17.7 Copyright Infringement—Copyright Registration Certificate (17 U.S.C. § 410(c))

              A copyright owner may obtain a certificate of registration from the Copyright Office. 

              The evidence in this case includes Exhibit ___, a certificate of copyright registration from the Copyright Office.  If you find that this certificate was made within five years after first publication of the plaintiff’s work, you must presume that there is a valid copyright in [identify the work in question] and presume to be true the facts stated in the certificate including [state specifics of the certificate relevant to the case, e.g., that plaintiff’s work is the original and copyrightable work of the author and that the plaintiff owns the copyright in that work],which I explain in Instructions [insert instruction numbers relevant to elements of plaintiff’s burden].The defendant has the burden of disproving these facts.

              If you find that the evidence presented by [state the name of defendant(s)] disproves either the validity of the copyright or any of the facts stated in the registration certificate, you may find that [state the name of plaintiff(s)] has failed to show ownership of a copyrightable work.

Comment 

            Under the Copyright Act, the party claiming infringement must show ownership of a copyrightable work.  See Lamps Plus, Inc. v. Seattle Lighting Fixture Co., 345 F.3d 1140, 1144 (9th Cir. 2003) (“Ownership of the copyright is … always a threshold question.” (quoting Topolos v. Caldewey,698 F.2d 991, 994 (9th Cir. 1983))), abrogated on other grounds by Unicolors, Inc. v. H&M Hennes & Mauritz, L.P. (Unicolors II), 595 U.S. 178 (2022).

This instruction should be given if the plaintiff submits a copyright registration certificateand there is a dispute as to its validity or the facts stated in the certificate.  See 17 U.S.C. § 410(c) (“In any judicial proceedings the certificate of a 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. The evidentiary weight to be accorded the certificate of a registration made thereafter shall be within the discretion of the court.”)

             I “[I]f 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.”  Cosmetic Ideas, Inc. v. IAC/Interactivecorp, 606 F.3d 612, 619 (9th Cir. 2010) (citing 17 U.S.C. § 410(c)), abrogated on other grounds by Fourth Est.Pub. Benefit Corp. v. Wall-Street.com, LLC, 139 S. Ct. 881, 886-87 (2019). Such a registration certificate entitles the plaintiff “to a rebuttable presumption” of a valid copyright, Ets-Hokin v. Skyy Spirits, Inc., 225 F.3d 1068, 1075 (9th Cir. 2000), and the burden shifts to the defendant to prove that the plaintiff lacks a valid copyright in the work or to prove the falsity of any “fact[] set forth in the copyright certificate,” United Fabrics Int’l, Inc. v. C&J Wear, Inc., 630 F.3d 1255, 1257 (9th Cir. 2011); see also Transgo Inc. v. Ajac Transmission Parts Corp., 768 F.2d 1001, 1019 (9th Cir. 1985) (“Under both the Copyright Act of 1909 and the Copyright Act of 1976, registration by theCopyright Office is prima facie evidence of copyrightability. This presumption shifts the burden of proof to the challenging party to demonstrate why the item in question is not copyrightable.”).  For a definition of publication, see 17 U.S.C. § 101.  For a definition of when a “registration of the copyright claim has been made in accordance with [the Copyright Act],” see Fourth Est. Pub. Benefit Corp., 139 S. Ct. at 886-87.    

             The Copyright Act contains a safe harbor, 17 U.S.C. § 411(b)(1)(A), which provides that a certificate of registration is valid even though it contains inaccurate information, as long as the copyright holder did not “knowingly transmit[] inaccurate material facts to the Register of Copyrights” when it submitted its application for the certificate of registration. Unicolors, Inc. v. H&M Hennes & Mauritz, L.P. (Unicolors III), 52 F.4th 1054, 1064 (9th Cir. 2022). The safe harbor “does not distinguish between a mistake of law and a mistake of fact.  Lack of knowledge of either fact or law can excuse an inaccuracy in a copyright registration.”   Id. at 1063 (quoting Unicolors II, 595 U.S. at 182). A court need not accept a copyright holder’s claim that it was unaware of the relevant copyright law. See Unicolors II, 595 U.S. at 187. Instead, “[c]ircumstantial evidence, including the significance of the legal error, the complexity of the relevant rule, the applicant’s experience with copyright law, and other such matters, may also lead a court to find that an applicant was actually aware of, or willfully blind to, legally inaccurate information”; moreover, “willful blindness may support a finding of actual knowledge.” Id., at 187-88.

Where a copyright holder has registered a derivative work, the certificate of registration for the derivative work does not establish a prima facie case of valid copyright in the underlying work (or, equivalently, “create[] a presumption of validity of the copyright of the underlying work”).  Cooling Sys. & Flexibles, Inc. v. Stuart Radiator, Inc., 777 F.2d 485, 490 (9th Cir. 1985) (derivative work).  Likewise, where a copyright holder has registered a compilation, the certificate of registration for the compilation does not establish a prima facie case of copyright validity with respect to the component works.  See Harper House, Inc. v. Thomas Nelson, Inc., 889 F.2d 197, 203 (9th Cir. 1989) (“[A] copyrightable compilation [can] consist entirely of matter which is not itself copyrightable.”). 

Supplemental Instruction

             [If the certificate was made more than five years after first publication of the plaintiff’s work, use the following in place of the second and third paragraphs of the instruction. If the date of first publication is in dispute, add the following at the end of the instruction.]

 If you find that this certificate was made more than five years after first publication of the plaintiff’s work, you are instructed that the certificate is [state the evidentiary weight that the court has accorded to the certificate] to establish that there is a valid copyright in [identify the work in question] and to establish the facts stated in the certificate including [state specifics of the certificate relevant to the case, e.g., that plaintiff’s work is the original and copyrightable work of the author and that the plaintiff owns the copyright in that work], which I explain in Instructions [insert instruction numbers relevant to elements of plaintiff’s burden].

Comment

           See 17 U.S.C. § 410(c) (“In any judicial proceedings the certificate of a 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. The evidentiary weight to be accorded the certificate of a registration made thereafter shall be within the discretion of the court.”).

Revised March 2024