The COFC entered judgment for the government on contractor’s claims for breach of contract and copyright infringement. The contractor alleged the government had breached a 1998 contract by providing components of the contractor’s proprietary software to third parties. But the components the government gave to third parties had been obtained under another contract, not the 1998 contract the contractor sued upon. The contractor’s infringement claim failed due to invalid copyright registrations. The contractor’s registration contained inaccurate information, the contractor knew they were inaccurate, and the Registrar of Copyrights would have refused registration if it had known of the inaccuracies.
Bruhn NewTech, Inc. (BNT) sells software, called NBC Analysis, that helps detect chemical, biological, radiological, or nuclear attacks. In 1998, BNT entered a contract with the government to provide NBC Analysis software for the Joint Warning and Reporting Network Program (JWARN). The contract prohibited the government from giving copies of the software to third parties. BNT’s initial JWARN contract ended in 2004.
In 2009, BNT began working as a subcontractor for Northrop Grumman on another contract related to the JWARN program. As part of that subcontract, BNT delivered additional components of the NBC Analysis software to the government.
In 2012 and 2013, some other government contractors who were involved in the JWARN program gave laptops containing JWARN software to the governments of South Korea and Jordan. The JWARN software on those laptops contained components of BNT’s NBC Analysis.
BNT did not authorize the government to provide the NBC Analysis components to South Korea or Jordan. Accordingly, BNT sued the U.S. government in the Court of Federal claims alleging (1) breach of the 1998 JWARN contract, and (2) copyright infringement. The case went to trial on liability.
The court found that BNT’s breach of contract claim failed. BNT alleged the government breached its 1998 contract with by giving the laptops to other countries. But the laptops contained components of the NBC Analysis software that were delivered to the government under the 2009 subcontract with Northrop Grumman. Those components therefore were not covered by the 1998 contract. While delivery of the laptops may have breached the 2009 Northrop Grumman contract, that contract was not before the court. Regardless, the government’s actions did not breach the 1998 contract.
As to the copyright count, the government argued that BNT could not maintain an infringement claim because it did not have valid copyrights. Under 17 U.S.C. § 411 a copyright registration is invalid if it (1) contains inaccurate information that the registrant knows is inaccurate, and (2) the Registrar of Copyrights would have refused certification if the inaccuracy had been known. The government alleged BNT’s copyright registrations contained inaccuracies.
Before addressing whether BNT’s registrations were inaccurate, the court had to determine whether an inaccuracy had to be intentional or willful to invalidate a registration. The Eleventh Circuit holds that to invalidate a registration, the registrant must have intentionally or purposely concealed information. The Ninth Circuit, however, is less stringent; it holds that a registration is invalid if the registrant has knowledge that the registration contains inaccurate information. The court adopted the reasoning of the Ninth Circuit, reasoning that the plain language of 17 U.S.C.§ 411 did not require a showing of willfulness or fraud.
The court then found that BNT’s registrations contained inaccurate information. One of the registrations stated that certain NBC Analysis components had been completed in 2008. But the components had been revised repeatedly after 2008 and were not complete until 2012. Additionally, that same registration, listed Denmark (BNT is the American arm of a Danish company) as the nation where the copyrighted components were first published. The court, however, found that the components were first published in the United States when they were delivered to the government in 2012. Another registration stated that source codes for one of the NBC Analysis components was created in 1998, but it turned out that BNT was revising the source code in 1999, so that representation was inaccurate.
Moreover, the court found that BNT knew its registrations contained inaccurate information. BNT possessed source codes for the components that showed revisions after the completion date stated in the registrations. It knew from the codes that the completion dates were wrong. The court also found that BNT knew that the components had been published in the U.S.—not Denmark—when they had been delivered to the U.S government. In fact, BNT’s Danish parent had disclaimed any copyright in the components when the registrations were filed. Thus, BNT had to have known that the components were not published in Denmark.
The only remaining issue is whether the Registrar of Copyright’s would have rejected BNT’s registrations if it had known of the inaccuracies. Before trial, the court had referred the copyright registration questions to the Registrar of Copyrights to advise on whether the inaccurate information would have caused the Registrar to refuse registration. The Registrar informed the court that had it known the components were not completed on the dates stated in the registration application, it would have denied registration.
Because BNT’s registrations contained inaccurate information, and because the Registrar of Copyrights would have refused registration if it had known of the inaccuracies, BNT’s registrations were invalid. Without a valid registration, BNT could not maintain it copyright claims.
BNT is represented by Steven J. Lewickyof Lewicky, O’Connor, Hunt and Meiser, LLC. The government is represented by Scott D. Bolden, Nicholas Kim, Carrie Rosato,Gary L. Hausken, and Joseph H. Hunt of the U.S.Department of Justice as well as Arthur Samoraof the U.S. Navy.
