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IN THE UNITED STATES DISTRICT COURT 

FOR THE DISTRICT OF ARIZONA 

SellPoolSuppliesOnline.com LLC,

Plaintiff, 

v. 

Ugly Pools Arizona Incorporated, et al., 

Defendants. 

No. CV-15-01856-PHX-BSB

ORDER 

 This matter involves copyright and related disputes over websites for selling pool 

supplies. Plaintiff’s First Amended Complaint (FAC) includes three counts: 

(1) copyright infringement under the United States Copyright Act, 17 U.S.C. § 501(a) 

(Count One); (2) unfair competition under Arizona law (Count Two); and (3) violation of 

the Digital Millennium Copyright Act, integrity of copyright management information 

under 17 U.S.C. § 1202 (Count Three). (Doc. 39.) 

 Plaintiff and Defendants have filed cross motions seeking summary judgment on 

all three counts. (Docs. 43, 45.) Defendants have also filed a motion for an order 

directing Plaintiff to cancel or amend its copyright registration, which the United States 

Copyright Office (copyright office) issued after the parties filed their motions for 

summary judgment. (Doc. 53.) For the reasons below, the Court grants the summary 

judgment motions, in part, and denies them, in part, and denies Defendants’ motion for an 

order directing Plaintiff to cancel or amend its copyright registration. 

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I. Factual and Procedural Background 

A. General Background Regarding the Parties’ Dispute 

 Plaintiff SellPoolSuppliesOnline.com, LLC (SPSO or Plaintiff) describes its 

business as licensing pre-made websites that it refers to as “the Platform.” (PSSOF ¶ 1.)1

 

Plaintiff alleges that the Platform consists of “a compilation of programs, representations, 

originally authored works, writings, hundreds of photos taken by the principals of SPSO, 

and computer architecture and design, which provide SPSO licensees the infrastructure to 

configure, implement, and maintain fully functional and attractive websites based on the 

Platform that are personalized to each customer’s business.” (PSSOF ¶ 2.) Plaintiff 

asserts that the Platform, as delivered to customers, incorporates and effectively uses 

search engine optimization (SEO) and provides “drop-ship” delivery that dispenses with 

the need for customers to maintain inventory. (PSSOF ¶ 2.) Plaintiff alleges that it spent 

three years and “hundreds of thousands of dollars developing the Platform.” (PSSOF 

¶ 3.) However, Plaintiff admits that “much of the website code” is licensed from 

BigCommerce, a non-party entity that provides “backend electronic storefront” services. 

(Doc. 53, Ex. Q.) 

 In July 2014, SPSO employed Mark Kesler as a salesperson to sell licenses to use 

the Platform; the licenses sold for an average of $15,000. (PSSOF ¶¶ 5, 6; DCSSOF at 

¶¶ 5,6.)2

 Plaintiff alleges that it charged monthly maintenance fees and required licensees 

to host their websites on SPSO’s servers. (PSSOF ¶ 7, Ex. 6.) Defendants dispute that 

Plaintiff charged monthly fees, and assert that the evidence indicates that Plaintiff only 

charged an annual subscription fee of $1.00. (DCSSOF ¶ 7 (citing Doc. 44-1 at 42).) 

 

1

 PSSOF refers to Plaintiff’s Separate Statement of Facts in Support of Plaintiff’s Motion for Summary Judgment. (Doc. 44.) Plaintiff’s exhibits are identified by letters A-I, but Plaintiff’s briefing refers to them by numbers, which presumably correspond to the attachment number associated with the exhibits on CM/ECF (ie., Ex. A is attachment 

1). The Court refers to the exhibits by number for consistency. 

2

 DCSSOF refers to Defendants’ Controverting and Supplemental Statement of Facts in Response to Plaintiff’s Motion for Summary Judgment. (Doc. 48.) 

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Kesler was paid a commission for each license he sold and he purchased a license for use 

on his own site, “allpoolandspaparts.com” (Kesler’s site). (PSSOF ¶ 8; DCSSOF ¶ 8.) 

 During 2014, Kesler introduced Brian Morris, owner of Ugly Pools Arizona, Inc., 

and the trade name “We Fix Ugly Pools” (WFUP) (collectively “Defendants”), to 

Plaintiff as a potential licensee. (PSSOF ¶ 13; DCSSOF ¶ 13.) Defendants build and 

remodel swimming pools, and sell pool supplies and accessories in Maricopa County, 

Arizona and surrounding areas. (PSSOF ¶ 14; DCSSOF ¶ 14.) Defendants represented 

themselves to Plaintiff as prospective customers who were considering purchasing a 

license of SPSO’s Platform to create a website for their business. (PSSOF ¶ 15; 

DCSSOF ¶ 15.) 

 Plaintiff provided Defendants access to Kesler’s copy of the Platform to assist 

them in making a purchasing decision. (PSSOF ¶ 16; DCSSOF ¶ 16.) Plaintiff alleges 

that “Defendants were aware that they would have to purchase a license to be authorized 

to have further access to the Platform — that is, to use it commercially — and that the 

SPSO license governed the nature of their use of the Platform.” (PSSOF ¶ 16; Ex. 5.) 

Defendants dispute this assertion and argue that Morris did not see Kesler’s license “until 

much later.” (DCSSOF ¶ 16.) 

 Unbeknownst to Plaintiff, Defendants and Kesler were working together and had 

formed a partnership for Morris to manage and redesign Kesler’s site. (PSSOF ¶ 19, 

Ex. 2 at 37; DCSSOF ¶ 18.). Defendants admit to downloading “Kesler’s version of the 

Platform” on September 16, 2014. (DCSSOF ¶ 19; Doc. 46 at ¶ 27.) Plaintiff alleges 

that Defendants “downloaded a complete copy of SPSO’s platform.” (PSSOF ¶ 19.) 

Plaintiff alleges that after the download, Defendants stopped communicating with 

Plaintiff. (PSSOF ¶ 20, Ex. 1 at 8.) Defendants dispute that they stopped communicating 

with Plaintiff and assert that they continued to communicate with Plaintiff “through 

Kesler.” (DCSSOF ¶ 20 (citing Doc. 39, Ex. B).) 

 Plaintiff alleges that nearly a year later, Defendants published a website located at 

allpoolsupplies.com (APS), which was nearly identical to the Platform. (PSSOF ¶ 22 

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(citing Ex. 7); Doc. 39, Exs. C, D, E, F.)3 Plaintiff asserts that Defendants admitted to 

copying the Platform and creating APS, a derivative site. (PSSOF ¶22; Doc. 44, Ex. 4 

(response to request for admissions No. 7 and 8; Doc. 44, Ex. 3 at 19).) Defendants deny 

that they copied the Platform and created APS as a derivative site. (DCSSOF ¶ 22.) 

Instead, Defendants state that they “made a duplicate copy of Kesler’s site as a test site, 

in furtherance of their partnership with Kesler to improve Kesler’s site.” (DCSSOF 

¶ 22.) Defendants admit “to going live with APS” as a test site. (PSSOF ¶ 23; DCSSOF 

¶ 23.) The site was “launched live on the internet as a fully functioning site through 

which customers could, and did place orders.” (PSSOF ¶ 24; DCSSOF ¶ 24.) This site 

was live concurrently with Kesler’s site, was independently hosted by Defendants, and 

had a separate license through BigCommerce for backend services. (PSSOF ¶ 25; 

DCSSOF ¶ 25.) 

 Plaintiff alleges that Defendants’ site “wholly incorporated the original photos and 

content from the Platform into APS and then attached a WFUP copyright notice.” 

(PSSOF ¶ 28.) Plaintiff alleges that Defendants “intentionally altered the copyright 

management information (CMI) from Plaintiff’s demo site, ‘Copyright 2015 Pool and 

Spa Parts Now,’ to ‘Copyright 2015 We Fix Ugly Pools’ in order to further conceal the 

infringement.” (PSSOF ¶ 28.) Defendants dispute that they altered Plaintiff’s CMI. 

(DCSSOF ¶ 28.) Defendants state that Kesler’s licensed site had the following CMI, 

“Copyright 2014 All Pool and Spa Parts.” (DCSSOF ¶ 28.) 

 Plaintiff discovered Defendants’ allegedly infringing website on July 15, 2015 and 

notified Defendants of the alleged infringement that same day. (PSSOF ¶ 36; DCSSOF 

¶ 35.) Defendants took the website down after receiving a takedown notice from 

Plaintiff. (DCSSOF ¶ 40.) On September 17, 2015, Plaintiff filed its original complaint 

 

3

 Defendants dispute this assertion on the ground that Plaintiff did not submit the correct Exhibit 7 with its motion for summary judgment. (DCSSOF ¶ 21.) Plaintiff’s statement of facts describes Exhibit 7 as an “email,” but the Exhibit 7 (or G) is Plaintiff’s responses to discovery requests. (Doc. 46, Ex. 7.) However, Plaintiff submitted other evidence to support this assertion (PSSOF ¶ 22 (citing Doc. 39, Exs. C, D, E, F)), therefore, the Court rejects this objection. 

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alleging copyright infringement under the United States Copyright Act and unfair 

competition under Arizona law. (Doc. 1.) On June 17, 2016, Plaintiff filed the FAC 

adding a claim for violation of the Digital Millennium Copyright Act. (Doc. 39.) 

B. Plaintiff’s Copyright Registration 

 On September 13, 2015, four days before filings its original complaint, Plaintiff 

filed a copyright registration application with the copyright office for a work titled 

“SPSO Website www.poolandspapartsnow.com” (the Work). (Doc. 53, Ex. A.) The 

application stated that “the website will be sent on a thumb drive [that] contain[s] the 

complete website in a ZIP file as well as the complete site in a set of folders unzipped” 

(the Deposit). (Id.) The registration application identified the Work’s year of completion 

as 2015, and the date of first publication as August 26, 2015. (Id.) The application 

identified the copyright claim in the Work as including “new material” identified as “text, 

photograph(s), computer program” and excluding “text, photograph(s), computer 

program, artwork.” (Doc. 50, Ex. 9.) 

 On September 20, 2016, the copyright office contacted Plaintiff’s counsel 

regarding “problems” with information in the application related to the identity of the 

original copyright owner. (Doc. 53, Ex. E; Doc. 53-5 at 2.) Plaintiff responded that 

SPSO was the owner of the text, photographs, and computer programs claimed in the 

application. (Doc. 53, Ex. E; Doc. 53-5 at 3-5.) 

 On October 6, 2016, the copyright office again contacted Plaintiff and asked 

“[s]ince this application is to register the website as it appeared (published) on 8/26/2015, 

was any of the computer code or were any of the photographs from an earlier version of 

the website?” (Doc. 53, Ex. F.) The copyright office explained that any photographs or 

code that appeared in earlier website versions “must be excluded from this claim since 

the extent of claim for a revised, or derivative, work is based only on the new and revised 

material contained in the later version of the work.” Id. Plaintiff’s counsel responded 

that some of the Deposit’s content “may have been from an earlier version of the website 

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BUT we need special dispensation because this is the first time registration of the website 

and no copy (i.e., mirror or backup) of the prior website exists.” (Doc. 53, Ex. H.) 

 On October 14, 2016, the copyright office denied the requested exception. 

(Doc. 53, Ex. I.) The copyright office explained that “[w]e can only register the website 

as it appeared on the date on which it was printed, not for any past or future versions.” 

(Id.) The copyright office also stated “if any of the content of the website ever appeared 

online or in any other form previous to the version submitted, please authorize me to 

exclude all of the preexisting material and to limit the claim to the new and revised 

material in this version of the website.” (Id.) In response, Plaintiff’s counsel inquired 

“[o]n what grounds is special dispensation denied? Websites aren’t copyrighted usually 

until they are mature. Therefore, this policy excludes almost every conceivable website 

that is nontrivial from being copyrighted.” (Doc. 53, Ex. J.) The record before the Court 

does not indicate whether the copyright office responded to this inquiry. 

 On November 16, 2016, Plaintiff submitted to the copyright office an affidavit 

from Aaron Hagen, one of Plaintiff’s principals. (Doc. 53, Exs. K, L.) The Hagen 

affidavit states that “SPSO first published the Platform on or about July 3, 2014. It was 

completed on or about June 25, 2014.” (Doc. 53, Ex. K at ¶ 4.) The Hagen affidavit 

further states that “[t]he sample of the Platform provided to the United States Copyright 

Office with SPSO’s Copyright application in 2015 is the same as the website first 

appeared when published on July 3, 2014.” (Id. at ¶ 5.) In an accompanying email, 

Plaintiff’s counsel confirmed that “[t]he Deposit that was submitted correctly represents 

the copy that was first published on July 3, 2014. Counsel did not have sufficient facts at 

the time of application.” (Doc. 53, Ex. L.) 

 On November 17, 2016, a supervisor at the copyright office contacted Plaintiff’s 

counsel, stating “[t]he signed affidavit that you provided states that the website was 

completed on June 25, 2014 and published on July 3, 2014. The original application lists 

the Year of Completion as 2015 and the date of first publication as August 36 [sic], 2015. 

Please confirm that we should update the information on your original application with 

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that which is provided in the [affidavit]. Please do note that the copyright notice on the 

bottom of each webpage submitted as deposit material bears the year 2015.” (Doc. 53, 

Ex. Q at 1-2.) Plaintiff’s counsel responded, “[y]es the information should be updated as 

per the affidavit.” (Id. at 2.) 

 On November 29, 2016, the copyright office issued a certificate of registration. 

(Doc. 50, Ex. 1.) The certificate of registration identifies the year of completion as 2014, 

the date of first publication as July 3, 2014, and the authors of the text and photographs as 

Aaron Hagen and David Hagen. (Id.) It identifies the title of the Work as the SPSO 

Website www.poolandspapartsnow.com. (Id.) Under the heading “limitation of 

copyright claim,” the certificate of registration lists “new material included in the claim,” 

as “text, photographs.”4

 (Id.) The certificate of registration indicates that there is related 

“correspondence.” (Id.) 

II. Summary Judgment Standard 

 A party seeking summary judgment “bears the initial responsibility of informing 

the district court of the basis for its motion, and identifying those portions of [the record] 

which it believes demonstrate the absence of a genuine issue of material fact.” Celotex 

Corp. v. Catrett, 477 U.S. 317, 323 (1986). Summary judgment is appropriate if the 

evidence, viewed in the light most favorable to the nonmoving party, shows “that there is 

no genuine dispute as to any material fact and that the movant is entitled to judgment as a 

matter of law.” Fed. R. Civ. P. 56(a). Only disputes over facts that might affect the 

outcome of the suit will preclude the entry of summary judgment, and the disputed 

evidence must be “such that a reasonable jury could return a verdict for the nonmoving 

party.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986). 

 The nonmoving party may not rely on the mere allegations in the pleadings, but 

must set forth by affidavit, or other appropriate evidence, specific facts showing there is a 

genuine issue for trial. Liberty Lobby, 477 U.S. at 249. The nonmoving party must 

 

4

 A copyright claim is an assertion of copyright ownership in a work. See 17 

U.S.C. § 101. 

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produce at least some “significant probative evidence tending to support” its position. 

Smolen v. Deloitte, Haskins, & Sells, 921 F.2d 959, 963 (9th Cir. 1990). The issue is not 

whether the “‘evidence unmistakably favors one side or the other but whether a fairminded jury could return a verdict for the [nonmoving party] on the evidence presented.’” 

United States ex rel. Anderson v. N. Telecom, Inc., 52 F.3d 810, 815 (9th Cir. 1995) 

(quoting Liberty Lobby, 477 U.S. at 252). This requires more than the “mere existence of 

a scintilla of evidence in support of the [nonmoving party’s] position[;]” there must be 

“evidence on which the jury could reasonably find for the [nonmoving party].” Liberty 

Lobby, 477 U.S. at 252. “If a moving party fails to carry its initial burden of production, 

the nonmoving party has no obligation to produce anything, even if the nonmoving party 

would have the ultimate burden of persuasion at trial.” Nissan Fire & Marine Ins. Co. v. 

Fritz Cos., 210 F.3d 1099, 1102-03 (9th Cir. 2000). The Court considers the motions for 

summary judgment under this standard. 

III. Count One — Copyright Infringement 

Plaintiff alleges that Defendants committed copyright infringement by “willfully 

and unlawfully reproduc[ing], publicly display[ing], and creat[ing] derivative versions of 

copyrighted elements of the Platform verbatim.” (Doc. 39 at ¶ 38.) In its pending 

motion, Plaintiff argues that it is entitled to summary judgment on this claim because 

Defendants admitted to reproducing and distributing SPSO’s Platform. (Doc. 42 at 4.) 

Plaintiff further argues that the Court must reject Defendants’ defense that, based on their 

relationship with Kesler, they had a license to use the Platform. (Id.) Plaintiff asserts 

that this defense fails because Kesler had a non-exclusive license and could not grant 

rights that had not been expressly granted to him. (Id.) 

 Defendants also seek summary judgment on Plaintiff’s copyright infringement 

claim. Defendants argue that (1) Plaintiff did not allege or prove that the copyright office 

received its complete copyright application before Plaintiff filed its original complaint, 

(2) the copyright application identifies a work that was completed and published after 

Defendants’ alleged infringement, (3) the copyright application identifies a work that was 

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“made for hire,” which would have been impossible for the allegedly infringed work, 

(4) the copyright application identifies a work with fewer authors and owners than the 

allegedly infringing work, and (5) Plaintiff was not assigned the right to sue for the time 

period of Defendants’ alleged infringement. (Doc. 45 at 3.) 

 The Court considers the parties’ arguments on Count One in the context of the 

requirements of the Copyright Act, and with its analysis of Defendants’ motion for an 

order directing Plaintiff to cancel or amend its copyright registration. (Doc. 53.) As set 

forth below, the Court finds that the mandatory referral procedures of 17 U.S.C. 

§ 411(b)(2) apply to determine whether Plaintiff properly registered its copyright and met 

the preconditions of a copyright infringement suit and, therefore, denies the parties’ cross 

motions for summary judgment on Plaintiff’s copyright infringement claim. The Court 

does not address the parties’ remaining arguments on Count One. 

 A. The Copyright Act 

Copyright protection applies to “original works of authorship fixed in any tangible 

medium of expression.” 17 U.S.C. § 102(a). A copyright, as a right, “subsists from its 

creation . . . .” See 17 U.S.C. § 302(a). “A website in and of itself is not explicitly 

recognized as copyrightable subject matter.” COMPENDIUM OF U.S. COPYRIGHT OFFICE 

PRACTICES, Glossary, §1006 (3d ed. 2014) (Compendium III). Rather “[a] website is 

merely a medium of fixation for works of original authorship . . . it is a vehicle for the 

dissemination of content, which may or may not be copyrightable.” Id. “[I]t is the 

content of the website — not the medium of expression — that comprises the 

copyrightable authorship that may be registered with the U.S. Copyright Office.” Id. 

 “Under the Copyright Act, copyright protection provides an owner with exclusive 

rights to reproduce the copyrighted work, to prepare derivative works from the 

copyrighted work, to distribute copies of the copyrighted work, and to perform or display 

the copyrighted work.” 17 U.S.C. § 106. Anyone who violates any of those exclusive 

rights is an infringer of the copyright of the author, and the legal or beneficial owner of 

the exclusive right is entitled to sue for infringement under 17 U.S.C. § 501(a)-(b). 

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 To establish a prima facie case of copyright infringement, a plaintiff must prove 

(1) ownership of a valid copyright, and (2) that the alleged infringer violated at least one 

of the exclusive rights granted under § 106. See A & M Records, Inc. v. Napster, Inc., 

239 F.3d 1004, 1013 (9th Cir. 2001). “In any judicial proceeding the certificate of 

registration made before or within five years after first publication of the work shall 

constitute prima facie evidence of the validity of the copyright and of the facts stated in 

the certificate.” 17 U.S.C. § 410(c). 

B. Precondition to bringing a Copyright Infringement Claim 

 Registration of a copyrighted work is not required for copyright protection. 17 

U.S.C. § 408(a). However, registration is a precondition for bringing a civil action for 

copyright infringement. 17 U.S.C. § 411(a) (providing that “no action for infringement 

of the copyright in any United States work may be instituted until registration of the 

copyright has been made in accordance with this title.”). The registration requirement 

does not restrict a court’s subject matter jurisdiction. Cosmetic Ideas, Inc., v. 

IAC/Interactivecorp, 606 F.3d 612, 614-15 (9th Cir. 2010) (citing Reed Elsevier, Inc., v. 

Muchnick, 559 U.S. 154, 130 S. Ct. 1237, 1241 (2010)). 

 The Ninth Circuit has held that the copyright office’s receipt of a completed 

application is sufficient for purposes of initiating copyright infringement litigation, and 

that the processes of copyright registration and an infringement case can proceed 

concurrently. Cosmetic Ideas, Inc., 606 F.3d at 619-21. Even rejection of a registration 

application does not bar a civil suit, if the copyright office has been notified of the 

litigation and served with a copy of the complaint. Id. at 619 (citing 17 U.S.C. § 411(a) 

(permitting an applicant to bring an infringement action after the register has rejected the 

applicant’s registration, so long as the register is notified of the suit and served with the 

complaint)). The copyright office may become party to the suit, but it is the court’s 

responsibility to determine the validity of a plaintiff’s copyright claim. 17 U.S.C. 

§ 411(a). After a copyright registration certificate is issued, it dates back to the date of 

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the application and the certificate includes the effective date of the registration. 

17 U.S.C. § 401(a), (d). 

 1. The Allegedly Infringed Material

 Because Plaintiff must register its copyright before bringing a copyright 

infringement suit, see Cosmetic Ideas, Inc., 606 F.3d at 619-21, the Court must first 

determine what constitutes the allegedly infringed copyrighted material and whether 

Plaintiff registered its copyright in that material. Unfortunately, the FAC and the briefing 

on the motions for summary judgment do not clearly identify the copyrighted material. 

 The FAC alleges that SPSO’s Platform “consists of, inter alia, a compilation of 

programs, representations, originally authored works and writings, computer architecture 

and design . . . .” (Doc. 39 at ¶ 10.) The FAC identifies the “protectable elements” of the 

Platform as “the original written content, photos, graphics, selection and arrangement of 

both individually protectable and unprotectable elements, and other unique expressions 

set forth in the Platform.” (Id. at ¶ 27.) Plaintiff alleges that Defendants infringed the 

“copyrighted elements” in the Platform. (Id. at ¶ 30.) However, Plaintiff’s motion for 

summary judgment, filed on October 23, 2016, asserts that the copyrighted content on its 

Platform “is made up primarily of over six hundred (600) photographs and the software 

required to show them in a 360-degree view — both photos and software are 

presumptively copyrightable material and Defendants have no evidence to refute same.” 

(Doc. 43 at 5, 10.) 

 On November 29, 2016, the Register of Copyrights issued Plaintiff a certificate of 

registration. (Doc. 50, Ex. 1.) Although Plaintiff applied for a copyright registration in 

“text, photograph(s), computer program” (Doc. 50, Ex. 9), Plaintiff later advised the 

copyright office that it was “no longer interested in registering the code[,] thereby 

reducing the scope of the claim to the product pictures (not the 360 version) and the text 

description of those pictures.” (Doc. 55 at 14; Doc. 53, Ex. GG.) The certificate of 

registration is for “text, photographs.” (Doc. 50, Ex. 1.) 

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 On January 9, 2017, in its response to Defendants’ motion for an order directing 

Plaintiff to cancel or amend its copyright registration, Plaintiff further limited its 

description of the copyrighted content to a “collection of photos.” (Doc. 56 at 6 

(referring to “the collection of photos at issue in this case”).) Based on Plaintiff’s 

January 9, 2017 limitation of the copyrighted material, and the certificate of registration, 

the Court concludes that for purposes of its infringement claim, Plaintiff’s reference to 

“copyrighted content” refers to the copyrighted photos that appear on its website 

www.poolandspapartsnow.com. (See Doc. 50, Ex. 1; Doc. 50 ¶ 4 (citing Exs. 1, 5, 6).)5

 

 2. Whether Plaintiff Satisfied the Registration Precondition 

 In their motion for summary judgment, filed November 9, 2016, Defendants argue 

that Plaintiff’s copyright infringement claim fails because it did not satisfy the 

registration precondition for filing a claim for copyright infringement. (Doc. 45 at 7.) 

Plaintiff responds that it filed an application for copyright registration on September 13, 

2015, before it filed this lawsuit on September 17, 2015, and the copyright office 

subsequently issued a certificate of registration with an effective registration date of 

September 16, 2015. (Doc. 49 at 2.) 

 The record reflects that Plaintiff’s application for registration of copyright was 

dated September 13, 2015, and that the copyright office received the application on 

September 15, 2015. (Doc. 50, Ex. 9; Doc. 53, Ex. B.) The copyright office issued a 

certificate of registration for “text, photographs,” with September 16, 2015 as the 

effective date of registration. (Doc. 50, Ex. 1.) After a certificate of registration of 

copyright is issued, the registration dates back to the date of application. Cosmetic Ideas, 

606 F.3d at 616 (citing 17 U.S.C. § 410(d) (concluding that plaintiff satisfied the 

registration requirement when plaintiff submitted an application for registration of 

 

5

 To the extent that Plaintiff claims Defendants infringed other copyrightable content on the website (or its Platform), its claim fails because during the registration process Plaintiff limited its copyright claim to product pictures and text descriptions of those pictures (Doc. 53, Ex. GG), and the copyright registration is only for text and photographs that are content on the website www.poolandspapartsnow.com. (Doc. 50, Ex. 1) Therefore, Plaintiff does not satisfy the precondition for bringing an infringement action for any additional copyrighted material. See 17 U.S.C. § 411(a). 

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copyright before it filed suit and the copyright office subsequently issued a registration 

certificate)). 

 The registration was effective September 16, 2015, before Plaintiff filed the 

original complaint and, therefore, Plaintiff may have satisfied the precondition for 

bringing a copyright infringement action. However, Defendants argue that the copyright 

registration is invalid and does not satisfy the registration precondition because Plaintiff 

committed fraud on the copyright office during the registration process by knowingly 

providing false information to the copyright office about the date of first publication and 

the contents of the Deposit. 

 As set forth below, these arguments raised in the cross motions for summary 

judgment on Plaintiff’s copyright infringement claims ― that Plaintiff committed fraud 

on the copyright office and, thus, has not met the registration precondition to filing suit 

― are intertwined with the arguments in Defendants’ motion for an order directing 

Plaintiff to cancel or amend its copyright registration. (Doc. 53.) Therefore, the Court 

considers Defendants’ motion as part of its analysis of the cross motions for summary 

judgment on Plaintiff’s copyright infringement claim. 

C. Motion to Direct Plaintiff to Cancel or Amend its Registration 

 After the briefing on the motions for summary judgment closed, Defendants filed 

a motion for an order directing Plaintiff to cancel or amend its copyright registration 

based on alleged fraud during the registration process.6

 (Doc. 53.) This motion is fully 

briefed. (Docs. 53, 56, 58.) The motion appears to seek two forms of relief: (1) a 

declaratory judgment that Plaintiff’s copyright registration is invalid; and (2) a mandatory 

 

6

 “Cancellation is an action taken by the Copyright Office whereby . . . the registration is eliminated on the ground that the registration is invalid under the applicable law and regulations . . . .” 37 C.F.R. § 201.7(a) (cancellation of completed registrations). The copyright office has stated that it “does not invite, and will generally not respond favorably to, requests to cancel a completed registration by a party other than the owner of the copyright.” Cancellation of Completed Registrations, 50 Fed. Reg. 33065, 33067. Thus, there does not appear to be a mechanism for Defendants to 

challenge the copyright registration certificate directly with the copyright office. 

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injunction directing Plaintiff to take steps with the copyright office to cancel or amend its 

registration. 

 Defendants do not cite any authority indicating that filing a motion in the district 

court is the proper procedure to obtain their requested relief, and they do not identify or 

apply the legal standards applicable to declaratory and injunctive relief.7

 Additionally, 

the cases that Defendants rely upon to support their motion, Syntek Semiconductor Co., 

Ltd. v. Microchip Tech. Inc., 307 F.3d 775, 780 n.1 (9th Cir. 2002), and Urantia Found. 

v. Maaherra, 114 F.3d 955, 963 (9th Cir. 1997), were decided before Congress enacted 

the Prioritizing Resources and Organization for Intellectual Property Act of 2008 (the 

PRO-IP Act amendments), which established a procedure for challenging inaccuracies in 

copyright registrations.8

 See 17 U.S.C. § 411(b)(1), (b)(2). Therefore, the Court denies 

Defendants’ motion for an order directing Plaintiff to cancel or amend its copyright 

registration. (Doc. 53.) However, as discussed in Section III.D.1 and 2, the Court 

considers Defendants’ allegations of fraud during the registration process under the 

standards established by the 2008 PRO-IP Act amendments. 

D. Court Referral to Register of Copyrights 

 1. Procedures under §§ 411(b)(1) and (b)(2) 

 As noted above, in 2008 Congress enacted the PRO-IP Act amendments. Under 

the revised 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 

 

7

 See 28 U.S.C. § 2201 (declaratory judgment act); Kam–Ko Bio–Pharm Trading Co., Ltd. v. Mayne Pharma (USA) Inc., 560 F.3d 935, 943 (9th Cir. 2009) (recognizing that “a party may not make a motion for declaratory relief, but rather, the party must bring an action for a declaratory judgment.”) (citation omitted); see also Winter v. 

Natural Res. Defense Council, Inc., 555 U.S. 7, 20 (2008) (elements for injunctive relief). 

8

 Additionally, Syntek is procedurally distinguishable from the relief Defendants request in their motion because it was an action for a declaratory judgment and the court did not declare the registration invalid, but referred the matter to the copyright office. Syntek, 307 F.3d at 781-82. Similarly, in Urantia Found., 114 F.3d at 963, the court did 

not consider the procedure Defendants request in their motion. Rather, the court 

considered whether an inadvertent mistake on plaintiff’s copyright application for copyright renewal “destroyed the validity of its renewal copyright.” Id. at 961. 

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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 

registration error may bar an infringement action if “the inaccurate information was 

included on the application . . . with knowledge that it was inaccurate” and the 

inaccuracy, “if known, would have caused the Register of Copyrights to refuse 

registration.” (Id.) Section 411(b)(2) provides that “[i]n 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). 

 Congress enacted § 411(b) “to ensure that no court holds that a certificate is 

invalid due to what it considers to be a misstatement on an application without first 

obtaining the input of the Register as to whether the application was properly filed or, in 

the words of § 411(b)(2), whether the inaccurate information, if known, would have 

caused the Register of Copyrights to refuse registration.” DeliverMed Holdings, LLC v. 

Schaltenbrand, 734 F.3d 616, 623-24 (7th Cir. 2013). The parties have not cited, and the 

Court has not found, Ninth Circuit case law interpreting § 411(b). 

 However, courts that have considered § 411(b) agree that when there is a question 

regarding the accuracy of the information contained in a registration, the court’s referral 

of the matter to the Register of Copyrights under § 411(b)(2) is mandatory. See 

DeliverMed, 734 F.3d at 624 (finding that referral under section 411(b)(2) is mandatory); 

Palmer/Kane LLC v. Rosen Book Works LLC, 2016 WL 3042895, at *1 (S.D.N.Y. May 

27, 2016) (“[C]ourts are in agreement that the provision is mandatory in nature . . . .”); 

Roberts v. Gordy, 181 F. Supp. 3d 997, 1008 (S.D. Fla. 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.”); Schenck v. 

Orosz, 2015 WL 2402436, at *6 (M.D. Tenn. May 20, 2015) (“By its terms, § 411(b)(2) 

requires the court to seek an advisory opinion from the Register in any case that ‘alleges’ 

inaccurate information.”); Lennar Homes of Texas Sales & Mktg., Ltd. v. Perry Homes, 

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LLC, 117 F. Supp. 3d 913, 926-27 (S.D. Tex. 2015) (noting that referral of the issue does 

not appear to be discretionary); Olem Shoe Corp. v. Wash. Shoe Co., 2010 WL 3505100, 

at *2 (S.D. Fla. Sept. 3, 2010) (“[T]he statutory language — ‘shall request’ — is 

mandatory.”). In DeliverMed, the Seventh Circuit found that the district court’s 

invalidation of a copyright registration without complying with the procedure provided in 

§ 411(b)(2) was reversible error, even though the parties had not asked the district court 

to invoke that procedure. DeliverMed, 734 F.3d at 624 (stating that “ignoring a clear 

statutory directive due to the inadvertence of the parties would defeat the purpose of 17 

U.S.C. § 411(b)(2) and deprive the Register of its right to weigh in on precisely this 

issue.”). 

 Although the PRO-IP Act amendments to the Copyright Act state that a request 

from a court to the Register of Copyrights is triggered when inaccurate information in a 

copyright application is “alleged,” the Register of Copyrights has stated that “before 

asking the Register of Copyrights 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.” DeliverMed, 734 F.3d at 625 (citing Response of the Register of Copyrights to 

Request Pursuant to 17 U.S.C. § 411(b)(2) in Olem Shoe Corp, 2010 WL 3505100, at *3 

n.4). The Seventh Circuit cautioned “both courts and litigants to be wary of using this 

device [in § 411(b)(2)]” because of the delay it may cause to the case. Id. The Seventh 

Circuit advises district courts to first determine whether a party has demonstrated the 

elements of § 411(b)(1), specifically, “that (1) the registration application included 

inaccurate information; and (2) the registrant knowingly included the inaccuracy in his 

submission to the Copyright Office.” Id. Other courts have followed the Seventh 

Circuit’s approach. See Schenck, 2015 WL 2402436, at *6-*7; Lennar Homes, Ltd, 117 

F. Supp. 3d at 926-27; Palmer/Kane LLC, 2016 WL 3042895, at *1-*2. 

 In their motion for an order directing Plaintiff to cancel or amend its copyright 

registration, Defendants argue that during the copyright registration process Plaintiff 

knowingly provided false information to the copyright office in response to its inquiries 

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about Plaintiff’s application. Those responses modified the application and were 

incorporated into the certificate of registration. (See Doc. 53, Ex. CC (referring to 

modifications to copyright application).) Defendants assert that the copyright registration 

is inaccurate and cite § 411(b), but do not discuss that statute in detail. (Doc. 53 at 2; 

Doc. 58 at 6.) However, the parties have fully briefed the issues that arose during the 

registration process and that are relevant to § 411(b). See DeliverMed, 734 F.3d at 624. 

Therefore, the Court considers the application of § 411(b) to this case without requiring 

additional briefing. 

 

 2. Section 411(b)(1) Requires Referral to the Register of Copyrights 

 Copyright protects original authorship fixed in tangible form. 17 U.S.C § 102(a). 

For works transmitted online, such as a website, “the copyrightable authorship may 

consist of text, artwork, music, audiovisual material (including any sounds), sound 

recordings, etc.” 17 U.S.C. § 102(b). Plaintiff’s copyright registration application was 

based on an online work, the SPSO website www.poolandspapartsnow.com, and the 

Deposit was a “copy” of that website. (Doc. 50, Ex. 9; Doc. 53, Exs. N-1, N-2, N-3.) In 

its September 2015 copyright application, Plaintiff described its claim as “text, 

photograph(s), [and] computer program.” (Id.) The copyright application identified the 

date of first publication as August 26, 2015. (Doc. 50, Ex. 9.) 

 On October 6, 2016, the copyright office asked Plaintiff “[s]ince this application is 

to register the website as it appeared (published) on 8/26/2015, was any of the computer 

code or were any of the photographs from an earlier version of the website?” (Doc. 53, 

Ex. F.) The copyright office explained that any photographs or code that appeared in 

earlier website versions “must be excluded from this claim since the extent of claim for a 

revised, or derivative, work is based only on the new and revised material contained in 

the later version of the work.” Id. Plaintiff’s counsel responded that some of the 

Deposit’s content “may have been from an earlier version of the website BUT we need 

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special dispensation because this is the first time registration of the website and no copy 

(i.e., mirror or backup) of the prior website exists.” (Doc. 53, Ex. H.) 

 On October 14, 2016, the copyright office denied Plaintiff’s request for an 

exception. (Doc. 53, Ex. I.) The copyright office stated that “[w]e can only register the 

website as it appeared on the date on which it was printed, not for any past or future 

versions.”9

 (Id., Ex. I (emphasis added).) The copyright office also stated “if any of the 

content of the website ever appeared online or in any other form previous to the version 

submitted, please authorize me to exclude all of the preexisting material and to limit the 

claim to the new and revised material in this version of the website.”10 (Id.) In response, 

Plaintiff’s counsel inquired “[o]n what grounds is special dispensation denied? Websites 

aren’t copyrighted usually until they are mature. Therefore, this policy excludes almost 

every conceivable website that is nontrivial from being copyrighted.” (Doc. 53, Ex. J.) 

 On November 9, 2016, while Plaintiff’s copyright application was pending, 

Defendants filed a motion for summary judgment arguing that, based on the information 

in the copyright application, Plaintiff’s copyright for the Work completed and published 

in 2015 could not be enforced against Defendants who allegedly downloaded a version of 

the Work on September 16, 2014. (Doc. 45 at 8.) Within a week, on November 16, 

2016, Plaintiff submitted to the copyright office an affidavit from Aaron Hagen stating 

that “SPSO first published the Platform on or about July 3, 2014. It was completed on or 

about June 25, 2014.” (Doc. 51, Ex. K at ¶ 4.) The Hagen affidavit further stated that 

“[t]he sample of the Platform provided to the United States Copyright Office with 

SPSO’s Copyright application in 2015 is the same as the website first appeared when 

 

9

 In this reference to the date the website was “printed,” it appears that the copyright office was referring to publication. See Compendium III, § 1008.6(A). 

10 “For all online works other than computer programs and databases, the registration will extend only to the copyrightable content of the work as received in the 

Copyright Office and identified as the subject of the claim. The application for registration should exclude any material that has been previously registered or published or that is in the public domain. For published works, the registration should be limited to 

the content of the work asserted to be published on the date given on the application.” Copyright Circular 66 (Copyright Registration for Online Works), reviewed July 2012. (available online at www.copyright.gov.) (emphasis added); (Doc. 53, Ex. G.) 

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published on July 3, 2014.” (Id. at ¶ 5.) In an accompanying email, Plaintiff’s counsel 

confirmed that “[t]he Deposit that was submitted correctly represents the copy that was 

first published on July 3, 2014. Counsel did not have sufficient facts at the time of 

application.” (Doc. 53, Ex. L.) 

 On November 17, 2016, a supervisor at the copyright office contacted Plaintiff’s 

counsel, stating “[t]he signed affidavit that you provided states that the website was 

completed on June 25, 2014 and published on July 3, 2014. The original application lists 

the Year of Completion as 2015 and the date of first publication as August 36 [sic], 2015. 

Please confirm that we should update the information on your original application with 

that which is provided in the [affidavit]. Please do note that the copyright notice on the 

bottom of each webpage submitted as deposit material bears the year 2015.” (Doc. 53, 

Ex. Q at 1-2.) Plaintiff’s counsel responded, “[y]es the information should be updated as 

per the affidavit.” (Id. at 2.) 

 On November 17, 2016, Plaintiff also informed the copyright office that its 

copyright claim was for “the photographs and computer code related to the photographs 

that enabled the latter to present a 360 degree view of the product to a prospective 

customer. The Hagens also provided text descriptions of the products. That is the extent 

of the claim.” (Doc. 53, Ex. Q.) Plaintiff explained that “[m]uch of the website code is 

licensed from a third party (i.e. BigCommerce) and SPSO obviously makes no claims 

with respect to that.” Id. 

A few days later, Plaintiff advised the copyright office that it was “no longer 

interested in registering the code . . . .” (Id. at Ex. CC (Nov. 21, 2016 email).) Plaintiff 

specified that it was “interested in registering the website as is with the current deposit 

and the modifications to the application already agreed to.” (Id.) On November 29, 

2016, the copyright office issued a certificate of registration. (Doc. 50, Ex. 1.) The 

certificate of registration identifies the work as “SPSO website 

www.poolandspapartsnow.com,” the year of completion as 2014, and the date of first 

publication as July 3, 2014. (Id.) The copyright claim is limited to “text [and] 

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photographs” in the Deposit, which is the SPSO website www.poolandspaparts.now. 

(Doc. 50, Ex. 1.) 

 Defendants argue the certificate of registration is inaccurate because it is based on 

a Deposit that does not represent the website as it existed on July 3, 2014, which is the 

modified date of publication that Plaintiff provided to the copyright office during the 

registration process. (Doc. 53 at 6); see Compendium III, § 1010.5 (the deposit material 

must match the material claimed in the application). In other words, Defendants argue 

that the Deposit does not match the claim in the application (as it was modified by 

Plaintiff’s correspondence with the copyright office), as required for copyright 

registration. See id. (noting that applicants sometimes provide the date the website was 

first published, “but instead of depositing the content that appeared on the website as of 

that date the applicant deposits the content that appeared on the website on the date that 

the application was filed.”). Therefore, Defendants argue that the date of first publication 

on the certificate of registration is inaccurate because it is based on a Deposit that 

contains a revised version of Plaintiff’s website, which was not published on July 3, 

2014. (Doc. 53 at 6.) 

 In arguing that the Deposit is a revised version of the website, Defendants argue 

that the Deposit includes material that was added to the website after July 3, 2014. 

Defendants assert that the Deposit includes new material, specifically Nemo products, 

which were added to the website in October 2014. (Doc. 53 at 6-7 (comparing Ex. M-3 

with Ex. N-3, and citing Ex. O).) Defendants also assert that the Deposit includes a new 

webpage, a “Contact Us” page, which was added to the website sometime after January 

14, 2015. (Doc. 53 at 7 (comparing Ex. M-2 at 1 with Ex. N-2 at 1, and comparing 

Ex. N-4 with Ex. P).) 

 Defendants assert that the certificate of registration lists an inaccurate date of first 

publication because Plaintiff submitted false information to the copyright office in 

Hagen’s affidavit. (Doc. 53 at 7.) Defendants assert this affidavit falsely stated that the 

website was first published on July 3, 2014, and that the Deposit (the version of the 

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website submitted to the copyright office) was the same as it appeared on the date of first 

publication, July 3, 2014. (Id.) Defendants argue that the timing of Hagen’s affidavit 

supports a finding a fraud because it was submitted (1) after the copyright office, in email 

correspondence with Plaintiff’s counsel regarding the date of publication included on the 

written application, advised Plaintiff that material published on the website before the 

August 26, 2015 date of first publication would be excluded from the claim, and (2) after 

Defendants filed a motion for summary judgment arguing that if the copyrightable 

material was completed and published on August 26, 2015, then Plaintiff’s infringement 

claim would fail because Defendants’ allegedly infringing conduct occurred in 2014. (Id.

at 4-6.) Defendants assert that once Plaintiff recognized this “fatal defect,” it submitted 

Hagen’s affidavit, which falsely stated that the date of first publication was July 3, 2014, 

and that the Deposit submitted to the copyright office was the same as the website 

appeared on July 3, 2014. (Id. at 5.) 

 Plaintiff does not dispute that “there is additional information contained in the 

Deposit.” (Doc. 56 at 6.) However, it asserts that the presence of new material is “of no 

moment” because with respect to the “photographs that form the gravamen of this 

dispute, the Deposit copy submitted to the USCO was the same as the one that existed on 

July 3, 2014.” (Id. at 7.) Plaintiff’s argument disregards the registration requirement that 

the Deposit — not just the copyrighted material contained in a deposit that is at issue in 

an infringement action — must be the same as it appeared on the date of first publication 

identified on the application. See Compendium III, § 1008.6(A) (stating that “the deposit 

should contain a copy of the content as it existed on the date specified in the 

application.”) The copyright office raised this issue during the registration process when 

it explained that it could only register the website as it appeared on the date it was first 

published. (Doc. 53, Ex. I.) 

 Plaintiff does not sufficiently explain the apparent discrepancy between its 

statements to the copyright office and its statements to this Court. In Hagen’s November 

16, 2016 affidavit, and an email from its counsel, Plaintiff advised the copyright office 

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that “[t]he sample of the Platform provided to the United States Copyright Office with 

SPSO’s Copyright application in 2015 is the same as the website first appeared when 

published on July 3, 2014.” (Doc. 51, Ex. K at ¶ 5; Doc. 53, Ex. L.) However, in its 

briefing on the pending motions, Plaintiff admits that it was not. (Doc. 56 at 6.) 

Additionally, evidence in the record shows that Plaintiff changed its website after July 3, 

2014. (Doc. 53, Exs. M-1, M-2, M-3, N-1, N-2, N-3; Doc. 53, Ex. O.) 

 Plaintiff asserts that the Deposit is essentially the same as the website as it existed 

on July 3, 2014. (Doc. 56 at 9.) Plaintiff, however, does not cite any authority to support 

its position that “essentially the same” satisfies the registration requirement that the 

deposit match the material claimed in the application. In the Compendium III, the 

copyright office describes as a “frequent” issue an applicant’s failure to deposit the 

content of a website as it existed on the date of publication: 

Frequently applicants seek to register published website content, but fail to deposit the content that existed on the 

website as of the date of publication specified in the 

application. In some cases, the applicant provides the date that the website was first published, but instead of depositing the content that appeared on the site as of that date the 

applicant deposits the content the appeared on the website on the date that the application was filed. 

Compendium III, § 1010.5. The Compendium III provides that the “applicant must 

deposit an acceptable copy or phonorecord of the specific version that the applicant 

intends to register and the applicant must provide the correct date of first publication for 

that version.” Id. 

 Here, Plaintiff did not submit to the copyright office a copy of the version of its 

website it intended to register. Based on Plaintiff’s correspondence with the copyright 

office during the registration process, it intended to register the version of its website as it 

existed on July 3, 2014 (Doc. 53, Ex. Q), but it did not submit a copy of that version of 

the website. Plaintiff’s correspondence with the copyright office, including the Hagen 

affidavit, incorrectly represented that the Deposit was “the same as the website first 

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appeared when published on July 3, 2014.”11 But in its filings in this Court, Plaintiff 

admits that the Deposit includes material that was added after July 3, 2014. (Doc. 56 at 

6.) 

 Because the Deposit Plaintiff submitted to the copyright office included material 

that was added after the July 3, 2014 publication date alleged during the registration 

process, the Deposit that Plaintiff submitted did not depict the website as it appeared on 

the date of publication.12 Rather, Plaintiff submitted a Deposit that included a revised 

version of its website and, under the relevant provisions in Compendium III, registration 

is limited to the new material, and the publication date is the date the new material was 

added to the website.13 Compendium III, §§ 1008.5 (Identifying the Specific Version that 

May be Included in the Claim) and 1008.6(A) (Published Website Content). When a 

copyright applicant registers a revised version of a published website, the applicant 

should provide, as the date of first publication, the “month, day, and year that the revised 

content was first posted on that site.” Id. at § 1009.4(A)(2). In such a case, the 

registration “does not cover any material that has been previously published or previously 

registered with the U.S. Copyright Office” and the applicant should exclude such material 

 

11 In this Court, Plaintiff states that the Deposit was essentially the same (Doc. 56 at 9), or that it was the “best available copy” of the website as it existed on July 3, 2014. (Doc. 56 at 6.) Plaintiff, however, did not make these assertions to the copyright office. Rather, it represented to the copyright office that “[t]he sample of the Platform provided to the United States Copyright Office with SPSO’s Copyright application in 2015 is the same as the website first appeared when published on July 3, 2014.” (Doc. 53, Ex. K.) 

12 As Plaintiff argues, the Copyright Act defines publication as “the distribution of copies or phonorecords of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending. The offering to distribute copies or phonorecords to a group of persons for purposes of further distribution, public performance, or public display, constitutes publication. A public performance or display of a work does not of itself constitute publication.” 17 U.S.C. § 101. However, based on the sections of the 

Compendium III related to the registration of websites, the date of publication that should 

be used on an application to register a copyright is not fixed, but depends on the version of a website that the applicant seeks to register. See Compendium III, §§ 1010.6(B), 1008.4(A). 

13 Under this scenario, Defendants assert that the publication date for Plaintiff’s website is October 15, 2014, when the Nemo products were added to the website. 

(Doc. 58 at 4.) Defendants had asserted that the publication date could also be sometime 

in January 2015 when the Contact Us “text” was added to the website. (Doc. 53 at 11- 12.) However, in a later filing, they appear to abandon that argument. (Doc. 58 at 4.) 

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from the claim. Id. at § 1009.8. To register subsequent versions of a published website, 

“the applicant should submit the relevant webpages as they existed on the date that the 

subsequent version was first published.” Id. at § 1010.6(B) (emphasis added); see also

id. at § 1009.4(A) (“the applicant should only provide a date of first publication for the 

specific version that will be submitted for registration. The application should not 

provide a date of publication for any other version of the work that will not be submitted 

to the Office.”). 

 The copyright office’s correspondence with Plaintiff, when read with the 

Compendium III, suggests that the copyright office may have rejected the application 

(with the modified July 3, 2014 date of first publication) had it known that the Deposit 

was not for the July 3, 2014 version of the website, but was for a version of the website 

that had been revised by the addition of new product photographs and a new webpage. It 

does not appear that Plaintiff could register the original version of the website with a 

Deposit that was for a subsequent version of the website. See id. at §§ 1010.5.0 (The 

Deposit Material Must Match the Material Claimed in the Application) and 1008.6(A) 

(stating that “[i]f the applicant subsequently submits an application to register subsequent 

versions of the website, the registration will cover the new or revised material . . . .”); 

(see also Doc. 53, Ex. Q at 1-2.) 

 The Court concludes that the statutory criteria for mandatory referral have been 

satisfied. It is undisputed that the Deposit material did not match the material claimed in 

the application. The application was to register content (photographs and text) on the 

website as of the date of publication specified during the registration process, July 3, 

2014, but Plaintiff deposited the content that appeared on the website on a later date. 

Plaintiff, however, represented to the copyright office that the Deposit was the same as 

the website appeared on July 3, 2014. Plaintiff does not argue that it unknowingly 

provided false information to the copyright office. Instead, Plaintiff argues that its 

inclusion of additional material in the Deposit is “of no moment.” (Doc. 56 at 7.) 

“Whether this inaccurate information is material to the Copyright Office is precisely what 

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the procedure codified at § 411(b)(2) is designed to clarify.” Palmer/Kane, 188 

F. Supp. 3d at 352. 

 Therefore, the Court will issue a request to the Register of Copyrights to advise 

the Court whether knowledge that the Deposit underlying Certificate of Registration TX 

8-268-803 does not depict the content that existed on the SPSO website 

www.poolandspaparts.now on the date of publication identified on the certificate of 

registration, July 3, 2014, but instead depicts content that existed on the SPSO website on 

a later date, would have caused the Register of Copyrights to refuse registration based on 

the July 3, 2014 publication date. The Court, however, will grant each party leave to file 

a notice with the Court proposing up to three questions to submit to the copyright office. 

The parties should explain the basis for the questions, with citations to the record and 

legal authority. The Court will consider those proposals in formulating its request to the 

Register of Copyrights. Considering the issues surrounding the certificate of registration, 

the Court denies the parties’ cross motions for summary judgment on the copyright 

infringement claim without prejudice. 

IV. Count Two — Unfair Competition 

 Count Two of the FAC alleges a claim for unfair competition under Arizona law. 

The FAC alleges that “Defendants have engaged in unlawful business acts or practices by 

committing acts including computer fraud, trespass, and other illegal acts or practices.” 

(Doc. 39 at ¶¶ 41-47.) Plaintiff and Defendants move for summary judgment on this 

claim. (Docs. 43, 45.) 

 In Arizona, the common law doctrine of unfair competition “encompasses several 

tort theories, such as trademark infringement, false advertising, ‘palming off,’ and 

misappropriation.” Fairway Constructors, Inc. v. Ahern, 970 P.2d 954, 956 (Ariz. Ct. 

App. 1998) (internal citations omitted). “[A]n unfair competition claim is preempted 

unless it alleges elements that make it qualitatively different from a copyright 

infringement claim.” Id. Under Arizona law, “[t]he universal test [for unfair 

competition] is whether the public is likely to be confused.” Doe v. Ariz. Hosp. & 

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Healthcare Ass’n, 2009 WL 1423378, at *11 (D. Ariz. Mar. 19, 2009) (quoting Boice v. 

Stevenson, 187 P.2d 648, 653 (Ariz. 1947)). The FAC alleges misappropriation, but does 

not allege palming off. (Doc. 39 at ¶¶ 41-45.) However, Plaintiff’s motion for summary 

judgment asserts that “Defendants attempted to ‘palm off’ Plaintiff’s goods as their own.” 

(Doc. 43 at 16.) Defendants argue that Plaintiff’s motion for summary judgment on this 

theory of unfair competition should be denied, and that the Court should enter summary 

judgment for Defendants on Plaintiff’s claims of unfair competition. (Doc. 47 at 10; 

Doc. 46 at 16-17.) 

A. Palming Off 

 “‘[P]alming off,’ or ‘passing off,’. . . consists of a false representation tending to 

induce buyers to believe that the defendant’s product is that of the plaintiff.” Fairway 

Constructors, 970 P.2d at 956. Typically, “palming off” consists of “an attempt to make 

the purchaser believe that the product of the subsequent entrant is that of his better known 

competitor.” Kaibab Shop v. Desert Son, Inc., 662 P.2d 452, 454 (Ariz. Ct. App. 1982). 

Confusion or deception is a necessary element of palming off. Fairway Constructors, 

970 P.2d at 956; see also, Boice, 187 P.2d at 653 (same); Doe, 2009 WL 1423378, at *11 

(same). 

 Here, however, Plaintiff has not alleged any deception or confusion of Plaintiff’s 

or Defendants’ customers. C.f., Taylor v. Quebedeaux, 617 P.2d 23, 24 (Ariz. 1980) 

(finding unfair competition when two similarly-named rental companies operated in close 

proximity to each other and plaintiff produced evidence of confusion); Liniger v. Desert 

Lodge, 160 P.2d 761, 764 (Ariz. 1945) (finding no unfair competition when similarlynamed and closely-located tourist lodgings competed, but there was no evidence of 

customer confusion). Plaintiff admits that it does not know of any instances of consumer 

confusion. (Doc. 46 at ¶ 49; Ex. A at 163 (Deposition of SPSO through Aaron Hagen) 

(Hagen stated that he did not “know of” any confusion caused by the duplicate website).) 

Therefore, Plaintiff has not stated a claim for unfair competition based on Defendants’ 

alleged ‘palming off’ of Plaintiff’s goods. Accordingly, to the extent that Plaintiff alleges 

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unfair competition based on palming off, the Court denies Plaintiff’s motion for summary 

judgment on that claim and grants summary judgment in Defendants’ favor.14 

B. Misappropriation 

 The FAC alleges that Defendants misappropriated Plaintiff’s confidential 

information, including information about its business model, operating procedures, and 

techniques to gain a competitive advantage in the marketplace. (Doc. 39 at ¶¶ 32, 44-45.) 

Plaintiff moves for summary judgment on this claim arguing that, by downloading the 

Platform, Defendants acquired its “know-how as to its business operations of Plaintiff’s 

electronic storefront,” including how Plaintiff interacted with BigCommerce’s software. 

(Doc. 43 at 15.) In its reply, Plaintiff further explains this claim asserting that by 

downloading the “Platform stored in files,” Defendants “acquired the necessary 

information and coding for interaction with BigCommerce (i.e. shopping cart).” (Doc. 49 

at 14.) Defendants move for summary judgment on this claim, arguing that it is 

preempted and lacks merit. (Doc. 45 at 17; Doc. 47 at 10.) 

 The Arizona Court of Appeals has held that the common law doctrine of unfair 

competition “encompasses several tort theories including misappropriation.” Fairway 

Constructors, 970 P.2d at 956; see also Sutter Home Winery, Inc. v. Vintage Selections, 

Ltd., 971 F.2d 401, 407 (9th Cir. 1992) (explaining that, under Arizona law, an action for 

unfair competition requires the plaintiff to show either “that it was engaged in 

competitive business” with the defendant or that the defendant’s actions “were likely to 

produce public confusion.”) (citations omitted). 

 “Misappropriation involves the unfair taking for profit, at little or no cost, of 

property acquired by another through investment of substantial time and money.” 

Fairway Constructors, 970 P.2d at 957 (internal citations omitted). Under Arizona law, 

misappropriation of confidential information consists of either: 

(a) Acquisition . . . by a person who knows or has reason to 

know that the [information] was acquired by improper means. 

14 Because the Court determines that Plaintiff fails to state a claim for palming off, it does not determine whether that claim is also preempted. 

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(b) Disclosure or use of [information] of another without express or implied consent by a person who either: 

(i) Used improper means to acquire knowledge of the [information]. 

(ii) At the time of disclosure or use, knew or had reason to 

know that his knowledge of the [information] was derived 

from or through a person who had utilized improper means to acquire it, was acquired under circumstances 

giving rise to a duty to maintain its secrecy or limit its use or was derived from or through a person who owed a duty to the person seeking relief to maintain its secrecy or limit its use. 

Ariz. Rev. Stat. § 44–401(2); see also ACT Group Inc. v. Hamlin, 2012 WL 2976724, at 

*7 (D. Ariz. Jul. 20, 2012) (relying on § 44-401(2) for elements of claim of 

misappropriation of confidential information that is not a trade secret). 

 However, misappropriation claims based on copyright are preempted by federal 

copyright law. Fairway Constructors, 970 P.2d at 957 (citing Warner Bros. Inc. v. Am. 

Broad. Cos., Inc., 720 F.2d 231, 247 (2d Cir. 1983)); see also Summit Mach. Tool Mfg. 

Corp. v. Victor CNC Sys. Inc., 7 F.3d 1434, 1442 (9th Cir. 1993) (holding that an unfair 

copying claim is preempted by federal law). Plaintiff does not dispute that state law 

causes of action falling within the scope of the federal Copyright Act are subject to 

preemption. (Doc. 43 at 15); see Laws v. Sony Music Entm’t, Inc., 448 F.3d 1134, 1137 

(9th Cir. 2006). Plaintiff, however, argues that functional aspects of its Platform fall 

outside the scope of the Copyright Act. (Doc. 43 at 15.) 

 Section 301 of the Copyright Act provides that it exclusively governs all legal or 

equitable rights that are equivalent to any rights within the general scope of copyright 

and, therefore, preempts state common law and statutory claims: 

On and after January 1, 1978, all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 in 

works of authorship that are fixed in tangible medium of 

expression and come within the subject matter of copyright as specified by sections 102 and 103 and, whether created before 

or after that date and whether published or unpublished, are governed exclusively by this title. Thereafter, no person is entitled to any such right or equivalent right in any such work under the common law or statutes of any State. 

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17 U.S.C. § 301. Under this section, “[c]opyright preemption is both explicit and broad 

[.]” G.S. Rasmussen & Assoc., Inc. v. Kalitta Flying Serv., Inc., 958 F.2d 896, 904 (9th 

Cir. 1992). The Ninth Circuit uses a two-part test to determine whether the Copyright 

Act preempts particular state law claims. A claim is preempted if: (1) the work at issue 

comes within the subject matter of copyright as described in 17 U.S.C. §§ 102 and 103; 

and (2) the rights granted under the state law are equivalent to the rights contained in 17 

U.S.C. § 106. See See Kodadek v. MTV Networks, Inc., 152 F.3d 1209, 1213 (9th Cir. 

1998); Law, 448 F.3d at 1137-38. 

 Under the first part of the test, a work, or parts of a work, may be unprotected by 

copyright under § 102(b) and yet be within copyright’s subject matter for preemption 

purposes. See Firoozye v. Earthlink Network, 153 F. Supp. 2d 1115, 1124-25 (N.D. Cal. 

2001) (stating that “even if a particular piece of software is not copyrightable because it 

represents an idea itself rather than the expression of an idea, it is clear that computer 

programs in general come within the subject matter of copyright.”). The scope of 

preemption is broader than the scope of protection. “[T]he shadow actually cast by the 

Act’s preemption is notably broader than the wing of its protection.” U.S. ex rel. Berge v. 

Trs. of the Univ. of Ala., 104 F.3d 1453, 1463 (4th Cir. 1997). 

 Under the second part of the test, to avoid preemption, “an unfair competition 

action for misappropriation of time and effort” must “contain[ ] an extra element which 

changes its nature” to something qualitatively different from a copyright claim. Summit, 

7 F.3d at 1439-40; see also Kodadek, 152 F.3d at 1212 (noting test for Copyright Act 

preemption). For this reason, “[t]he common law doctrine of ‘misappropriation’ is 

normally invoked in an effort to protect something of value that is not covered either by 

patent or copyright law.” Fairway Constructors, 970 P.2d at 957. 

 Plaintiff argues that its misappropriation claim is not preempted because the 

Platform that Defendants allegedly copied included elements that are not within the scope 

of the Copyright Act, including “know-how” related to the operations of Plaintiff’s 

electronic storefront, how Plaintiff “operationally dealt with ‘drop shipments,’ and how it 

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interacted with BigCommerce’s software.” (Doc. 43 at 15; Doc. 44, Ex. 1.) Plaintiff, 

however, does not address the second part of the preemption test. (Docs. 43, 49, 51.) 

 1. Subject Matter of Copyright 

 Under the first part of the preemption test, the Court must determine whether the 

“know-how” related to the operations of Plaintiff’s electronic storefront, how Plaintiff 

“operationally dealt with ‘drop shipments,’ and how it interacted with BigCommerce’s 

software” are within the subject matter of copyright. However, Plaintiff’s briefing does 

not provide specific descriptions of these elements of the Platform and does not refer to 

any portions of the record describing these elements. Instead, Plaintiff appears to refer to 

elements of the computer software or computer programs underlying the Platform. 

 Plaintiff argues that its unfair competition claim is not preempted because 

Defendants copied the entire Platform, which includes elements that fall outside of the 

scope of the Copyright Act. (Doc. 43 at 15.) Plaintiff’s assertion, however, contradicts 

its allegations of its unfair competition claim in the FAC, which expressly “incorporates 

by reference all the allegations set forth in 1-40 as if they were fully set forth herein.” 

(Doc. 39 at ¶ 41.) These paragraphs of the FAC include the allegations of copyright 

infringement. (Id.) “Plaintiff cannot both expressly rely on the copyright allegations 

in . . . its state law claim[] and assert that the state law claim[ is] outside copyright’s 

subject matter for purposes of avoiding preemption.” Blue Nile, Inc. v. Ice.Com, Inc., 

478 F. Supp. 2d 1240, 1247 (W.D. Wash. 2007). 

 Plaintiff cites to 17 U.S.C. § 102(b) and appears to argue that its unfair 

competition claim is not preempted because the “functional” aspects of the Platform are 

excluded from copyright protection. (Doc. 43 at 15.) Section 102(b) provides that “[i]n 

no case does copyright protection for an original work of authorship extend to any idea, 

procedure, process, system, method of operation, concept, principle, or discovery, 

regardless of the form in which it is described, explained, illustrated or embodied in such 

a work.” 17 U.S.C. § 102(b). Even if, as Plaintiff asserts, elements of its Platform are 

excluded from copyright protection under § 102(b), “this does not mean that [the 

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Platform] is outside copyright’s subject matter for the preemption purposes under § 301.” 

See Blue Nile, Inc., 478 F. Supp. 2d at 1248. Therefore, Plaintiff’s reliance on § 102(b) is 

misplaced because that section of the Copyright Act does not establish that Plaintiff’s 

state law unfair competition claim based on misappropriation is exempt from preemption. 

 Plaintiff cites Poe v. Missing Persons, 745 F.2d 1238, 1240 (9th Cir. 1984), to 

support its claim that the functional aspects of expression are not copyrightable and are 

outside the scope of the Copyright Act. (Doc. 43 at 15.) In that case, the court 

considered whether the plaintiff could establish a claim of copyright infringement based 

on the copying of an alleged sculptural work. Poe, 745 F.2d at 1241. The court found 

that a disputed issue of material fact existed as to whether the plaintiff’s sculptural work, 

which portrayed an article of clothing, could also function as a swimming suit and, 

therefore, was a useful article that was not copyrightable. Id. at 1242; see also 17 U.S.C. 

§ 101 (defining a useful article as “an article having an intrinsic utilitarian function that is 

not merely to portray the appearance of the article.”). The court noted that if the 

functional aspects of the swimming suit were independent of the sculptural or artistic 

aspects of the swimming suit, it may be copyrightable. Poe, 745 F.2d at 1241 (citing 17 

U.S.C. § 101). In Poe, the court did not consider whether “functional” aspects of 

websites or computer programs are copyrightable and did not address whether such 

“functional” aspects fall outside the scope of the Copyright Act for purposes of 

preemption. 

 Plaintiff also cites Tomaydo-Tomahhdo, LLC v. Vozary, 629 Fed. App’x 658, (6th 

Cir. Oct. 20, 2015) (unpublished). In that case, the Sixth Circuit concluded that a recipe 

book was not original and was not copyrightable. Id. at 662. The court specifically noted 

that “a recipe’s instructions, as functional directions, are statutorily excluded from 

copyright protection.” Id. (citing 17 U.S.C. § 102(b).) Tomaydo-Tomahhdo supports the 

proposition that functional aspects, such as directions, are not copyrightable. However, 

in that case, the court did not consider the preemption of state law claims and therefore 

did not provide any analysis that can be applied to support the conclusion that the 

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“functional” aspects of the Platform are outside the scope of copyright for preemption 

purposes. 

 Plaintiff also cites Lotus Dev. Corp. v. Borland Intern., Inc., 49 F.3d 807, 818 (1st 

Cir. 1994), for the proposition that methods of operation are functional aspects of 

expression that are not copyrightable and therefore cannot be preempted by the Copyright 

Act. (Doc. 43 at 15; Doc. 49 at 15; Doc. 51 at 11.) Plaintiff’s reliance on this case is 

misplaced because it is inconsistent with Ninth Circuit law. See Oracle Am., Inc. v. 

Google, Inc., 750 F.3d 1339, 1365 (Fed. Cir. 2014). In Oracle, the Federal Circuit noted 

that the Ninth Circuit has not adopted the “method of operation” reasoning in Lotus. Id. 

The court found that Lotus was “inconsistent with Ninth Circuit case law recognizing that 

the structure, sequence, and organization of a computer program is eligible for copyright 

protection where it qualifies as an expression of an idea, rather than the idea itself.” Id. 

In Oracle, the court further noted that “while the court in Lotus held that ‘expression that 

is part of a method of operation cannot be copyrighted,’ 49 F.3d at 818, this court — 

applying Ninth Circuit law — reached the exact opposite conclusion, finding that 

copyright protects ‘the expression of [a] process or method.’” Oracle, 750 F.3d at 1366 

(quoting Atari Games Corp. v. Nintendo of Am Inc., 975 F.2d 832, 839 (Fed. Cir. 1992)). 

 In its reply in support of its motion, Plaintiff cites the district court’s decision in 

Oracle Am., Inc. v. Google, Inc., 872 F. Supp. 2d 974, 994 (N.D. Cal. 2012), rev’d and 

remanded, 750 F.3d 1339 (Fed. Cir. 2014), for the proposition that “coding and the 

know-how to make the site functional with an ecommerce application is not exempted 

and is actionable under” unfair competition law. (Doc. 49 at 14-15.) The district court’s 

decision in Oracle does not support that conclusion. In Oracle, the district court held that 

declaring code and the structure, sequence, and organization of thirty-seven packages of 

computer source code (referred to as application programming interfaces) were not 

subject to copyright protection. Oracle Am. Inc., 872 F. Supp. 2d 974. The court did not 

consider whether those particular elements, while not copyrightable, were still within the 

Copyright Act’s subject matter for preemption purposes. 

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 Additionally, the Federal Circuit reversed the district court’s decision in Oracle 

Am., Inc. v. Google, Inc., 750 F.3d 1339 (Fed. Cir. 2014). The Federal Circuit concluded 

that the declaring code and the structure, sequence, and organization of the application 

programming interfaces were entitled to copyright protection. Id. at 1348. The court 

noted that computer programs can be subject to copyright protection as literary works. 

Id. at 1354 (citing 17 U.S.C. § 101). The court further noted that copyright protection 

can extend to “literal (source and object code) and non-literal elements of a computer 

program.” Id. The court noted that source code (“the spelled-out program commands 

that humans can read”) and object code (“the binary language comprised of zeros and 

ones through which the computer directly receives its instructions”) are consistently 

protected by copyright. Id. at 1355 (internal citations omitted.) Literal elements include, 

“among other things, the program’s sequence, structure, and organization, as well as the 

program user’s interface.” Id. The court explained that “‘whether the non-literal 

elements of a program are protected depends on whether, on the particular facts of each 

case, the component in question qualifies as an expression of an idea, or an idea itself.’” 

Id. at 1355-56 (quoting Johnson Controls, Inc. v. Phoenix Control Sys., Inc., 886 F.2d 

1173, 1175 (9th Cir. 1989)). The court, referring to Ninth Circuit law, also rejected the 

argument that elements that perform a function can never be copyrightable. Oracle, 750 

F.3d at 1366 (referring to the Ninth Circuit’s endorsement of the abstraction-filtrationcomparison). 

 The Federal Circuit’s decision in Oracle indicates that coding is copyrightable 

and, thus, Plaintiff’s claim based on the misappropriation of “coding” is within the 

subject matter of copyright. See Oracle, 750 F.3d at 1355. The Oracle decision also 

illustrates the complexities of copyright law in the context of computer programs and 

related matters, and indicates that whether computer programs and their components are 

entitled to copyright protection varies based on the facts. Id. at 1354-71. Based on the 

intricacies of copyright law in this realm, the Court concludes that although aspects of 

computer programs may not be eligible for copyright protection, computer programs, 

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including “coding” and information about the “file structure” of a website (Doc. 49 at 

14), are within the subject matter of the Copyright Act. See Johnson Controls, Inc., 886 

F.2d at 1175. Thus, the Court concludes that the aspects of the Platform, as described in 

Plaintiff’s motion for summary judgment (Doc. 43 at 15), and its reply (Doc. 49 at 14), 

are within the subject matter of copyright. 

 2. Extra Element Not Included in Copyright Claim 

 Plaintiff does not address the second part of the Ninth Circuit’s two-part test for 

preemption and, therefore, does not explain how its state law unfair competition claim 

includes an “extra element” that is not included in its copyright infringement claim. 

(Doc. 43 at 15-16); see Del Madera Props. v. Rhodes & Gardner, Inc., 820 F.2d 973, 977 

(9th Cir. 1987) (discussing the equivalent rights part of the preemption test). As alleged 

in the FAC, Plaintiff’s unfair competition claim, including allegations of 

misappropriation, incorporates and relies on the same allegations as its copyright claims. 

(Doc. 39 at ¶ 41 (incorporat[ing] by reference all the allegations set forth in 1-40 as if 

fully set forth herein.”).) Thus, “plaintiff's unfair competition claim is . . . preempted 

because by incorporating the copyright claims by reference, the unfair competition claim 

is based on rights equivalent to those protected by copyright.” See Blue Nile, Inc., 478 

F. Supp. 2d at 1250 (citing Litchfield v. Spielberg, 736 F.2d 1352, 1358 (9th Cir. 1984)). 

 Furthermore, the gravamen of Plaintiff’s claims is that Defendants copied 

Plaintiff’s copyrighted website. Under § 106 of the Copyright Act, the copyright owner 

has the exclusive right “to reproduce the copyrighted work.” 17 U.S.C. § 106. Plaintiff’s 

allegation that Defendants misappropriated Plaintiff’s confidential information to gain a 

competitive edge in the marketplace (Doc. 39 at ¶¶ 32, 44-45) does not change the 

underlying nature of the action. See Blue Nile, Inc., 478 F. Supp. 2d at 1250 (citations 

omitted); see also Act Group, Inc, 2012 WL 2976724 at *8 (explaining that claim for 

misappropriation of information did not contain extra element changing its nature to 

something qualitatively different from a copyright claim, and noting that claims that 

courts have found not pre-empted, such as trade secret, negligent misrepresentation, or 

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breach of contract, include an extra element). “The underlying nature of Plaintiff’s unfair 

competition claim ‘is part and parcel of a copyright claim.’” Blue Nile, Inc., 478 

F. .Supp. 2d at 1250 (quoting Laws, 448 F.3d at 1144).) Thus, Plaintiff has not shown 

that its allegations that Defendants copied its Platform are based on rights that are not 

equivalent to those protected by federal copyright law. 

 Therefore, the Court concludes that both parts of the preemption test are met and 

that Plaintiff’s unfair competition claim based on a theory of misappropriation is 

preempted by the Copyright Act. The Court denies Plaintiff’s motion for summary 

judgment on the misappropriation claim included in its unfair competition claim (Count 

Two), and grants Defendants’ motion for summary judgment on that claim. 

V. Count Three — Integrity of Copyright Management Information 

 Count Three of the FAC alleges that Defendants violated the Digital Millennium 

Copyright Act (DMCA). (Doc. 39 at ¶¶ 20, 48-50.) Specifically, Plaintiff brings two 

sub-causes of action under 17 U.S.C. §§ 1202(a) and (b). Under § 1202(a), Plaintiff 

asserts a falsification claim, which requires Plaintiff to establish that Defendants 

“knowingly and with the intent to induce, enable, facilitate, or conceal 

infringement . . . provide[d] copyright management information that is false.” See 17 

U.S.C. § 1202(a). Under § 1202(b), Plaintiff asserts a removal claim, which requires 

Plaintiff to establish that Defendants “intentionally remove[d] or alter[ed] any copyright 

management information” with the intent to conceal Defendants’ infringing conduct. See

17 U.S.C. § 1202(b). 

 The DMCA defines “copyright management information” (CMI), with a list 

including, but not limited to: (1) the title or other information identifying the work, 

(2) the name of or other information identifying the author of the work, and (3) the name 

of, and other identifying information, about the copyright owner of the work. 17 U.S.C. 

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§ 1202(c). Plaintiff and Defendants seek summary judgment on Plaintiff’s DMCA 

claim.15 (Docs. 43, 45.) 

A. Section 1202(b) Removal Claim 

 To state a claim for removal of CMI under 17 U.S.C. § 1202(b), a plaintiff must 

allege that a defendant: (1) without authority of the copyright owner or the law; 

(2) intentionally removed or altered CMI; (3) knowing or having reasonable grounds to 

know that the removal would induce, enable, facilitate, or conceal an infringement of the 

federal copyright laws.16 17 U.S.C. § 1202(b)(1). Information constitutes CMI if, among 

other criteria, it includes “(1) [t]he title or other information identifying the work, 

including the information set forth on a notice of copyright, (2) [t]he name of, and other 

identifying information about, the author of the work, [or] (3) [t]he name of, and other 

identifying information about, the copyright owner of the work, including the information 

set forth in the notice of copyright.” 17 U.S.C. § 1202(c). 

 Plaintiff alleges Defendants violated § 1202(b) by removing “from the webpage” 

the following CMI: “Copyright 2015 Pool and Spa Parts Now.” (Doc. 39 at ¶ 19; 

Doc. 43 at 13.) Defendants claim that they did not remove Plaintiff’s CMI because they 

copied Kesler’s licensed version of the website that did not include Plaintiff’s CMI.17 

(Doc. 45 at 14.); see 17 U.S.C. § 1202(b)(2). The parties agree that “Defendants copied 

 

15 In their motion, Defendants argue, among other things, that they are entitled to summary judgment because Plaintiff “never sought the benefit of 17 U.S.C. § 1202.” (Doc. 45 at 15.) Defendants do not clearly articulate this argument and do not cite any legal authority indicating that a plaintiff must “seek the benefit” of § 1202 to state a claim under that section. (Id. at 15-16.) The Court, therefore, does not consider this unsupported argument. 

16 Defendants suggest that distribution is a necessary element of Plaintiff’s § 1202 claims. (Doc. 47 at 9.) Distribution may violate §§ 1202(a)(2) or 1202(b)(2) and (3). Plaintiff, however, does not allege that Defendants violated those subsections. (Doc. 39 at ¶¶ 48-51.) The Court, therefore, does not consider Defendants’ distribution arguments. 

17 Defendants assert that the Kesler website contained information listing as user/liscensee “Mark Kesler d/b/a All Pool and Spa Parts,” which Defendants claim is 

excluded from the definition of CMI. (Doc. 45 at 15 (citing 17 U.S.C. § 1202).) However, Defendants also assert that the Kesler website included a “copyright notice” stating “Copyright 2014 All Pool and Spa Parts.” (Doc. 46 at ¶ 28.) Thus, the Court rejects Defendants’ assertion that the Kesler website did not include any CMI. 

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the Platform from Kesler’s website” and then created a derivative website. (Doc. 51 at 8; 

see also Doc. 45 at 14; Doc. 46 at ¶ 27; Doc. 46, Ex. A at 74-75; Doc. 51 at 8.) Kesler’s 

website included the following statement: “Copyright 2014 All Pool and Spa Parts.” 

(Doc. 46 at ¶ 28; Doc. 46, Ex. E at 5.) Defendants argue that “Copyright 2014 All Pool 

and Spa Parts” was not Plaintiff’s CMI, which Plaintiff identified as “Copyright 2015 

Pool and Spa Parts Now” in the FAC. (Doc. 39 at ¶ 19.) The record reflects that 

Defendants did not remove that particular CMI. (Doc. 46, Ex. 6.) Rather, the 

information that was removed from Kesler’s version of the website was “Copyright 2014 

All Pool and Spa Parts.” (Id.) 

 Defendants argue that, whether this information is attributed to Plaintiff or Kesler, 

it is not CMI because it does not identify the title, author, or owner of the work. (Doc. 54 

at 8 and 10, n.5 (stating that “the issue is that Kesler’s copyright notice does not contain 

[CMI] regardless of whether Plaintiff’s Platform was on Kesler’s website.”) Courts in 

the Ninth Circuit recognize that § 1202(b) removal claims do not require “literal removal 

from the plaintiff’s original work.” Tiermy v. Moschino S.P.A., 2016 WL 4942033, at *4 

(C.D. Cal. Jan. 13, 2016). Rather, § 1202(c) defines CMI as information “conveyed in 

connection with copies” of a work.18 17 U.S.C. § 1202(c). Thus, if Defendants removed 

Plaintiff’s CMI from Kesler’s licensed version of Plaintiff’s website, without Plaintiff’s 

authorization, they violated § 1202(b). 

 Plaintiff alleges that it is the owner of the copyrighted material on Kesler’s 

licensed version of the website. (Doc. 48 at 14; Doc. 49 at 12.) However, the 

information on that website, “Copyright 2014 All Pool and Spa Parts,” which the parties 

refer to as a copyright notice,19 does not identify Plaintiff as the copyright owner or the 

 

18 Additionally, the parties agree that Plaintiff created and controlled the copyright notice on Kesler’s website. (Doc. 54 at 10, n.5.) 

19 Title 17 U.S.C. § 401(b) provides that a copyright notice shall consist of three elements (1) “the symbol © . . . or the word ‘Copyright’, or the abbreviation ‘Copr.’; and (2) the year of first publication of the work . . . ; and (3) the name of the owner of copyright in the work, or an abbreviation by which the name can be recognized, or a generally know alternative designation of the owner.” 

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author of the work. (Doc. 46 at ¶ 28; Doc. 46, Ex. E at 5.) In correspondence with the 

copyright office, Plaintiff’s counsel explained that Plaintiff’s standard practice was to 

create “a series of fictitious names” for the copyright notices on its licensed websites.20 

(Doc. 55 at ¶ 27; Doc. 53, Ex. E.) Thus, the copyright notice on Kesler’s licensed 

website includes “a fictitious name,” not the name of the owner or author of the work. 

(Doc. 53, Ex. E.) Additionally, that information does not identify the title of the work at 

issue, which Plaintiff has identified as content on its website, 

www.poolandspapartsnow.com. (Doc. 50, Exs. 1, 9.) 

 Therefore, the Court finds that the copyright notice on Kesler’s version of the 

website is not Plaintiff’s CMI, under the criteria of the DMCA. See 17 U.S.C. § 1202(c). 

Thus, Defendants’ removal of the copyright notice “Copyright 2014 All Pool and Spa 

Parts” from Kesler’s website did not result in the removal of Plaintiff’s CMI. Therefore, 

the Court grants Defendants’ motion for summary judgment on Plaintiff’s § 1202(b) 

removal claim, and denies Plaintiff’s motion for summary judgment on that claim. 

B. Section 1202(a) Falsification Claim 

 Section 1202(a) is violated if a person “knowingly and with the intent to induce, 

enable, facilitate, or conceal infringement ― (1) provide[s] copyright management 

 

20 In an email to the copyright office, Plaintiff explained that 

As non-lawyers, the Hagens did not recognize the fact that the copyright notice should have contained SPSO’s name instead 

of what amounts to a fictitious name. Every time SPSO sold 

an instance of its Platform, it would assign the new licensee a 

Domain Name that it owned and hosted on its Platform. It 

adopted the same convention with respect to the copyright notice that it had used for the Demo Site (i.e. the copyright notice contained the new Domain Name instead of SPSO’s 

name). . . . 

SPSO hosted the sites of all its licensees and also owned all 

of the Domain Names that were assigned to same. So as a practical matter, SPSO created a series of fictitious names 

adding a new one every time a license was sold. Although this may not have been technically correct with respect to the copyright notice, the U.S. abandoned technical requirements with the Berne Convention Implementation Act of 1988. 

(Doc. 53, Ex. E.) 

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information that is false, or (2) distribute[s] or import for distribution copyright 

management information that is false.” 17 U.S.C. § 1202(a). Plaintiff argues that 

Defendants violated § 1202(a)(1) by placing false CMI, their copyright notice “Copyright 

2015 We Fix Ugly Pools,” on their derivative website, allpoolsupplies.com. (Doc. 39 

¶ 20; Doc. 43 at 14; Doc. 49 at 12.) Defendants do not dispute that they placed the 

copyright notice “Copyright 2015 We Fix Ugly Pools” on their website. (Doc. 54 at 10.) 

However, they argue that they were authorized to create a derivative website and that the 

CMI they placed on their website was not false because they added new, copyrightable, 

creative content to the website. (Id.) As set forth below, the Court finds that there are 

disputed issues of fact regarding the first element of Plaintiff’s falsification claim ―

Defendants’ intent in placing their copyright notice on their website ― and, therefore, 

summary judgment is precluded. 

 To support its CMI falsification claim, Plaintiff asserts that Kesler’s licensed 

website and Defendants’ unauthorized derivative site contained the same photographs, 

which Plaintiff asserts are its copyrighted photographs.21 (Doc. 50 at ¶ 30; Doc. 52 at 

¶ 29.) Plaintiff asserts that Defendants knew they did not have a copyright for the content 

they posted on allpoolsupplies.com, and knew that the “photos and other content 

originated with Plaintiff.” (Doc. 51 at 10.) Plaintiff further argues that Defendants 

“admit” that they never reviewed Kesler’s licensing agreement with SPSO for the 

Platform, and they did not “bother[] to read the license” that purportedly authorized them 

to copy the Platform, through Kesler’s website. (Doc. 43 at 3.) Thus, Plaintiff argues 

that any defense to its copyright infringement claim based on Defendants’ relationship 

with Kesler must fail. (Id. at 4, 7-9.) 

 Plaintiff’s apparently rely on this argument, that its licensing agreement with 

Kesler did not authorize Defendants to copy Kesler’s website or create a derivative work, 

to argue that Defendants acted intentionally when they placed their copyright notice on 

 

21 Under the Copyright Act, a copyright owner has exclusive rights to authorize or prepare derivative works based upon their copyrighted work. 17 U.S.C. § 106(2). 

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their derivative website in an effort to disguise their “brazen theft” of Plaintiff’s 

copyrighted work. (Id.; see also Doc. 43 at 10 (Plaintiff argues that Defendants intended 

to reproduce and distribute SPSO’s Platform without the latter’s consent and, therefore, 

the Court can “infer” that for Defendants’ “theft to be complete,” they had to “mangle” 

SPSO’s CMI); Doc. 49 at 13 (Plaintiff argues that Defendants knew that using their 

copyright notice would conceal that the “content actually belonged to someone else.”).) 

Therefore, Plaintiff argues that Defendants acted with the intent to provide false CMI. 

 In contrast, Defendants argue that they were authorized to create a derivative 

website from the SPSO website licensed to Kesler, who was also their business partner. 

(Doc. 45 at 14.) Defendants argue that the CMI they added to their derivative website 

was not false because they added new creative content to that website, including heading 

pictures for the home page, and blog entries. (Doc. 54 at 10.) Defendants argue that 

because their website was derivative and they created some of the content on that 

website, they had a copyright in the work they created and, therefore, the CMI is not false 

because it identifies Defendants as author of the content.22 Defendants argue that creators 

of a derivative work may add their own copyright notice but are “not required by law” to 

add a copyright notice about the creator of the original material upon which the derivative 

work was based. (Id. (citing Doc. 53, Ex. EE, United States Copyright Office Circular 41 

(reviewed 10/2013), Copyright in Derivative Works and Compilations).) 

 Plaintiff and Defendants refer to Defendants’ website as derivative. (See Doc. 43 

at 13-14; Doc. 49 at 12; Doc. 51 at 8-9.) Plaintiff argues that Defendants’ derivative 

website was not authorized and infringed Plaintiff’s copyrighted material. See U.S. Auto 

Parts Network, Inc. v. Parts Geek, LLC, 692 F.3d 1009, 1015 (9th Cir. 2012) (“if a third 

party uses preexisting work in violation of the Copyright Act, . . . , the resulting 

derivative work is not entitled to copyright protection. . . . . [A] derivative author may 

 

22 Defendants are identified in this action as Ugly Pools Arizona, Inc., and Brian 

Morris. The purported CMI on the Defendants’ website is “Copyright 2015 We Fix Ugly Pools.” (Doc. 39, Ex. F.) Neither Plaintiff nor Defendants argue that this difference 

renders the CMI false or has any significance for purposes of § 1202(a). 

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own the copyright in material the author contributed to a preexisting work, but not in 

infringing material or material the author did not create.”) Defendants argue that they 

were authorized to create a derivative website and to copyright the work they created on 

the website. See id. (a derivative work may be independently copyrightable); see also, 

Faulkner Press, LLC v. Class Notes, Inc., 756 F. Supp. 2d 1352, 1359 (N.D. Fla. 2010) 

(concluding that defendant did not add false CMI to product packages because the 

defendants’ product was different from the plaintiff’s product even if it included 

materials from the plaintiff’s work). 

 The parties’ arguments present disputed issues of fact regarding Defendants’ intent 

in placing a copyright notice on its website and whether Defendants believed they were 

authorized to do so. Because the Court determined that it must apply the referral process 

of 17 U.S.C. § 411(b), it did not reach Plaintiff’s arguments about the scope of its 

licensing agreement with Kesler in the context of the parties’ cross motions for summary 

judgment on Plaintiff’s copyright infringement claim. However, even if Plaintiff were to 

prevail on its argument that as a matter of law Defendants cannot rely on the licensing 

agreement as a defense to the copyright infringement claim, Defendants could still 

establish that they believed they were authorized to copy Kesler’s website, create a 

derivative site, and place their copyright notice on that site and, thus, defeat Plaintiff’s 

§ 1202(a) falsification claim for lack of intent. The issue of Defendants’ intent presents a 

credibility issue that may depend on resolving disputes in Kesler’s and Morris’s 

testimony.23 Therefore, the Court denies Plaintiff’s and Defendants’ motions for 

summary judgment on Plaintiff’s 17 U.S.C. § 1202(a) falsification claim. 

VI. Conclusion 

 For the reasons set forth in this order, the Court grants the motions for summary 

judgment in part and denies them in part, as set forth below. The Court also denies 

 

23 See PSSOF ¶ 33, Exs. 2-3 (Defendants assert that they copied Kesler’s website with his consent, but Kesler denied granting consent for Defendants to make a live copy of his site) (Kesler’s and Morris’s depositions); DCSSOF ¶ 33, Ex. A (Kesler gave Morris full authority to improve the Kesler site and was aware of Defendants’ test site) (Kesler Deposition). 

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Defendants’ motion for an order directing Plaintiff to cancel or amend its copyright 

registration. 

 Accordingly, 

IT IS ORDERED that Plaintiff’s and Defendants’ motions for summary judgment 

(Docs. 43 and 45) on Plaintiff’s copyright infringement claim, asserted in Count One, are 

DENIED without prejudice. 

IT IS FURTHER ORDERED that Plaintiff’s motion for summary judgment 

(Doc. 43) on Count Two (unfair competition) and Count Three (violation of DMCA) is 

DENIED. 

IT IS FURTHER ORDERED that Defendants’ motion for summary judgment 

(Doc. 45) on Count Two (unfair competition) is GRANTED. 

IT IS FURTHER ORDERED that Defendants’ motion for summary judgment 

(Doc. 45) on Plaintiff’s removal claim under 17 U.S.C. § 1202(b), asserted in Count 

Three, is GRANTED, and that Plaintiff’s and Defendants’ motions for summary 

judgment (Docs. 43, 45) on Plaintiff’s falsification claim under 17 U.S.C. § 1202(a), 

asserted in Count Three, are DENIED. 

IT IS FURTHER ORDERED that within fourteen days of this Order, Plaintiff 

and Defendants may submit to the Court three proposed questions each for the Court to 

present to the Register of Copyrights consistent with the Court’s discussion in Section 

III.D of this Order. 

IT IS FURTHER ORDERED that Defendants’ motion for on order directing 

Plaintiff to cancel or amend its copyright registration (Doc. 53) is DENIED. 

 Dated this 9th day of June, 2017. 

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