E.D.N.Y.: Actual Knowledge of Registration Inaccuracies Sufficient for Copyright Office Referral
Last week, the Eastern District of New York held in Lieb v. Korangy Publishing, Inc. that a plaintiff's actual knowledge of their copyright registration's inaccuracy, without showing fraud, is sufficient to refer the registration to the US Copyright Office to investigate whether the inaccuracy would have caused the registration to be refused, if the inaccuracy was known.
First some background. Any case that involves potentially inaccurate copyright registrations must be referred to the US Copyright Office under Section 411 of the Copyright Act for further investigation. A few weeks ago, the US Supreme Court decided that an inaccurate registration would not trigger referral to the Copyright Office, unless the registrant had actual knowledge that the registration was factually and legally inaccurate (see here). However, last month, the District of Minnesota (FurnitureDealer.Net v. Amazon) interpreted the Supreme Court's ruling as not deciding the state of mind necessary to invoke referring a case to the Copyright Office and that fraudulent intent was required.
Andrew Lieb, who is an attorney and blogger, wrote an article that he repurposed for the Huffington Post. Lieb didn't try to register his original article, but filed for a copyright registration of his Huffington Post article. Lieb didn't disclose to the Copyright Office that the Huffington Post article was based on his prior article, and he didn't designate the Huffington Post article as a derivative work. A few weeks later, a real estate news website, Korangy Publishing, published an article summarizing the information in Lieb's articles. Lieb filed a lawsuit against Korangy for copyright infringement. Korangy filed for summary judgment because it believed Lieb knowingly made inaccurate statements about his copyright registration, and as such, the registration should be referred to the US Copyright Office to determine if registration should have been refused if the inaccuracy was known. Korangy also retorted that the articles weren't substantially similar enough to constitute copyright infringement.
The E.D.N.Y. disagreed with the Minnesota district court and said it was quite clear that the US Supreme Court adopted an "actual knowledge" standard referral requirement under Section 411 of the Copyright Act. As such, the E.D.N.Y. believed that Lieb had actual knowledge of the copyright registration inaccuracies because Lieb knew the Huffington Post article was based on his prior material and his copyright registration application, which could be understood by a lay person, required Lieb to disclose if his article was a derivative work. The E.D.N.Y. also stated the Copyright Office would likely have refused to register the Huffington Post article if it knew it was a derivative work, given that the two articles (the original article and Huffington Post article) were virtually identical. Consequently, it granted Korangy's motion for summary judgment and referred Lieb's registration to the Copyright Office.
This case creates a split between the two district courts, which will hopefully be resolved soon.