1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

WO

IN THE UNITED STATES DISTRICT COURT 

FOR THE DISTRICT OF ARIZONA 

SellPoolSuppliesOnline.com LLC,

Plaintiff, 

v. 

Ugly Pools Arizona Inc., et al., 

Defendants. 

No. CV-15-01856-PHX-BSB

ORDER 

 Plaintiff SellPoolSuppliesOnline.com LLC (“Plaintiff” or “SPSO”) and 

Defendants Ugly Pools Arizona, Inc. and Brian Morris (“Defendants”) have filed second 

cross-motions for summary judgment on Count One of the First Amended Complaint 

(“FAC”), in which Plaintiff asserted a claim for copyright infringement under the United 

States Copyright Act, 17 U.S.C. § 501(a) (the “Copyright Act”). (Docs. 78, 79.) For the 

reasons below, the Court grants Defendants’ motion and denies Plaintiff’s motion. 

I. Factual and Procedural Background

 Plaintiff asserted the following three counts in the FAC: (1) copyright 

infringement under the 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.) The parties previously filed cross-motions for summary 

judgment on all three counts of the FAC, including Count One. (Docs. 43, 45.) On June 

9, 2017, the Court denied both motions for summary judgment on Count One without 

Case 2:15-cv-01856-BSB Document 95 Filed 09/24/18 Page 1 of 26
- 2 - 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

prejudice.1 (Doc. 64 at 42.) The Court granted summary judgment in favor of 

Defendants on Count Two. (Id.) The Court granted summary judgment in favor of 

Defendants on Plaintiff’s removal claim under 17 U.S.C. § 1202(b), asserted in Count 

Three. (Doc. 64 at 42.) The Court denied both motions for summary judgment on 

Plaintiff’s falsification claim under 17 U.S.C. § 1202(a), asserted in Count Three. (Id.) 

This order addresses only the parties’ second cross-motions for summary judgment on 

Count One. In a separate order the Court addresses Defendants’ third motion for 

summary judgment on Plaintiff’s falsification claim, asserted in Count Three. (Doc. 86.) 

A. General Background Regarding the Copyright Dispute 

 Plaintiff describes its business as licensing pre-made websites that it refers to as 

“the Platform.” (Doc. 78-1 ¶ 1.)2

 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.” (Id., ¶ 2.) As delivered to customers, the Platform incorporates 

and effectively uses search engine optimization (“SEO”) and provides “drop-ship” 

delivery that dispenses with the need for customers to maintain inventory. (Id.) Plaintiff 

alleges that it spent three years and “hundreds of thousands of dollars developing the 

Platform.” (Id., ¶ 3.) However, Plaintiff has admitted that “much of the website code” is 

licensed from BigCommerce, a non-party entity that provides “backend electronic 

storefront” services. (Doc. 53, Ex. Q.) 

 

1

 Defendants also filed a motion for an order directing Plaintiff to cancel or amend its copyright registration. (Doc. 53.) The Court denied that motion, but 

considered Defendants’ arguments in its analysis of the parties’ first cross-motions for summary judgment on Count One. (Doc. 64 at 9, 13-14.) 

2

 Docket 78-1 is Plaintiff’s Separate Statement of Facts in Support of Plaintiff’s Second Motion for Summary Judgment. Plaintiff cites to this document as “SSOF.” 

(Doc. 78.) Because there are multiple motions for summary judgment in this case, the Court cites to the CM/ECF docket and page numbers to avoid confusion. 

Case 2:15-cv-01856-BSB Document 95 Filed 09/24/18 Page 2 of 26
- 3 - 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

 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. (Doc. 78-1 ¶¶ 5, 6.) Plaintiff 

alleges that it charged monthly maintenance fees and required licensees to host their 

websites on SPSO’s servers. (Id., ¶ 7.) Plaintiff paid Kesler a commission for each 

license he sold, and Kesler purchased a license for use on his own site, 

“allpoolandspaparts.com” (“Kesler’s site”). (Id., ¶ 8.) 

 During 2014, Kesler introduced Defendant Brian Morris, owner of Defendant 

Ugly Pools Arizona, Inc., and the trade name “We Fix Ugly Pools” (“WFUP”), to 

Plaintiff as a potential licensee. (Id., ¶ 13.) Defendants build and remodel swimming 

pools, and sell pool supplies and accessories in Maricopa County, Arizona and 

surrounding areas. (Id., ¶ 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. (Id., 15.) 

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

them in making a purchasing decision. (Id., ¶ 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.” (Id.) Unbeknownst to Plaintiff, 

Defendants and Kesler were working together and had formed a partnership for Morris to 

manage and redesign Kesler’s site. (Id., ¶ 18, Ex. 2 at 37.) Plaintiff alleges that 

Defendants downloaded “a complete copy of SPSO’s Platform.” (Id., ¶ 20.) Plaintiff 

alleges that after the download, Defendants stopped communicating with Plaintiff. (Id.) 

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

at allpoolsupplies.com (“APS”), which was nearly identical to the Platform. (Id., ¶ 22.) 

Plaintiff asserts that Defendants admitted to copying the Platform and creating APS, a 

derivative site. (Id.) The site was “launched live on the internet as a fully functioning 

site through which customers could, and did place orders.” (Id., ¶ 24.) Plaintiff alleges 

that Defendants’ site “wholly incorporated the original photos which are registered with 

Case 2:15-cv-01856-BSB Document 95 Filed 09/24/18 Page 3 of 26
- 4 - 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

the U.S. Copyright Office under Registration Number TX 8-268-803 (“Registered 

Photos”) and other content from the Platform into APS.” (Id., ¶¶ 28-29). Plaintiff alleges 

that Kesler’s license was granted specifically for use on his site located at 

“allpoolandspaparts.com” and that the license strictly limited use of the Platform to that 

site. (Id., ¶¶ 9, 30.) Plaintiff discovered Defendants’ allegedly infringing website on July 

15, 2015 and notified Defendants of the alleged infringement that same day. (Id., ¶ 35.) 

B. Background related to 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”).3

 (Doc. 53, Ex. A.) 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; Doc. 80 ¶ 31.)4

 

 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.) 

 

3

 “To register a claim to copyright, an applicant must submit the following items to the U.S. Copyright Office: [1] Completed application; [2] Full filing fee; and [3] The requisite deposit copy(ies) of the work.” Compendium of U.S. Copyright Office Practices § 204 (3d ed. 2017) (cited as COMPENDIUM (THIRD).) The “deposit . . . refers to the copy or copies of a work that are submitted to the U.S. Copyright Office.” Id. at § 204.3. 

The COMPENDIUM (THIRD) is an “administrative manual” that “explains many of the practices and procedures concerning the [Copyright] Office’s mandate and statutory duties under title 17 of the United States Code.” (Doc. 72-1 at 3 (quoting 37 C.F.R. § 201.2(b)(7)).)

4

 Docket 80 is Defendants’ Separate Statement of Facts in Support of their Second Motion for Summary Judgment. (Docs. 80, 80-1, 80-2, 80-3.) 

Case 2:15-cv-01856-BSB Document 95 Filed 09/24/18 Page 4 of 26
- 5 - 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

 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; Doc. 80 ¶ 33.) 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.” (Doc. 53, Ex. F.) 

Plaintiff’s counsel responded that some of the deposit’s content “may have been from an 

earlier version of the website 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; Doc. 80 ¶ 34.) 

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

(Doc. 53, Ex. I; Doc. 80 ¶ 35.) 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.” (Doc. 53, Ex. I; Doc. 80 ¶ 35.) 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.” (Doc. 53, 

Ex. I; Doc. 80 ¶ 35.) 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; Doc. 80 ¶ 36.) 

 On November 16, 2016, before the copyright office responded to Plaintiff’s 

inquiry about the denial of its request for a special dispensation, Plaintiff submitted to the 

copyright office an affidavit from one of its principals, Aaron Hagen. (Doc. 53, Exs. K, 

L; Doc. 80 ¶ 38; Doc. 72, Ex. A at 4.) The Hagen affidavit stated 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; Doc. 80 ¶ 38.) The Hagen affidavit further stated that 

Case 2:15-cv-01856-BSB Document 95 Filed 09/24/18 Page 5 of 26
- 6 - 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

“[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 at ¶ 5; Doc. 80 ¶ 39.) 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; Doc. 80 ¶ 40.) 

 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; Doc. 80 ¶ 41.) Plaintiff’s counsel responded, “[y]es the information should 

be updated as per the affidavit.” (Doc. 53, Ex. Q at 2; Doc. 80 ¶ 41.) 

 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; Doc. 80 ¶ 42.) 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.” (Doc. 53, Ex. Q; Doc. 80 ¶ 42.) A few days later, 

Plaintiff advised the copyright office that it was “no longer interested in registering the 

code . . . .” (Doc. 53, Ex. CC; Doc. 80 ¶ 43.) 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.” (Doc. 53, Ex. CC; Doc. 80 ¶ 43.) 

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

(Doc. 50, Ex. 1; Doc. 80 ¶ 44.) The certificate of registration identifies the year of 

Case 2:15-cv-01856-BSB Document 95 Filed 09/24/18 Page 6 of 26
- 7 - 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

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. (Doc. 50, Ex. 1.) 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.” (Id.) 

C. The Court’s Inquiry to the Copyright Office 

 In their first cross-motions for summary judgment on Count One of the FAC, the 

parties disputed whether Plaintiff had properly registered its copyright and met the 

registration precondition for filing a copyright infringement suit. (Doc. 45 at 7; Doc. 49 

at 2; Doc. 64 at 12-13; see also 17 U.S.C. § 411(a) (“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 Court found that Plaintiff’s 

copyright registration was effective September 16, 2015, one day before Plaintiff filed its 

original complaint on September 17, 2015. (Doc. 64 at 12-13.) 

 Defendants, however, argued that Plaintiff knowingly provided false information 

to the copyright office about the date of first publication and the contents of the deposit 

that it submitted to the copyright office. (Id. at 13; Doc. 53 at 2) Therefore, the Court 

also considered whether the registration should be considered invalid under 17 U.S.C. 

§ 411(b). (Doc. 64 at 14-25.) The Court concluded that it was undisputed that the 

deposit did not match Plaintiff’s copyright claim and that Plaintiff knew of the 

discrepancies, but nonetheless represented to the copyright office in the Hagen affidavit 

that the deposit (defined as the sample of the Platform provided to the copyright office in 

September 2015), was the same as the website appeared on July 3, 2014. (Id. at 18, 24.) 

The Court found that the statutory criteria for mandatory referral to the copyright office 

had been satisfied because the deposit did not match the material claimed in the 

application and Plaintiff did not argue that it unknowingly provided false information, but 

instead argued that the inclusion of additional material in the deposit was immaterial. The 

Court stated that: 

Case 2:15-cv-01856-BSB Document 95 Filed 09/24/18 Page 7 of 26
- 8 - 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

It is undisputed that the [d]eposit material did not match the material 

claimed in [Plaintiff’s] copyright 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 [d]eposit 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 

[d]eposit is “of no moment.” 

(Id. at 24.) Although Plaintiff argued that the inaccuracies in the information it presented 

to the copyright officer were “of no moment,” or in other words, immaterial, the Court 

found that the statutory referral procedures of 17 U.S.C. § 411(b)(2) applied and required 

the Court to ask the Register of Copyrights if it considered the inaccurate information 

material to its decision to register the copyright. (Id. at 24-25.) 

 Therefore, on June 27, 2017, the Court sent a request for the advice of the Register 

of Copyrights on the following question: 

1. If the Register of Copyrights had known that the Deposit underlying 

Registration Number TX 8-268-803 does not depict the content that existed on the SPSO website www.poolandspaparts.now on July 3, 2014, which is 

the date of publication identified on the certificate of registration, but instead depicts a version of the website that includes copyrightable content that was added to the website at a later date, would the Register of Copyrights have refused to issue a registration with a July 3, 2014 publication date? 

(Doc. 67.) 

 On September 5, 2017, the Register of Copyrights responded to the Court’s 

inquiry and stated that it would have refused registration of Plaintiff’s copyright with a 

July 3, 2014 publication date had it known that the submitted website included 

copyrightable content that was added after July 3, 2014.5

 (Doc. 72-1 at 8.) The Register 

 

5

 The Register assumed, based on the Court’s question, that the content added to the website after July 3, 2014 was copyrightable. (Doc. 72-1 at 8, n.43; Doc. 67.) 

Plaintiff moved for reconsideration of the Court’s question to the Register, but did not object to the reference to “copyrightable content.” (Doc. 68.) The Register’s assumption is correct because the content added to the website after July 3, 2014 included 

photographs, which Plaintiff admits are copyrightable. (Doc. 80 ¶¶ 5, 6, 20; Doc. 82 ¶¶ 5, 6, 20.5

) Furthermore, Plaintiff admits that the website submitted to the copyright office includes additional copyrightable content added after July 3, 2014. (Doc. 80 ¶ 18; Doc. 82 ¶ 18.) 

Case 2:15-cv-01856-BSB Document 95 Filed 09/24/18 Page 8 of 26
- 9 - 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

of Copyrights further stated that it “would have demanded a copy of the deposit as 

published on July 3, 2014 . . . .”6

 (Id.) The Register of Copyrights stated that, 

alternatively, it would have “asked Plaintiff to limit its claim to material published on 

August 26, 2015, and to revert back to the 2015 year of completion, and the August 26, 

2015 date of publication, for the original application.” (Id.) If Plaintiff had “refused to 

limit the claim and revert back to the August 26, 2015 date of first publication and 2015 

year of completion, the Acting Register would have refused registration.”7

 (Id.) 

 After receiving the Register of Copyrights’ response, the Court permitted the 

parties to file second motions for summary judgment on Plaintiff’s copyright 

infringement claim asserted in Count One of the FAC. (Doc. 73.) The Court directed the 

parties to address how the Register of Copyrights’ response to the Court’s inquiry 

affected Plaintiff’s copyright claim, including whether Plaintiff satisfied the registration 

precondition for bringing a civil action for copyright infringement. (Id. at 2.) 

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 

 

6

 Plaintiff’s prior correspondence with the copyright office indicated that it did not have a copy of the website as it existed in July 2014. (See Doc. 53, Ex. H (October 6, 

2016 email to the copyright office from Plaintiff’s counsel stating that some of the Deposit’s content “may have been from an earlier version of the website 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.”).) Based on this evidence, Plaintiff 

would have been unable to “provide a copy of the work as published on July 3, 2014.” (Doc. 72-1 at 8.) Therefore, the Court concludes that the Register of Copyrights would have refused registration with the July 3, 2014 publication date. 

7

 If Plaintiff had limited its claim to material published on August 26, 2015, a certificate of registration based on that date could not support Plaintiff’s copyright infringement claim that is based on an alleged infringement that occurred in 2014. (See

Doc. 79 at 13-14.) 

Case 2:15-cv-01856-BSB Document 95 Filed 09/24/18 Page 9 of 26
- 10 - 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

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. Id. at 249. The nonmoving party must 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 fair-minded 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). “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 motion for summary judgment under this standard. 

III. Plaintiff’s Copyright Infringement Claim 

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 second motion 

for summary judgment, Plaintiff argues that it is entitled to summary judgment on this 

claim because it satisfied the procedural requirements of 17 U.S.C. § 411(a) and 

Defendants admitted to reproducing and distributing SPSO’s Platform. (Doc. 78 at 8.) 

Defendants seek summary judgment on Plaintiff’s copyright infringement claim on the 

ground that Plaintiff did not satisfy the copyright registration precondition to bringing a 

copyright infringement action. (Doc. 79 at 1.) 

Case 2:15-cv-01856-BSB Document 95 Filed 09/24/18 Page 10 of 26
- 11 - 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

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). “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). 

 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). Copyright “registration [is also] an element of an 

infringement claim.” Unicolors, Inc. v. Urban Outfitters, Inc., 853 F.3d 980, 988 (9th 

Cir. 2017) (citing Cosmetic Ideas, Inc. v. IAC/Interactivecorp., 606 F.3d 612, 615 (9th 

Cir. 2010)). 

 1. Registration of Website Content 

 “A website in and of itself is not explicitly recognized as copyrightable subject 

matter.” COMPENDIUM (THIRD), Glossary, §1006.8

 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. However, 

“[w]ebsites are somewhat unique as vehicles for the dissemination of content. Unlike a 

tangible object, such as a printed magazine or a roll of film, websites are not static 

 

8

 When interpreting the Copyright Act, the Court defers to the copyright office’s interpretations, such as the Compendium, in the appropriate circumstances. Alaska Stock, 

LLC v. Houghton Mifflin Harcourt Publ’g Co., 747 F.3d 673, 684 (9th Cir. 2014). 

Case 2:15-cv-01856-BSB Document 95 Filed 09/24/18 Page 11 of 26
- 12 - 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

containers for content. They are dynamic containers that may change over time as often 

and to the extent that the website owners wish.” Id. “Although websites are dynamic, 

copyright protection in the United States extends only to fixed works of authorship that 

fall under the categories provided in . . . the Copyright Act.” Thus, the copyright office 

“will register a claim in website content only as it exists at the time the application is 

received.” Id. 

 Therefore, “a registration for website content does not extend to any unclaimable 

materials that may be contained within that content. . . . [and] unclaimable material 

includes material that . . . was previously published or registered.” Id. at § 1008.2; see 

also § 1009.8 (“[a] registration for a website or website content does not cover any 

materials that has been previously published . . .”). “If the deposit contains an 

appreciable amount of previously published . . . material, the applicant must expressly 

exclude that material from the claim.” Id. at § 1008.2 “Asserting a claim in previously 

published material is one of the most common mistakes that applicants make when 

completing an application to register website content.” Id. 

 As the copyright office advised Plaintiff, if website “content has been published, 

the applicant may register all of the copyrightable material that was first published on the 

date of publication specified in the application. If the content contains copyrightable 

materials that was published before that date, the application must exclude that 

previously published material from the claim.” Id. at § 1008.6(A). “[T]he deposit should 

contain a copy of the content as it existed on the date of publication that is specified in 

the application. Id.; see also § 1010.5 (“[t]o register material from the initial version or 

any subsequent version of a published website, the applicant must deposit an acceptable 

copy . . . of the specific version that the applicant intends to register and the applicant 

must provide the correct date of first publication for that version.”). 

 2. Registration Precondition to Filing Infringement Action 

 Upon application, a copyright claim may be registered with the copyright office if 

it is determined that the work “constitutes copyrightable subject matter” under the Act. 

Case 2:15-cv-01856-BSB Document 95 Filed 09/24/18 Page 12 of 26
- 13 - 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

17 U.S.C. §§ 408, 410. Copyright registration serves as a public record of the authorship 

and ownership of the claimed work. Brownstein v. Lindsey, 742 F.3d 55, 66 (3d Cir. 

2014). Copyright registration is not required for copyright protection and is not 

jurisdictional. See 17 U.S.C. § 408(a); Cosmetic Ideas, 606 F.3d at 614-15 (citing Reed 

Elsevier, Inc., v. Muchnick, 559 U.S. 154 (2010)). However, “[c]opyright registration is a 

precondition to filing a copyright infringement action.” L.A. Printex Indus. Inc. v. 

Aeropostale, Inc. 676 F.3d 841, 852-53 (9th Cir. 2012), as amended (June 13, 2012); 

Cosmetic Ideas, Inc., 606 F.3d at 614-15 (stating that “registration is required for U.S. 

works prior to bringing any infringement action.”); 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.”).9

 

 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. After a copyright registration 

certificate is issued, it dates back to the date of the application and the certificate includes 

the effective date of the registration. 17 U.S.C. § 401(a), (d). Section 411(a) provides 

that rejection of a registration application does not bar a civil suit, if the copyright office 

 

9

 The Ninth Circuit further explained why registration is a precondition to filing a copyright infringement action, even though registration is not required for copyright protection: 

Although registration was made optional [in the 1976 amendments to the 

copyright act], Congress still valued having a robust federal register of existing copyrights. To this end, it chose to encourage copyright holders to register with the Office of Copyright through various statutory incentives. For instances, if a copyright holder secures a registration certificate within 

five years after first publication, such certificate will constitute prima facie 

evidence of both the validity of the copyright and the facts stated in the 

certificate. Moreover certain remedies, such as statutory damages and attorney’s fees, are available only after registration. Finally, registration is required for U.S. works prior to bringing an infringement action. Indeed, because registration is not mandatory under the Act, copyright holders frequently register specifically for the purpose of being able to bring suit. 

Cosmetic Ideas, Inc., 606 F.3d at 619 (internal citations omitted). 

Case 2:15-cv-01856-BSB Document 95 Filed 09/24/18 Page 13 of 26
- 14 - 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

has been notified of the litigation and served with a copy of the complaint. 17 U.S.C. 

§ 411(a) (permitting an applicant to bring an infringement action after the register has 

rejected the applicant’s registration if the register is notified of the suit and served with 

the complaint)). The copyright office may become a 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). 

 3. Invalidation of Copyright Registration 

 “To prevent plaintiffs from abusing the registration process . . . , the Copyright Act 

allows for the invalidation of registrations obtained by knowing misrepresentations of 

material facts.” Delivermed Holdings, LLC v. Schaltenbrand, 734 F.3d 616 (7th Cir. 

2013) (citing 17 U.S.C. § 411(b)(1)(A)-(B)). In 2008, as part of the Prioritizing 

Resources and Organization for Intellectual Property Act (the “2008 PRO IP Act”), 

Congress codified a court-made standard for invalidating a copyright registration. See 

Lennar Homes of Texas Sales and Mktg. v. Perry Homes, LLC, 117 F. Supp. 3d 913, 

(S.D. Texas 2015) (discussing the Fifth Circuit’s standard for finding a copyright 

registration invalid). 

 Under the amended statute, a certificate of registration is sufficient to bring a 

copyright infringement action “regardless of whether the certificate contains inaccurate 

information,” unless the following conditions are met: (A) “the inaccurate information 

was included on the application for copyright registration with knowledge that it was 

inaccurate,” and (B) “the inaccuracy of the information, if known, would have caused the 

Register of Copyrights to refuse registration.” 17 U.S.C. § 411(b)(1)(A) and (B); see L.A. 

Printex, 676 F.3d at 853. 

 The 2008 PRO IP Act amended § 411 to include § 411(b)(2), which requires 

courts to seek the advice of the Register of Copyrights before finding that a certificate of 

registration does not support an infringement action. See DeliverMed Holdings, 734 F.3d 

at 623 (stating that “[i]nstead of relying solely on the court’s own assessment of the 

Register’s response to an inaccuracy, the statute obligates courts to obtain an opinion 

Case 2:15-cv-01856-BSB Document 95 Filed 09/24/18 Page 14 of 26
- 15 - 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

from the Register on the matter.”); 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 . . . .”). In other words, before finding that knowingly 

inaccurate information would have caused the Register of Copyrights to refuse 

registration, a court must ask the Register whether that would have been the case. 

B. Sufficiency of Plaintiff’s Copyright Registration 

 In its analysis of the parties’ second cross-motions for summary judgment, the 

Court first considers whether Plaintiff’s copyright registration supports its copyright 

infringement claim asserted in Count One. The Court has previously concluded that for 

purposes of its infringement claim, the relevant copyrighted content is the “text and 

photographs” that appear on Plaintiff’s website www.poolandspapartsnow.com. (Doc. 64 

at 11-12; Doc. 78 at 12.) Defendants argue that Plaintiff’s copyright infringement claim 

fails because Plaintiff did not satisfy the registration precondition for filing a claim for 

copyright infringement (Doc. 79 at 4), and Plaintiff disputes that assertion. (Doc. 78.) 

As discussed below, the Court concludes that Plaintiff did not satisfy the registration 

precondition because the registration is invalid under § 411(b). 

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

dated September 13, 2015, for a work titled “SPSO Website 

www.poolandspapartsnow.com,” and that the copyright office received the application on 

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

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 

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

certificate)). Thus, the registration was effective September 16, 2015, before Plaintiff 

filed the original complaint. However, the Court finds that registration is not sufficient to 

Case 2:15-cv-01856-BSB Document 95 Filed 09/24/18 Page 15 of 26
- 16 - 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

support Plaintiff’s copyright infringement claim under the two-part test of 17 U.S.C. 

§ 411(b), as set forth below. 

1. The Copyright Application Included Inaccurate Information 

 As discussed in detail in the June 2017 Order, the copyright application, which 

includes the correspondence between Plaintiff and the copyright office, included 

inaccurate information that was incorporated into the copyright registration. (Doc. 64 at 

17-25.) The inaccurate information is the July 3, 2014 publication date for the deposit, 

which included the text and photographs at issue in the copyright infringement claim. 

(Id. at 24; Doc. 78 at 10; 78-1 ¶ 39.) Deposit material for website content must contain 

“the copyrightable material that is claimed in the application,” and “the deposit should 

contain a copy of the content as it existed on the date of publication that is specified in 

the application.” (Doc. 72-1 at 6 (quoting COMPENDIUM (THIRD) §§ 1010.1 and 

1008.6(A)). 

 For registration of website content that has been revised after the date of first 

publication, the copyright application should include the “month, day, and year that the 

revised content was first posted on that site.” (Doc. 72-1 at 6 (quoting COMPENDIUM 

(THIRD) § 1009.4(A)(2)).) As the copyright office advised Plaintiff during the 

registration process, registration of a revised version of a website covers only the new or 

revised material added. (Doc. 53, Ex G. p.2.) “[I]t is the responsibility of the applicant 

to determine whether a work has been published prior to an application and to make this 

determination based on the applicable terms of the Copyright Act.” Gold Value Int’l 

Textile, Inc. v. Sanctuary Clothing, LLC, 2017 WL 2903180, at *9 (C.D. Cal. Mar. 24, 

2017). 

 As explained in the Court’s June 2017 Order, the July 3, 2014 publication date is 

inaccurate because “[i]t is undisputed that the [d]eposit 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 

Case 2:15-cv-01856-BSB Document 95 Filed 09/24/18 Page 16 of 26
- 17 - 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

a later date. Plaintiff, however, represented to the copyright office that the deposit was 

the same as the website appeared on July 3, 2014.” (Doc. 64 at 24.) The additional 

content includes, in part, photographs of Nemo products added on October 14, 2014, 

including entire webpages displaying the Nemo products. (Doc. 80 at ¶¶ 1-5.) 

 Plaintiff admits that the website submitted to the Copyright Office included 

additional copyrightable content added after July 3, 2014. (Id. at ¶ 18 (citing Doc. 68 at 

3, 5; Doc. 56 at 6).) Plaintiff does not dispute Defendants’ assertion, and the Court’s 

finding in the June 2017 Order, that photographs of Nemo products were added to 

Plaintiff’s website after July 3, 2014, the date Plaintiff represented as the publication date 

for the deposit submitted to the copyright office. (See Doc. 64 at 20-24.) 

 Instead, Plaintiff previously argued that “the deposit copy submitted by SPSO . . . 

was the best available copy of the Work as it subsisted on the Publication Date, July 3, 

2014,” and stated that “[t]he fact that there is additional information contained on the 

Deposit is of no moment.” (Doc. 56 at 6 (emphasis added).) Plaintiff also attempted to 

minimize any inaccurate statements in the Hagen affidavit by stating that when Hagen 

said the sample Platform submitted as the deposit with Plaintiff’s copyright registration 

was the “‘same as the website appeared when published on July 3, 2014,’ he [was] 

referring to what is claimed on the registration, namely ‘text, photographs.’” (Id. at 9.) 

“He is not referring to additional information that may have been contained in the 

medium (i.e. the website). As far as what is claimed in the Registration, the ‘text and 

photographs’ are the same or essentially the same as in the Deposit as they existed on 

July 3, 2014.” (Id. (emphasis by italics and bold text in original).) 

 Plaintiff now asserts that the deposit is not required to match the “medium in 

which it is contained,” and therefore Defendants’ arguments that there is “other material 

in the medium is rendered moot.” (Doc. 90 at 9; see also Doc. 81 at 7 (asserting that the 

medium and the Work are not required to match and stating “there may have been 

additional copyrightable subject matter on the medium that Plaintiff elected not to claim 

in its registration.”).) Plaintiff specifically refers to “[N]emo products” in this argument. 

Case 2:15-cv-01856-BSB Document 95 Filed 09/24/18 Page 17 of 26
- 18 - 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

(Doc. 90. at 9-10.) Thus, throughout the briefing on several motions in this case, Plaintiff 

has admitted that the photographs of Nemo products were added to the SPSO website 

after July 3, 2014, and were included in the deposit submitted to the copyright office in 

September 2015. 

 Plaintiff’s argument that the SPSO website is only the medium for copyrightable 

material, and the copyrighted material is limited to certain content on that website, 

specifically photographs and text, does not establish that the photographs of Nemo 

products added to the website after the asserted July 3, 2014 publication date are “moot.” 

Plaintiff does not explain how these photographs, and the text describing these products, 

are simply part of the website medium, and not part of its content and not part of the 

unspecified “photographs, text” listed on the registration. 

 Furthermore, Defendants submitted evidence indicating that they had identified 

photographs of the Nemo products that were added to Plaintiff’s website after July 3, 

2014 by using the Internet Archive to capture pages of Plaintiff’s website as it existed in 

July 2014 and in the deposit. (Doc. 80 at §§ 1-5; Doc. 53, Exs. M-1, M-2, M3, N-1, N-2, 

N-3, N-4, FF.) Plaintiff does not dispute this evidence, but instead asserts that this 

evidence is “irrelevant” because it did not register a website and “the Nemo products are 

not part of what was registered with the USCO and not part of what Plaintiff claims was 

infringed.” (Doc. 82 at ¶¶ 1-5.) Thus, it appears that Plaintiff may be arguing that 

although the deposit included photographs added to the SPSO website after July 3, 2014, 

the asserted publication date, it did not intend to register these photographs, or assert 

copyright infringement based on the copying of these photographs and, therefore, the 

additional content in the deposit is immaterial. 

 This argument, however, ignores the significance of the addition of new 

copyrightable content to the website. As previously discussed, the Register of Copyrights 

would have refused registration of Plaintiff’s copyright with a July 3, 2014 publication 

date had it known that the submitted website included copyrightable content added after 

July 3, 2014. (Doc. 72-1 at 8.) Thus, the addition of new copyrightable content on the 

Case 2:15-cv-01856-BSB Document 95 Filed 09/24/18 Page 18 of 26
- 19 - 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

website is significant in determining the publication date. (See Doc. 64 at 23 (citing 

COMPENDIUM (THIRD) at §§ 1008.5, 1008.6).) Because the registration includes 

inaccurate information, the Court considers whether “the inaccurate information was 

included on the application . . . with knowledge that it was inaccurate.” 17 U.S.C. 

§ 411(b)(1)(A). 

2. Plaintiff Knowingly Included the Inaccurate Information 

 Under § 411(b), a certificate of registration that contains inaccurate information is 

insufficient to bring a copyright infringement suit when the registrant knowingly included 

the inaccurate information, and “the inaccuracy of the information, if known, would have 

caused the Register of Copyrights to refuse registration.” 17 U.S.C. § 411(b)(1)(A) and 

(B); see Unicolors, 853 F.3d at 991 (stating that a registration error bars 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.”) (internal quotation marks and citation omitted); 

Schenck v. Orosz, 105 F. Supp. 3d 812, (M.D. Tenn. 2015) (stating that “a plaintiff 

cannot maintain a copyright infringement action premised on a registered copyright if the 

plaintiff both (1) included inaccurate information on a registration application and (2) the 

Copyright Office would have refused registration had the inaccurate information not been 

included.”). 

 In its June 2017 Order, the Court found that Plaintiff had not “argue[d] that it 

unknowingly provided false information to the copyright office.” (Doc. 64 at 24.) 

Plaintiff does not dispute that finding. (Doc. 80 ¶ 27; Doc. 82 ¶ 27.)10 Rather, Plaintiff 

argues that § 411(b) does not apply because it did not make fraudulent statements to the 

copyright office. (Doc. 81 at 14-16; Doc. 90 at 3-5, 6-8.) Plaintiff argues that § 411(b) 

 

10 Plaintiff objects to this statement as irrelevant on the ground that “Plaintiff’s 

communications with the USCO . . . [have] been fully litigated.” (Doc. 82 ¶¶ 9, 27.) Plaintiff also asserts that this issue is beyond the scope of the Court’s order permitting second motions for summary judgment. (Id. at ¶ 9.) The Court agrees that the issue of 

Plaintiff’s communications with the copyright office was addressed in the June 2017 

Order. (Doc. 64.) However, those communications continue to be relevant to the 

resolution of Plaintiff’s copyright infringement claim. See § 411(b)(1). 

Case 2:15-cv-01856-BSB Document 95 Filed 09/24/18 Page 19 of 26
- 20 - 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

requires a showing of fraudulent misrepresentation under state law. (Doc. 90 at 2-3, n.1 

(citing Neilson v. Flashberg, 419 P.2d 514, 517-18 (Ariz. 1966).) Plaintiff further argues 

that § 411(b) requires that the party challenging whether the registration satisfies the 

registration precondition to filing suit must “meet the heightened pleading standards” for 

fraud in Rule 9(b) of the Federal Rules of Civil Procedure. (Doc. 90 at 3-4.) Plaintiff 

asserts that its counsel made only “inadvertent technical errors during the registration 

process.” (Id. at 5.) 

 “[I]nadvertent mistakes on a registration certificate do not invalidate a copyright 

and thus do not bar infringement actions, unless the alleged infringer has relied to its 

detriment on the mistake or the claimant intended to defraud the Copyright Office by 

making the misstatement.” Urantia Found. v. Maaherra, 114 F.3d 955, 963 (9th Cir. 

1997). However, the Ninth Circuit has found that “a showing of fraud is not required 

when the inaccurate information was knowingly included on the application, as opposed 

to being an inadvertent mistake.” Gold Value Int’l Textile, Inc. v. Sanctuary Clothing, 

LLC, 2017 WL 2903180, at *10 ) (C.D. Cal. Mar. 24, 2017) (citing L.A. Printex Indus., 

Inc., 676 F.3d at 854; see also Palmer/Kane LLC v. Gareth Stevens Pub’g, 2016 WL 

6238612, at *4 (S.D.N.Y. Oct. 24, 2016) (“To the extent that Plaintiff argues that the 

statute requires a showing of ‘fraudulent intent’ separate and apart from a showing of 

knowing inaccuracy, the Court agrees with Judge Rakoff and declines to graft this 

additional requirement onto the plain statutory text.”). The Court, therefore, concludes 

that it is not necessary to show fraud on the copyright office for § 411(b)(1)(A) and (B) to 

apply, and rejects Plaintiff’s contrary argument. See L.A. Printex, 673 F.3d at 852-53. 

 Plaintiff also now argues that it has “never wavered” in its assertion of July 3, 

2014 as the first publication date because it alleged in its complaint, filed September 17, 

2015, that the Platform was first published in July 2014, and it submitted the Hagen 

affidavit to the copyright office on November 14, 2016 and stated that the Platform was 

first published on July 3, 2014. (Doc. 78 at 6; Doc. 81 at 3.) Plaintiff asserts that “[t]he 

fact that Plaintiff’s counsel made a mistake as to the publication date in the registration 

Case 2:15-cv-01856-BSB Document 95 Filed 09/24/18 Page 20 of 26
- 21 - 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

process in neither material, relevant, nor dispositive.” (Doc. 81 at 3-4.) Thus, Plaintiff 

attempts to minimize the significance of its registration application, which listed the first 

publication date as August 26, 2015. 

 This argument, however, ignores the record of Plaintiff’s communications with the 

copyright office in which counsel stated, in response to the copyright office’s inquiry 

whether the content of the deposit included material from an earlier version of the 

website, that some of the deposit “may have been from an earlier version of the website 

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, Doc. 80 

¶ 4.) Plaintiff has never contradicted those statements or claimed that it has a copy of the 

website content as it was published in July 2014. 

 Furthermore, the declarations Plaintiff submitted with the briefing on the various 

motions for summary judgment further establish that Plaintiff did not have a copy of the 

website as it was published in July 2014. Plaintiff’s counsel submitted a declaration 

stating that the “‘mirror copy’ of the SPSO website was created on or about August 26, 

2015.” (Doc. 56, Ex. D at ¶ 2.) The director of operations for the law firm of Plaintiff’s 

counsel, Martin Gwynn, also submitted a declaration stating that he made the deposit 

copy of the SPSO website to be sent to the copyright office for copyright registration on 

or about September 13, 2015. (Doc. 78-1, Ex. 9.) Mr. Gwynn also states that on 

September 7, 2017, he began using Internet Archives to capture screen shots of the SPSO 

website as it appeared on or before July 3, 2014.11 (Id. at ¶ 6.) 

 

11 Importantly, Plaintiff did not obtain screen shots of the SPSO website as it 

appeared in July 2014 as part of its copyright registration application in September 2015. Instead, Plaintiff waited for two years and until after the Court entered its June 2017 

Order, and until after the Register of Copyrights responded to the Court’s inquiry, before it began to search for this information. Plaintiff now apparently suggests that these screen shots establish that the SPSO website, as it was published on July 3, 2014, was the same as the copy of the website submitted as the deposit with the copyright application. (Doc. 78 at 7.) However, Mr. Gwynn’s declaration discusses comparisons of representative categories of photographs and text on the SPSO website in 2014 and 2015, 

and the WFUP website, but he does not state that the SPSO website in 2014 was the same 

as the SPSO website in 2015, as submitted to the copyright office. (Doc. 78-1, Ex. 9.) 

Case 2:15-cv-01856-BSB Document 95 Filed 09/24/18 Page 21 of 26
- 22 - 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

 Additionally, Plaintiff submitted the Hagen affidavit to the copyright office on 

November 14, 2016, which was after Defendants had filed their first motion for summary 

judgment and their motion for an order for Plaintiff to cancel or amend its copyright 

registration. (Doc. 53, Ex. K.) In that declaration, Hagen 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 ¶ 4)(emphasis added). In the same declaration, Hagen described the 

Platform as “a compilation of programs, representations, originally authored works, 

writings, hundreds of photographs taken by myself and my brother, as well as computer 

architecture and design.” (Id. at ¶ 3.) The Hagen declaration did not state that certain 

photographs and text in the deposit were the same as photographs and text published on 

the website in July 2014. Instead, he represented that the copy of the Platform submitted 

as the deposit, which he defined to include programs, photographs, and computer 

architecture and design, was the same as the website appeared in July 2014. However, in 

his deposition taken a few months earlier on August 8, 2016, he testified that the website 

content was the same, but he had updated the copyrighted code on the website. (Doc. 80, 

Ex. 3 at 203-04.) 

 Therefore, as discussed in the June 2017 Order, and as confirmed in this Order, the 

record reflects that Plaintiff knowingly included inaccurate information in the copyright 

application. (Doc. 64 at 21-24.) As noted in the June 2017 Order, the timing of Hagen’s 

affidavit indicates that Plaintiff knowingly provided inaccurate information to the 

copyright office because it was submitted (1) after the copyright office 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. (Doc. 64 at 21-24 (citing Doc. 53 at 4-7).) 

 

Case 2:15-cv-01856-BSB Document 95 Filed 09/24/18 Page 22 of 26
- 23 - 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

 The record indicates that after this defect was raised in this litigation, Plaintiff 

submitted Hagen’s affidavit to the copyright office to support its claim that the date of 

first publication was July 3, 2014, and inaccurately stated that the deposit submitted to 

the copyright office was the same as the website appeared on July 3, 2014. (Doc. 51, 

Ex. K at ¶ 5; Doc. 53, Ex. L; Doc. 56 at 6 (SPSO admits that the sample platform 

provided to the copyright office was not the same as the website appeared on July 3, 

2014.).) Evidence in the record shows that Plaintiff changed the content of 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.) 

Further, Plaintiff does not argue that it was unaware that after July 3, 2014 additional 

copyrightable material was added to the website and was included in the version of the 

website that Plaintiff submitted to the copyright office. (Doc. 51, Ex. K; Doc. 54, Ex. D; 

Doc. 80 ¶ 28; Doc. 82 ¶ 28.) 

 Plaintiff admitted to the copyright office that some of the deposit’s content “may 

have been from an earlier version of the website 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. 80 ¶ 34; Doc. 82 ¶ 34.) This undisputed 

statement indicates that Plaintiff knew that some content in the deposit “may have been 

from an earlier version of the website,” but there is no evidence that, during the 

registration process, Plaintiff investigated to determine the dates on which copyrightable 

content was added. Rather, Plaintiff requested a “special dispensation,” and, when that 

was denied, it submitted Hagen’s affidavit to the copyright office declaring 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. 80 at ¶ 39; Doc. 82 at ¶ 39.) 

 Plaintiff had knowledge that the Hagen affidavit, which was part of the copyright 

application, was inaccurate because Plaintiff either knew that the statement in the 

affidavit was inaccurate or, had uncertainty regarding the facts, but submitted an affidavit 

stating those facts with certainty. Therefore, consistent with the June 2017 Order, the 

Case 2:15-cv-01856-BSB Document 95 Filed 09/24/18 Page 23 of 26
- 24 - 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

Court concludes that Plaintiff knowingly included inaccurate information in the 

application to the copyright office. (Doc. 64 at 17-25); see 17 U.S.C. § 411(b)(1)(A). 

 3. The Copyright Office Would Have Refused Registration

 After concluding that Plaintiff knowingly provided false information to the 

copyright office, the Court submitted a request to the Register of Copyrights to advise the 

court whether the inaccurate information, if known, would have caused the Register of 

Copyrights to refuse registration. (Doc. 64 at 24-25; Doc. 67.) In response, the copyright 

office informed the Court that had it known of the inaccuracy, it would have refused the 

registration with a July 3, 2014 publication date.12 (Doc. 72-1 at 8.) 

 Pursuant to § 411(b)(1), a plaintiff cannot maintain a copyright infringement claim 

based on a registered copyright if (1) the plaintiff knowingly included inaccurate 

information on the copyright registration application, and (2) the Register of Copyrights 

would have refused the registration had it known of the inaccuracy of the information. 

Schenck, 105 F. Supp. 3d at 816 (citing 17 U.S.C. § 411(b)(1)). “The knowing failure to 

advise the Copyright Office of facts which might have occasioned a rejection of the 

application constitutes reason for holding the registration invalid and thus incapable of 

supporting an infringement action.” Russ Berrie & Co. v. Jerry Elsner Co., 482 F. Supp. 

980, 988 (S.D.N.Y. 1980); see also Unicolors, 853 F.3d at 991 (stating that a registration 

error bars 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.”); Roberts v. Gordy, 

181 F. Supp. 3d 997, 1010, 1014 (S.D. Fla. Apr. 8, 2016) (concluding that registration 

 

12 Plaintiff argues that the copyright office “refused” to change the status of the registration. (Doc. 78 at 11; Doc. 81 at 16.) The Court, however, asked the copyright office a specific question under § 411(b)(1), and did not ask the copyright office to cancel the registration. (See Doc. 67.) Under § 411(b)(1), the issue is whether “the inaccuracy of the information, if known, would have caused the Register of Copyrights to refuse registration.” 17 U.S.C. § 411(b)(1). Nonetheless, whether the copyright office changed the status of the registration is irrelevant to the Court’s determination of the validity of the registration to satisfy the registration precondition to filing suit. Therefore, the Court rejects Plaintiff’s argument that because its registration “remains valid . . . the threshold procedural requirement of § 411(a) of the Act is met.” (Doc. 78 at 5.) 

Case 2:15-cv-01856-BSB Document 95 Filed 09/24/18 Page 24 of 26
- 25 - 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

was invalid and incapable of supporting an infringement action after receiving response 

from the Register of Copyrights that it would have refused registration had it known of 

inaccuracies on the application).13

 Therefore, the Court concludes that, pursuant to § 411(b)(1), Plaintiff’s certificate 

of registration is not sufficient to bring a copyright infringement claim because the 

registration application includes inaccurate information, Plaintiff included the inaccurate 

information “with knowledge that it was inaccurate,” and “the inaccuracy of the 

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

registration” with a July 2014 publication date. See 17 U.S.C. § 411(b)(1). “[T]he failure 

to properly register a work will preclude an infringement action predicated on that work.” 

Roberts, 181 F. Supp. 3d 997 at 1014; see Olander Enters., Inc. v. Spencer Gifts, LLC, 

812 F. Supp. 2d 1070, 1078 (C.D. Cal. 2011) (copyright registration was invalid when it 

did not properly identify publication date of belt buckles in a “single unit of publication,” 

and therefore, the plaintiff could not prove an essential element of its copyright 

infringement claim). The Court’s ruling does not cancel the copyright registration.14 

However, it bars Plaintiff from bringing an infringement action because there is no valid 

registration. See id. 

 

13 See also Masquerade Novelty, Inc. v. Unique Indus., Inc., 912 F.2d 663, 667-68 

(3d Cir. 1990) (“It has been consistently held that a plaintiff’s knowing failure to advise the Copyright Office of facts which might have led to the rejection of a registration application constitutes grounds for holding the registration invalid and incapable of supporting an infringement action.”); Raquel v. Educ. Mgmt. Corp., 196 F.3d 171, 176 

(3d Cir. 1999) vacated on other grounds, 531 U.S. 952 (2000) (“Although a failure properly to register a work does not invalidate the copyright itself, it does preclude the maintenance of an infringement action until such time as the purported copyright holder obtains a valid registration.”); R. Ready Prods., Inc. v. Cantrell, 85 F. Supp. 2d 672, 691 (S.D. Tex. 2000) (Under copyright law, “the knowing failure to advise the Copyright Office of material facts constitutes grounds for holding the registration invalid and 

incapable of supporting an infringement action.”); GB Mktg. USA Inc. v. Gerolsteiner 

Brunnen GmbH & Co., 782 F. Supp. 763, 776 (W.D.N.Y. 1991) (declining to enforce a copyright because the registration contained inaccurate information). 

14 The Register of Copyrights has primary jurisdiction to cancel a copyright registration. See Syntek Semiconductor Co., Ltd. v. Microchip Tech. Inc., 307 F.3d 775, 

780-82 (9th Cir. 2002). 

Case 2:15-cv-01856-BSB Document 95 Filed 09/24/18 Page 25 of 26
- 26 - 

1 

2 

3 

4 

5 

6 

7 

8 

9 

10 

11 

12 

13 

14 

15 

16 

17 

18 

19 

20 

21 

22 

23 

24 

25 

26 

27 

28 

IV. Conclusion 

 Because Plaintiff did not properly register the work at issue in this case, the 

copyright registration is insufficient to support a copyright infringement claim and the 

Court grants summary judgment in favor of Defendants on Count One on that basis. See 

Cosmetic Ideas, Inc., 606 F.3d at 615 (stating that § 411(a)’s registration precondition is 

an element of an infringement claim); Roberts, 181 F. Supp. 3d at 1014 (dismissing a 

copyright claim under § 411(b) after consulting the copyright office). The Court, 

therefore, does not consider the parties’ alternative arguments in support of their motions 

for summary judgment. (Doc. 78 at 11-17; Doc. 79 at 10-17.)

 Accordingly, 

IT IS ORDERED that Defendants’ Second Motion for Summary Judgment on 

Plaintiff’s Copyright Claim (Doc. 79) is GRANTED. 

IT IS FURTHER ORDERED that Plaintiff’s Second Motion for Summary 

Judgment (Doc. 78) is DENIED. 

 Dated this 24th day of September, 2018. 

 

Case 2:15-cv-01856-BSB Document 95 Filed 09/24/18 Page 26 of 26