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Brian R. Tinkham: Things you should know about copyright infringement

It's the Law

Posted: June 18, 2010 4:55 a.m.
Updated: June 17, 2010 2:49 p.m.

Under federal law, a properly filed copyright registration with the Copyright Office is a prerequisite for filing a lawsuit against an alleged copyright infringer. However, for years there has been a dispute among judges within the Central District of California, regarding when a party can bring a copyright infringement action: Whether it was after filing the document with the Copyright Office, or after the Copyright Office issues a certificate of registration, which can take up to a year from filing.

One of the problems for the copyright holder was during that year, an infringer could continue to profit from their wrongful acts. Furthermore, being forced to wait for the registration certificate before filing a lawsuit could bar the suit altogether under the applicable statute of limitations.

In Cosmetic Ideas, Inc. v. IAC/Interactive Corporation, the Ninth Circuit Court cleared up this dispute by holding that a copyright is registered when a complete application is submitted to the Copyright Office.

In 1997, Cosmetic Ideas created a piece of costume jewelry known as "Lady Caroline Lorgnette." In 1999, Cosmetic began manufacturing and selling copies of the necklace, and continues to manufacture and sell copies of this necklace through various stores and websites. Sometime between 2005 and 2008, Cosmetic claimed that the Home Shopping Network began to manufacture and distribute copies of a "virtually identical" necklace without obtaining a license from Cosmetic to use the design.

In March 2008, Cosmetic sued HSN, alleging that HSN had infringed on Cosmetic's copyright on the necklace. In preparation for the lawsuit, Cosmetic filed a copyright application for the design of its necklace. Six days after submission, Cosmetic was notified by the Copyright Office confirming receipt of the application. Fifteen days later, but before the Copyright Office could issue a certificate of registration, Cosmetic filed a complaint in the U.S. District Court alleging copyright infringement. Home Shopping Network filed a motion to dismiss based on lack of subject-matter jurisdiction and on failure to state a claim, on the theory that Cosmetic failed to obtain the certificate of registration from the Copyright Office prior to filing suit. The District Court granted HSN's motion.

The Ninth Circuit Appellate Court reversed the District Court's decision. In making its ruling, the Ninth Circuit found ambiguity in the Copyright Act regarding when a copyright is registered, and thus had to interpret Congress' original intent in drafting the statute.

In 1976, Congress revised the Copyright Act so that federal copyright protection "applied to all works ... at the time of their creation." Congress also eliminated some of the prior formalities of copyright law by relaxing the notice requirements and eliminating mandatory registration. This revision made copyright registration optional, but gave incentives for registration such as on-its-face validity of the copyright if registered within five years after first publication, additional remedies such as statutory damages and attorney's fees and requiring copyright registration in order to file an infringement action.

Indeed, the court noted that "because registration is not mandatory under the Act, copyright holders frequently register specifically for the purpose of bringing suit." Based on these findings, the Ninth Circuit held that Congress' intent was better served by holding that the receipt by the Copyright Office of a complete application satisfies the copyright registration requirement.

However, it needs to be noted that the 10th and 11th Circuit Appellate Courts have ruled differently, stating that registration does not occur until the certificate of registration is issued by the Copyright Office. Thus, this issue is ripe for U.S. Supreme Court review. As this is a constantly changing area of law, it is important to contact your local intellectual property lawyer for more information.

Brian R. Tinkham is an associate at Poole & Shaffery, LLP. He can be reached at His column reflects his own views and not necessarily those of The Signal. "It's The Law" appears Fridays and rotates between members of the Santa Clarita Valley Bar Association. Nothing contained herein shall be or is intended to be construed as providing legal advice.


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