Are You There, Copyright Office? It’s Me, First Circuit! Can Composers Deposit Infringing Musical Works In Place of The Original?

by Foley Hoag LLP - Trademark, Copyright & Unfair Competition
Contact

1Copyright law usually has little patience for plaintiffs who don’t have a copy of their original work to deposit with the Copyright Office. For example, in Seiler v. Lucasfilm, a plaintiff who claimed to have created the “Imperial Walkers” in The Empire Strikes Back film had his case dismissed because, having lost his original drawing, he was trying to sue based on a “reconstruction” drawn after the allegedly infringing film came out.  More recently, the Ninth Circuit overturned a jury verdict in favor of the programmer of the Madden Football software because he wasn’t able to locate his original source code.

So, say you want to bring a copyright infringement action, but you never registered your original work and now you no longer have it. You have nothing to deposit with the Copyright Office, so what do you do?  Have you considered depositing the infringing work?  That’s what the plaintiffs tried in Angel Martinez Alicea v. Machete MusicHowever, even after reading the First Circuit’s written opinion, issued March 7, 2014, it’s still very hard to determine whether or not this tactic actually worked.

Background

In 2007 the Puerto Rican record label Mas Flow (the defendant), invited a few performers (the plaintiffs), to lay down some reggaeton tracks in a studio in Springfield, Massachusetts. In 2008, the defendant released an album called Erre XI.  Seven of the tracks on the album were allegedly identical to the plaintiffs’ tracks, except that the plaintiffs’ contributions had been digitally erased and replaced with the work of other musicians.

Under 17 U.S.C. § 411, the plaintiffs couldn’t sue until they registered what they claimed to be their work with the Copyright Office, which required depositing a copy of 2the original. But the plaintiffs had apparently never written their compositions down, and did not possess a copy of the original recordings. So they did the next best thing: along with their application to the Copyright Office, they attempted to deposit a copy of the infringing album. In January 2010, while this application was pending, the Plaintiffs  brought suit in the District of Massachusetts, alleging copyright infringement and other counts.

Are you there, Copyright Office? It’s me, First Circuit!

While the parties in Massachusetts wrangled over unrelated motions to dismiss and other matters, down in D.C. the Copyright Office was strangely silent. A year passed without action. Then nearly another year. In September 2011, the Copyright Office finally sent an email to the plaintiffs, but it basically just said that more time was needed. The email acknowledged that “in general, an unauthorized copy cannot be used as deposit material.” However, as to the specifics of the case, the Copyright Office was still “waiting to resolve . . . whether a copy of an unauthorized track, that contains the original composition embedded in the track, can be used as deposit material.” In February 2013, the District Court became tired of waiting for the Copyright Office and granted summary judgment for the defendant, on the grounds that the plaintiffs had no copyright registration.

But a mere four weeks later, they did have a copyright registration. Shortly after the case was dismissed, the Copyright Office issued registration certificates to the plaintiffs for two of the songs, rejected registration for three of the songs, and advised that the applications for last two songs were “still pending.” The Copyright Office’s explanation with respect to the three rejected applications was that they failed “due to discovery that the material that the applicant intended to register was not present in the version of the work deposited and the inability of the applicant to obtain a copy of the material.”  As to the two songs that were successfully registered, the Copyright Office offered no explanation at all.

The plaintiffs moved for reconsideration on the grounds of newly discovered evidence. But even though the plaintiffs presumably had now cured the major defect in their case, the District Court had had enough and, without issuing a written opinion, denied the motion.  The First Circuit affirmed, holding that the District Court had properly rejected the motion to reconsider because the new registrations “are new facts altogether, not new evidence of facts existing at the time of summary judgment.”

Mas Flow, Mas Confusion

It’s hard to divine a lesson here, in large part because the record is somewhat confused as to what exactly the Copyright Office had before it when making its decision, and whether there was a reasonable explanation for the delay.  The Copyright Office has no ready mechanism for issuing such explanations, the Court can only consider what was on the record, and the plaintiff seemed incapable or unwilling to provide a clear statement of the facts, choosing instead to rely on (what the First Circuit described as) “blurred and oblique insinuations of wrongdoing.”  So the real lesson simply may be that bad cases will find a way to get dismissed by good courts.

But that still leaves us with the text of the First Circuit’s opinion, which appears to indicate that the Copyright Office issued registrations where the only thing deposited was the infringing work.  Does this outcome mean that the Copyright Office can accept an infringing work as a substitute for the original in some circumstances, but only with the right showing (whatever that is) and lots of time?  Or perhaps it means just the opposite, i.e., that regardless of any dithering over registration, courts will continue to dismiss copyright infringement cases where the plaintiff does not have the original work?  Whatever meaning was intended, the First Circuit’s opinion, combined with the Copyright Office’s silence, may allow a future plaintiff with better facts and better timing to make out a case for copyright infringement based only on the deposit of the infringing work.

 

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Foley Hoag LLP - Trademark, Copyright & Unfair Competition | Attorney Advertising

Written by:

Foley Hoag LLP - Trademark, Copyright & Unfair Competition
Contact
more
less

Foley Hoag LLP - Trademark, Copyright & Unfair Competition on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):
hide

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.

Security

JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at info@jdsupra.com. In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at: info@jdsupra.com.

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.