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Federal Courts Not Empowered to Cancel Copyright Registrations

By Barry Werbin

A new December 5, 2017, Southern District of New York (SDNY) decision by Judge Oetken holds that federal courts are not empowered by the Copyright Act or any other federal statute to cancel or nullify a copyright registration issued by the Copyright Office. The court held that: "Nothing in the Copyright Act, nor any other federal statute, grants federal courts the power to cancel or nullify a copyright registration." A copy of the decision is available here: Pastime decision.pdf. Pastime LLC v. Schreiber (S.D.N.Y. 12/5/17).

The case arose out of a copyright authorship/ownership dispute over a play entitled "Once Upon a Pastime." A registration was owned by defendant Schreiber listing him as "sole author," but Pastime argued that an employment agreement with Schreiber deemed the book to be a work made for hire for Pastime. Pastime filed a declaratory judgment action, alleging that "Schreiber intentionally falsified the writing and ownership information in his copyright registration application." Schreiber moved to dismiss the complaint for failure to state a claim under FRCP 12(b)(6) and for lack of subject matter jurisdiction.

The court adopted the reasoning of the Third Circuit:

As the Third Circuit explained in Brownstein v. Lindsay, "there is evidence that the statute does not give courts any such authority" because "[s]ection 701, which describes the functions of the Copyright Office, explicitly states that '[a]ll administrative functions and duties under this title, except as otherwise specified, are the responsibility of the Register of Copyrights.'" 742 F.3d 55, 75 (3d Cir. 2014) (alterations in original) (quoting 17 U.S.C. § 701(a)). Furthermore, it is significant that a separate section of the Copyright Act does grant federal courts the authority to cancel registrations for "original designs." See id. at 76; 17 U.S.C. § 1324. This Court joins the Brownstein court's conclusion that "§ 1324 would be superfluous if Congress intended for courts to already have the general authority to cancel copyright registrations," and that "[i]n carving out a specific power of cancellation, this provision only further suggests that courts have no general authority to cancel copyright registrations." Brownstein, 742 F.3d at 76.

Although Schreiber also argued that a "fraud on the Copyright Office" claim was alleged for which "there is no affirmative private right of action," Judge Oetken rejected that interpretation of the complaint because Pastime itself had waived it by characterizing its complaint as one "for a declaration of the parties' respective ownership rights in [the musical], and for cancellation of [Schreiber's] copyright registration." Judge Oetken observed: "As a result, the Court finds it unnecessary to opine at length on the existence of a cause of action that Pastime has explicitly waived. The Court notes, however, that the absence of a cause of action for fraud on the Copyright Office comports with the absence of a cause of action for cancellation of a copyright registration."

The complaint was dismissed as to the registration cancellation claim. The court emphasized, however, that courts have authority to invalidate underlying copyrights, including a "determination of ownership which does not disturb the registration of a copyright."

The other work for hire claim survived, as there was an actual controversy and such determination invoked the "interpretation and application of the Copyright Act's 'works made for hire' provision" to support subject matter jurisdiction.

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This page contains a single entry from the blog posted on December 14, 2017 10:49 AM.

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