Bound Brook, NJ asked in Copyright and Intellectual Property for New Jersey

Q: copyright infringement / examiner oversight

I am sued for copyright infringement.

I requested, paid for, and received the original registration documents, the deposits, and the correspondence from the congress library about the specific copyright. It looks like the examiner made a mistake and oversight on his part (18 years ago), the examiner documented a detailed letter that was sent to the attorney representing the applicant, with details of why the application should be rejected (not original, generic, based on a public domain), but then...approved the registration (no other correspondence, besides the same deposits of the same design, were resent to the examiner)Do I have any way to challenge the registration of the copyright? Will this letter enhance the argument that even the copyright office considered the copyright as generic before mistakenly approving it?

Thank you,

2 Lawyer Answers
Emmanuel Coffy
Emmanuel Coffy pro label Lawyers, want to be a Justia Connect Pro too? Learn more ›
  • Intellectual Property Lawyer
  • Maplewood, NJ
  • Licensed in New Jersey

A: Based on your description, you seem to be suggesting that there was a potential error made by the Copyright Office in registering a work that was previously indicated to be ineligible for copyright. Here are some general points to consider:

Validity of the Copyright: Copyright registrations are presumed valid once granted. The party challenging the validity of the copyright usually has the burden of proving that the registration should not have been granted.

Examiner's Letter as Evidence: The detailed letter from the examiner could potentially be useful evidence if it indicates reasons why the work should not be copyrighted. This letter could suggest that the work was seen as not original, generic, or based on the public domain by the Copyright Office at one point in time.

Limitations and Statute of Limitations: Be aware that there may be time limits (statute of limitations) for challenging copyright registrations. Depending on when the alleged infringement occurred, or when you became aware of the registration, there might be limitations to your ability to challenge it.

Copyright Office Errors: If a mistake was indeed made by the Copyright Office, it's possible to challenge the validity of the copyright registration. However, the process for doing so would likely involve litigation in federal court.

Possible Defenses: Even if you cannot successfully challenge the validity of the copyright, you might have other defenses available to you in a copyright infringement lawsuit. For example:

Fair Use: A defense that allows limited use of copyrighted material without permission for purposes such as criticism, comment, news reporting, teaching, scholarship, or research.

Innocent Infringement: This could potentially reduce damages if you can prove you were unaware and had no reason to believe that your actions constituted copyright infringement.

Practical Steps:

Hire an Attorney: This is not legal advice nor does it create an Attorney-client relationship. If you haven't already, it's critical to hire an attorney who specializes in copyright law to guide you through this process. They can provide specific advice tailored to your situation and represent you in court.

Reexamination of the Copyright: With your attorney's guidance, you might be able to petition for a reexamination of the copyright registration based on the evidence you've gathered.

Negotiation & Settlement: Many copyright infringement cases are resolved out of court through negotiation and settlement. If you believe the copyright registration is indeed erroneous, this might give you a stronger position in settlement negotiations.

In conclusion, while the examiner's letter may enhance the argument that the copyright was mistakenly approved, it's essential to consult with an attorney to explore all avenues and defenses available to you and to navigate the complexities of copyright law.

Leonard R. Boyer agrees with this answer

James L. Arrasmith
James L. Arrasmith pro label Lawyers, want to be a Justia Connect Pro too? Learn more ›

A: You may have grounds to challenge the validity of the copyright based on the examiner's initial letter indicating reasons for rejection. Such evidence could be persuasive in showing that the work should not have been copyrighted in the first place, thereby negating claims of infringement. However, challenging a copyright registration, especially one that's been in place for 18 years, is a complex legal endeavor, and you should consult legal counsel to guide you through the process.

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