Section 411 of the Copyright Act Allows for Obtaining an Opinion from the Copyright Office as a Defense to an Infringement Lawsuit in Extraordinary Circumstances

Under the revised copyright statute, a certificate of registration is sufficient to bring a copyright infringement suit “regardless of whether [it] contains any inaccurate information,” unless (1) the registrant included the inaccurate information “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.” 17 U.S.C. § 411(b)(1).

Thus, a request for Copyright Office intervention in copyright infringement action to opine on copyright registration irregularity issues only occurs in extraordinary circumstances. A certificate of registration is sufficient to bring a copyright infringement suit “regardless of whether [it] contains any inaccurate information,” unless (1) the registrant included the inaccurate information “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.” 17 U.S.C. § 411(b)(1).

District courts, the Seventh Circuit, and the Register of Copyrights have recognized Section 411’s “obvious potential for abuse.” DeliverMed Holdings, LLC v. Schaltenbrand, 734 F.3d 616, 625 (7th Cir. 2013) (“Given its obvious potential for abuse, we must strongly caution both courts and litigants to be wary of using this device in the future.”) citing Olem Shoe Corp. v. Wash. Shoe Co., No. 09-cv-23494, 2010 WL 3505100, at *3 n. 4, 2010 U.S. Dist. LEXIS 143590, at *6 n. 4 (S.D.Fla. Sep. 3, 2010) (noting section 411(b)(2)'s potential as a “weapon to delay the proceedings in district court”). The Seventh Circuit has instructed that “input need not be sought immediately after a party makes such a claim” for obtaining an obtaining an opinion from the Copyright Office as to invalidity of a copyright due to alleged copyright application irregularities preferring that courts “demand” the party seeking invalidation to first establish that the other preconditions to invalidity, i.e., (1) the application included inaccurate information; and (2) the registrant knowingly included the inaccuracy in his submission to the Copyright Office, are satisfied before obtaining the Register’s advice on materiality. DeliverMed Holdings, 734 F.3d 616, 625 (“When faced with this situation in the future, courts should tread carefully and employ this mechanism only when necessary.”).

Only after these threshold requirements are met, may a court question the Register Copyrights regarding whether a particular inaccuracy in the registration application would have caused refusal of the application. Apart from removing or lessening the threat that a litigant would abuse this procedure of obtaining an advisory opinion as a tactic for delay, the procedure has the endorsement of the Copyright Register. See Response of the Register of Copyrights to Request Pursuant to 17 U.S.C. § 411(b)(2) at 12, Olem Shoe, No. 1:09–cv–23494 (“[B]efore 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.”). When faced with this scenario, courts tread cautiously and employ use this procedure only when it is necessary.

Lubin Austermuehle’s Chicago Copyright Infringement Attorneys with offices in Chicago, Wilmette and Elmhurst have extensive experience on copyright litigation, including winning a motion for summary judgment motion based on cross-examination admission we obtained from the plaintiff. We represented one of the biggest Canadian mutual financial companies in a copyright infringement suit filed in federal court in Chicago falsely accusing our client being liable for millions of dollars. You can look at Court’s summary judgment decision here. We have also successfully represented plaintiffs in software infringement lawsuits alleging claims against large national and international corporations. Call of our Chicago Copyright Litigation Lawyers for a free consultation at our toll-free number 630-333-0333. You can also contact us online.