Oliver v. Meow Wolf, Inc

IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF NEW MEXICO LAUREN ADELE OLIVER, Plaintiff, v. Civ. No. 20-237 KK/SCY MEOW WOLF, INC., et al., Defendants.

MEMORANDUM OPINION AND ORDER THIS MATTER is before the Court on: (1) Defendants’ Motion to Invalidate Plaintiff’s Copyright Registration VA 1-90-174 (Doc. 538), filed March 24, 2023 (“Motion to Invalidate”)1; (2) Plaintiff’s Motion to Allow Plaintiff’s Supplementary Registration Application to Proceed Before the Copyright Office (Doc. 539) (“Motion to Allow”), filed March 24, 2023; and, (3) Defendants’ Motion to Exclude from Consideration Plaintiff’s New Factual Declaration Submitted for the First Time in Reply Brief (Doc. 552) (“Motion to Exclude”), filed April 28, 2023. Having reviewed the parties’ submissions, the record, and the relevant law, and being otherwise sufficiently advised, the Court FINDS that Defendants’ Motion to Invalidate and Motion to Exclude are well-taken and should be GRANTED, and Plaintiff’s Motion to Allow is not well- taken and should be DENIED.

250), address copyright registrations numbered TXu 2-144-749 and VA 2-170-075. (See Docs. 236-1, 236-3, 250-5, 250-6.) And the Register of Copyrights, responding to the question the Court referred to her, addresses the “VA” registration numbered VA0002170075. (Doc. 529 at 1-2.) Defendants’ Motion to Invalidate plainly concerns the “VA” registration referenced in Plaintiff’s amended complaint and the Register’s response, i.e., VA 2-170-075, (see generally Docs. 148, 529, 538), and Plaintiff has not challenged the motion on the basis that it refers to this registration by a different number or concerns a different registration. (See generally Doc. 545.) Thus, the copyright registration number Defendants use in their Motion to Invalidate appears to be a typographical error and the Court will construe the motion as addressing the registration numbered VA 2-170-075.

I. Procedural History and Factual Findings2 The parties’ disputes in this matter arise out of Plaintiff’s installation of a visual work of art called Ice Station Quellette (“ISQ”) in a permanent exhibition in Santa Fe, New Mexico, called the House of Eternal Return (“HoER”). (Docs. 148, 183.) Defendant Meow Wolf, Inc. (“MWI”) operates the HoER, and Defendant Vince Kadlubek was formerly the company’s CEO. (Id.; Doc.

348-3 at 2.) Plaintiff filed her original complaint against Defendants in March 2020, asserting claims for copyright infringement and violation of the Visual Artists Rights Act (“VARA”), as well as several state law claims sounding in contract and tort. (Doc. 1.) In June 2021, Plaintiff amended her complaint, adding new factual allegations and new and modified state law claims. (Doc. 148.) Defendant MWI, in turn, filed a declaratory judgment counterclaim sounding in contract in July 2021. (Doc. 183.)

In her amended complaint, Plaintiff refers to two copyright registrations, i.e., the registrations numbered TXu 2-144-749 (“TXu Registration”) and VA 2-170-075 (“VA Registration”).3 (Doc. 148 at 11.) The TXu Registration has an effective date of registration (“EDR”) of June 24, 2018, and pertains to “Ice Station Quellette,” an “unpublished collection” created in 2017 and consisting of “artwork, additional text[,] and photographs” but excluding “some” pre-existing “text and photographs from other sources.” (Doc. 250-5 at 2.) The deposit4 for the TXu Registration includes but is not limited to photographs of the version of ISQ installed The Court presumes that the parties are familiar with this matter’s factual background, which the Court has described in prior orders and will not repeat here. (See Doc. 59 at 1-4, Doc. 135 at 1-4, Doc. 325 at 1-3, and Doc. 499 at 2-6.)

The VA Registration has an EDR of September 19, 2019, and pertains to “Ice Station Quellette - The Last Ice on Earth,” created in 2016 and published on March 16, 2016. (Doc. 250- at 2.) It consists of “photograph[s], 2-D artwork, sculpture, [and t]ext” with “[p]ictorial, graphic, and sculptural features identified separately from and capable of existing independently of the utilitarian aspects of a useful article.” (Id.) It excludes pre-existing “[t]ext” and the material covered by the TXu Registration. (Id.; Doc. 529 at 2.) The deposit for this registration consists exclusively of photographs and drawings of the version of ISQ installed in the HoER. (Doc. 236- at 5-45.) Plaintiff testified that the VA Registration is for “the Ice Station piece at Meow Wolf.” (Doc. 236-4 at 4.)

Plaintiff included an artistic bench in her deposit for the VA Registration. (Doc. 236 at 3, 8; Doc. 236-3 at 6, 13; Doc. 236-4 at 2-3.) It is the sole object in the first photograph in the deposit and is also shown from above in another photograph.6 (Doc. 236-3 at 6, 13.) At her April 8, 2021 deposition, Plaintiff testified that “Katherine Lee designed the bench.” (Doc. 236-4 at 2.)

Nevertheless, on her application for the VA Registration, Plaintiff listed herself as the sole author of the work to be registered. (Doc. 236-3 at 2-3; Doc. 250-6 at 2.)

At Plaintiff’s deposition, defense counsel asked her why she included the bench in the deposit for the VA Registration even though she did not make it. (Doc. 236-4 at 3.) Plaintiff responded, [b]ecause it was part of the overall piece. I didn’t realize I did that, and I think that was probably a slip. That was copyrighted by [Ms. Lee]. Certainly if you look at all my materials, I take great pains to credit her, so, you know, the entire piece was what I was copyrighting, but thank you for pointing that out. (Id.) Defense counsel then stated, “[s]o that was a mistake,” to which Plaintiff responded, “I would have to say that there’s – she definitely owns the copyright for that design.” (Id. at 3-4.)

On November 4, 2021, Defendant MWI filed a Motion for Referral of Registration Questions under 17 U.S.C. § 411(b)(2) to the Register of Copyrights (Doc. 236) (“Motion for Referral”), in which it asked the Court to ask the Register of Copyrights (“Register”) whether she would have refused the TXu and VA Registrations if she had known that Plaintiff’s registration applications included inaccurate information. In the motion, Defendant argued, among other things, that Plaintiff knowingly and inaccurately included the bench in the VA Registration deposit without identifying Ms. Lee as its author. (Doc. 236 at 3-4, 8.) Plaintiff responded in opposition to the motion on November 18, 2021, and Defendant replied in support of it on December 22, 2021. (Docs. 250, 270.) In addition, Plaintiff filed a surreply on January 13, 2022; Defendant filed a supplemental brief on March 16, 2022; and, Plaintiff responded to Defendant’s supplemental brief on March 30, 2022. (Docs. 282, 335, 346.)

In the briefing on Defendant’s Motion for Referral, Plaintiff made three arguments to defend her inclusion of the bench in the VA Registration deposit without identifying Ms. Lee as its author. (Doc. 250 at 6-8.) Specifically, Plaintiff argued that: (1) the bench was not copyrightable because it is a useful article; (2) the bench was not included in the scope of her application for the VA Registration; and, (3) Plaintiff “included the bench unknowingly and accidentally.” (Id.) Elaborating on the third argument, Plaintiff refused to “concede” that “identification of the creator of the bench … was legally required … or that she did not ‘design’ the bench.” (Doc. 346 at 3-4.)

Nevertheless, she asserted, her failure to identify Ms. Lee as the bench’s author “was at most a simple mistake of law,” because she “was not aware … that she might have been required” to do so. (Id.) The Court granted Defendant’s Motion for Referral as to the VA Registration in a Memorandum Opinion and Order (Doc. 492) (“Referral Order”) filed on August 25, 2022. In its order, the Court first noted Plaintiff’s testimony admitting that Ms. Lee designed the bench, her inclusion of the bench in the VA Registration deposit, and the fact that she listed herself as the sole author of the work to be registered. (Id. at 14-16.) Then, the Court rejected each of Plaintiff’s arguments defending this course of conduct. (Id.) Particularly pertinent here, the Court found Plaintiff’s third argument—i.e., that she did not know she needed to identify Ms. Lee as the bench’s author—“wholly implausible, and not only because authorship is the basis of copyright.” (Id. at 16 (citing 17 U.S.C. §§ 102(a), 201(a)).) The Court explained: when Plaintiff applied for the TXu Registration, [Copyright Office examiner Ashley] Emmett told her that her application should identify material from other sources…. Ms. Emmett informed Plaintiff of this requirement on May 13, 2019, and Plaintiff applied for the VA Registration on September 19, 2019…. In short, Plaintiff was at best willfully blind to the need to identify Ms. Lee as the bench’s author when she applied for the VA Registration. (Id. (citing Doc. 236-3 at 3; Doc. 250-4 at 2) (quotation marks and footnote omitted).) Thus, the Court found, “Defendant has shown that Plaintiff knowingly and inaccurately indicated that she authored the bench Ms. Lee designed on her application for the VA Registration.” (Id.) Based on this finding, the Court referred the following question to the Register under 17 U.S.C. § 411(b): Whether the Register of Copyrights would have refused Registration No. VA 2- 170-075 had she been made aware that the applicant did not create or own the copyright in the artistic bench pictured [in] the deposit material. (Id. at 18.)

The Register filed her response to the Court’s Referral Order (Doc. 529) (“Register’s Response”) on February 3, 2023. In it, the Register advised the Court that the Copyright Office “would have refused the [VA Registration] if it had been aware that [Plaintiff] was not the author or owner of the copyright in the artistic bench depicted in the deposit materials for her application.” (Id. at 10.) The Register added that Plaintiff could correct this inaccuracy by filing “a supplementary registration application to amend the original registration to exclude the artistic bench.” (Id.) However, the Register noted that because [Plaintiff’s] registration is the subject of litigation, the Office would follow its usual practice to decline to consider a supplementary registration until resolution of the dispute. The Office will depart from its usual practice if the Court advises it that the supplementary registration application can proceed despite the pendency of the litigation. (Id. at 9 (footnote omitted).)

On March 24, 2023, in reaction to the Register’s Response, the parties filed the dueling motions now before the Court. (Docs. 538, 539.) In their Motion to Invalidate, Defendants ask the Court to declare the VA Registration invalid under 17 U.S.C. § 411(b). (Doc. 538 at 1, 7.) In her Motion to Allow, Plaintiff asks the Court to advise the Copyright Office that Plaintiff’s supplementary registration application to exclude the bench from the VA Registration can proceed while this litigation is pending. (Doc. 539 at 3.) The parties filed responses to the motions on April 7, 2023, and replies in support of them on April 21, 2023. (Docs. 544, 545, 548, 549.) In addition, on April 28, 2023, Defendants filed their Motion to Exclude, asking the Court to exclude from its consideration the evidence Plaintiff submitted for the first time with her reply in support of her Motion to Allow. (Doc. 552.) Plaintiff responded in opposition to the Motion to Exclude on May 12, 2023, and Defendants replied in support of it on May 26, 2023. (Docs. 560, 561.)

II. Analysis In their briefs regarding the motions now before the Court, Defendants argue that the Court should declare the VA Registration invalid under 17 U.S.C. § 411(b), because the Court has found that Plaintiff knowingly included inaccurate information on her registration application, and the Register has stated that the inaccuracy, if known, would have caused her to refuse the registration. (Doc. 538 at 2.) Defendants tacitly concede that Plaintiff could try to correct the inaccuracy by submitting an application for supplementary registration to exclude the bench Ms. Lee designed. (Doc. 544 at 4-5.) However, they assert that the Court should not direct the Register to consider such an application while this litigation is pending. (Id.) According to Defendants, “[s]upplementation is inappropriate during litigation … if it seems likely that the proposed change would be directly at issue” or “may confuse or complicate the pending dispute.” (Id.) And here, Defendants add, “a supplemental registration would inject a new [EDR] into this case when [P]laintiff’s [EDR] is highly consequential.” (Doc. 538 at 3.) It would also, Defendants argue, substantially delay the case and unfairly prejudice Defendants. (Id. at 6; Doc. 544 at 6-7.)

Plaintiff, conversely, asks the Court “to advise the [Copyright] Office that Plaintiff’s supplementary registration application can proceed while the litigation is pending,”7 and argues that it would be premature to invalidate the VA Registration before the Register decides whether to accept the supplementary registration. (Doc. 539 at 3; Doc. 545 at 2, 6.) According to Plaintiff, “federal courts across the country have allowed parties to file supplemental registrations to amend

Plaintiff adds that allowing her application for supplementary registration to proceed will not create confusion in this litigation because the applicable EDR “should be the date of the original registration.” (Id. at 6.) Finally, notwithstanding the Court’s prior finding to the contrary, Plaintiff again argues that she did not knowingly make any misstatements to the Copyright Office. (Id. at 3.) For the first time in her reply in support of her Motion to Allow, Plaintiff supports this argument with evidence to suggest that the principal photo of the bench in the VA Registration deposit was included in the deposit due to her copyright attorney’s “clerical error.” (Doc. 548 at 2; Doc. 548- 1.)

A. In its present form, the VA Registration is invalid under 17 U.S.C. § 411(b).

Section 411(a) of the Copyright Act provides that copyright registration is generally a prerequisite for bringing a copyright infringement action.8 17 U.S.C. § 411(a); Unicolors, Inc. v. H&M Hennes & Mauritz, L. P., — U.S. —, 142 S. Ct. 941, 944 (2022). “To obtain registration, the author of a work must submit to the Register of Copyrights a copy of the work and an application.” Unicolors, Inc., 142 S. Ct. at 945. “If the Register determines that the work is copyrightable and meets other statutory requirements” based on the application, “she will issue a Section 411(a) “allows courts to adjudicate infringement claims involving unregistered works in three circumstances: where the work is not a U.S. work, where the infringement claim concerns rights of attribution and integrity under § 106A, or where the holder attempted to register the work and registration was refused.” Reed Elsevier, Inc. v. Muchnick, 559 U.S. 154, 165 (2010) (emphasis omitted). In addition, Section 411(c) “permits courts to adjudicate infringement actions over certain kinds of unregistered works” not at issue here “where the author declares an intention to secure copyright in the work and makes registration for the work, if required by subsection (a), within three months after the work’s first transmission.” Id. (quotation marks and brackets omitted). But neither side alleges that any of these exceptional circumstances are present here. certificate of registration.” Id. “The information on this certificate reflects the information that the copyright holder provided on the application.” Id. Section 411(b)(1) provides a “safe harbor” for claimants who inadvertently include inaccurate information on a registration application. Id. Specifically, under this provision, [a] certificate of registration satisfies the requirements of this section and section 412,9 regardless of whether the certificate contains any inaccurate information, unless—(A) the inaccurate information was included on the application for copyright registration with knowledge that it was inaccurate; and (B) the inaccuracy of the information, if known, would have caused the Register of Copyrights to refuse registration. 17 U.S.C. § 411(b)(1). For the following reasons, the Court finds as a matter of law that Section 411(b) does not preserve the VA Registration from invalidation in its present form, because Plaintiff included inaccurate information on her application with knowledge that it was inaccurate, and the inaccuracy, if known, would have caused the Register to refuse registration.

As to the first point, the Court made the following finding in its Referral Order: “Defendant [MWI] has shown that Plaintiff knowingly and inaccurately indicated that she authored the bench Ms. Lee designed on her application for the VA Registration.” (Doc. 492 at 16.) The Court so found after considering the evidence the parties submitted in their briefing on Defendant’s Motion for Referral, including Plaintiff’s application for the VA Registration, the registration deposit, Plaintiff’s deposition and declaration, and e-mails between Plaintiff and copyright examiner Emmett. (Docs. 236-3, 236-4, 250-3, 250-4, 250-6, 250-7, 335-1; see also Doc. 492 at 14-16.)

Implicit in the Court’s unqualified finding is that Plaintiff failed to show a genuine issue of material fact regarding whether she knowingly and inaccurately represented that she authored the bench Ms. Lee designed. (Doc. 492 at 14-16.)

Plaintiff now attempts to show a genuine factual dispute on this point by presenting new evidence in her reply in support of her Motion to Allow. Specifically, she declares: [w]hile investigating the background of my copyright applications as part of responding to Defendants’ filings with regard to [the Motion to Allow], I reviewed what I provided to my copyright attorney and saw that I used “Bench – designed and built by Katherine Lee” as the title of the JPEG document that bears the bench. … I provided this document, along with other images relevant to the copyright, to my copyright attorney in a folder titled “ISQ Misc Elements,” and my copyright attorney apparently included all photos from the file to the Copyright Office…. The Copyright Office then included all the photos, including the bench, in the deposit[.]10 (Doc. 548-1 at 2.) Plaintiff also proffers a screenshot and metadata to support her declaration. (Doc. 548-2 at 2; Doc. 548-3 at 2.) Plaintiff does not claim that she disclosed the facts set forth in her declaration, or produced the supporting screenshot and metadata to Defendants, during discovery, (see generally Doc. 560), and Defendants affirmatively state that she did not produce the screenshot and metadata. (Doc. 561 at 2.)

There are at least four problems with Plaintiff’s new evidence, which prevent it from creating a genuine issue of material fact. First, as Defendants point out in their Motion to Exclude, (Doc. 552 at 1-2), courts generally do not consider new arguments or evidence presented for the first time in a reply and must either permit a surreply or refrain from relying on the new material.

Doebele v. Sprint/United Mgmt. Co., 342 F.3d 1117, 1139 n.13 (10th Cir. 2003); Belshaw v. Yost, No. 22-cv-324, 2022 WL 17848108, at *12 (D.N.M. Dec. 22, 2022); Welch v. City of Albuquerque, No. 11-cv-700, 2016 WL 8809479, at *3 n.6 (D.N.M. May 13, 2016); Harvey v. THI of New In her declaration, Plaintiff states that the Copyright Office included all of the photos from the “ISQ Misc Elements” file in the VA Registration deposit “despite the title of the bench file being named ‘Bench – designed and built by Katherine Lee.’” (Doc. 548-1 at 2.) In so declaring, Plaintiff appears to imply that her copyright attorney submitted the bench file to the Copyright Office using that title. However, Plaintiff does not directly state that he did so, nor does she demonstrate that she has any personal knowledge on this point. As such, even if the Court were to consider Plaintiff’s declaration, the Court could not rely on it to find a genuine issue of material fact regarding what information her copyright attorney provided to the Copyright Office about the bench.

Mexico at Albuquerque Care Ctr., LLC, No. 12-cv-727, 2013 WL 12329078, at *6 (D.N.M. Sept.

30, 2013); Alexander v. New Mexico Vocational Rehab., No. 07-cv-230, 2008 WL 11399605, at *7 (D.N.M. Sept. 25, 2008). “It is unfair to the opposing party for the court to consider new issues submitted with a reply; it deprives the opposing party of a chance to respond and it deprives the court of the benefit of full briefing.” Alexander, 2008 WL 11399605 at *7.

Second, Plaintiff was on notice of Defendant MWI’s position that she had knowingly misrepresented the authorship of the bench in her VA Registration application no later than November 4, 2021. (Doc. 236 at 3-4, 8.) Yet, not until April 21, 2023, did Plaintiff submit any evidence to suggest that her copyright attorney included the bench in the VA Registration deposit even though she effectively told him that Ms. Lee authored it. (Docs. 548-1, 548-2, 548-3; see generally Docs. 250, 282, 346, 539, 545.) Nor does Plaintiff explain why she waited for almost a year and a half to come forward with such evidence, even though she filed no fewer than four other pleadings related to the improper inclusion of the bench in the VA Registration deposit during this period. (Docs. 250, 346, 539, 545.)

Third, Plaintiff’s new evidence is inconsistent with her prior refusal to “concede … that she did not ‘design’ the bench,” as well as her prior argument that she did not identify Ms. Lee as the bench’s author when she applied for the VA Registration because she “was not aware … that she might have been required to” do so. (Doc. 346 at 3-4.) Nor does Plaintiff offer any justification for why her position has changed so conspicuously over the course of litigating this issue. In short, “[b]ecause Plaintiff had ample opportunity earlier in these proceedings” to present the discrepant new evidence she now relies on, “and Defendants have not had the opportunity to rebut this new[]” evidence, or even to take discovery about it, the Court declines to consider it.11 Sec. USA Servs., LLC v. Invariant Corp., 606 F. Supp. 3d 1100, 1108 n.3 (D.N.M. 2022).

Finally, and perhaps most fatally, even if the Court were to consider Plaintiff’s new evidence, it would not help her. At most, this evidence shows that Plaintiff’s attorney, rather than Plaintiff herself, knowingly and inaccurately indicated that Plaintiff authored the bench Ms. Lee designed in applying for the VA Registration. And in general, courts hold civil litigants “accountable for the acts and omissions of their attorneys,” Pioneer Inv. Servs. Co. v. Brunswick Assocs. Ltd. P’ship, 507 U.S. 380, 396 (1993), “declin[ing] to visit the sins of a plaintiff's lawyer upon the defendant.” Nelson v. Boeing Co., 446 F.3d 1118, 1121 (10th Cir. 2006) (quotation marks and brackets omitted). Civil litigants voluntarily choose their counsel and “cannot … avoid the consequences of the acts or omissions of this freely selected agent.” Pioneer Inv. Servs. Co., 507 U.S. at 397. Plaintiff has not identified any applicable exception to this general rule, nor is the Court aware of any.12 Thus, even if, as Plaintiff’s new evidence suggests, the fault lies with her attorney rather than herself, the Court would be required to hold her accountable for it.13 For all of the above reasons, the Court declines to revisit its finding that Plaintiff knowingly included

Turning to the second condition required to exclude a copyright registration from Section 411(b)’s protection—i.e., that the inaccuracy at issue, if known, would have caused the Register to refuse the registration—here, the Register has expressly stated that, “had the [Copyright] Office been aware that [Plaintiff] did not create or own the copyright in the artistic bench pictured in the deposit materials submitted with the application for [the VA Registration], it would have refused to register the work.” (Doc. 529 at 8.) Moreover, the Register provided a clear and cogent explanation for her assessment, (see generally id.), which the Court discerns no reason to reject.

Nor has Plaintiff presented any evidence or argument to persuade the Court to quarrel with the Register’s assessment. Thus, though the Court “is not abdicating to the Register its duty to determine” this question, the Court is persuaded by the Register’s “advisory opinion based on her expert knowledge of the [Copyright Office’s] registration policies and procedures.” HealtheState, LLC v. United States, 160 Fed. Cl. 91, 97 (Fed. Cl. 2022).

Having concluded that the two conditions for exclusion from Section 411(b)’s safe harbor have been met, the Court must next consider the effect of that exclusion. The Ninth Circuit has held that where “(1) there is no genuine dispute over whether [the p]laintiff knowingly included inaccurate information on its application,” and “(2) the Register of Copyrights told the court that it would have refused registration had it known about the inaccurate information[,]” a copyright registration is “invalid” under 17 U.S.C. § 411(b). SellPoolSuppliesOnline.com, LLC v. Ugly Pools Arizona, Inc., 804 F. App’x 668, 670 (9th Cir. 2020) (“SellPoolSupplies”). And where a certificate of registration is invalid, the plaintiff “fail[s] to satisfy the registration precondition under 17 U.S.C. § 411 to bring a copyright infringement claim.” Id.; see also Neman Bros. & Assoc., Inc. v. Interfocus, Inc., No. 20-cv-11181, 2023 WL 115558, at *13 (C.D. Cal. Jan. 4, 2023) (granting defendant summary judgment on plaintiff’s copyright infringement claims pursuant to Section 411(b) where plaintiff submitted inaccurate information on registration applications with knowledge that it was inaccurate and inaccuracy, if known, would have caused Register to refuse registration).

Likewise, the United States District Court for the Western District of New York has explained that 17 U.S.C. § 411(b) requires the Court to answer two questions before invalidating a copyright registration: 1) whether the inaccurate information was included on the application for copyright registration with knowledge that it was inaccurate, and 2) whether the inaccuracy of the information, if known, would have caused the Register of Copyrights to refuse registration. If the Court answers both questions in the affirmative, it should hold the registration invalid and thus incapable of supporting an infringement action.

Argento v. Santiago for Love of Ramon LLC, No. 16-cv-6172, 2018 WL 903516, at *1 (W.D.N.Y. Feb. 15, 2018) (quotation marks and citation omitted).

Neither Plaintiff nor the Court has uncovered any authority that contradicts the holdings in SellPoolSupplies and Argento.14 (See generally Docs. 539, 545, 548.) Moreover, it is logical to conclude that a registration excluded from the safe harbor of Section 411(b) is invalid and incapable of supporting an infringement action. By delineating when a registration that “contains any inaccurate information” is valid, Section 411(b) also delineates by implication when it is not.

Cf. Elwell v. Oklahoma ex rel. Bd. of Regents of Univ. of Oklahoma, 693 F.3d 1303, 1312 (10th Cir. 2012) (“[C]ommon sense, reflected in the canon expressio unius est exclusio alterius, suggests that the specification of one provision implies the exclusion of others.”) (brackets and quotation marks omitted). Given the scarcity of caselaw directly on point, and the commonsense conclusion reached by the courts in SellPoolSupplies and Argento, this Court likewise concludes that a registration excluded from Section 411(b)’s safe harbor is invalid and incapable of supporting an infringement action under Section 411(a).

Here, as explained above, it is not genuinely factually disputed that: (1) Plaintiff included inaccurate information on her application for the VA Registration with knowledge that it was inaccurate; and, (2) the Register would have refused the registration if she had known of the inaccuracy. Thus, the two conditions for exclusion from the safe harbor provided by 17 U.S.C. § 411(b) have been met, and the VA Registration in its present form is invalid as a matter of law.15 SellPoolSupplies, 804 F. App’x at 670; Argento, 2018 WL 903516 at *1. And because the registration is invalid, it is insufficient to support a copyright infringement action under 17 U.S.C. § 411(a). SellPoolSupplies, 804 F. App’x at 670; Argento, 2018 WL 903516 at *1.

B. The Court will not direct the Register to allow an application for supplementary registration to proceed while this litigation is pending.

In her Response, the Register indicates that Plaintiff could correct the inaccuracy in the VA Registration by filing “a supplementary registration application to amend the original registration to exclude the artistic bench.”16 (Doc. 529 at 1, 9-10); see generally 17 U.S.C. § 408(d) (Register Plaintiff contends that the Register “refused” to invalidate the VA Registration “when presented with this question.” (Doc. 545 at 2.) But the Court did not ask the Register to decide whether to invalidate the VA Registration, (Doc. 492 at 18), nor did the Register take up this question sua sponte. (See generally Doc. 529.) As such, the Register cannot be said to have “refused” to invalidate the registration.

According to the Compendium of U.S. Copyright Office Practices (“Compendium”),17 the Register “may decline to issue a supplementary registration” while litigation is pending “if it seems likely that the proposed change would be directly at issue in the litigation” or “if it seems likely that the proposed change … may confuse or complicate the pending dispute.” U.S. Copyright Office, Compendium of U.S. Copyright Office Practices (“Compendium”) § 1802.9(G). The Compendium also states that the Register “may issue a supplementary registration” while litigation is pending if the proposed change is “minor” or “if the proposed change does not appear to be directly at issue in the dispute.” Id. “Examples of minor changes or changes that are not likely to be at issue in a legal dispute include spelling mistakes, clerical errors, or changes to the title of the work.” Id. Here, Plaintiff claims that the proposed change at issue—i.e., to exclude the bench Ms. statement, the Court notes that its invalidation of the VA Registration is limited to the registration in its present form and is not intended to prevent Plaintiff from applying for supplementary registration to correct the inaccuracy in the original registration.

Lee designed from the VA Registration—is a minor one to correct a clerical error, while Defendants contend that it would be directly at issue and would likely confuse or complicate the pending dispute.

Initially, the change Plaintiff proposes cannot be fairly characterized as a “minor” one to correct a “clerical error.” Compendium § 1802.9(G). Plaintiff’s failure to identify Ms. Lee as the author of the bench included in the VA Registration deposit was not a mere clerical error. Rather, it went to the central question of which works or elements Plaintiff authored and was therefore entitled to register. And removing the bench from the registration would not be a minor change like the correction of a misspelled word or a misstated title. Rather, it would substantively alter the scope of the registration.

Further, in light of the claims in Plaintiff’s amended complaint, it seems likely that the proposed change would be directly at issue in the litigation and would confuse or complicate it.

Id. In her amended complaint, Plaintiff seeks injunctive relief under the Copyright Act and VARA prohibiting Defendants from, among other things: (1) infringing or copying “any element of ISQ”; (2) removing, modifying, or destroying “ISQ at [the] HoER, or any element thereof”; and, (3) using “ISQ, or any element thereof,” without attribution to Plaintiff.18 (Doc. 148 at 24-25.) Plaintiff identified the bench as an “element of ISQ” in the VA Registration deposit, and has submitted other record evidence that supports the identification. (Doc. 236-3 at 6, 13; see also, e.g., Doc.

420-16 at 6.) Thus, her claims for injunctive relief plainly include the bench.19 Nor has Plaintiff ever moved to amend her operative complaint to exclude the bench from these claims.

In light of these circumstances, the change Plaintiff proposes would directly impact her claims for injunctive relief under the Copyright Act. Excluding the bench from the VA Registration would remove from the registration an element of ISQ that Plaintiff has sought to enjoin Defendants from infringing or copying. And as noted in Section II.A., supra, registration is generally a prerequisite for bringing a civil action for copyright infringement, Unicolors, Inc., 142 S. Ct. at 944, including an action to enjoin an infringer from continued violation of the owner’s exclusive rights. Fourth Est. Pub. Benefit Corp. v. Wall-Street.com, LLC, — U.S. —, 139 S. Ct. 881, 891 (2019). If the bench were excluded from the VA Registration, it is likely that Plaintiff would no longer be able to satisfy the statutory prerequisite of registration with respect to her claims seeking to enjoin Defendants from infringing or copying the bench.20 In addition, the proposed change to the VA Registration would likely confuse or complicate Plaintiff’s claims for injunctive relief under VARA, even though registration is not a prerequisite for such claims.21 17 U.S.C. §§ 106A, 411(a). Again, in her amended complaint, Plaintiff asks the

For these reasons, the change Plaintiff proposes appears likely to be directly at issue in this litigation and to confuse or complicate it,22 and the Compendium indicates that the Court should decline to direct the Register to allow Plaintiff’s application for supplementary registration to proceed while the litigation is pending. Compendium § 1802.9(G).

More broadly, the permissive language in the Compendium and the Register’s Response make clear that it is within the Court’s discretion whether to direct the Register to deviate from her usual practice and allow Plaintiff’s application for supplementary registration to proceed while this litigation is pending. Compendium § 1802.9(G); (Doc. 529 at 9.) And here, it is not only the Compendium’s guidance that persuades the Court to decline to exercise its discretion as Plaintiff requests. In addition, as explained below, the totality of the circumstances weighs against such an exercise of discretion.

First, it bears repeating that the Court has invalidated the VA Registration in its present form because Plaintiff knowingly included inaccurate information on her registration application.

for injunctive relief. However, it would still directly impact Plaintiff’s claims for injunctive relief under the Copyright Act.

In addition, as noted in Section II.A., supra, Plaintiff has taken inconsistent positions regarding why she included the bench in the VA Registration deposit without identifying Ms. Lee as its author, asserting in one pleading that she did so due to her own personal ignorance of legal requirements but suggesting in another that she did so due to her lawyer’s mistake.23 (Compare, e.g., Doc. 346 at 3-4 with Doc. 548-1 at 2.) Further, she failed to promptly apply for a supplementary registration, and ask the Court to direct the Register to consider it, after defense counsel first alerted her to the inaccuracy in her application in April 2021. (Doc. 236-4 at 3-4.)

Instead, she waited until (a) Defendant MWI filed its Motion for Referral on November 4, 2021, (Doc. 236), (b) regular and supplemental briefing on this motion was completed on March 30, 2022, (Doc. 346), (c) the Court granted the motion on August 25, 2022, (Doc. 492), (d) the Register responded to the Court’s referral on February 3, 2023, (Doc. 529), and (e) more than another month passed, before filing her Motion to Allow on March 24, 2023. (Doc. 539.) In short, Plaintiff waited almost two years to ask the Court for the relief she now seeks. Yet she offers no explanation for the delay. The Court therefore finds that Plaintiff bears significant culpability for the circumstances leading to the invalidation of the VA Registration in its present form.

Moreover, Plaintiff’s culpable conduct has unfairly prejudiced Defendants and substantially interfered with the judicial process. It was a direct cause of Defendant MWI’s original Motion for Referral and associated briefing, (Docs. 236, 270, 335), Defendants’ Motion to Invalidate and associated briefing, (Docs. 538, 549), Defendants’ response to Plaintiff’s Motion to Allow, (Doc. 544), and Defendants’ Motion to Exclude and reply in support, (Docs. 552, 561). In

Further, due to the plethora of dispositive motions filed in this case—including those necessitated by Plaintiff’s culpable conduct—the Court found it necessary to vacate the trial set for November 28, 2022, and reset it for November 3, 2023, nearly a year later. (Docs. 284, 285, 489, 564.) And, granting Plaintiff’s requested relief would cause yet more delay, while the Register considers Plaintiff’s application for supplementary registration, the parties brief the issue of the applicable EDR, and the Court decides that issue as well as the remaining motions regarding Plaintiff’s copyright infringement claims based on the VA Registration.

The Court recognizes that Plaintiff will be prejudiced by its refusal to direct the Register to deviate from her usual practice and consider Plaintiff’s application for supplementary registration while this litigation is pending.24 However, the Court does not find this prejudice to be unfair, for several reasons. First, as discussed above, it is in large part the result of Plaintiff’s own culpable conduct. Second, Plaintiff has not identified a result less prejudicial to her that would as

C. The Court will grant Defendants’ Motion to Exclude.

As explained in Section II.A., above, courts generally do not consider new arguments or evidence presented for the first time in a reply and must either permit a surreply or refrain from relying on the new material. Doebele, 342 F.3d at 1139 n.13; Belshaw, 2022 WL 17848108 at *12; Welch, 2016 WL 8809479 at *3 n.6; Harvey, 2013 WL 12329078 at *6; Alexander, 2008 WL 11399605 at *7. And, Plaintiff was on notice of Defendant MWI’s position that she knowingly misrepresented the authorship of the bench on her VA Registration application no later than November 2021. (Doc. 236 at 3-4, 8.) Yet, not until April 2023 did Plaintiff submit evidence to suggest that her copyright attorney included the bench in the VA Registration deposit even though

250, 346, 539, 545.) Nor does Plaintiff explain why she waited so long to come forward with such evidence. Further, Plaintiff’s new evidence is inconsistent with her prior positions regarding why she included the bench in the VA Registration deposit without identifying Ms. Lee as its author. (See Doc. 346 at 3-4.) Because Plaintiff has had ample opportunity earlier in these proceedings to present the new evidence she now relies on, and Defendants have not had the opportunity to rebut this new evidence, the Court has declined to consider it, and will therefore grant Defendants’ Motion to Exclude. Sec. USA Servs., LLC, 606 F. Supp. 3d at 1108 n.3.

III. Conclusion IT IS THEREFORE ORDERED as follows: 1. Defendants’ Motion to Invalidate Plaintiff’s Copyright Registration VA 1-90-174 (Doc.

538), is GRANTED, and Plaintiff’s copyright registration numbered VA 2-170-075 is declared to be invalid and inadequate to support claims of copyright infringement under 17 U.S.C. § 411 in its present form; 2. Plaintiff’s Motion to Allow Plaintiff’s Supplementary Registration Application to Proceed Before the Copyright Office (Doc. 539) is DENIED, and the Court declines to direct the Register of Copyrights to deviate from her usual practice and consider Plaintiff’s application for supplementary registration of the copyright registration numbered VA 2- 170-075 while this litigation is pending; and, 3. Defendants’ Motion to Exclude from Consideration Plaintiff’s New Factual Declaration Submitted for the First Time in Reply Brief (Doc. 552) is GRANTED.

IT IS SO ORDERED. tila thal UN R_— KIRTAN KHALSA UNITED STATES MAGISTRATE JUDGE Presiding by Consent