Subtitled “Writing it so @RickSanders doesn’t have to“
The copyright registration system, as it relates to an infringement case, is utterly and completely broken. We need reform.
Here are the facts we’ll assume are true for purposes of today’s rant. Plaintiff SellPoolSuppliesOnline.com, LLC (SPSO) provided Ugly Pools Arizona, Inc., the defendant and a company SPSO thought was a potential customer, with access to an online version of a website platform SPSO created and licensed to pool supply companies. Without SPSO’s knowledge (but with the help of an unfaithful employee), Ugly Pools downloaded the code and content and used it to create its own website. SPSO wanted to sue for copyright infringement, which meant SPSO had to register the copyright. Of course, SPSO needed to allege infringement of the copy of the work that Ugly Pools had access to. However, SPSO no longer had a copy of that version when it filed its copyright application predicate to filing the lawsuit.
When registering a copyright, one must identify earlier published versions of the work. By statute, the copyright application form must include:
in the case of a compilation or derivative work, an identification of any preexisting work or works that it is based on or incorporates, and a brief, general statement of the additional material covered by the copyright claim being registered.
What SPSO’s lawyer assumed was that the registration had to be for the same version of the work allegedly infringed. This is inassailable in its logic. It may also be true, but not necessarily. There is a doctrine called the “effective registration doctrine,” which says that a registration of a derivative work is sufficient for purposes of alleging infringement of the underlying original work also. Streetwise Maps, Inc. v. VanDam, Inc., 159 F.3d 739 (2d Cir. 1998). Consider what might happen if this isn’t true. In some fields, websites being one, the concept that there is such a thing as a “work” that exists for anything more than a moment in time is fallacious. Today’s websites are continuously changing. On a commercial site, there may be press releases, blog posts, new product launches, help pages updates, and so on, all happening in the same day. Two edits per second made are made on Wikipedia. Does this mean that there was a work, and two seconds later there is a new derivative work? Netflix deploys new code on its production servers thousands of times a day. How many derivative works is that? If registration is required1, the best we can do is register a snapshot of a moment in time and hope that Streetwise fills the gap.
However, there is also AFL Telecommunications LLC v. SurplusEQ.com Inc., 946 F. Supp. 2d 928 (D. Ariz. 2013), which held that that because the copyright registration “excluded” a previous version, unmodifiable language on the registration form, then the allegedly infringed work wasn’t registered. So one is on uncertain legal footing if the registration is not for exactly the same work infringed.
Which brings us to the fiasco that was the attempt to register the copyright needed to bring a copyright infringement lawsuit in SellPoolSuppliesOnline.com LLC v. Ugly Pools Arizona, Inc. On September 15, 2015 SPSO filed an application claiming a publication date of August 26, 2015. The original claim was for computer code, text and photographs. The Copyright Office inquired (p. 11) of SPSO’s lawyer whether anything in the deposit was previously published, stating that anything previously published had to be “excluded from this claim since the extent of claim for a revised, or derivative, work is based only on the new and revised material contained in the later version of the work.”2 Counsel responded “They may have been from an earlier version of the website BUT we need special dispensation because this is the first time registration of the website and no copy (i.e., mirror or backup) of the prior website exists.” (p. 12).3
SPSO’s counsel complained, “This policy makes no sense vis-a-vis how the marketplace works for websites. Clients don’t hire lawyers usually until they believe they have a viable site. By that time, according to this rule, it would be impossible to copyright the site as it existed a year earlier (i.e., without excluding all previously published material).” (p. 14.) Indeed that is true, but it’s statutory. If Streetwise was settled law, or adopted by statute, then there would be no harm. But it isn’t.
SPSO then filed a declaration from the website owner stating that the deposit copy submitted with the application was the same as how the website appeared on July 3, 2014. The Copyright Office asked whether the date of publication should be changed in the application, pointing out that there was a copyright notice for 2015 in the submitted materials. (p. 18-19.) Counsel confirmed that it should be changed.4
Of course, the defendant discovered during the lawsuit that new materials had been added between July 3, 2014 and the date of the deposit, September 15, 2015. (It wasn’t hard; the defendant just used the Wayback Machine.) And therein is the basis for the allegation that the registration was invalid under 17 U.S.C. § 411(b). That section says:
(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.
Before Section 411(b) was added to the Copyright Act, some courts held that invalidation of a copyright registration required a showing of fraud, but others did not. However, section 411(b) speaks only about inaccuracy, not fraud. According to this case,”the Ninth Circuit has found that ‘a showing of fraud is not required when the inaccurate information was knowingly included on the application, as opposed to being an inadvertent mistake.’” At least the Eleventh Circuit, though, has held that the registrant must have a scienter of intentional or purposeful concealment.
But we’re in the 9th Circuit here. After identifying the inaccuracy, the court asked for the opinion of the Register of Copyright as required by § 411(b)(2), who unsurprisingly concluded that the Copyright Office would not have registered the copyright with the information stated on certificate if the office had been aware of the incorrect facts.5 SPSO therefore did not have a valid registration and its copyright infringement claim was dismissed.
I don’t know how this would have come out under a standard with a scienter requirement. It certainly caught my eye that SPSO needed to get something registered because the lawsuit had already been filed, the attorney thought that the registration had to be for what was copied, therefore asked for “special dispensation” to register something other than what was submitted, and when that wasn’t allowed submitted an affidavit with a change of heart about the publication date. I wouldn’t have a big problem with a conclusion that this was enough evidence to show the applicant had intentionally misled the Copyright Office in order to obtain the registration, therefore invalidating the registration.
But this case highlights how broken our copyright registration system is. We have a registration standard from the 1970’s, conceived of at a time when a work was only copyrighted if there was a copyright notice, combined with a now-quaint notion that works are demarked by discrete moments of “publication” (a concept that itself does not have a meaningful role in copyright law), and a legal standard for infringement in tension with the legal standard for registration. No one but an alleged infringer has anything to gain in challenges to registration, which only serves to deny on a technicality the benefits of copyright owner that we supposedly value. It is time for reform.
SellPoolSuppliesOnline.com LLC v. Ugly Pools Arizona, Inc., No. CV-01856-PHX-BSB (Sept. 24, 2018.
This work is licensed under a Creative Commons Attribution-NoDerivatives 4.0 International License.
- Join me in my crusade to eliminate the requirement that a copyright must be registered before one can file a copyright infringement lawsuit. The rest of the world manages just fine without copyright registration. Courts are in a much better position to decide copyrightability because they have all the facts in front of them. ↩
- N.B. that the statute doesn’t say anything about “excluding,” it says only to “identify.” The Copyright Office has added the concept of “exclusion,” presumably inferring it from the reference to the registration being for “additional material covered by the copyright claim being registered.” ↩
- I searched the Compendium and the Copyright Office website for a reference to the ability to obtain some kind of “dispensation.” Didn’t find it. ↩
- There was some further back-and-forth, resulting in SPSO omitting computer code from the claim and registering only the text and photographs. ↩
- Again, a legal standard that should be changed. The Register would have allowed the application as filed except with the exclusion, which the Copyright Ofice has the authority to enter. The legal question should be whether the Copyright Office would have had the ability to register the claim if it had the accurate facts, not whether the registration was defective at the time of registration because there were some inaccurate facts. ↩
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