By: David Muradyan
17 U.S.C. § 411(a) requires one to register their copyright prior to filing a copyright infringement lawsuit. What does it mean to “register” one’s work? Is a copyright registered at the time the copyright holder’s application is received by the Copyright Office (the “application approach”), or at the time that the Copyright Office acts on the application and issues a certificate of registration (the “registration approach”)? Different district courts within the Ninth Circuit followed different approaches. Thanks to a recent Ninth Circuit decision in Cosmetic Ideas, Inc. v. IAC/InteractiveCorp., 606 F.3d 612 (2010), practitioners in the Ninth Circuit now have a definitive answer.
The circuit courts are split on whether to apply the application approach or the registration approach; the Fifth and Seventh Circuits had adopted the application approach (See Apple Barrel Prods., Inc. v. Beard, 730 F.2d 384, 386-87 (5th Cir. 1984); Chicago Bd. of Educ. V. Substance, Inc., 354 F.3d 624, 631 (7th Cir. 2003)), whereas the Tenth and Eleventh Circuits had adopted the registration approach. (La Resolana Architects, P.A. v. Clay Realtors Angel Fire, 416 F.3d 1195, 1202-04 (2005); M.G.B. Homes, Inc. v. Ameron Homes, Inc., 903 F.2d 1486, 1489 (11th Cir. 1990), abrogated in part by Reed Elsevier Inc. v. Muchnick, 559 U.S. ___, 176 L. Ed. 2d 18, 130 S. Ct. 1237, 1243 & n.2 (2010).) The Ninth Circuit itself had not addressed the issue and district courts within the Ninth Circuit were split, with some having adopted the application approach and others which had adhered to the registration approach. (Compare Loree Rodkin Mgmt. Corp. v. Ross-Simon, Inc., 315 F. Supp. 2d 1053, 1056 (C.D. Cal. 2004) (concluding that the court has no jurisdiction until Copyright Office issues a certificate of registration) with Penpower Technol. Ltd. V. S.P.C. Technol., 627 F. Supp. 2d 1083, 1091 (N.D. Cal. 2008) (holding that filing an application is equivalent to preregistration and that plaintiffs were not required to wait for issuance of a registration certificate).)
Section 411(a) provides, with certain exceptions, that “no civil 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.” (17 U.S.C. § 411(a).) Registration is important because, among other things, a copyright holder can recover statutory damages and attorney’s fees only after registration. (17 U.S.C. § 412.) In Cosmetic Ideas, Inc., the Ninth Circuit considered whether under Section 411(a), a copyright is considered “registered” at the time the copyright holder’s application is received by the Copyright Office, or at the time that the Copyright Office acts on the application and issues a certificate of registration. After conducting a thorough statutory analysis of Section 411, the Ninth Circuit adopted the “application approach,” concluding that "receipt by the Copyright Office of a complete application satisfies the registration requirement of §411(a)."
The Ninth Circuit concluded that the “application approach better fulfills Congress’s purpose of providing broad copyright protection while maintaining a robust federal register,” setting forth the following four reasons for its adoption. First, the Ninth Circuit stated that the “application approach avoids unnecessary delay in copyright infringement litigation, which could permit an infringing party to continue to profit from its wrongful acts.” This is because Section 411(a) allows parties who have applied for registration to litigate their claim, regardless of whether the Copyright Office accepts or rejects the registration. Contrast this with the “registration approach,” where, as the Ninth Circuit noted, the party must wait for the Copyright Office to act before filing a copyright infringement suit. In short, “[t]he application approach avoids this legal limbo—and avoids prolonging the period of infringement-by allowing a litigant to proceed with an infringement suit as soon as he has taken all of the necessary steps to register the copyright at issue.”
Second, the Ninth Circuit noted that the application approach avoids delay without “impairing the central goal of copyright registration.” Indeed, copyright registration is a voluntary procedure which helps maintain a robust national register of copyrights as envisioned by Congress (although a copyright holder must register the copyright prior to instituting a copyright infringement action). Congress’s goal of maintaining such a system 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.”In essence, the registration approach’s requirement that the Copyright Office act upon the registration amounts to a “needless formality,” precisely what Congress tried to eliminate when it enacted the Act. “It makes little sense to dismiss a case (which will likely be refilled 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.”
Third, the Ninth Circuit noted that in a worst-case scenario, the registration approach could cause a party to lose its ability to sue a party for copyright infringement. Noting that there is a three-year statute of limitations period for copyright infringement actions (17 U.S.C. § 507(b)), the Ninth Circuit stated that under the registration approach, a plaintiff who applied towards the end of the statutory period could theoretically have his, her or its suit barred due to the statute of limitations if the Copyright Office took longer to act on the application. Only the application approach, in the Ninth Circuit’s view, fully protects litigants from such a scenario.
Finally, the Ninth Circuit rejected the argument that “deference” to the Register requires adoption of the registration approach. It stated, among other things, that the Register’s decision of whether to grant a registration certificate is largely perfunctory—the Register “looks only to ensure that the material deposited is “copyrightable subject matter’ and the legal and formal requirements of the Title have been met[.]” Moreover, the Register’s decision is ultimately reviewable by the courts. (See 17 U.S.C. §§ 411(a), 410(c).) As such, there is no compelling justification for delaying litigation until the Register’s decision on an application has been made.
In sum, the Ninth Circuit concluded that the application approach better fulfills Congress’s purpose in enacting the various Copyright laws, and impliedly criticized the circuits which had adopted the registration approach as adhering to rigid and “needless formality” which leads to “inefficient” results. In contrast, the application approach “fully accomplishes the central purpose of registration—the compilation of a robust national register of existing copyrights—and at the same time avoids unfairness and waste of judicial resources.” It remains to be seen whether other Federal Circuit courts will fall in line with the Ninth Circuit’s approach, and whether the U.S. Supreme Court will consider the issue to resolve the split among the circuits.