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May 2010

Ninth Circuit Holds Application To Register Copyright, Rather Than Actual Registration, Is Prerequisite To Maintenance of Infringement Suit

Cosmetic Ideas Inc. v. IAC/InteractiveCorp., No. 08-56079, 2010 DJDAR 7635

In a decision with practical ramifications on when and how to file a copyright infringement suit, the Ninth Circuit Court of Appeal joined the Fifth and Seventh Circuit Courts of Appeal in holding that a copyright plaintiff need merely have applied to register the copyright in issue, not that the registration have actually issued, as a prerequisite to suit under Section 411(a) of the Copyright Act. The Tenth and Eleventh Circuit Courts of Appeal have gone the other way, holding that actual registration is required.

The Court found that statutory references in the Copyright Act could support either view. Therefore, it fell back on the overall purpose of the Copyright Act, which was to encourage voluntary registration and provide broad copyright protection, and on common sense observations. Holding the "registration" prerequisite to be satisfied by application "avoids unnecessary delay in copyright infringement litigation, which could permit an infringing party to continue to profit from its wrongful acts." The Court also noted that Section 411(a) allows a party, after applying for registration, to bring an infringement suit after the Register has rejected his or her registration, so long as the Register is notified of the suit. Quoting Nimmer on Copyright, the Court noted that "given that the claimant . . . will ultimately be allowed to proceed regardless of how the Copyright Office treats the application, it makes little sense to create a period of 'legal limbo' in which suit is barred." The Court held that the central goal of encouraging registration is "accomplished equally by the registration and application approaches, as either approach requires a party to submit the information necessary to add the copyright to the federal registry." Therefore,

[t]he registration approach's added requirement of affirmative approval or rejection before suit thus amounts to little more than just the type of needless formality Congress generally worked to eliminate in the 1976 Act. ... It makes little sense to dismiss a case (which will likely be refiled in a matter of weeks or months) simply because the Copyright Office has not made a prompt decision that will have no substantive impact on whether or not a litigant can ultimately proceed.

The Court noted also that the passage of time while the Copyright Office examines an application could be prejudicial to a copyright plaintiff by impacting the applicable 3-year statute of limitations from the date of infringement. Finally, the Copyright Office will generally have the opportunity to make its decision during the pendency of the suit, is largely "perfunctory," and is reviewable by the Courts. Thus, "[t]he two processes---registration approval by the Copyright Office and an underlying infringement case in the courts---can occur simultaneously with little or no prejudice to any involved parties."

Practical Advice ("Why Should I Care?")

Until now, copyright plaintiffs in a number of jurisdictions have been advised to register their copyrights first before filing suit. This is no small consideration, as in fact it can be months before the Copyright Office acts on a registration application. Plaintiffs in the Ninth Circuit can now simply allege in the Complaint that they have submitted their registration applications, and not have to wait before proceeding.

As a general matter, Gordon & Rees recommends that clients register their copyrightable works--publications, designs, websites, and other works of authorship--as a matter of course and early on, and, if the business generates such works on a regular basis, internal protocols and processes should be established to do so. Copyright registration is relatively fast, easy, and cheap, and there are substantial legal advantages from doing so prior to an infringement, principally establishing eligibility for attorney's fees and statutory damages in any subsequent infringement action.

Intellectual Property

Richard P. Sybert

Intellectual Property