Case 3:19-cv-03132-WHO Document 112 Filed 04/14/21 Page 1 of 13
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`UNITED STATES DISTRICT COURT
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`NORTHERN DISTRICT OF CALIFORNIA
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`UAB “PLANNER5D”,
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`Plaintiff,
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`v.
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`FACEBOOK, INC., et al.,
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`Defendants.
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`Case No. 19-cv-03132-WHO
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`ORDER DENYING JOINT MOTION
`TO DISMISS COPYRIGHT CLAIMS
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`Re: Dkt. No. 105
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`The Copyright Office rejected plaintiff UAB Planner 5D’s (“Planner 5D”) application to
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`register its alleged works. Planner 5D then filed this infringement action. There is no dispute that
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`exhaustion of remedies was not required for Planner 5D to do so; the pre-suit registration
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`requirement under the second sentence of 411(a) of the Copyright Act, which authorizes suit when
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`a “registration has been refused,” was satisfied at that point. 17 U.S.C. § 411(a).
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`Almost three months after filing this infringement action, Planner 5D timely requested
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`reconsideration from the Copyright Office of its registration refusals by following the
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`administrative procedures outlined in 37 C.F.R. § 202.5. Planner 5D is required to exhaust those
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`procedures if it chooses to challenge a registration refusal in federal court under the
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`Administrative Procedure Act (“APA”). But as a result of Planner 5D’s pursuing reconsideration,
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`defendants Facebook, Inc., Facebook Technologies, LLC, (collectively “Facebook”) and The
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`Trustees of Princeton University’s (“Princeton”) contend that this infringement action is premature
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`until a final decision is rendered by the Copyright Office. They move to dismiss the copyright
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`infringement claims that were initially procedurally proper because, in their view, satisfaction of
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`section 411(a) was nullified by Planner 5D’s subsequent decision to seek reconsideration of the
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`registration refusals. Joint Motion to Dismiss the Complaint for Copyright Infringement (“MTD”)
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`Case 3:19-cv-03132-WHO Document 112 Filed 04/14/21 Page 2 of 13
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`[Dkt. No. 105].
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` It is clear that exhaustion of the administrative review procedure within the Copyright
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`Office is required before a party can challenge a registration refusal through an APA action. But
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`the Copyright Act is silent about whether finality is required before Planner 5D can maintain an
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`infringement action, and there is no caselaw on point. Based on the text of the Copyright Office’s
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`refusal to register Planner 5D’s applications, the guidance in the Compendium of U.S. Copyright
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`Office Practices, a treatise on copyright law and a balancing of interests of the parties and the
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`institutional interests of the Copyright Office, I conclude that Planner 5D has met the prerequisites
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`to proceed with this infringement action in federal court. The motion to dismiss is DENIED.
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`BACKGROUND
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`The allegations underlying Planner 5D’s copyright infringement and trade secret
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`misappropriation claims against Facebook and Princeton are detailed in my previous orders. See
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`UAB “Planner 5D” v. Facebook, Inc. (“Planner 5D I”), No. 19-CV-03132-WHO, 2019 WL
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`6219223 (N.D. Cal. Nov. 21, 2019); UAB “Planner5D” v. Facebook, Inc. (“Planner 5D II”), No.
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`19-CV-03132-WHO, 2020 WL 4260733, at *1 (N.D. Cal. Jul. 24, 2020). The trade secret
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`misappropriation claims were sufficiently pleaded in Planner 5D’s First Amended Complaint and
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`are not at issue in the motion before me. Planner 5D II, 2020 WL 4260733, at *9.
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`With respect to the copyright infringement claims, Planner 5D’s original Complaint failed
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`to allege that it met the threshold registration requirement of section 411(a). I gave Planner 5D the
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`choice to either sufficiently allege that its works are non-United States works that are exempt from
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`registration or dismiss this suit and bring another suit after registering with the Copyright Office.
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`Planner 5D I, 2019 WL 6219223, at *7.1 Planner 5D chose to do that latter. It submitted two
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`registration applications to the Copyright Office and, on December 20, 2019, obtained
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`1 Planner 5D was also given leave to explain “the originality or creativity of the objects, scenes,
`and compilations of objects and scenes” and “that copyrightable elements were copied.” Planner
`5D I, 2019 WL 6219223, at *1. On amendment, Planner 5D insufficiently alleged an original
`selection or arrangement for its copyright claim in the alleged compilation of objects, and that
`portion of its copyright claim was dismissed with prejudice. Planner 5D II, 2020 WL 4260733, at
`*6. Defendants do not challenge the substance of Planner 5D’s copyright allegations in the
`motion before me.
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`registrations for “Planner 5D objects” and “Planner 5D scenes” for works completed and
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`published in 2019. It subsequently filed Case No. 20-cv-2198 with a single count for infringement
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`of those two copyrights.
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`I dismissed Planner 5D’s copyright infringement claims again because the alleged works
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`were from 2016 and had not been registered. I could not conclude that the copyright registrations
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`Planner 5D obtained for works completed and published in 2019 covered the alleged works from
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`2016. I gave Planner 5D leave to fix that discrepancy. Planner 5D II, 2020 WL 4260733, at * 4–
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`5.
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`On September 14, 2020, Planner 5D submitted two new applications to the Copyright
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`Office, seeking to register all Planner 5D objects created through January 13, 2016 and all public
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`gallery scenes created through February 17, 2016. See Copyright Complaint (“Copyright
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`Compl.”) [Dkt. No. 1] in Case No. 20-cv-8261-WHO, ¶ 96. On November 16, 2020, the
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`Copyright Office refused each of the applications. It wrote:
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`Although the Registration Program Office has concluded that the
`deposits submitted with these applications do not meet the
`requirements for registering a work as a computer program you have
`delivered to the Office a deposit, application, and fee required for
`registration of the computer programs ‘in proper form,’ as required to
`institute a civil action for infringement under 17 U.S.C. § 411(a).
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`Id., Ex. A (November 16, 2020 Copyright Office Letter) at 2; id. ¶ 102. In the next paragraph, it
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`indicated that Planner 5D could also timely request reconsideration of the refusals by following
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`the procedures outlined in 37 C.F.R. § 202.5. It did not condition its conclusion about section
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`411(a) on whether Planner 5D requested reconsideration of the refusals.
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`The pertinent regulation states that copyright owners who are refused registration may
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`request, within three months, reconsideration from the Copyright Office Registration Program. 37
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`C.F.R. § 202.5(b). A Registration Program staff attorney not involved in the initial examination
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`conducts a de novo review. See Compendium of U.S. Copyright Office Practices § 1703.2 (3d ed.
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`2021), available at https://www.copyright.gov/comp3/docs/compendium.pdf. If the refusal is
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`maintained, the regulations provide that Planner 5D may request a second reconsideration from the
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`Copyright Office Review Board (“Board”), which consists of the Register of Copyrights and the
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`Case 3:19-cv-03132-WHO Document 112 Filed 04/14/21 Page 4 of 13
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`General Counsel (or their designees), and a third member designated by the Register. 37 C.F.R. §
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`202.5(f). The second request for reconsideration is also subject to de novo review. See
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`Compendium of U.S. Copyright Office Practices § 1704.2. Decisions by the Board are
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`nonprecedential and constitute final agency action, and denials can be challenged under the APA.
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`37 C.F.R. §§ 202.5(c), (g).2
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`On November 23, 2020, Planner 5D filed its third copyright complaint in Case No. 20-cv-
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`8261. See Copyright Compl. After stipulating to an extension on their response deadline and
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`based on Planner 5D’s representation that it planned on seeking reconsideration with the
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`Copyright Office before the February 16, 2021 deadline, defendants moved to dismiss the
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`Copyright Complaint on February 2, 2021. See MTD 7. On February 16, 2021, Planner 5D
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`submitted a request to the Copyright Office to reconsider its initial registration refusal. See
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`Declaration of Marc N. Bernstein in Opposition to Motion to Dismiss (“Bernstein Decl.”) [Dkt.
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`No. 107-1] ¶ 3.
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`LEGAL STANDARD
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`Under Federal Rule of Civil Procedure 12(b)(6), a district court must dismiss a complaint
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`if it fails to state a claim upon which relief can be granted. To survive a Rule 12(b)(6) motion to
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`dismiss, the plaintiff must allege “enough facts to state a claim to relief that is plausible on its
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`face.” See Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007). A claim is facially plausible
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`when the plaintiff pleads facts that “allow the court to draw the reasonable inference that the
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`defendant is liable for the misconduct alleged.” See Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009)
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`2 Planner 5D contends that the reconsideration process is lengthy, averaging about 17 months long
`in the last few years. See Declaration of Natalia Ermakova in Opposition to Motion to Dismiss
`[Dkt. No. 107-2]. It seeks judicial notice of the chart it compiled on average reconsideration
`processing time using information from the Copyright Office’s online database of Review Board
`Opinions. Id., Ex. A; Planner 5D’s Request for Judicial Notice in Support of its Opposition to
`Motion to Dismiss [Dkt. No. 108]. Defendants oppose on grounds that the chart is not a public
`document or government record, and further point out some inaccuracies on how Planner 5D
`calculated the reconsideration processing times. See Abbas v. Vertical Ent., LLC, No. 2:18-cv-
`7399, 2019 WL 6482229, at *1 (C.D. Cal. Aug. 19, 2019) (taking judicial notice of Copyright
`Office records, but not “comparison charts that Defendants claim were created from materials
`obtained from the Copyright Office”). Planner 5D’s request for judicial notice is DENIED. While
`I will not consider Planner 5D’s chart, I will consider the official Copyright Office records cited
`by both parties.
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`(citation omitted). There must be “more than a sheer possibility that a defendant has acted
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`unlawfully.” Id. While courts do not require “heightened fact pleading of specifics,” a plaintiff
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`must allege facts sufficient to “raise a right to relief above the speculative level.” See Twombly,
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`550 U.S. at 555, 570.
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`DISCUSSION
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`Section 411(a) of the Copyright Act provides that “no civil action for infringement of the
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`copyright in any United States work shall be instituted until preregistration or registration of the
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`copyright claim has been made” with the Copyright Office. 17 U.S.C. § 411(a). “In any case,
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`however, where the deposit, application, and fee required for registration have been delivered to
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`the Copyright Office in proper form and registration has been refused, the applicant is entitled to
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`institute a civil action for infringement if notice thereof, with a copy of the complaint, is served on
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`the Register of Copyrights.” Id.
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`The parties agree that section 411(a) permits a plaintiff to institute an infringement action
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`after one of two things happen—a “registration of the copyright claim has been made” or “has
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`been refused.” 17 U.S.C. § 411(a). In other words, the statute creates two tracks for pursuing an
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`infringement action in federal court—a “registration grant” track under the first sentence of
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`section 411(a) and a “registration refusal” track under the second sentence of section 411(a). This
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`case concerns the second track.
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`The parties dispute whether Planner 5D can commence an infringement action based on an
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`initial refusal determination while simultaneously asking the Copyright Office to reconsider those
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`very refusals. In defendants’ view, if Planner 5D brought this infringement action based on the
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`registration refusals, without seeking reconsideration from the Copyright Office, then the second
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`sentence of section 411(a) would be satisfied. MTD 3. But because Planner 5D is now seeking
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`reconsideration of the registration refusals, defendants contend that section 411(a) will not be
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`properly satisfied until after the Copyright Office rules on the request for reconsideration. Id.
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` Neither party has cited other examples of a copyright plaintiff attempting to litigate an
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`infringement claim on the basis of a refused application while its request for reconsideration is
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`pending. That is to be expected given the unique posture of this case; the vast majority of
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`applications are granted by Copyright Office, allowing plaintiffs to bring infringement actions
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`under the first sentence of section 411(a). See United States Copyright Office, 2019 Annual
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`Report at 38, available at https://www.copyright.gov/reports/annual/2019/ar2019.pdf (“In fiscal
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`2019, the Office rejected approximately 4 percent of claims received”).
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`The statutory text does not provide guidance on the finality issue. The second sentence of
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`section 411(a) only states that applicants are entitled to institute a civil infringement actions after a
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`registration refusal if “notice thereof, with a copy of the complaint, is served on the Register of
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`Copyrights.” 17 U.S.C. § 411(a). This notice requirement allows the Register to choose whether
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`to “become a party to the action with respect to the issue of registrability of the copyright claim by
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`entering an appearance within sixty days after such service, but the Register’s failure to become a
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`party [does] not deprive the court of jurisdiction to determine that issue.” Id.; see Nova Stylings,
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`Inc. v. Ladd, 695 F.2d 1179, 1181 (9th Cir. 1983) (“As is evident, a party may now sue for
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`infringement notwithstanding the refusal of the Register to register the claim to copyright. The
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`only precondition is that notice be served on the Register.”). Defendants do not contend that
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`Planner 5D has failed to meet the notice requirement delineated in the second sentence of section
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`411(a). Instead, they argue that section 411(a) implicitly imposes a finality requirement that
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`precludes Planner 5D from simultaneously seeking reconsideration from the Copyright Office and
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`litigating its infringement claim in this court.
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`Both parties rely on Fourth Estate Pub. Benefit Corp. v. Wall-Street.com, LLC, 139 S. Ct.
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`881 (2019), but unfortunately that case does not provide guidance on the core issue here. Fourth
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`Estate considered whether, under the first sentence of section 411(a), a “registration of the
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`copyright has been made” as soon as the copyright claimant delivered the required applications,
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`copies of the work, and fee to the Copyright Office (the “application approach”) or whether a
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`registration been made only after the Copyright Office reviews and registers the copyright (the
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`“registration approach”). Fourth Estate, 139 S. Ct. at 886. The Court adopted the “registration
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`approach,” because “[r]ead together, [section] 411(a)’s opening sentences focus not on the
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`claimant’s act of applying for registration, but on action by the Copyright Office—namely, its
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`registration or refusal to register a copyright claim.” Id. at 888–89. As one of several reasons for
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`rejecting the “application approach,” the Court noted that if an application alone sufficed, then
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`“[section] 411(a)’s second sentence—allowing suit upon refusal of registration—would be
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`superfluous” because “[w]hat utility would that allowance have if a copyright claimant could sue
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`for infringement immediately after applying for registration without awaiting the Register’s
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`decision on her application?” Id. at 889.
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`The flawed “application approach” reading of section 411(a) “stem[med] in part from
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`[Fourth Estate’s] misapprehension of the significance of certain 1976 revisions to the Copyright
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`Act.” Fourth Estate, 139 S. Ct. at 890. The Court explained that the “refusal” language in the
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`second sentence of section 411(a) was enacted in response to the Second Circuit’s opinion in
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`Vacheron & Constantin-Le Coultre Watches, Inc. v. Benrus Watch Co., 260 F.2d 637 (2d Cir.
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`1958). Id.; see H.R. REP. 94-1476, at 157 (“The second and third sentences of section 411(a)
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`would alter the present law as interpreted in [Vacheron].”). In Vacheron, the Second Circuit held
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`that copyright owners who are refused registration must bring a separate mandamus action against
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`the Register to obtain a registration certificate before initiating an infringement suit. Vacheron,
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`260 F.2d at 640–41. Congress changed the law “to permit an infringement suit upon refusal of
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`registration.” Fourth Estate, 139 S. Ct. at 891 n.5. Although copyright owners were no longer
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`required to first compel the Copyright Office to issue a registration before filing an infringement
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`action, section 411(a) did “not eliminate Copyright Office action as the trigger for an infringement
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`suit.” Id. That action may be either registration or refusal. Id. at 891.
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`By seeking to litigate its infringement claim while simultaneously seeking reconsideration
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`of its refused applications from the Copyright Office, defendants argue that Planner 5D is asking
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`me to circumvent Fourth Estate’s rejection of the “application approach.” MTD 11. Because
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`Fourth Estate prohibits copyright plaintiffs from suing for infringement at the same time as they
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`also seek to register their alleged copyrights, it follows, they reason, that an infringement suit may
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`be filed only after the Register has issued a final decision refusing registration. But the Fourth
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`Estate opinion is silent on whether a finality requirement exists for section 411(a).
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`Defendants cite an amicus brief submitted in Fourth Estate, in which the United States
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`endorsed the “registration approach” because the second sentence of section 411(a) would
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`otherwise be superfluous. See Brief for the United States as Amicus Curiae, 2018 WL 2264108, at
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`*14–15. “Thus,” the United States concluded, “an applicant who has submitted a proper
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`application package may file an infringement suit once the Register has issued a final decision
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`refusing registration.” Id. at *15 (emphasis added). Defendants latch on to the word “final” in the
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`United States’ amicus brief. This is the slenderest of reeds to grasp. While the Court’s opinion in
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`Fourth Estate recognized the superfluous statutory argument raised in the United States’ amicus
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`brief, it did not say that the refusal necessarily had to be a final action by the Copyright Office to
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`trigger the second sentence of section 411(a). Instead, the Court only said that section 411(a)
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`“requires owners to await action by the Register before filing suit for infringement.” Fourth
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`Estate, 139 S. Ct. at 892 (emphasis added).
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`The Copyright Office has acted here. It refused Planner 5D’s registration applications.
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`And it will act again on reconsideration. But based on the reasoning in Fourth Estate, I am not
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`convinced that Planner 5D’s request for reconsideration effectively nullifies satisfaction of section
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`411(a)’s pre-suit registration requirement.3 In reaching its conclusion, the Court found Fourth
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`Estate’s fear that “a copyright owner may lose the ability to enforce her rights if the Copyright
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`Act’s three-year statute of limitations runs out before the Copyright Office acts on her application
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`for registration” was “overstated, as the average processing time for registration applications [was]
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`seven months, leaving ample time to sue after the Register’s decision, even for infringement that
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`began before submission of an application.” Fourth Estate, 139 S. Ct. at 892 (citing U.S.
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`Copyright Office, Registration Processing Times (Oct. 2, 2018) (Registration Processing Times),
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`https://www.copyright.gov/ registration/docs/processing-times-faqs.pdf (as last visited Mar. 1,
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`2019)). If I adopt defendants’ finality requirement, that fear would be more realistic here.
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`Requiring Planner 5D to wait for Copyright Office’s reconsideration decision would have the
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`anomalous result of nullifying a properly filed complaint in federal court and could encroach on
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`3 Notably, defendants did not know that they could proceed with this nullification argument before
`their motion to dismiss was due, a deadline that was already extended by stipulation. See MTD 7
`(recognize that their “responses to the Complaint were due before Planner 5D’s [three-month]
`deadline to seek reconsideration,” and thus they “were not able to wait to see what Planner 5D did
`before determining how they should proceed”).
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`the statute of limitation period, especially if Planner 5D ends up pursuing a second reconsideration
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`after receiving a decision on the first.
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`As the statutory text and Fourth Estate do not help much in answering the issue here, I
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`look elsewhere for guidance. The letter sent by the Copyright Office to Planner 5D is a place to
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`start. In its refusal of the registration applications on November 16, 2020, the Copyright Office
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`stated that Planner 5D had done all of the things “required to institute a civil action for
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`infringement under 17 U.S.C. § 411(a).” November 16, 2020 Copyright Office Letter at 2;
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`Copyright Compl. ¶ 102. In the next paragraph of the letter, the Copyright Office indicated that
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`Planner 5D could request reconsideration of the refusals by following the procedures outlined in
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`37 C.F.R. § 202.5; it did not condition its conclusion about section 411(a) on whether Planner 5D
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`requested reconsideration.
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`The letter is consistent with guidance provided in the internal Compendium of U.S.
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`Copyright Office Practices. Section 1706 on “Final Agency Action” states:
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`A decision issued by the Review Board in response to a second
`request for reconsideration constitutes the final agency action with
`respect to the issues addressed therein. 37 C.F.R. § 202.5(g).
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`If the U.S. Copyright Office upholds the refusal to register following
`a request for reconsideration, an applicant may appeal that decision
`under the Administrative Procedure Act (“APA”) by instituting a
`judicial action against the Register of Copyrights in federal district
`court. See 5 U.S.C. § 500 et seq.
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`An applicant does not need to appeal a refusal to register under the
`APA in order to institute an infringement action in federal district
`court. See 17 U.S.C. § 411(a). However, the applicant must serve a
`copy of the infringement complaint on the Register, and “[t]he
`Register may, at his or her option, become a party to the action with
`respect to the issue of registrability of the copyright claim by entering
`an appearance within sixty days after such service . . .” Id.
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`Compendium of U.S. Copyright Office Practices § 1706.
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`Williams F. Patry, a prominent commentator on copyright law, interprets section 1706 of
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`the Compendium as requiring exhaustion of the administrative process “for APA appeal but not to
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`bring a suit against an infringer pursuant to a section 411(a) rejection,” although “the text of the
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`regulation does not make this distinction.” See Appeals within the Copyright Office from a
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`refusal to register a claim, 5 Patry on Copyright § 17:97. This case is an infringement action, not
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`Case 3:19-cv-03132-WHO Document 112 Filed 04/14/21 Page 10 of 13
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`an APA action seeking review of the Copyright Office’s refusal to register.
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`Patry explains:
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`The initial inquiry in any discussion of exhaustion of administrative
`remedies is congressional intent. Where, in the statute, Congress has
`required exhaustion, the inquiry stops there. In the case of section
`411(a), the statute is silent, merely indicating that where a proper
`application has been presented to the Office “the applicant is entitled
`to institute an action for infringement of notice thereof, with a copy
`of the complaint, is served on the Register of Copyrights.” Where
`Congress “has not clearly required exhaustion, sound judicial
`discretion governs.” In determining whether exhaustion is required,
`courts “must balance the interest of the individual in retaining prompt
`access to a federal judicial forum against the countervailing
`institutional interests favoring exhaustion.” In the case of section
`411(a), the need to promptly bring an infringement suit, including
`injunctive relief would, in most if not all cases, outweigh any
`institutional interests, especially since the Office itself takes the
`position that no exhaustion is required for section 411(a) purposes.
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`Id. (citations omitted). Thus, “[t]he line examiner’s action is a definite rejection of the claim,
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`denying registration and at least facially triggering section 411(a).” Id.
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`Patry “found no judicial decision that suggests otherwise,” and instead found at least three
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`decisions where “courts appear willing to proceed under section 411(a) based merely on the
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`examiner’s rejection.” Id. (citing cases). He concludes, “while it would be desirable for the
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`Copyright Office to clarify the matter, there appears to be no need for a rejected applicant to
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`exhaust the Office’s appeal process before proceeding under section 411(a), although exhaustion
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`is required for APA review.” Id.
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`Considered together, the Copyright Office’s November 16, 2020 Letter, the internal
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`guidance provided by the Compendium, and the treatise interpreting the Compendium, all support
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`a conclusion that Planner 5D has sufficiently met the registration requirement under the second
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`sentence of section 411(a).4 On that basis, I will take Patry’s suggestion to balance the interest of
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`4 In their reply brief, defendants cite another section of the Compendium that they argue supports
`imposing a finality requirement. Section 625 states that “[t]he registration decision date is the date
`that ‘registration of the copyright claim has been made in accordance with [title 17].’”
`Compendium of U.S. Copyright Office Practices § 625 (quoting 17 U.S.C. § 411(a)). Thus, when
`registration is granted after reconsideration, the registration decision date “is the date that the
`Office completed its examination and approved the claim after reviewing the applicant’s first or
`second request for reconsideration.” Id. § 1705. This simply shows the date on which a
`“registration of the copyright claim has been made,” under the first track of section 411(a).
`Defendants do not convincingly explain how this would have any effect on the second track of
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`Case 3:19-cv-03132-WHO Document 112 Filed 04/14/21 Page 11 of 13
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`Planner 5D in retaining prompt access to a federal judicial forum against the institutional interests
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`favoring exhaustion.
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`Defendants are concerned that allowing this infringement action to proceed before the
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`Copyright Office has issued its final reconsideration decision would prejudice them, this court,
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`and the Copyright Office. See MTD 12–14. None of these arguments bears weight, particularly
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`against Planner 5D’s interest in prompt access to court.
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`Defendants contend that Planner 5D would have me consider “the issue of registrability”
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`before the Copyright Office completes its de novo review, potentially depriving me of the benefit
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`of the Office’s considered judgment when I consider the merits of Planner 5D’s infringement
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`claim. If the Copyright Office decides on reconsideration to register the alleged works, they
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`reason, the issue of registrability will be moot and any time I spend on the issue before the Office
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`reaches its decision would thus be wasted.
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`It is clear, however, that “[w]here the Copyright Office denies registration, and the
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`unsuccessful applicant subsequently brings an infringement action, courts nonetheless make an
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`independent determination as to copyrightability.” Aqua Creations USA Inc. v. Hilton Hotels
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`Corp., No. 10 CIV. 246 PGG, 2011 WL 1239793, at *3 (S.D.N.Y. Mar. 28, 2011), aff’d sub nom.
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`Aqua Creations USA Inc. v. Hilton Worldwide, Inc., 487 F. App’x 627 (2d Cir. 2012). As the
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`Ninth Circuit explained in Nova Stylings, 695 F.2d at 1181, a party may sue for infringement
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`“notwithstanding the refusal of the Register to register the claim to copyright” as long as “notice
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`[is] served on the Register,” and “[o]nce that has occurred, the district court can determine both
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`the validity of the copyright, which in turn determines its registrability, as well as whether an
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`infringement has occurred.” To be sure, the Copyright Office’s final reconsideration
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`determination can have persuasive value. But Planner 5D has been trying for almost two years to
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`get this case off the ground, and I am not convinced that waiting for such a determination warrants
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`freezing Planner 5D’s infringement suit at this stage.
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`Next, defendants argue that the Copyright Office will be prejudiced because Planner 5D’s
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`section 411(a) at issue in this case, which allows suit when a “registration has been refused.” 17
`U.S.C. 411(a).
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`Northern District of California
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`attempt to litigate on the basis of an initial refusal while a request for reconsideration is pending
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`deprives the Office of its right to make an informed decision whether to exercise its right to
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`participate in the litigation. As noted above, section 411(a) requires that a plaintiff bringing an
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`infringement suit under the second “refusal” track serve a copy of the complaint on the Copyright
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`Office to give it the opportunity to decide whether to intervene in the litigation “with respect to the
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`issue of registrability,” a decision the Copyright Office must make within sixty days of service.
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`17 U.S.C. § 411(a). On the other hand, a registration applicant has three months to request that the
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`Copyright Office reconsider an initial refusal. See 37 C.F.R. § 202.5(b)(3). Thus, defendants
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`contend, a plaintiff coul