I’m going to ignore blog post best practices and start out with a statute:
(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predecessor knowingly misrepresented to the Copyright Office that the photographs it applied to register as an unpublished collection had not been previously published.
This referral procedure to obtain the Copyright Office’s opinion was added to the Copyright Act in 2008. Courts that have encountered this seldom implemented provision as part of a case agree that the provision is not optional and requires district courts to seek the advice of the Copyright Office when the statute’s conditions are met.
The statutory language — ‘shall request’ — is mandatory. Indeed, in DeliverMed, the Seventh Circuit found that the district court’s invalidation of a copyright registration without complying with the procedure set forth in § 411(b)(2) was reversible error, even though the parties had not asked the district court to consult the Copyright Office.
(Opinion pdf page 3).
The district court recognized that the referral procedure can be abused by infringers to throw up roadblocks to meritorious infringement claims.
Before making a referral to the Copyright Office under §411(b)(2), a district court may require a litigant to demonstrate that (1) the registration application included inaccurate information; and (2) the registrant knowingly included the inaccuracy in his submission to the Copyright Office.
This approach appropriately balances the Copyright Office’s statutory right to weigh in on the materiality of a knowing misrepresentation in an application for copyright registration, on the one hand, against the district court’s inherent power to control its own docket and to prevent abuse in its proceedings, on the other. That is particularly the case given that the Copyright Office itself has taken the position that before asking the Register whether she would have refused to register a copyright a court should feel free to determine whether there is in fact a misstatement of fact. And while this Court very much shares the concern of other courts that this statutory mechanism could be improperly invoked by defendants as a delay tactic, nothing in 411(b)(2) prevents courts from imposing a deadline by which the Copyright Office must provide its response to the Court’s request. Nor does § 411(b) (2) require courts to stay proceedings while a court’s request for an advisory opinion is pending. Absent unusual circumstances, discovery can continue apace, as it will in this case.
(Opinion pdf pages 4 – 5).
The district court ruled that Rosen satisfied the statutory requirements for the mandatory referral. It came out in deposition testimony that the works Palmer/Kane’s predecessor sought to register had been published before the application for an unpublished collection was filed. The witness admitted that all of the photographs had been published by the time a corrected application was filed. The salient point for the district court is that copyright registration application contained inaccurate information. “Whether that inaccurate information is material to the Copyright Office is precisely what the procedure codified at § 411(b) (2) is designed to clarify.” (Opinion pdf page 10).
The district court noted that the statute does not require a showing of fraudulent intent of the part of the applicant.
The standard is whether the applicant knowingly included inaccurate information on its application that could have led the Copyright Office to refuse registration. And given that wrongly identifying published works as unpublished has been deemed a fundamental registration error requiring invalidation of a copyright registration, it is more than plausible that the inaccuracy of the information, if known, would have caused the Register of Copyrights to refuse registration.
(Opinion pdf page 11).
This case is Palmer Kane LLC v. Rosen Book Works LLC.pdf, No. 15-cv-7406 (JSR), U.S. District Court, Southern District of New York.