By: Scott Cameron
Copyright law protects authors and artists who create original works from those who might copy their works. A work may be registered with the United States Copyright Office, but the creator is protected by copyright law even if the work is not registered. As has been said, copyright protection attaches as soon as the pen leaves the page. Thus, copyright law provides a private right of action in federal court against anyone who copies, distributes, or makes derivative works without the permission of the creator of the work. Before the copyright owner can bring a suit for infringement of her copyright, however, the Copyright Act places a requirement that the copyright be registered with the Copyright Office.
A question regarding what exactly it meant to “register” the copyright before filing a lawsuit was unsettled until a recent Ninth Circuit opinion. There have been two general approaches taken by the various Circuits. The “registration approach” required that the copyright office actually issue the certificate of registration of copyright before a lawsuit could be instituted. Conversely, the “application approach” held that as soon as the completed application and fee had been received by the Copyright Office, the registration requirement was satisfied and an infringement action could be filed. Before the recent case Cosmetic Ideas, Inc. v. IAC/InteractiveCorp, the Ninth Circuit had not ruled one way or the other. On May 25, 2010, the Ninth Circuit issued its opinion in the Cosmetic Idea case, deciding that the application approach is to be followed.
The court first had to confront the issue of whether the requirement to register the copyright was jurisdictional, as the district court had dismissed the complaint for lack of subject matter jurisdiction due to the claimant’s failure to obtain a registration certificate prior to filing the lawsuit. Until recently, the prevailing view was that the failure to register a copyright stripped a federal court of jurisdiction to hear the infringement action. This question was an easy one here because the Supreme Court recently held in Reed Elsevier, Inc. v. Muchnick, 130 S. Ct. 1237 (2010), that the registration requirement is not jurisdictional.
In Reed Elsevier, the Court stated “[t]he registration requirement in 17 U. S. C. A. §411(a) … imposes a precondition to filing a claim that is not clearly labeled jurisdictional, is not located in a jurisdiction-granting provision, and admits of congressionally authorized exceptions. See §§411(a)–(c). Section 411(a) thus imposes a type of precondition to suit that supports nonjurisdictional treatment under our precedents.” Based on Reed Elsevier, the Ninth Circuit had little difficulty finding that the district court in Cosmetic Ideas erred in dismissing the claim for lack of subject matter jurisdiction. Rather than stop there, the court went on to answer the question of what registration means to determine if it had another basis to affirm the lower court.
The court first looked to the plain wording of the statute for the meaning of “registration.” It found none. In fact, the court explained that a plain reading of the Copyright Act supported either interpretation. First, the court explained that the term was “unhelpfully defined” in Section 101 as “a registration of a claim in the original or the renewed and extended term of a copyright.” Next, the court engaged in a lengthy discussion showing that sections that required registration for bringing a lawsuit can be read either way.
In the end, however, the court was persuaded that the application approach was better. This approach “avoids unnecessary delay in copyright infringement litigation, which could permit an infringing party to continue to profit from its wrongful acts.” The registration, if granted, is back-dated to the date of the application. Also, Section 411(a) permits a claimant to file a lawsuit for infringement even if the registration application is denied by the Copyright Office. The court noted that “the registration approach thus creates a strange scheme: Given that the claimant will ultimately be allowed to proceed regardless of how the Copyright Office treats its application, it makes little sense to create a period of ‘legal limbo’ in which suit is barred.”
Thus, the Ninth Circuit joins the circuits that hold an infringement suit can be initiated once the application and fee for copyright registration is accepted by the Copyright Office. Added to the Reed Elsevier decision, a significant shift has occurred in the procedural requirements to copyright litigation. From a claimant’s perspective, it is now easier to file and maintain the lawsuit, especially if the Copyright Office takes some time in ruling on its application. On the defense side, more care is needed in responding to an infringement suit. A defense attorney must now be careful not to waive an affirmative defense that the work was not registered prior to filing the suit, for if the requirement is not jurisdictional, it seems that the defense can be waived by failure to assert it.
The last line in the Reed Elsevier decision leaves the waiver question unsettled. The Court “decline[d] to address whether §411(a)’s registration requirement is a mandatory precondition to suit that—like the threshold conditions in Arizona v. California, 530 U. S. 392, 412–413 (2000) (res judicata defense); Day v. McDonough, 547 U. S. 198, 205–206 (2006) (habeas statute of limitations); and Hallstrom v. Tillamook County, 493 U. S. 20, 26, 31 (1989) (Resource Conservation and Recovery Act of 1976 notice provision)—district courts may or should enforce sua sponte by dismissing copyright infringement claims involving unregistered works.” This may well be the subject of future litigation in the lower courts.