INFRINGING ON A SONG, PICTURE OR OTHER ARTWORK WITHOUT A REGISTERED COPYRIGHT: Another Circuit Follows The Fifth Circuit Approach To Allow Filing A Lawsuit Under The Copyright Act Without A Certificate of Registration

By Shain A. Khoshbin – – June 9, 2010

An artist has filed the proper paperwork to obtain a U.S. copyright on her song, picture or other piece of artwork. However, she has not yet received a certificate of registration from the United States Copyright Office. Can she sue to recover statutory damages for copyright infringement under the United States Copyright Act of 1976, even though she has not received a certificate of registration?

The answer, as with many legal questions, is that it depends.

This article discusses Section 411(a) of the Copyright Act, the Fifth Circuit’s adoption of the “application approach” with regard to pursuing a copyright infringement case under the Copyright Act without having a certificate of registration, and the Ninth Circuit’s recent adoption of the “application approach” in Cosmetic Ideas, Inc. v. IAC/InteractiveCorp, 2010 U.S. App. LEXIS 10555 (9th Cir. Cal. May 25, 2010).


Section 411(a) of the Copyright Act provides, in relevant part, 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.” Moreover, the work’s owner generally cannot recover statutory damages (which can be substantial) and attorneys’ fees under the Copyright Act before registration. 17 U.S.C. §§ 411, 412, 501 and 504.

To register, the owner must file an application and deposit a copy of the work with the Copyright Office, and pay necessary fees. Then, the Copyright Office decides whether the deposited work is copyrightable, and whether the other requirements of the statute have been met. After making its decision, the Copyright Office registers or refuses to register the deposited work. If it decides to register the work, the Copyright Office issues a certificate of registration.


Federal circuit and district courts across the country have differed on what exactly “registration” means as it concerns Section 411(a) of the Copyright Act. See, e.g., Cosmetic Ideas, Inc. v. IAC/InteractiveCorp, 2010 U.S. App. LEXIS 10555 at * 5-8 (9th Cir. Cal. May 25, 2010) (discussing different circuit and district court opinions).

The Fifth Circuit has followed the “application approach.” This approach essentially deems that registration has occurred when the owner of a work properly has submitted all registration materials to the Copyright Office. See, e.g., Positive Black Talk Inc. v. Cash Money Records Inc., 394 F.3d 357, 365 (5th Cir. 2004); Lakedreams v. Taylor, 932 F.2d 1103, 1108 (5th Cir. 1991); Apple Barrel Products Inc. v. Beard, 730 F.2d 384, 386-87 (5th Cir. 1984); Microcheck Sys., Inc. v. Nunez, 2010 U.S. Dist. LEXIS 16483 at * 2-3 (S.D. Tex. Feb. 24, 2010).

This approach found some tangential support in the U.S. Supreme Court’s recent opinion, Reed Elsevier v. Muchnick, 130 S. Ct. 1237, 176 L. Ed. 2d 18 (2010). In Reed Elsevier, the Supreme Court held that the registration requirement in Section 411(a) is not a jurisdictional requirement. Rather, it “is a precondition to filing a claim that does not restrict a federal court’s subject-matter jurisdiction.” Id. at 1241, 1245-47. Thus, the Supreme Court reversed the Second Circuit’s sua sponte conclusion that the trial court lacked subject-matter jurisdiction to certify a class or approve the settlement of infringement claims involving unregistered copyrights. Id. at 1248. However, among other things, that does not necessarily mean a court cannot dismiss a copyright infringement claim due to failure to state a claim because registration is an element of an infringement claim (as opposed to a jurisdictional requirement).

At this time, it appears that certain circuits and district courts may still follow the “registration approach.” This approach essentially deems registration has occurred only after the Copyright Office actually approves or rejects an application. See, e.g., Nourison Indus. v. Virtual Studios, Inc., 2010 U.S. Dist. LEXIS 55545 at *8-9 (D.N.J. June 3, 2010) (“The Third Circuit has not addressed the issue, but every court of appeals (except the Fifth Circuit) has held that ‘actual registration, not mere application,’ is required to satisfy the registration requirements of the Copyright Act. 5 Patry on Copyright § 17:78 (March 2010). There is an apparent split amongst district courts in this Circuit between courts following the prevailing view and those following Fifth Circuit law. Compare Riordan v. H.J. Heinz Co., Civil Action No. 08-1122, 2009 U.S. Dist. LEXIS 114165, 2009 WL 4782155, at *9 (W.D. Pa. Dec. 8, 2009) (relying on prevailing case law) with Wilson v. Mr. Tee’s, 855 F. Supp. 679, 682-83 (D.N.J. 1994) (relying on Fifth Circuit case law).”); see also Cosmetic Ideas, 2010 U.S. App. LEXIS 10555 at *2 (opining that the Tenth and Eleventh Circuits have adopted the registration approach).


The Ninth Circuit recently had an opportunity to discuss in detail the split amongst federal courts across the nation on this issue in Cosmetic Ideas Inc. v. IAC/InteractiveCorp, 2010 U.S. App. LEXIS 105552010 (9th Cir. May 25, 2010). The case concerned a copyright infringement lawsuit brought by a jewelry company concerning one of its necklaces. After a heavily cited discussion of copyright law and policy rationales, the Ninth Circuit adopted the “application approach.”

In Cosmetic, Cosmetic Ideas, Inc. manufactured and sold costume jewelry, including a necklace known as the “Lady Caroline Lorgnette.” IAC/InteractiveCorp, Home Shopping Network, Inc., HSN LP, and HSN General Partner LLC allegedly began manufacturing and distributing copies of a necklace that was “virtually identical” to that particular necklace. Cosmetic sued these other companies for infringing upon its copyright in the necklace. Id. at * 2-3.

A few weeks before filing the lawsuit, Cosmetic submitted an application to the Copyright Office to register the necklace. Cosmetic did not yet have a certificate of registration for the necklace when it filed suit. The defendants moved to dismiss Cosmetic’s complaint because it did not have a valid copyright registration for the necklace when it filed the lawsuit. Id. at * 3.

The district court dismissed Cosmetic’s complaint because it failed to comply with Section 411(a) of the Copyright Act. Cosmetic appealed. Essentially positing the “application approach,” Cosmetic argued it complied with the Copyright Act because it had filed a proper application with the Copyright Office before suing the defendants for infringement. Id. at *3-5.


The Ninth Circuit reversed the district court’s opinion. In so doing, it adopted the “application approach” and reasoned in part as follows (the opinion warrants a lengthy quote):

With this framework in mind, we conclude that the application approach better fulfills Congress’s purpose of providing broad copyright protection while maintaining a robust federal register.

First, the application approach avoids unnecessary delay in copyright infringement litigation, which could permit an infringing party to continue to profit from its wrongful acts. Section 411(a) allows a party, after applying for registration, to litigate the claim whether the Copyright Office accepts or rejects the registration. See 17 U.S.C. § 411(a) (permitting an applicant to bring an infringement suit after the Register has rejected his or her registration, so long as the Register is notified of the suit); see also Forasté, 248 F. Supp. 2d at 77 n.10; Prunté, 484 F. Supp. 2d at 40. Under the registration approach, however, a party must wait on the Copyright Office’s affirmative acceptance or rejection, despite knowing that suit can proceed in either event. As the leading treatise on copyright explains, the registration approach thus creates a strange scheme: “[G]iven that the claimant . . . will ultimately be allowed to proceed regardless of how the Copyright Office treats the application, it makes little sense to create a period of ‘legal limbo’ in which suit is barred.” See 2 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 7.16[B][1][a][i] (2008) (“Nimmer“). The 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….

Furthermore, in addition to being generally inefficient, in the worst-case scenario the registration approach could cause a party to lose its ability to sue. The Act provides a three-year statute of limitations for copyright infringement actions. 17 U.S.C. § 507(b). Thus, under the registration approach, a plaintiff who applied for registration towards the end of the three-year period could see the statute of limitations expire during the time it took the Copyright Office to act on the application. See Nimmer § 7.16[B][1][a][i] (“[G]iven. . . a three-year statute of limitations for recovery of all damages caused by copyright infringement, the narrow [registration] approach may indeed occasion complete inability to recover damages . . . .”). This result does not square well with § 410(d)’s mandate that an application’s effective registration date should be the day that a completed application is received….

Id. at *19-20, 22-23.

Thus, the Ninth Circuit held that “receipt by the Copyright Office of a complete application satisfies the registration requirement of § 411(a)…. Under the application approach, Cosmetic satisfied § 411(a)’s registration requirement before it instituted this action. Cosmetic alleged in its complaint that the Copyright Office received its complete application on March 12, 2008, weeks before Cosmetic filed its complaint. Thus, § 411(a) does not bar Cosmetic’s infringement claim, which should proceed on its merits.” Id. at * 25-26.


At some point, the U.S. Supreme Court or Congress may directly resolve the split amongst the courts and the circuits on the meaning of “registration” as it concerns Section 411(a) of the Copyright Act. In the meantime, whether a defendant or plaintiff in a U.S. copyright infringement dispute, it would be wise to initially take note of the case’s jurisdiction and controlling precedent. It may affect the viability of many important rights and remedies under the Copyright Act.

If you would like a copy of any of the legal opinions discussed in this article, or to discuss the issues raised in further detail, please do not hesitate to call one of the attorneys at Clouse Dunn Khoshbin LLP.

Shain A. Khoshbin


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