Cosmetic Ideas Inc v. Iac/interactivecorp.

606 F.3d 612

COSMETIC IDEAS, INC., a California corporation, doing business as Sweet Romance Jewelry Manufacturing, Plaintiff-Appellant,v.IAC/INTERACTIVECORP, a Delaware corporation; Home Shopping Network, Inc., a Delaware corporation; HSN LP, a Delaware limited partnership; HSN General Partner LLC, a Delaware limited liability company, Defendants-Appellees.

No. 08-56079.

United States Court of Appeals Ninth Circuit.

Argued and Submitted Oct. 6, 2009.

Withdrawn Oct. 19, 2009.

Resubmitted April 27, 2010.

Filed May 25, 2010.

Evan S. Cohen and S. Martin Keleti, Los Angeles, CA, for plaintiff-appellant Cosmetic Ideas, Inc.

Edward T. Colbert, William H. Merone, and Erik C. Kane, Washington, DC, and Vicki E. Land, Los Angeles, CA, for defendants-appellees HSN LP, IAC/InterActiveCorp, Home Shopping Network, Inc. and HSN General Partner LLC.

Appeal from the United States District Court for the Central District of California, Manuel Real, District Judge, Presiding. D.C. No. DV-08-2074 (R)(RZx).

Before: ANDREW J. KLEINFELD and RICHARD C. TALLMAN, Circuit Judges, and DAVID G. TRAGER,^* District Judge.

TRAGER, District Judge:

Plaintiff-Appellant Cosmetic Ideas, Inc. (“Cosmetic”) appeals the decision of the United States District Court for the Central District of California (“district court”) dismissing its claims against Defendants-Appellees IAC/InteractiveCorp, Home Shopping Network, Inc., HSN LP, and HSN General Partner LLC (collectively, “HSN”) for lack of subject-matter jurisdiction. The district court determined that Cosmetic failed to comply with the registration requirement of 17 U.S.C. § 411(a), which makes registration of a copyright a prerequisite to bringing an infringement suit, then concluded that lack of registration deprived it of jurisdiction. Cosmetic contends that it complied with § 411(a), because it submitted a completed registration application to the Copyright Office before instituting its infringement action. HSN argues that registration occurs only after the Copyright Office has affirmatively granted a registration.

Background

(1)

In 1997, Cosmetic, doing business as Sweet Romance Jewelry Manufacturing, created a piece of costume jewelry known as the “Lady Caroline Lorgnette” (“the necklace”). Cosmetic began manufacturing and selling copies of the necklace in 1999, and continues to manufacture and sell copies through various stores and websites. Cosmetic claims that sometime between 2005 and 2008, HSN began manufacturing and distributing copies of a “virtually identical” necklace.

On March 6, 2008, Cosmetic submitted an application to the Copyright Office for registration of its copyright in the necklace, and received confirmation of receipt of the application on March 12, 2008. On March 27, 2008, Cosmetic filed a complaint alleging that HSN had infringed on Cosmetic's copyright in the necklace. Although the Copyright Office ultimately issued Cosmetic a registration certificate for its copyright in the necklace, it did not do so before Cosmetic filed its complaint.¹

On June 2, 2008, HSN filed a motion to dismiss for failure to state a claim and lack of subject-matter jurisdiction. HSN argued that Cosmetic did not possess a valid copyright registration when it commenced its action, and thus the court lacked subject-matter jurisdiction over the claim of copyright infringement. On June 17, 2008, the district court granted the motion to dismiss on the basis that it lacked subject-matter jurisdiction. Cosmetic timely appealed.

We have jurisdiction pursuant to 28 U.S.C. § 1291, and we reverse.

(2)

The district court's dismissal for lack of subject-matter jurisdiction is reviewed de novo. Rattlesnake Coal v. U.S. EPA, 509 F.3d 1095, 1100 (9th Cir.2007). In this case, the district court's decision to dismiss was necessarily-though without discussion-based on its interpretation of the Copyright Act, 17 U.S.C. § 101 et seq. (2006). Questions of statutory interpretation are reviewed de novo. Mollison v. United States, 568 F.3d 1073, 1075 (9th Cir.2009).

Discussion

(1)

We first address HSN's argument that § 411(a)'s registration requirement-which mandates that a copyrighted work be registered before an infringement action can be brought-is a jurisdictional prerequisite to suit. In Reed Elsevier, Inc. v. Muchnick, --- U.S. ----, 130 S.Ct. 1237, 176 L.Ed.2d 17 (2010), the Supreme Court held otherwise.² Specifically, Reed Elsevier held that, although “[s]ection 411(a)'s registration requirement is a pre-condition to filing a claim,” it “does not restrict a federal court's subject-matter jurisdiction.” 130 S.Ct. at 1241. Therefore, the district court's dismissal of Cosmetic's complaint on the basis of lack of subject-matter jurisdiction-which must have been predicated on a conclusion that Cosmetic had not registered its copyright-was error.

(2)

However, this conclusion does not end our inquiry, as the district court still may have correctly dismissed the suit on another basis. This court “may affirm the district court on any ground supported by the record, even if the ground is not relied on by the district court.” Charley's Taxi Radio Dispatch Corp. v. SIDA of Hawaii, Inc., 810 F.2d 869, 874 (9th Cir.1987). Below, HSN moved to dismiss the complaint for failure to state a claim, pursuant to Federal Rule of Civil Procedure 12(b)(6). Specifically, HSN argued that Cosmetic failed to register the necklace, and post- Reed Elsevier, registration is an element of an infringement claim, rather than a jurisdictional bar.

Thus, we are asked to answer the question: What does it mean to “register” a copyrighted work? Stated another way, is a copyright registered at the time the copyright holder's application is received by the Copyright Office (the “application approach”), or at the time that the Office acts on the application and issues a certificate of registration (the “registration approach”)? ³ Our sister circuits have split in answering this question.⁴ For instance the Fifth and Seventh Circuits have adopted the application approach. Apple Barrel Prods., Inc. v. Beard, 730 F.2d 384, 386-87 (5th Cir.1984); Chicago Bd. of Educ. v. Substance, Inc., 354 F.3d 624, 631 (7th Cir.2003). The Tenth and Eleventh Circuits have adopted the registration approach. La Resolana, 416 F.3d at 1202-04; M.G.B. Homes, Inc. v. Ameron Homes, Inc., 903 F.2d 1486, 1489 (11th Cir.1990) abrogated in part by Reed Elsevier, 130 S.Ct. at 1243 & n. 2.

We now turn to this issue.⁵

A

We first note that, according to the representations of Cosmetic at oral argument and in subsequent briefing, the Copyright Office has now acted on Cosmetic's application and issued a certificate of registration of copyright in the necklace. Once a certificate is issued, the registration dates back to the date of application. 17 U.S.C. § 410(d). Thus, Cosmetic can now allege the registration element of an infringement claim, irrespective of whether registration accrues at application or issuance. Nonetheless, we address the issue of the point at which a work is registered because it is an unsettled issue of law in this Circuit, and because it is an issue “capable of repetition yet evading review” if the Copyright Office acts on the application during litigation. See Gerstein v. Pugh, 420 U.S. 103, 110 n. 11, 95 S.Ct. 854, 43 L.Ed.2d 54 (1975) (citing Sosna v. Iowa, 419 U.S. 393, 402 n. 11, 95 S.Ct. 553, 42 L.Ed.2d 532 (1975)); United States v. Brandau, 578 F.3d 1064, 1067 (9th Cir.2009).

B

In interpreting a statutory provision, we begin with the plain language of the statute. See K & N Eng'g, Inc. v. Bulat, 510 F.3d 1079, 1081 (9th Cir.2007). Section 411(a) of the Copyright Act of 1976 (the “Act” or “1976 Act”) provides, in relevant part: “[N]o civil action for infringement of the copyright in any United States work shall be instituted until pre-registration or registration of the copyright claim has been made in accordance with this title.” ⁶ 17 U.S.C. § 411(a). “Registration” is unhelpfully defined as “a registration of a claim in the original or the renewed and extended term of copyright.” 17 U.S.C. § 101.

Because the clause at issue gives no guidance in interpreting the meaning of “registration,” we turn to the language of the statute as a whole to determine the intended meaning. See United States v. Cruz-Gramajo, 570 F.3d 1162, 1167 (9th Cir.2009) (“While the starting point is always the language of the statute itself ... [r]ather than focusing just on the word or phrase at issue, this court looks to the entire statute to determine ... intent.” (internal quotation marks and citations omitted)). An examination of the statutory language here, however, reveals ambiguity that leaves us no closer to determining which interpretation to adopt.

Looking to the Act as a whole, copyright registration is addressed in five consecutive sections: §§ 408 through 412. Two subsections of the Act, § 410(a) and portions of § 411(a), contain language that suggests that registration requires some affirmative steps to be taken by the Copyright Office. Section 410(a) details the role of the Register of Copyrights (“the Register”):

When, after examination, the Register of Copyrights determines that, in accordance with the provisions of this title, the material deposited constitutes copyrightable subject matter and that the other legal and formal requirements of this title have been met, the Register shall register the claim and issue to the applicant a certificate of registration under the seal of the Copyright Office.

17 U.S.C. § 410(a) (emphasis added). This provision places an active burden of examination and registration upon the Register, suggesting that registration is not accomplished by application alone. See, e.g.,

Loree Rodkin, 315 F.Supp.2d at 1055 (reading the provision in this way). But see

Iconbazaar, 308 F.Supp.2d at 634 (pointing out that this section “could be read to apply only to the requirements for issuance of a registration certificate, not to the requirements for...