Ninth Circuit Adopts "Application Approach" - Rules Registration Not Required Before Commencing Copyright Infringement Action

With limited exceptions, the U.S. Copyright Act prohibits filing a copyright infringement lawsuit without first obtaining a copyright registration. The statute's registration requirement has led courts to differ as to whether to require the plaintiff seeking to commence an action against an alleged infringer to await action by the Copyright Action after filing an application, and thereby potentially delay the enforcement of the copyright holder's rights.

There is a split of jurisdictions. The Fifth and Seventh Circuits have adopted an "application approach" -- holding that a lawsuit may be commenced as long as an application for registration has been filed, even if the registration has not yet been granted. The Tenth and Eleventh Circuits have applied a "registration approach" -- which requires the party desiring to file a lawsuit to await the Copyright Office’s affirmative acceptance or rejection of the application. On May 25, the Ninth Circuit weighed in and formally adopted the "application approach."

In addition to setting forth the registration requirement, section 411 of the Copyright Act (17 U.S.C. § 411) includes a provision that allows the case to be filed if the application is ultimately rejected. Thus, the court agreed with the leading copyright treatise that "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.'" (Quoting 2 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 7.16[B][1][a][i] (2008).

The court found that 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 of the necessary steps to register the copyright at issue.

There are competing and compelling arguments for both approaches, including the fact that the Copyright Act includes incentives that are intended to encourage early registration. With three Circuits adopting the "application approach" and two circuits applying the "registration approach," it seems inevitable that the issue will be headed for the Supreme Court. Watch this space for further developments.

The Ninth Circuit's decision in Cosmetic Ideas, Inc. v. IAC/Interactivecorp, et al. is available here.