Pyrotechnics Management, Inc. v. XFX Pyrotechnics LLC

• Decision Date: 15 July 2021
• Docket Number: 19-cv-00893
• Parties: PYROTECHNICS MANAGEMENT, INC, Plaintiff, v. XFX PYROTECHNICS LLC, and FIRETEK. Defendants.
• Court: U.S. District Court — Western District of Pennsylvania

PYROTECHNICS MANAGEMENT, INC, Plaintiff, v. XFX PYROTECHNICS LLC, and FIRETEK. Defendants.

No. 19-cv-00893

United States District Court, W.D. Pennsylvania

July 15, 2021

MEMORANDUM ORDER

Robert J. Colville United States District Judge

Presently pending before the Court is a motion filed on behalf of Defendant, fireTEK, which moves the Court to issue a request to the Copyright Office, pursuant to § 411(b)(2) of the Copyright Act, to advise whether that Office would have refused registration if it knew that certain information included in the underlying registration application was inaccurate, and that the case be stayed pending said request. For the reasons explained below, the Court will deny the motion.

The statute at issue provides:

In any case in which inaccurate information described under paragraph (1) is alleged, the court 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.

17 U.S.C. § 411(b)(2).

Paragraph (1) concerns inaccurate information that “was included on the application for copyright registration with knowledge that it was inaccurate, ” id. § 411(b)(1)(A), and, which, if known to the Copyright Office “would have caused the Register of Copyrights to refuse registration, ” id. § 411(b)(1)(B). The provision is mandatory in nature, requiring district courts to solicit the advice of the Copyright Office when the statutory conditions are satisfied. See, e.g., DeliverMed Holdings, LLC v. Schaltenbrand, 734 F.3d 616, 623 (7th Cir.2013) (“[T]he statute obligates courts to obtain an opinion from the Register ....”); Roberts v Gordy, 181 F.Supp.3d 997, 1008, 2016 WL 1441465, at *9 (S.D. Fla. Apr. 8, 2016) (“When there is a question regarding the accuracy of the information contained on a registration, the Court's referral of the matter to the Register of Copyrights under § 411(b)(2) is mandatory”). Yet courts have recognized that the referral procedure is vulnerable to abuse and have urged caution. See DeliverMed 734 F.3d at 625 (“Given its obvious potential for abuse, we must strongly caution both courts and litigants to be wary of using this device in the future.”); Schenck v Orosz, 105 F.Supp.3d 812, 818 (M.D. Tenn. 2015) (articulating concern “that § 411(b)(2) creates a serious potential for abuse by introducing a mechanism by which infringers can throw up roadblocks to merited infringement lawsuits, simply by 'alleging' technical violations of the underlying copyright registrations”).

The Seventh Circuit in DeliverMed held that courts are not required to seek immediate input from the Copyright Office after a party alleges the inclusion of knowingly inaccurate information in a copyright application. DeliverMed, 734 F.3d at 625. Indeed, “courts can demand that the party seeking invalidation first establish that the other preconditions to invalidity are satisfied before obtaining the Register's advice on materiality.” Id. In other words, before making a referral to the Copyright Office under § 411(b)(2), a district court may require a litigant to “demonstrate that (1) the registration application included inaccurate information; and (2) the registrant knowingly included the inaccuracy in his submission to the Copyright Office.” Id.

This approach balances the Copyright Office's statutory right to weigh in on the materiality of a knowing misrepresentation in an application for copyright registration, on the one hand, against the district court's “inherent power to control its own docket and to prevent abuse in its proceedings, ” on the other. Ralph Lauren Corp. v U.S. Polo Ass'n, Inc., 2014 WL 4377852, at *5 (S.D. N.Y. Sept. 4, 2014). That is particularly the case given that the Copyright Office itself has taken the position that “before 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.” See Response of the Register of Copyrights to Request Pursuant to 17 U.S.C. § 411(b)(2) at 12, Olem Shoe Corp. v. Wash. Shoe Co., 09 Civ. 23494 (S.D. Fla.), ECF No. 209.

Defendant aptly notes the concern of other courts that this statutory mechanism could be improperly invoked by defendants as a delay tactic. Moreover, § 411(b) (2) does not require courts to stay proceedings while a court's request for an advisory opinion is pending. Absent unusual circumstances, discovery can continue. Palmer/Kane LLC v. Rosen Book Works LLC, 188 F.Supp.3d 347, 348-49 (S.D. N.Y. 2016)

Here, fireTEK asks the Register of Copyrights to answer the following questions:

A. Whether the Copyright Register would have refused registration if it had known that Plaintiff was attempting to secure a registration and claim protection in a “computer program” or “object code” instead of a “text”;

B. Whether the Copyright Register would have refused registration if it had known that Plaintiff's deposit copy, claimed to be identifying material under 37 C.F.R § 202.20 of another much larger work which exists only in machine readable form;

C. Whether the Copyright Register would have refused registration if it had known that Plaintiff's deposit copy is only an English text (they called identifying material) which describes the material for which they claim protection;

D. Whether the Copyright Register would have refused

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