Case: 18-20350 Document: 00514879644 Page: 1 Date Filed: 03/19/2019
`
`No. 18-20350
`__________________________________________________________________
`IN THE UNITED STATES COURT OF APPEALS
`FOR THE FIFTH CIRCUIT
`__________________________________________________________________
`ENERGY INTELLIGENCE GROUP, INCORPORATED;
`ENERGY INTELLIGENCE GROUP (UK) LIMITED,
`Plaintiffs – Appellants Cross-Appellees,
`v.
`
`KAYNE ANDERSON CAPITAL ADVISORS, L.P.; K.A. FUND ADVISORS, L.L.C.,
`Defendants – Appellees, Cross-Appellants
`_______________________________________________
`Cons w/18-20615
`
`
`
`
`
`ENERGY INTELLIGENCE GROUP, INCORPORATED;
`ENERGY INTELLIGENCE GROUP (UK) LIMITED,
`Plaintiffs – Appellants,
`
`
`
`
`
`
`
`v.
`
`KAYNE ANDERSON CAPITAL ADVISORS, L.P.; K.A. FUND ADVISORS, L.L.C.,
`Defendants – Appellees.
`__________________________________________________________________
`On Appeal from the United States District Court
`For the Southern District of Texas; Civil Action No. 4:14-cv-01903
`Hon. Sim Lake, District Judge, presiding
`__________________________________________________________________
`REPLY BRIEF OF APPELLEES / CROSS-APPELLANTS
`__________________________________________________________________
`Jason E. Mueller
`W. Scott Hastings
`jmueller@sheppardmullin.com
`shastings@lockelord.com
`Galyn Gafford
`Roy W. Hardin
`ggafford@sheppardmullin.com
`rhardin@lockelord.com
`SHEPPARD MULLIN RICHTER &
`LOCKE LORD LLP
`HAMPTON LLP
`2200 Ross Avenue, Suite 2800
`2200 Ross Avenue, 24th Floor
`Dallas, Texas 75201-2750
`Dallas, Texas 75201-6776
`Telephone: (214)740-8000
`Telephone: (469) 391-7400
`
`Counsel for Kayne Anderson Capital Advisors, L.P.; K.A. Fund Advisors, L.L.C.
`
`

`

`Case: 18-20350 Document: 00514879644 Page: 2 Date Filed: 03/19/2019
`
`TABLE OF CONTENTS
`INDEX OF AUTHORITIES .................................................................................... iii
`INTRODUCTION ..................................................................................................... 1
`CORRECTIONS TO THE PROCEDURAL HISTORY .......................................... 1
`ARGUMENT ............................................................................................................. 5
`A.
`The District Court Reversibly Erred by Failing to Refer the Challenge
`to the Validity of EIG’s Copyright Registrations to the Copyright
`Office. .............................................................................................................. 5
`1.
`Standard of Review. .............................................................................. 6
`2.
`Referral to the Copyright Office Was Required. .................................. 7
`3.
`EIG’s Registrations Were Inaccurate. ................................................. 11
`4.
`EIG’s Registrations Were Knowingly Inaccurate. .............................. 14
`5.
`KA’s Request of Relief. ...................................................................... 16
`The District Court Erred When It Dismissed KA’s Unclean Hands
`Defense on Summary Judgment. ................................................................... 16
`C. KA Should Recover Its Attorneys’ Fees Under Rule 68............................... 19
`CONCLUSION ........................................................................................................ 20
`CERTIFICATE OF SERVICE ................................................................................ 22
`CERTIFICATE OF COMPLIANCE ....................................................................... 23
`
`
`
`B.
`
`ii
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`

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`Case: 18-20350 Document: 00514879644 Page: 3 Date Filed: 03/19/2019
`
`INDEX OF AUTHORITIES
`
` Page(s)
`
`Cases
`Brownstein v. Lindsay,
`742 F.3d 55 (3d Cir. 2014) ........................................................................... 1, 6, 9
`Champion Produce, Inc. v. Ruby Robinson Co.,
`342 F.3d 1016 (9th Cir. 2003). ........................................................................... 19
`Crossman v. Marcoccio,
`806 F.2d 329 (1st Cir. 1986) ............................................................................... 19
`DeliverMed Holdings, LLC v. Schaltenbrand,
`734 F.3d 616 (7th Cir. 2013) ........................................................ 1, 2, 6, 9, 10, 16
`Design Basics, LLC v. Lexington Homes, Inc.,
`858 F.3d 1093 (7th Cir. 2017) ............................................................................ 18
`EEOC v. Bailey Ford, Inc.,
`26 F.3d 570 (5th Cir. 1994) .......................................................................... 19, 20
`Energy Intelligence Group, Inc. v. CHS McPherson Refinery, Inc.,
`304 F. Supp. 3d 1051 (D. Kan. 2018) ........................................................... 11, 12
`Fourth Estate Public Benefit Corporation v. Wall-Street.com, LLC,
`
`--- S.Ct. ---, 2019 WL 1005829 (2019) ............................................................ 8, 9
`Guzman v. Hacienda Records & Recording Studio, Inc.,
`808 F.3d 1031 (5th Cir. 2015) .............................................................................. 6
`Hescott v. City of Saginaw,
`757 F.3d 518 (6th Cir. 2014) .............................................................................. 19
`Jordan v. Time, Inc.,
`111 F.3d 102 (11th Cir. 1997) ............................................................................ 19
`Kona Tech. Corp. v. Southern Pac. Transp. Co.,
`225 F.3d 595 (5th Cir. 2000) ................................................................................ 2
`Le v. University of Pennsylvania,
`321 F.3d 403 (3d Cir. 2011) ............................................................................... 19
`
`iii
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`

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`Mitchell Bros. Film Group v. Cinema Adult Theater,
`604 F.2d 852 (5th Cir. 1979) .............................................................................. 17
`O’Brien v. City of Greers Ferry,
`873 F.2d 1115 (8th Cir. 1989) ............................................................................ 19
`Polanko v. City of Austin, Texas,
`78 F.3d 968 (5th Cir. 1996) .................................................................................. 3
`Poteete v. Capital Engineering, Inc.,
`185 F.3d 804 (7th Cir. 1999) .............................................................................. 19
`Sandoz Inc. v. Amgen Inc.,
`137 S.Ct. 1664 (2017) ......................................................................................... 10
`Scottish Heritable Trust, PLC v. Peat Marwick Main & Co.,
`81 F.3d 606 (5th Cir. 1996) .................................................................................. 3
`Supermarket of Homes, Inc. v. San Fernando Valley Bd. Of Realtors,
`786 F.2d 1400 (9th Cir. 1986) ............................................................................ 17
`United States v. Lauderdale County,
`914 F.3d 960 (5th Cir. 2019) ................................................................................ 7
`Statutes and Rules
`17 U.S.C. §101 ......................................................................................................... 11
`17 U.S.C. §103(b) .................................................................................................... 14
`17 U.S.C. §408 ......................................................................................................... 10
`17 U.S.C. §409 ................................................................................................... 10, 13
`17 U.S.C. §409(2) ...................................................................................................... 8
`17 U.S.C. §409(4) ...................................................................................................... 8
`17 U.S.C. §409(5) ...................................................................................................... 8
`17 U.S.C. §409(9) ...................................................................................................... 8
`17 U.S.C. §410 ......................................................................................................... 10
`
`iv
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`17 U.S.C. §411(a) ...................................................................................................... 9
`17 U.S.C. §411(b) .............................................................................................passim
`17 U.S.C. §412 ........................................................................................................... 5
`37 C.F.R. §202.3(b)(2)(ii)(C) .................................................................................. 13
`37 C.F.R. §202.3(b)(3) ............................................................................................. 13
`Fed. R. Civ. P. 16 ....................................................................................................... 2
`Fed. R. Civ. P. 50(b) .................................................................................................. 3
`Other Authorities
`Group Registration of Newsletters and Serials,
`83 Fed. Reg. 61546-01 (Nov. 30, 2018) ............................................................. 12
`
`Streamlining the Single Application and Clarifying Eligibility
`Requirements, 83 Fed. Reg. 66627-01 (December 27, 2018) ........................... 13
`6 William F. Patry, PATRY ON COPYRIGHT §22:218 (March 2019) ......................... 19
`
`v
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`

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`Case: 18-20350 Document: 00514879644 Page: 6 Date Filed: 03/19/2019
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`INTRODUCTION
`The district court and the jury each concluded that Energy Intelligence Group,
`
`
`
`Inc. and Energy Intelligence Group (UK), Limited (“EIG”) should not be allowed to
`
`recover windfall profits by utilizing its litigation-based business model. Kayne
`
`Anderson Capital Advisors, L.P. and K.A. Fund Advisors, L.L.C. (“KA”) has
`
`already explained why this Court should reject EIG’s request to render judgment in
`
`an amount more than 40 times what the jury actually intended, as reflected in the
`
`jury’s answers to the questions submitted to it for decision. In this cross appeal, KA
`
`explains why EIG should be awarded far less than the approximately $3.2 million
`
`judgment the district court entered. ROA.18-20350.57460.
`
`CORRECTIONS TO THE PROCEDURAL HISTORY
`EIG’s Appellants’ Response and Reply Brief (the “EIG Reply”) is filled with
`
`
`
`a striking volume of inaccurate statements regarding the procedural history of this
`
`case and KA’s legal positions. A few examples demonstrate that the story EIG tries
`
`to sell is false.
`
`
`
`First, EIG argues that KA waived its right to seek referral of this case to the
`
`Copyright Office under 17 U.S.C. §411(b). EIG Reply at 49-50. But EIG ignores
`
`the circuit authority that explains that a referral to the Copyright Office is a necessary
`
`step under the statute to challenge the validity of a copyright. See Brownstein v.
`
`Lindsay, 742 F.3d 55, 75 n.14 (3d Cir. 2014); DeliverMed Holdings, LLC v.
`
`1
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`Schaltenbrand, 734 F.3d 616, 623-25 (7th Cir. 2013). The Seventh Circuit holds
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`that referral is required when such a challenge is made, even if the parties do not
`
`request the referral in the district court or on appeal. Id. at 624. The statutory
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`mandate in Section 411(b) allows this Court to raise the issue sua sponte. Id. In this
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`case, KA moved for a referral in the district court, but EIG opposed KA’s motion on
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`procedural grounds, arguing that it was untimely and barred by the parties’ proposed
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`pre-trial order.1 See ROA.18-20350.8645-8651 (EIG’s motion to strike). The
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`district court rejected EIG’s arguments, explaining that it had a “statutory mandate”
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`to consider KA’s referral motion on the merits. ROA.18-20350.8679, 12480-12481.
`
`Although the district court ultimately denied KA’s referral motion, the district court
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`decided the motion on the merits, and not based on any of the procedural objections
`
`EIG now asserts to try to avoid appellate review. See ROA.18-20350.9290-9303.
`
`Accordingly, KA’s appeal from the district court’s order denying referral is properly
`
`before the Court.2
`
`
`1 Under Rule 16, a Pre-Trial Order becomes binding on the case when approved by the district
`court. The district court signed the Pre-Trial Order governing the issues to be tried on October
`12, 2017. ROA.18-20350.9346. By the time the Pre-Trial Order was signed, the district court
`had already decided the merits of the referral issue. ROA.18-20350.9289 (July 26, 2017
`Order). The fact that the district court decided the referral motion on the merits is proof that
`the district court rejected the argument EIG now asserts—that the referral motion was waived.
`2 EIG’s reliance on Kona Tech. Corp. v. Southern Pac. Transp. Co., 225 F.3d 595, 604 (5th Cir.
`2000) is misplaced. Kona Tech. stands for the unremarkable proposition that the Joint Pre-
`Trial Order controls the issue to be presented at trial after it is entered by the district court. Id.
`at 604 (citing Fed. R. Civ. P. 16). Kona Tech. does not bar appellate review of earlier decisions
`by the district court that had already removed issues from the scope of the trial.
`
`2
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`

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`
`
`EIG also wrongly contends that KA waived its rights to challenge EIG’s
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`DMCA claim as a matter of law by allegedly “failing to renew its JMOL motion
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`after the verdict pursuant to Fed. R. Civ. P. 50(b).” EIG Reply at 11. The jury’s
`
`mitigation findings resulted in a take-nothing verdict against EIG on its DMCA
`
`claims, thereby eliminating any need for KA to file a motion for a judgment as a
`
`matter of law post-verdict. See Scottish Heritable Trust, PLC v. Peat Marwick Main
`
`& Co., 81 F.3d 606, 610 (5th Cir. 1996) (explaining that the purpose of a Rule 50(b)
`
`motion is “to enable the trial court to re-examine the question of evidentiary
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`insufficiency as a matter of law if the jury returns a verdict contrary to the movant”)
`
`(emphasis added); Fed. R. Civ. P. 50(b) (1991 advisory committee notes)
`
`(recognizing that “a jury verdict for the moving party moots the issue”). Regardless,
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`KA expressly raised its challenge to EIG’s DMCA claim after the jury returned its
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`verdict, ROA.18-20350.11335-11336, and the district court decided the issue on the
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`merits, ROA.18-20350.12080-12081. There is no waiver.3
`
`
`
`Yet another example relates to KA’s request for a supplemental jury
`
`instruction regarding recoverable damages being limited to damages flowing from
`
`protected elements of a work. EIG tries to create the impression that KA admitted
`
`
`3 This Court has not required the type of mechanical application of Rule 50(b) that EIG requests.
`To the contrary, the Court recognizes that compliance may be excused in many circumstances,
`including when the issue was taken under advisement by the district court at the close of the
`evidence (as happened here). See ROA.18-20350.13200; Polanko v. City of Austin, Texas, 78
`F.3d 968, 975 (5th Cir. 1996). Thus, KA’s objections met not only the technical requirements
`of the Federal Rules, but also the substance of this Court’s precedent.
`
`3
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`

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`its proposed instruction would be confusing. See EIG’s Br. 11 (citing ROA.18-
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`20350.13196). KA made no such concession. Instead, KA’s counsel explained to
`
`the district court that instructions were necessary because EIG was asking the jury
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`to award damages for the value of unprotected elements in EIG’s work—i.e.
`
`elements EIG did not own. ROA.18-20350.13195 (“I’m not aware of any case that
`
`instructs the jury on copyright infringement without breaking out the elements so
`
`that they understand what is protected and what’s not protected.”).
`
`
`
`Contrary to EIG’s suggestion on page 15, KA did not “concede” that a de
`
`novo standard of review applies to the reconciliation of the jury’s answers in this
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`case. See EIG Br. at 15. When the district court told the jury that their “questions
`
`concern legal issues that the Court will decide after you have reached your verdict,”
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`ROA.18-20350.13421, it was not commenting on the standards it would apply to
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`reconcile the answers, much less what standard of review would apply to the district
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`court’s ultimate decision.
`
`
`
`EIG also misquotes KA’s brief when it says that “‘there is sound logic in the
`
`record supporting’ the jury’s award of $15,000 per infringed work.” EIG Reply at
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`27 (misquoting KA Br. at 15). KA explained that there was sound logic to support
`
`the jury’s award of $585,000, which was calculated based on a total of 39 violations.
`
`See KA Br. at 15-16. Applying the jury’s award to all 1,646 acts of infringement
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`would defy logic and the plain intent of the jury.
`
`4
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`

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`
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`And for the first time ever in this case, EIG now argues that it would violate
`
`the Seventh Amendment to render a judgment consistent with the jury’s actual
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`answers. EIG Reply at 28. Not only is this argument far too late, it makes no sense.
`
`
`
`The examples above are illustrative, not exhaustive. There are many other
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`statements in EIG’s Reply that distort KA’s positions. When reviewing the merits
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`of this case, it is important to focus on the words actually used by KA, rather than
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`EIG’s attempts to recast them to mean something else.
`
`ARGUMENT
`A. THE DISTRICT COURT REVERSIBLY ERRED BY FAILING TO REFER
`THE CHALLENGE TO THE VALIDITY OF EIG’S COPYRIGHT
`REGISTRATIONS TO THE COPYRIGHT OFFICE.
`EIG does not dispute that it was required to have valid copyright registrations
`
`
`
`to recover the statutory damages and attorneys’ fees awarded in the district court’s
`
`final judgment. See 17 U.S.C. §§411(a) & 412. Full review of the validity of EIG’s
`
`copyright registrations is critically important because EIG has set up a business
`
`model to capitalize on the Copyright Act’s and DMCA’s statutory damages
`
`provisions to obtain windfall profits at the expense of its customers, even though
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`EIG has failed to comply with the statutory requirements for registering its works.
`
`EIG’s abusive business model only works against those caught infringing copyrights
`
`in a serial publication.4 If EIG is permitted to use the threat of multi-million dollar
`
`
`4 EIG argues that “[i]t makes no sense” to treat infringements of serial works differently than
`one-time infringements, EIG Reply at 17., ignoring the significant distinction that a one-time
`
`5
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`

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`liabilities to leverage settlements (as EIG admittedly has done on numerous
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`occasions), the courts should at least require scrutiny of the validity of EIG’s
`
`registrations. As a matter of law, the first step to test validity requires a referral to
`
`the Copyright Office. See Brownstein, 742 F.3d at 75 n.14; DeliverMed Holdings,
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`734 F.3d at 623-25. It was not “harmless error”5 to deny the Copyright Office the
`
`opportunity to opine on whether EIG’s registrations were invalid in light of the clear
`
`evidence that EIG failed to comply with the statutory registration requirements.
`
`Standard of Review.
`1.
`EIG asks the Court to review the district court’s refusal to order referral to the
`
`
`
`Copyright Office for clear error. See EIG Reply at 51. However, EIG’s citations
`
`for this standard of review address factual findings following a bench trial. See
`
`DeliverMed Holdings, 723 F.3d at 622; Guzman v. Hacienda Records & Recording
`
`Studio, Inc., 808 F.3d 1031, 1036 (5th Cir. 2015). This is not an appeal from a bench
`
`trial. Instead, KA’s cross appeal raises important issues of law regarding copyright
`
`registrations, including:
`
`
`infringement cannot be avoided by after-the-fact conduct. But infringement of a serial work
`can be avoided in part by subsequent conduct. That is, after learning of the ongoing infringing
`activity, the copyright owner may be able to avoid future violations by taking reasonable
`precautionary steps. Here, the jury found that 39 acts of infringement could not have been
`avoided, but the remaining 1,607 should have been avoided if EIG had acted reasonably.
`Obviously, a one-time infringement is also limited to a single statutory damage award, unlike
`the multiple awards sought by EIG for its daily publication.
`5 See EIG Reply at 50 (erroneously contending that it was “harmless error” to deny referral
`because this issue allegedly does not affect the “substantive rights” of the parties).
`
`6
`
`

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`• the standard for determining when a referral to the Copyright Office is
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`required under 17 U.S.C. §411(b) (i.e. whether the statute should be
`
`enforced as written, or whether courts should perform a two-part screening
`
`test before making a referral), KA Br. at 50-52;
`
`• whether EIG complied with the statutory requirements for registration, KA
`
`Br. at 52-54;
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`• whether the district court applied a legally-erroneous definition of a
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`“compilation” to reject KA’s challenge to EIG’s registrations, KA Br. at
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`55; and
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`• whether the undisputed evidence established that EIG knowingly
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`submitted inaccurate registrations, KA Br. at 55-56.
`
`These issues of law are subject to de novo review. See United States v. Lauderdale
`
`County, 914 F.3d 960, 964 (5th Cir. 2019) (issues of statutory interpretation are
`
`reviewed de novo).
`
`Referral to the Copyright Office Was Required.
`2.
`Under Section 411(b)’s plain language, referral to the Copyright Office was
`
`
`
`required because KA “alleged” that EIG knowingly submitted inaccurate
`
`information in connection with its registrations. 17 U.S.C. §411(b). EIG’s
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`registrations were inaccurate because EIG failed to disclose that its works were
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`compilations, failed to disclose the sources of pre-existing works as required under
`
`7
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`

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`17 U.S.C. §409(9), failed to disclose sufficient information regarding the authors’
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`names, domiciles, and nationalities as required under 17 U.S.C. §409(2)6 (which are
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`necessary to analyze whether a work may qualify for “work for hire” status), and
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`failed to disclose how EIG allegedly acquired those third party works as required
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`under 17 U.S.C. §409(4) & (5). EIG’s registrations were also inaccurate because
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`EIG was claiming to be the author of content under a “work for hire” status, even
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`when precluded by applicable law. See KA Br. at 52-54. EIG cites no legal
`
`authorities to dispute that the laws of Russia and Singapore preclude EIG from
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`claiming authorship or ownership as a “work for hire” of the materials written in
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`Russia and Singapore. Compare KA Br. at 53-54 with EIG Reply at 56 n.18.
`
`
`
`Although EIG suggests that “[t]he purpose of referral is for the court to obtain
`
`an advisory opinion on the materiality of a registration inaccuracy,” EIG Reply at
`
`51, the referral requirement is more “akin to an administrative exhaustion
`
`requirement” that must be satisfied before a party may challenge the validity of a
`
`registration. See generally Fourth Estate Public Benefit Corporation v. Wall-
`
`Street.com, LLC, --- S.Ct. ---, 2019 WL 1005829, *3 (2019). In Fourth Estate, the
`
`
`6 EIG argues that it disclosed the “name and domicile” of the authors whose works appeared in
`Oil Daily “in the masthead at the end of each issue.” EIG Reply at 57 n.20. This is misleading.
`EIG’s mastheads do not identify the names or domiciles of any of the authors of the Reuters
`articles appearing in Oil Daily. The mastheads also do not disclose the source for the third
`party data contained in EIG’s publications. EIG also cites no controlling authority that would
`excuse it from meeting its statutory disclosure obligations by burying some identifying
`information within the body of its work.
`
`8
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`Supreme Court addressed the issue of whether a party could sue for copyright
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`infringement prior to the time when the Register acted on an application to register
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`a work. Id. at *2. Although Section 411(a) expressly allows an applicant to sue for
`
`infringement even if the Register refuses the registration request, 17 U.S.C. §411(a),
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`the Court held that the applicant must nonetheless complete the registration process
`
`before filing suit. Fourth Estate, 2019 WL 1005829, *7. The same result should
`
`follow here. When a party seeks to challenge the validity of a registration based on
`
`the knowing submission of inaccurate information to the Copyright Office, a referral
`
`to the Copyright Office is required before the challenge may proceed in court.
`
`Brownstein, 742 F.3d at 75 n.14; DeliverMed Holdings, 734 F.3d at 623-25.
`
`
`
`When EIG writes that “[t]here is no statutory prohibition on a court assessing
`
`the evidentiary basis of an allegation prior to referral under §411(b),” EIG Reply at
`
`51, EIG is asking this Court to ignore Section 411(b)’s plain language and to usurp
`
`the role of the Copyright Office when assessing whether a registration was based on
`
`material inaccuracies. Section 411(b)(2) provides: “[i]n any case in which
`
`inaccurate information described under paragraph (1) is alleged, the court shall
`
`request the Register of Copyrights to advise the court whether the inaccurate
`
`information, if known, would have caused the Register of Copyrights to refuse
`
`registration.” 17 U.S.C. §411(b)(2) (emphasis added). Congress required referral
`
`for a reason—the Copyright Office is not only in the best position to assess the
`
`9
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`materiality of statements in a registration, but it is also in the best position to assess
`
`what qualifies as an inaccuracy under the statutes and regulations applicable to
`
`copyright registrations. And, as illustrated by the Copyright Office’s response to the
`
`referral ordered in DeliverMeds, the Copyright Office would refuse to register works
`
`due to the applicant’s failure to comply with applicable statutory and regulatory
`
`requirements. See ROA.18-20350.8768 (“An application for copyright registration
`
`must comply with the statutory requirements outlined in 17 U.S.C. §§ 408(a), 409,
`
`and 410.”).
`
`
`
`While some copyright infringement cases may proceed despite inaccuracies
`
`in the underlying registration (such as when the Copyright Office determine that the
`
`inaccuracy was immaterial), this is irrelevant for present purposes. There is nothing
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`in Section 411(b)’s language that allows the courts to skip the referral process when
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`inaccurate information is alleged. Although EIG and some courts have expressed
`
`concern that application of the statute as written “will cause substantial delay and
`
`create an unnecessary burden on the Copyright Office,” this is a policy argument
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`that should be directed to Congress, not the courts. Federal courts should not ignore
`
`the plain language of a statute based on policy concerns. See Sandoz Inc. v. Amgen
`
`Inc., 137 S.Ct. 1664, 1678 (2017) (“Even if we were persuaded that Amgen had the
`
`better of the policy arguments, those arguments could not overcome the statute’s
`
`plain language, which is our ‘primary guide’ to Congress’ preferred policy.”).
`
`10
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`EIG’s Registrations Were Inaccurate.
`3.
`EIG argues that “the accuracy of EIG’s copyright registrations has been
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`upheld by two district courts.” EIG Reply at 54. EIG fails to mention that those
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`courts reached conflicting decisions when explaining why the registrations allegedly
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`were accurate. Neither rationale is valid.
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`First, the district court in this case upheld EIG’s registrations by finding that
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`Oil Daily was not a “compilation.” ROA.18-20350.9301. This holding is contrary
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`to what the Copyright Office told EIG’s Deborah Brown in January 2009 when EIG
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`was instructed to amend its application for Oil Daily to identify it as a compilation.
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`ROA.18-20350.121. This holding is also contrary to the statutory definition of a
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`“compilation,” which is “a work formed by the collection and assembling of
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`preexisting materials or of data that are selected, coordinated, or arranged in such a
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`way that the resulting work as a whole constitutes an original work of authorship.”
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`17 U.S.C. §101. Indeed, the district court in Kansas (which is one of the two courts
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`to uphold EIG’s registrations) recognized that Oil Daily qualified as a “compilation.”
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`See Energy Intelligence Group, Inc. v. CHS McPherson Refinery, Inc., 304 F. Supp.
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`3d 1051, 1059-60 (D. Kan. 2018). EIG even appears to admit that Oil Daily is a
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`compilation in its Reply Brief. See EIG Reply at 1 (referring to “the content of
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`Plaintiffs’ copyrighted Oil Daily compilation works”). Given the vast amount of
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`third-party data and articles included in each Oil Daily, it was inaccurate (and indeed,
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`Case: 18-20350 Document: 00514879644 Page: 17 Date Filed: 03/19/2019
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`materially misleading) for EIG to fail to disclose that it was seeking to register a
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`compilation work.7
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`Second, the Kansas district court’s decision is also fundamentally flawed.
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`Although the Kansas court recognized Oil Daily as a compilation work, it excused
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`EIG from complying with the applicable statutes because the form EIG used—Form
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`G/DN8—allegedly did not contain sufficient space to make the disclosures required
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`by the copyright statutes. See Energy Intelligence Group, Inc., 304 F. Supp. 3d at
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`1060-61. The Kansas Court explained:
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`The Court recognizes that the Copyright Act requires an applicant to
`identify any preexisting works in an application to register a
`compilation. Yet, unlike other applications, Form G/DN does not
`contain any lines or areas that allow an applicant to identify these
`works. Arguably, the applicant may identify preexisting works in the
`line titled “Other” when describing the applicant's contribution to the
`work, but the text box provided for such information in the online
`application only supports a limited number of characters and certainly
`not enough characters to fully identify preexisting works. Therefore,
`it's not clear to the Court how the applicant is supposed to identify these
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`7 The third-party content contained within Oil Daily is discussed at pages 3, 44-48, and 52-53
`of KA’s Opening Brief. In footnote 19, EIG says that “Kayne did not dispute” that the majority
`of the contributions in each Oil Daily were from reporters or editors hired by EIG. See EIG
`Reply at 56. This is misleading. The record cite for this proposition is not to any statement
`made by KA or its representatives. Moreover, as KA explained in its opening brief, EIG
`emphasized the non-protected third-party data in Oil Daily when makings its arguments to the
`jury. See KA Br. at 3, 44-48. Thus, if EIG’s statement is intended to focus on the value of the
`contents of EIG’s work, KA absolutely disputes that the majority of the value came from EIG’s
`reporters and editors. Regardless, the fact that some content in Oil Daily may qualify for
`copyright protection on its own does not excuse EIG’s failure to disclose to the Copyright
`Office that its works contained significant data from third party sources.
`8 The regulation allowing filers to use Form G/DN was repealed in November 2018, and has
`been replaced with electronic filing requirements. See Group Registration of Newsletters and
`Serials, 83 Fed. Reg. 61546-01 (Nov. 30, 2018).
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`Case: 18-20350 Document: 00514879644 Page: 18 Date Filed: 03/19/2019
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`preexisting works in the application.
`Id. at 1060. The Kansas Court was willing to overlook the failure to disclose
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`information required by federal statutes based on the way the Copyright Office
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`allegedly handled similar issues under differe