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

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.


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.

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