South-Western Legal Studies in Business

Copyright Must Be Registered for Court to Have Jurisdiction in Infringement Suits
Description Appeals court affirmed that under the Copyright Act an infringement claim could be made only if the copyright has been registered. A copyright on an original product does not extend protection to derivative works; they must also be registered before an infringement suit may proceed.
Topic Intellectual Property
Key Words Copyright; Registration; Infringement; Derivative Works; Jurisdiction
C A S E   S U M M A R Y
Facts Well-Made Toy asserted that a 48” rag doll (Huggable Lovable) made by Goffa and sold at retail by King Kullen infringed on the copyright for two rag dolls designed and made by Well-Made. The Well-Made dolls, Sweetie Mine, are a 20” doll, which has a registered copyright, and a 48” doll that is a derivative of the smaller doll, but was not registered. The trial court held that Goffa’s rag doll was not substantially similar to Well-Made’s 20” doll and held that because the copyright in the larger doll had not been registered, the court lacked subject matter jurisdiction. Goffa appealed, contending that the copyright in the 20” doll creates subject matter jurisdiction over infringement claims with respect to the 48” derivative doll.

Affirmed. The copyright statute prohibits an “action for infringement of the copyright in any … work … until registration of the copyright claim has been made in accordance with this title.” The requirement that a copyright be registered before being sued upon is jurisdictional. Registration of the 20” doll did not create subject matter jurisdiction with respect to suit for infringement of the unregistered derivative doll. Furthermore, since the doll was found not to be substantially similar to the 20” doll, it would not infringe on the 48” doll in any case.

Citation Well-Made Toy Mfg. Corp. v. Goffa International Corp., 354 F.2d 112 (2nd Cir., 2003)

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