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.
Many people confuse copyright existence with copyright registration. Copyright registration is not a condition to copyright protection. 17 U.S.C. §408(a). Copyright protection exists from the moment a work of original authorship is fixed in a tangible medium of expression. §102(a).
Copyright registration is required, though, before a copyright owner can bring a copyright infringement action. §411(a). A registration certificate from the Copyright Office satisfies the registration requirement, even though the certificate contains 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.
Under §411(b)(2), courts must seek the advice of the Register of Copyrights before deciding that the Register of Copyrights would have refused registration had it known the application information was inaccurate.
This case concerns the timing of the request to the Register of Copyrights.
Although the statute by its terms requires a referral in any case in which inaccurate information described under § 411(b)(1) is alleged, courts generally agree that they may first require the party seeking invalidation to establish as a factual matter that the applicant included inaccurate information on the registration application with knowledge that it was inaccurate. The Register of Copyrights agrees:
‘While 17 U.S.C. § 411(b)(2) requires the court to seek the Register’s advice when there is an allegation that an application contains inaccurate information, the Register observes that the statute says nothing about the timing of the request. The Register suggests that, at a minimum, the court retains the power to delay the request until a factual record has been developed, e.g., through affidavits or discovery.’
(Opinion pdf page 2).
Although another district court granted Stevens’ request to seek the advice of the Register of Copyrights in a related case, this district court affirmed its earlier decision.
This Court continues to exercise its discretion to require that Defendant establish as a factual matter that Plaintiff knowingly included inaccurate information on its registration application within the meaning of 17 U.S.C. § 411(b)(1) before issuing a request to the Register of Copyrights. As before, there remain factual disputes regarding (1) whether the photographs had been published when Ms. Kane completed an application form in 1999, (2) Ms. Kane’s knowledge of their publication at the time, if any, and (3) whether the application form completed by Ms. Kane in 2001 was a continuation of an application process that had been ongoing since 1999 and was completed in good-faith reliance on directions from the Copyright Office. These factual issues require the weighing of evidence and the rendering of credibility determinations—tasks which this Court does not believe it can undertake at this stage.
(Opinion pdf page 6).
The court indicated that if the jury found in Stevens’ favor on the factual issues, then the court would be required by the statute to refer the question to the Register of Copyrights.
This case is Palmer/Kane LLC v. Gareth Stevens Publishing, No. 1:15-cv-7404-GHW, U.S. District Court, Southern District of New York.