In the Ninth Circuit, Plaintiffs Need Only Apply
Court Adopts “Application Approach” to Registration as a Precondition to Filing Suit

The Ninth Circuit has chosen sides in the debate over what constitutes “registration” sufficient to file suit, adopting what has come to be referred to as the “application approach.”  Cosmetic Ideas, Inc. v. IAC/InteractiveCorp, __ F.3d __ (9th Cir. 2010)Section 411(a) of the Copyright Act provides that “no action for infringement of the copyright in any United States work shall be instituted until registration of the copyright claim has been made in accordance with this title.”  In order to register a copyright, the claimant must file with the Copyright Office (1) an application, (2) a deposit copy of the work being registered, and (3) a filing fee.  If, upon examination, the Copyright Office determines that the material deposited is copyrightable and that the other requirements of the statute have been met, then it registers the claim and issues a certificate of registration.  The Copyright Act gives no guidance, however, as to whether “registration” for purposes of filing suit occurs upon submission of the application, deposit copy and filing fee (the “application approach”), or whether it occurs after the Copyright Office determines that the material deposited is copyrightable and “registers” the copyright (the “registration approach”).  Courts have split on the question. Compare, e.g., La Resolana Architects v. Clay Realtors Angel Fire, 416 F.3d 1195 (10th Cir. 2005) (collecting cases and adopting registration approach) with In re Napster, Inc., 191 F. Supp. 2d 1087 (N.D. Cal. 2002) (application approach).

The court started its search for an answer in the plain language of the Copyright Act.  Sections 408 through 412 each addresses some aspect of registration.  Portions of sections 410 and 411 suggest that registration requires the Copyright Office to take affirmative steps after the filing of the application, deposit copy and fee, indicating that the registration approach is the correct one.  But the court found that other sections lead to the opposite conclusion.  Section 408, for example, states that a copyright owner “may obtain registration . . . by delivering to the Copyright Office” the application, deposit copy and fee.  Moreover, § 410(d) provides that the effective date of registration is the date the application, deposit copy and fee are received by the Copyright Office – not when the Copyright Office takes action to register or deny the claim.

Because the court found the plain language of the Act conflicting, it turned to the purpose of the statute and its underlying policies.  Though the 1976 Act made registration optional, Congress valued having a robust registry of existing copyrights.  Accordingly, it built various incentives into the Act to encourage copyright owners to register and deposit copies of their works.  For example, in order to be eligible to recover statutory damages and attorney’s fees in the event of infringement, the copyright owner must have registered the work before the infringement began.  The registration certificate is prima facie evidence of the validity of the copyright and the facts stated in the form when the work is registered before, or within five years of, publication of the work.  Perhaps most importantly, registration is a prerequisite to bringing a lawsuit for copyright infringement.

In view of these incentives, the court found that the “application approach better fulfills Congress’s purpose of providing broad copyright protection while maintaining a robust federal register.”  The application approach avoids “unnecessary delay” in litigation by allowing a plaintiff to sue immediately after filing the application for registration, rather than waiting for the Register to take action, during which time the infringer could continue to profit from its wrongful conduct.  Moreover, a plaintiff could lose its rights due to the statute of limitations while waiting for registration to issue.  Given that § 411(a) allows a plaintiff to litigate its claim even if the Copyright Office rejects registration, the court found it made little sense to put potential plaintiffs in such a state of “legal limbo.”

With the Ninth Circuit now having signed on to the “application approach,” the tally of circuits which have weighed in on the issue stands as follows:

Application approach: Fifth, Seventh and Ninth Circuits

Registration approach: Tenth and Eleventh Circuits

District courts in circuits which have not yet ruled on the issue remain all over the map – sometimes even within the same district.

Practice tip

Before filing suit, it pays to know whether your circuit has weighed in on this issue, and if so, whether it adopted the application or registration approach. If you find yourself in a “registration” jurisdiction and are eager to file suit on an unregistered copyright, consider taking advantage of the “special handling” registration process, which provides for expedited registration of the claim upon payment of a premium filing fee (currently, $760 instead of the $35 charged for normal handling of electronically filed claims). Particulars of this process can be found in Copyright Office Circular 10.

Stop! In the Name of Copyright – Interim Copyright Office Regulation Exempts Mandatory Deposit of Online Works

Effective February 24, 2010, electronic works published in the United States only in online, and not physical, form will be exempt from mandatory deposit unless the Copyright Office makes a demand for deposit of such works. The interim regulation will identify categories of online works subject to demand, the first of which will be electronic serials. The regulation will also establish procedures for issuing and responding to a deposit demand; redefine the term “complete copy” as applied to deposit of online-only works; and establish criteria for determining the “best edition” of online works to be deposited. The Copyright Office will seek comments on the implementation of the regulation later in 2010. A more detailed discussion of the contents of and rationale behind the interim regulation can be found at 75 Fed. Reg. 3863.

It is important to remember that mandatory deposit is distinct from the deposit requirement associated with registration. Copies deposited with an application for registration serve to identify the work. The purpose of mandatory deposit, on the other hand, is to provide the Library of Congress with an archival copy of all works published in the United States. Although copyright registration is optional, all copyrightable works that are published in the United States (with limited exceptions) are subject to mandatory deposit.

Within three months of publication, two copies of the “best edition” of every copyrightable work must be deposited with the Copyright Office. No application for registration need accompany the mandatory deposit; however, a deposit made in connection with registration will satisfy the mandatory deposit requirement.

At any time after a work is published, the Register of Copyrights may demand the required deposit copy. If the required deposit is not made within three months of this demand, the person or entity obligated to make the deposit may be liable for a fine, plus the retail price of the copies. Copyright Office Circular 7d discusses the requirements of mandatory deposit in more detail.