OWE’s Linda Joy Kattwinkel now writes the Copyright Law Journal. The following article is excerpted from the May-June 2016 issue.
Roberts v. Gordy, (United States District Court, Southern District of Florida, 1:13-cv-24700, 2016)
SUMMARY
Confronted with three conflicting registrations for the same musical work, the district court found none of them valid and dismissed the entire case.
Facts
Musicians William L. Roberts III (aka rapper Rick Ross), Jermaine Jackson, and Andrew Harr (Harr and Jackson together, aka The Runners) wrote a musical composition called Hustlin’ in 2005. The composition was first published in 2005. A sound recording of Hustlin’, produced by Harr and Jackson and performed by Roberts, was released as a single in March 2006, and on Roberts’ debut album Port of Miami in August 2006. In 2011, the hip-hop musical duo LMFAO (Stefan Kendal Gordy aka Redfoo and Skyler Austen Gordy aka SkyBlu) had an international hit record call Party Rock Anthem. Roberts, Jackson and Harr brought this suit alleging that Party Rock Anthem was copied from their musical composition Hustlin’ (the sound recording is not at issue in this case).
Through a complex series of agreements, the three songwriters held and shared with their respective business entities, publishers, production and record companies, at various times and in various percentages, conflicting copyright interests in the Hustlin’ composition. The validity of contracts between these several parties, and the resulting percentages and nature of copyright interests held by each, were vigorously disputed during prosecution of this case, and ultimately, were not resolved by the court.
Three different copyright registrations were applied for and issued for the Hustlin’ composition. The three registrations list conflicting, inconsistent, and erroneous entries with respect to the date of creation, first dates of publication, authors, and copyright claimants. Although many of the copyright claimants are listed as having received their copyright interests through written agreements or assignments, no such documents had been recorded with the Copyright Office.
In their first complaint, filed December 2013, Roberts, Jackson and Harr alleged that they were copyright owners of Hustlin’, “which is the subject of a valid Certificate of Copyright Registration issued by the Register of Copyrights.” However, the complaint did not identify a registration number or attach a copy of a registration certificate. In their Answer, defendants pointed out that there were multiple copyright registrations for a musical composition entitled Hustlin’, none of which listed all three plaintiffs as copyright claimants and all of which contained mutually inconsistent information. Several more rounds of amended complaints and answers followed. Throughout these proceedings, for almost two years, plaintiffs failed to identify a particular copyright registration in support of their complaint and failed to take a definite position regarding what specific ownership interest they each held. Finally, during a pre-trial conference, Judge Williams pressed the plaintiffs to explain why there were three different registrations, which registration they believed was valid, and what ownership interests they held.
THE COURT: Let me ask this question: Do you all agree that any single work, a song, a book, can have only one valid copyright registration? . . .
THE PLAINTIFF: No.
THE DEFENSE: With one exception. You’re allowed . . . to register an unpublished copyright. We don’t really have that concept anymore. And then, once published, you would register a published copyright. With that exception, I think copyright has one registration.
THE PLAINTIFF: No. I would say that copyright has one copyright, but there can be and there often is [sic] multiple registrations.
Following the hearing, Judge Williams reviewed case law and learned treatises, which she said “make clear that there cannot be multiple registrations for a single composition.” She rejected plaintiffs’ argument that they could simply choose to rely on the last in time registration. She ordered the parties to propose questions to submit to the Register of Copyrights, and subsequently issued a request asking whether certain inaccuracies in the three applications would have caused the Register to refuse registration. The Register responded that the erroneous entries were material, and if the Office had been aware of the erroneous information, it would have refused registration on all three applications.
Copyright Registration
Judge Williams began her analysis by noting that, under the 1976 Act, copyright is no longer seen as an indivisible bundle of rights that cannot be assigned in parts. The 1976 Act, she said, permits a copyright owner to transfer any of the exclusive rights comprising a copyright, including any subdivision of any of those rights, to someone else; and anyone who is the legal or beneficial owner of any of the exclusive rights under a copyright is entitled to sue for infringement. However, she said, no action for infringement of the copyright in any United States work may be instituted until “registration of the copyright claim has been made in accordance with this title.” An “application for copyright registration may be submitted by any author or other copyright claimant of a work, or any owner of any exclusive right in a work, or the duly authorized agent of any such author, other claimant, or owner.” A “claimant” is either “the author of a work” or “a person or organization that has obtained ownership of all rights under the copyright initially belonging to the author.”
A registration made within five years of first publication constitutes prima facie evidence of the validity of the copyright and the facts stated in the certificate. Because of this presumption, Judge Williams concluded that there can only be one valid registration for the same version of a particular work. However, she did not invalidate any of the registrations merely on grounds that they were duplicative. Instead, she followed what she characterized as the mandatory requirement under the Copyright Act to refer any question regarding the inaccuracy of information on a registration certificate to the Register.
The Copyright Act requires referral regarding specifies inaccuracies that were knowingly included on the application, and if known, would have caused the Registrar to refuse registration. Plaintiffs argued that Judge Williams ignored the knowledge requirement, and further, that the court was required to prove that each filer had knowingly and intentionally defrauded the Copyright Office. They argued that there was no evidence that any of the filers were aware of their errors or the other registrations when they filed their own applications. Judge Williams rejected these arguments. She determined that no showing of fraud was required by the statute or case law. She acknowledged precedent holding that an immaterial misrepresentation, without fraud, will not invalidate a registration. However, she said, when a material misrepresentation is made in an application, the question is whether the applied-for work would still have been eligible for copyright had the registration application contained a correct statement of the facts. Judge Williams did not pursue this approach, however, because “The Register has stated unequivocally that she considers the misrepresentations cited in the Court’s request material, and would have rejected all of the Hustlin’ registrations.”
Judge Williams characterized the plaintiffs’ position as “a single work may have multiple, inaccurate, inconsistent registrations so long as: each filer never intended to defraud the Copyright Office; each filer was willfully blind to the actual facts attested to in the registration; and each filer did not have actual knowledge of prior registrations.” She soundly rejected plaintiffs’ position. Citing the constructive notice function of copyright registrations, she faulted the major global music corporations that filed the second and third registrations for failure to perform “even the most minimal due diligence, through a basic search of the Register’s records (which are easily accessible online) [and] would have revealed the prior registrations.” Moreover, she said, “In light of – or despite – the labyrinthine contractual transactions between the filers, plaintiffs, and plaintiffs’ various companies and attorneys, the record belies any assumption that the parties were unaware of the inaccuracies contained in the registrations, the underlying facts regarding the composition, or the prior registrations.” Going through each registration in turn, she noted undisputed facts and implications that made it implausible that the filers could not know when the work was first published or who authored the composition.
Accordingly, Judge Williams ruled that none of the three registrations was valid. Noting that courts have no authority to cancel registrations, she held that her ruling bars plaintiffs from bringing an infringement action because no valid registration exists.
Copyright Ownership
Having found that plaintiffs did not have a valid registration to support their infringement action, Judge Williams said she need not address the ultimate question of whether plaintiffs are the legal or beneficial copyright owners of the composition. Instead, she decided to illustrate some of the problems with the plaintiffs’ ownership claims. These problems primarily resulted from the “the labyrinthine contractual transactions between the filers, plaintiffs, and plaintiffs’ various companies and attorneys,” which purported to assign and license various rights and percentages of copyright ownership among them. Some of the agreements were disputed on grounds that the signatory entities did not legally exist at the time they were executed. Others were not signed by some of the parties. There were also disputes about whether some of the contracts involved work made for hire, and whether specific contractual language resulted in an assignment or a license. After an exhaustive review of these many issues, Judge Williams concluded: “Unfortunately, as of this date, neither Harr, nor Jackson, nor TNF, nor FNG, nor Sony, nor defendants, nor their counsel, nor the Court can ‘figure out’ who owns what with regard to the musical composition Hustlin’.”
Accordingly, Judge Williams held that plaintiffs had not met their burdens of establishing both (a) compliance with statutory formalities, because they did not have a valid copyright registration, and (b) ownership. The entire cased was dismissed.
COMMENT
- Because copyright is divisible, many different copyright claimants can own and register their share of a copyright. The Copyright Office allows multiple parties to apply for registration, including agents for those who do not even own an exclusive right (provided they list as the copyright claimant(s) only those who own the entire copyright or the entire right in one of the six exclusive rights in the copyright bundle). An application to register copyright is examined for apparent eligibility based solely on the information and deposit specimen submitted. The Office does not search prior registrations to determine whether earlier registrations for the same work have been issued. Accordingly, it is quite possible for more than one registration to issue for the same work. It is also quite possible for different parties to inadvertently obtain registrations for the same work. And, as defendants in Roberts v. Gordy asserted, the Copyright Office allows subsequent registrations to be made for published versions of a work, even if the published version does not contain additional copyrightable authorship. Thus, merely that more than one registration exists for the same work should not necessarily render any of them invalid. Courts have long recognized that multiple registrations may cover the same work.
- The Copyright Act makes a distinction between published and unpublished works, and that distinction has material consequences for registration and infringement actions. For published works, the Act gives copyright owners a retroactive three-month grace period following the first date of publication to file their application for registration. If an infringement occurs during that three-month period, the registration will still carry the benefits of early registration, namely, the registrant will be eligible to receive awards of statutory damages and attorneys’ fees. A registration obtained within 5 years of the first date of publication constitutes prima facie evidence of the validity of the copyright and the facts stated on the registration. These benefits are not available for registrations of unpublished works. The statutory definition of “publication” is “the distribution of copies or phonorecords of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending.” When the Act was written, works became accessible to the public, and thus vulnerable to unauthorized copying, through distribution of physical copies (e.g., printed materials or sound recordings). In today’s online environment, however, this definition can be very problematic. In one respect, works made accessible online can be thought of as unpublished “displays,” unless the site is offering authorized downloads. However, technically, each user’s computer browser makes a “copy” of the online image in order to show it to the user. More importantly, online works are immediately accessible for digital copying, and are quickly and frequently copied. To date, the Copyright Office has refused to offer an opinion about whether online works are published or unpublished, and has not altered its regulations, which makes obtaining one registration for a group of “published” works, such as a website, impossible unless all the works were published on the same date. (The only exceptions so far allow group registrations for serial publications and photographs published at different times.) The alternative is to register a site as a collection of unpublished works, leaving the works vulnerable to immediate copying without recourse to the Act’s protections for published works.
- The Copyright Office allows Supplemental Registrations to correct errors in issued registrations. Any author or owner of an exclusive right in the work may file for a Supplemental Registration at any time. The Supplemental Registration does not replace the original, but coexists with its own registration number and its own effective date. If the filer is named as a copyright claimant in the original registration, the Office will cross-reference the Supplemental Registration with the original. Many errors may be corrected this way, including some that apparently were deemed material and grounds for invalidating the registrations in Roberts v. Gordy. Supplemental Registrations may add or delete authors, add or delete copyright claimants, change the date of creation, change the date of publication, change the status of the authorship from or to work made for hire, and change the nature of authorship. Even erroneous designations of unpublished or published status can be changed under certain circumstances. If a work had actually been published, but was erroneously registered as unpublished, the Office generally will not accept a Supplemental Registration. Instead, a new application to register the published version should be filed. However, if the deposit specimen for the published work would be the same as the specimen submitted with the original application for an unpublished work, a Supplemental Registration will be issued to change the status to “published.”
- The Copyright Office will cancel a registration under certain circumstances. Registrations may be cancelled by the Office sua sponte if the Office discovers a substantial defect in the registration. Voluntary cancellation by the copyright claimant listed on the registration is also possible. Practice Tip: Copyright Claimants should use the Copyright Office’s Supplemental Registration and Voluntary Cancellation processes to clean up any problems with inaccurate or conflicting registrations, rather than relying on the court to sort them out. A court cannot order the Copyright Office to cancel a registration. However, the Office advises that the court should order the registrant to cancel its own registration by following the Office’s procedures for doing so. Similarly, when a settlement calls for cancellation of a registration, the settlement agreement should require the registrant to cancel the registration.
- Any transfer of a copyright interest, including non-exclusive licenses, may be recorded with the Copyright Office. Recordation, not a new or a Supplemental Registration, is the proper procedure for making a public record of transfers of copyright interests. Recordation provides certain benefits: it (a) provides constructive notice of the facts contained in the document; (b) establishes priority between conflicting transfers; (c) establishes priority between conflicting transfers and nonexclusive licenses; (d) limits the innocent infringer defense; and, in some cases, (e) perfects a security interest. Copyright claimants who receive their rights through a contract should consider recording transfer documents with the Copyright Office. Confidential information need not be disclosed. A separate, self-contained exhibit to the contract may be used for recordation purposes.