Dmarcian, Inc. v. DMARC Advisor BV

THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF NORTH CAROLINA
ASHEVILLE DIVISION
CIVIL CASE NO. 1:21-cv-00067-MR
DMARCIAN, INC., )
)
Plaintiff, )
) MEMORANDUM OF
vs. ) DECISION AND ORDER
)
DMARC ADVISOR BV, )
f/k/a dmarcian Europe BV, )
)
Defendant. )
________________________________ )
THIS MATTER is before the Court on the Defendant’s “Motion for
Request to the Register of Copyrights Under 17 U.S.C. § 411(b)(2) and 37
C.F.R. § 205.14 and to Stay this Case.” [Doc. 140].
I. PROCEDURAL HISTORY
On March 12, 2021, the Plaintiff, dmarcian, Inc. (“dmarcian, Inc.” or
“Plaintiff”) filed this action against DMARC Advisor BV (then known as
dmarcian Europe BV) (“DMARC Advisor” or “Defendant”). [Doc. 1]. The
Plaintiff filed an Amended Complaint on April 7, 2021, [Doc. 19], and a
Second Amended Complaint on June 22, 2021 [Doc. 51]. The Second
Amended Complaint alleges fifteen causes of action against the Defendant,
Case 1:21-cv-00067-MR Document 206 Filed 06/12/23 Page 1 of 27

2
including a cause of action for copyright infringement pursuant to 17 U.S.C.
§ 501. [Doc. 51 at ¶¶ 125-36].
On September 30, 2022, the Defendant filed the present “Motion for
Request to the Register of Copyrights Under 17 U.S.C. § 411(b)(2) and 37
C.F.R. § 205.14 and to Stay this Case,” alleging inaccuracies in the Plaintiff’s
application for copyright registration and requesting the review of the
Register of Copyrights. [Doc. 140]. On November 4, 2022, the Plaintiff filed
a Memorandum in Opposition to the Motion. [Doc. 150]. On November 14,
2022, the Defendant filed a Reply to the Plaintiff’s Memorandum in
Opposition. [Doc. 153]. Accordingly, this matter has been fully briefed and is
ripe for disposition.
II. STANDARD OF REVIEW
The Copyright Act provides that an inaccuracy in an application for
copyright registration does not void the registration 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). The Act further provides that “[i]n any case in which
inaccurate information described under paragraph (1) is alleged, the court
Case 1:21-cv-00067-MR Document 206 Filed 06/12/23 Page 2 of 27

3
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.” Id. § 411(b)(2).
While § 411(b)(2) is “rarely invoked,” the courts that have addressed
the provision are “in agreement that the provision is mandatory in nature,
requiring district courts to solicit the advice of the Copyright Office when the
statutory conditions are satisfied.” Palmer/Kane LLC v. Rosen Book Works
LLC, 188 F. Supp. 3d 347, 349 (S.D.N.Y. 2016) (collecting cases).
III. FACTUAL BACKGROUND1
The facts as they relate to allegations of inaccuracies in the Plaintiff’s
application for copyright registration are as follows. This case arises from a
soured business relationship between the Plaintiff and the Defendant. Tim
Draegen (“Draegen”) is the Plaintiff’s founder and former CEO. [Doc. 9:
Draegen Decl. at ¶ 1]. Draegen founded dmarcian, Inc. in 20142 to
commercialize an anti-phishing software, dmarcian, which he developed in
2012. [Id. at ¶¶ 3-4]. In 2013, Martijn Groeneweg (“Groeneweg”), a Dutch
1 The factual recitation provided here is drawn from the declarations that the parties
submitted in conjunction with their briefing on this motion as well as from the record as a
whole. Where the parties dispute a fact, that dispute is noted.
2 Draegen’s company Eudaemonic Development, LLC, began doing business as
dmarcian in 2012; however, Draegen did not incorporate under “dmarcian, Inc.” until
2014. [Doc. 9: Draegen Decl. at ¶ 4].
Case 1:21-cv-00067-MR Document 206 Filed 06/12/23 Page 3 of 27

4
businessman, first contacted Draegen expressing an interest in marketing
the Plaintiff’s product in Europe. [Id. at ¶ 6; Doc. 26-9: Groeneweg Decl. at
¶¶ 2, 9]. While initial discussions between Draegen and Groeneweg did not
produce an agreement, they continued to discuss the possibility of working
together. [Doc. 26-9: Groeneweg Decl. at ¶ 9; Doc. 9: Draegen Decl. at ¶ 8].
In 2016, Draegen traveled to the Netherlands to meet with Groeneweg.
[Doc. 9: Draegen Decl. at ¶ 9]. The two reached an agreement, which was
not reduced to writing at the time but was later “summarized in the form of a
series of emails,” that would allow Groeneweg to market the dmarcian
software in Europe through a European legal entity. [Id.]. This “legal entity”
was Mailmerk BV, an entity that Groeneweg founded in 2013. [Doc. 26-9:
Groeneweg Decl. at ¶¶ 2, 9]. This verbal agreement also granted Draegen
an option to purchase 50.01% of Mailmerk’s shares for one euro. [Doc 26-9:
Groeneweg Decl. at ¶ 10]. Mailmerk rebranded as dmarcian Europe BV,3
and, in 2018, Draegen exercised his option to purchase 50.01% of then-
dmarcian Europe BV’s shares. [Doc. 9: Draegen Decl. at ¶ 13].
Initially, the Plaintiff and the Defendant worked together as intended
and the Defendant marketed the dmarcian software in Europe. [Id. at ¶ 14].
In 2017, a dmarcian, Inc. contractor in Bulgaria suggested hiring Bulgarian
3 dmarcian Europe BV has since rebranded as DMARC Advisor.
Case 1:21-cv-00067-MR Document 206 Filed 06/12/23 Page 4 of 27

5
developers to “further [the] development of dmarcian’s Code.” [Id. at ¶ 15].
The Defendant hired the Bulgarian developers through Bulgaria EEOD, a
Bulgarian company owned in its entirety by the Defendant, and the
developers worked to “API-ify”4 the dmarcian software. [Doc. 26-9:
Groeneweg Decl. at ¶¶ 18-19]. As of 2021, the dmarcian code was
comprised of forty-three components, with seven of those components
written5 by Bulgarian developers and one component written by Dutch
developers. [Doc. 30: Draegen Decl. at ¶ 18]. Draegen claims that “[t]he eight
components contributed by Bulgarian/Dutch developers are not considered
core functionality of dmarcian’s platform.” [Id.].
Beginning in 2019, disputes over the ownership of the portions of the
code developed by the Defendant’s developers caused the business
relationship between the Plaintiff and the Defendant to deteriorate. [Doc. 1:
Original Complaint at ¶ 36]. On January 22, 2021, the Plaintiff’s counsel sent
the Defendant’s counsel a letter stating that if the Defendant did not execute
4 API stands for application programing interface. [Doc. 148-3: Levine Expert Rep. at ¶
26]. “API-ification” involves refactoring code into smaller components to improve the
overall code structure. [Id. at ¶¶ 25-26].
5 Draegen states that these components were “implemented” by the Bulgarian and Dutch
developers; however, in its Memorandum in Opposition to the present motion, the Plaintiff
characterizes the components as being “written” by the Bulgarian and Dutch developers.
[Compare Doc. 30: Draegen Decl. at ¶ 18, with Doc. 150: Memorandum in Opposition at
7].
Case 1:21-cv-00067-MR Document 206 Filed 06/12/23 Page 5 of 27

6
an attached distribution and settlement agreement that the Plaintiff would
terminate the business relationship on February 1, 2021. [Doc. 17-1: January
2021 Letter at 1]. The letter stated that the agreement “changes the scope
of the cooperation between the parties considerably” because of the “breach
of trust” stemming from the disputes over code ownership. [Id.]. The
Defendant did not sign the agreement and sought an injunction in Dutch
court to prevent the termination of the business relationship. [Doc. 26-3:
February 1, 2021, Rotterdam Judgment at 10].
On February 18, 2021, the Plaintiff filed an application for a copyright
registration for the “dmarcian Source Code” with the United States Copyright
Office. [Doc. 148-1: Copyright Registration Docs. at 64]. The Plaintiff
submitted twenty pages of code, stated that the work for which it sought
copyright was completed in 2012 and first published on February 9, 2012,
that the nation of first publication was the United States, and that the work’s
author was Eudaemonic Development, LLC. [Id. at 3, 64]. The Copyright
Office approved the application and issued the Certificate of Registration on
March 9, 2021. [Id. at 64]. The registration number for this registration was
TX 8-941-559. [Id.] On August 19, 2022, the Plaintiff submitted a
supplemental registration application to correct the author of the work from
Case 1:21-cv-00067-MR Document 206 Filed 06/12/23 Page 6 of 27

7
Eudaemonic Development to Tim Draegen. [Id. at 70-71]. In the
supplemental application, the Plaintiff stated:
The author on the original registration was
inadvertently and incorrectly listed as Eudaemonic
LLC. The correct author is and should have been
listed as Timothy G. Draegen and the work was not
a work for hire. Tim Draegen was the owner of
Eudaemonic but he personally authored and owned
the work independent of Eudaemonic and
maintained personal and sole ownership of the work
until he transferred ownership to dmarcian Inc. by
written agreement in 2015.
[Id. at 71]. The registration number for this updated registration was TX 9-
164-197. [Doc. 142-5: Updated Registration Certificate].
The twenty pages of code submitted to the Copyright Office consisted
of 734 lines written in HTML. [Doc. 141: Ninth Groeneweg Decl. at ¶ 6].
Those 734 lines were excerpted from a larger file that was first created on
November 21, 2017, and revised thereafter. [Id. at ¶ 7]. However, the 734
lines that were excerpted only existed in two versions of the file: the
December 14, 2020, version and the January 11, 2021, version. [Id.]. It was
the standard practice of the Plaintiff and the Defendant in 2020 and 2021 to
first publish updated code on servers located in Europe. [Id. at ¶ 11].
The code was stored in a version-control system that kept a log of
changes. [Id. at ¶ 5]. The version-control system shows that between the
file’s creation in 2017 and January 11, 2021, nine different developers had
Case 1:21-cv-00067-MR Document 206 Filed 06/12/23 Page 7 of 27

8
contributed to the file. [Id. at ¶ 16]. Of these nine developers, four were
employees of the Plaintiff, four were Bulgaria EEOD employees, and one
was the Defendant’s chief technology officer. [Id.]. The version-control
system shows that between November 21, 2017, and January 11, 2021,
2,458 lines of code were added to the file and 2,231 were deleted. [Id. at ¶
18]. Of the lines added, 19.5% (673 lines) were added by Bulgaria EEOD
employees or the DMARC Advisor officer. [Id.]. Of the lines deleted, 18.1%
(403 lines) were deleted by the Bulgaria EEOD employees or the DMARC
Advisor officer. [Id.]. The version-control system does not show any
contributions to the file from Tim Draegen. [Id. at ¶ 19].
However, the Plaintiff’s expert, Dr. John Levine, states that the version-
control system’s attribution of specific lines to an individual developer
overstates the developer’s role in substantively contributing to that line of
code. [Doc. 148-3: Levine Expert Rep. at ¶¶ 28-33]. According to Dr. Levine,
any change to a line—including edits as trivial as adding or removing a
character—is recorded by the version-control system as a change to the
entire line and changes authorship for the entire line. [Id. at ¶ 28]. In Dr.
Levine’s view, the nine developers were not writing an entirely new code but
were instead making changes to refactor, or API-ify, the original dmarcian
code. [Id. at ¶¶ 24-27]. Accordingly, Dr. Levine states, because refactoring
Case 1:21-cv-00067-MR Document 206 Filed 06/12/23 Page 8 of 27

9
requires that developers move lines of code or make other structural
changes, the version-control system attributes authorship to developers who
were only reformatting existing code. [Id. at ¶¶ 24-28]. Dr. Levine examined
the dmarcian code before and after it was API-ified and stated that “most of
the code is unchanged, or at most reformatted” rather than entirely new code.
[Id. at ¶ 33]. In Dr. Levine’s view, the 2021 code “cannot function without
Dra[e]gen’s code” and “Draegen’s original code remains a substantial part of
the current product.” [Id. at ¶ 38]. It is also Dr. Levine’s opinion that any
characterization the dmarcian code as existing in two discrete “versions”—
before and after API-ification, for example—is inaccurate because the code
evolved “step by step over the past decade, starting in 2012 and with
changes made on a regular basis then, including through refactoring.” [Id. at
¶ 39].
The Defendant, however, argues that the improvements since 2012
are so substantial that the 2021 code is functionally a distinct version. [Doc.
153 at 7-9]. According to dmarcian, Inc.’s “Product Changelog,” a page of
the Plaintiff’s website that “highlights feature improvements and
advancements since 2012 when dmarcian was founded,” numerous
“improvements and advancements” were made between 2012 and 2021.
Product Changelog, dmarcian, https://dmarcian.com/changelog/ (last visited
Case 1:21-cv-00067-MR Document 206 Filed 06/12/23 Page 9 of 27

10
May 12, 2023). As the Defendant notes, two of these updates note that
dmarcian features were “rebuilt using API.” Id. The Defendant also points out
that, in 2020, two new features were released and states that the new
features were “written by the Dutch and Bulgarian developers after March
2020.” [Doc. 153 at 8-9 (citing Doc. 93-2: DMARC Advisor Investigation Rep.
at ¶ 7.56)]. Therefore, according to the Defendant, the code submitted to the
Copyright Office was distinct from the code written in 2012 by Draegen.
IV. DISCUSSION
The Defendant argues that its allegations of inaccuracies in the
Plaintiff’s application for copyright registration trigger § 411(b)(2)’s
mandatory referral provision and, therefore, the Court must refer questions
about the alleged inaccuracies to the Register of Copyrights. [Doc. 143 at 3].
The Defendant argues that the Court should refer the following questions to
the Copyright Office:
Would the Register of Copyrights have refused
Registration Numbers TX0009164197 or
TX0008941559 had it known that:
(1) Nine authors – none of whom was Eudaemonic
Development, LLC or Timothy G. Draegen – wrote
the HTML file from which the deposited code was
excerpted, and at least five of those authors never
purported to transfer intellectual property rights to
dmarcian, Inc.;
Case 1:21-cv-00067-MR Document 206 Filed 06/12/23 Page 10 of 27

11
(2) The deposited code was written on or after
November 21, 2017; and
(3) The deposited code was first published on or after
December 14, 2020, outside the United States.
[Id. at 24].
While courts agree that § 411(b)(2)’s referral provision is mandatory,
and at least one circuit court has held that invalidation of a copyright
registration without § 411(b)(2) referral was reversible error, see DeliverMed
Holdings, LLC v. Schaltenbrand, 734 F.3d 616, 624 (7th Cir. 2013), courts
differ on the burden a movant must meet to trigger mandatory referral.
HealtheState, LLC v. United States, 160 Fed. Cl. 91, 95 (Fed. Cl. 2022).
While the Fourth Circuit has not addressed the issue, the two circuit
courts that have considered when a movant has made a showing sufficient
to trigger § 411(b)(2) have held that, despite the statutory language
specifying that a mere “allegation” is sufficient to trigger solicitation of the
opinion of the Register, a movant must “demonstrate that the inaccurate
information was knowingly provided.” Id. The Seventh Circuit cautioned that
§ 411(b)(2) had the potential to be used as a “delay tactic” and, therefore,
noted that “courts can demand that the party seeking invalidation first
establish that the other preconditions to invalidity are satisfied before
obtaining the Register’s advice on materiality.” DeliverMed Holdings, LLC,
Case 1:21-cv-00067-MR Document 206 Filed 06/12/23 Page 11 of 27

12
734 F.3d at 625. The Seventh Circuit also stated that such an approach “has
the benefit of an endorsement from the Register,” quoting a response from
the Register of Copyrights to a § 411(b)(2) request in another case that read
“before asking the register whether she would have refused to register a
copyright . . . a court should feel free to determine whether there is in fact a
misstatement of fact.” Id. (alteration in original) (quoting Response of the
Register of Copyrights to Request Pursuant to 17 U.S.C. § 411(b)(2) at 12,
Olem Shoe Corp. v. Wash. Shoe Co., No. 09-cv-23494, 2010 WL 3505100
(S.D. Fla. Sept. 3, 2010)). The Fifth Circuit adopted the Seventh Circuit’s
view in Energy Intelligence Group, Inc. v. Kayne Anderson Capital Advisors,
L.P., holding that Ҥ 411(b) does not require immediate referral to the
Copyright Office to determine the materiality of alleged inaccuracies.” Energy
Intelligence Grp., Inc., 948 F.3d 261, 277-78 (5th Cir. 2020).
However, as the Court of Federal Claims recently observed, the
heightened burden employed by the Seventh and Fifth Circuits “ignores the
statutory language.” HealtheState, LLC, 160 Fed. Cl. at 95. The statute
unambiguously states that courts “shall” request the Register’s opinion “in
any case in which inaccurate information . . . is alleged.” 17 U.S.C. §
411(b)(2) (emphasis added). “Where, as here, the words of the statute are
unambiguous, the ‘judicial inquiry is complete.’” Desert Palace, Inc. v. Costa,
Case 1:21-cv-00067-MR Document 206 Filed 06/12/23 Page 12 of 27

13
539 U.S. 90, 98 (2003) (quoting Conn. Nat’l Bank v. Germain, 503 U.S. 249,
254 (1992)). The Court agrees with the Court of Federal Claims that the plain
and unambiguous language of the statute should control.
Moreover, the Supreme Court’s recent opinion in Unicolors, Inc. makes
clear that inaccuracies in applications for copyright registrations only render
the registrations invalid if the applicant had “actual knowledge” that his
application contained a mistake of fact or law. Unicolors, Inc. v. H&M Hennes
& Mauritz, L.P., 142 S. Ct. 941, 947. Accordingly, requiring a movant to prove
that an applicant had knowledge of inaccuracies in his copyright application
would require a determination of scienter, a “fact intensive determination,
often appropriately decided by a jury.” Tecnoglass, LLC v. RC Home
Showcase, Inc., No. 16-24328-Civ-Scola, 2018 WL 11353287, at *4 (S.D.
Fla. Sept. 18, 2018) (rejecting the argument that a movant must prove
scienter before § 411(b)(2)’s mandatory referral to the Register was
triggered). Therefore, applying the Seventh and Fifth Circuits’ heightened
standard would require a factual determination that is improper at this stage
of the proceedings.
For all of these reasons, the Court concludes that § 411(b)(2) requires
that the Court seek the Register’s opinion based on an allegation of
inaccuracy and does not require a movant at this stage to prove that the
Case 1:21-cv-00067-MR Document 206 Filed 06/12/23 Page 13 of 27

14
information was inaccurate and that the applicant knew of the inaccuracy at
the time of application. However, “[e]ven courts that hew closely to the plain
language interpretation of § 411(b)(2) review the movant’s request to
determine whether it has provided some basis for its allegation and
presented a proper question for referral to the Register.” HealtheState, LLC,
160 Fed. Cl. at 95-96 (emphasis added). Accordingly, the Court will address
each of the Defendant’s proposed questions to determine whether the
Defendant has provided “some basis” that the underlying information was
inaccurate and that the Plaintiff knew of the inaccuracy when it included the
information in its copyright application. The Court will also evaluate whether
each question is proper for referral.
A. Alleged Inaccuracy Regarding Authorship
The Defendant alleges that the Plaintiff knowingly made an inaccurate
representation of a material fact to the Copyright Office when it listed Tim
Draegen6 as the author of the code for which it sought copyright registration.
[Id. at 19].
6 The Defendant also argues that it was inaccurate to list Eudaemonic Development as
the work’s author, but the Plaintiff concedes that representation was inaccurate. [Doc.
150 at 4]. As the Plaintiff subsequently submitted a supplemental application naming
Draegen as the work’s author, the Court will not further consider whether Eudaemonic
Development authored the work.
Case 1:21-cv-00067-MR Document 206 Filed 06/12/23 Page 14 of 27

15
“The Copyright Act of 1976 provides that copyright ownership ‘vests
initially in the author or authors of the work.’” Cmty. for Creative Non-Violence
v. Reid, 590 U.S. 730, 737 (1989) (quoting 17 U.S.C. § 201(a)). “As a general
rule, the author is the party who actually creates the work, that is, the person
who translates an idea into a fixed, tangible expression entitled to copyright
protection.” Id. The Plaintiff argues that Draegen was the party who
translated the idea for the dmarcian source code into a fixed, copyrightable
work in 2012, making him the author of the work within the meaning of the
Copyright Act. [Doc. 150 at 14]. The Defendant does not seem to dispute
that Draegen was the author of the code as it existed in 2012. Rather, it
argues that Draegen was not the author of the 20217 code that was submitted
to the Copyright Office as part of the Plaintiff’s application for copyright
registration. [Doc. 143 at 14-15].
Ultimately, the proper inquiry here is whether the Defendant has
presented “some basis” for its allegation that a party or parties other than
Draegen are the proper authors of the HTML submitted to the Copyright
7 Although the Defendant noted that the code submitted to the Copyright Office could
have come from a file as it existed in 2020 or 2021, the Plaintiff stated in its briefing that
it submitted code that was in use in 2021. [Doc. 150 at 1]. By referring to the “2012 code”
and the “2021 code,” the Court takes no position as to whether it is possible to identify
two distinct “versions” of the dmarcian code; rather, the Court uses the terms to
differentiate between the lines of HTML actually submitted to the Register of Copyrights
in 2021 and the lines of code that constituted the dmarcian source code in 2012.
Case 1:21-cv-00067-MR Document 206 Filed 06/12/23 Page 15 of 27

16
Office. And because a party is only an author within the meaning of the
Copyright Act if he translates an idea into a fixed expression eligible for
copyright protection, the inquiry here turns on whether any party other than
Draegen contributed any copyrightable element to the 2021 code. Cf. U.S.
Copyright Office, Compendium of U.S. Copyright Practices § 613.3 (3d ed.
2021) (“When completing an application, the applicant should only provide
the name(s) of the author(s) who created the copyrightable material that the
applicant intends to register. . . . [T]here is no need to provide the name of
any person(s) who created material that is de minimis or uncopyrightable.”).
A work is eligible for copyright protection if it is “original to the author.”
Feist Pubs., Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345 (1991). Original
“means only that the work was independently created by the author (as
opposed to copied from other works), and that it possesses at least some
minimal degree of creativity.” Id. Presumably, the Defendant takes the
position that the nine contributors to the HTML file are coauthors of the code
the Plaintiff submitted to the Copyright Office. However, the Defendant fails
to identify what each of these nine purported authors contributed to the 2021
code or explain with any specificity why their contributions qualify for
copyright protection. In its reply, the Defendant states that “Alert Central and
Account Progress Report are new features written by the Dutch and
Case 1:21-cv-00067-MR Document 206 Filed 06/12/23 Page 16 of 27

17
Bulgarian developers after March 2020” and cites the Plaintiff’s statement
that eight of the forty-three components of the 2021 code were created by
the Dutch or Bulgarian developers. [Doc. 153 at 4; 8-9]. However, the
Defendant does not argue that any of these components or features would
qualify for copyright protection such that the developers who worked on the
features should have been listed as coauthors on the Plaintiff’s application
for copyright registration.
The Plaintiff, on the other hand, argues that only Draegen has
contributed anything copyrightable to the 2021 code. The Defendant does
not meaningfully dispute the assertion that Draegen’s code is integral to the
2021 code, stating only that:
For his part, [the Plaintiff’s] putative expert repeatedly
declares that “Draegen’s original code” – an
undefined term that presumably refers to code
Draegen wrote in the distant past without ever
seeking registration – is a “part” of the overall work
that [the Plaintiff] registered. Even if that were true,
it does not justify [the Plaintiff’s] registration. [The
Plaintiff] did not tell the Copyright Office that Draegen
wrote a “part” of the registered work; it told that
Copyright Office that he “personally authored” the
work.
[Doc. 153 at 5 (citations omitted)]. However, by failing to allege the
copyrightability of the other “parts” of the code, the Defendant fails to show
that the Plaintiff’s application was inaccurate. While it may be true that only
Case 1:21-cv-00067-MR Document 206 Filed 06/12/23 Page 17 of 27

18
“part” of what the Plaintiff submitted was authored by Draegen, that does not
preclude that the other “parts” of the submitted code were not eligible for
copyright protection. And the fact that Draegen did not personally contribute
to the HTML file does not preclude him from being the sole author of the
copyrightable content of the file. The Defendant has failed to provide any
basis to conclude that the nine developers who worked on the file contributed
anything copyrightable. Accordingly, the Court will not refer a question to the
Copyright Office regarding an alleged inaccurate representation that
Draegen authored the work.
B. Alleged Inaccuracy Regarding Year of Completion
The Defendant also alleges that the Plaintiff knowingly made an
inaccurate representation of material fact when it stated that 2012 was the
year of completion of the work it submitted to the Copyright Office. [Doc. 143
at 21]. The Plaintiff stated that the “year of completion” was 2012 but does
not dispute that the code it submitted was the code as it existed in 2021.
[Doc. 150 at 18].
“To register a work of authorship with the U.S. Copyright Office, the
applicant must identify the year that the work was created. A work is
considered created when it is fixed in a copy or phonorecord for the first time.
If the work was prepared over a period of time, the portion or portions of the
Case 1:21-cv-00067-MR Document 206 Filed 06/12/23 Page 18 of 27

19
work that existed in a fixed form on a particular date constitute the work that
has been created as of that date.” U.S. Copyright Office, Compendium
(Third) of Copyright § 611 (internal citations omitted) (first citing 17 U.S.C. §
409(7); and then citing 17 U.S.C. § 101).
The Plaintiff argues that 2012 was the last year that anything
copyrightable was created8; therefore, 2012 was the correct the year of
completion. [Doc. 150 at 18]. In other words, the Plaintiff argues that the only
copyrightable portion of what was submitted to the copyright office was fixed
in 2012. The Defendant, on the other hand, argues that the code submitted
to the Copyright Office depicted the code as it existed in 2021, not as it
existed in 2012, and that the 2021 code was “a materially different work than
the 2012 version.” [Doc. 143 at 11-12].
The Defendant seems to make two distinct allegations of inaccuracies
here: first, it takes issue with the assertion that 2012 was the last time any
copyrightable work was created; and second, it asserts that, regardless of
8 Confusingly, the Plaintiff cites 37 C.F.R. § 202.3 to support its position regarding the
definition of “year of completion.” [Doc. 150 at 18]. However, the relevant portion of that
section states: “In the case of applications for registration made under paragraphs (b)(4)
through (5) of this section or under § 202.4, the ‘year of creation,’ ‘year of completion,’ or
‘year in which creation of this work was completed’ means the latest year in which the
creation of any copyrightable element was completed.” 37 C.F.R. § 202.3(c)(4). However,
paragraphs (b)(4) through (5) of § 202.3 and § 202.4 relate to copyright registration of
group works. The Plaintiff does not allege that it registered a group work, so it is unclear
why it cites this definition.
Case 1:21-cv-00067-MR Document 206 Filed 06/12/23 Page 19 of 27

20
when the last copyrightable work was created, what the Plaintiff submitted
was not the work as it existed in 2012.
To rebut the Defendant’s first allegation—that 2012 was not the last
date anything copyrightable was created—the Plaintiff makes a similar
argument as its argument regarding authorship. The Plaintiff emphasizes its
expert’s conclusion that Draegen’s code was integral to the code the Plaintiff
submitted and therefore constituted the only copyrightable portion of that
code. Confusingly, however, the Plaintiff’s expert seemed to be comparing a
version of the code as it existed in 2017 to the 2021 code. [Doc. 148-3:
Levine Rep. at ¶ 29]. It is unclear whether Dr. Levine reviewed the code as
it existed in 2012, and it is unclear if any record of the code as it existed in
2012 even exists. And, as, the Defendant points out, “[e]ven if [the Plaintiff]
were right that nothing written after May 2017 is eligible for copyright
protection, that would still mean that it misrepresented the creation and
publication date by over five years.” Accordingly, the Court concludes that
the Defendant has provided “some basis” for its allegation that 2012 was not
the date of creation.
Moreover, the Defendant correctly asserts that the Plaintiff improperly
deposited 2021 code rather than a copy of the code as it existed in 2012, its
purported year of creation. An application for copyright registration must
Case 1:21-cv-00067-MR Document 206 Filed 06/12/23 Page 20 of 27

21
include a copy or copies of the work. 17 U.S.C. § 408(b). While the Fourth
Circuit has not further defined what constitutes a “copy” for copyright
registration purposes, the Ninth Circuit requires that work submitted must be
a “bona fide cop[y] of the original work,” not a “reconstruction.” Kodadek v.
MTV Networks, Inc., 152 F.3d 1209, 1211 (9th Cir. 1998); see also Torres-
Negron v. J & N Recs., LLC, 405 F.3d 151, 157 (1st Cir. 2007) (adopting the
Ninth Circuit’s definition of a copy within the meaning of the Copyright Act);
Geoscan, Inc. of Tex. V. Geotrace Techs., Inc., 226 F.3d 387, 393 (5th Cir.
2000) (same); Coles v. Wonder, 283 F.3d 798, 801-02 (6th Cir. 2002)
(same); Nova Design Build, Inc. v. Grace Hotels, LLC, 652 F.3d 814, 817
(7th Cir. 2011) (same).
In Tavory v. NTP, Inc., 495 F. Supp. 2d 531 (E.D. Va. 2007), a district
court in this Circuit applied the Kodadek standard to conclude that an
applicant seeking copyright registration for an electronic mail system source
code had failed to deposit a bona fide copy with the Copyright Office. Tavory,
495 F. Supp. 2d at 535. The plaintiff in Tavory sought registration for source
code from 1990, but “no original copies of the source code dating from 1990
remain[ed].” Id. at 536. Therefore, the plaintiff “produce[d] his deposit copy
only by referring to modified versions of the code and redacting those
modifications to the best of his recollection in order to create an ‘original.’”
Case 1:21-cv-00067-MR Document 206 Filed 06/12/23 Page 21 of 27

22
Id. The court in that case concluded that this reconstruction was insufficient
to comply with the Copyright Act’s registration requirements.
Here, the Plaintiff did not even attempt to produce a bona fide copy of
the 2012 source code but instead simply deposited the code as it existed in
2021. Thus, it did even less to attempt to comply with the Copyright Act’s
deposit requirements than the Tavory plaintiff. Accordingly, the Court
concludes that the Defendant has shown some basis supporting its
allegation that the Plaintiff’s deposited code was not a proper copy of the
source material as it existed in the year of completion listed on the
application.
The Court also concludes that the Defendant has provided some basis
to show that the Plaintiff knew 2012 was not the date of creation and that it
knew the code it deposited as part of its application did not represent the
dmarcian source code as it existed in 2012. As previously discussed, the
Plaintiff’s own expert referred to “Draegen’s code” as it existed prior to
refactoring starting in 2017. And there is no dispute that the Plaintiff knew
the code it deposited was the code in use in 2021, not the code as it existed
in 2012. Accordingly, the Court concludes referral to the Register is required
because the Defendant has sufficiently alleged that the Plaintiff knowingly
submitted an inaccurate application.
Case 1:21-cv-00067-MR Document 206 Filed 06/12/23 Page 22 of 27

23
The Defendant asks that the Court submit the following question
related to its alleged inaccuracy regarding year of completion: “Would the
Register of Copyrights have refused Registration Numbers TX0009164197
or TX0008941559 had it known that . . . the deposited code was written on
or after November 21, 2017.” [Doc. 143 at 24]. The Court notes that the
November 21, 2017, date is the day the HTML file was created; however,
the Plaintiff’s expert (and the Defendant itself, in its reply) refers to code from
May 2017. Because the application asks for “year of completion” the Court
will remove reference to a specific date from the question. The Court will also
replace the word “written” with “created,” as the year of creation is what is at
issue here, and refer the following question to the Register of Copyright:
Would the Register of Copyrights have refused
Registration Numbers TX0009164197 or
TX0008941559 had it known that the deposited code
was created in or after 2017?
The Court also notes that while the Defendant does not specifically request
referral of a question related to whether it was proper to deposit a copy of
the code as it existed in 2021, it has alleged that depositing that code violates
the requirement that an applicant deposit a copy of the work at creation.
Accordingly, the Court will also refer the following question to the Register:
Would the Register of Copyrights have refused
Registration Numbers TX0009164197 or
TX0008941559 had it known that the deposited lines
Case 1:21-cv-00067-MR Document 206 Filed 06/12/23 Page 23 of 27

24
of code were the lines in use in 2021, and not an
exact copy of the code as it existed in 2012?
C. Alleged Inaccuracy Regarding Country of Publication
The Defendant also alleges that the Plaintiff knowingly made an
inaccurate representation of material fact when it represented to the
Copyright Office that the work for which it sought copyright registration was
first published in the United States on February 9, 2012. [Doc. 143 at 24].
To the extent the Defendant has provided a basis to show that the
copyrightable work was not created until at least 2017, it has sufficiently
alleged that February 9, 2012, was not the date of publication. Accordingly,
the Court will refer the following question to the Register:
Would the Register of Copyrights have refused
Registration Numbers TX0009164197 or
TX0008941559 had it known that the deposited code
was published in or after 2017?
However, the Defendant provides no details regarding why the United
States was not the country of first publication. It attaches an affidavit by
Groeneweg stating that, during 2020 and 2021, it was the standard practice
of the Plaintiff and the Defendant to first “publish changes” to the code on
servers outside of the United States but fails to explain if that practice
qualifies as a publication within the meaning of the Copyright Act. It also fails
to allege that any of these “changes” are copyrightable. Accordingly, the
Case 1:21-cv-00067-MR Document 206 Filed 06/12/23 Page 24 of 27

25
Court will not refer a question to the Register relating to the country of
publication.
D. Request for Stay of Proceedings
The Defendant also argues that the Court should stay these
proceedings while the above questions are referred to the Register. [Doc.
140]. It argues that failing to stay the proceedings will cause the parties to
“engage in wasteful discovery and potentially motion practice over whether
DMARC Advisor infringed [dmarcian, Inc.’s] supposed rights to code written
by DMARC Advisor’s own employees and agents between 2017 and 2021.”
[Doc. 153 at 10].
The copyright claim is but one of fifteen claims asserted in the Second
Amended Complaint. Additionally, while referral to the Register is mandatory
upon a sufficient allegation of inaccuracies in a copyright registration
application, the Register’s opinion is not binding and a stay is not mandatory.
See Palmer/Kane LLC v. Rosen Book Works LLC, 188 F. Supp. 3d 347, 349
(“Nor does § 411(b)(2) require courts to stay proceedings while a court’s
request for an advisory opinion is pending.”). The Court does not find that a
stay is necessary while it awaits an advisory opinion relating to one of fifteen
Case 1:21-cv-00067-MR Document 206 Filed 06/12/23 Page 25 of 27

26
claims at issue in this case.9 The Court, therefore, declines to enter a stay of
the present proceedings.
V. CONCLUSION
Because the Court concludes that the Defendant has sufficiently
alleged inaccuracies regarding year of completion and publication date, the
Court will refer certain questions to the Register. However, the Court declines
to enter a stay of the proceedings while the Register considers the questions
and renders an advisory opinion.
IT IS, THEREFORE, ORDERED that the Defendant’s Motion for
Request to the Register of Copyrights Under 17 U.S.C. § 411(b)(2) and 37
C.F.R. § 205.14 and to Stay this Case [Doc. 140] is GRANTED IN PART
and DENIED IN PART. The motion is GRANTED to the extent that the
following questions are hereby referred to the Copyright Office:
(1) Would the Register of Copyrights have refused
Registration Numbers TX0009164197 or
TX0008941559 had it known that the deposited code
was created in or after 2017?
(2) Would the Register of Copyrights have refused
Registration Numbers TX0009164197 or
9 Moreover, the Defendant has repeatedly sought to stay these proceedings. As observed
by the Seventh Circuit, a request for a referral to the Register has the potential to be used
as a “weapon to delay the proceedings in district court.” DeliverMed Holdings, LLC, 734
F.3d at 625 (quoting Olem Shoe Corp. v. Wash. Shoe Co., No. 09-cv-23494, 2010 WL
3505100, at *3 n.4 (S.D. Fla. Sept. 3, 2010)). Accordingly, the Court is wary that staying
the proceedings in this case would transform the referral of questions to the register into
exactly the sort of delay tactic the Seventh Circuit warned against.
Case 1:21-cv-00067-MR Document 206 Filed 06/12/23 Page 26 of 27

27
TX0008941559 had it known that the deposited lines of
code were the lines in use in 2021, and not an exact
copy of the code as it existed in 2012?
(3) Would the Register of Copyrights have refused
Registration Numbers TX0009164197 or
TX0008941559 had it known that the deposited code
was published in or after 2017?
The Motion is otherwise DENIED.
The Clerk of Court is respectfully directed to provide a copy of this
Order to the General Counsel of the Copyright Office via email at
411filings@copyright.gov, in accordance with the procedures set out in 37
C.F.R. § 205.14.
IT IS SO ORDERED. Signed: June 12, 2023
Case 1:21-cv-00067-MR Document 206 Filed 06/12/23 Page 27 of 27