Case 1:18-cv-00034-KCD Document 173 Filed 05/04/22 Page 1 of 10
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`IN THE UNITED STATES COURT OF FEDERAL CLAIMS
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`Third-Party Defendant.
`___________________________________ )
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`HEALTHeSTATE, LLC,
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`Plaintiff,
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`v.
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`THE UNITED STATES,
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`Defendant,
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`and
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`ASM RESEARCH, LLC,
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`No. 18-cv-34C
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`Filed Under Seal: April 15, 2022
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`Reissued: May 5, 2022*
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`OPINION AND ORDER
`Chronicling what it contends are knowing inaccuracies in Plaintiff HealtheState’s
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`applications for copyright registration, Third-Party Defendant ASM Research, LLC (“ASM”)
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`requests pursuant to 17 U.S.C. § 411(b)(2) that the Court seek the opinion of the Register of
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`Copyrights (“Register”) on whether it would have refused registration had it known of the
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`inaccurate information. The Government separately filed a notice joining ASM’s motion.
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`A spate of litigation has since ensued. The Government moved for leave to file a reply to
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`address the judicial estoppel arguments raised in Plaintiff’s opposition brief. Plaintiff later moved
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`for leave to file attorney-client privileged communications in camera and to file a sur-reply to
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`rebut arguments raised in ASM’s briefing. These ancillary motions were opposed by Plaintiff and
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`ASM, respectively. While the parties were briefing Plaintiff’s motion, the Government submitted
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`a Notice of Supplemental Authority advising the Court of the Supreme Court’s recent decision in
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`Unicolors, Inc. v. H&M Hennes & Mauritz, LP, 142 S. Ct. 941 (2022)—a case that featured
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`prominently in Plaintiff’s judicial estoppel claim. Plaintiff, of course, filed a response to the
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`Case 1:18-cv-00034-KCD Document 173 Filed 05/04/22 Page 2 of 10
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`Government’s notice. All in all, the parties have submitted 13 filings related to ASM’s referral
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`request, totaling 6,491 pages (including exhibits).1 Most of the information is not material to the
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`narrow legal question presently before the Court: that is, whether the Court must refer the matter
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`to the Register in light of the allegations that Plaintiff provided knowingly inaccurate information
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`when registering the copyright at issue in this infringement action.
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`For the reasons that follow, the Court GRANTS ASM’s Motion to Refer Questions to the
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`Register of Copyrights and DENIES AS MOOT the ancillary motions filed by the Government
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`and Plaintiff.
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`BACKGROUND
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`At issue in ASM’s motion are two sets of software source code registered by Plaintiff with
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`the United States Copyright Office (“USCO”), titled HEALTHeSTATE and HeVEMR (also
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`referred to as ROVR). ASM’s Mot. at 5, ECF No. 146. Plaintiff submitted applications to register
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`HEALTHeSTATE on February 28, 2018, and HeVEMR on March 1, 2018. Id. at 8. They were
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`given registration numbers TX-8-498-425 (“’425 Registration”) and TX-8-498-391 (“’391
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`Registration”), respectively. Id. at 5, 8. ASM’s motion alleges that Plaintiff provided four types
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`of knowingly inaccurate information on its applications for the ’425 and ’391 Registrations.
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`The first and second types of knowingly inaccurate information concern the date of
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`publication of the software and its year of completion. On its applications, Plaintiff indicated that
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`the relevant software was published and completed in 2013 for the ’425 Registration and 2006 for
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`1 ASM also filed a Motion to Exclude Portions of the January 20, 2022, and February 11,
`2022, Declarations of Barry R. Greene as Improper Expert Testimony. See ECF No. 161. That
`motion is related in part to evidence Plaintiff submitted with its opposition to ASM’s referral
`motion but also concerns additional, unrelated evidence submitted in the course of the parties
`exchanging expert reports. The Court need not address the substance of these declarations when
`determining whether ASM has met its burden to refer questions to the Register. Accordingly, the
`Court will rule on that request separately.
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`2
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`Case 1:18-cv-00034-KCD Document 173 Filed 05/04/22 Page 3 of 10
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`the ’391 Registration. Id. at 5. ASM, however, avers that Plaintiff admitted in sworn interrogatory
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`responses that the only copyrighted software at issue in this litigation is “HEALTHeSTATE
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`Version 5.2 Iteration 11 (2011)” and that the same was completed and published in 2011. Id. It
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`argues that Plaintiff’s contemporaneous internal reports and documentation, among other
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`evidence, show that Plaintiff knew this software was completed and released in 2011 but chose to
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`list different dates on its applications to the USCO in February and March 2018. ASM’s Reply at
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`7, 10, ECF No. 151; see ECF No. 146 at 5–6.
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`The third type of knowingly inaccurate information involves Plaintiff’s alleged failure to
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`identify and disclaim previously published works of authorship on which the software at issue was
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`allegedly based. ASM argues that Plaintiff’s applications indicate that the software was not based
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`on any pre-existing material; however, testimony and documents received in discovery show
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`Plaintiff developed and published “numerous versions of its software to Government and
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`commercial contractual counterparties well before 2011.” ECF No. 146 at 6; see id. at 23–32.
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`Among other things, ASM points to evidence that Plaintiff repeatedly touted the close relationship
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`between HEALTHeSTATE and HEALTHeFORCES—an earlier Government software—“in
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`promotional materials, plainly demonstrating [its] knowledge of the underlying work.” ECF No.
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`151 at 15.
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`The final type of knowingly inaccurate information relates to the deposit copies that
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`Plaintiff submitted to the Register, which allegedly did not correspond to the software that Plaintiff
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`attempted to register. According to ASM, “[t]he deposit copies reflect software dated no earlier
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`than 2016.” ECF No. 146 at 6 (emphasis in original). Further, citing to analysis by its expert and
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`testimony of Plaintiff’s CEO (Barry Greene), ASM alleges that a comparison of the deposit copies
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`and the 2011 source code indicates that the deposit copies had lines of code edited to remove
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`3
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`Case 1:18-cv-00034-KCD Document 173 Filed 05/04/22 Page 4 of 10
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`copyright references to third parties. Id. at 7; see ECF No. 151 at 17. Because Plaintiff made the
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`alterations, ASM suggests that the deposit copies provided were knowingly inaccurate. Id.
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`According to ASM, because it has sufficiently alleged (and demonstrated) that Plaintiff
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`knowingly provided inaccurate information in its registration applications, the Court must refer
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`this matter to the Register pursuant to § 411(b)(2). It proposes the following questions on which
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`the Court should seek the Register’s opinion:
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`1. Would the Register of Copyrights have rejected the ’425
`Registration had it known any one or any combination of the
`following:
`a. The claimed software was not first published on February
`28, 2013;
`b. The claimed software was not completed in 2013;
`c. The claimed software is derived from undisclosed other
`works, including prior published versions of Plaintiff’s own
`software; and
`d. The source code submitted as the deposit copy included
`material added after February 28, 2013, and was altered to
`remove third-party copyright notices and insert notices
`attributing rights to Plaintiff.
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`2. Would the Register of Copyrights have rejected the ’391
`Registration had it known any one or any combination of the
`following:
`a. The claimed software was not first published on January
`1, 2006;
`b. The claimed software was not completed in 2006;
`c. The claimed software is derived from undisclosed other
`works, including prior published versions of Plaintiff’s own
`software; and
`d. The source code submitted as the deposit copy included
`material added after January 1, 2006, and was altered to
`remove third-party copyright notices and insert notices
`attributing rights to Plaintiff.
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`ECF No. 146 at 7–8.
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`In response, Plaintiff does not meaningfully dispute that some information in the ’425 and
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`’391 registration applications at issue in ASM’s motion was, in fact, inaccurate. Instead, Plaintiff
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`4
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`Case 1:18-cv-00034-KCD Document 173 Filed 05/04/22 Page 5 of 10
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`posits that any such information was not “submitted as knowingly inaccurate.” Pl.’s Resp. to
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`AMS’s Mot. at 13, ECF 149 (emphasis in original). It submits a declaration by Mr. Greene, among
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`other evidence, to support its contention that any inaccuracies were attributable to either (1) a good
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`faith misunderstanding on Mr. Greene’s part as to the information the applications sought, (2)
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`Plaintiff’s inability to access critical facts about the source code due to ASM blocking it from the
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`development environment, (3) disputed questions of law at issue in this case, or (4) harmless errors
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`that occurred when converting the deposit copies to a .docx format. See id. at 13–14, 16–18, 21–
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`23. It also argues that ASM’s motion is both untimely, as fact discovery has closed, and
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`ineffectual, given Plaintiff’s ability to cure any inaccuracies. Id. at 24.
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`DISCUSSION
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`The statute at issue is clear. As a prerequisite to bringing a copyright infringement suit, a
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`copyright holder must register its works. 17 U.S.C. § 411(a). A copyright registration certificate
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`provides sufficient grounds to bring an infringement action “regardless of whether the certificate
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`contains any inaccurate information, unless—(A) the inaccurate information was included on the
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`application for copyright registration with knowledge that it was inaccurate; and (B) the inaccuracy
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`of the information, if known, would have caused the Register of Copyrights to refuse registration.”
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`Id. § 411(b)(1). In a case where such inaccurate information “is alleged,” a court “shall request
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`the [Register] to advise the court whether the inaccurate information, if known, would have caused
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`the [Register] to refuse registration.” Id. § 411(b)(2). There is not ample case law discussing this
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`statutory referral procedure, but courts appear to be in consensus that § 411(b)(2) imposes a
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`mandatory obligation to refer questions if the statutory criteria are met. See, e.g., Palmer/Kane
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`LLC v. Rosen Book Works LLC, 188 F. Supp. 3d 347, 348 (S.D.N.Y. 2016) (collecting cases);
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`Tecnoglass, LLC v. RC Home Showcase, Inc., No. 16-24328, 2018 WL 11353287, at *4 (S.D. Fla.
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`Case 1:18-cv-00034-KCD Document 173 Filed 05/04/22 Page 6 of 10
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`Sept. 18, 2018) (“[T]hat statute provides that a Court ‘shall’ make a referral upon an ‘alleg[ation]’
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`that ‘inaccurate information’ was included on an ‘application for copyright registration with
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`knowledge that it was inaccurate.’ The Court finds this language unambiguous and mandatory.”).
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`The courts are divided, however, on the appropriate standard for determining whether the
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`movant has sufficiently alleged knowing inaccuracies. Some courts, emphasizing the purpose of
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`§ 411(b)(2) and concerns regarding the potential for its abuse, have required the movant to
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`demonstrate that the information provided was knowingly inaccurate before it will refer questions
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`to the Register, but this standard ignores the statutory language. See, e.g., DeliverMed Holdings,
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`LLC v. Schaltenbrand, 734 F.3d 616, 625 (7th Cir. 2013) (“[C]ourts can demand that the party
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`seeking invalidation first establish that the other preconditions to invalidity are satisfied before
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`obtaining the Register’s advice on materiality.”). If Congress intended the referral procedure to
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`be used only where a party first proves the information was inaccurate and the copyright holder
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`knew the information was inaccurate, it would have said so. See Russello v. United States, 464
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`U.S. 16, 23 (1983) (“The short answer is that Congress did not write the statute that way.” (internal
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`citation omitted)); Desert Palace, Inc. v. Costa, 539 U.S. 90, 98 (2003) (“[W]here, as here, the
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`words of the statute are unambiguous, the judicial inquiry is complete.” (internal marks omitted)).
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`Rather, the statute expressly provides that a court’s duty to refer questions to the Register
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`is triggered when the movant alleges the type of inaccuracy described in § 411(b)(1). 17 U.S.C. §
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`411(b)(2). The movant’s burden to prove its factual allegations does not arise until the merits stage
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`of the proceeding, where the court can more appropriately make the findings necessary to
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`determine § 411(b)’s scienter requirement. See Tecnoglass, 2018 WL 11353287, at *4 (“requiring
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`a party to establish scienter prior to referral . . . would in many cases render section 411(b)(2)’s
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`referral procedure meaningless” because “[s]cienter is a fact intensive determination, often
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`Case 1:18-cv-00034-KCD Document 173 Filed 05/04/22 Page 7 of 10
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`appropriately decided by a jury”); Olem Shoe Corp. v. Wash. Shoe Co., No. 09–23494–CIV, 2010
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`WL 3505100, at *3 (S.D. Fla. Sept. 3, 2010) (rejecting argument that referral was “only triggered
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`if Olem Shoe proves the two requirements in § 411(b)(1) (emphasis in original)); see also Bruhn
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`v. United States, 144 Fed. Cl. 755, 784 (2019) (granting referral motion before trial and then
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`making findings with respect to knowing inaccuracies based on the trial record).
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`That is not to say, however, that a bare, unsubstantiated allegation would be sufficient
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`under the statute. Even courts that hew closely to the plain language interpretation of § 411(b)(2)
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`review the movant’s request to determine whether it has provided some basis for its allegation and
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`presented a proper question for referral to the Register. See, e.g., Olem Shoe Corp., 2010 WL
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`3505100, at *3. Here, ASM meets that standard. The motion discusses and attaches various
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`evidence on which its allegations are based. See, e.g., ECF No. 146 at 17 (pointing to admissions
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`and evidence that the software at issue in the ’425 Registration was published in 2011 rather than
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`on February 28, 2013); id. at 20 (arguing that the same evidence shows the software was completed
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`in 2011 rather than 2013); id. at 21 (identifying evidence that alleged inaccurate publication and
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`completion dates were known to Plaintiff at the time); id. at 23 (pointing to admissions by Plaintiff
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`that the ’425 Registration was for code that incorporated previous iterations of the software that
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`were not disclosed); id. at 30 (identifying evidence that this alleged non-disclosure was knowingly
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`made by Plaintiff); id. at 35 (pointing to evidence that shows Plaintiff allegedly altered lines of
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`code containing copyright notices); id. at 39 (identifying evidence that the software at issue in the
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`’391 Registration was not published in 2006); id. at 40 (indicating evidence that allegedly shows
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`the ’391 Registration completion date was knowingly mischaracterized by Plaintiff); id. at 41
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`(discussing evidence that Plaintiff knowingly failed to identify prior published versions of the
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`software at issue in the ’391 Registration); id. at 43 (pointing to evidence that Plaintiff allegedly
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`Case 1:18-cv-00034-KCD Document 173 Filed 05/04/22 Page 8 of 10
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`altered lines of code containing copyright notices). ASM also cites case law supporting the
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`conclusion that referral to the Register in circumstances involving these types of alleged
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`inaccuracies is proper. Id. at 20, 22, 33, 37–38.
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`Indeed, it is largely undisputed that the applications for the ’425 and ’391 Registrations
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`contain some inaccuracies. See ECF No. 151 at 7, 10, 12, 16. The parties’ primary dispute is
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`whether ASM has sufficiently alleged that Mr. Greene, who prepared the applications, knew of the
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`inaccuracies at the time he submitted the applications. The Supreme Court in Unicolors recently
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`clarified the standard for demonstrating “knowledge” of inaccurate information under § 411(b)(2).
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`The Court held that “‘knowledge’ means actual, subjective awareness of both the facts and the
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`law.” Unicolors, 142 S. Ct. at 947 (describing actual knowledge scienter requirement). Thus, a
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`copyright holder’s providing inaccurate information based on a good faith mistake of law or fact
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`does not satisfy the statutory criteria of § 411(b)(1). Id. The Court noted, however, that “courts
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`need not automatically accept a copyright holder’s claim that it was unaware of the relevant legal
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`requirements of copyright law.” Id. at 948. Actual knowledge can also be proven through a finding
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`of willful blindness or based on circumstantial evidence that the applicant was actually aware of
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`the inaccuracy of the information. Id.
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`Plaintiff, relying on Mr. Greene’s declaration, states that no information in the applications
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`was knowingly inaccurate. ECF No. 149 at 24. Mr. Greene avers that he “prepared and completed
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`the registration with the most accurate information available to him at the time,” acknowledging
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`that he “is neither an expert in copyright law nor procedure.” Id. at 7. For its part, Plaintiff also
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`discusses and attaches other evidence that it contends refutes ASM’s allegations to the contrary.
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`See, e.g., id. at 16, 17, 19. As Unicolors recognized, Mr. Greene’s declaration does not necessarily
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`defeat ASM’s allegations. Unicolors, 142 S. Ct. at 948. More importantly, the Court need not
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`Case 1:18-cv-00034-KCD Document 173 Filed 05/04/22 Page 9 of 10
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`resolve these factual disputes at this juncture because ASM is not required to prove knowing
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`inaccuracies in order to show that referral to the Register is required under § 411(b)(2). See
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`Tecnoglass, 2018 WL 11353287, at *4. Based on the evidence it presented, the Court finds that
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`ASM has sufficiently alleged an inaccuracy described in § 411(b)(1) and that the proposed
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`questions to the Register are proper.
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`In light of the evidence submitted in support of ASM’s motion, the Court is not concerned
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`that ASM is seeking referral to the Register in bad faith. See Schenck v. Orosz, 105 F. Supp. 3d
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`812, 818 (M.D. Tenn. 2015) (expressing concerns that § 411(b)(2) “introduc[es] a mechanism by
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`which infringers can throw up roadblocks to merited infringement lawsuits, simply by ‘alleging’
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`technical violations of the underlying copyright registrations”). Nor does the Court believe referral
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`will delay the litigation or unduly prejudice Plaintiff. ASM has not requested, and the Court is not
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`ordering, a stay of the proceedings. See Palmer/Kane, 188 F. Supp. 3d at 349 (holding that the
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`statute does not “require courts to stay proceedings while a court’s request for an advisory opinion
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`is pending”). The Court also is not abdicating to the Register its duty to determine questions of
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`law and fact, as Plaintiff is apparently concerned.2 Referral will simply allow the Register to
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`provide the Court with her advisory opinion based on her expert knowledge of the USCO’s
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`registration policies and procedures. To the extent this issue is relevant to the pending dispositive
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`motions, the parties may request supplemental briefing to address the Register’s response.
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`In granting ASM’s motion, the Court reiterates that it is not making any final
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`determinations as to whether the ’425 and ’391 Registrations contained inaccurate information or
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`whether any inaccuracies were known to Plaintiff when it submitted its applications. Especially
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`2 Plaintiff argued that the question of whether the software at issue was derivative of earlier
`work “[u]ltimately . . . is a question of law for the Court that should not be determined by the
`USCO.” ECF No. 149 at 18.
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`Case 1:18-cv-00034-KCD Document 173 Filed 05/04/22 Page 10 of 10
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`in light of the Unicolors decision and Mr. Greene’s averments, this will likely require a fact
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`intensive determination on the merits.
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`CONCLUSION
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`The Court therefore GRANTS ASM’s Motion to Refer Questions to the Register of
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`Copyrights (ECF No. 146). The Court will refer ASM’s questions to the Register by separate
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`Order. The Court DENIES AS MOOT the Government’s Motion for Leave to File a Reply (ECF
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`No. 152) and Plaintiff’s Motion for Leave to File Documents for In Camera Review and to File a
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`Sur-reply to ASM’s Motion (ECF No. 153). The Court further ORDERS Plaintiff to file a
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`redacted version of its opposition brief (no exhibits) by no later than April 29, 2022.
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`This opinion and order will be unsealed in its entirety after April 29, 2022, unless the parties
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`submit by no later than April 25, 2022, an objection specifically identifying the protected
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`information subject to redaction. Any objecting party must submit a proposed redacted version of
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`the decision and provide the reason(s) supporting the party’s request for redaction.
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`SO ORDERED.
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`Dated: April 15, 2022
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`/s/ Kathryn C. Davis
`KATHRYN C. DAVIS
`Judge
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