Cancellation of Registrations

A recent case, Tiseo Architects, Inc. v. SSOE, Inc., 2006 WL 1235164 (E.D. Mich. May 8, 2006), raises the issue of cancellation of registrations. This area is a bit arcane, but needn't be, although there are some issues still unresolved, like whether a court can order the Copyright Office to cancel a registration (I think not), "refer" a question to the Copyright Office (I think not) and whether a private cause of action lies (Again, I think not).

The Copyright Office regulations are spelled out in 37 CFR 201.7. Common reasons for a cancellation are a bounced check, where the registration should not have been made because facts about lack of notice have come out, or because the Office has taken a second look at the existence of the requisite registrable material.

Cancellation serves to preserve the integrity of the Office's records. How the Office becomes aware of the need to cancel a registration is not spelled out, and may be attributable to the Office's historic antipathy toward interference and other types of adversarial proceedings, see 50 Fed. Reg. 3306 n.5 (Aug. 16, 1985). It is my understanding that the Office will never respond favorably to a third party's request to cancel a registration. At the same time, the Office does not foreclose consideration of information received from members of the public, although it will act sua sponte too. It is my understanding that cancellation may be authorized only by Examining Division section heads or higher officials. When the Office proposes to cancel a registration, it will notify the claimant in writing of the reasons and give 30 days from the date of mailing to "show cause" why cancellation should not be made. These procedures arose out of the "Zap Mail" case, Kiddie Rides USA, Inc. v. Curran, 231 USPQ 210 (D.D.C. 1986).

While one does find references in opinions to the ability of courts to cancel registrations, see e.g. Brooks v. Bates, 781 F. Supp. 202, 206 (S.D.N.Y. 1991); Sargeant v. American Greetings Corp., 588 F. Supp. 912, 925 (N.D. Ohio 1984), these opinions are erroneous: under what authority would such power exercised? The Office is not a party to the case, and is a legislative branch agency not statutorily subject to review except under the Administrative Procedures Act. The Tiseo court, referred to above, stated correctly that it lacked such power, as have other courts, see e.g., Leegin Creative Leather Prods. v. M.M. Rogers & Co., 33 USPQ2d 1158 (C.D. Cal. 1994); Xerox Corp. v. Apple Computer, Inc., 734 F. Supp. 1542, 1549 (N.D. Cal. 1990). The correct approach is for the court to hold the registration invalid and order the plaintiff to ask the Copyright Office to cancel the registration, a request it will honor.

Nor can courts "refer" the issue of cancellation to the Copyright Office, under the "primary jurisdiction" or any other doctrine, as the Ninth Circuit apparently thought in Syntek Seminconductor Co. Ltd. v. Microchip Technology, Inc., 307 F.3d 775 (9th Cir. 2002)(and Tiseo following Syntek).

One final point: where the Office does cancel a registration after suit is filed, does the court still have subject matter jurisdiction? The answer is yes: Section 411(a) refers only to registration when the suit is instituted. This unusual situation arose in Macklin v. Mueck, 373 F. Supp.2d 1334 (S.D. Fla. 2005).