DP material emanating in the future from the plaintiff," something I don't conceded, and in in any event, even here the court went out of its way to disagree with the 9th circuit's broader approach in the P10, Inc. v. Amazon.com, Inc. opinion, 487 F.3d 701, 710 (9th Cir. 2007).

Accordingly, the court held that each claim within a certified class must satisfy Section 411(a)'s registration requirement. Judge Walker dissented, concluding that "the fact that some of the otherwise presumably valid copyrights have not been registered is an insufficient basis for undoing this class-action settlement." While his opinion is thorough and thoughtful (and quite typically so), I think some may find his efforts to distinguish a "rights-creating statute and an enforcement mechanism" is contrary to the plain words of the statute forced as applied outside the settlement context; that is, in a straight-up infringement context.

The case is In re Literary Works in Electronic Databases Copyright Litigation, 2007 WL 4197413 (2d Cir. Nov. 29, 2007); here is a link to the opinion; it is the second one with that name