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Proving “Fraud on the Copyright Office” is not an easy task

Posted by Steve Vondran | Oct 19, 2018 | 0 Comments

Attorney Steve® Copyright Law Essentials – Obtaining Copyright Registration by Fraud or Misrepresentation

California copyright lawyer

What is Fraud on the Copyright Office?

When you register a copyright, you get a certificate of registration which establishes prima facie evidence of the legitimacy of your copyright.  However, when there is fraud on the U.S. Copyright Office, this presumption of validity can be defeated.  Note, it is NOT usually deemed an affirmative defense to copyright infringement.  In some federal courts they may require a answer “pled with specificity” alleging all the elements of fraud.  In other jurisdictions the defendant may have to plead some sort of prejudice.  These are not always easy challenges for a defendant and it is not always easy to tell from the face of a copyright application that someone was trying to defraud the copyright office and injure the public.

Here is a case from the 9th Circuit which discussed this legal principle (noting that mere inaccuracies on a copyright application are not enough to constitute fraud which could bar an infringement claim):

Fraud on the Copyright Office – S.O.S., Inc. v. Payday, Inc., 886 F.2d 1081, 1086 (9th Cir. 1989) “In S.O.S.'s initial application for  copyright registration, S.O.S. identified itself as sole author of the payroll software, even though the work included the Brown Tank programs prepared by Hagen. S.O.S. subsequently filed a supplemental registration disclosing its use of Brown Tank.  Payday asserts that this omission was a fraud on the Copyright Office which should be remedied by barring S.O.S. from enforcing its otherwise valid  copyright. We need not decide whether S.O.S.'s registration was in fact fraudulent for failing to disclose the identity of an unpublished underlying work. “ Absent intent to defraud and prejudice, inaccuracies in copyright registration do not bar actions for infringement.”  Harris v. Emus Records Corp., 734 F.2d 1329, 1335 (9th Cir.1984). Payday alleges that S.O.S. intentionally omitted reference to Brown Tank in its registration in order to facilitate execution of a writ of seizure against Payday. However, this writ was quickly modified, and Payday has not claimed any injury resulting from it. Payday has not demonstrated prejudice that would persuade us at the summary judgment stage to prohibit S.O.S. from pursuing its claim of  copyright infringement.” In another case, misclassifying the copyright at issue did not rise to the level of intent to defraud: In this circuit, however, we have held that “inadvertent mistakes on registration certificates do not invalidate a copyright and thus do not bar infringement actions, unless … the claimant intended to defraud the Copyright Office by making the misstatement.”  Urantia Found. v. Maaherra, 114 F.3d 955, 963 (9th Cir.1997);  accord  Three Boys Music Corp. v. Bolton, 212 F.3d 477, 486–87 (9th Cir.2000);  see also  Cooling Sys. & Flexibles, Inc. v. Stuart Radiator, Inc., 777 F.2d 485, 487 (9th Cir.1985) (quoting Melville B. Nimmer, 2  Nimmer on Copyright § 7.20, at 7–147 (1985)) (“Absent fraud, ‘a misstatement or clerical error in the registration application … will not invalidate the copyright nor render the registration certificate incapable of supporting an infringement action.' ”). Lamps Plus contends that, because Mr. Swanson believed the Victorian Tiffany table lamp was “an original sculptural work—not a compilation,” he did not intend to defraud the Copyright Office by failing to respond to question 6(a) and question 6(b) of the Copyright Application.

Mr. Swanson testified that he was personally unaware that question 6(a) and question 6(b) had been left blank on the Copyright Application. The record, viewed in the light most favorable to Lamps Plus, does not demonstrate that it intended to defraud the Copyright Office by failing to disclose the information required by § 409.  See .  Lamps Plus, Inc. v. Seattle Lighting Fixture Co., 345 F.3d 1140, 1145 (9th Cir. 2003) In another case involving Malibu Media, LLC a Defendant tried to argue “fraud on the copyright court” by the adult porn company that often sues Defendants for illegal file sharing on Bittorent

The Court noted: “On August 19, 2012, one Defendant Doe,  pro se, filed an Answer and Counterclaims under seal. Doe alleges that Malibu “has engaged in a systematic course of action whereby it is using the Federal Courts in order to extort funds from individuals who use the Internet” and that Malibu is a “copyright troll” who filed suit “solely to obtain the issuance of subpoenas order to determine the identify of the John Does” “On or about August 14, 2012, a self-identified representative from Malibu contacted Doe and told him “he was going to be named in a lawsuit about to be filed” and “urged Defendant to settle the matter for $4,500 and stated that it was less than the cost of hiring an Intellectual Property attorney.”

In Defendant's view, these actions, as well as filing suit against multiple defendants in order to “evade thousands of dollars of filing fees”, all of which resulted in “damage in his personal life” constitutes abuse of process. Doe further alleges intentional infliction of emotional distress, arguing he “has been damaged in his personal and professional life.” Lastly, Doe alleges a claim for “ Fraud on the Copyright Office” because Malibu “was not seeking to protect a valid copyright when it made application to the United States Copyright Office”, and suggesting that a shell corporation was created in order to buy and register the relevant copyrights.” See Malibu Media, LLC v. Doe 1,  (D. Md. Oct. 10, 2013).

Is there a procedure to challenge with the Copyright Office?

No.  This is something raised in infringement litigation.  The copyright office registers copyrights but does not investigation claims.  If there are two competing claims, normally the office will register both claims and let the parties DUKE IT OUT in Court.

Declaratory Relief

If someone has filed a DMCA takedown notice against you (ex. forcing Youtube to take down one of your videos), and you are claiming a “fair use defense” or want to try to invalidate the infringement allegation by proving Plaintiff (i.e. the copyright holder) committed a fraud on the copyright office, you may need to file a complaint for Declaratory Judgement in federal court (Youtube, for example, likely does not have the ability to ferret our and investigate this type of claim).

To learn more about the Declaratory Judgement procedure click here.

Would the work be deemed in the Public Domain if procured by Fraud or Misrepresentation

If there is fraud in obtaining a copyright the registration would be unenforceable as being the product of fraud.  Our firm can help bring or defend claims that a copyright is invalid due fraud on the U.S.C.O.

Failure to Register Copyright Before the Infringement

One other minor point in dealing with Copyright infringement matters and that is making sure the Plaintiff registered their copyright BEFORE THE INFRINGEMENT (or within 3 months of first publication), if not, they are not entitled to seek “statutory damages” and “attorney fees.”

The Coldwater case was one that discussed this principle in Defendant seeking motion to dismiss (which was denied) on the grounds of failure to timely register the copyright by the Plaintiff:

“Coldwater argues that Brighton's Melanie copyright claim is partially barred because the copyright registration was after the date of first infringement. (Doc. No. 11 at 17–18.) Based on this, Coldwater asserts that Brighton is not entitled to recover statutory damages or attorneys' fees for the alleged infringement under the Copyright Act. (Id.) The Copyright Act provides that, “no award of statutory damages or of attorney's fees . . . shall be made for– (2) any infringement of copyright commenced after first publication of the work and before the effective date of its registration, unless such registration is made within three months after the first publication of the work.” 17 U.S.C. § 412(2). This bar to statutory damages and attorneys' fees under § 412 of the Copyright Act extends to post-registration infringement if there is no legally significant difference between pre-registration and post-registration infringements. Derek Andrew, Inc. v. Poof Apparel Corp., 528 F.3d 696, 701 (9th Cir. 2008).

See Brighton Collectibles vs. Coldwater Creek – Southern District of California.

Contact Us

If you are in need of a copyright attorney, our law firm can help. 

Infringement matters have huge potential consequences and officers and directors of a company can be held personally liable (despite the corporate veil).

These types of intellectual property matters are usually very unique and often beyond the skill set of general business counsel (many times they refer us copyright cases).

We have vast experience with internet infringement cases including subpoena response and DMCA takedown notices and cease and desist demand letters.  We also handle counter-notifications and federal court appeals if necessary and serve as legal counsel for general copyright infringement arbitration, mediation and litigation involving movies, film, art, photographs, software programs, fonts, jewelry and other creative copyrighted content. 

Call us at (877) 276-5084 for a free initial consultation (subject to availability) or email us through our contact form.

About the Author

Steve Vondran

Thank you for viewing our blogs, videos and podcasts. As noted, all information on this website is Attorney Advertising. Decisions to hire an attorney should never be based on advertising alone. Any past results discussed herein do not guarantee or predict any future results. All blogs are written by Steve Vondran, Esq. unless otherwise indicated. Our firm handles a wide variety of intellectual property and entertainment law cases from music and video law, Youtube disputes, DMCA litigation, copyright infringement cases involving software licensing disputes (ex. BSA, SIIA, Siemens, Autodesk, Vero, CNC, VB Conversion and others), torrent internet file-sharing (Strike 3 and Malibu Media), California right of publicity, TV Signal Piracy, and many other types of IP, piracy, technology, and social media disputes. Call us at (877) 276-5084. AZ Bar Lic. #025911 CA. Bar Lic. #232337


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