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  • Court grants in part and denies in part plaintiff’s motion requesting court to issue questions to the Register of Copyright, pursuant to 17 U.S.C. § 411(b)(2), relating to alleged inaccuracies in defendant’s copyright registrations.

In a declaratory action for non-infringement of two shoe designs, the plaintiff asked the court to issue questions to the Register of Copyrights under recently amended § 411(b)(2) of the Copyright Act, which allows district courts to seek the advice of the Register of Copyrights as to the effect of allegedly inaccurate information contained in a copyright registration. The court stated that interpretation of § 411(b)(2) appears to be an issue of first impression in the Eleventh Circuit.

In 2008, as part of the Prioritizing Resources and Organization for Intellectual Property Act of 2008 (PRO IP Act), Congress amended § 411 to provide that a certificate of registration satisfies the section’s requirements, “regardless of whether the certificate contains any inaccurate information, unless” the following two requirements are met: (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. 17 U.S.C. § 411(b)(1).

The PRO IP Act also created a procedure for district courts to seek the advice of the Register of Copyrights as to the effect of allegedly inaccurate information on the validity of a copyright registration.

According to the court, under § 411(b)(2) a party must allege:(1) that inaccurate information was included on an application for copyright registration with knowledge that it was inaccurate; and (2) that the inaccuracy of the information, if known, would have caused the Register of Copyrights to refuse registration. If a party makes these allegations, the statute requires the court to seek the advice of the Register of Copyrights.

The court held that the plaintiff met these requirements, and rejected the defendants’ arguments urging the court to dismiss the motion because such a request is “extremely unusual”, that the issues raised by the motion had already been briefed in connection with the defendant’s motion for summary judgment, that the plaintiff’s request would delay and increase the parties’ expenses, and that the plaintiff failed to prove that defendant knew its copyright applications contained inaccurate information and that such inaccuracies were “so material” as to cause the Register of Copyrights to refuse the application. According to the court, the statute says the court’s duty is triggered where such information is alleged, not proven.

The court then examined each of plaintiff’s seven questions to determine which ones were appropriate to present to the Register of Copyrights under § 411(b)(2). The court held that three questions were appropriate (relating to whether the defendant’s shoe designs had been published prior to registration and about whether one of the designs was a derivative work based on a pre-existing work), although the court rephrased them, and the court also held that the remaining four questions were irrelevant because they were based on a flawed legal theory, did not relate to inaccurate information, or were “nonsense.”

In a lengthy footnote, the court questioned the practicality of the statute, pointing out that § 411(b)(2) gives a party accused of copyright infringement another weapon to delay the proceedings in district court, and noted that the statute does not indicate whether the court must accept the advisory opinion of the Register of Copyrights. “Ordinarily, a district court is not necessarily bound by the Copyright Office’s refusal to register a copyright. Thus, it seems questionable that a district court is to be bound by the Register of Copyrights’ opinion under § 411(b)(2).”