Inaccuracies in copyright registration

Although copyright registration is not a precondition to copyright protection, a copyright registration is required to bring an action for copyright infringement. Indeed, a unanimous Supreme Court held in Fourth Estate Public Benefit Corporation v. Wall-Street.com, LLC, 139 S. Ct. 881 (2019), that the Copyright Office must officially register a copyright before a copyright plaintiff may commence an infringement suit. Even with a certificate of registration in hand, however, a copyright plaintiff may encounter inaccuracies in the registration after filing suit. Such inaccuracies provide opportunities for defendants to challenge the validity of the registration.

One example of such a situation arose in L.A. Printex Industries, Inc. v. Aeropostale, Inc., 676 F.3d 841 (9th Cir. 2012). In L.A. Printex, the plaintiff sued defendants for infringement of its copyright and subsequently became aware that its copyright registration contained an error. The plaintiff filed an application for and obtained a supplementary registration to correct the error. The 9th U.S. Circuit Court of Appeals rejected defendants' argument that the copyright registration was invalid because of the error, finding that the plaintiff did not knowingly include the inaccurate information in the application for copyright registration. L.A. Printex set the stage for the 9th Circuit's recent opinion in Gold Value International Textile, Inc. v. Sanctuary Clothing, LLC, 925 F.3d 1140 (9th Cir. 2019). There, the 9th Circuit elaborated on the role of knowledge of the inaccuracy in invalidating a copyright registration.

Statutory Framework

17 U.S.C. Section 411(b) provides that a "certificate of registration satisfies the [registration requirement of Section 411(a)], regardless of whether the certificate contains any inaccurate information," unless (1) "the inaccurate information was included on the application for copyright registration with knowledge that it was inaccurate," and (2) "the inaccuracy of the information, if known, would have caused the Register of Copyrights to refuse registration."

L.A. Printex

Applying Section 411(b), the 9th Circuit, in L.A. Printex, determined that the copyright registration was not invalid. At issue was the registration of a group of five textile designs as a single unpublished collection. After bringing suit, the plaintiff became aware that two of the five designs -- but not the design at issue -- had been published before the date of registration. Accordingly, while the suit was pending, the plaintiff filed an application for supplementary registration to correct the error. The Copyright Office accepted the correction, removing the published designs from the unpublished collection, and issued a certificate of supplementary registration.

In finding that the inclusion of the two previously published designs in a work registered as an unpublished collection did not invalidate the registration, the 9th Circuit stated that "[t]he record, when viewed in the light most favorable to L.A. Printex, does not demonstrate that L.A. Printex knowingly included previously published designs in its application for copyright registration such that the error was other than an inadvertent mistake, or that L.A. Printex intended to defraud the Copyright Office." Significant to the court's analysis was the fact that the plaintiff, upon learning of its registration error, communicated with the Copyright Office and filed an application for supplementary registration.

Gold Value

The 9th Circuit encountered what can be described as the inverse of the situation faced in L.A. Printex in Gold Value. Gold Value, like L.A. Printex, involved the registration of textile designs and the inclusion of a previously published design in an unpublished collection. Unlike in L.A. Printex, however, the previously published design was the asserted design. Prior to registration, the plaintiff had sold samples of fabric bearing the design at issue. Significantly, the plaintiff knew that the fabric had been sold prior to submitting the copyright registration application, but did not consider the prior sale to be publication. The district court determined that because the design had been sold prior to registration, it had been published. Moreover, because the plaintiff knew that the fabric had previously been sold, and therefore published, it included inaccurate information in its copyright application with knowledge that it was inaccurate. The 9th Circuit agreed.

In agreeing with the district court, the 9th Circuit rejected the plaintiff's argument that L.A. Printex requires a showing of fraud on the part of the claimant in order to invalidate a copyright registration. While acknowledging that it stated in L.A. Printex that there was no evidence that the plaintiff there intended to defraud the Copyright Office, the 9th Circuit clarified that it had not considered the issue of whether a showing of fraud is required to invalidate a registration. In closing the door on the plaintiff's fraud argument, the 9th Circuit noted that the plain language of Section 411(b) does not require a showing of fraud.

Notably, the plaintiff in Gold Value did not obtain a supplementary registration. Had it done so, the copyright registration would properly include only the unpublished designs but would no longer include the design at issue and, therefore, could not serve as a basis for the infringement action.

What Constitutes Knowledge?

Following Gold Value, district courts in the 9th Circuit have applied the Court of Appeals' guidance on the degree of knowledge required to invalidate a copyright registration, relying on both L.A. Printex and Gold Value as guideposts in the knowledge inquiry.

For example, in Jeon v. Anderson, SACV 17-01709 JVS(JDEx) (C.D. Cal. June 14, 2019), the court found that the plaintiff knowingly included inaccurate information in a copyright application where the applicant was aware of the facts underlying the accuracy. There, the plaintiff had sold copies of all but one of the copyrighted works prior to submitting the copyright application and the one work that had not been sold prior to submitting the application had been published nine months before the application. The court contrasted the circumstances of the case with that in L.A. Printex, where two previously published designs had been included in an unpublished collection. The court emphasized that all of the works were previously published designs that were included in two unpublished collections -- "not just 'a few' that could be considered included due to inadvertent error."

While not discussed in Jeon, because all of the works in the unpublished collections had been published, the plaintiff in Jeon could not have corrected the errors through a supplementary registration because "[a] supplementary registration is not appropriate if the work was registered as unpublished when it was actually published at the time of registration." U.S. Copyright Office, Copyright Circular 8, at 1 (2013).

In another case decided after Gold Value -- Universal Dyeing & Printing, Inc. v. Knitwork Productions II, LLC, 2:17-cv-05660-ODW (MRW) (C.D. Cal. June 26, 2019) -- the court found errors in two separate copyright registrations to be inadvertent mistakes, not knowing inaccuracies. In one of the registrations, the facts showed that the plaintiff had accidentally swapped the deposit materials when it attempted to register the design. In the other registration, the plaintiff had failed to include certain information in the registration. In both cases, the plaintiff corrected the error through a supplementary registration.

Conclusion

The law is now well settled that a copyright claimant must have a certificate of registration in hand before bringing an action for copyright infringement. Perhaps more than before, copyright claimants should recognize the potentially serious consequences of knowingly including inaccurate information in a copyright registration. In the wake of Gold Value, courts have found knowledge of inaccurate information where the applicant was aware of the facts underlying the inaccuracy, even where there is no showing of fraudulent intent. Across the aisle, a known inaccuracy in a copyright registration provides a potentially valuable tool for accused infringers attempting to invalidate a registration. 