Ninth Circuit: Filing copyright application sufficient to bring suit under Section 411(a)June 3, 2010

In a decision last week, the Ninth Circuit held the filing of an application for registration with the copyright office is sufficient to meet the requirement that a copyright be "registered" before suit is brought under 17 U.S.C. § 411(a). In the first circuit court decision on the subject since the Supreme Court's Reed Elsevier decision (holding the registration requirement of § 411(a) is not jurisdictional), the Ninth Circuit took the position that the statute was ambiguous, and that the "application" approach better comported with the purpose of the registration requirement.

The decision deepens the circuit split on the subject, with the Fifth, Seventh, and Ninth Circuits following the "application" approach, and the Tenth and Eleventh following the "registration" approach. This continues to be an issue that would benefit from either Congressional action or a definitive ruling from the Supreme Court, something the Court declined to do in Reed Elsevier.

Cosmetic Ideas designs and creates jewelry. In 1997, it created a necklace called the Lady Caroline Lorgnette, and began manufacturing and selling the necklace in 1999. Cosmetic Ideas alleged that sometime between 2005 and 2008, the Home Shopping Network (HSN) began making and selling a "virtually identical" necklace.

Accordingly, on March 6, 2008, Cosmetic Ideas filed an application to registerits copyright in the necklace. On March 12, it received confirmation of receipt of the application from the Copyright Office. Then, on March 27, it filed suit for copyright infringement. The registration certificate did not issue until after suit was filed, but under § 410(d), the registration dates back to the date of the application.

HSN moved to dismiss for lack of subject matter jurisdiction because Cosmetic Ideas had not obtained registration of the jewelry design before filing suit. The district court granted the motion, holding registration was a necessary prerequisite to suit under § 411(a). Cosmetic Ideas appealed. The appeal was withdrawn while Reed Elsevier was pending, and resubmitted after it was decided, with the parties filing new briefs addressing the issues after the Supreme Court held the registration requirement of§ 411(a) is not jurisdictional.

The Ninth Circuit reversed the dismissal. The court framed the issue as determining what is necessary to "register" a work as that term is used in § 411(a), specifically whether the action of registration is complete upon filing a registration application, or whether a registration certificate must be issued for a work to be registered. The court found the definition of "registration" in § 101 "unhelpful," and therefore turned to the language of the statute as a whole.

In this regard, the court took the position that registration is used inconsistently in different sections of the Copyright Act. The court noted in § 410(a) and portions of § 411(a), registration requires an affirmative act by the Copyright Office, and cannot therefore be complete by filing of an application alone. However, the court stated other sections, specifically § 408(a) and § 410(d), "blur" the distinction. [ed: note the court did not state that registration can be completed by filing of an application, just that they were ambiguous.] For example, § 408(a) states an owner "may obtain registration . . . by delivering to the Copyright office" an application and related materials. Of course, the notion that delivery is sufficient to get the registration is belied by the very sections cited by the court previously, but nevertheless the court holds the statute ambiguous on this basis.

Given the ambiguity, the court then looks to the purpose of the registration requirement of § 411(a). Here, the court notes the purpose is to provide an incentive for copyright owners to register their works to create a "robust federal register" of copyrights, and also to increase the protections available for copyrighted work. These goals, according to the court, are better served by the application approach, because the registration approach creates an unnecessary delay in seeking relief, particularly when § 411(a) expressly permits filing suit after registration has been refused. The court held the appliation approach avoids this delay while "not imparing the central goal of copyright registration," namely maintenance of a robust register of copyrights. The court also wanted to avoid a situation where the three year statute of limitations ends up barring a claim simply because the Copyright Office has not yet acted on an application. Finally, the court observed the "application" approach is endorsed by the leading copyright treatise, Nimmer on Copyright (neglecting that the other major copyright treatise endorses the "registration" approach, calling Nimmer's view "anti-statutory").

Accordingly, the court held filing an application for registration with the Copyright Office is sufficient to meet the "registration" requirement of § 411(a). Under this approach, it was undisputed that registration had been applied for before filing suit, and the court reversed the dismissal of the case and remanded for further proceedings.

To read the full decision in Cosmetic Ideas, Inc. v. IAC/InteractiveCorp, click here.