Court Demands More Detailed Filing Before Referring Question to Copyright Office

Bloomberg BNA’s Patent Trademark & Copyright Law Daily™is the IP industry’s premier news service, offering objective, timely,and reliable daily news coverage and commentary from leading IP law...

By Anandashankar Mazumdar

May 26 — Before it could decide whether to refer questions of inappropriate copyright registrations to the Copyright Office, it needed more specific information regarding what a defendant in an infringement proceeding was alleging was wrong with the registrations, the U.S. District Court for the Middle District of Tennessee ruled May 20.

Applying a provision of the Copyright Act that provided for a court to ask the Copyright Office whether it would have issued a copyright registration certificate if it had been aware of certain inaccuracies in the application, the court criticized the defendant's litigation practices and asked for a more explicit statement of its allegations.

Put-Pictures-On-Things Businesses Clash 

Bethany Primrose and Russell Schenck run Insomniac Arts in Nashville, Tenn., a business that takes graphic designs and puts them on consumer goods, which it sells online.

Cale Orosz operates Case Doodle LLC of Nevada, a competitor of Insomniac. Insomniac sued Case Doodle, alleging copyright infringement of several of its designs.

After a complex pre-discovery and discovery proceeding, Insomniac moved for summary judgment on 28 of its asserted copyrights.

In response, Case Doodle said it would seek to have the Copyright Office determine whether Insomniac's registrations were valid.

Law Provides For Advisory Opinion 

In addressing this assertion, the court referred to Section 411 of the Copyright Act of 1976, 17 U.S.C. §411. This provision requires a copyright holder to register his or her copyright interest in a work with the Copyright Office before proceeding with a claim under federal copyright law.

Under Section 411(b), even an inaccurate registration certificate is sufficient to satisfy this requirement, unless the registrant knew that the information was inaccurate and that the true information would have caused the Copyright Office to refuse registration.

Section 411(b)(2) provides for a court's referral to the Copyright Office in such cases to advise whether the agency would have rejected registration under these circumstances.

The court expressed two concerns about seeking such advisory opinions from the Copyright Office, the first being that this process could be used as a delaying tactic in infringement proceedings and the second being that the court is not bound by the advice it receives from the agency.

Applying Olem Shoe Corp. v. Washington Shoe Co., No. 09-23494-CIV (S.D. Fla. Sept. 3, 2010), the said that before such a referral is made to the Copyright Office, a court must determine whether Case Doodle had adequately alleged a false application for registration and whether that allegation was supported by facts in the record.

The court noted that Case Doodle had rarely cited to facts in the record in briefing this question, but “from the outset of this litigation, the defendants have consistently raised potential concerns with the plaintiffs' copyright applications and registrations, at least some of which raise questions that appear to merit referral to the Copyright Office for an advisory opinion.”

With respect to these concerns, however, the court sought “renewed consideration” on the part of Case Doodle.

Decrying the “mess on its hands” left by Case Doodle's “throw mud against the wall and see what sticks” approach to the proceeding, the court directed Case Doodle to submit a statement detailing its claims of inaccurate information included in Insomniac's registration applications.

The court's decision was issued by judge Aleta A. Trauger. Insomniac Arts was represented by Harris, Martin, Jones P.A., Nashville, Tenn. Case Doodle was represented by McGeehan Technology Law Ltd., Chicago.

To contact the reporter on this story: Anandashankar Mazumdar in Washington at

To contact the editor responsible for this story: Tom P. Taylor at

Text is available at: