UnIntellectual Property (UnIP): Copyright Registration for Logo Based Upon a Knowing Misrepresentation
This is a rather strange decision out of the United States Court of Appeals for the Seventh Circuit. It involves review of a the District Court’s invalidation of a copyright registration with the US Copyright office based upon a knowing misrepresentation in the application. While agreeing with the District Court’s finding of fact and opinion, it remanded the decision to invalidate the copyright registration because of a rather new procedure included in the recent amendments to the Copyright Act. In particular, courts confronted with a registration allegedly obtained by knowing misstatements in an application “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.” See generally Prioritizing Resources and Organization for Intellectual Property Act of 2008 (“PRO IP Act”), Pub.L. No. 110–403, § 101, 122 Stat. 4256, 4257–58; see also 17 U.S.C. § 411(b)(2). Recall that the Copyright Act provides for the invalidation of registrations where the registrant knowingly misrepresented information in his application and “the inaccuracy of the information, if known, would have caused the Register of Copyrights to refuse registration.” 17 U.S.C. § 411(b)(1)(A)-(B). Instead of relying solely on the court’s own assessment of the Register’s response to an inaccuracy, the statute obligates courts to obtain an opinion from the Register on the matter.
Since the parties did not ask the District Court to consult the Register before invalidating the copyright registration, and instead relied upon its own reasoning, albeit consistent with that of the Register, the District Court decision was remanded. The Seventh Circuit held: “By granting a declaratory judgment invalidating DeliverMed’s copyright registration without following the statutorily mandated procedure, the district court made a legal error.” Thus, it is clear from this decision that a court still must request a response from the Register before coming to a conclusion as to the materiality of a particular misrepresentation. The Court did go on to give the following guidance/caution: