Factual Decisions Required Before Querying Register of Copyrights

Palmer/Kane LLC sued Gareth Stevens Publishing (Stevens) for infringing the copyrights on a number of photograph copyrights owned by Palmer/Kane. After substantially completing discovery, Stevens informed the district court that it intended to contest the validity of the copyright registration certificate for four photos. Stevens asked the district court to request the advice of the Register of Copyrights on whether it would have refused to register the copyrights due to inaccurate registration.

The district court denied Stevens’ request. On a motion for reconsideration, the district court again denied Stevens’ request. The district court ruled that it could not decide from the facts before it the question of whether Palmer/Kane knowingly provided inaccurate information to the Copyright Office in the registration application.

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Known Copyright Registration Inaccuracies Can Hurt Later

I’m going to ignore blog post best practices and start out with a statute:

(b)

(1) A certificate of registration satisfies the requirements of this section and section 412, regardless of whether the certificate contains any inaccurate information, unless—

(A) the inaccurate information was included on the application for copyright registration with knowledge that it was inaccurate; and

(B) the inaccuracy of the information, if known, would have caused the Register of Copyrights to refuse registration.

(2) In any case in which inaccurate information described under paragraph (1) is alleged, the court shall request the Register of Copyrights to advise the court whether the inaccurate information, if known, would have caused the Register of Copyrights to refuse registration.

17 U.S.C. §412(b).

Palmer/Kane sued Rosen Book Works for copyright infringement.  The district court granted Rosen’s motion for the district court to request the Copyright Office to advise the court on whether the Copyright Office would have refused registration if it knew that certain information included in the registration application was inaccurate.  Rosen argued that Palmer/Kane’s predecessor knowingly misrepresented to the Copyright Office that the photographs it applied to register as an unpublished collection had not been previously published.

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District Court Sometimes Required to Consult With Register of Copyrights

Mark Swift entered into a partnership with Michael Schaltenbrand and Joey Siddle.  They agreed that Medicate Pharmacy, a retail pharmacy owned by Schaltenbrand, would provide mail-order services to customers found by DeliverMed, a marketing firm owned by Swift.  The parties agreed to use the DeliverMed name to identify the services the partnership provided to customers.  Swift hired Deeter Associates to design a logo for the partnership to use in marketing its services.  Allan Kovin orally agreed with Linda Deeter, Deeter Associates’ Executive V.P., to perform the logo work as an independent contractor.  Kovin created a graphic design of a house and pestle and was the sole creator.

A dispute erupted among the partnership members.  Swift sued Schaltenbrand, Siddle and Medicate for federal and state law claims.  DeliverMed, Deeter Associates and Linda Deeter also sued the defendants, alleging trademark infringement claims for the defendants’ use of the logo.  Deeter Associates and Linda Deeter agreed to file the suit in exchange for a cash payment and expenses reimbursement from Swift.  DeliverMed applied to register a copyright for the logo.  DeliverMed represented to the Copyright Office that Linda Deeter was the author of the logo and that she transferred her copyright to DeliverMed by written agreement.  One week later, Deeter actually did sign a transfer of ownership agreement.  DeliverMed, Deeter Associates and Linda Deeter then amended their complaint to include a copyright infringement claim.  The district court ruled in the defendants’ favor on the copyright infringement claim and invalidated the copyright registration.  The Seventh Circuit Court of Appeals affirmed the district court’s ruling on the infringement claim, but determined that the district court erred in invalidating DeliverMed’s copyright registration.

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