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    January 07, 2021 Practice Points

    What a Copyright Registration Can Tell You about Your Next Infringement Case

    The copyright registration is a fount of information that may save you and your client massive headaches down the line.

    By Eric D. Wong

    There is nothing more deceptive than an obvious fact. Or so said Sherlock Holmes. While we continue the long wait for a Holmes caper exploring the intrigues of copyright litigation, the sentiment is worth keeping in mind during your next infringement dispute.

    The Supreme Court confirmed last year in Fourth Estate Pub. Benefit Corp. v. Wall-Street.com, LLC that a valid copyright registration is very much the key to the courthouse door. 139 S.Ct. 881, 892 (2019). Without it, the average claimant cannot sue. But the registration certificate can also serve as prima facie evidence of “the validity of the copyright and of the facts stated in the certificate”—facts that can have a tremendous impact on an infringement case. See 17 U.S.C. § 410(c). So whichever side of the dispute you happen to be on, it is worth scrutinizing that little piece of paper at the outset of litigation.

    Consider for example the following scenario: An aspiring musician pens and records a song. Years later, he hears a new track that he believes infringes the music and lyrics of his song. He applies for and receives a copyright registration for the song, and files suit. Unfortunately, he only registered the copyright in the sound recording and not the musical composition—the “music and lyrics” he contends were infringed. Because he failed to satisfy the registration precondition announced in Fourth Estate, his lawsuit is doomed to dismissal. That is what happened to the plaintiff in Pickett v. Migos Touring, Inc., 420 F. Supp. 3d 197 (S.D.N.Y. 2019), a post-Fourth Estate decision.

    Depending on when the infringement occurred and when suit was filed, this may also be much more than a simple inconvenience requiring re-filing. Fourth Estate itself recognized “the specter” of limitations lapsing while the registration process plays out, and one can easily visualize anxious claimants and counsel watching time tick away while their application is reviewed. 139 S. Ct. at 892.

    Decisions following Fourth Estate have also recognized that the strategy of “file, register, amend” is not a viable workaround—reasoning that the registration precondition would become “a meaningless formality” if claimants could in fact file suit without a registration. See Malibu Media, LLC v. Doe, No. 18-CV-10956, 2019 WL 1454317, at *2 (S.D.N.Y. Apr. 2, 2019); Lee v. Black Entm’t Tel., LLC , No. 19-CV-02751, 2020 WL 1140795, at *1 (S.D.N.Y. Mar. 6, 2020).

    Key point to all of this: It is important to confirm—early—that the registration covers the relevant portions of the allegedly infringed work, and that the information contained in the registration is accurate. Years of litigation, even a trial, can be undone because the paperwork was not in order. And claimants could wind up losing valuable rights if an application with (knowingly) inaccurate information is left uncorrected. See 17 U.S.C. § 411(b); Unicolors, Inc. v. H&M Hennes & Mauritz, L.P., 959 F.3d 1194 (9th Cir. 2020).

    Recent cases illustrate several of the many pitfalls awaiting litigants who do not carefully vet the subject registration.

    Chain of Title

    Does the claimant/registrant actually own the copyright? If he was not the author, he may not be the owner unless ownership was transferred by a signed written transfer, by operation of law, or by inheritance. See 17 U.S.C. §§ 201(d), 204(a); Nerman Bros. & Assocs., Inc. v. One Step Up, Ltd., No. CV 18-4297, 2019 WL 8129616, at *7 (S.D. Cal. Nov. 25, 2019) (defendants “successfully rebutted” the presumption of valid ownership in the copyright registration “because conflicting evidence in the record forecloses or raises serious questions about [plaintiff]’s various theories of ownership”). Relatedly, any alleged “work made for hire” must meet the statutory definition. See 17 U.S.C. § 101; Estate of Kauffmann v. Rochester Inst. of Tech., 932 F.3d 74, 78–79 (2d Cir. 2019).

    Group Registration vs. Collective Work

    Did the claimant mean to register the work as a “group registration” (i.e., a collection of independent works under a single application for the sake of efficiency) or as a “collective work” (i.e., a work in which a number of contributions, constituting separate and independent works in themselves, are assembled into a collective whole)? The latter could affect any damages model because a collective work is considered a single work for purposes of calculating statutory damages. See Minden Pictures, Inc. v. Buzzfeed, Inc., 390 F. Supp. 3d 461, 469 (S.D.N.Y. 2019).

    Publication Date

    Is the date of first publication accurate? Remember, “publication” is defined by statute; and under that statute, “[a] public performance or display of a work does not of itself constitute publication.” See 17 U.S.C. § 101 (defining “publication”). Depending on your jurisdiction, this could mean very different things—for example, whether simply posting something on the internet suffices. See Internet Prods. LLC v. LLJ Ents., Inc., CV1815421RBKAMD, 2020 WL 6883430, at *5 (D.N.J. Nov. 24, 2020) (observing a split of authority on whether “posting content online amounts to only a display of the work”). The wrong publication date could result in a loss of eligibility for statutory damages and attorney fees. See 17 U.S.C. § 412(2).

    Prior Versions

    Is the registered version the version infringed? Certain works, such as software and websites, may necessitate the registration and allegation of infringement of each version of the work because registrations for the later versions may not cover the subject matter of the earlier and vice versa. See Pohl v. MH Sub I, LLC, No. 4:17CV181-MW/MAF, 2020 WL 7090691, at *5 (N.D. Fla. July 23, 2020).

    Of course, this is not an exhaustive list. Attorneys should carefully analyze the registration from every possible angle to identify and correct any weaknesses the other side may try to exploit. Consider the following practical measures for your next copyright infringement case:

    1. Review the certificate of registration and all underlying documents and information provided by your opponent or client (as applicable) at the outset.
    2. Conduct a copyright search to help identify possible related or conflicting registrations or recorded documents (e.g., copyright transfers).
    3. Early on, order and review copies of the application, deposit, and historical correspondence from the Copyright Office’s Records Research and Certification Section.
    4. Verify the registration covers the copyrighted work at issue and not a different work or edition.
    5. Verify whether the work is published or unpublished, and the date of publication, according to the statutory definition of “publication”.
    6. Verify the chain of title to ensure the claimant owns all necessary rights.

    The copyright registration is a fount of information that may save you and your client massive headaches down the line. There is nothing more deceptive than an (apparently) obvious fact.

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    Eric D. Wong is an associate with Jackson Walker L.L.P. in Dallas, Texas.

    Copyright © 2021, American Bar Association. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or downloaded or stored in an electronic database or retrieval system without the express written consent of the American Bar Association. The views expressed in this article are those of the author(s) and do not necessarily reflect the positions or policies of the American Bar Association, the Section of Litigation, this committee, or the employer(s) of the author(s).