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Possession of a registration certificate creates a rebuttable presumption that the work in question is copyrightable. 17 U.S.C.S. § 410(c). The presumption generally is not overcome by an "innocent misstatement." It may be overcome, however, by proof of deliberate misrepresentation.
Appellant Whimsicality, Inc. ("Whimsicality") and appellee Rubie's Costume Co., Inc. ("Rubie's") are competing costume designers and manufacturers. Believing that Rubie's was selling "knock-offs" of its costumes, Whimsicality commenced the instant action and sought initially a preliminary injunction to prevent further manufacture and sale of the alleged knock-offs. The complaint alleged copyright infringement and unfair competition, in violation of § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a)(1988). The district court held that Whimsicality had registered a copyright on its costumes, but that the costumes were not copyrightable, thus, it granted summary judgment in favor of Rubie's on the copyright claim. The district court refused Rubie’s request for attorney’s fees. Whimsicality and Rubie’s both sought review.
Although the court affirmed trial court's decision for Rubie’s, it did so on other grounds. The court noted that Whimsicality had registered its costumes as "soft sculptures," and it had done so with the knowledge that its costumes were not copyrightable. Thus, the court held that Whimsicality obtained its registrations by misrepresentation; registration was thus improper, and since proper registration was prerequisite to an infringement action, Rubie’s was properly granted summary judgment. In addition, because it found bad faith by Whimsicality, the court held that Rubie’s should have been awarded attorney fees pursuant to 17 U.S.C.S. § 505.