Trade Secrets and Copyright Infringement

In ATPAC Inc. v. Aptitude Solutions, Inc., (EDCA April 12, 2011), the court considered the issue of whether computer source code that had been registered with the copyright office could be considered a trade secret.  Plaintiff ATPAC creates software and imaging solutions for county clerks.    Under Section 301 of the Copyright Act, any state law claims that are "equivalent" to copyright are preempted by federal law.

Here is the operative language of the Copyright Act:

§ 301. Preemption with respect to other laws



(a) On and after January 1, 1978, all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright as specified by sections 102 and 103, whether created before or after that date and whether published or unpublished, are governed exclusively by this title. Thereafter, no person is entitled to any such right or equivalent right in any such work under the common law or statutes of any State.

(b) Nothing in this title annuls or limits any rights or remedies under the common law or statutes of any State with respect to —
(1) subject matter that does not come within the subject matter of copyright as specified by sections 102 and 103, including works of authorship not fixed in any tangible medium of expression; or
(2) any cause of action arising from undertakings commenced before January 1, 1978;
(3) activities violating legal or equitable rights that are not equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106;

17 USC 301.

Under the preemption doctrine, if a claim brought under state law is brought that is "equivalent" to a right or remedy under the Copyright Act, it fails.  Thus court look at state law claims and analyze them to see whether the claim adds an "extra element".  If so, it may survive a preemption challenge.

In ATPAC, the plaintiff had registered its source code with the copyright office in such a manner as to keep it confidential.  This is a special procedure designed to preserve computer code as a potential trade secret.

On a summary judgment motion, the district court permitted the "misappropriation of trade secrets" claim to survive because the "extra element" of the plaintiff preserving the secrecy of the trade secrets is qualitatively different from mere copyright infringement and its application would not conflict with copyright law.

In Chapter 10 of Copyright Litigation Handbook, Removal from State Court and Preemption, I cover the preemption doctrine and how it can be used to remove proceedings from state to federal court.

More on the ATPAC suit here and here.

More on trade secrets here.


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Defamation Claim Based on Copyright Registration Statement Part II

Malmesbury Bible courtesy Wikimedia Commons

Previously, I posted on a case involving a defamation claim based on copyright registration statement, link and link to case here .

Complaint by an alleged author, based on an unpublished underlying work, complaining that a published work was derivative of her work, and infringed on her copyright and her method of bible study.  Complaint here:

Morris v Atchity Complaint


I noted in my prior post that I hadn't bothered to check the docket sheet to figure out what statement in a copyright registration statement could support a claim for defamation.   My laziness and ignorance was rewarded by American University Washington College of Law student Mark Tratos picking up on the theme, on the Intellectual Property Brief blog here.

So, rather than have everyone speculate, I did what I should have done.  Kenneth Atchity's counterclaim for based on the following allegation:

"Margaret Morris wrote and represented to the United States Copyright Office, under penalty of perjury, that "A contract for this ghostwritten book was offered and my agent Atchity concealed it and allowed it to be illegally signed."

It would seem that Morris' statement would be privileged, since it is a quasi-judicial function and the federal government specifically invites copyright "claims" and requires that they be submitted under penalty of perjury.   Ordinarily, such statements enjoy immunity.

I found a couple of discussions of the Administrative Procedure Act in the case law that generally relate to this, but nothing really on point, see below.    I discuss the application of the Administrative Procedure Act in my Copyright Litigation Handbook 2010, available from West Publishing or Amazon.

Utica College v. Gordon, 2009 WL 3418136, 4 (N.D.N.Y. 2009) appeal denied here.


"...an application for the registration of a copyright is more akin to an administrative proceeding. See 17 U.S.C. § 701(a) (“All administrative functions and duties under this title, except as otherwise specified, are the responsibility of the Register of Copyrights as director of the Copyright Office of the Library of Congress.”) (emphasis added). Additionally, the decision to grant a copyright registration is subject to the Administrative Procedure Act. 17 U.S.C. § 701(e). Therefore, defendants are not entitled to attorneys' fees because even if plaintiff's applications for copyright registration were objectively unreasonable, the applications did not constitute civil actions brought under title 17.



Darden v. Peters, 488 F.3d 277, 283 -286 (4th Cir. 2007)

The Copyright Act provides that “all actions taken by the Register of Copyrights under this title are subject to the provisions of the Administrative Procedure Act.” 17 U.S.C. § 701(e).FN2 One routine function of the Register is to examine applications for registration to determine if “the material deposited constitutes copyrightable subject matter and ... the other legal and formal requirements of [the Copyright Act] have been met.” 17 U.S.C. § 410(a). If so, then the Register must issue a certificate of registration to the applicant, see 17 U.S.C. § 410(a); if, however, the Register determines that “the material deposited does not constitute copyrightable subject matter or that the claim is invalid for any other reason,” then the Register must refuse registration and notify the applicant of the reasons for refusal, 17 U.S.C. § 410(b). Because the Register's denial of a copyright registration application is, by the statute's plain terms, an action taken by the Register under the Copyright Act, the APA governs judicial review. See 17 U.S.C. § 701(e); Atari Games Corp. v. Oman, 888 F.2d 878, 879 & n. 1 (D.C.Cir.1989) (“ Atari I ”); Nova Stylings, Inc. v. Ladd, 695 F.2d 1179, 1182 (9th Cir.1983).
FN2. The Copyright Act excepts the Register's performance of a single function from APA review: authorization of, or refusal to authorize, copies or reproductions of “deposited articles retained under the control of the Copyright Office.” 17 U.S.C. § 706(b); see 17 U.S.C. § 701(e). This narrow exception is not at issue here.
The district court concluded that the proper standard of review under the APA is the familiar “abuse of discretion” standard whereby a reviewing court will “set aside agency action, findings, and conclusions” that are “arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with law.” 5 U.S.C. § 706(2)(A). This is consistent with the few federal decisions-most of which were issued by the same court-addressing the proper review standard under the APA for courts directly reviewing a registration decision. See Atari Games Corp. v. Oman, 979 F.2d 242, 243 (D.C.Cir.1992) (“ Atari II ”); OddzOn Prods., Inc. v. Oman, 924 F.2d 346, 347-48 (D.C.Cir.1991); Atari I, 888 F.2d at 881; Coach, Inc. v. Peters, 386 F.Supp.2d 495, 497 (S.D.N.Y.2005). See generally 3 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 12.11[B][3], at 12-208 (2005).
[2] Darden does not contest the general applicability of the APA to his claim; indeed, he expressly brought this action under the APA. Darden contends, however, that the district court incorrectly applied the abuse of discretion standard set forth in section 706(2)(A) of the APA. Darden suggests instead that section 706(2)(B) applies to a challenge of the Register's denial of a copyright registration application and mandates a de novo standard of review. Section 706(2)(B) directs that the reviewing court set aside agency actions the court finds to be “contrary to constitutional right, power, privilege, or immunity.” 5 U.S.C. § 706(2)(B). Under the APA, constitutional questions that arise during APA review fall expressly within *284 the domain of the courts. See 5 U.S.C. § 706 (requiring that “[t]o the extent necessary to decision and when presented, the reviewing court shall ... interpret constitutional and statutory provisions”) (emphasis added). Thus, judicial review of a claim that the agency's actions violated a claimant's constitutional rights is conducted de novo. See Western Energy Co. v. United States Dep't of Interior, 932 F.2d 807, 809 (9th Cir.1991).
[3] [4] [5] Darden cites no authority even remotely suggesting that any court has ever regarded the agency's routine decision to deny registration as having constitutional ramifications for the claimant. Darden derives the basis for his argument from Article I of the United States Constitution which grants Congress the power to provide copyright protection to the extent Congress sees fit. See U.S. Const. Art. I, § 8, cl. 8 (granting Congress legislative power “[t]o promote the Progress of Science and useful Arts, by securing ... to Authors and Inventors the exclusive Right to their respective Writings and Discoveries”). Congress is under no mandate from this clause, however, to provide copyright protection. See Silvers v. Sony Pictures Entertainment, Inc., 402 F.3d 881, 883 (9th Cir.2005) (“As is clear from its text, that clause of the Constitution grants no substantive protections to authors. Rather, Congress is empowered to provide copyright protection.”). Copyright is solely a creature of statute; whatever rights and remedies exist do so only because Congress provided them. See Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 431, 104 S.Ct. 774, 78 L.Ed.2d 574 (1984). Thus, as there is no constitutional right to copyright registration, the Register's refusal to register Darden's claim cannot be “contrary to constitutional right” as it must be for section 706(2)(B) to apply.
[6] Darden next contends that because the Register's decision was based on the agency's incorrect resolution of a legal question, i.e., whether Darden's claim lacked sufficient originality to be registrable, the Register's decision is subject to de novo review. More particularly, Darden argues that the Register's refusal to find sufficient originality in his submitted works despite the “extremely low” amount of creativity required for a work to be copyrightable, Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991), was an erroneous conclusion that must be set aside under the “not in accordance with law” provision of section 706(2)(A) of the APA. Additionally, Darden cites various decisions noting, in the context of copyright infringement litigation, “that copyrightability is always an issue of law” for the court. Gaiman v. McFarlane, 360 F.3d 644, 648 (7th Cir.2004); see Yankee Candle Co. v. Bridgewater Candle Co., 259 F.3d 25, 34 n. 5 (1st Cir.2001); Collezione Europa U.S.A. v. Hillsdale House, 243 F.Supp.2d 444, 452 (M.D.N.C.2003).
[7] We reject Darden's argument. Essentially, Darden is claiming that the Register simply reached the wrong result, not that the Register applied the wrong legal standard or misapprehended or ignored the controlling legal principles. See Turgeau v. Administrative Review Bd., 446 F.3d 1052, 1057 (10th Cir.2006) (explaining that under § 706(2)(A) “[f]ailure to apply the correct legal standard or to provide this court with a sufficient basis to determine that appropriate legal principles have been followed is grounds for reversal”) (internal quotation marks omitted). Review under section 706(2)(A) is “narrow” and the reviewing court is not permitted to substitute its own judgment for the judgment of the agency. *285 Motor Vehicle Mfrs. Ass'n v. State Farm Mut. Auto. Ins. Co., 463 U.S. 29, 43, 103 S.Ct. 2856, 77 L.Ed.2d 443 (1983). Rather, the court is to determine “whether the decision was based on a consideration of the relevant factors,” West Virginia v. Thompson, 475 F.3d 204, 212 (4th Cir.2007) (quoting Citizens to Preserve Overton Park, Inc. v. Volpe, 401 U.S. 402, 416, 91 S.Ct. 814, 28 L.Ed.2d 136 (1971)), or whether “the agency has relied on factors which Congress has not intended it to consider, [or] entirely failed to consider an important aspect of the problem,” Motor Vehicle Mfrs., 463 U.S. at 43, 103 S.Ct. 2856; see Thompson, 475 F.3d at 212.
Darden makes no assertion of this kind here; he merely argues that the agency should have concluded that the Maps and APPRAISERSdotCOM works contained the requisite level of creativity, citing Feist and other precedents. At every level of internal agency review, however, the Copyright Office recognized Feist as having established the contours of the originality element of a copyright claim. Because Darden has failed to identify any relevant factor or legal principle that the Register failed to consider, the agency's decision cannot be set aside as “contrary to law.”
[8] Finally, Darden argues that the Register's determination that a copyright claim lacked sufficient originality to warrant registration is subject to de novo review in the context of an infringement action under section 411(a) of the Copyright Act. He contends that de novo review of the copyrightability issue should also apply in the context of APA review for the sake of efficiency and predictability. We cannot agree.
Congress has afforded disappointed copyright applicants two separate methods of seeking redress for the decision of the Copyright Office not to register a copyright claim. First, as we explained previously, the applicant may file a review action under the APA against the Register of Copyrights for the sole purpose of having the denial of registration set aside. See 17 U.S.C. §§ 410(a), 701(e). Darden's action, of course, is such a case. Second, the claimant may seek judicial review of the rejected registration as part of an infringement action against an alleged infringer under section 411(a) of the Copyright Act.FN3
FN3. Registration is a prerequisite for a copyright infringement action. See 17 U.S.C. § 411(a). However, if “the deposit, application, and fee required for registration have been delivered to the Copyright Office in proper form and registration has been refused, the applicant is entitled to institute an action for infringement if notice ... is served on the Register of Copyrights” who “may, at his or her option, become a party to the action with respect to ... registrability of the copyright claim.” Id.
[9] [10] Both kinds of actions involve, to one degree or another, consideration of whether a copyrightable claim has been presented. The Register has a statutory duty to examine applications for registration to determine if “the material deposited constitutes copyrightable subject matter and ... the other legal and formal requirements of [the Copyright Act] have been met.” 17 U.S.C. § 410(a). Whether the Register issues the certificate of registration or not, the Register necessarily makes a determination about the validity of the copyright claim. And, with respect to a copyright infringement action, the plaintiff must establish “ownership of a valid copyright and copying of constituent elements of the work that are copyrightable.” Compaq Computer Corp. v. Ergonome Inc., 387 F.3d 403, 407 (5th Cir.2004) (internal quotation marks omitted). Copyright ownership, in turn, requires “proof of originality and copyrightability.” *286 Id. at 408; see Feist, 499 U.S. at 361, 111 S.Ct. 1282.
Darden's argument notwithstanding, it is not a foregone conclusion that courts owe no deference whatsoever to the Register's decision in the context of an infringement action under section 411(a). Indeed, courts are split on this issue. Compare John Muller & Co. v. New York Arrows Soccer Team, 802 F.2d 989, 990 (8th Cir.1986) (applying abuse of discretion standard to infringement claim); Norris Indus. v. I.T. & T. Corp., 696 F.2d 918, 922 (11th Cir.1983) (same), with Carol Barnhart, Inc. v. Economy Cover Corp., 773 F.2d 411, 414 (2d Cir.1985) (according no deference to Register's copyrightability conclusion); OddzOn Prods., 924 F.2d at 347-50 (same). We need not weigh in on this issue, however, as Darden brought this action against the Register under the APA seeking review of the denial of registration for insufficient originality in his works. Even if no deference is due to the Register's decision by courts adjudicating infringement actions under section 411(a), we must apply the standards set forth in the APA. To do otherwise would be to ignore the clear and unambiguous language of the statute, which we cannot do. Accordingly, we review the decision to register Darden's works for abuse of discretion.


This is a long way of saying that it seems to me that if someone else registers a claim to a work that you think you own, you file a competing registration claim that "defames" or "slanders the title" of the first claimant.   Since you are required to do so by law as a prerequisite to commencing suit in federal court, it would appear to me that any statements would be subject to absolute judicial immunity (subject to the limits of that doctrine).
Bible study was always a rough game.

Morris v Atchity Counterclaims

Purchase Copyright Litigation Handbook 2010 by Raymond J. Dowd from West here  

Copyright Litigation: Defamation Claim Based on Copyright Registration Filing Survives Summary Judgment

In Morris v. Atchity, 2010 WL 4181452 (C.D. Cal. Oct. 15, 2010), the court declined to grant a summary judgment motion dismissing a claim for defamation based on statements made in a copyright registration.   This is an unusual claim, but the decision does not explain what the allegedly defamatory statement made was.

Any slander of title-type of claim would appear to be preempted by the Copyright Act:  anyone can file a competing claim, this is the point of the copyright registration process.   I didn't dig into the docket sheet to figure out what possible statement might be defamatory.

In Morris v. Atchity, Plaintiff Margaret Morris alleged that her work "Jesus Augustus: From Imperial Cult to Christianity" was infringed by a novel based on the work "The Ashes of Christ/The August God".

Plaintiff alleged that she submitted the work to defendant and had an implied contract.   The court declined summary judgment on the implied contract, finding that material questions of fact precluded a dismissal based on preemption.

Defendants argued that the works share only a similar historical theory.   In denying the motion, the court found that "reasonable minds might differ as to whether there are substantial similarities between the two works with respect to the protected expression of ideas contained in Plaintiff's literary work."

Purchase Copyright Litigation Handbook 2010 by Raymond J. Dowd from West here  

SDNY: System of a Down: Mistakes in Copyright Registrations and Supplementary Registrations

System of a Down's Mezmerize on Amazon.com

The Code of Federal Regulations provides for "supplementary registration" in the following cases:

§201.5 Corrections and amplifications of copyright registrations; applications for supplementary registration. (a)  General. (1) This section prescribes conditions relating to the filing of an application for supplementary registration, to correct an error in a copyright registration or to amplify the information given in a registration, under section 408(d) of title 17 of the United States Code, as amended by Pub. L. 94-553. For the purposes of this section: (i)


A basic registration means any of the following:
(A) A copyright registration made under sections 408, 409, and 410 of title 17 of the United States Code, as amended by Pub. L. 94-553;
(B) a renewal registration made under section 304 of title 17 of the United States Code, as so amended;
(C) a registration of claim to copyright made under title 17 of the United States Code as it existed before January 1, 1978; or
(D) a renewal registration made under title 17 of the United States Code as it existed before January 1, 1978; and


(ii) A supplementary registration means a registration made upon application under section 408(d) of title 17 of the United States Code, as amended by Pub. L. 94-553, and the provisions of this section.


(2) No correction or amplification of the information in a basic registration will be made except pursuant to the provisions of this § 201.5. As an exception, where it is discovered that the record of a basic registration contains an error that the Copyright Office itself should have recognized at the time registration was made, the Office will take appropriate measures to rectify its error.


(b)  Persons entitled to file an application for supplementary registration; grounds of application. (1) Supplementary registration can be made only if a basic copyright registration for the same work has already been completed. After a basic registration has been completed, any author or other copyright claimant of the work, or the owner of any exclusive right in the work, or the duly authorized agent of any such author, other claimant, or owner, who wishes to correct or amplify the information given in the basic registration for the work may file an application for supplementary registration. n1 n1 If the person who, or on whose behalf, an application for supplementary registration is submitted is the same as the person identified as the copyright claimant in the basic registration, the Copyright Office will place a note referring to the supplementary registration on its records of the basic registration.


(2)  Supplementary registration may be made either to correct or to amplify the information in a basic registration. For the purposes of this section:


(i)  A correction is appropriate if information in the basic registration was incorrect at the time that basic registration was made, and the error is not one that the Copyright Office itself should have recognized;
(ii) An amplification is appropriate:  (A) To supplement or clarify the information that was required by the application for the basic registration and should have been provided, such as the identity of a co-author or co-claimant, but was omitted at the time the basic registration was made, or

(B)  To reflect changes in facts, other than those relating to transfer, license, or ownership of rights in the work, that have occurred since the basic registration was made.


(iii)  Supplementary registration is not appropriate:


(A)  As an amplification, to reflect a change in ownership that occurred on or after the effective date of the basic registration or to reflect the division, allocation, licensing or transfer of rights in a work; or
(B)  To correct errors in statements or notices on the copies of phonorecords of a work, or to reflect changes in the content of a work; and
(iv) Where a basic renewal registration has been made for a work during the last year of the relevant first-term copyright, supplementary registration to correct the renewal claimant or basis of claim or to add a renewal claimant is ordinarily possible only if the application for supplementary registration and fee are received in the Copyright Office within the last year of the relevant first-term copyright. If the error or omission in a basic renewal registration is extremely minor, and does not involve the identity of the renewal claimant or the legal basis of the claim, supplementary registration may be made at any time. In an exceptional case, however, supplementary registration may be made to correct the name of the renewal claimant and the legal basis of the claim at any time if clear, convincing, objective documentation is submitted to the Copyright Office which proves that an inadvertent error was made in failing to designate the correct living statutory renewal claimant in the basic renewal registration.

In Maxwood v. Malakian, 2010 WL 2010936 (May 18, 2010), SDNY USDJ Sweet analyzed the dilemma of a rock band System of a Down.  The facts were roughly these:

Band invites friend to jam while new album being prepared.
Band member wishes to gift a portion of writer's royalties to friend on one song.
Friend thanks band member in writing for 2% gift of writer's royalties.
When credits sent to SONY by band, the gift is mistakenly identified as a writing credit.
SONY files copyright registration with mistake.
Band notices mistake, asks SONY to fix it.
SONY files supplementary registration, but identifies giftee as a "silent writer".
When mistake pointed out again, SONY finally fixes it and gets it right.
Giftee decides he co-wrote song.
Giftee sues friend who gave him gift.

In a 16 page decision, Judge Sweet analyzes evidence presented at trial.   The court rejects claims of co-authorship, states emphatically that "mistakes are not admissions" and points out the Copyright Office's procedures to correct errors.

"Evidence in a supplemental registration that rebuts information in an original registration similarly rebuts any presumption accorded the facts on the original registration."

citing Estate of Hogarth v. Edgar Rice Burroughs, Inc., 342 F.3d 149, 165-167 (2d Cir. 2003).

The decision is an excellent primer for musicians on how to keep good records of the creative process.  Judge Sweet relied heavily on poetry journals, lyric sheets and spreadsheets created by band members showing writing and royalty splits.

I discuss Copyright Ownership and Licensing Litigation in Chapter 8 of Copyright Litigation Handbook, including disputes over joint authorship.

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9th Circuit: Through the Brooklyn Lorgnette - EDNY USDJ Sez Copyright Application is "Registration"

"Lady Caroline Lorgnette" from Los Angeles Iptrademarkattorney.com

In Cosmetic Ideas, Inc. v. IAC, No. 08-56079 (May 25, 2020), USDJ David G. Trager from the EDNY (Brooklyn), wrote a thoughtful and sensible opinion that eliminates one of the major annoyances facing copyright litigants in a rush, but who don't want to pay the Copyright Office's spectacularly high "special handling" fees.   The case involved a cosmetic jeweler's case against the Home Shopping Network.

The issue, recently brought to the fore in the recent Supreme Court case Reed-Elsevier, Inc. v. Muchnick, ___ U.S.___, 130 S.Ct. 1237 (2010), was this:

If you file an application with the Copyright Office, but the Register of Copyrights hasn't registered it, can you file a lawsuit before you get the registration certificate?

SCOTUS noted in Reed-Elsevier, Inc. v. Muchnick that the Circuit courts were divided over the issue, but it wasn't the precise issue before them, so declined to resolve it. Reed-Elsevier, Inc. v. Muchnick decided that the Copyright Act 17 usc 411's requirement that a copyright claimant's claim be registered was a "claim processing rule" and did not implicate the court's subject matter jurisdiction.

Cosmetic Ideas, Inc. v. IAC, the Ninth Circuit analyzed seemingly conflicting provisions in the Copyright Act for clues, but didn't find the answer.  Relying on a common sense practical approach, it went with registration occurring upon the filing of the application.

I have had a couple of cases before Judge Trager, and he taught my brother at Brooklyn Law School.  He is liked and respected among the local bar and bench.

Let's hope that the Second Circuit follows the Brooklyn approach adopted by the Ninth Circuit.

Practical Implications:  In the Ninth Circuit (and those Circuits following the application rule), just apply and get proof of receipt by the Copyright Office.  With that in hand, you can sue.  For the rest of us, unless you want to be a test case, get your certificate through the Copyright Office's Special Handling Procedures (Copyright Litigation Handbook Chapter 4)

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My Old Kentucky Home Remixer Punk'd: Court Tosses Copyright Infringement Action For Failure To Disclose Pre-Existing Material

In Rich & Rich Partnership v. Poetman Records USA, Inc. 2010 WL 1978800, 1 (E.D.Ky. May 17, 2010) the court found that a copyright registration certificate that did not disclose that a work was a remix including a sound recording of the late Gov. Happy Chandler's "Old Kentucky Home" rendered the copyright unenforceable.   The plaintiff did not offer any excuse for the omission, such as a mistake (the case law is pretty forgiving).

Please note that 17 USC 409 (9) provides:

§ 409. Application for copyright registration


The application for copyright registration shall be made on a form prescribed by the Register of Copyrights and shall include —
(9) in the case of a compilation or derivative work, an identification of any preexisting work or works that it is based on or incorporates, and a brief, general statement of the additional material covered by the copyright claim being registered;

Practice Tip:  In Chapter 4 of my Copyright Litigation Handbook I review how to correct mistakes in ownership and registration forms with the Copyright Office before going to court.  It is better to do this prior to bringing a litigation.

More from the decision:

“[W]hen an applicant knowingly fails to identify the derivative nature of the work, or the use of elements not of the applicant's own creation, the court may decline to enforce the copyright.” Lenert v. Duck Head Apparel Co. Inc., No. 95-31122, 1996 WL 595691, at *4 (5th Cir. Sept.25, 1996) (citing Russ Berrie & Co., Inc. v. Jerry Elsner Co., Inc., 482 F.Supp. 980, 987-89 (S.D.N.Y.1980) (court declined to enforce copyright where applicant knowingly failed to disclose pre-existing work); GB Mktg. USA Inc. v. Gerolsteiner Brunnen GmbH & Co., 782 F.Supp. 763, 774-76 (W.D.N.Y.1991) (knowing omission of derivative nature permits grant of summary judgment refusing to enforce copyright)). In other words, a “ ‘knowing failure to advise the Copyright Office of facts which might have occasioned a rejection of the application constitute[s] reason for holding the registration invalid and thus incapable of supporting an infringement action ... or denying enforcement on the ground of unclean hands.’ ” Eckes v. Card Prices Update, 736 F.2d 859, 861-62 (2d Cir.1984) (quoting Russ Berrie, 482 F.Supp. at 988). In 1998, David E. Rich registered a work entitled “The Kentucky Wildcat Basketball Experience.” R. 125, Ex. 1 at 1-2. In that registration, the nature of the copyrighted work was described as a “[c]ompilation of sound recordings of Kentucky Wildcat games and band recordings, with some new sound recording.” Id. at 1. The registration form asked Rich & Rich to “[i]dentify any preexisting work or work that this work is based on or incorporates.” Id. at 2. In response, Rich & Rich identified, “some sound recording.” Rich & Rich did not identify Chandler's original rendition of “My Old Kentucky Home” in its response. The Copyright Office, without knowing what the pre-existing work was and which track contained the remix, could never have determined whether Rich & Rich's contribution to the Chandler rendition qualified as a derivative work.FN1


FN1. Rich & Rich knew that it was taking a work from Chandler and putting it on its album. Cf. Original Appalachian Artworks, Inc. v. Toy Loft, Inc., 684 F.2d 821, 828 (11th Cir.1982) (omission of pre-existing work did not invalidate the registration because of lack of scienter). That is not disputed and, hence, lack of knowledge cannot excuse the error here.

Courts can overlook immaterial mistakes in a registration. See Lenert, 1996 WL 595691, at *4 (collecting cases where the failure to disclose the derivative nature of a work did not invalidate the registration). But Rich & Rich has neither attempted to show evidence that this was a simple mistake nor provided an explanation of why the registration was done in this manner. See Masquerade Novelty, Inc. v. Unique Indus., Inc., 912 F.2d 663, 668 n. 5 (3d Cir.1990) (“[A] misstatement or clerical error in the registration application if unaccompanied by fraud will not invalidate the copyright nor render the registration incapable of supporting an infringement action.” (quoting M. Nimmer & D. Nimmer, Nimmer on Copyright § 7.20, at 7-197-98)); see also Advisers, Inc. v. Wiesen-Hart, Inc., 238 F.2d 706, 708 (6th Cir.1956) ( “innocent misstatement ... in the affidavit and certificate of registration, unaccompanied by fraud” does not invalidate copyright).

Crisis in Copyright Registration for Photographers: New SDNY Case Points Out Need For Reform

In Muench Photography, Inc. v. Houghton Mifflin, 2010 WL 1838874 (SDNY May 4, 2010) Chief Judge Loretta Preska made an unusual foray into the world of copyright registration.  The decision, although correct, points out a glaring problem in our current copyright registration system.  It is simply too expensive for photographers and freelancers to register their copyrights.  When they try to game the system to save fees, it blows up in their faces.

It is all well and good that post-Berne we all own our copyrights, but unless we register them, we don't get statutory damages and attorneys fees.  The practical underlying issue in the Reed Elsevier v. Muchnick case recently decided by the Supreme Court was that hundreds or thousands of freelancers whose works were infringed by the NY Times and other publishers by including them on electronic databases without permission hadn't registered copyrights to their individual articles.  Most journalists still think that their publisher's registrations cover them, and it is not necessarily the case.  If a commenter has the stats at hand (there are blogs devoted to that case), I'd appreciate them.  Something like over 80 or 90% of the freelance journalist would have been shut out of the settlement if the Supreme Court hadn't reversed.

Muench Photography deals with the photographic analogue.  Most photographers don't register their copyrights.  There is a group registration process for compilations of unpublished works, so for $35 photographers may register a group.

Corbis, the image database, thought it had found a workaround.  It put the photographs of numerous photographers into what it called an "automated database" then paid only one fee.  Corbis had an agreement with the photographers that it would reconvey the rights to the photographs once they were registered.  So Corbis could register 1,000 photos and pay only one filing fee.

But the problem is that Corbis registered under a provision that provided for the collective registration by a single author only.  Since group registration is limited to unpublished collections this was probably seen as a workaround that would save photographers a fortune and put a minimal burden on Corbis.

There are not so many cases out there discussing the degree of deference that must be given to the Copyright Office (the attorney for Corbis got a letter from the Copyright Office ok'ing the procedure), so Judge Preska's opinion is worth reading, here is a small sample.

Although both serials and automated databases are considered collective works,FN7 each is governed by separate registration requirements. Serials are governed by 37 C.F.R. § 202.3(b)(6) as well as Circular 62.FN8 Automated databases, on the other hand, are governed by 37 C.F.R. § 202.3(b)(5) and Circular 65. Neither Circular 65 nor § 202.3(b)(5) contains language similar to that found in Circular 62, i.e., that the copyright registration filed by the claimant extends to the independently contributed works if all of the rights in the work have been transferred to the claimant. Moreover, any argument that the registration of the automated databases, considered compilations, covers the individual works of the compilation pursuant to § 103 is belied by the text of § 103 which states that “copyright in a compilation or derivative work extends only to the material contributed by the author.” 17 U.S.C. § 103(b) (emphasis added). The cases MPI cites to support its reading of the statute only underscore the fact that the registration of a collective work reaches the individual works only when the author of the collective work authored each of the individual works. E.g., Szabo v. Errisson, 68 F.3d 940 (5th Cir.1995) (musician's registration of his collection covered each of his individual songs which comprised the collection); Educ. Testing Servs. v. Katzman, 793 F.2d 533, 539 (3d Cir.1986) (“[T]he fact that the registration was for compilations does not preclude protection for the material therein contributed by the author.”); Carell v. Shubert Org., Inc., 104 F.Supp.2d 236 (S .D.N.Y.2000) (group registration of makeup designs covered individual works, but copyright owner was designer of individual designs within the group); Woods v. Universal City Studios, Inc., 920 F.Supp. 62, 64 (S.D.N.Y.1996) (author who filed registration for collective work was the same author of the individual works that were the subject of the infringement). Accordingly, the Court rejects MPI's interpretation of the Copyright Act.

Judge Preska was constrained by the statute and regulations to make the decision she did and noted that it might not have been the wisest policy choice on Congress' part.

Photographers and freelance journalists need legislative relief to make registration affordable and sensible.  Paying $35,000 and filling out the paperwork to register 1,000 images is prohibitive and is not justifiable in today's digital economy.

Image via Wikipedia

In Reed Elsevier v. Muchnick, 08-103 (March 2, 2010) the U.S. Supreme Court, in a decision by Justice Clarence Thomas, held that a failure to register a copyright under Section 411 of the Copyright Act did not deprive a District Court of jurisdiction to approve a settlement agreement involving unregistered copyrights.   The decision is found here.

The case arose out of Tasini v. New York Times, a claim by freelance authors against the New York Times and other publishers, alleging that publishers infringed copyrights by including articles in which freelancers retained copyrights in electronic databases.  Irving Muchnik objected to a settlement in the wake of Tasini (affirming the claim of copyright infringement).  The Second Circuit vacated that portion of the settlement relating to unregistered copyrights, claiming that the district court lacked jurisdiction over the controversy (over the dissent of Judge Walker).  I agreed with Judge Walker's dissent in my blog post of December 2, 2007.



The language from the Court:

Subject to certain exceptions, the Copyright Act requires copyright holders to register their works before suing for copyright infringement. 17 U. S. C. A. §411(a) (Supp. 2009). In this case, the Court of Appeals for the Second Circuit held that a copyright holder’s failure to comply with §411(a)’s registration requirement deprives afederal court of jurisdiction to adjudicate his copyrightinfringement claim. We disagree. Section 411(a)’s regis-tration requirement is a precondition to filing a claimthat does not restrict a federal court’s subject-matterjurisdiction.

Importantly for copyright litigators, the Supreme Court did NOT address the split between the Circuits over whether judges may or are required to sua sponte dismiss copyright actions where a copyright registration certificate was not obtained prior to the filing date of the action.

Becase the subject matter of copyright is completely preempted by federal law, I think that the result is a correct one in the class action context.

Reviews for Copyright Litigation Handbook on Amazon

Thanks for the wonderful reviews of Copyright Litigation Handbook on Amazon here.

Most Helpful Customer Reviews

5.0 out of 5 stars A great resource, October 8, 2009

By Joseph Petersen - See all my reviews
Raymond J. Dowd, an experienced trial lawyer and partner with Dunnington, Bartholow & Miller LLP, has written a long-overdue work. His Copyright Litigation Handbook provides a straightforward overview and is chockablock with insightful and practical information. Mr. Dowd is liberal in his inclusion of excerpts from relevant statutes, including not only the Copyright Act, but also the Federal Rules of Civil Procedure and the Federal Rules of Evidence, and his book provides numerous sample forms. Mr. Dowd's Copyright Litigation Handbook will long be a valuable resource for copyright litigators; I am confident that it will be squeezed into trial bags for years to come. Joseph Petersen, Kilpatrick Stockton LLP

Help other customers find the most helpful reviews

5.0 out of 5 stars Copyright Litigation Handbook, August 26, 2009

By Corey Field (Los Angeles, CA) - See all my reviews
I have read this entire book. It is extraordinary for more reasons than I have space here to enumerate. It is a book about copyright law for litigators, and it is at the same time a book about litigation for copyright lawyers. It is written for a broad audience of attorneys whose practice may touch upon copyright law, but it is also a great practice overview for an experienced copyright lawyer. It is organized in a logical way proceeding from case evaluation through trial. Throughout, it offers nuggets of advice that are extremely valuable - the sort of experienced advice that makes a huge difference in the development of one's legal abilities.

Corey Field

Ballard Spahr Andrews & Ingersoll, LLP

Los Angeles, CA Help other customers find the most helpful reviews

5.0 out of 5 stars An indispensable and unique copyright guide for the litigator, August 26, 2009

By David J. Wolfsohn (Philadelphia, PA) - See all my reviews
Until Raymond Dowd wrote this book, there simply was no litigation-friendly guide to copyright litigation. Thank goodness Mr. Dowd chose to devote the equivalent of several years of time and effort to write this book, and to update it with this 2009 edition. This is the book that both occasional dabblers in copyright should go to first (which I wish I had when I started out), as well as now-experienced copyright litigators like me. It is the book I go to first when drafting a complaint (or even when deciding whether to sue), and consult when beginning to prepare for trial. Everything is litigation oriented, so one doesn't need to wade through abstract theorizing to get a sense for how you can use the current state of the case law to your client's advantage. The forms for a complaint and other litigation papers are particularly useful. And the ideas for motions in limine are priceless, and as far as I know, a unique feature of this book. --David Wolfsohn, Woodcock Washburn LLP.

Unregistered Foreign Copyrights in US Courts: No Statutory Damages and Attorneys Fees

In Elsevier B.V. v. United Healthgroup, Inc., S.D.N.Y. January 14,2010, Judge William Pauley considered a plaintiff's claim that a provision of the Copyright Act requiring copyrights to be registered prior to an infringement violated the Berne Convention and thus was "preempted" by the U.S. Constitution.

The plaintiff commenced a declaratory judgment action that Section 412 of the Copyright Act violated Article IV of the U.S. Constitution because Section 412 conflicted with Article 5 of  the Berne Convention.

The problem comes up in the following context:  many foreign publishers of copyrighted materials do not register their copyrights in the United States, even if they publish or sell copyrighted works in the United States.   So when their works are infringed, they do not enjoy the protections of the sections of the Copyright Act that give statutory damages and attorneys fees to persons who have timely registered their works (Sections 504 and 505).

Elsevier provides access to a database on which many of the unregistered copyrighted works can be accessed.  Elsevier alleged that the defendant permitted others to access the database in violation of a subscriber agreement.

The provision challenged was Section 412 of the Copyright Act, which provides:

§ 412. Registration as prerequisite to certain remedies for infringement12



In any action under this title, other than an action brought for a violation of the rights of the author under section 106A(a), an action for infringement of the copyright of a work that has been preregistered under section 408(f) before the commencement of the infringement and that has an effective date of registration not later than the earlier of 3 months after the first publication of the work or 1 month after the copyright owner has learned of the infringement, or an action instituted under section 411(c), no award of statutory damages or of attorney’s fees, as provided by sections 504 and 505, shall be made for —

(1) any infringement of copyright in an unpublished work commenced before the effective date of its registration; or

(2) any infringement of copyright commenced after first publication of the work and before the effective date of its registration, unless such registration is made within three months after the first publication of the work.

Find Section 412 and the rest of the Copyright Act here.

The doctrine of "preemption" is used in a number of different ways in copyright practice, but here the Plaintiff was arguing that the doctrine of preemption provides that where the Exective Branch has validly committed the U.S. under treaty powers and Congress has ratified such commitments, any inconsistent laws are "preempted" by the treaty.

The Plaintiff pointed to  Article Five of the Berne Convention which states:  “the enjoyment and the exercise of [rights under the Convention] shall not be subject to any formality.”   Find the full text of the Berne Convention here.

The District Court analyzed whether the Berne Convention was "self-executing" and found that it was not.  In other words, for any provisions of the Berne Convention to be binding, enabling legislation has to be adopted by Congress.  The Court looked at the legislation implementing the Berne Convention and noted that Congress decided not to change Section 412.

Noting that no federal appellate court has ruled on the question of whether the Berne Convention is self-executing, but that other courts in the district found it not to be self-executing, the Court found that it cannot serve as a basis for a preemption claim under Article IV of the US Constitution.

Since the District Court found the Berne Convention not to be self-executing, it found that Article 5 could not serve as the basis for a preemption.    The question of whether Article 5 and Section 412 conflict were not reached, leaving the question in the hands of diplomats.

Electronic Registration of Copyrights: Online Tutorial Available

The Copyright Office has a useful tutorial for those who wish to file copyrights electronically. The tutorial is here and here. The Copyright Office's website www.copyright.gov has a number of free, downloadable publications explaining how to register copyrights, what qualifies as a copyrightable work, and how to answer many of the basic copyright questions one is likely to confront.

Electronic filing is a great advance. It still takes a long time to receive an actual copyright registration certificate. For impending litigation, a registration certificate can be expedited. This procedure is known as "special handling" and costs $685.

As a U.S. author, unless you've got a copyright registration certificate (or the Register of Copyrights has denied you one) you generally can't sue in federal court. You can register after an infringement, but there are big disadvantages for waiting until you've been ripped off.

Unless you register your copyrights early, you may not be entitled to "statutory damages" and attorneys fees. When a copyright owner has failed to timely register, it puts the owner at a great disadvantage in obtaining compensation for copyright infringements.

Registering copyrights, registering license agreements, and registering transactions involving copyrights is extremely important. The news is full of transactions gone bad because transactional attorneys did not seem to understand the meaning or scope of licensing agreements.

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Motion to Stay Imposition of Attorneys Fees Under the Copyright Act

I last wrote on the Renoir/Guino case decided by the Ninth Circuit creating perpetually unpublished works here. The defendants are now back in district court disagreeing with the Ninth Circuit's finding that the copyright is valid and pointing out that the Register of Copyrights might not have registered the work if she had been provided with accurate information on publication in the registration certificate.

In Societe Civile Succession Richard Guino v. Beseder Inc., 2009 WL 2497447 (D. Ariz. Aug. 13, 2009), the defendant made a motion to stay the determination of attorneys fees until the Court first inquired "whether the Register of Copyrights would have refused to copyright the works at issue if [she] had known of inaccurate information regarding the first date of publication contained in the copyright application pursuant to 17 U.S.C. Section 411."

A motion to stay is a last-ditch desperation shot. The district court shot it down.

Since I tend to root for the underdog, I have to point out that the district court's reasoning is flawed. In rejecting the motion, the district court reasoned that a finding of a "valid copyright" leads to an award of attorneys fees, and that if the Register said she wouldn't register, that would create an "irreconcilable conflict." The district court reasoned that this was a question "previously decided".

But just because a copyright is valid does not mean that attorneys fees are available for infringements. A failure to register disentitles a copyright plaintiff to attorneys fees and statutory damages.

You can have a valid copyright and no registration. And a valid copyright and no attorneys fees. Happens every day, as I advise many potential clients who have failed to register their copyrights.

If a copyright owner fails to register properly and promptly, statutory damages and attorneys fees are not available against an infringer.

Section 412 of the Copyright Act provides that registration is a prerequisite for statutory damages and attorneys and gives the particulars.

Statutory damages and attorneys fees are governed by Sections 504 and 505 of the Copyright Act.

If indeed the plaintiff made misrepresentations in obtaining a copyright registration, the defendants ought to read Fogerty v. Fantasy and its progeny and develop more nuanced arguments against an award of attorneys fees. In my Copyright Litigation Handbook I note the surprisingly unsettled area of law that is attorneys fees under the Copyright Act. There is much room for advocacy, the Circuits don't agree, and in a case that Prof. Patry called a "brain teaser," the defendants should not be tagged for full attorneys fees on litigating an unsettled or novel area of law if there was some degree of bad faith by plaintiff in registration.

But on the losing end of a case and getting whacked for attorneys fees, the adrenal glands have worked overtime, are blown out and it is tough to put in the time necessary to protect yourself. At the end of a hard-fought litigation, courts may be sympathetic to a party that really believed in its case. This is particularly true when your adversary is wealthier or has allowed himself to gloat. There are very serious cases declining to award attorneys fees, so a non-victorious party ought to marshal every factor possible to persuade a court to exercise its wide discretion in that party's favor.

Renoir Self-Portrait above.

Stormy Weather for Joint Authors: Doo Wop Ditties in the Seventh Circuit

Clients who are grateful to collaborators often wish to give credit to someone, particularly when they can't pay that person for their services. Designating that person a "joint author" may have unpleasant consequences.

Janky v. Lake County Convention and Visitors Bureau, --- F.3d--- 2009 WL 2357929 (7th Cir.) is a litigation involving members of the Doo Wop band Stormy Weather. I have written on the case before involving the issue of attorney sanctions. In this appeal the attorney committed the faux pas of forcing the client to pay sanctions against him out of a judgment he'd won. Since he lost the appeal, the issue was moot because "there is now no verdict from which sanctions can be deducted.

But the issue that divided the Sevent Circuit (opinion by Judge Evans, dissent by Judge Ripple) was on the issue of joint authorship.

Janky wrote a song. She copyrighted it, listing herself as the sole author. Farag listened and gave some suggestions. Based on those suggestions, Janky modified the work. Janky filed a copyright registration calling the modified version a "joint work". In the registration, she noted that Farag had a "10% ownership share". When she sued Farag for copyright infringement, she claimed that she didn't intend to make Farag a joint author.

Joint authors can't sue each other for copyright infringement. They can each license the work and must account to each other for proceeds.

The classic test for joint authorship is 1. whether the parties intended to create a joint work; and 2. whether each party contributed an independently copyrightable contribution.

The Seventh Circuit granted summary judgment against Janky in what it called a "close call". The dissent believed that there were issues of fact on both prongs of the test.

A good case on what type of evidence it takes to prove joint authorship and why it's important to think twice in filling out copyright registration forms.

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SCOTUS: Does Failure to Register A Copyright Deprive a Court of Subject Matter Jurisdiction?

In re Electronic Database Litigation, 509 F.3d 116 (2d Cir. 2007) cert. granted March 2, 2009.

Does 17 U.S.C. §411(a) restrict the subject matter jurisdiction of the federal courts

over copyright infringement actions?

Section 411 is the "register before you sue" rule.

The U.S. Supreme Court has granted a petition for certiorari on this question.   The Second Circuit, over the dissent of Judge Walker, vacated a class action settlement that authors and media companies had entered into after four years of negotiations.

The Second Circuit found that since the settlement covered unregistered copyrights (most of the authors writing for these publications), the federal court did not have jurisdiction to settle these claims.  

I indicated my agreement with Judge Walker's dissent in my December 2, 2007 post here

If you are interested in the rights of freelancers and the pros and cons of various settlements, check out Irvin Muchnik's Freelance Rights blog here

ICANN Copyright Registration? Yes We Can!

Professional photographer Dan Heller has written a very thoughtful and constructive piece about how the Copyright Office might incorporate ICANN-type concepts into the copyright registration process found here. I am a big fan of the Copyright Office in many ways. Unlike many, I usually see attempts to "privatize" government functions as a way to steal from taxpayers and undermine the professional civil service. For example, I think HMO's are simply criminal in structure, and I think that private prisons should be abolished immediately.

Heller makes powerful arguments that today's copyright system prices most photographers and certain content producers out of the market and is inefficient. At $35 or $45 a pop, and high recording fees for transfers, certain content creators simply opt out of the system. Photographers may register multiple images for one fee, but there are restrictions. With the phenomenon of user-generated content exploding, Heller points out another copyright constituency that is priced out, is opting out, and that the system was not built for.

As a litigator it has pained me to inform clients over and over that they can't get statutory damages. It is clear to me that approaches embracing new technology, recognizing the new scope of copyright itself, and harnessing the power of the internet need to be adopted to the commercial and consumer reality of the online experience. Heller is right about there being no reasonably effective remedies for the little guy out there.

If you could protect all of your creative output for, say, a reasonable monthly fee and make it easy to digitally track and monitor, wouldn't that be a great option?

Heller has sketched, in a provocative and powerful essay the outline of a new type of automated copyright registration system that certainly bears study. His selected model is the ICANN system, which I am not sure satisfies my desire to have one, central entity to be searched and act as a reputable register (if you have ever chased domain name hijackers who have taken your client's domain offshore you will understand my reluctance to endorse domain name registration as a flawless model).

There is also something attractive in the deposit system: you can deposit works and still have them unpublished and secret for practical purposes, but you have a secure government record that it is what you've claimed as yours, even if unpublished. I am not sure that an ICANN-type system could provide the type of physical custody and certainty that the US government provides.

I think that the Copyright Office would do well to give Heller's proposal some serious consideration and launch a pilot program, particular for groups like photographers. By providing careful oversight of an outsourced operation like the one Heller envisions, I think that the Copyright Office might find that more people could receive fair legal protections at a reduced cost and that more creators and users would be encouraged to be good copyright citizens.