     05-5943 -cv(L); 06-0223(CO N)
     In re: Literary Works in Elec. Databases Litig.


 1                                   UNITED STATES COURT OF APPEALS
 2                                         FOR THE SECOND CIRCUIT
 3                                            _______________
 4
 5                                                     August Term, 2006
 6
 7   (Argued: March 7, 2007                                                Decided: November 29, 2007)
 8
 9                                 Docket Nos. 05-5943-cv(L), 06-0223-cv(CON)*
10                                              _______________
11
12                IN RE : LITERARY WORKS IN ELECTRONIC DATABASES COPYRIGHT LITIGATION
13
14                                                     _______________
15
16      IRVIN MUCHNICK , ABRAHAM ZALEZNIK , CHARLES SCHWARTZ, JACK SANDS, TODD PITOCK,
17            JUDITH STACEY , JUDITH TROTSKY , CHRISTOPHER GOODRICH , KATHY GLICKEN
18                                   AND ANITA BARTHOLOMEW ,
19                                                                       Objectors-Appellants,

20                                                          —v.—

21       THOMSON CORPORATION , DIALOG CORPORATION , GALE GROUP, INC., WEST PUBLISHING
22    COMPANY , INC., DOW JONES & COMPANY , INC., DOW JONES REUTERS BUSINESS INTERACTIVE ,
23     LLC, KNIGHT RIDDER INC., KNIGHT RIDDER DIGITAL, MEDIASTREAM, INC., NEWSBANK, INC.,
24   PRO QUEST COMPANY , REED ELSEVIER INC., UNION-TRIBUNE PUBLISHING COMPANY , NEW YORK
25   TIMES COMPANY , COPLEY PRESS , INC., EBSCO INDUSTRIES, INC. AND PARTICIPATING PUBLISHER
26                                      TRIBUNE COMPANY ,
27                                                                      Defendants-Appellees,

28   MICHAEL CASTLEMAN INC., E.L. DOCTOROW, TOM DUNKEL, ANDREA DWORKIN , JAY FELDMAN,
29     JAMES GLEICK, RONALD HAYMAN , ROBERT LACEY , RUTH LANEY , PAULA MCDONALD , P/K
30    ASSOCIATES , INC., LETTY COTTIN POGREBIN , GERALD POSNER, MIRIAM RAFTERY , RONALD M.
31   SCHWARTZ, MARY SHERMAN, DONALD SPOTO, ROBERT E. TREUHAFT AND JESSICA L. TREUHA FT
32     TRUST , ROBIN VAUGHAN , ROBLEY WILSON, MARIE WINN, NATIONAL WRITERS UNION, THE
33          AUTHORS GUILD , INC. AND AMERICAN SOCIETY O F JOURNALISTS AND AUTHORS ,
34


              *
            The appeal filed under Docket No. 06-0223-cv(CON) was dismissed by Court Order on
     May 17, 2006.
 1                                                                                Plaintiffs-Appellees,
 2
 3                                          EDWARD ROEDER ,
 4
 5                                                                                          Appellant.
 6                                          _______________

 7   Before:

 8                           WINTER, WALKER, and STRAUB, Circuit Judges.**

 9                                          _______________

10          Appeal from an order and judgment of the United States District Court for the Southern

11   District of New York (George B. Daniels, Judge) certifying a class of freelance authors and

12   approving a settlement of their copyright infringement claims arising from the unauthorized

13   electronic reproduction of their work. The overwhelming majority of class members’ claims

14   concern the infringement of unregistered copyrights. We hold that the District Court lacked

15   jurisdiction over those claims. We therefore vacate the certification and settlement approval, and

16   remand for proceedings consistent with this opinion.

17          Judge WALKER dissents in a separate opinion.

18                                          _______________

19          CHARLES D. CHALMERS , Fairfax, CA, for Objectors-Appellants.
20
21          CHARLES S. SIMS, Proskauer Rose LLP, New York, NY (Stephen Rackow Kaye,
22          Joshua W. Ruthizer, Proskauer Rose LLP; Kenneth Richieri, George Freeman, The
23          New York Times Company, New York, NY; Henry B. Gutman, Simpson Thacher &
24          Bartlett, New York, NY; James F. Rittinger, Satterlee Stephens Burke & Burke, New
25          York, NY; Jack Weiss, Gibson Dunn & Crutcher LLP, New York, NY; Juli Wilson
26          Marshall, Latham & Watkins, Chicago, IL; Ian Ballon, Greenberg Traurig LLP, Santa


            **
               As putative members of the class, Judges Winter and Walker have filed
     contemporaneously a separate opinion explaining their decision against recusal in this case. See
     In re: Literary Works in Elec. Databases Copyright Litig., — F.3d — (2d Cir. Nov. 19, 2007).

                                                  -2-
 1          Monica, CA; Michael Denniston, Bradley, Arant, Rose & White, LLP, Birmingham,
 2          AL; Christopher M. Graham, Levett Rockwood P.C., Westport, CT; Raymond
 3          Castello, Fish & Richardson PC, New York, NY, on the brief), for Defendants-
 4          Appellees.
 5
 6         MICHAEL J. BONI, Kohn Swift & Graf, P.C., Philadelphia, PA (Joshua D. Snyder,
 7         Kohn Swift & Graf, P.C.; Diane S. Rice, Hosie MacArthur LLP, San Francisco, CA;
 8         A.J. De Bartolomeo, Girard Gibbs & De Bartolomeo LLP, San Francisco, CA; Gary
 9         Fergus, Fergus, A Law Firm, San Francisco, CA, on the brief), for Plaintiffs-
10         Appellees.
11   _________________________________

12   STRAUB, Circuit Judge:

13          This class action copyright litigation arises from the unauthorized electronic reproduction

14   of various written works. Named plaintiffs and class members consist mainly of freelance

15   writers who contracted with publishers to author the works for publication in print media, and

16   retained the copyrights in those works. The contracts did not grant the publishers the right to

17   electronically reproduce those works or license them for electronic reproduction by others. But

18   the publishers did so anyway.

19          Plaintiffs then brought this class action on the theory that such electronic reproduction

20   infringed their copyrights. After years of negotiations, class and defense counsel finally agreed

21   on a settlement. Following lengthy motion practice, the District Court for the Southern District

22   of New York certified a class and approved the settlement. We review that order and judgment

23   on this appeal.

24          The overwhelming majority of claims within the certified class arise from the

25   infringement of unregistered copyrights. We have held, albeit outside the class action context,

26   that district courts lack statutory subject matter jurisdiction over infringement claims arising from

27   unregistered copyrights. See Well-Made Toy Mfg. Corp. v. Goffa Int’l Corp., 354 F.3d 112, 115


                                                     -3-
 1   (2d Cir. 2003); Morris v. Bus. Concepts, Inc., 259 F.3d 65, 72 (2d Cir. 2001). The District Court

 2   never specifically addressed this potential jurisdictional flaw.

 3          The precise issue on appeal is whether the District Court had jurisdiction to certify a class

 4   consisting of claims arising from the infringement of unregistered copyrights and to approve a

 5   settlement with respect to those claims. We hold that it did not. We therefore vacate its order

 6   and judgment and remand the case for proceedings consistent with this opinion.

 7                                            BACKGROUND

 8          In New York Times Co. v. Tasini, 533 U.S. 483, 488 (2001), the Supreme Court held that

 9   § 201(c) of the Copyright Act does not permit publishers to reproduce freelance works

10   electronically when they lack specific authorization to do so. Tasini effectively requires

11   publishers wishing to electronically reproduce written works to obtain a separate license to do so.

12   Shortly after the Court decided Tasini, three preexisting class action infringement suits, which

13   had been suspended pending the decision, were activated and consolidated in the Southern

14   District of New York. A fourth, nearly identical action was coordinated with that consolidated

15   action. Together, these claims comprise the instant litigation.

16          In this case there are basically two kinds of plaintiffs: individual authors and trade groups

17   representing authors. Defendants also fall into two classes: companies that publish original

18   electronic content, such as the New York Times Co., and companies that operate databases that

19   license content from publishers, such as Thomson Corporation, the owner of Westlaw.

20          The named plaintiffs, and the class members they purport to represent, produced written

21   works for certain defendants on a freelance basis. Based on their copyrights in those freelance

22   works, plaintiffs assert claims for two types of infringement. They first claim that publishers,


                                                      -4-
 1   such as the New York Times Co., infringed their copyrights. This infringement allegedly

 2   occurred when the publishers licensed the articles for print publication only but also reproduced

 3   the articles in their electronic databases. Since the publishers needed but never received a license

 4   for this second, electronic reproduction, plaintiffs allege that it constitutes infringement.

 5          Plaintiffs next claim that the electronic database services infringed their copyrights. This

 6   infringement allegedly occurred when those companies licensed the articles from the publishers

 7   and then reproduced the articles in their own electronic databases. Because the publishers never

 8   possessed the right to electronically reproduce the articles, plaintiffs urge, the publishers could

 9   not grant any license for electronic reproduction. Thus, any such license that the publishers sold

10   to the aggregators and databases was legally ineffective. Consequently, according to plaintiffs,

11   the electronic reproduction by the databases is unauthorized and infringing.

12          Since Tasini established the basic soundness of plaintiffs’ liability theory, the District

13   Court swiftly referred the parties to mediation. Before the mediator, defendants contended that

14   this litigation possessed scant settlement value because the District Court could never certify the

15   vast majority of the claims for inclusion in any proposed class. Defendants noted that section

16   411(a) of the Copyright Act provides that “no action for infringement of the copyright in any

17   United States work shall be instituted until preregistration or registration of the copyright claim

18   has been made in accordance with this title.” 17 U.S.C. § 411(a) (emphases in defendants’

19   mediation submission). “That rule,” defendants wrote, “whose language could hardly be clearer,

20   precludes the certification of any class respecting works in which a copyright has not been

21   registered.” Defendants then cited authority for the proposition that the District Court “lacks

22   jurisdiction . . . to certify a class covering any unregistered works.” Citing survey evidence


                                                       -5-
 1   showing that freelancers register less than one percent of their works, defendants noted that this

 2   jurisdictional failure likely affected more than 99 percent of the claims at issue.

 3           Despite this looming jurisdictional issue, the desire to achieve global peace in the

 4   publishing industry spurred the parties through more than three years of “often heated”

 5   negotiations until they reached an agreement in 2005. The agreement defines the class, “for

 6   settlement purposes only,” as follows:

 7                   All persons who, individually or jointly, own a copyright under the
 8                   United States copyright laws in an English language literary work that
 9                   has been reproduced, displayed, adapted, licensed, sold and/or
10                   distributed in any electronic or digital format, without the person’s
11                   express authorization by a member of the Defense Group or any
12                   member’s subsidiaries, affiliates, or licensees (a) at any time on or
13                   after August 15, 1997 (regardless of when the work first appeared in
14                   an electronic database) or (b) that remained in circulation after
15                   August 15, 1997, even if licensed prior thereto, including English
16                   language works qualifying for U.S. copyright protection under an
17                   international treaty (hereinafter “Subject Work”).
18
19   The parties agree that the large majority of “subject works” have not been registered with the

20   U.S. Copyright Office.

21           The settlement sorts plaintiffs’ claims into three groups. Category A claims concern

22   copyrights that were registered prior to any infringement. Because these copyrights were

23   registered before the infringing reproduction, they are eligible for statutory damages and

24   attorney’s fees under the Copyright Act. See 17 U.S.C. § 412. Category B claims concern

25   copyrights that were registered after the infringing reproduction but before December 31, 2002.

26   Under the Copyright Act, these claims qualify for actual damages only. See id. Category C

27   claims, by far the most numerous, regard copyrights registered after December 31, 2002 or not

28   registered at all.


                                                      -6-
 1          The settlement also assigns a damages formula to each type of claim. Category A

 2   claimants receive a flat fee. Category B claimants receive the greater of either a flat fee or a

 3   percentage of the original price of the work. By and large, Category C claimants also receive the

 4   greater of either a flat fee or a percentage of the original price of the work. Importantly, if the

 5   cost of all claims (plus the cost of notice, administration, and attorney’s fees) exceeds $18

 6   million, then the amount paid to Category C claimants is reduced – potentially to zero – before

 7   the claims of Category A and B claimants are affected. This feature is called the “C-reduction.”

 8          Having reached an agreement, plaintiffs and defendants moved the District Court for

 9   class certification and settlement approval. Objectors opposed the motion on the ground, inter

10   alia, that the settlement was inadequate and unfair to Category C claimants because they were

11   paid little and singled out for reduction if the total claims exceeded $18 million. Objectors also

12   maintained that the disparate treatment of Category C claimants illustrates that named plaintiffs,

13   who each possess at least some registered copyrights, did not adequately represent those absent

14   class members who possess only unregistered copyrights.

15          Defendants responded that Category C claimants were adequately represented and treated

16   fairly because their claims were essentially worthless. In justifying the C-reduction, defendants

17   renewed their jurisdictional argument, urging that Category C claims mainly concerned “works in

18   which [the] copyright had never been registered, and which were not, therefore, within the

19   court’s subject matter jurisdiction.” Somewhat similarly, plaintiffs maintained that “freelance

20   authors typically did not register their works and thus lacked standing to bring an infringement

21   action.”

22          After prolonged proceedings, the District Court granted final class certification and final


                                                       -7-
 1   settlement approval in September of 2005. The District Court never considered whether it had

 2   jurisdiction to certify a class consisting mostly of claims arising from unregistered copyrights, or

 3   to approve a settlement resolving those claims.

 4          Objectors appealed, again challenging the settlement’s fairness and the adequacy of

 5   named plaintiffs’ representation. Prior to oral argument, we became concerned that the District

 6   Court and the parties had passed over a nettlesome jurisdictional question. We ordered the

 7   parties to submit letter briefs “addressing the issue of whether the District Court had subject

 8   matter jurisdiction over claims concerning the infringement of unregistered copyrights.” In re

 9   Literary Works in Elec. Databases Copyright Litig., No. 05-5943-cv (2d Cir. Jan. 31, 2007).

10   Those submissions were timely filed and we further questioned the parties at oral argument.

11                                             DISCUSSION

12          We review de novo whether the District Court had subject matter jurisdiction. See, e.g.,

13   DiTolla v. Doral Dental IPA of New York, 469 F.3d 271, 275 (2d Cir. 2006). In the following

14   sections, we first ask whether the Copyright Act’s registration requirement is jurisdictional and

15   then ask whether each claim within the class must satisfy that requirement. We answer both

16   questions affirmatively. Since most of the claims within this purported class do not satisfy the

17   registration requirement, we also analyze whether the supplemental jurisdiction statute, 28

18   U.S.C. § 1367, remedies that jurisdictional defect. We conclude that it does not. Based on those

19   determinations, we ultimately hold that the District Court lacked jurisdiction to certify the instant

20   class or approve the settlement.

21   I.     The Copyright Act’s Registration Requirement Is Jurisdictional

22          Federal district courts possess only limited jurisdiction, which Congress regulates by


                                                       -8-
 1   statute. See U.S. Const. art. III, § 1; Exxon Mobile Corp. v. Allapattah Servs., Inc., 545 U.S. 546,

 2   552 (2005). In a copyright action, a district court initially derives its jurisdiction from two

 3   sources: 28 U.S.C. §§ 1331 and 1338. Section 1331 provides district courts with a general grant

 4   of original jurisdiction over “all civil actions arising under the Constitution, laws, or treaties of

 5   the United States.” Section 1338 more specifically grants district courts original jurisdiction over

 6   “any civil action arising under any Act of Congress relating to . . . copyrights.”

 7           But these provisions are not necessarily the end of the matter. Congress may supplement

 8   or limit these basic provisions with additional requirements “expressed in a separate statutory

 9   section from jurisdictional grants.” Barnhart v. Peabody Coal Co., 537 U.S. 149, 159-60 n.6

10   (2003). Section 411(a) of the Copyright Act, which regulates a district court’s authority to

11   adjudicate a copyright claim, is one such additional provision. It provides that “no action for

12   infringement of the copyright in any United States work shall be instituted until preregistration or

13   registration of the copyright claim has been made in accordance with this title.” 17 U.S.C. §

14   411(a); see also 17 U.S.C. § 501.1

15           Whether this requirement is jurisdictional is not up for debate in this Circuit. On two

16   recent occasions, we have squarely held that it is. See Well-Made Toy Mfg. Corp. v. Goffa Int’l

17   Corp., 354 F.3d 112, 114, 115 (2d Cir. 2003) (affirming dismissal for lack of “subject matter

18   jurisdiction” because section 411(a)’s “registration requirement is jurisdictional”); Morris v.

19   Business Concepts, Inc., 259 F.3d 65, 72, 73 (2d Cir. 2001) (holding “that subject matter



             1
              We note that only “United States works” must be registered. 17 U.S.C. § 411(a). Some
     claims within the class may arise from unregistered copyrights in foreign works, over which the
     District Court would possess jurisdiction. We leave it to the District Court and the parties to sort
     those claims on remand.

                                                       -9-
 1   jurisdiction was lacking because the registration requirement of section 411(a) was not satisfied”

 2   and affirming dismissal “for lack of subject matter jurisdiction”).

 3          We are far from alone in this regard; there is widespread agreement among the circuits

 4   that section 411(a) is jurisdictional. See La Resolana Architects, PA v. Clay Realtors Angel Fire,

 5   416 F.3d 1195, 1200 (10th Cir. 2005) (“Section 411(a) is the jurisdictional lynchpin to copyright

 6   infringement actions[.]”); Positive Black Talk Inc. v. Cash Money Records Inc., 394 F.3d 357,

 7   365 (5th Cir. 2004) (noting that section 411(a) “supplement[s]” the “broad underlying”

 8   jurisdictional grants in 28 U.S.C. §§ 1331, 1338 and acts as an additional “jurisdictional

 9   prerequisite”); Xoom, Inc. v. Imageline, Inc., 323 F.3d 279, 283 (4th Cir. 2003) (“Copyright

10   registration is a jurisdictional prerequisite to bringing an action for infringement under the

11   Copyright Act.”); Murray Hill Publ’ns, Inc. v. ABC Commc’ns, Inc., 264 F.3d 622, 630 n.1 (6th

12   Cir. 2001) (noting that while copyright protection exists prior to registration, “[t]he registration

13   requirement under section 411[a] is a jurisdictional prerequisite to the right of the holder to

14   enforce the copyright in federal court”); Brewer-Giorgio v. Producers Video, Inc., 216 F.3d

15   1281, 1285 (11th Cir. 2000) (“It is well settled in this Court that the registration requirement is a

16   jurisdictional prerequisite to an infringement suit.” (internal quotation marks omitted and

17   alterations incorporated)); Data Gen. Corp. v. Grumman Sys. Support Corp., 36 F.3d 1147, 1163

18   (1st Cir. 1994) (describing registration under section 411(a) as a “jurisdictional requirement”).

19          Given our own binding precedent, not to mention the persuasive authority of our sister

20   circuits, we again conclude that section 411(a)’s registration requirement limits a district court’s

21   subject matter jurisdiction to claims arising from registered copyrights only.

22          The parties advance several arguments that effectively ask us to overrule our holdings in


                                                      -10-
 1   Morris and Well-Made. The short answer to these arguments is that this panel simply cannot

 2   overrule a prior panel’s holding. See Jones v. Coughlin, 45 F.3d 677, 679 (2d Cir. 1995) (“A

 3   decision of a panel of this Court is binding unless and until it is overruled by the Court en banc

 4   or by the Supreme Court.”). Nevertheless, for the sake of completeness we explain why these

 5   arguments fail.

 6          The parties first urge that section 411(a) is jurisdictional in a very minimal sense. They

 7   claim that if a plaintiff brings a single claim based on a registered copyright, the district court

 8   acquires jurisdiction over any and all related copyright claims, even if those other claims arise

 9   from unregistered copyrights. Defendants contend that “§ 411(a) is merely the plaintiff’s ticket

10   to court,” that once stamped, allows him to raise all sorts of claims arising from unregistered

11   copyrights. Although defendants are not necessarily bound by earlier arguments, their current

12   tact cuts against their position before the mediator and the District Court, where they broadly

13   maintained that “works in which [the] copyright had never been registered . . . were not . . .

14   within the court’s subject matter jurisdiction.”2

15          Anyway, our holding in Well-Made shuts the door on this line of argument. There, the

16   plaintiff brought two infringement claims: one based on the infringement of its registered

17   copyright in a 20-inch doll, the other based on the infringement of its unregistered copyright in a

18   derivative 48-inch doll. 354 F.3d at 115. The district court decided the first claim on the merits



            2
              The parties have attempted to harmonize their positions by contending that while the
     District Court lacked jurisdiction to certify a litigation class, it nevertheless had jurisdiction to
     certify the settlement-only class. But the jurisdictional statutes do not draw this line. We believe
     that a district court’s jurisdiction must be proper in either event; the purpose of the certification
     does not alter fundamental – and constant – statutory jurisdictional requirements. See infra at 16-
     20.

                                                      -11-
 1   but dismissed the second claim for lack of jurisdiction. Id. We affirmed on both scores. Id. at

 2   115, 117. We specifically upheld the dismissal, for lack of jurisdiction, of the claim based on the

 3   unregistered copyright even though the plaintiff had paired that claim with a related claim

 4   stemming from the registered copyright in the 20-inch doll. Id. at 115-16. Thus, the existence of

 5   a claim based on a registered copyright does not bring within a district court’s jurisdiction all

 6   related claims stemming from unregistered copyrights.

 7          In similar vein, defendants also point out that other courts have enjoined the infringement

 8   of unregistered copyrights when at least one of the plaintiff’s copyrights-in-suit was registered.

 9   See, e.g., Perfect 10, Inc. v. Amazon.com, Inc., 487 F.3d 701, 710 n.1 (9th Cir. 2007); Olan Mills,

10   Inc. v. Linn Photo Co., 23 F.3d 1345, 1349 (8th Cir. 1994); Pac. and S. Co. v. Duncan, 744 F.2d

11   1490, 1499 n.17 (11th Cir. 1984). This is another, although more limited, variation on the theme

12   that where one of the plaintiff’s claims arises from a registered copyright, section 411(a) vests

13   jurisdiction over any related infringement claim. There are several problems with this argument.

14          First, we have never held that a district court may enjoin the infringement of unregistered

15   copyrights so long as the underlying action arises from a registered copyright held by the same

16   party.3 Second, even if injunctive relief against infringement of an unregistered copyright is

17   available, that relief is properly limited to situations, as were found to exist in Olan Mills and

18   Pacific and Southern Co., where a defendant has engaged in a pattern of infringement of a

19   plaintiff’s registered copyrights and can be expected to continue to infringe new copyrighted

20   material emanating in the future from the plaintiff. See Olan Mills, Inc., 23 F.3d at 1349; Pac.



            3
             The single case the parties cite for this proposition, Sailor Music v. Gap Stores, Inc., 668
     F.2d 84 (2d Cir. 1981) (per curiam), does not even approach the issue, let alone decide it.

                                                      -12-
 1   and S. Co., 744 F.2d at 1499. That sort of prophylactic relief furthers the purposes of the

 2   Copyright Act generally and does not undermine the intended effect of section 411(a). To the

 3   extent that Perfect 10, Inc. suggests a broader exception, we decline to follow it. In any event,

 4   defendants’ position calls for an exception vastly broader than is found in any case by asking us

 5   to rule that registration of one party’s copyright would somehow provide jurisdiction over claims

 6   stemming from the unregistered copyrights of many other parties. We decline to do so.4

 7          In addition to the parties’ arguments, we have considered whether the Supreme Court’s

 8   recent decision in Eberhart v. United States, 546 U.S. 12 (2005) (per curiam), “casts doubt” on

 9   Morris and Well-Made; if so, we may reconsider our holdings in those cases. Loyal Tire & Auto

10   Center, Inc. v. Town of Woodbury, 445 F.3d 136, 145 (2d Cir. 2006); see also Pease v. Hartford

11   Life and Accident Ins. Co., 449 F.3d 435, 443-46 (2d Cir. 2006). We conclude that Eberhart

12   does not undermine our holdings in Morris and Well-Made.

13          In Eberhart, the Supreme Court held that the seven-day time limit for moving under

14   Federal Rule of Criminal Procedure 33 was not jurisdictional. 546 U.S. at 13. The Court

15   underscored the “‘critical difference between a rule governing subject-matter jurisdiction and an

16   inflexible claim-processing rule,’” and slotted Rule 33’s time limit within the latter category. Id.

17   (quoting Kontrick v. Ryan, 540 U.S. 443, 456 (2004)).

18          A key difference between section 411(a) and Rule 33 renders Eberhart inapplicable.

19   Rule 33 merely sets forth a time limit for moving in a case that undoubtedly already falls within


            4
              Objectors also urge that jurisdiction is proper under our decision in Wal-Mart Stores,
     Inc. v. Visa U.S.A. Inc., 396 F.3d 96 (2d Cir. 2005). Simply put, that case does not address any
     jurisdictional question and is inapposite. It addresses only the circumstances under which a
     release comports with due process, and whether a specific settlement was fair to absent class
     members – issues that are not implicated here.

                                                     -13-
 1   the district court’s subject matter jurisdiction. The rule is nothing more than an “‘emphatic time

 2   prescription[] in [a] rule[] of court’” that regulates motion practice within a jurisdictionally-

 3   sound cause of action – namely, a prosecution for a violation of federal law. Id. at 18 (quoting

 4   Kontrick, 540 U.S. at 454). By contrast, section 411(a) creates a statutory condition precedent to

 5   the suit itself. In so doing, it “‘delineat[es] the classes of cases . . . falling within a court’s

 6   adjudicatory authority.’” Id. at 19 (quoting Kontrick, 540 U.S. at 455); see also Bowles v.

 7   Russell, 127 S. Ct. 2360, 2364-65 (2007) (distinguishing between “procedural rules adopted by

 8   the Court for the orderly transaction of its business,” which are “not jurisdictional,” from

 9   statutory “limits enacted by Congress,” which typically are jurisdictional (internal quotation

10   marks omitted)).5 Given that fundamental difference between Rule 33 and section 411(a),


             5
              The dissent suggests that because copyright protection may exist before registration,
     section 411(a) should be seen as a mere “enforcement mechanism” that does not affect
     jurisdiction. Dissent at 5. However, as the dissent acknowledges, the crucial distinction
     between a claim-processing rule and a jurisdictional bar is whether the provision at issue is
     “essential to the existence of the [underlying] claim.” Id. (quoting Richardson v. Goord, 347
     F.3d 431, 434 (2d Cir. 2003) (per curiam); see also Paese v. Hartford Life Accident Ins. Co., 449
     F.3d 435, 444-45 (2d Cir. 2006); Coleman v. Newburgh Enlarged City Sch. Dist., --- F.3d ---,
     2007 WL 2768745, at *8 (2d Cir. Sept. 25, 2007) (Straub, J., concurring). Under the plain
     language of the Copyright Act, registration or preregistration must occur before a plaintiff can
     assert a valid claim. See 17 U.S.C. § 411(a) (“no action for infringement of the copyright in any
     United States work shall be instituted until preregistration or registration of the copyright claim
     has been made in accordance with this title.”) (emphases added); 17 U.S.C. § 501(b) (“The legal
     or beneficial owner of an exclusive right under a copyright is entitled, subject to the requirements
     of section 411, to institute an action for any infringement.”) (emphasis added). In other words, a
     copyright claim does not exist absent registration or preregistration – and the law is clear that
     courts lack subject matter jurisdiction over claims that Congress has specified do not yet exist.
     See, e.g., Bowles, 127 S. Ct. at 2365 (“Within constitutional bounds, Congress decides what
     cases the federal courts have jurisdiction to consider. Because Congress decides whether federal
     courts can hear cases at all, it can also determine when, and under what conditions, federal courts
     can hear them.”). Thus, the fact that a copyright holder may possess rights prior to registration
     does not alter section 411(a)’s jurisdictional bar; Congress has chosen to prohibit copyright
     holders – and, hence, courts – from enforcing any such rights until after that holder has filed for
     registration. See Brewer-Giorgio, 216 F.3d at 1285 (“Although a copyright need not have been

                                                        -14-
1   Eberhart’s holding does not cast doubt on Morris and Well-Made.

2          For these reasons, we conclude that section 411(a)’s registration requirement is a

3   jurisdictional prerequisite to a copyright infringement suit.6


    registered in all cases before it may be infringed, the owner of that copyright must register the
    copyright before a federal court can entertain an infringement suit.”); Murray Hill Publ’ns, Inc.,
    264 F.3d at 630 n.1 (noting that although “[a]n author may have a copyright in all works of
    authorship regardless of whether he registers that copyright,” section 411(a)’s “registration
    requirement . . . is a jurisdictional prerequisite to the right of the holder to enforce the copyright
    in federal court”).
            The dissent places a great deal of emphasis on the fact that section 411(a) provides that a
    copyright holder “is entitled to institute an action for infringement” if he properly files for
    registration but is refused registration by the Copyright Office. 17 U.S.C. § 411(a). But this
    provision only confirms that, absent proper filing for registration, copyright holders are not
    entitled to bring an action in federal court. Indeed, the last sentence of section 411(a) clarifies
    that the section speaks in jurisdictional terms, as opposed to addressing mere “administrative
    prerequisites,” Dissent at 6, by noting that so long as a copyright holder properly files for
    registration, “the Register’s failure to become a party shall not deprive the court of jurisdiction to
    determine [the issue of registrability].” 17 U.S.C. § 411(a).
           6
              The dissent contends that the legislative history of Title 17 “confirms” that section
    411(a) is a claim-processing rule and not a jurisdictional bar. Dissent at 6-9. But the legislative
    history cited by the dissent only confirms the undisputed fact that “registration is not a condition
    of copyright protection.” 17 U.S.C. § 408(a) (emphasis added). Under the copyright laws,
    copyright protection – which “subsists . . . in original works of authorship fixed in any tangible
    medium of expression . . . .,” 17 U.S.C. § 102, and generally begins at the time of a work’s
    “creation,” 17 U.S.C. § 302(a) – is entirely distinct from whether a copyright holder is permitted
    to institute an action in federal court. On that score, the legislative history of the Copyright Act
    and its amendments is crystal clear: Congress intended section 411(a) to prevent courts from
    hearing the claims of copyright holders who do not first file for registration. The House Report
    to the 1976 amendments to the Act, for example, notes that “The first sentence of section 411(a)
    restates the present statutory requirement that registration must be made before a suit for
    copyright infringement is instituted.” H.R. Rep. No. 94-1476 at 157 (1976), reprinted in 1976
    U.S.C.C.A.N. 5659, 5773. The Report goes on to note that “a copyright owner who has not
    registered his claim . . . cannot enforce his rights in the courts until he has made registration.” Id.
    The Senate, in its consideration of the 1988 amendments to the Act, pointed out that “As a result
    of Section 411(a), compliance with copyright registration procedures is a statutory prerequisite to
    the right of an author or other copyright proprietor to seek any redress, whether by injunction,
    damages or both, for infringement of the work,” and that without registration, “judicial
    enforcement of the claim to copyright cannot be obtained.” S. Rep. No. 100-352 at 13-14 (1988),
    reprinted in 1988 U.S.C.C.A.N. 3706, 3718-19; see also id. at 19, reprinted in 1988

                                                     -15-
 1

 2   II.    Each Claim within the Certified Class Must Satisfy Section 411(a)’s Registration
 3          Requirement
 4
 5          Having established that section 411(a) imposes a jurisdictional requirement, we must

 6   decide whether each claim within the certified class must satisfy that requirement. The parties

 7   urge that jurisdiction is proper so long as the named plaintiffs’ works were registered. Based

 8   upon the named plaintiffs’ registrations, the parties maintain, the District Court had jurisdiction

 9   to certify a class containing thousands of claims arising from unregistered copyrights. We

10   disagree.

11          Initially, we note that the class action certification device, Federal Rule of Civil

12   Procedure 23, does not offer any alternative source of jurisdiction in the class action context. See

13   28 U.S.C. § 2072(b) (providing that the federal “rules shall not abridge, enlarge or modify any

14   substantive right”); Fed. R. Civ. P. 82 (“These rules shall not be construed to extend or limit the

15   jurisdiction of the United States district courts.”); Amchem Prods., Inc., v. Windsor, 521 U.S.

16   591, 613 (1997). We therefore must look to the language of section 411(a), as well as any

17   applicable case law, to determine how the registration requirement applies in the class action

18   context. See generally Zahn v. Int’l Paper Co., 414 U.S. 291, 299-301 (1973) (reasoning that

19   whether the amount-in-controversy requirement of 28 U.S.C. § 1332(a) applies to each class

20   member’s claim depends on the language of statute), result overruled by 28 U.S.C. § 1367.

21          Again, section 411(a) provides, in relevant part, that “no action for infringement of the

22   copyright in any United States work shall be instituted until preregistration or registration of the


     U.S.C.C.A.N. at 3724 (“[C]opyright claims in an unregistered work cannot be judicially
     enforced.”).

                                                     -16-
 1   copyright claim has been made in accordance with this title.” 17 U.S.C. § 411(a) (emphasis

 2   added). The question, as we see it, is whether the phrase “the copyright claim” refers to all the

 3   claims within the class or only those claims of the named plaintiffs.

 4          On the literal level, the language is not dispositive. The phrase “the copyright claim”

 5   does not require, or even tend toward, one reading. But case law does provide some useful

 6   guidance as to how we should interpret that phrase.

 7          To begin with, we have applied Article III’s jurisdictional requirements to each member

 8   of a class. See Denney v. Deutsche Bank AG, 443 F.3d 253, 264 (2d Cir. 2006) (“[N]o class may

 9   be certified that contains members lacking Article III standing.”). Since statutory and

10   constitutional jurisdictional requirements are equally binding, see U.S. Const. art. III, § 1; Exxon

11   Mobile Corp., 545 U.S. at 553 (noting “the bedrock principle that federal courts have no

12   jurisdiction without statutory authorization”), the same approach should hold here.

13          And case law indicates that it does. In Zahn, the Supreme Court considered whether the

14   diversity statute, 28 U.S.C. § 1332, requires each class member to satisfy the amount-in-

15   controversy requirement. 414 U.S. at 301. The Court held that the phrase “matter in

16   controversy” in § 1332(a) refers to each class member’s claim and therefore requires each claim

17   to satisfy the statute’s amount-in-controversy requirement. In so holding, the Court reasoned that

18   Rule 23 does not authorize one plaintiff to “ride on another’s coattails.” Id. at 301 (internal

19   quotation marks omitted). In order to alter this result, Congress needed to pass, and did pass, a

20   new statute, 28 U.S.C. § 1367, which we analyze in the next section.

21          Two years later, in Weinberger v. Salfi, 422 U.S. 749, 764 (1975), the Court addressed

22   whether a district court properly certified a class of Social Security claimants who asserted that


                                                     -17-
 1   they had been denied benefits wrongfully. Like the Copyright Act, the Social Security Act

 2   contains a provision limiting jurisdiction over social security claims: section 205(g) of the Social

 3   Security Act, which grants subject matter jurisdiction over only “final” decisions of the

 4   Secretary. Id. at 763.

 5          In determining whether the district court had jurisdiction to certify the class in

 6   Weinberger, the Supreme Court applied this finality requirement to all the claims within the

 7   class. It concluded that the named plaintiffs’ claims satisfied the finality requirement but that

 8   claims of absent class members did not. Id. at 764 (“As to class members, however, the

 9   complaint is deficient in that it contains no allegations that they have even filed an application

10   with the Secretary, much less that he has rendered any decision, final or otherwise . . . . The class

11   thus cannot satisfy the requirements for jurisdiction under [section 205(g)].”). Given this

12   statutory jurisdictional defect, “the District Court was without jurisdiction over so much of the

13   complaint as concerns the class, and it should have entered an appropriate order of dismissal.”

14   Id. Weinberger thus supports the proposition that when a statute imposes a jurisdictional

15   requirement, each member of a putative class must satisfy that requirement.

16          Four years later, the Court reaffirmed this approach in Califano v. Yamaski, 442 U.S. 682

17   (1979). There, the Court held that section 205(g) of the Social Security Act permits social

18   security claimants to seek relief via the class action device. But the Court carefully reiterated that

19   each class member must meet the jurisdictional requirements of section 205(g). Id. at 701

20   (holding that claimants could bring social security class action “at least so long as the

21   membership of the class is limited to those who meet the requirements of § 205(g)”). Stating the

22   proposition more generally, the Court wrote, “Where the district court has jurisdiction over the


                                                     -18-
 1   claim of each individual member of the class, Rule 23 provides a procedure by which the court

 2   may exercise that jurisdiction over the various individual claims in a single proceeding.” Id.

 3          We see no reason to interpret or apply the jurisdictional requirement of section 411(a) any

 4   differently. In light of these precedents, we hold that the phrase “the copyright claim” in section

 5   411(a) refers to each claim within a purported class, and thus requires that each class member’s

 6   claim arise from a registered copyright. Only when each claim satisfies that jurisdictional

 7   prerequisite may the district court utilize Rule 23 to “exercise [its] jurisdiction over the various

 8   individual claims in a single proceeding.” Id.7

 9   III.   The Supplemental Jurisdiction Statute Does Not Apply Here

10          Although section 411(a) deprived the District Court of jurisdiction to certify a class

11   containing claims stemming from unregistered copyrights, the supplemental jurisdiction statute

12   might provide an alternate source of jurisdiction. In relevant part, the statute provides as follows:

13                  Except as . . . expressly provided otherwise by Federal statute, in any
14                  civil action of which the district courts have original jurisdiction, the
15                  district courts shall have supplemental jurisdiction over all other
16                  claims that are so related to claims in the action within such original
17                  jurisdiction that they form part of the same case or controversy under
18                  Article III of the United States Constitution.


            7
              The dissent argues that in the context of a settlement-only class action, jurisdiction exists
     so long as the plaintiffs possess constitutional standing, even if other statutory jurisdictional
     prerequisites, such as that erected by section 411(a), are not met. This argument finds no support
     in the case law and runs afoul of the general rule that the class action device cannot be used to
     enlarge the jurisdiction of the federal courts. See Amchem Prods., Inc., 521 U.S. at 613. In the
     RICO and mass tort contexts posited by the dissent, Congress has erected no additional statutory
     jurisdictional bars beyond the need for constitutional standing. See Denney, 443 F.3d at 266
     (“RICO standing is not jurisdictional.”). Thus, our holding has no effect on the ability of courts
     to, for example, certify a class in a mass tort action involving claims that may not yet be ripe
     because the issue in such cases is standing, not jurisdiction. As we have already explained,
     section 411(a) is an additional jurisdictional bar to the institution of copyright actions, and this
     bar cannot be ignored solely because this case is a settlement-only class action.

                                                       -19-
 1   28 U.S.C. § 1367(a) (emphasis added).

 2          In Exxon Mobile Corp., the Court held that § 1367(a) confers supplemental jurisdiction in

 3   a diversity class action over state law claims that fail to satisfy § 1332(a)’s amount-in-

 4   controversy requirement, so long as (1) at least one claim satisfies that requirement and (2) all the

 5   other claims are part of the same case or controversy. 545 U.S. at 559-60. But the Court has

 6   never held that § 1367(a) confers supplemental jurisdiction over jurisdictionally-deficient federal

 7   claims asserted together with another, jurisdictionally-proper claim. See generally Handberry v.

 8   Thompson, 436 F.3d 52, 62 (2d Cir. 2006) (“In 28 U.S.C. § 1367(a), Congress provided federal

 9   district courts with so-called supplemental jurisdiction to decide certain state-law claims.”

10   (emphasis added)).

11          We think that the text of the statute precludes that sort of application. See generally

12   United States v. Gayle, 342 F.3d 89, 92 (2d Cir. 2003) (“Statutory construction begins with the

13   plain text and, if that text is unambiguous, it usually ends there as well.”). Section 1367(a)

14   excepts from its reach those cases in which another federal statute denies jurisdiction. 28 U.S.C.

15   § 1367(a) (providing supplemental jurisdiction over related claims “[e]xcept as . . . expressly

16   provided otherwise by Federal statute”); Exxon Mobile Corp., 545 U.S. at 559 (“Section 1367(a)

17   commences with the direction that . . . other relevant statutes[] may provide specific exceptions .

18   . . .”); see also id. (“When the well-pleaded complaint contains at least one claim that satisfies

19   the amount-in-controversy requirement, and there are no other relevant jurisdictional defects,

20   the district court, beyond all question, has original jurisdiction over that claim.” (emphasis

21   added)). In our view, section 411(a) is a federal statute that “provide[s] otherwise” within the

22   meaning of § 1367(a) and presents another “relevant jurisdictional defect[]” of the sort to which


                                                     -20-
 1   the Supreme Court alluded in Exxon Mobile Corp. After all, federal courts have exclusive

 2   jurisdiction over copyright claims, 28 U.S.C. § 1338(a), and section 411(a) bars claims based on

 3   unregistered copyrights. It would make a hash of those provisions for us to hold that § 1367(a) –

 4   somehow – vests federal courts with jurisdiction over claims based on unregistered copyrights.

 5          True, section 411(a) does not refer to § 1367(a). But we have held that another statute

 6   need not expressly refer to § 1367(a) to curtail its reach. See Handberry, 436 F.3d at 62 (holding

 7   that 18 U.S.C. § 3626(a)(1)(A) limits § 1367(a) even though the former statute makes no

 8   reference to § 1367(a)).

 9          For these reasons, we conclude that § 1367(a) did not provide the District Court with

10   jurisdiction over the claims arising from the alleged infringement of unregistered copyrights.

11                                           CONCLUSION

12          Because the District Court lacked jurisdiction to certify the class and approve the

13   settlement agreement, we VACATE and REMAND for proceedings consistent with this opinion.




                                                    -21-
 1   JOHN M. WALKER, JR., Circuit Judge, dissenting:

 2        The majority insists that the copyright-registration

 3   requirement, 17 U.S.C. § 411(a), presents a “jurisdictional” bar

 4   to this class-action settlement.   To be sure, in the past we have

 5   labeled the copyright-registration requirement as

 6   “jurisdictional,” at least with respect to an action for damages.

 7   The Supreme Court, however, in Eberhart v. United States, 546

 8   U.S. 12 (2005) (per curiam), urged us to more carefully

 9   distinguish between true jurisdictional bars and claim-processing

10   rules that may be waived and to revisit our use of the

11   “jurisdiction” label in that light.   Following that instruction

12   and bearing in mind the underlying purpose of 17 U.S.C. § 411(a),

13   as well as our recent holding that not all members of a

14   settlement-only class need to possess a valid cause of action

15   under the applicable law, leads me to conclude that the fact that

16   some of the otherwise presumably valid copyrights have not been

17   registered is an insufficient basis for undoing this class-action

18   settlement.

19        In Kontrick v. Ryan, 540 U.S. 443 (2004), and Eberhart, the

20   Supreme Court held that even “emphatic” time prescriptions in the

21   rules of court are not necessarily “jurisdictional,” Kontrick,

22   540 U.S. at 454.   It explained, “[c]larity would be facilitated .

23   . . if courts and litigants use the label ‘jurisdictional’ not

24   for claim-processing rules, but only for prescriptions


                                     -1-
 1   delineating the classes of cases (subject matter jurisdiction)

 2   and the persons (personal jurisdiction) falling within a court’s

 3   adjudicatory authority.”    Eberhart, 546 U.S. at 16 (internal

 4   quotation marks omitted).   Then, in Arbaugh v. Y&H Corp., 546

 5   U.S. 500 (2006), the Court applied Eberhart and Kontrick to a

 6   statute, concluding that the employee-numerosity requirement of

 7   Title VII, 42 U.S.C. § 2000e(b), is not jurisdictional, noting

 8   that “the 15-employee threshold appears in a separate provision

 9   that ‘does not speak in jurisdictional terms or refer in any way

10   to the jurisdiction of the district courts,’” 546 U.S. at 515.

11   Finally, and most recently, in Bowles v. Russell, 127 S. Ct. 2360

12   (2007), the Supreme Court determined that 28 U.S.C. § 2107(a),

13   which explicitly provides that in a civil action “no appeal shall

14   bring any judgment . . . before a court of appeals for review

15   unless notice of appeal is filed[] within thirty days” of entry

16   of judgment, is jurisdictional.    The Court emphasized the

17   jurisdictional significance “of the fact that a time limitation

18   is set forth in a statute,” 127 S. Ct. at 2364, and noted that §

19   2107(a) admits of no exception, see id. at 2365 (adverting to the

20   fact that “we have treated the rule-based time limit for criminal

21   cases differently, stating that it may be waived”).

22        As will be explained, I think that § 411(a) is more like the

23   employee-numerosity requirement in Arbaugh than it is like §

24   2107(a) in Bowles.   Moreover, because Congress passed § 411(a) to


                                       -2-
 1   facilitate the enforcement of copyrights, I conclude that

 2   compliance with § 411(a) is a mandatory prerequisite to the

 3   accrual of a cause of action for damages, but not a prerequisite

 4   to the possession of constitutional standing.    Thus this suit

 5   falls within the ambit of our holding in Denney v. Deutsche Bank

 6   A.G., 443 F.3d 253 (2d Cir. 2006), that not all members of a

 7   settlement-only class must possess a valid cause of action under

 8   the applicable law at the time of settlement.

 9        Plaintiffs are a class of mostly freelance authors whose

10   work has been reproduced without their consent in defendants’

11   electronic databases.   An individual infringement suit for

12   damages requires that the plaintiff’s copyright be registered;

13   yet few members of the class hold registered copyrights in their

14   work.   Of course, should any wish to sue individually, the

15   formality of prior registration could be met.    After several

16   years of intense negotiation, and prior to trial (and hence

17   without registration of many of the copyrights held by class

18   members), plaintiffs and defendants reached the comprehensive

19   settlement that is the subject of this appeal.    The majority

20   vacates that settlement on the basis that the district court

21   lacked jurisdiction over the class because most of its members

22   have not registered their copyrights.   For the reasons that

23   follow, I respectfully dissent.

24   I.   Jurisdiction and Section 411(a)


                                       -3-
 1        Section 411(a) of Title 17 provides that “no action for

 2   infringement of the copyright in any United States work shall be

 3   instituted until preregistration or registration of the copyright

 4   claim has been made in accordance with this title.”    I turn first

 5   to the text of § 411(a) and ask whether it speaks in

 6   “jurisdictional” terms.     See Leocal v. Ashcroft, 543 U.S. 1, 8

 7   (2004).   It does not.    See Boos v. Runyon, 201 F.3d 178, 182 (2d

 8   Cir. 2000) (“The statutory provision allowing employees of

 9   federal agencies to sue in district court [i.e., 42 U.S.C. §

10   2000e-16(c)] sets forth certain prerequisites to suit.    In doing

11   so, it does not speak in expressly jurisdictional terms.”

12   (emphasis added)).   Compare Arbaugh, 546 U.S. at 1244 (noting

13   that plaintiff “invoked federal-question jurisdiction under §

14   1331, but her case ‘[arose]’ under a federal law, Title VII, that

15   specifies, as a prerequisite to its application, the existence of

16   a particular fact”), with Maj. Op. at 9 (“In a copyright action,

17   a district court initially derives its jurisdiction from two

18   sources: 28 U.S.C. §§ 1331 and 1338.”).

19        Section 411(a) does not, by its terms, provide the copyright

20   holder with any of the sticks in his bundle of rights.     Cf. 17

21   U.S.C. §§ 106-122 (discussing copyright holder’s rights).

22   Indeed, it is addressed to the copyright holder, not the courts,

23   cf. 28 U.S.C. § 2107(a) (speaking to the courts); Lin Zhong v.

24   U.S. Dep’t of Justice, 461 F.3d 101, 107 (2d Cir. 2006) (noting


                                       -4-
 1   that 8 U.S.C. § 1252(d) stipulates that courts of appeals may

 2   review only “final order[s] of removal”), amended and superseded

 3   by 480 F.3d 104 (2d Cir. 2007), and it simply sets forth a

 4   prerequisite to suit -- namely, registration.    Furthermore, as 17

 5   U.S.C. § 501(b) makes clear, § 411(a) speaks not to rights but to

 6   the means of their vindication.    It stipulates, “[t]he legal or

 7   beneficial owner of an exclusive right under a copyright is

 8   entitled, subject to the requirements of section 411, to

 9   institute an action for any infringement of that particular right

10   committed while he or she is the owner of it.”    17 U.S.C. §

11   501(b) (emphasis added).

12        As we have emphasized, the distinction between a rights-

13   creating statute and an enforcement mechanism is an important

14   one: we typically consider the latter a claim-processing rule

15   within the meaning of Eberhart.     For instance, in Richardson v.

16   Goord, 347 F.3d 431 (2d Cir. 2003) (per curiam), we concluded

17   that the exhaustion requirement of the Prison Litigation Reform

18   Act (“PLRA”) is a claim-processing rule because exhaustion is not

19   “essential to the existence of the claim, . . . and therefore to

20   the presence of an Article III case or controversy,” id. at 434

21   (internal quotation marks and citation omitted); see also Coleman

22   v. Newburgh Enlarged City Sch. Dist., --- F.3d ----, 2007 WL

23   2768745, at *9 n.1 (2d Cir. Sept. 25, 2007) (Straub, J.,

24   concurring); Boos, 201 F.3d at 182 (holding that Title VII’s


                                       -5-
 1   exhaustion requirement is not jurisdictional and may be waived).

 2   Similarly, registration is not essential to the existence of a

 3   copyright claim or, as is discussed below in Part II, to the

 4   presence of an Article III case or controversy.   Section 411(a)

 5   provides that even if registration has been refused by the

 6   Copyright Office, “the applicant is entitled to institute an

 7   action for infringement if notice thereof, with a copy of the

 8   complaint, is served on the Register of Copyrights. . . . [T]he

 9   Register’s failure to become a party shall not deprive the court

10   of jurisdiction to determine that issue.”   17 U.S.C. § 411(a).

11   Thus, the registration requirement appears simply to be a

12   procedural or “administrative prerequisite[],” Boos, 201 F.3d at

13   183, to ensure that the “deposit, application, and fee . . . have

14   been delivered to the Copyright Office in proper form,” 17 U.S.C.

15   § 411(a).   And failure to comply with an administrative

16   prerequisite “would not deprive district courts of jurisdiction.”

17   Boos, 201 F.3d at 183.   Indeed, under § 411(a), district courts’

18   jurisdiction is not disturbed by the denial of registration or by

19   the Register’s failure, in that event, to become a party to the

20   litigation.

21        Second, the legislative history of Title 17 confirms that §

22   411(a) does not create rights but is rather like the enforcement

23   mechanisms or claim-processing rules in Kontrick, Eberhart, and

24   Arbaugh.    See 17 U.S.C. § 408(a) (“[R]egistration is not a


                                      -6-
 1   condition of copyright protection.”); H.R. Rep. No. 94-1476, at

 2   152 (1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5768 (“Except

 3   where, under section 405(a), registration is made to preserve a

 4   copyright that would otherwise be invalidated because of omission

 5   of the notice, registration is not a condition of copyright

 6   protection.”); see also id. at 157 (“Under [§ 411(a)], a

 7   copyright owner who has not registered his claim can have a valid

 8   cause of action against someone who has infringed his copyright,

 9   but he cannot enforce his rights in the courts until he has made

10   registration.” (emphasis added)).

11        Congress passed § 411(a) to implement a policy preference

12   that courts, before they process a copyright claim, should

13   consider the views of the Copyright Office, whose duty is to

14   determine whether “‘the material deposited constitutes

15   copyrightable subject matter and the other legal and formal

16   requirements of [Title 17] have been met.’”   H.R. Rep. No. 94-

17   1476, at 156.   Indeed, “[t]he Copyright Office certificate of

18   registration is prima facie evidence of the facts stated therein.

19   This has generally been held to mean prima facie proof of

20   ownership and validity.”   Novelty Textile Mills, Inc. v. Joan

21   Fabrics Corp., 558 F.2d 1090, 1092 n.1 (2d Cir. 1977) (citation

22   omitted); see Paul Morelli Design, Inc. v. Tiffany & Co., 200 F.

23   Supp. 2d 482, 485-486 (E.D. Pa. 2002) (discussing deference due

24   the Copyright Office); H.R. Rep. No. 94-1476, at 156-67 (“Under


                                     -7-
 1   section 410(c), a certificate is to ‘constitute prima facie

 2   evidence of the validity of the copyright and of the facts stated

 3   in the certificate.’   The principle that a certificate represents

 4   prima facie evidence of copyright validity has been established

 5   in a long line of court decisions, and it is a sound one.”).      In

 6   this respect, § 411(a) is like other statutory exhaustion

 7   requirements, which are designed to permit agencies to pass first

 8   on contested questions, the resolution of which requires a

 9   certain quantum of expertise, and most such exhaustion

10   requirements are not jurisdictional.1   See, e.g., Lin Zhong v.

11   U.S. Dep’t of Justice, 480 F.3d 104, 118-20 (2d Cir. 2007)

12   (discussing the Immigration and Nationality Act and holding that

13   the mandatory requirement of issue exhaustion in asylum cases was

14   not a jurisdictional prerequisite to review and that failure to

          1
           In fact, the copyright-registration requirement is less
     stringent than the exhaustion requirement of Title VII: a
     copyright holder need not obtain a “right to sue” letter from the
     relevant administrative body. Compare 42 U.S.C. §
     2000e-5(e)-(f), with 17 U.S.C. § 411(a) (noting that when “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 an
     action for infringement”), 2-7 Nimmer on Copyright § 7.16
     [B][1][a][I] (“[A] party who seeks to register may proceed to
     litigate the claim, regardless of whether the Copyright Office
     ultimately issues the certificate, or by contrast denies it.”),
     and 17 U.S.C. § 410(d) (“The effective date of a copyright
     registration is the day on which an application, deposit, and
     fee, which are later determined by the Register of Copyrights or
     by a court of competent jurisdiction to be acceptable . . . have
     all been received.” (emphasis added)).

                                     -8-
 1   exhaust could be waived); Paese v. Hartford Life Accident Ins.

 2   Co., 449 F.3d 435, 446 (2d Cir. 2006) (ERISA); Boos, 201 F.3d at

 3   182 (Title VII); Sellers v. M.C. Floor Crafters, Inc., 842 F.2d

 4   639, 642 n.2 (2d Cir. 1988) (Labor Management Relations Act of

 5   1947).   Furthermore, because this suit was settled before trial,

 6   the views of the Copyright Office are unhelpful; the copyright

 7   registration requirement only serves its statutory purpose when a

 8   cause is litigated, not settled.

 9        The legislative history of the Copyright Act also suggests

10   that registration, rather than being a prerequisite to federal

11   jurisdiction, is a prerequisite to certain remedies -- namely

12   statutory damages and attorney’s fees.     See H.R. No. 94-1476, at

13   158; see also 17 U.S.C. § 412.     Registration furthers the

14   important policy behind copyright of disclosing works and making

15   them part of the public domain.    But because registration is not

16   required for copyright protection, the Copyright Act provides the

17   additional remedies of statutory damages and attorney’s fees as

18   incentives to register.   See H.R. No. 94-1476, at 158 (“The need

19   for section 412 arises from [the fact that] . . . [c]opyright

20   registration for published works, which is useful and important

21   to users and the public at large, would no longer be compulsory,

22   and should therefore be induced in some practical way.” (emphasis

23   added)).

24        Third, § 411(a) is riddled with jurisdictionally recognized


                                       -9-
 1   exceptions.   Cf. Bowles, 127 S. Ct. 2365 n.4 (noting that

 2   jurisdictional requirements are seldom waivable); Fernandez v.

 3   Chertoff, 471 F.3d 45, 58 (2d Cir. 2006) (noting that the Title

 4   VII exhaustion requirement is not jurisdictional because it “‘is

 5   subject to waiver, estoppel, and equitable tolling’” (quoting

 6   Zipes v. Trans World Airlines, Inc., 455 U.S. 385, 393 (1982)));

 7   Mosely v. Bd. of Educ., 434 F.3d 527, 532-33 (7th Cir. 2006).

 8   For instance, courts routinely permit plaintiffs to file suit

 9   before applying for a copyright or while the Copyright Office is

10   considering their application.    See Apple Barrel Prods., Inc. v.

11   Beard, 730 F.2d 384, 387 (5th Cir. 1984) (permitting plaintiff to

12   file suit despite the fact that the Copyright Office had yet to

13   act on his application); see also Positive Black Talk Inc. v.

14   Cash Money Records Inc., 394 F.3d 357, 366 (5th Cir. 2004) (“The

15   notion that the supplemental pleading cures the technical defect,

16   notwithstanding the clear language of § 411, is consistent with

17   the principle that technicalities should not prevent litigants

18   from having their cases heard on the merits.”); M.G.B. Homes,

19   Inc. v. Ameron Homes, Inc., 903 F.2d 1486, 1488-89 (11th Cir.

20   1990); J. Racenstein & Co., Inc. v. Wallace, No. 96 CIV. 9222,

21   1997 WL 605107, at *1-2 (S.D.N.Y. Oct. 1, 1997).   The general

22   exception that allows post-suit registration is particularly

23   telling because “[i]t has long been the case that ‘the

24   jurisdiction of the court depends upon the state of things at the


                                      -10-
 1   time of the action brought.’” Grupo Dataflux v. Atlas Global

 2   Group, 541 U.S. 567, 571 (2004) (quoting Mollan v. Torrance, 22

 3   U.S. (9 Wheat.) 537, 539 (1824)).

 4        Moreover, as the majority notes, several circuits have seen

 5   fit to enjoin the infringement of an unregistered copyright.     See

 6   Perfect 10, Inc. v. Amazon.com, Inc., 487 F.3d 701, 710 n.1 (9th

 7   Cir. 2007); Olan Mills Inc. v. Linn Photo Co., 23 F.3d 1345, 1349

 8   (8th Cir. 1994); Pac. & S. Co., Inc. v. Duncan, 744 F.2d 1490,

 9   1499 & n.17 (11th Cir. 1984).    These circuits have reasoned that,

10   by the very language of 17 U.S.C. § 502(a), “[t]he power to grant

11   injunctive relief is not limited to registered copyrights, or

12   even to those copyrights which give rise to an infringement

13   action.”   Olan Mills, 23 F.3d at 1349; see also 17 U.S.C. §

14   502(a) (providing that a court may “grant temporary and final

15   injunctions on such terms as it may deem reasonable to prevent or

16   restrain infringement of a copyright” (emphasis added)); Perfect

17   10, Inc., 487 F.3d at 710 n.1 (“[T]he Copyright Act gives courts

18   broad authority to issue injunctive relief.”); Pac. & S. Co.,

19   Inc., 744 F.2d at 1499 n.17.    Permitting district courts to

20   enjoin the infringement of unregistered copyrights is not only

21   consistent with § 502(a), but also gives meaning to § 408(a)’s

22   provision that “registration is not a condition of copyright


                                     -11-
 1   protection,” and to the congressional policy of making available

 2   the additional remedies of statutory damages and attorney’s fees

 3   to those who register.   Cf. Walker Mfg., Inc. v. Hoffman, Inc.,

 4   220 F. Supp. 2d 1024, 1039 (N.D. Iowa 2002) (“Where the owner of

 5   an unregistered copyright seeks injunctive relief, as opposed to

 6   statutory damages, the Eighth Circuit Court of Appeals has held

 7   such an action is viable even in the absence of copyright

 8   registration.”).

 9        Finally, it is evident that § 411(a) is not a definitive

10   limitation on the court’s power, characteristic of a

11   jurisdictional provision, from § 411(a)’s explicit exception of

12   foreign works from its reach.   See 17 U.S.C. § 411(a) (discussing

13   “United States work[s]”).   The history of this exception further

14   counsels concluding that § 411(a), unlike jurisdictional

15   provisions, is not meant to be inflexible.   In discussing

16   possible ways to amend the Copyright Act to bring it into

17   compliance with the Berne Convention,2 the Senate Judiciary

18   Committee argued that because

19        [r]egistration . . . [while] not, technically speaking, a
20        condition for the existence of copyright, . . . . is,


          2
           Convention for the Protection of Literary and Artistic
     Works, Sept. 9, 1886 (Paris Text 1971), S. Treaty Doc. No. 99-27
     (1986).

                                     -12-
 1         however, a precondition for the exercise of any of the . . .
 2         rights conferred by copyright, . . . [the] metaphysical
 3         distinction between the existence of a right to prevent
 4         unauthorized use of a copyrighted work, and the exercise of
 5         that right, [should not be] maintain[ed].
 6
 7   S. Rep. No. 100-352, at 16-17 (1988), reprinted in 1988

 8   U.S.C.C.A.N. 3706, 3721-22.   Although the House did not endorse

 9   the Senate’s view, Congress as a whole was able to reach

10   consensus on an amendment to the Act only because it deemed §

11   411(a) a “formality,” and the Berne Convention did not forbid

12   signatories from “‘impos[ing] [formalities] . . . on works first

13   published in its own territory.’” La Resolana Architects, PA v.

14   Clay Realtors Angel Fire, 416 F.3d 1195, 1206 & n.11 (10th Cir.

15   2005).

16         Taken together, § 411(a)’s language, legislative history,

17   jurisdictional exceptions, and exception for foreign works

18   strongly indicate that the registration requirement is more akin

19   to a claim-processing rule than a jurisdictional prerequisite.

20   II.   Constitutional Standing in the Class-Action Context and
21         Section 411(a)
22
23         This appeal concerns the pre-trial settlement of a class

24   action.   Whether or not § 411(a) is a claim-processing rule,

25   compliance with its requirements is not necessary for a copyright

26   plaintiff to have constitutional standing.   Indeed, as the


                                    -13-
 1   Seventh Circuit has aptly explained, it is hard to see how the

 2   filing of an administrative claim could ever be the prerequisite

 3   to asserting constitutional injury.   See Perez v. Wis. Dep’t of

 4   Corr., 182 F.3d 532, 536 (7th Cir. 1999) (explaining under the

 5   Prison Litigation Reform Act that “Perez was injured (if at all)

 6   by deficiencies in medical treatment; an administrative claim is

 7   not essential to a case or controversy”).

 8        And, in the class-action context, there is a distinction

 9   between constitutional standing, which is always required, and

10   statutory standing, which is not required of all members of a

11   settlement-only class.   See In re Lorazepam & Clorazepate

12   Antitrust Litig., 289 F.3d 98, 107-08 (D.C. Cir. 2002) (holding

13   in an antitrust class action that “[u]nlike constitutional

14   standing, this court’s jurisdiction does not turn on antitrust

15   standing”).   Compare Denney, 443 F.3d at 264 (noting that all

16   members of a settlement-only class must have constitutional

17   standing), with id. at 265 (“The future-risk members of the

18   Denney class have suffered injuries-in-fact, irrespective of

19   whether their injuries are sufficient to sustain any cause of

20   action.”).3   For instance, in Lerner v. Fleet Bank, N.A., 318


          3
           I thus disagree with the majority that all members of a
     settlement-only class must possess both constitutional and

                                    -14-
 1   F.3d 113 (2d Cir. 2003), a RICO class action, we held that RICO

 2   standing was not “jurisdictional,” at least in the class-action

 3   context.   We explained that “plaintiffs’ lack of statutory

 4   standing does not divest the district court of original

 5   jurisdiction over the . . . action.”   Id. at 130.   And we went on

 6   to conclude that the district court could exercise supplemental

 7   jurisdiction over plaintiffs’ state-law claims despite the fact

 8   that certain members of the plaintiff class lacked RICO standing.

 9   Id. at 125-26 (noting that if plaintiffs’ lack of RICO standing

10   did erect a jurisdictional bar to their RICO claims, “the

11   district court did not have ‘original jurisdiction’ over the

12   action because the RICO claim was the only federal claim and, for

13   the . . . plaintiffs, the only basis for subject matter

14   jurisdiction”).   We emphasized that RICO standing was

15   “sufficiently intertwined with the merits,” Lerner, 318 F.3d at

16   128, and thus not jurisdictional.

17        Drawing such a distinction between constitutional standing,

18   the absence of which deprives the court of authority to redress

19   harm to that plaintiff, and statutory standing, the absence of

20   which may be waived, makes particular sense in the settlement




     statutory standing.   Cf. Maj. Op. at 17.

                                    -15-
 1   context.   We have, for example, approved the settlement of mass-

 2   tort lawsuits involving plaintiffs who have been exposed to toxic

 3   substances and therefore run the risk of incurring actionable

 4   injuries at some point in the future -- but who, while they may

 5   have constitutional standing, surely could not survive a motion

 6   to dismiss for failure to state a claim were they to bring their

 7   case to trial.   See, e.g., In re Agent Orange Prod. Liab. Litig.,

 8   996 F.2d 1425 (2d Cir. 1993).   And I am not disposed to undo such

 9   settlements because certain class members may not, at the moment

10   of settlement, possess the statutory cause of action that they

11   could have in the future and could then litigate.   Cf. H.R. Rep.

12   No. 94-1476 (“[A] copyright owner who has not registered his

13   claim can have a valid cause of action against someone who has

14   infringed his copyright, but he cannot enforce his rights in the

15   courts until he has made registration.”).

16        A plaintiff alleging copyright infringement must show

17   ownership of a valid copyright and copying by the defendant,

18   Warner Bros. Inc. v. Am. Broad. Cos., 654 F.2d 204, 207 (2d Cir.

19   1981); the registration requirement, and resulting opinion of the

20   Copyright Office, bear upon the validity of the copyright and its

21   ownership and thus “go[] to the merits of the action,” cf.

22   Lerner, 318 F.3d at 129.   But a plaintiff alleging copyright

                                     -16-
 1   infringement has suffered an injury-in-fact whether or not he has

 2   registered his copyright.   As the Eighth Circuit has explained,

 3   “infringement itself is not conditioned upon registration of the

 4   copyright.”   Olan Mills, 23 F.3d at 1349.   Thus, all members of

 5   the plaintiff class -- whether or not they have registered their

 6   copyrights -- have been injured by defendants if we assume the

 7   truth of plaintiffs’ allegations.

 8        The other two requirements of Article III standing -- an

 9   injury that is traceable to the challenged action and redressable

10   by a favorable decision -- are also satisfied in this case.      See,

11   e.g., Denney, 443 F.3d at 263, 266.   Plaintiffs’ injuries are a

12   direct result of defendants’ infringement and would be redressed

13   by an award of damages for their economic losses.   Plaintiffs

14   therefore have standing in the constitutional sense.

15        Finally, as I noted in Part I, claim-processing rules are

16   not essential to the presence of an Article III case or

17   controversy, Richardson, 347 F.3d at 434.    That plaintiffs have

18   established an Article III case or controversy regardless of

19   whether they have registered is further support for the

20   conclusion that § 411(a)’s registration requirement is a claim-

21   processing rule rather than a jurisdictional prerequisite, and

22   that plaintiffs’ settlement should not be disturbed.

                                    -17-
 1   III. Well-Made Toy, Morris, and Weinberger Are Distinguishable

 2        In concluding that § 411(a) is “jurisdictional,” the

 3   majority relies on two decisions of our court -- Well-Made Toy

 4   Manufacturing Corp. v. Goffa International Corp., 354 F.3d 112

 5   (2d Cir. 2003), and Morris v. Business Concepts, Inc., 259 F.3d

 6   65 (2d Cir. 2001) -- that attach the “jurisdictional” label to §

 7   411(a).   I have already sought to explain why we should

 8   reconsider our too-facile use of the jurisdictional label in the

 9   wake of Eberhart.4   Cf. Coleman, 2007 WL 2768745, at *4

10   (“Recently, . . . the Supreme Court has admonished lower courts

11   to more carefully distinguish between jurisdictional rules and

12   mandatory claims-processing rules.”).   I now explain why those

13   cases, in any event, offer only equivocal support.

14        The plaintiff in Well-Made Toy, for instance, manufactured

15   two similar rag dolls, differing principally in their size.

16   Although it registered a copyright in only the smaller of the two

17   dolls, 354 F.3d at 114, Well-Made Toy sought damages from the


          4
           I note in passing that although in Moore v. PaineWebber,
     Inc., 189 F.3d 165, 169 n.3 (2d Cir. 1999), we “suggested in
     dictum that RICO’s causation requirement raises a jurisdictional
     issue,” Lerner, 318 F.3d at 128 (discussing Moore), the author of
     the majority opinion in the instant case recently joined Lerner,
     which dismissed that suggestion and held that “‘RICO standing’ .
     . . is not jurisdictional in nature,” id. at 129 (Sotomayor, J.,
     joined by Straub & Goldberg, JJ.).

                                    -18-
 1   defendant based on the defendant’s alleged reproduction of the

 2   larger of the two dolls.       In concluding that Well-Made Toy could

 3   not maintain such a suit, we distinguished Streetwise Maps, Inc.

 4   v. VanDam, Inc., 159 F.3d 739 (2d Cir. 1998).      In Streetwise

 5   Maps, while the plaintiff had registered a copyright in only the

 6   second of two maps it published (as in Well-Made Toy), the second

 7   map incorporated the substance of the first map (unlike the dolls

 8   in Well-Made Toy); and thus, we concluded, the “registration

 9   certificate [for the second map]. . . suffice[d] to permit [the

10   plaintiff] to maintain an action for infringement based on

11   defendants’ infringement [of its unregistered copyright in the

12   first map].”     Id. at 747.    The difference between Well-Made Toy

13   and Streetwise Maps was a matter of logic, not locution: “Because

14   a derivative work is cumulative of the earlier work, it is

15   logical that the registration of the derivative work would relate

16   back to include the original work, while registration of the

17   original material would not carry forward to new, derivative

18   material.”     Murray Hill Publ’ns v. ABC Commc’ns, Inc., 264 F.3d

19   622, 632 (6th Cir. 2001) (emphasis added), cited in Well-Made

20   Toy, 354 F.3d at 116.

21        Morris v. Business Concepts, Inc. is equally unhelpful to

22   the majority.    In that case, while we did say that “subject

                                        -19-
 1   matter jurisdiction was lacking because the registration

 2   requirement of § 411(a) was not satisfied,” 259 F.3d at 72, we

 3   also asserted, without mentioning “jurisdiction,” that “proper

 4   registration is a prerequisite to an action for infringement,”

 5   id. at 68 (citing Whimsicality, Inc. v. Rubie’s Costume Co., 891

 6   F.2d 452, 453 (2d Cir. 1989)).    Thus, Morris is hardly a beacon

 7   of clarity.   Cf. Paese, 449 F.3d at 443 (discussing the opacity

 8   of the court’s precedent respecting exhaustion under ERISA).

 9        The majority likewise relies upon Weinberger v. Salfi, 422

10   U.S. 749 (1975), to support its contention that each member of a

11   settlement-only class must satisfy the “jurisdictional”

12   requisites to a suit under the Copyright Act -- including, as it

13   so happens, § 411(a).   But the majority misses the point:

14   Weinberger supports the conclusion that the essential question is

15   whether compliance with a statutory exhaustion requirement is

16   necessary for plaintiffs to have constitutional standing.    And,

17   indeed, in Weinberger it was.    See Perez, 182 F.3d at 535-36

18   (discussing Weinberger and noting that waiting too long to sue

19   “can be a jurisdictional shortcoming, if the step omitted before

20   suit is essential to . . . the presence of an Article III case or

21   controversy”); see also Richardson, 347 F.3d at 434.    Weinberger

22   involved 42 U.S.C. § 405(g), a provision of the Social Security

                                      -20-
 1   Act that channels social security and medicare claims through an

 2   administrative process and precludes federal courts from

 3   exercising general federal question jurisdiction over such

 4   claims.   The Court explained, “it is the Social Security Act

 5   which provides both the standing and the substantive basis for

 6   the presentation of th[e] constitutional contentions.”

 7   Weinberger, 422 U.S. at 760-61 (emphasis added); see also Shalala

 8   v. Ill. Council on Long Term Care, Inc., 529 U.S. 1, 12 (2000)

 9   (“[T]he bar of § 405(h) reaches beyond ordinary administrative

10   law principles of ‘ripeness’ and ‘exhaustion of administrative

11   remedies.’”); Heckler v. Ringer, 466 U.S. 602, 615 (1984)

12   (holding that the bar to the exercise of federal question

13   jurisdiction applied only when “both the standing and the

14   substantive basis for the presentation” of a claim was the

15   Medicare Act (emphasis added)).   But, as I have already

16   explained, in this case, constitutional injury does not depend

17   upon compliance with § 411(a): whether or not they have

18   registered their copyrights, all members of the class in this

19   case have suffered sufficient injury to satisfy Article III.

20        For the foregoing reasons, I would not dismiss the




                                    -21-
1   settlement on jurisdictional grounds.5   I respectfully dissent.

2

3

4

5

6

7




         5
           On the merits, the failure to create a sub-class
    consisting of those members holding primarily “C-class” claims,
    and separate representation for those members, is a serious
    problem in my view, because the named representatives hold more
    “A-class” and “B-class” claims than most class members, and thus
    have an incentive to favor holders of A- and B-class claims over
    holders of primarily C-class claims. Cf. United Ind. Flight
    Officers, Inc. v. United Air Lines, Inc., 756 F.2d 1274, 1284
    (7th Cir. 1985) (“No named plaintiff is a member of subclass 2
    alone.”) (emphasis added); Bogosian v. Gulf Oil Corp., 561 F.2d
    434, 449 (3d Cir. 1977). Objectors point out that such
    favoritism may have occurred -- as the so-called “C-reduction,”
    see Maj. Op. at 7, ensures that C-class claim holders are paid
    little or perhaps nothing. Nevertheless, the majority’s
    conclusion today reduces the value of unregistered copyright
    claims to zero, rendering the merits of the settlement a moot
    point.

                                  -22-
