When Is A Copyright Registered?

June 6, 2010 Tuvyah (Terry) D. Aronoff

At what point in time is a copyright application considered to be “registered” so that the owner of the copyright can sue for damages under the U.S. Copyright Act of 1976?

Is it when the copyright holder’s application is received by the Copyright Office (the “application approach”)?

Or is it when the Copyright Office issues a certificate of registration (the “registration approach”)?

The Ninth Circuit Court of Appeals recently ruled in favor of the application approach in a case called Cosmetic Ideas, Inc. v. IAC/InteractiveCorp. See 2010 U.S. App. LEXIS 10555 (9th Cir. 2010).

In 1997, Cosmetic Ideas, Inc. (“Cosmetic”) created a costume jewelry necklace which was known as the “Lady Caroline Lorgnette” (“the necklace”).  Since 1999, Cosmetic has manufactured and sold copies of the necklace in stores and on the Internet.

Sometime between 2005 and 2008, IAC/InteractiveCorp, Home Shopping Network, Inc., HSN LP, and HSN General Partner LLC (collectively, “HSN”) began manufacturing and distributing copies of a necklace that Cosmetic believed to be “virtually identical.”

In March 2008, Cosmetic sued HSN in the Central District of California alleging that HSN infringed Cosmetic’s copyright in the necklace.

Several weeks before filing the suit, Cosmetic submitted an application to the Copyright Office to register its copyright in the necklace.

Although the Copyright Office received Cosmetic’s copyright application before the lawsuit was filed, Cosmetic did not yet have a certificate of registration for the necklace.

Not surprisingly, HSN moved to dismiss the complaint because Cosmetic did not have a valid copyright registration in the necklace at the time it filed the lawsuit.

The district court agreed with HSN, finding that Cosmetic failed to comply with Section 411(a) of the U.S. Copyright Act of 1976 (the “Copyright Act”) which requires registration before a copyright holder can bringing an infringement suit based on that law.  Accordingly, the district court dismissed the complaint.

Cosmetic appealed to the Ninth Circuit arguing that since it had submitted a completed application registration to the Copyright Office before suing HSN for infringement, it did comply with the Copyright Act.  In response, HSN argued that “registration occurs only after the Copyright Office has affirmatively granted a registration.”

Of course, by the time the case found its way up to the Ninth Circuit, the Copyright Office had already issued Cosmetic a registration certificate for the necklace.  This meant, of course, that Cosmetic could pursue its claim without having to defend the timing of its filing. Nevertheless, noting that the issue of when a copyright is “registered” was unsettled in the Ninth Circuit (and the fact that its sister circuits were split on this question), the Court gave its ruling.

In resolving this question, the Court first looked to the plain language of the Copyright Act of 1976 which states, in relevant part:  “[N]o civil action for infringement of the copyright in any United States work shall be instituted until pre-registration or registration of the copyright claim has been made in accordance with this title.” The Court concluded that the language of the Act is ambiguous and that it would be necessary to “go beyond the Act’s plain language to determine which approach better carries out the purpose of the statute.”

After briefly discussing the history of Section 411, the Ninth Circuit explained that many of the formalities that existed under the Copyright Act of 1909 were eliminated with the Copyright Act of 1976.  For instance, under the 1909 Act, federal copyright protection “attached only upon publication and even then, only if proper notice, registration, and deposit occurred.”  However, under the 1976 Act, a unitary system was established whereby “federal copyright protection.

Tuvyah heads the Commercial practice at SWA, focusing on mergers and acquisitions, general commercial and entertainment law.

Tuvyah can be reached at 646 328 0781 or taronoff@swalegal.com

This SWA publication is intended for informational purposes and should not be regarded as legal advice. For more information about the issues included in this publication, please contact Tuvyah (Terry) D. Aronoff. The invitation to contact is not to be construed as a solicitation for legal work. Any new attorney/client relationship will be confirmed in writing.