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- Verify whether the work is published or unpublished, and the date of publication, according to the statutory definition of “publication”.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