Ninth Circuit Report

• Jurisdiction: United States,Federal
• Citation: Vol. 44 No. 2
• Publication year: 2019
• Author: Anne-Marie Dao
• topic: Trademark,Copyright law

Ninth Circuit Report

Anne-Marie Dao
Mintz Levin

Hello Ninth Circuit column readers! I hope you are enjoying a fabulous summer thus far. This issue's Report brings resolution of a circuit split from the United States Supreme Court about copyrights, and discusses trademarks, and hamburgers.

COPYRIGHTS NEED TO BE REGISTERED BEFORE INFRINGEMENT SUITS CAN BE FILED

On March 5, 2019, the U.S. Supreme Court held that bringing a suit for copyright infringement requires the infringed work to actually be registered with the U.S. Copyright Office ("Copyright Office"). Specifically, having a pending application for registration with the Copyright Office will not suice.

This is because "17 U. S. C. § 411(a) states that 'no civil 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.'"¹ The question presented for the U.S. Supreme Court was: whether registration, in accordance with the Copyright Act, is made when the application for registration is delivered, or, is the Copyright Act satisfied only after the copyright is registered?² The U.S. Supreme Court held that "... registration occurs, and a copyright claimant may commence an infringement suit, when the Copyright Office registers a copyright. Upon registration of the copyright, however, a copyright owner can recover for infringement that occurred both before and after registration."³

This clear opinion resolves a circuit split...