Cosmetic Ideas, Inc. v. IAC/INTERACTIVECORP
94 U.S.P.Q. 2d (BNA) 1735, 606 F.3d 612, 2010 U.S. App. LEXIS 10555 (2010)
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Rule of Law:
The copyright registration requirement for filing an infringement suit under 17 U.S.C. § 411(a) is satisfied when the Copyright Office receives a complete application, deposit, and fee. The copyright holder does not need to wait for the Office to act upon the application and issue a registration certificate before filing suit.
Facts:
- In 1997, Cosmetic Ideas, Inc. ('Cosmetic') created a piece of costume jewelry known as the 'Lady Caroline Lorgnette' necklace.
- Cosmetic began manufacturing and selling the necklace in 1999.
- Sometime between 2005 and 2008, HSN began manufacturing and distributing a necklace that Cosmetic claimed was 'virtually identical' to its own.
- On March 6, 2008, Cosmetic submitted an application to the U.S. Copyright Office to register its copyright in the necklace design.
- The Copyright Office confirmed receipt of Cosmetic's complete application on March 12, 2008.
Procedural Posture:
- On March 27, 2008, Cosmetic filed a copyright infringement complaint against HSN in the U.S. District Court for the Central District of California (a federal trial court).
- HSN filed a motion to dismiss, arguing the court lacked subject-matter jurisdiction because Cosmetic had not obtained a registration certificate before filing suit.
- The district court granted HSN's motion to dismiss for lack of subject-matter jurisdiction.
- Cosmetic, as the appellant, appealed the dismissal to the U.S. Court of Appeals for the Ninth Circuit, with HSN as the appellee.
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Issue:
Does the submission of a completed copyright application to the Copyright Office satisfy the registration prerequisite for filing an infringement lawsuit under 17 U.S.C. § 411(a), even if the Copyright Office has not yet acted on the application?
Opinions:
Majority - Trager, District Judge
Yes. Receipt by the Copyright Office of a complete application satisfies the registration requirement of § 411(a). The court reasoned that while the text of the Copyright Act is ambiguous on this point, the purpose and history of the 1976 Act support the 'application approach.' Congress intended to eliminate 'needless formalities' and provide broad copyright protection. Requiring a copyright holder to wait for the Copyright Office to act—a process that can be lengthy—creates a 'period of legal limbo' that allows infringement to continue and could even cause a claim to be barred by the statute of limitations. Because a claimant can sue whether the application is ultimately approved or rejected, waiting for the Register to act serves no substantive purpose and only creates inefficient delay. The court concluded that the application approach best effectuates legislative intent, promotes judicial economy, and avoids unjust results, while still fulfilling the statutory goal of encouraging submissions to the national copyright register.
Analysis:
This decision resolves a significant circuit split by adopting the 'application approach' for the Ninth Circuit, aligning it with the Fifth and Seventh Circuits. The ruling streamlines copyright litigation by allowing creators to seek immediate judicial relief against infringers upon filing for registration, rather than waiting months for administrative processing. This prevents infringers from exploiting delays at the Copyright Office and reduces the risk of claims expiring under the statute of limitations. The decision reinforces a judicial preference for substance over 'needless formality,' prioritizing prompt access to courts for copyright holders and promoting judicial efficiency.
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